Ex Parte Bhaskara

Patent Trial and Appeal Board

Mar 28, 2013

11604511 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MOHAN BHASKARA
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Appeal 2011-002528
Application 11/604,511
Technology Center 3600
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Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
BRADFORD E. KILE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002528
Application 11/604,511

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STATEMENT OF THE CASE
Mohan Bhaskara (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 4-17, and 19. App. Br. 4.
Claims 2, 3, 18, and 20 have been cancelled. Id. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 1, 11, and 19 are independent. Claim 1, reproduced below, is
illustrative.
1. An apparatus comprising:
a brake drum;
a substantially hollow, closed container
coupled to the brake drum;
a capillary structure positioned within said
container;
a fluid contained within said container; and
a heat shield coupled to the closed container,
the closed container positioned between the brake
drum and the heat shield such that the closed
container removes heat from one or more of the
brake drum and the heat shield[.]

REJECTIONS
Claims 1, 4-17, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Delpassand (US 5,107,968; iss. Apr. 28, 1992) and “Prior
Art Fig. 1 of the instant specification” (APA) or Midolo (US 4,130,187; iss.
Dec. 19, 1978).
Claims 1, 4-17, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chambers (US 4,944,370; iss. Jul. 31, 1990) and “Prior
Art Fig. 1 of the instant specification” or Midolo.
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Application 11/604,511

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ANALYSIS
Claims 1, 4-17, and 19 – Delpassand and APA or Midolo
Appellant argues claims 1, 4-17, and 19 as a group, and presents
specific arguments only for claim 1. App. Br.10-12. We select claim 1 as
representative of the grouping, and claims 4-17 and 19 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Regarding claim 1, the Examiner found that Delpassand discloses an
apparatus comprising a brake drum (wheel section 12 or torque tube member
27) and a heat shield (53, 70, 80). Ans. 4 (see also Delpassand, col. 2, ll. 59-
63, col. 3, ll. 5-8; fig. 1). The Examiner found Delpassand does not disclose
the claimed substantially hollow, closed container, capillary structure, or
fluid. Id. The Examiner found that APA teaches a heat dissipation device
(100) comprising these claimed features. Id. The Examiner also found that
Midolo teaches a heat dissipation device (osmotic heat transfer elements 26,
28) comprising these features. Id. (see also Midolo, fig.1). The Examiner
concluded that it would have been obvious to one of ordinary skill in the art
to modify Delpassand to include a heat dissipation device as taught by APA
or Midolo “to merely facilitate or further enhance the dissipation of heat,
thereby further protecting the apparatus of Delpassand from damage due to
excessive heat.” Id. at 5. The Examiner also concluded that it would have
been obvious to position the heat dissipation device between the brake drum
and heat shield, as claimed, “since there are only a finite number of locations
to position the heat dissipation device. The Examiner submits that finding a
suitable location or position for a component is a routine practice performed
by those of ordinary skill in the art.” Id.
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Appellant acknowledges that Midolo discloses a brake system
including an osmotic heat transfer element 26, but contends that Midolo
does not disclose a brake drum or a heat shield, and so it cannot disclose a
“closed container positioned between the brake drum and the heat shield.”
App. Br. 10. Appellant acknowledges that Delpassand discloses heat shields
53, 70, and 80, but contends that Delpassand does not disclose a liquid-
containing closed container. Id. Appellant’s contentions appear to be
analyzing the applied references individually. Non-obviousness cannot be
established by attacking references individually where, as here, the rejection
is based upon the teachings of a combination of references. In re Keller, 642
F.2d 413, 425 (CCPA 1981).
Appellant also contends that one skilled in the art would not have
been motivated to combine Midolo and Delpassand because they treat heat
dissipation via different elements. Id. Appellant contends that there is no
teaching or suggestion to combine Midolo and Delpassand. Id. This
argument is foreclosed by KSR, in which the Supreme Court rejected a rigid
requirement of a teaching, suggestion, or motivation to combine known
elements in order to establish obviousness. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418-419 (2007).
Appellant also contends that even if Midolo and Delpassand were
combined:
there is no evidence that that person of skill would
have added a heat shield to Midolo, since the
osmotic heat transfer elements of Midolo
completely surround its braking system 17, thereby
leaving no room for any additional elements.
Consequently, there is no evidence as to where one
of skill in the art would have positioned any such
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Application 11/604,511

