Ex Parte Baumgartner et al

Patent Trial and Appeal Board

Feb 28, 2017

13251658 (P.T.A.B. Feb. 28, 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.
13/251,658 10/03/2011 Johann BAUMGARTNER 037068.63908US 4303
23911 7590
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
WILLIAMS, THOMAS J
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANN BAUMGARTNER,
ALEKSANDAR PERICEVIC, and STEFFEN GEISSLER
Appeal 2015-001382
Application 13/2 51,65 s1
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Johann Baumgartner et al. (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s Final decision rejecting claims
1—4, 6—16, and 18—22.2 We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Knorr-Bremse
Systeme Fuer Nutzfahrzeuge GmbH. Appeal Br. 1 (filed July 10, 2014).
2 Claims 5 and 17 have been canceled. Appeal Br. A-18, A-21 (Claims
App.).
Appeal 2015-001382
Application 13/251,658
INVENTION
Appellants’ invention “relates to a wet-running multiple disc brake . . .
for a road vehicle, which is wet-running by way of a cooling fluid, and
includes stationary stator discs arranged parallel to and spaced apart from
one another, between which in each case one rotatable rotor disc is
arranged.” Spec. 12.
Claims 1,11, and 20 are independent. Claim 1, reproduced below, is
illustrative of the claimed invention.
1. A wet-running multiple disc brake using a cooling fluid,
the multiple disc brake comprising:
a plurality of stationary stator discs arranged parallel to,
and spaced apart from, one another;
one or more rotatable rotor discs, each rotatable rotor disc
being respectively arranged between adjacent ones of the
stationary stator discs, air gaps being formed between the stator
and rotor discs;
wherein the rotor discs comprise cooling channels Tillable
with cooling fluid immediately before or at a beginning of a
braking operation in which the stator discs and rotor discs are
pressable against one another while overcoming the air gaps and
separable from one another while again forming the air gaps after
releasing the braking operation.
Appeal Br. A-18 (Claims App.).
REJECTIONS
I. The Examiner rejected claims 1—3 and 10 under 35 U.S.C.
§ 102(b) as anticipated by Shimamura (US 5,240,095, iss. Aug.
31, 1993).
II. The Examiner rejected claims 4 and 6—8 under 35 U.S.C.
§ 103(a) as unpatentable over Shimamura and Daigre (US
2006/0081423 Al, pub. Apr. 20, 2006).
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III. The Examiner rejected claims 11, 12, 14, 16, and 18 under
35 U.S.C. § 103(a) as unpatentable over Shimamura and Klaus
(US 3,259,216, iss. Aug. 18, 1964).
IV. The Examiner rejected claims 13, 15, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Shimamura, Klaus and, Natsume
(JP 404087864A, iss. Mar. 19, 1992).
V. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Iverson (US 4,358,001, iss. Nov. 9, 1982)
and Diagre.
VI. The Examiner rejected claim 21 under 35 U.S.C. § 103(a) as
unpatentable over Iverson and Shimamura.
VII. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Shimamura, Klaus, and Iverson.
ANALYSIS
Rejection I
The Examiner finds Shimamura discloses a wet-running disc brake
with each and every element independent claim 1 recites. Final Act. 2, 7, 8.
Regarding these findings, Appellants raises two objections. Appeal Br.
6—12. First, Appellants argue Shimamura does not disclose a plurality of
stator discs. Id. at 6—11. Second, Appellants argue the Examiner fails to
identify any evidence Shimamura discloses, “wherein the rotor discs
comprise cooling channels tillable with cooling fluid immediately before or
at a beginning of a braking operation.” Id. at 11—12. For the following
reasons, Appellants have not persuasively demonstrated an error with the
rejection.
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Appellants’ first challenge focuses on the fact that Shimamura teaches
the disclosed invention in the context of a multiple plate clutch for an
automatic transmission. Id. at 6—11. In this embodiment, the disclosed
hydraulic frictional device has a driving clutch drum 1, a driven clutch hub
2, and a set of interleaved friction or clutch plates. The interleaved plates
are comprised of a plurality of driving plates 3 splined to the clutch drum 1
and driven plates 4 splined to the clutch hub 2. Thus, in this embodiment,
both sets of plates are subject to rotational movement.
