Ex Parte AdamsDownload PDFPatent Trial and Appeal BoardApr 4, 201411895585 (P.T.A.B. Apr. 4, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/895,585 08/25/2007 Philip Herbert Adams 70307-PHA 2447 7590 04/07/2014 Philip Herbert Adams 3721 Longford Drive Tallahassee, FL 32309 EXAMINER NGUYEN, XUAN LAN T ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 04/07/2014 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 PHILIP HERBERT ADAMS ____________ Appeal 2011-004977 Application 11/895,585 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and ADAM V. FLOYD, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-6, 10, 13-17, 21, and 22. Br. 2. Claims 7-9, 11, 12, 18-20, and 23-27 have been withdrawn. Id. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2011-004977 Application 11/895,585 2 REJECTIONS Claims 2, 3, 5, 13-17, 21, and 22 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 1-5, 10, 13, 14, 16, 17, and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Odier (US 3,885,651, iss. May 27, 1975). Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over Odier and Doi (US 6,247,561 B1, iss. Jun. 19, 2001). Claims 6 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Odier and Kuroda (EP 0191597 A1, pub. Aug. 20, 1986). CLAIMED SUBJECT MATTER Claims 1 and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A cushion for reducing uneven frictional drag between a disc brake pad and a disc brake rotor caused by irregularities on a friction face of the disc brake rotor, the cushion comprising: a cushion shape, the cushion shape allowing the cushion to fit between a force producing element of the disc brake assembly and a brake pad backing plate; the cushion placed between the force producing element and the brake pad backing plate, the cushion positioned to prevent the force producing element from directly contacting the brake pad backing plate; the cushion having a thickness to accommodate lateral movement of the brake pad as the pad passes the irregularities of the friction face; the cushion comprising resilient elastomeric material with Compression Set of less than about 30% when tested at about 200 C for about 70 hours, resilient response at frequencies from about 1 Hz[] to about 500 Hz to accommodate lateral movement as the disc brake pad passes the irregularities of the friction face, and Tan Appeal 2011-004977 Application 11/895,585 3 Delta of from about 0.01 to about 0.4 at frequencies from about 10Hz[] to about 30 Hz[] and temperatures from about ambient temperature to about 204 C; and the cushion preventing generation of excessive heat caused by the uneven frictional drag arising from interaction between the irregularities and the brake pad. OPINION Indefiniteness Claims 2 and 3 Claim 2 recites, “[t]he cushion of Claim 1 where the cushion is positioned between a force producing element of a brake assembly and a brake pad backing plate . . . .” Br., Clms. App’x (emphasis added). Similarly, claim 3 recites, “[t]he cushion of Claim 1 where the cushion is placed adjacent a backing plate of the disc brake pad in resilient elastomeric communication with a force producing element of the brake system . . . .” Id. (emphasis added). The Examiner explains that claims 2 and 3 are indefinite because “it is [] unclear which force producing element, brake pad backing plate” are being referenced. See Ans. 11; see also Ans. 4. The Appellant contends claims 2 and 3 are definite because “a disc brake can have several different force producing elements (47, 20) and can also have several different brake pad backing plates (34, 40)” and the claim covers embodiments directed to “any backing plate or any force producing element of the brake assembly, not just the particular [backing plate or force producing element] mentioned in claim 1.” Br. 20. The Appellant’s contention is unpersuasive. Appeal 2011-004977 Application 11/895,585 4 At the outset, it is notable that the Specification includes numerous cushions, force producing elements, and backing plates within a brake system. For example, Figure 5 depicts “the moving parts of a brake” where the brake includes cushions (12, 20 (twice)), force producing elements (46, 48 (twice)), and backing plates (34, 40). Br. 3-4 and Spec. para. [0031]. However, claims 2 and 3 are more restrictive than the Specification because they refer to the cushion of claim 1. “[T]he cushion” of claim 1 is “placed between the force producing element and the brake pad backing plate.” This positional relationship of the cushion of claim 1 must be maintained in claims 2 and 3 because they depend from