Ex Parte Root et al

Patent Trial and Appeal Board

Aug 18, 2017

13077883 (P.T.A.B. Aug. 18, 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.
13/077,883 03/31/2011 Jeffrey T. Root 205017-9025-US00 6345
1131 7590 08/22/2017
MICHAEL BEST & FRIEDRICH LLP (Chi)
444 West Lake Street
Suite 3200
Chicago, IL 60606
EXAMINER
BOWES, STEPHEN M
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
08/22/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chiipdocket @ michaelbest. com
llczech@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY T. ROOT and JASEN S. DRENTH
Appeal 2016-0020671
Application 13/077,8832
Technology Center 3600
Before HUNG H. BUI, AMBER L. HAGY, and SHARON FENICK,
Administrative Patent Judges.
FENICK, 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, 2, 4—11, 13, 15, 17, 18, and 21—32,
which constitute all of the pending claims in the present application.
(Appeal Br. 2.) Claims 12, 14, 16, and 20 are withdrawn.3 Claims 3 and 19
1 Our Decision references Appellants’ Appeal Brief (“Appeal Br.,” filed July
10, 2015) and Reply Brief (“Reply Br.,” filed Dec. 7, 2015), and the
Examiner’s Answer (“Answer,” mailed Oct. 5, 2015), Advisory Action
(mailed Apr. 29, 2015), and Final Office Action (“Final Action,” mailed
Feb. 12, 2015).
2 According to Appellants, the real party in interest is Gunite Corporation.
(Appeal Br. 2.)
3 While these claims are not indicated as withdrawn in the Claims Appendix
(Appeal Br. 25—31), they were withdrawn by Appellants in response to a
restriction requirement (Resp. to Restriction Req., Aug. 12, 2013) as
Appeal 2016-002067
Application 13/077,883
are cancelled. (Appeal Br. 25, 28.) We have jurisdiction over the appeal
under 35 U.S.C. § 6(b)(1).
We REVERSE.
Invention
Appellants’ invention relates to a brake hub assembly including a
brake hub, brake disk and at least one torque member. Figure 9, a view of a
brake hub assembly according to one embodiment of the invention, is
reproduced below:
Y
FIG. 9
Figure 9 shows a brake hub assembly including brake hub 30b, brake
disk 38 and at least one torque member 134. As shown in Figure 9, brake
disk 38 defines a plurality of radially extending slots, and the at least one
torque member 134 (when assembled) extends from brake hub 30b, and
transmits torque between brake hub 30b and brake disk 38, and additionally
acknowledged by the Examiner in the Non-Final Rejection of Sept. 27,
2013.
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Application 13/077,883
includes a spacer engaged to one of the braking surfaces of brake disk 38.
(Spec. 1153-57, 63-66.)
Illustrative Claims
Claims 1 and 11, reproduced below with emphasis added, are
illustrative:
1. A brake hub assembly couplable to an axle of a vehicle,
the brake hub assembly comprising:
a brake hub defining a central axis;
a brake disk coupled to the brake hub, the brake disk
having a first braking surface and a second braking surface
spaced axially from the first braking surface, and wherein the
brake disk defines a plurality of radially extending slots; and
at least one torque member extending from the hub,
wherein the torque member is at least partially received within
and moveable along one of the plurality of radially extending
slots of the brake disk, and wherein the torque member includes
a spacer to which one of the first or second braking surfaces of
the brake disk is engaged for axially separating the brake disk
from the hub;
wherein the torque member transmits torque between the
brake disk and the brake hub, and wherein the spacer is integrally
formed with the torque member.
11. A brake hub assembly couplable to an axle of a
vehicle, the brake hub assembly comprising:
a brake hub defining a central axis;
a brake disk having a first braking surface and a second
braking surface spaced axially from the first braking surface, and
wherein the brake disk defines a plurality of radially extending
slots; and
a torque member extending between the brake disk and the
brake hub to transmit torque therebetween, wherein the torque
member is at least partially received within and moveable along
one of the plurality of radially extending slots of the brake disk,
and wherein the torque member includes a spacer engaged to
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Application 13/077,883
one of the first or second braking surfaces of the brake disk to
maintain a fixed axial gap between the brake disk and the brake
hub.
