Ex Parte Baumgartner

Board of Patent Appeals and Interferences

Jul 14, 2011

11652519 (B.P.A.I. Jul. 14, 2011)

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.
11/652,519 01/12/2007 Johann Baumgartner 037068.58611US 3381
23911 7590 07/15/2011
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
NGUYEN, XUAN LAN T
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
07/15/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHANN BAUMGARTNER
____________

Appeal 2009-013146
Application 11/652,519
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
GAY ANN SPAHN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Johann Baumgartner (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting under 35 U.S.C. § 102(b) claims 14, 16,
and 18-20 as anticipated by Scott (US 4,352,414, issued Oct. 5, 1982), and
rejecting under 35 U.S.C. § 103(a) claim 17 as unpatentable over Scott and
Einchcombe (US 4,082,167, issued Apr. 4, 1978) and claim 21 as
unpatentable over Scott and Appellant’s Admitted Prior Art (Figures 1-3 of
Appellant’s Drawings) (hereafter “AAPA”). Claims 1-13 and 15 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a mounting arrangement for a brake
including a brake caliper 2 surrounding brake disc 3 and fixed to lugs 20, 21,
which extend radially from axle shaft 22 and are oriented at an angle to the
brake disc 3, such that lugs 20, 21 are substantially free of bending moments
(fig. 4) or the bending moments acting on the lugs are of equal magnitude
(figs. 5 and 6). Spec. 9, para. [0036] and Spec. 11, para. [0044].
Claims 14 and 21 are representative of the claimed invention and read
as follows:
14. A mounting arrangement for a disc brake, having a caliper and
brake disc, on a vehicle axle, the disc brake being subject to forces
tending to skew the caliper relative to the brake disc during operation,
the mounting arrangement comprising:
at least two fixing lugs operatively configured to extend radially
from the vehicle axle in different directions, each lug providing a
respective fixing point, wherein the respective fixing points secure a
component of the disc brake to the two fixing lugs;
wherein at least one of the fixing lugs is oriented to extend
radially at an angle relative to a plane of the brake disc, said angle of
the at least one fixing lug and an orientation relative to the plane of
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the brake disc of the other fixing lug being operatively defined to
arrange the fixing points at defined locations, wherein the locations of
the fixing points allow the fixing lugs to substantially counteract the
forces tending to skew the caliper relative to the brake disc during
operation.

21. A process for making a mounting arrangement for a disc brake
having a caliper and a brake disc, the caliper being mounted to a
vehicle axle via at least two fixing points, each fixing point being
formed on a respective fixing lug which extends radially away from
the vehicle axle in different directions, the method comprising the acts
of:
determining skewing forces which would occur during
operation of the disc brake to cause skewing of the caliper relative to
the brake disc;
determining an orientation of the fixing lugs extending radially
from the axle shaft at an angle relative to a plane of the brake disc that
will counteract the skewing forces based on a location of the fixing
points; and
forming the mounting arrangement with the fixing lugs having
the determined orientation.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Independent claim 14 recites a mounting arrangement for a disc brake
including at least two fixing lugs having respective fixing points at defined
locations that allow the fixing lugs to “substantially counteract the forces
tending to skew the caliper” during braking. Br., Claims Appendix. The
Examiner found that Scott teaches a mounting arrangement for a disc brake
including fixing lugs 24, 25 that extend in different directions from the axle
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29 such that each lug 24, 25 provides a respective fixing point 21, 22. Ans.
3. The Examiner further found that the locations of fixing points 21, 22 in
Figure 2 of Scott “allow the fixing lugs to substantially counteract the forces
tending to skew the caliper relative to the brake disc during operation.” Ans.
3-4. Pointing to Section 2114 of the MPEP, the Examiner concluded that
because Scott teaches all the structural elements of claim 14, the structure of
Scott “would be able to counteract the forces as an inherent result for having
the same structures,” and as such, “Scott anticipates the instant claimed
invention of claim 14.” Ans. 4 and 8. Emphasis added.
At the outset, it appears that the Examiner is relying on a theory of
inherency to establish that lugs 24, 25 are oriented such as to counteract the
forces tending to skew the caliper. The jurisprudence is such that a prior art
reference without expressed reference to a claim limitation may nonetheless
anticipate by inherency. See In re Cruciferous Sprout Litigation, 301 F 3d.
1343, 1349 (Fed. Cir. 2002). “Under the principles of inherency, if the prior
art necessarily functions in accordance with, or includes, the claimed patent
limitations, it anticipates.” Id.
The question raised by the jurisprudence is whether the orientation of
Scott’s lugs 24, 25 and their respective fixing points 21, 22 necessarily
counteract the forces tending to skew the caliper during operation of the
brake. While the Examiner correctly points out that lugs 24, 25 and their
respective fixing points 21, 22 are oriented at an angle relative to the plane
of the brake disc 30, this in no way demonstrates that the angle is such that
the forces tending to skew the caliper during brake operation are
counteracted, as the Examiner contends. In other words, just because Scott’s
lugs 24, 25 and their respective fixing points 21, 22 are oriented at an angle
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relative to the plane of the brake disc 30, it does not necessarily mean that
the angle is such that the forces tending to skew the caliper are counteracted
during operation of Scott’s brake. Furthermore, we note that Scott lacks any
teaching regarding skewing forces during brake operation. Therefore, the
Examiner’s finding that that the angular orientation of Scott’s lugs 24, 25
and their respective fixing points 21, 22 counteracts the forces tending to
skew the caliper during brake operation is mere speculation and conjecture
based on an unfounded assumption that any angular orientation would
necessarily counteract the forces tending to skew the caliper during brake
operation. Accordingly, the rejection of independent claim 14 and its
respective dependent claims 16 and 18-20 under 35 U.S.C. § 102(b) as
anticipated by Scott cannot be sustained.
With respect to the rejection of claim 17, the addition of Einchcombe
does not remedy the deficiencies of Scott as described above. Therefore, the
rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Scott and Einchcombe likewise cannot be sustained.
Finally, with respect to independent claim 21, although we appreciate
that AAPA discloses that skewing forces are known, nonetheless, the
addition of AAPA does not remedy the deficiency of Scott as described
above. That is, since Scott fails to disclose an angle that allows forces
tending to skew the caliper to be counteracted during brake operation, the
combined teachings of Scott and AAPA fail to disclose a step of
“determining an orientation of the fixing lugs … at an angle relative to a
plane of the brake disc that will counteract the skewing forces based on a
location of the fixing points,” as called for by claim 21. Hence, we shall not
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sustain the rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable
over Scott and AAPA.

SUMMARY
The decision of the Examiner to reject claims 14 and 16-21 is
reversed.

REVERSED

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