claim 1. So contrary to the Appellant’s contention, claims 2 and 3 can only cover the force producing element and the brake pad backing plate referenced with the cushion of claim 1 because of the positional relationship required by claim 1. Additionally, the Appellant has not explained, and we cannot ascertain how, the Specification offers an embodiment maintaining the positional relationship required in claim 1 and the additional limitations of claims 2 and 3 without being the same force producing element and brake pad backing plate of claim 1. Thus, the Examiner’s rejection of claims 2 and 3 under 35 U.S.C. § 112, second paragraph, as indefinite, is sustained. Claims 5 and 17 Claim 5, which depends from claim 1, recites, “the resilient material comprises . . . a Tan Delta from about 0.02 to about 0.05 at frequencies from about 6 Hz to about 20 Hz.” Br., Clms. App’x. Claim 17, which depends from claim 13, includes a limitation that is similar to this recitation of claim 5. See id. Appeal 2011-004977 Application 11/895,585 5 The Examiner explains the claimed frequency range of “6 Hz to about 20 Hz,” as recited in claims 5 and 17, does not further limit the frequency range of 10 Hz to about 30 Hz, as recited in claims 1 and 13. See Ans. 4 and 11. More specifically, the Examiner explains the 6 Hz is not in the range of 10 Hz to about 30 Hz. See Ans. 11. The Appellant contends the aforementioned limitation of claim 5 and the similar limitation of claim 17 narrows the Tan Delta that is recited in claims 1 and 13, respectively. Br. 21. Specifically, claims 5 and 17 “narrow the range of Tan Delta from 0.01 to 0.4 in claims 1 and 13 to 0.02 to 0.05” and the claimed “frequency range . . . is dependent on the narrowed value of Tan Delta.” Id. The Appellant’s contention is persuasive. In this case, when read in light of the Specification, a skilled artisan would understand that the dependent claim limitations of claims 5 and 17 would narrow the Tan Delta recited in independent claims 1 and 13. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Thus, the Examiner’s rejection of claims 5 and 17 under 35 U.S.C. § 112, second paragraph, as indefinite, is not sustained. Claims 13-17, 21, and 22 Claim 13 recites, among other things, “a cushion disposed adjacent the brake pad backing plate in resilient communication with a force producing element of the brake assembly, the cushion comprising: a cushion shape, the cushion shape allowing the cushion to fit between a force producing element of the disc brake assembly and a brake pad backing plate.” Br., Clms. App’x. (emphasis added). Appeal 2011-004977 Application 11/895,585 6 The Examiner finds claim 13 is indefinite because “it is [] unclear which force producing element” and “brake pad backing plate” are being referenced. Ans. 11. The Appellant’s contention against the rejection of claim 13 is similar to the rejection of claims 2 and 3, as discussed above. See Br. 21. For similar reasons as discussed above, the Appellant’s contention is unpersuasive. Thus, we sustain the Examiner’s rejection of independent claim 13, and its dependent claims 14-17, 21, and 22, under 35 U.S.C. § 112, second paragraph, as indefinite. Claim 14 The Examiner further rejects claim 14, which recites “[t]he apparatus of [c]laim 13 wherein the force producing element of the brake assembly is a brake piston” (Br., Clms. App’x. (emphasis added)). See Ans. 4 and 11. Specifically, the Examiner explains claim 14 is indefinite because “it is [] unclear which . . . brake piston” is being referenced. Ans. 11. The Appellant contends that, “there can be multiple brake pistons in a brake assembly . . . such a situation might be encountered in a brake assembly employing opposing brake pistons.” Br. 22. The Appellant’s contention is persuasive. At the outset, we agree with the Appellant that there can be more than one brake piston in a brake system/assembly. See e.g., Spec. paras. [0064], [0065], and [0076]. Claim 13 recites a brake piston and a force producing element as separate structures. See Br., Clms. App’x. Claim 14 indicates that the force producing element is a piston. As such, when read in light of the Specification, a skilled artisan would understand that the term “a brake Appeal 2011-004977 Application 11/895,585 7 piston” recited in claim 14 does not refer to “a brake piston” recited in independent claim 13. Thus, this rejection of claim 14 under 35 U.S.C. § 112, second paragraph, as indefinite, is not sustained. Obviousness Claim 1 recites the cushion comprises resilient elastomeric material with the following features: