Ex Parte England et al

Board of Patent Appeals and Interferences

Dec 1, 2009

11127807 (B.P.A.I. Dec. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TOM PETER ENGLAND, PAUL ANTHONY THOMAS,
PAUL ROBERTS and SIMON FISHER
____________

Appeal 2009-004316
Application 11/127,807
Technology Center 3600
____________

Decided: December 1, 2009
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Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/127,807

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STATEMENT OF THE CASE
Tom Peter England et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-11, 13-16, and 18-39.
Claim 17 has been canceled. Claim 12 is objected to by the Examiner as
being dependent upon a rejected base claim.1 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b) (2002).

THE INVENTION
Appellants’ invention relates to a brake assembly 60 including a
caliper 61, a brake pad, an actuator to force the brake pad into engagement
with a rotor, an adjuster mechanism having an adjuster shaft 64 for
compensating brake pad wear, and a wear indicator assembly 66 having a
first component 67 threadingly engaged to an indicator pin 68 and a manual
adjuster shaft cap 69. Spec. paras. [32] and [33], and fig. 4. The adjuster
mechanism compensates for break pad wear by rotating adjuster shaft 64 in
the direction of arrow H, which in turn causes the first component 67 to
rotate by an equivalent amount. Spec. para. [39] and fig. 4. As the brake
pads wear, the threaded engagement between the first component 67 and the
indicator pin 68 will progressively draw the pin 68 inwardly, thereby
reducing the distance G by an amount proportional to the amount of pad
wear. Spec. para. [40], and figs. 4 and 5.
Claim 1 is representative of the claimed invention and reads as
follows:

1 The Examiner indicated that claim 12 is allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claim. Final Rejection 7, mailed Jul. 16, 2007. Claim 12 is not
part of the instant appeal.
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1. A brake assembly comprising:

a caliper;

a first brake pad;

an actuator to force the first brake pad into
engagement with a rotor; and

an adjuster mechanism to compensate for wear of
the first brake pad, wherein the adjuster
mechanism includes a rotating component that
rotates substantially in proportion to an amount of
wear of the first brake pad and is manually
operable to de-adjust the adjuster mechanism when
replacement of the first brake pad is required, the
rotating component is operably coupled to a pad
wear indicator mounted on the caliper, the pad
wear indicator visually indicates the amount of
wear of the first brake pad, and visual indication of
the amount of wear by the pad wear indicator takes
place at the caliper.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Harrup US 5,931,266 Aug. 3, 1999
Dahlen US 6,076,639 Jun. 20, 2000
Ward US 6,276,494 B1 Aug. 21, 2001

The following rejections are before us for review:
The Examiner rejected claims 1-11, 13-16, and 18-39 under 35 U.S.C.
§ 103(a) as unpatentable over Ward and Harrup or Dahlen.
The Examiner rejected claims 1-11 and 13-39 under 35 U.S.C.
§ 103(a) as unpatentable over Dahlen and Ward.
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THE ISSUES
The obviousness rejection over Ward and Harrup or Dahlen
The Examiner found that Ward discloses all the features of
independent claims 1, 13, 14, and 24 with the exception of a “specific
statement has [sic] to the visual indication of the amount of wear by the pad
wear indicator at the calliper.” Ans. 3. Pointing to column 5 of Ward, the
Examiner takes the position that because the tool 138 of Ward acts on the
lead screw 107 to set “the dimension X for the wear sensor,” then
“presumably there is the capability of a visual wear assessment ‘at the
caliper.’” Ans. 4. Relying on the teachings of Harrup or Dahlen, the
Examiner then showed that “it is notoriously well known in the art to
provide visual indication of the amount of pad wear at the calliper.” Ans. 4.2
Finally, the Examiner concluded that:
[O]ne having ordinary skill in the art at the time of
the invention would have found it obvious to have
utilized the tool 138 (or other similar device such
as a feeler gauge) in Ward to provide a visual
indication of the amount of wear of the brake
linings at the caliper during service, or repair (as
discussed in col. 2 of Ward), or to as a security
check to make sure that the wear measured by the
electrical sensor is in fact accurate and functioning
properly.
Id.

2 A conventional mechanical method of measuring brake wear is by
measuring, through a cavity in the flange of an axle casing and in the brake
piston, with a special tool against countersurfaces and discs of the brake, and
comparing these measurements to calculate the thickness of the lining.
Dahlen, col. 1, ll. 30-35.

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According to the Examiner, a mechanic would be capable of making a
visual assessment of the current existing amount of pad wear by (1) using
the tool 138 of Ward, a feeler gauge, or other specialized tool to visually
determine the amount of wear or (2) by making a simple visual inspection of
Ward’s wear indicator. Ans. 9.
Accordingly, the first issue for our consideration is whether the
combined teachings of Ward and Dahlen or Harrup disclose a pad wear
indicator that provides a visual indication at the caliper of the amount of pad
wear, as required by each of independent claims 1, 13, 14, and 24.

The obviousness rejection over Dahlen and Ward
Appellants argue that it would not have been obvious to employ the
wear adjustment mechanism of Ward in the brake system of Dahlen because
the thickness of the friction material on each side of the brake disc of Dahlen
is 2 mm, and as such there would be no reason to employ a wear adjustment
mechanism with such a thin friction material layer. Br. 8. In response, the
Examiner does not answer Appellants’ argument, but merely states that
because “Ward and Dahlen et al. teach similarly constructed wear indicators
that show similar rotational mechanical components used to produce
translational movement of the rods 22 and 107 respectively,” it would have
been obvious to a person of ordinary skill in the art “to provide a well known
brake with a well known form of adjustment device.” Ans. 7.
Accordingly, the second issue presented for our consideration is
whether Appellants have shown that the Examiner failed to provide a
sufficient reason with a rational underpinning to explain why a person of
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ordinary skill in the art would have modified the brake assembly of Dahlen
to include the wear adjustment assembly of Ward.

SUMMARY OF DECISION
We REVERSE.
OPINION
Issue (1)
Although we appreciate the Examiner’s position that when servicing a
brake, the mechanic would be capable of making a visual assessment of the
current existing amount of pad wear using a specialized tool, we note that
each of independent claims 1, 13, 14, and 24 requires that the pad wear
indicator itself provide a visual indication at the caliper of the amount of pad
wear. Ward discloses an electronic wear sensing means 60 including a
potentiometer 101 operated by linear movement of transmission rod 102, a
rotatable follower member 106, and an adjuster member 107 that contacts
rod 102. Ward, col. 4, ll. 17-60, and figs. 2 and 3. A person of ordinary
skill in the art would have readily appreciated that an electronic pad wear
sensor does not provide a visual indication at the caliper of the amount of
pad wear. Hence, the wear sensing means 60 of Ward is not a pad wear
indicator that provides a visual indication at the caliper of the amount of pad
wear. Although Dahlen and Harrup disclose brake pad wear indicators that
provide a visual indication of the pad wear, the Examiner specifically states
that the teachings of Dahlen (and Harrup) were not relied upon as a
substitution for the electrical wear sensor of Ward. Ans. 8. See also Ans. 4.
Accordingly, we find that the Examiner’s proposed combination of the
teachings of Ward and Dahlen or Harrup does not teach or suggest a pad
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wear indicator that provides a visual indication at the caliper of the amount
of pad wear, as required by each of independent claims 1, 13, 14, and 24.
For the above stated reasons, we conclude that Appellants have
established that the Examiner has not discharged the initial burden of
establishing a prima facie case of obviousness of the subject matter of
independent claims 1, 13, 14, and 24 or their dependent claims 2-11, 15-23,
and 25-39. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious). Therefore, the rejection of claims 1-
11, 13-16, and 18-39 cannot be sustained.

Issue (2)
It is undisputed that Dahlen fails to disclose a wear adjustment
mechanism. Ans. 7. Ward is directed to a vehicle brake assembly including
floating caliper 3, brake pads 4, 5, brake disc 1, brake actuating device 6,
return adjuster shaft 52 (adjustment mechanism), and electronic wear
sensing means 60. Ward, col. 2, l. 65 through col. 3, l. 11; col. 3, l. 43; col.
4, ll. 14-16; and fig. 1. Although Ward discloses that it is known to provide
a wear adjustment mechanism to a vehicle brake assembly, we find the
Examiner’s rejection insufficient to explain what in the prior art would have
prompted a person having ordinary skill in the art to provide the wear
adjuster mechanism of Ward to the brake assembly of Dahlen. Rejections
on obviousness grounds must be supported by “some articulated reasoning
with some rational underpinning” to combine the known elements in the
manner required in the claim at issue. KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Beyond a conclusory statement that it would have
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been obvious to a person of ordinary skill in the art “to provide a well known
brake with a well known form of adjustment device,” the Examiner has not
articulated any reasoning with rational underpining as to why a person
having ordinary skill in the art would provide the wear adjuster mechanism
of Ward to the brake assembly of Dahlen. Further, the Examiner has not
provided any findings that either Dahlen or Ward recognized a problem with
the brake assembly of Dahlen so as to include the wear adjustment
mechanism of Ward. Furthermore, we disagree with the Examiner’s
position that “Ward and Dahlen et al. teach similarly constructed wear
indicators” (see Ans. 7). The wear sensor assembly of Ward is an electronic
system, whereas that of Dahlen is mechanical.3 As such, we do not find that
an electronic system is “similarly constructed” as a mechanical system, as
the Examiner suggests. In conclusion, absent hindsight, we see no reason,
and the Examiner has not provided an adequate articulation of a reason, why
a person of ordinary skill in the art would have been led to employ the
adjuster mechanism of Ward to the brake assembly of Dahlen.
For the above stated reasons, we conclude that the Appellants have
established that Examiner has not discharged the initial burden of
establishing a prima facie case of obviousness of the subject matter of claims
1-11 and 13-39. Accordingly, the rejection of claims 1-11 and 13-39 under
§ 103 as unpatentable over Dahlen and Ward cannot be sustained.

3 The wear indicator 11 of Dahlen includes an adjustable measuring rod
12 having a tube 16 and a pin 18 partially inserted in the tube 16, a nipple
20, a flange nut 27, and a calibration cap 30. Dahlen, col. 2, ll. 58-63; col. 3,
ll. 3-16; and fig. 2.
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CONCLUSIONS
Appellants have shown that the Examiner erred in finding that the
combined teachings of Ward and Dahlen or Harrup disclose a pad wear
indicator that provides a visual indication at the caliper of the amount of pad
wear.
Appellants have shown that the Examiner failed to provide a sufficient
reason with a rational underpinning to explain why a person of ordinary skill
in the art would have modified the brake assembly of Dahlen to include the
wear adjustment assembly of Ward.

SUMMARY
The decision of the Examiner to reject claims 1-11, 13-16, and 18-39
is reversed.

REVERSED

Klh

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