Nevertheless, the Examiner’s rejection does not rely upon the multiple
plate clutch embodiment of the hydraulic frictional device Shimamura
teaches. Instead, the Examiner relies on Shimamura’s express teaching that
the disclosed hydraulic frictional device is also applicable to a multiple plate
brake. Although Shimamura does not specifically describe the invention
using a multiple plate brake, the Examiner finds a skilled artisan would
recognize that, in such an embodiment, the interleaved friction plates would
have a configuration in which plates 4 would remain stationary. Final Act.
2, 7, 8. The Examiner explains the rationale for this finding as follows:
One of the two disclosed rotating structures 1 and 2 will
simply remain stationary when the disclosed prior art is used as
a multiple plate brake, as envisioned by Shimamura et al. As
stated by the Office, it stands to reason that structure 2 is best
selected as the stationary structure, since it is provided with the
hydraulic connections used for operating the piston 6. The hub
structure 2 is provided with a fixed skirt that supports splined
discs 4, which are interpreted as the plurality of stationary stator
discs. Contrary to the assertions of the appellant, the Office has
never changed nor abandoned its position regarding the
stationary stator discs, since discs 4 when splined to the skirt and
hub structure 2, will not rotate. Since discs 4, hub 2 and its
associated skirt is an integral unit, then any remarks regarding
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one of the discs 4 or the hub 2 are applicable to the other. With
discs 4 designated as the stationary stator discs, then discs 3 are
designated as the rotatable rotor discs. Discs 3 are splined to the
second structure 1, which is interpreted as the rotating structure.
This is consistent with a brake apparatus, in that one structure is
kept stationary and the second structure is rotatable.
Ans. 2—3.
Importantly, Appellants do not challenge the Examiner’s finding that,
when the Shimamura hydraulic frictional device is applied to a braking
system, plates 4 would be held stationary and, therefore, quality as a
plurality of stationary stator discs. See Appeal Br. 6—12.
Appellants instead contend Shimamura’s hydraulic frictional device is
applicable only to an automatic transmission. According to Appellants,
“Shimamura is directed to automatic transmissions, and more particularly to
frictional devices used in automatic transmissions, such as clutch packs (i.e.,
multiple plate clutch) and brake bands (i.e., multiple plate brake).” Reply
Br. 2. “Shimamura merely chooses to use the words ‘multiple plate clutch’
and ‘multiple plate brake’ to respectively refer to what is ordinarily known
in the United States, as a ‘clutch pack’ and ‘brake bands.’” Id.
We do not find Appellants’ argument persuasive. Shimamura states
expressly, “[although in the previously described embodiments, the
invention has been applied to the multiple plate clutch, the invention is
applicable to a multiple plate brake.’ '' Shimamura, col. 4,11. 14—17
(emphasis added). Appellants’ suggestion that “multiple plate brake”
actually refers to “brake bands'’’ lacks merit. Appellants’ argument asks us
to ignore the express language of Shimamura for an alternative interpretation
without providing any supporting evidence. Notably, Appellants do not
identity a single example in which a hydraulic frictional device uses
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interleaved “bands” in an automatic transmission application, nor do
Appellants attempt to explain how Shimamura’s teachings for “plates”
would correspond to “bands” in an automatic transmission application. We
note, however, Iverson (a reference the Examiner relies upon for claim 20)
evidences interleaved plates were a known configuration for a multiple plate
braking system (see Iverson, col. 3,11. 23—42, Fig. 1). Therefore, Appellants
have not demonstrated the Examiner erred by finding a skilled artisan would
understand that plates 4 are stationary in Shimamura’s hydraulic frictional
device, when applied in a multiple plate brake embodiment.
