Ex Parte Monsere et al

Patent Trial and Appeal BoardApr 25, 2016

12328989 (P.T.A.B. Apr. 25, 2016)

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. 12/328,989 12/05/2008 Patrick J. Monsere P004925-NAPD-LCH 7953 104102 7590 04/25/2016 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER NGUYEN, XUAN LAN T ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 04/25/2016 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 PATRICK J. MONSERE, MARK T. RIEFE, DAVID B. ANTANAITIS, BRENT D. LOWE, and MOHAN SUNDAR1 __________ Appeal 2014-004834 Application 12/328,989 Technology Center 3600 __________ Before KEN B. BARRETT, AMANDA F. WIEKER, and FREDERICK C. LANEY, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Patrick J. Monsere et al. (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–16 and 19.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the Real Party in Interest is General Motors LLC. Appeal Br. 4. 2 Claims 17 and 18 have been withdrawn. Id. Appeal 2014-004834 Application 12/328,989 2 CLAIMED SUBJECT MATTER The invention concerns automotive brake components, such as drum brake assemblies. Spec. ¶ 1. Claims 1, 4, 11, and 19 are independent claims. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. A product comprising: a drum for a drum brake assembly, the drum having a web portion and a hoop portion extending from the web portion; and at least one inlay located at the hoop portion and constituting at least a portion of a braking surface contacting a braking component, the inlay and the hoop portion being constructed and arranged so that an inner surface of the hoop portion and an opposing surface of the inlay provide an interface boundary of mechanically distinguishable surfaces that are in contact with each other and so that relative movement of the inner surface of the hoop portion and the opposing surface of the inlay at the interface boundary generates friction and dissipates heat thereby damping vibrations using Coulomb damping in the drum when the drum is vibrated. Appeal Br. 32, Claims App. (emphasis added). Independent claims 4 and 11 also recite that “relative movement” between a drum and inlay damps vibrations. Id. at 32–34, Claims App. Independent claim 19 recites that an “inlay damp[s] vibrations using friction damping.” Id. at 6; Apr. 23, 2013, Claims.3 3 Claim 19 is omitted from the Claims Appendix. See Appeal Br. 35, Claims App. We rely on claim 19 as it appears in the last filed claim set, filed on April 23, 2013. See id. at 4 (noting that the Claims Appendix reflects the status of the claims after the Final Office Action, dated June 13, 2013), 6. Appeal 2014-004834 Application 12/328,989 3 REJECTIONS The claims stand rejected as follows: I. Claims 1–3, 5–12, 14–16, and 19 under 35 U.S.C. § 102(b) as anticipated by Ota (JP 05187466 A, pub. July 27, 1993). II. Claims 4 and 13 under 35 U.S.C. § 103(a) as unpatentable over Ota and Soddy (US 2,978,073, iss. Apr. 4, 1961). ANALYSIS Anticipation by Ota – Claims 1–3, 5–12, 14–16, and 19 Independent claims 1 and 11 recite that “relative movement” between a drum and an inlay damps vibrations. Appeal Br. 32–34, Claims App. Independent claim 19 recites that an “inlay damp[s] vibrations using friction damping.” Id. at 6; Apr. 23, 2013, Claims. The Examiner finds that Ota discloses drum 10 and inlay 14, and that these structures also satisfy the functional limitations recited in claims 1, 11, and 19. Final Act. 2–3 (citing Ota, Figs. 1, 3). Specifically, the Examiner finds that Ota discloses casting the liner in place with a molten material, (see id. at 5–6), and engaging the liner and the drum via teeth 16, 18. Id.; see also Ans. 3–4 (citing Ota ¶ 6, Figs. 1, 3; Spec. ¶ 5, Fig. 4B). Therefore, the Examiner finds that because Ota and Appellants disclose the same process for forming and engaging the inlay and drum, “Ota’s drum would function in the same manner as Appellant[s’] drum to achieve the same vibration dampening as stated by Ota and Appellant[s].” Ans. 4. Appellants contend that Ota discloses “increased bond strength between the drum body and a liner to inhibit the generation of vibration,” such that “‘the liner is reliably prevented from carrying out relative Appeal 2014-004834 Application 12/328,989 4 displacement [to the drum].’” Appeal Br. 10–11 (citing Ota ¶¶ 3, 6, 7, 10). Therefore, Appellants contend that Ota does not disclose the claimed “relative movement” or “friction damping.” Id. at 10–12, 14–17. Appellants contend that Ota’s disclosure of casting in place does not show that Ota’s structure performs the claimed functional limitations, especially in light of Ota’s disclosure that the engagement between the drum and inlay prevents relative displacement. See, e.g., Appeal. Br. 11–12; Reply Br. 4–5. We are persuaded by Appellants’ arguments. Although Ota discloses drum 10 and inlay 14, the Examiner has not shown that the claimed “relative movement” or “friction damping” occurs. The Examiner has not provided evidence or technical reasoning to establish that these functional limitations are inherent characteristics of Ota’s disclosure, especially in light of Ota’s disclosure that relative displacement is prevented. See Ota ¶¶ 7, 10; Figs. 1, 2. Specifically, the Examiner has not provided any findings to show that Ota’s method of manufacture (e.g., providing engagement teeth and casting in place) produces a structure that is necessarily capable of satisfying the claimed functional limitations. Ans. 4. For example, the Examiner does not demonstrate that the structure produced by Ota’s disclosed method is identical to that produced by Appellants’ disclosed alternative methods of either casting the liner in place (Spec. ¶ 22) or press-fitting the liner and drum in place with engagement teeth (Spec. ¶ 21). Because the Examiner has not established that Ota discloses the claimed functional limitations, we cannot sustain the Examiner’s rejection of independent claims 1, 11, or 19, or claims 2, 3, 5–10, and 12–16, which depend therefrom. Appeal 2014-004834 Application 12/328,989 5 Obviousness over Ota and Soddy – Claims 4 and 13 Independent claim 4 also recites that “relative movement” between a drum and inlay damps vibrations. Appeal Br. 32–33, Claims App. Claim 13 depends from claim 11, which contains a similar limitation, as discussed above. In rejecting claims 4 and 13 under 35 U.S.C. § 103(a), the Examiner relies on Ota as disclosing this limitation. See Final Act. 2–3; Ans. 3–4. As discussed above, the Examiner has not shown that Ota discloses the claimed functional limitation. The Examiner does not rely on Soddy to cure this deficiency. See Final Act. 5. Therefore, we cannot sustain the Examiner’s rejection of claims 4 and 13. DECISION The Examiner’s rejection of claims 1–3, 5–12, 14–16, and 19 under 35 U.S.C. § 102(b) as anticipated by Ota is REVERSED; and the Examiner’s rejection of claims 4 and 13 under 35 U.S.C. § 103(a) as unpatentable over Ota and Soddy is REVERSED. REVERSED