Ex Parte Valle

Patent Trial and Appeal BoardMar 12, 2019

14350882 (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/350,882 04/10/2014 24504 7590 03/14/2019 THOMAS I HORSTEMEYER, LLP 3200 WINDY HILL ROAD, SE SUITE 1600E ATLANTA, GA 30339 FIRST NAMED INVENTOR Massimiliano Valle 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 221003-1730 2981 EXAMINER NGUYEN, XUAN LANT ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 03/14/2019 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): uspatents@tkhr.com ozzie. liggins@tkhr.com docketing@thomashorstemeyer.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASSIMILIANO VALLE Appeal2018-006685 1 Application 14/350,8822 Technology Center 3600 Before KENNETH G. SCHOPPER, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 from the rejection of claims 1-7, 9-11, 13, 14, and 17-22. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Our decision references the Appeal Brief ("Appeal Br.," filed Feb. 21, 2018), the Reply Brief ("Reply Br.," filed June 15, 2018), the Examiner's Answer ("Ans.," mailed Apr. 16, 2018), and the Final Office Action ("Final Act.," mailed Sept. 26, 2017). 2 According to Appellant, the real party in interest is "FRENI BREMBO S.P.A. 0 ANCHE PIU' BREVEMENTE BREMBO S.P.A." Appeal Br. 2. Appeal 2018-006685 Application 14/350,882 BACKGROUND The Specification discloses "a method for manufacturing a composite brake disc for motorised vehicles, in other words a brake disc[,] the brake band and support bell of which are made from different materials." Spec. CLAIMS Claims 1 and 22 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A method for manufacturing a composite brake disc, compnsmg: shaping a support bell through deep-drawing of a metal sheet, the support bell being shaped as a cup having a coupling portion, a tubular side wall, and a bottom wall coupled to the tubular side wall, wherein the bottom wall and the tubular side wall are formed by pushing a circular portion of the metal sheet in a drawing direction relative to an outer portion of the metal sheet, thereby forming the bottom wall, the tubular side wall, and the coupling portion, the bottom wall being formed as having a crowned shape, the coupling portion formed from the outer portion and configured to connect the support bell to a brake band; modifying the bottom wall to reduce a crowning in the crowned shape to result in the bottom wall having a flat shape by: forming at least one of: a groove or a cavity in a surface of the bottom wall through a mechanical chip removal machining process, wherein a thickness of the bottom wall is locally reduced by a depth of the groove or the cavity, the depth of the groove or the cavity being less than one third of the thickness of the bottom wall; and pushing the bottom wall having the groove or the cavity on the surface relative to the outer portion of the metal sheet in a retro-forming direction to flatten the 2 Appeal 2018-006685 Application 14/350,882 bottom wall and reduce the crowning, wherein the retro- forming direction is a direction opposite to the drawing direction; and connecting the brake band to the coupling portion of the support bell. Appeal Br. 20. REJECTIONS 1. The Examiner rejects claims 1-7, 9, 10, 13, 14, and 1 7-22 under 35 U.S.C. Â§ I03(a) as unpatentable over Hansen3 in view of Kozyra4 and Walter. 5 2. The Examiner rejects claims 1-7, 9, 10, 13, 14, and 17-22 under 35 U.S.C. Â§ I03(a) as unpatentable over Hansen in view of Kozyra, Walter, and Lucas. 6 DISCUSSION We are persuaded by Appellant's argument that the Examiner erred in finding that the art of record teaches shaping a support bell with a coupling portion as required by each of independent claims 1 and 22. See Appeal Br. 10-12, 16. With respect to claims 1 and 22, the Examiner finds that Hansen discloses a method of manufacturing a brake drum including shaping a support bell with a bottom wall and a tubular side wall. Final Act. 3, 6. However, the Examiner does not indicate how Hansen's method includes 3 Hansen et al., US 1,546,656, iss. July 21, 1925. 4 Kozyra et al., US 4,741,194, iss. May 3, 1988. 5 Walter et al., DE 3012420 Al, pub. Oct. 15, 1981. 6 Lucas et al., US 4,055,068, iss. Oct. 25, 1977. 3 Appeal 2018-006685 Application 14/350,882 forming a coupling portion as required be each of these claims. See id. In the Answer, the Examiner finds Appellant's article 2, as shown in figures 4B-8B and 9A- 11A, comprises a bottom wall 6 and a side wall 4. The side wall 4 forms a coupling portion, not numbered, being coupled to disk 3. Hansen shows a cup shaped article having a bottom wall and a side wall in the same shape as Appellant's support bell. Hansen's side wall is the same shape as Appellant's side wall. The bottom portion of Hansen's side wall would be considered to be the coupling portion. Ans. 4. Even if we were to agree with the Examiner that the "bottom portion of Hansen's side wall" is a coupling portion, the Examiner has failed to show that it is a coupling portion shaped by a method as required by the independent claims. For example, claim 1 includes the step of "shaping a support bell through deep-drawing of a metal sheet" to form "a coupling portion, a tubular side wall, and a bottom wall" such that the side wall and bottom wall are drawn in a "direction relative to an outer portion of the metal sheet" and "the coupling portion is formed from the outer portion" of the metal sheet. 7 We find that the Examiner has failed to set forth any showing that Hansen or the other art of record teaches or suggests a bell with a coupling portion that is formed by a process as claimed. The only evidence the Examiner provides is a comparison between Hansen's "cup shaped article" and "Appellant's support bell." But because this is a method claim, even if the Examiner's statement did not suggest the use of hindsight in the 7 Claim 22 includes a shaping step that is substantially similar in relevant part. See Appeal Br. 23. 4 Appeal 2018-006685 Application 14/350,882 rejection, this similarity in shape alone fails to show that Hansen teaches the shaping step claimed. Thus, even if a portion of Hansen's side wall may be considered a coupling portion, the Examiner has not shown, for example, that these coupling portions are "formed from the outer portion" of a metal sheet as required by the claim. Based on the foregoing, we are persuaded of error in the rejection of claims 1 and 22. Accordingly, we do not sustain the rejection of claims 1 and 22. For the same reasons, we also do not sustain the rejection of dependent claims 2-7, 9, 10, 13, 14, and 17-22. Finally, with respect to claim 11, the Examiner does not establish that the art of record cures the deficiency in the rejection of claim 1, and thus, we also sustain the separate rejection of claim 11. CONCLUSION We REVERSE the rejections of claims 1-7, 9-11, 13, 14, and 17-22. REVERSED 5