Appellants’ second challenge to the rejection of claim 1 makes a valid
point that in the Final Action the Examiner did not clearly set forth how
Shimamura discloses, “wherein the rotor discs comprise cooling channels
tillable with cooling fluid immediately before or at a beginning of a braking
operation.” Appeal Br. 11—12. Appellants argue, “since no evidence is
provided to show that Shimamura either expressly or inherently discloses the
above-referenced features, the rejection is improper.” Id. at 12.
After considering Appellants’ argument, the Examiner makes the
following findings,
[i]t is noted that the invention of Shimamura et al. is a annular
plate structure that is cooled using a fluid passing within the
plates themselves. The fluid is stored within the cavity defined
between the two primary structures 1 and 2, and will be
continuously dispensed through the internal channels of the
rotating discs 3. As such the channels of discs 3 will have a
cooling fluid filled therein, due in part to the rotation of discs 3.
Ans. 3. Appellants argue that these findings remain deficient. Reply Br. 8.
Appellants contend specifically,
Although the Examiner’s assertion may be relevant to a period
of time during which Shimamura’s automatic transmission is in
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operation, this feature expressly requires “immediately before or
at a beginning of.” No evidence, either express or inherent, has
been provided to show that Shimamura discloses what happens
“immediately before or at a beginning of’ the operation of its
automatic transmission.
Id. We are not persuaded the alleged deficiency exists because Appellants’
contentions are not commensurate with the scope of the claim language.
Claim 1 does not recite any limitation that, to satisfy, requires the
Examiner to provide evidence of what happens “immediately before or at a
beginning of’ the operation. Instead, claim 1 simply requires a showing that
Shimamura discloses rotor discs with cooling channels that are “fillable”
with cooling fluid immediately before or at a beginning of a braking
operation. In other words, regardless of whether Shimamura discloses the
cooling channels as being filled immediately before or at the beginning of
operation, claim 1 simply requires a cooling channel structure that are able
to be filled immediately before or at the beginning of operation.
A preponderance of the evidence supports the Examiner’s finding
Shimamura provides such a disclosure. Notably, Appellants does not
dispute the Examiner’s finding that “the fluid is stored within the cavity
defined between the two primary structures 1 and 2, and will be
continuously dispensed through the internal channels of the rotating discs 3.”
Because the rotary discs of Shimamura have cooling channels in which
cooling fluid flows, the Examiner has established by a preponderance of the
evidence that those channels are “fillable” with cooling fluid immediately
before or at a beginning of a braking operation, which has not been rebutted.
See Shimamura, 2:65—3:2.
Therefore, for the foregoing reasons, we sustain the Examiner’s
finding Shimamura anticipates claim 1.
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Adding to claim 1, claim 2 recites, “outlet nozzles operatively
configured to direct cooling fluid from the cooling channels toward an outer
circumference.” Appeal Br. A-17 (Claims App.). Appellants have not
challenged the Examiner’s finding that Shimamura discloses this limitation.
See Final Act. 3; Appeal Br. 6—11. Furthermore, Appellants do not argue
claim 2 is separately patentable over claim 1. Id. at 12.
Claim 3 further limits the outlet nozzles of claim 2 to having “a cross-
sectional dimension that is a function of a predefined rotational speed of the
rotor discs and a predefined throughflow quantity of the cooling fluid.”
Appeal Br. A-17 (Claims App.). Appellants argue Shimamura fails to
disclose this limitation. Specifically, Appellants make the following
allegations,
Shimamura could not reasonably disclose these features because
the only disclosure of Shimamura regarding opening 36
(allegedly corresponding to the claimed nozzle) is that ‘an outlet
end opening [is disposed] at an outer periphery 36 of the core.”
See Shimamura at col. 2, lines 45-48. As such, Shimamura is
silent regarding a “cross-sectional dimension” of opening 36, let
alone that the cross-sectional dimension of opening 36 is “a
function of a predefined rotational speed of the rotor disc and a
predefined throughflow of the cooling fluid,” as recited in claim
3.