Examiner’s Rejections4 & References
(1) Claims 11, 15, 17, 18, 27, and 28 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Williams (US 6,988,598 B2; iss. Jan. 24, 2006).
(Final Action 2—3.)
(2) Claims 1,2, 11, 15, 17, 18, and 21—32 are rejected under 35
U.S.C. § 102(b) as anticipated by Tironi et al. (WO 2011/015962 Al; pub.
Feb. 10, 2011) (hereinafter “Tironi”). (Final Action 3—9.)
(3) Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Williams and Adrian et al. (US 5,344,219; iss. Sept. 6, 1994)
(hereinafter “Adrian”). (Final Action 11—12.)5
(4) Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Williams and Martin et al. (EP 0 872 659 Al; pub. Oct. 21, 1998)
(Final Action 17—18).6
4 The Examiner has withdrawn the rejection of (1) claims 1—2 as obvious
based on Williams (US 6,988,598 B2; iss. Jan. 24, 2006) and Naeumann et
al. (US 6,374,956 Bl; iss. Apr. 23, 2002); (2) claims 4—10 and 24—25 as
obvious based on Williams, Naeumann, and Adrian et al. (US 5,344,219; iss.
Sept. 6, 1994); and (3) claims 30—31 as obvious based on Williams,
Naeumann, Adrian and Martin (EP 0872659) (Answer 3.)
5 This rejection was included under an incorrect heading, as noted by the
Examiner. (Answer 3.)
6 While claim 30 is also referred to in the header of this rejection, as the
body of the rejection deals exclusively with claim 32 and claim 30 depends
not from claim 11 (to which an anticipation rejection under Williams was
made) but from claim 1; we understand this rejection to relate to claim 32
only.
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Application 13/077,883
(5) Claims 4—10 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tironi and Adrian. (Final Action 18—21).
ANALYSIS
§§ 102 and 103 Rejections based on Williams
In support of the § 102 rejection of claim 11, the Examiner finds that
Williams discloses all limitations of claim 11, including the limitation of a
torque member which “includes a spacer . . . engaged to one of the first or
second braking surfaces of the brake disk.” (Final Action 2.)
Williams is directed to a mounting system, shown in Figure 1, for disk
brake rotors, including brake hub 102 and drive pins 110 which are securely
fastened with drive pin attachment bolts, brake disk 112 with drive slots 114,
and alignment bushing 118. (Williams 2:32—65, Fig. 1.)
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Application 13/077,883
Figure 1 of Williams is reproduced below.
JPjFCir Jf
Figure 1 of Williams shows an exploded view of one embodiment of the
Williams invention. (Williams 2:15—17.)
The Examiner points to the flared base of drive pin 110 as disclosing
the claimed spacer, and contact with flange 122 of alignment bushing 118 as
disclosing the claimed engagement with a braking surface of brake disk 112.
{Id. at 2, 22.) The Examiner notes that “[t]he spacer is now considered to be
the wide portion of [drive pin] 110. Bushings 118 are also now considered
[to be] part of the braking surface.” {Id. at 22.) The Examiner further finds
that, “[t]he drawings show that the base and tapered portion of drive pin 110
is capable of wedging into the hole of bushing 118. The lack of text
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Application 13/077,883
describing this structure does not negate its disclosure in the drawings.”
(Advisory Action 2.)
Appellants argue that:
Contrary to the Examiner’s interpretation, contact
between the base of the drive pins 110 and either the brake disk
112 or the bushing 118 is not taught or suggested by Williams.
Williams merely suggests that the brake rotor 112 will slide in
or out on the drive pins 110 by an amount sufficient to ensure
that the caliper exerts the same force on both sides of the brake
rotor 112. Williams at 3:51-53.
(Appeal Br. 9.)
The Examiner argues that, in Williams,
[t]he drawings show that the base and tapered portion of drive
pin 110 is capable of wedging into the hole of bushing 118.
Drive pin 110 is always engaged with the bushing 118 as a
support means and the shoulder of the drive pin is capable of
engagement with the bushing as well.
