Ex Parte Fischer et alDownload PDFPatent Trial and Appeal BoardMay 19, 201612774884 (P.T.A.B. May. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121774,884 05/06/2010 23911 7590 05/23/2016 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 FIRST NAMED INVENTOR Rudolf Fischer 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 037068.62332US 8982 EXAMINER HSIAO, JAMES K ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 05/23/2016 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 RUDOLF FISCHER, CHRISTIAN RAFFIN, MICHAEL PESCHEL, and FLORIAN ORGLER Appeal 2014-0050891,2 Application 12/774,884 Technology Center 3600 Before ANTON W. PETTING, PHILIP J. HOFFMANN, and MATTHEWS. MEYERS, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. We reproduce independent claim 1, below, as representative of the appealed claims. 1. A disc brake for a commercial vehicle, the disc brake having a caliper that, in use, straddles a brake disc and is 1 Our decision references Appellants' Appeal Brief ("Br.," filed Oct. 9, 2013) and the Examiner's Answer ("Answer," mailed Jan. 16, 2014). 2 "The real party in interest is KNORR-BREMSE Systeme fuer Nutzfahrzeuge GmbH." Br. 1. Appeal2014-005089 Application 12/774,884 fastened to a carrier in an axially displaceable manner relative to the brake disc, the disc brake comprising: two connecting bearings by which the caliper is axially displaceably fastenable to the carrier, each connecting bearing having a guide bar that rigidly connects to the carrier and is guided in a respective slide bearing of the caliper allowing axial displacement thereof; a radially elastic damping bushing provided for at least one of the two connecting bearings, the radially elastic damping bushing surrounding the guide bar at least in regions and comprises a plurality of grooves delimited laterally by respective ribs; and wherein the damping bushing is operatively configured by use of the grooves and ribs to have a predetermined progressive damping behavior in a radial loading direction of the disc brake. Br., Claims App. REJECTIONS AND PRIOR ART The Examiner rejects claim 1-18 under 35 U.S.C. § 102(b) as anticipated by Halasy-Wimmer,3 and claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over Halasy-Wimmer and Bourgeois (EP 0 141 003 A, pub. May 15, 1985). See Answer 2-6. 3 Although the Examiner relies on WO 2005/124179 Al, published December 29, 2005, in the rejection of the claims (see Answer 2, 5), both Appellants and the Examiner agree that US 2008/0029356 Al, published February 7, 2008, "is an English-language counterpart of' the WO publication (Br. 7; Answer 6). Further, all citations in the Appeal Brief and the Answer are to the US publication. Thus, throughout our opinion, all references to Halasy-Wimmer are to the US publication. 2 Appeal2014-005089 Application 12/774,884 ANALYSIS Independent claim 1 recites "the damping bushing is operatively configured by use of the grooves and ribs to have a predetermined progressive damping behavior in a radial loading direction of the disc brake." Br., Claims App. Appellants argue that the rejection is erroneous because Halasy-Wimmer does not teach a bushing that has a predetermined progressive damping behavior. See id. at 6-9. More specifically, Appellants argue that each ofHalasy-Wimmer's elastic sleeves, sleeves 23, 45, 50, and 55, are described as having insignificant elastic properties, and the elastic properties of each sleeve only serve to compensate for manufacturing tolerances between connected parts and to prevent tilting of pin guides 10 and 20. See id. In response to Appellants' arguments, the Examiner finds that Halasy- Wimmer' s paragraph 26 describes that elastic sleeve 23, which the Examiner finds is located as required by claim 1 and includes the claimed structural limitations of grooves and ribs, has a predetermined progressive damping behavior. See Answer 6-7. Based on our review of the record, including Appellants' arguments and the Examiner's findings and conclusions, we sustain the rejection of claim 1. Specifically, we find that the Examiner's findings and conclusions regarding the progressive damping behavior of sleeve 23, which as stated above appears to teach the structure of the claimed damping bushing, are supported by a preponderance of the evidence. See Answer 6-7. For example, Halasy-Wimmer states that "[the] specific material selection and shape of the employed profiling 25 [of elastic sleeve 23] will thus allow adjusting the desired elastic effect." Halasy-Wimmer i-f 26. We agree with 3 Appeal2014-005089 Application 12/774,884 the Examiner that this reasonably may be understood as describing the claimed "predetermined progressive damping behavior," noting, for example, that Appellants' Appeal Brief does not provide a definition or point to a definition in the record that excludes Halasy-Wimmer's described operation of sleeve 23 from being understood as providing progressive damping. Further, we conclude that Appellants' arguments do not persuasively rebut the Examiner's rejection. Thus, we sustain the rejection of independent claim 1, as well as the rejection of claims 2-18 depending from claim 1, which Appellants do not argue separately. Appellants separately argue the obviousness rejection of claims 19 and 20, which depend from claim 1. See Br. 9-10. Appellants argue the rejection is in error because Bourgeois is non-analogous art to Halasy- Wimmer. See id. We note, however, that [ t ]he analogous-art test requires that the Board show that a reference is either in the field of the applicant's endeavor or is reasonably pertinent to the problem with which the inventor was concerned in order to rely on that reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). References are selected as being reasonably pertinent to the problem based on the judgment of a person having ordinary skill in the art. Id. ("[I]t is necessary to consider 'the reality of the circumstances, '-in other words, common sense-in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor." (quoting In re Wood, 599 F.2d 1032, 1036 ( C. C.P .A.1979)) ). In re Kahn, 441F.3d977, 987 (Fed. Cir. 2006). The Examiner's determinations are sufficient to establish that both references are reasonably pertinent to the problem with which Appellants' were concemed-i.e., "guiding and filtering vibrations between at least two coaxial mechanical 4 Appeal2014-005089 Application 12/774,884 assemblies." Answer 8. Appellants arguments do not persuade us that the Examiner's finding is erroneous. Thus, we sustain the rejection of claims 19 and 20. DECISION We AFFIRM the Examiner's anticipation and obviousness rejections of claims 1-20. 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 5 Copy with citationCopy as parenthetical citation