Id. at 12. Appellants do not dispute the outlet nozzles of Shimamura have a
“cross sectional dimension,” however. Reply Br. 9 (“Appellants are not
arguing for patentability based on the existence of a ‘cross sectional
dimension.’”). “Rather, Appellants’ argument is that there is no express or
inherent teaching in Shimamura that the cross sectional dimension of
Shimamura’s [outlet nozzle] opening 36 is a function of a predefined
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rotational speed of the rotor discs and a predefined through flow quantity of
the cooling fluid, as required by claim 3.” Id.
Appellants do not present any evidence, or even explain why, the
Shimamura outlet nozzles are not a function of a predefined rotational speed
of the rotor discs and/or a predefined throughflow of the cooling fluid.
Instead, Appellants rely purely on attorney argument to assert, “Shimamura
could not inherently disclose these features because Shimamura does not
event [sic] mention ‘rotational speed of the rotor discs’ or a ‘throughflow
quantity of the cooling fluid.’” Id. at 9—10. Thus, the issue is whether the
Examiner made a prima facie case.
The Examiner notes properly that claim 3 is broad because there are
no recited limits to the predefined throughflow quality of cooling fluid for
any particular predefined rotational speeds. Ans. 3. The Examiner finds,
the channels 31 in the rotor discs of Shimamura et al. consist of
openings at the periphery, in the same manner as the instant
invention. The very nature of the channel or passage being a bore
will result in a cross-sectional dimension. This set dimension
will allow a predefined throughflow quantity of cooling fluid
starting at some predefined rotational speed.
Final Act. 8. Thus, the very nature of the cross-sectional dimension for the
channel within a rotary disc, which is operatively configured to direct
cooling fluid from the cooling channels toward an outer circumference, will
necessarily allow a predefined quantity of cooling fluid to throughflow at a
predefined rotational speed.
A rational underpinning supports the Examiner’s finding. Whatever
the cross-section dimension is for the Shimamura outlet nozzle, it
necessarily follows that the amount of cooling fluid is affected by the size of
the outlet nozzle. This is because the quantity of cooling fluid that may pass
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through the nozzle directly depends on and varies with the cross-sectional
dimension of the opening. Moreover, because the nozzle is “operatively
configured to direct cooling fluid from the cooling channels toward an outer
circumference” using the centrifugal force created by the rotary disc, the
rotational speed of the discs necessarily affects the flow of cooling fluid
through the nozzle. This is because the amount of force used to move the
cooling fluid toward an outer circumference depends on and varies with the
rotational speed of the discs. These are merely applications of fundamental
principles of physics. See Shimamura, 2:65—3:2 (fluid flow rate through the
channels is sufficient to suppress heat accumulation in each plate).
Shimamura’s silence regarding the functional relationship between the
cross-sectional dimension of the nozzle, the predefined quantity of cooling
fluid, and rotational speed of the rotor discs, does not persuade us otherwise.
The Federal Circuit has held that “inherency is not necessarily conterminous
with knowledge of those of ordinary skill in the art. Artisans of ordinary
skill may not recognize the inherent characteristics of functioning of the
prior art.” In re Omerprazole Patent Litigation, 483 F.3d 1364, 1373 (Fed.
Cir. 2007) (citations and quotations omitted). “[A] prior art reference
without express reference to a claim limitation may nonetheless anticipate
by inherency.” Id. The Examiner, in this case, has established a prima facie
case the nozzle structure Shimamura discloses satisfies the limitations of
claim 3, which Appellants have not persuasively rebutted.
Finally, Appellants do not argue claim 10 is separately patentable, but
that it is patentable because of the alleged deficiencies with claim 1.
Because we disagree the Examiner’s rejection of claim 1 is deficient,
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Appellants have not persuasively shown the rejection of claim 10 was
improper.
In summary, for the foregoing reasons, we sustain the Examiner’s
rejection of claims 1—3 and 10.