(Answer 4.) However, even accepting the Examiner’s interpretation of
Williams’ bushing 118 as being part of the claimed brake disk and the
surface of the bushing as being a braking surface (Answer 7), we agree with
the Appellants that Williams does not disclose that drive pin 110, which the
Examiner finds is “capable” of wedging into the hole of bushing 118,
actually does so. The Examiner’s reproduction of Figure 4 (Appeal Br. 5—
6), which the Examiner says discloses “contact” between the base of the
drive pin and the bushing, does not show such contact. Therefore, we agree
with Appellants that the Examiner has failed to show Williams discloses the
drive pin is engaged to the bushing (braking surface), as per the
requirements of the claim limitation, and the Examiner erred in rejecting
claim 11 as anticipated by Williams.
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Application 13/077,883
Appellants raise additional arguments with respect to Williams.
Because the identified issue is dispositive of the appeal, we do not reach the
additional arguments.
We reverse the anticipation rejection of claim 11, and the rejection of
claims 15, 17, 18, 27, and 28, argued on the same basis (Appeal Br. 11).
With respect to the obviousness rejections of claims 13 and 32, the art
of record does not appear to correct the deficiencies in the rejections of
claim 11, as discussed above. Thus, we do not sustain the obviousness
rejections of these claims, argued by the Appellants on the same basis. {Id.
at 16, 22.)
§§ 102 and 103 Rejections based on Tironi
In support of the § 102 rejection of claim 1, the Examiner finds that
Tironi discloses all limitations of claim 1 including the claimed “brake disk”
that “defines a plurality of radially extending slots” and the claimed “at least
one torque member” that “the torque member is at least partially received
within and moveable along one of the plurality of radially extending slots of
the brake disk.” (Final Action 3—4.)
Appellants argue that Tironi does not disclose “the plurality of
radially extending slots,” within which one or more torque members is at
least partially received. (Appeal Br. 14—15.) The Examiner finds that
Figure 3 of Tironi discloses the claimed torque member. (Final Action 3—4.)
The Examiner’s interpretation of Figure 3 is that it “shows the pins as only
having rotor material on one side” and that certain unlabeled areas of the
figure are slots with material only shown on one side. (Answer 9—10.) The
Examiner relies on crosshatching of certain elements to show material is
present; however, other elements, such as the drive element 32 (Tironi Fig.
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Application 13/077,883
1,131) and connection elements 24 (defining ventilation channels 28) (id.
Fig. 1,130), are not shown as crosshatched in Tironi’s figures. The
Examiner further finds that “[t]he lack of text describing this structure does
not negate its disclosure in the drawings.” (Advisory Action 2.) However,
we agree with the Appellants (Appeal Br. 14—15; Reply Br. 5—6) that
Tironi’s Figure 1 does not disclose radially extending slots in the brake disk
into which the torque member is received and along which the torque
member is movable.
The Examiner also notes that Figure 4 of Tironi, an alternate
embodiment, “clearly has slots in the rotor.” (Answer 10.) However, Tironi
is directed to a brake disc with ventilation channels for passage of a flow of
cooling air (Tironi 130, Abstract), and Tironi’s Figure 4 is a cross sectional
view of interior of the brake disc from Figure 1 along a section plane shown
in Figure 1 (id. at 117.) Thus, what the Examiner finds in Figure 4 to be
slots are internal ventilation chambers in the brake disk shown in cross
section, and Figure 4 does not show slots in the rotor.
Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
We are persuaded that the Examiner erred in rejecting claim 1 as
anticipated by Tironi, and in the rejection of independent claim 11, and
dependent claims 2, 15, 17, 18, and 21—32.
With respect to the obviousness rejections of independent claim 7 and
dependent claims 4—6, 8—10, and 13, the art of record does not appear to
correct the deficiencies in the rejections of claims 1 and 11. Thus, we do not
sustain the obviousness rejections these claims, argued by the Appellants on
the same basis. (Id. at 16, 22.)
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DECISION
We reverse the rejection of claims 11, 15, 17, 18, 27, and 28 as
anticipated by Williams.
We reverse the rejection of claims 1,2, 11, 15, 17, 18, and 21—32 as
anticipated by Tironi.
We reverse the rejection of claim 13 as unpatentable over Williams
and Adrian.
We reverse the rejection of claim 32 as unpatentable over Williams
and Martin.
We reverse the rejection of claims 4—10 and 13 are rejected under
35 U.S.C. § 103(a) as unpatentable over Tironi and Adrian.
REVERSED
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