Compression Set of less than about 30% when tested at about 200 C for about 70 hours, resilient response at frequencies from about 1 Hz[] to about 500 Hz to accommodate lateral movement as the disc brake pad passes the irregularities of the friction face, and Tan Delta of from about 0.01 to about 0.4 at frequencies from about 10Hz[] to about 30 Hz[] and temperatures from about ambient temperature to about 204 C. Br., Clms. App’x. The Examiner construes these features of claim 1 to be indicative of a product (i.e., cushion) by process claim because “[the] claimed product [] is limited by the process of testing [which] makes determination of the patentability of the claim more difficult; and that the determination of patentability is based on the product itself and not the process.” Ans. 5 (citing MPEP § 2113). The Appellant contends the Examiner erred in interpreting claim 1 as a product by process claim. See Br. 10. Specifically, claim 1 recites “a cushion, how it can be used and detail[s] certain limiting features that the materials used to make a cushion must have.” Br. 10. We agree. In other words, the claimed features are not related to process steps. Rather, the Appeal 2011-004977 Application 11/895,585 8 claimed features explain the structural requirements of the claimed resilient elastomeric material of the cushion. Further, the Appellant contends Odier does not disclose the specific claimed features of the resilient elastomeric material of the cushion. See Br. 8. The Appellant’s contention is persuasive. Odier is silent concerning the claimed features of the resilient elastomeric material of the cushion. The Examiner finds Odier discloses “a cushion, as in the present invention, comprising: a cushion shape of resilient elastomeric material 14, fits between the piston 16 and the back plate 13, as claimed.” Ans. 4. Additionally, the Examiner finds “Odier’s cushion comprises the same material, same shape and is placed in the same location as the claimed invention” and that the cushion of is made of rubber. See Ans. 4-5 and Odier, col. 1, ll. 36-38. However, the Examiner does not explain how Odier’s resilient elastomeric material 14 satisfies the claimed features of the resilient elastomeric material of the cushion. Moreover, the Examiner appears to determine that Odier’s resilient elastomeric material 14 provides a reduction in heat. See Ans. 9. However, such determination does not provide adequate support for finding that Odier’s rubber cushion satisfies the claimed features of the resilient elastomeric material of the cushion. Thus, the Examiner’s rejection of claim 1, and its dependent claims, as unpatentable over Odier is not sustained. Similar to independent claim 1, independent claim 13 calls for an apparatus comprising a cushion, the cushion comprising resilient elastomeric material with the features recited above with regard to claim 1. Br., Clms. App’x. Regarding the rejection of claim 13, the Examiner offers similar Appeal 2011-004977 Application 11/895,585 9 findings to those presented for the rejection of claim 1. See Ans. 6-7. For similar reasons as discussed above, the Examiner’s rejection of claim 13, and its dependent claims, as unpatentable over Odier is not sustained. The rejection of claim 15 based on Odier and Doi relies on the rejection of claim 13. The Examiner’s additional findings regarding Doi, with regard to the rejection of claim 15, does not remedy the deficiency of the rejection of independent claim 13. As such, we do not sustain the rejection of claim 15 as unpatentable over Odier and Doi. The rejection of claims 6 and 21 based on Odier and Kuroda relies on the rejection of claims 1 and 13, respectively. See Ans. 8. The Examiner’s additional findings regarding Kuroda, with regard to the rejection of claims 6 and 21, do not remedy the deficiency of the rejection of independent claims 1 and 13. As such, we do not sustain the rejection of claims 6 and 21 as unpatentable over Odier and Kuroda. DECISION We AFFIRM the rejection of claims 2, 3, 13-17, 21 and 22, under 35 U.S.C. § 112, second paragraph, as indefinite. We REVERSE the rejections of: claim 5 under 35 U.S.C. § 112, second paragraph, as indefinite; claims 1-5, 10, 13, 14, 16, 17, and 22 under 35 U.S.C. § 103(a) as unpatentable over Odier; claim 15 under 35 U.S.C. § 103(a) as unpatentable over Odier and Doi; and, claims 6 and 21 under 35 U.S.C. § 103(a) as unpatentable over Odier and Kuroda. Appeal 2011-004977 Application 11/895,585 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh/rvb Copy with citationCopy as parenthetical citation