Rejections II—IV
For Rejection II, Appellants do not present any challenges. See
Appeal Br. 6—12. For rejections III—IV, Appellants argue that the claims are
patentable because the same alleged deficiencies exist for independent claim
11 as were asserted for claim 1. Id. Specifically, Appellants contend
Shimamura fails to disclose a plurality of stationary stators or rotor discs
tillable with cooling fluid immediately before or at a beginning of a braking
operation. Id. at 13. Moreover, Appellants assert the additional prior art
cited does not cure the error. Id. We remain unpersuaded for the same
reasons articulated above for claim 1 (see supra Rejection I) that the
Examiner’s rejection suffers from such deficiencies. Therefore, we sustain
the Examiner’s rejection of claims 4, 6—8, 11—16, 18, and 19.
Rejections V—VII
For rejection V, which addresses only claim 20, Appellants raise a
matter of claim interpretation regarding the claim element, “each of the
rotatable rotor discs has a cooling channel that is configured to be tillable
with the cooling fluid.” Appeal Br. 14—16. In particular, Appellants argue
that the cooling grooves 38b of Iverson are not the recited “cooling
channels” because they are situated between the faces of the rotary discs. Id.
at 14. The Examiner concludes, “grooves 38b of Iverson are properly
interpreted as channels” because the claim merely “recites a cooling channel
configured to be filled with a cooling flood” and lacks any further structural
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limitations requiring it to be within the discs. Ans. 4. The Examiner has the
better position.
According to Appellants, the Specification is supportive of their
interpretation. Appeal Br. 14. But, Appellants have not identified any
evidence from the Specification demonstrating a clear intention to either
provide a special definition or limit the meaning of the phrase “cooling
channel” to a cavity between the faces of the rotary discs. While we agree
Figure 1 shows a “cooling channel” between the rotary disc faces, we do not
agree the Specification indicates clearly an intention to limit “cooling
channel” to that exemplary embodiment.
Appellants also point to several definitions in a general purpose
dictionary for the term “channel.” Id. Appellants, without any support from
the Specification or the claims, have selected definitions relating to a
geographical body of water and ignored the following structural definition,
“a long gutter, groove, or furrow.” See Channel Definition, Meriam-
Web ster. com, http ://www. merriam-web ster. com/dictionary/channel (last
visited on February 14, 2016) (emphasis added). It is difficult to understand
why a definition related to a passageway of water in a geographical context
is relevant to the Appellants’ claimed apparatus. On the other hand, a
“groove” is a well-understood structure that may be used to direct fluids,
moreover, the word “channel” is used in the context of Appellants’ claims to
describe a structure for directing cooling fluid. Thus, the plain meaning of
“channel” is actually contrary to an interpretation that excludes “grooves”
from the broadest reasonable interpretation of “cooling channel.”
This position is confirmed by Iverson, which uses “groove” and
“channel” interchangeably to describe a cavity for cooling fluid to pass
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through. See Iverson, Abstract, 1:42-45, 2:13—14, 4:45—53, 5:5—47.
Evidence of how a skilled artisan would generally understand particular
words can also come from the prior art. “Prior art references may be
‘indicative of what all those skilled in the art generally believe a certain term
means . . . [and] can often help to demonstrate how a disputed term is used
by those skilled in the art.’” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir.
1999) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 1584
(Fed. Cir. 1996)). “Accordingly, the PTO’s interpretation of claim terms
should not be so broad that it conflicts with the meaning given to identical
terms in other patents from analogous art.” Id. Therefore, we agree with the
Examiner that the broadest reasonable interpretation of “cooling channel”
includes the grooves Iverson discloses.
Because Appellants’ argument against the rejection of claim 20
depends on an erroneous interpretation of “cooling channel,” Appellants’
argument is unpersuasive. Therefore, we sustain the Examiner’s rejection of
claim 20.
Regarding Rejections VI and VII, Appellants do not allege any error.
See Appeal Br. 13—16. Therefore, we also summarily sustain the
Examiner’s rejection of claims 21 and 22.
DECISION
The Examiner’s rejection of claims 1—4, 6—16, and 18—22 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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