Ex Parte Hanna et al

Patent Trial and Appeal BoardAug 14, 2017

12793525 (P.T.A.B. Aug. 14, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/793,525 06/03/2010 Michael D. Hanna P008262-RD-DPH 6856 104102 7590 08/15/2017 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER SICONOLFI, ROBERT ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 08/15/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL D. HANNA, MICHAEL L. HOLLY, RONNIE T. BROWN, JAMES A. WEBSTER, LISA G. DEVOE, DONNA Y. SEKULOVSKI, and KEE HYUK IM ____________ Appeal 2016-004485 Application 12/793,525 Technology Center 3600 ____________ Before CAROLYN D. THOMAS, JASON V. MORGAN, and AMBER L. HAGY, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1–4, 8–15, and 17–22, all the pending claims in the present application. Claims 5–7 and 16 are canceled. See App. Br. 4. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. The present invention relates generally to a ferritically nitrocarburized rotational member of a vehicle brake including a friction surface configured for braking engagement with a corresponding friction material. See Abstract. Appeal 2016-004485 Application 12/793,525 2 Claim 1 is illustrative: 1. A rotational member, comprising: at least one of a brake rotor or a brake drum; the rotational member comprising a friction surface configured for braking, and a nitrocarburized compound zone disposed at the friction surface, the compound zone comprising cast iron, gray cast iron, cast steel or cast stainless steel, and further comprising graphite flakes precipitated throughout the compound zone; and an exposed surface of the compound zone exposed to an atmosphere wherein ferritic nitrocarburization masks at the exposed surface comprising the graphite flakes are removed from the exposed surface so that an area of the exposed surface includes from about 0 percent to about 14 percent graphite, and so that 86 percent to 100 percent of the friction surface has a nitrocarburized compound zone disposed at the friction surf ace. Appellants appeal the following rejection: R1. Claims 1–4, 8–15, and 17–22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over “Gray Cast Iron” (GM Worldwide Engineering Standards, June 2009) (hereinafter Gray Cast Iron) in view of either one of Wellman (US 2,178,527, Oct. 31, 1939) and Kamps (FR 2.046.722, June 12, 1970), and further in view of Dajoux (US 5,753,052, May 19, 1998). We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appeal 2016-004485 Application 12/793,525 3 ANALYSIS Rejection under § 103(a) Issue: Did the Examiner err in finding that Gray Cast Iron, (Wellman or Kamps), and Dajoux collectively teach or suggest the limitations as set forth in claim 1? We refer to, rely on, and adopt the Examiner’s findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. Firstly, Appellants contend that “the Examiner admits that Gray Cast Iron does not disclose a nitrocarburized compound zone or ferritic nitrocarburization masks or ferritic nitrocarburization at all” (App. Br. 23). Similarly, Appellants contend that “nowhere does Wellman[/Kamps] disclose a nitrocarburized compound zone or ferritic nitrocarburization masks or ferritic nitrocarburization at all” (id. at 23–24), and “the Examiner has not shown that the nitrocarburized regions [in Dajoux] meet the entirety of the claimed limitations” (id. at 24). In response, the Examiner notes that “one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references” (Ans. 2). We agree with the Examiner. As noted by the Examiner, Appellants’ argument against Gray Cast Iron separately from Wellman or Kamps, and Dajoux does not persuasively rebut the combination made by the Examiner. One cannot show non- obviousness by attacking references individually, where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425–26 (CCPA 1981). Appeal 2016-004485 Application 12/793,525 4 For example, the Examiner finds that Gray Cast Iron teaches a rotational member comprising a compound zone disposed at a friction surface, graphite flakes precipitated throughout the compound zone, and an exposed surface of the compound zone (Final Act. 3, citing Gray Cast Iron pages 1, 8, and 16–18). The Examiner brings in Wellman and/or Kamps to teach/suggest removing graphite flakes, i.e., a ferritic nitrocarburization masks, from an exposed surface so that an area of the exposed surface includes from about 0 percent to about 14 percent graphite (Final Act. 3–4, citing Wellman, pages 2–3 and Kamps, Abstract ). Finally, the Examiner imports Dajoux to teach a member being nitrocarburized (Final Act. 4, citing Dajoux, 2:15–50). As such, Appellants’ arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and are therefore ineffective to rebut the Examiner’s prima facie case of obviousness. Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted). This reasoning is applicable here. Secondly, Appellants contend that “when nitrocarburization takes place under Dajoux, there is no longer any graphite flakes in the ‘nitrocarburized compound zone disposed at the friction surface’” (App. Br. 24) and “the ‘ferritic nitrocarburization masks’ are not fully ‘removed’” (id. at 25). In response, the Examiner finds, and we agree, that “Wellman clearly Appeal 2016-004485 Application 12/793,525 5 discloses 6% graphite remaining in the overall composition, which falls within the broad range claimed in claim 1” (Ans. 2, citing Wellman page 2, right side column, lines 19–22). We highlight that the language of claim 1 recites, inter alia, so that an area of the exposed surface includes from about 0 percent to about 14 percent graphite (see claim 1), which includes anything between no graphite flakes to 14% of graphite flakes. Wellman’s 6% clearly falls within this range. Also, even if we accept Appellants’ contention that in Dajoux there is no longer any graphite flakes in the “nitrocarburized compound zone disposed at the friction surface” (see App. Br. 24), such a teaching would also fall within this range. “In cases involving overlapping ranges … even a slight overlap in range establishes a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Furthermore, we find that Appellants’ contention that “the ‘ferritic nitrocarburization masks’ are not fully ‘removed’” by the cited art (App. Br. 25) is not commensurate with the scope of claim 1, because, as noted by the Examiner (see Ans. 4), claim 1 does not necessarily require “fully remov[ing]” the ferritic nitrocarburization masks (see claim 1). Thirdly, regarding claim 21, Appellants contend that “nowhere is it disclosed the percentages of the nitrocarburized compound zone being present in any of the references” (App. Br. 26). In response, the Examiner “assumes that Appellant[s are] implying that [Dajoux’s] complete immersion in a salt bath would result in the nitrocarburized compound zone being at 100% of the friction surface . . . not meeting the claimed range of 95 to 99% [in claim 21]” (Ans. 4–5). The Examiner further adds that “some small percentage of the friction surface would be masked and/or kept from Appeal 2016-004485 Application 12/793,525 6 being nitrocarburized upon immersion . . . resulting in less than 100% of the friction surface being subjected to nitrocarburization” (id. at 5). We agree with the Examiner. Appellants fail to specifically rebut the aforementioned findings of the Examiner, but instead contend that “there is no reason to optimize this value to the percentages listed given that Dajoux teaches immersion of the part” (Reply Br. 17). However, we find that Appellants’ aforementioned statement fails to address the Examiner’s findings that Dajoux nonetheless teaches the claimed 95 percent to 99 percent of the friction surface has a nitrocarburized compound zone disposed at the friction surface. We further add that “[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations omitted). “These cases have consistently held that in such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” Woodruff, 919 F.2d at 1578. Here, Appellants have not made any such showing. Finally, Appellants contend that “to remove these graphite flakes . . . as taught by either Wellman or Kamps would destroy the purpose of the Gray Cast Iron reference, which explicitly recites the graphite flakes as providing the advantages desired . . . (See Table E1 showing graphite at the friction surface)” (App. Br. 29) (emphasis omitted). In response, the Examiner finds that “the modification of Gray Cast Iron does not call for the complete removal of graphite flakes . . . . Instead, the Examiner submits that Wellman clearly discloses 6% graphite remaining Appeal 2016-004485 Application 12/793,525 7 in the overall composition . . . the modification . . . would not necessarily result in the complete removal of graphite flakes” (Ans. 2–3). We agree with the Examiner. Here, Appellants’ contention appears to be premised on the false allegation that “all” graphite flakes are removed in the combined teachings of Gray Cast Iron with Wellman/Kamps. However, as highlighted by the Examiner, Wellman discloses the removal of only a percentage of the graphite flakes, not all of the graphite flakes (Ans. 3) (i.e., “[f]or clutch and brake disks . . . a satisfactory composition to be . . . 6% graphite.” Wellman, page 2, right column, ll. 19–22). As such, we find unavailing Appellants’ contention that the combined teachings as taught by either Wellman or Kamps would destroy the purpose of the Gray Cast Iron reference, given that Wellman does not teach removal of all graphite flakes. Accordingly, we sustain the Examiner’s rejection of independent claims 1 and 22. Appellants’ arguments regarding the Examiner’s rejection of independent claims 11 and 21 rely on the same arguments as for claim 1, and Appellants do not argue separate patentability for the dependent claims. See App. Br. 14–31. We, therefore, also sustain the Examiner’s rejection of claims 2–4, 8–15, and 17–21. Appeal 2016-004485 Application 12/793,525 8 DECISION We affirm the Examiner’s § 103(a) rejection of claims 1–4, 8–15, and 17–22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED