Ex Parte Gilles

Board of Patent Appeals and Interferences

Mar 26, 2007

10829536 (B.P.A.I. Mar. 26, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LEO GILLES
____________

Appeal 2006-2793
Application 10/829,536
Technology Center 3600
____________

Decided: March 26, 2007
____________

Before JENNIFER D. BAHR, ROBERT E. NAPPI, and
LINDA E. HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Leo Gilles (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-28. We have jurisdiction over this
appeal under 35 U.S.C. § 6.
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Application 10/829,536

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Appellant invented a disc brake provided with two brake shoes, an
actuator device for actuating at least one of the brake shoes, a force
transducer disposed in a force transmission path between the actuator device
and the at least one of the brake shoes, and a force limiting arrangement for
limiting the maximum force acting upon the force transducer. The three
independent claims involved in this appeal read as follows:
1. A disc brake comprising:

a brake disc having two opposite sides;

two brake shoes, which for generating
a clamping force are pressable against
both sides of the brake disc;

an actuator device for actuating at least one
of the brake shoes; and

at least one force transducer disposed in a
first force transmission path between the
actuator device and at least one of the brake
shoes, wherein a maximum component of
force acting upon the force transducer upon
generating of the clamping force is limited.

26. A disc brake comprising:

a brake disc;

two brake shoes pressable against the brake
disc for generating a clamping force;

an actuator for actuating at least one of the
brake shoes;

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a force transducer arranged between the
actuator and at least one of the brake shoes;
and

a force limiting assembly for limiting the
force acting upon the force transducer upon
generation of the clamping force.

27. A disc brake comprising:

a brake disc;

two brake shoes pressable against the brake
disc for generating a clamping force;

an actuator for actuating at least one of the
brake shoes;

a first force transmission path arranged
between the actuator and at least one of the
brake shoes;

a force sensing element disposed in the first
force transmission path; and

a second force transmission path arranged
between the actuator and at least one of the
brake shoes, the second force transmission
path bypassing the force sensing element.

The Examiner relies upon the following as evidence of
unpatentability:
Rinsma WO 99/37939 Jul. 29, 1999

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Application 10/829,536

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Appellant seeks review of the Examiner’s rejections of claims 1-3 and
7-28 under 35 U.S.C. § 102(b) as anticipated by Rinsma and claims 4-6
under 35 U.S.C. § 103(a) as unpatentable over Rinsma.
The Examiner provides reasoning in support of the rejection in the
Final Rejection (mailed July 14, 2005) and Answer (mailed March 24,
2006). Appellant presents opposing arguments in the Brief (filed January
17, 2006) and Reply Brief (filed May 22, 2006).
Appellant does not list the Examiner’s rejection of claims 4-6 under
35 U.S.C. § 103(a) as unpatentable over Rinsma as a ground of rejection to
be reviewed on appeal (Br. 6). It is apparent from Appellant’s statement “all
claims 1 to 28 are appealed” (Br. 2), however, that Appellant intends to
appeal both rejections set forth in the Final Rejection. We therefore treat the
rejection of claims 4-6 under 35 U.S.C. § 103(a) as standing or falling with
the rejection of claims 1-3 and 7-28 under 35 U.S.C. § 102(b), so Appellant
is not prejudiced by the failure to expressly include the rejection under 35
U.S.C. § 103(a).

THE ISSUES
With respect to independent claim 1, the issue before us is whether the
Examiner has established that Rinsma discloses, either expressly or under
principles of inherency, that Rinsma’s pressure pad 36, 53 and nut/groove
connection 39, 39’ cooperate to limit “a maximum component of force
acting upon the force transducer upon generating of the clamping force” as
called for in claim 1. Essentially the same issue is presented with respect to
independent claim 26. Specifically, we must decide whether the Examiner
has established that Rinsma discloses, either expressly or under principles of
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Application 10/829,536

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inherency, that Rinsma’s pressure pad 36, 53 and nut/groove connection 39,
39’ together comprise “a force limiting assembly for limiting the force
acting upon the force transducer upon generation of the clamping force” as
recited in claim 26. With respect to independent claim 27, the issue to be
decided is whether the Examiner has established that Rinsma discloses,
either expressly or under principles of inherency, that the arrangement of
Rinsma’s screw 24, pressure pad 36, 53, piston 35, and nut/groove
connection 39, 39’ is such that Rinsma’s disc brake assembly has “a second
force transmission path arranged between the actuator and at least one of the
brake shoes, the second force transmission path bypassing the force sensing
element” as recited in claim 27.

FINDINGS OF FACT
In Appellant’s invention, the reactive force of the brake shoe 12 on
the piston 52 is transmitted via a first force transmission path C to act on the
force transducer 42. Specifically, the force is transmitted through the elastic
diaphragm 62 and oil-filled chamber 64 and acts on the pressure-to-
resistance transducer 66 of the force transducer 42 (Specification 8:20-29;
10:4-22). In Appellant’s Fig. 1 embodiment, as soon as a predetermined
threshold value of reactive force is reached, such that the diameter
enlargement 56 of piston 52 abuts the stop formed by diameter reduction 57
of receiver 40, the component of reactive force exceeding the predetermined
threshold value is transmitted along a second force transmission path D that
bypasses the force transducer. Consequently, the force acting on the force
transducer never exceeds the predetermined threshold value (Specification
11:21-30). In other words, the force acting on Appellant’s force transducer
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is “limited” to a maximum of the predetermined threshold value at which the
piston diameter enlargement abuts the stop formed by the receiver diameter
reduction. Any force exceeding the predetermined threshold value will be
transmitted along a second force transmission path that bypasses the force
transducer. Appellant’s Fig. 4 embodiment works similarly except that the
predetermined threshold force value is reached when the piston 52 has been
displaced far enough to the left in the direction toward the force transducer
42 that the end face 78 of the piston 52 no longer projects beyond the ends
of receiver 40 and mounting 44 (Specification 13:10-25).
Rinsma is directed to actuators for disc brakes and seeks to alleviate
or circumvent the problems related to transverse or radial loadings on the
screw (Rinsma 1:20-28). Rinsma addresses this problem by providing a
resilient pressure pad 36, 53 through which the screw 24 and actuating
member (piston 35) engage one another to transfer the required actuating
force from the screw to the piston (Rinsma 1:28-31; 5:18-24). In Rinsma’s
Fig. 3 embodiment, the pressure pad 36, 53 has an internal space 52
connected to a measuring channel 51, which in turn is connected to a load
measuring device 50. The internal space 52 and measuring channel 51 may
be filled with a thermal oil that is resistant to high temperatures that may
result from friction between the brake pad 5 and brake disc 6 (Rinsma 6:3-
15). Rinsma describes the pressure pad 36, 53 as follows:
[I]ts stiffness in axial direction should be rather
high. In particular, the stiffness should be
maintained at a level where the required
force/displacement relationship still provides the
possibility to obtain the desired actuating force.

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On the other hand, said resilient
intermediate pressure means is not as stiff as a
direct connection between the screw mechanism
and the actuating member. This adapted stiffness
has the advantage that extreme loadings, which
have a certain transverse component or bending
moment, are not directly and fully transmitted
towards the screw mechanism. The resilient aspect
of the force transmission between screw
mechanism and actuating member makes these
transverse or bending loadings less severe or even
absent.

Rinsma 1:31 to 2:9.
As seen in Fig. 3, rotation of nut 22 causes axial translation of screw
24 (Rinsma 5:18-20). Screw 24 engages the head of piston 35 by means of
interposed pressure pad 36, 53 (Rinsma 5:27) and, optionally, a ceramic pad
55, which may be arranged between the pressure pad and the head of the
piston 35 to thermally insulate the thermal oil (Rinsma 6:13-15). Screw 24
is held non-rotatably, but slidably, with respect to piston 35 by nut/groove
connection 39, 39’ (Rinsma 5:25-26). Pressure pad 36, 53 is adapted to
accommodate misalignment between the axis of piston 35 and screw 24 that
might result from braking action in which brake pad 5 tilts somewhat
(Rinsma 5:31-33).

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
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Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that
it would be so recognized by persons of ordinary skill. Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991). “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581, 212
USPQ 323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212,
214, 40 USPQ 665, 667 (CCPA 1939).

ANALYSIS
The Examiner’s theory in rejecting Appellant’s claims is that
Rinsma’s pressure pad 36, 53 would compress until the nut 39 reaches the
end of travel and abuts against the end of the grooves 39’, at which point no
additional compression of the pad can occur and, therefore, all additional
force would bypass the transducer and the force applied to the transducer is
limited (Answer 4). The problem with this theory, as pointed out by
Appellant (Br. 8, 9, 10, 12, 13), is that Rinsma does not expressly disclose
that pressure pad 36, 53 will compress to such an extent that nut 39 will
actually abut against the end of grooves 39’ and the Examiner has not
pointed to any teaching in Rinsma to explain why this would necessarily be
the case so as to establish a case of inherency.
To the extent that the Examiner is arguing that some of the force will
be transmitted through the outer sections of the walls of Rinsma’s pressure
pad and through the nut 39 to the piston 35 or to the arm 2 (Answer 4, 5),
Appeal 2006-2793
Application 10/829,536

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presumably through force distribution, and that such force distribution
would satisfy the bypass transmission path limitation of claim 27, we do not
find this argument persuasive. First, such force distribution would not
“bypass” the force transducer 42. Further, that such force distribution occurs
is speculative, as Rinsma gives no hint that this is the case.
In light of the above, we conclude that the Examiner has failed to
establish that Rinsma discloses, either expressly or under principles of
inherency, that Rinsma’s pressure pad 36, 53 and nut/groove connection 39,
39’ cooperate to limit “a maximum component of force acting upon the
force transducer upon generating of the clamping force” as called for in
claim 1. We further conclude that the Examiner has failed to establish that
Rinsma discloses, either expressly or under principles of inherency, that
Rinsma’s pressure pad 36, 53 and nut/groove connection 39, 39’ together
comprise “a force limiting assembly for limiting the force acting upon the
force transducer upon generation of the clamping force” as recited in claim
26. Finally, we conclude that the Examiner has failed to establish that
Rinsma discloses, either expressly or under principles of inherency, that the
arrangement of Rinsma’s screw 24, pressure pad 36, 53, piston 35, and
nut/groove connection 39, 39’ is such that Rinsma’s disc brake assembly has
“a second force transmission path arranged between the actuator and at least
one of the brake shoes, the second force transmission path bypassing the
force sensing element” as recited in claim 27.
Accordingly, Appellant has demonstrated that the Examiner erred in
rejecting independent claims 1, 26 and 27, as well as claims 2, 3, 7-25, and
28 depending from claims 1, 26, and 27, as anticipated by Rinsma. The
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Application 10/829,536

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rejection cannot be sustained. The rejection of dependent claims 4-6 as
unpatentable over Rinsma falls with the anticipation rejection.
ORDER
The decision of the Examiner to reject claims 1-28 is reversed.
REVERSED

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