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heat shield, especially in light of the fact that
Midolo discloses neither a heat shield nor a brake
drum.
App. Br. 10. Emphasis added. However, the Examiner’s combination adds
a heat dissipation device to Delpassand, and does not add a heat shield to
Midolo. As such, Appellant’s contention does not address the Examiner’s
rejection.
Appellant also contends that the Examiner’s determination that there
are only a finite number of locations to place the heat dissipation device
misses the larger point that it would not have been obvious to fit a braking
system with both a heat shield and a closed container with a capillary
structure, where the capillary structure is positioned to remove heat from
both the brake drum and heat shield. App. Br. 11. Appellant states
“[t]here is no disclosure in the references of record
to use both a heat shield and a closed container
with a capillary structure. The references of record
show either a heat shield (Delpassand, Chambers)
or a heat dissipation device (Midolo). The
references of record do not show, or suggest, the
use of both.”
Id. Appellant also contends that “[t]here is further no disclosure in the
references of record to position the capillary structure such that the capillary
structure removes heat from both a brake drum and a heat shield.” Id.
However, as noted supra, these contentions regarding the need for an
explicit teaching or suggestion in the references are foreclosed by KSR. See
KSR, 550 U.S. at 418-419. In addition, Appellant again appears to be
improperly analyzing the applied references individually. See In re Keller,
642 F.2d at 425.
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We also note that Appellant does not address the Examiner’s
alternative combination of Delpassand and APA. As such, Appellant has not
apprised us of any error in this alternative rejection.
The Examiner articulated a rationale why one skilled in the art would
have desired to combine the teachings of Delpassand and APA or Midolo.
See KSR, 550 U.S. at 418. In response, Appellant does not sufficiently
explain why the Examiner's rationale is unreasonable, or not based on
rational underpinnings.
Appellant contends that there is no evidence of record that either a
heat shield or a heat dissipation device is inadequate. Reply Br. 1. We
agree with the Examiner, however, that one of ordinary skill in the art would
have recognized that using both a heat shield and a heat dissipation device
together, which would perform the same respective functions (i.e., heat
dissipation) in the combination as they do separately, would result in
enhanced heat dissipation management, and would also provide a safety
feature in case one device fails. Ans. 9. The Examiner reasoned that “[o]ne
such location would be between the brake drum and the heat shield, as a
high amount of heat is generated from the frictional engagement of the brake
discs.” Ans. 10. Appellant has not provided any persuasive reason why the
Examiner’s combination of these two known heat dissipation techniques
used in aircraft braking systems, and positioning the heat dissipation device
in the claimed location, would not have yielded predictable results.
Appellant also contends that “the placement of any additional heat
removal devices would require a not insubstantial amount of engineering.”
App. Br. 12; see also Reply Br. 2-3. Appellant states:
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one of skill in the art would not even consider
adding additional temperature removal devices to
brake systems that are so compact in nature. Such
an idea or revelation is in the realm of a person of
greater than ordinary skill in the art, along with the
actual implementation of such an idea.
Consequently, a person of skill would have to turn
to a person of greater than ordinary skill for the
initial concept and for guidance on the engineering
of that concept.
Id. at 12-13. The Examiner acknowledged that “aircraft brakes are known to
be in confined spaces,” however, the Examiner reasoned that “one of
ordinary skill in the art of aircraft brakes must routinely take space into
consideration.” Ans. 11. Appellant does not provide any evidence to
support the contention that the modification of Delpassand’s device
advanced by the Examiner would have been beyond the level of ordinary
skill in the art. Accordingly, this contention is not persuasive.
In view of the above, we sustain the rejection of claim 1, and also
claims 4-17 and 19, as unpatentable over Delpassand, APA, and Midolo.

Claims 1, 4-17, and 19 – Chambers and APA or Midolo
Appellant also argues claims 1, 4-17, and 19 as a group with respect
to this ground of rejection, and presents specific arguments only for claim 1.
App. Br.10-12. We again select claim 1 as representative of the grouping,
and claims 4-17 and 19 stand or fall with claim 1. See 37 C.F.R. §
41.37(c)(1)(vii) (2011).
Regarding claim 1, the Examiner found Chambers discloses an
apparatus comprising a brake drum (drum drive 100 or wheel half 140, or
drum drive 200 or wheel half 240) and a heat shield (155, 255). Ans. 6
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(citing Chambers, figs. 4, 6; see also Chambers, col. 3, ll. 20-23, 36-38; col.
4, ll. 28-30). The Examiner found Chambers does not disclose the claimed
substantially hollow, closed container, capillary structure, or fluid. Id. The
Examiner relied on APA or Midolo for teaching these features. Id. at 7. The
Examiner’s findings regarding APA and Midolo, and the Examiner’s
reasoning and conclusions regarding the modification of Chambers, are the
same as those discussed supra in regard to the combination of Delpassand
and APA or Midolo. Id.
Appellant’s contentions regarding the rejection of claim 1 are the
same as those discussed supra in regard to the rejection of claim 1 over
Delpassand and APA or Midolo. We also note that Appellant does not
address the Examiner’s alternative combination of Chambers and APA. As
such, Appellant has not apprised us of any error in this alternative rejection.
Accordingly, we sustain the rejection of claim 1, and also claims 4-17 and
19, as unpatentable over Chambers and APA or Midolo for similar reasons.

DECISION
The Examiner's decision rejecting claims 1, 4-17, and 19 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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