Ex Parte Gonska

Board of Patent Appeals and Interferences

Mar 29, 2010

11145407 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID GONSKA
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Appeal 2009-004926
Application 11/145,407
Technology Center 3600
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Decided: March 29, 2010
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Before: LINDA E. HORNER, JENNIFER D. BAHR, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004926
Application 11/145,407

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STATEMENT OF THE CASE
David Gonska (Appellant) appeals under 35 U.S.C. § 134 (2002) from
the Examiner's decision rejecting claims 1-20. We have jurisdiction over
this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant's claimed invention is directed to a wheel hub with a brake
rotor that provides independent wheel hub and tone ring attachment
interfaces such that the tone ring is independently removable from the brake
rotor without requiring removal of the brake rotor from the wheel hub, and
the brake rotor is removable from the wheel hub without having to remove
the tone ring from the brake rotor. Spec., para. 1.
Claim 1, reproduced below, is illustrative of the claimed invention.
1. A wheel assembly comprising:
a wheel hub defining an axis of rotation;
a brake rotor having a first set of mounting
bosses and a second set of mounting bosses that
are both circumferentially spaced about said axis
of rotation; and
a tone ring mounted to said brake rotor
wherein said first set of mounting bosses provides
a first mount interface between said tone ring and
said brake rotor and said second set of mounting
bosses provides a second mount interface between
said brake rotor and said wheel hub, said first
mount interface being independent from said
second mount interface such that said brake rotor
is removable from said wheel hub without having
to remove said tone ring from said brake rotor and
such that said tone ring is removable from said
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brake rotor without having to remove said brake
rotor from said wheel hub.

The Rejection
The Examiner relies upon the following as evidence of
unpatentability:
Stimson US 5,263,900 Nov. 23, 1993
Tolani US 6,568,512 B1 May 27, 2003
Yuhas US 6,945,367 B1 Sep. 20, 2005
Appellant seeks review of the Examiner's rejection under 35 U.S.C.
§ 103(a) of claims 1-20 as unpatentable over Tolani and Stimson or Yuhas.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ISSUE
Independent claims 1 and 10 recite a tone ring that is mounted on a
brake rotor and removable from the brake rotor without removing the brake
rotor from the wheel hub. In relevant part, the Examiner found that Tolani
describes a removable tone ring, but without a mounting arrangement having
a first set of mounting bosses. Ans. 3. Further, the Examiner found that
Stimson describes a removable tone ring using a plurality of mounting
bosses and that Yuhas describes a removable tone ring mounted with
fasteners. Ans. 3-4, 5-6. Thus, the Examiner concluded that it would have
been obvious to modify the removable tone ring of Tolani to have a fastener
arrangement, as taught in Yuhas, or to have arranged the parts as shown by
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Stimson, in order to make singular parts plural as a matter of obvious
engineering design choice. Ans. 4.
Appellant argues that Tolani's tone ring is cast into the rotor and thus
not removable without destroying the ring. Appeal Br. 3-7, 10, 14, 19.
Appellant further argues that Yuhas's removable tone ring is attached to the
hub using the same fasteners as the rotor (Appeal Br. 5, 10), and that
Stimson's tone ring is cast into the hub and not removable without
destroying the ring (Appeal Br. 14, 19).
Therefore, the dispositive issue presented in this appeal is whether the
combined teachings of Tolani and Stimson or Yuhas render obvious a tone
ring that is mounted on a brake rotor and removable from the brake rotor
without removing the brake rotor from the wheel hub.

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 Tolani describes a brake rotor 110 made of a cast iron brake rotor
body 120 with a cast-in exciter (tone) ring 114 made of stainless steel.
Col. 3, ll. 50-54. Tolani describes that corrosion of the tone ring
limits the ability of the sensor to sense the tone ring, which is why the
tone ring is made of stainless steel. Col. 3, ll. 34-54.
FF2 Yuhas describes three different tone (exciter) ring embodiments: ring
60 (with teeth 74) integrally formed in the body 46 of brake rotor 42
(col. 3, l. 56 to col. 4., l. 3, figs. 1, 2); ring 260 or 360 attached to a
flange 20 of the wheel hub 14 (col. 5, ll. 35-63, figs. 7, 9); and ring
160 attached by a screw 178 to a wall 46 of the brake rotor 42 (col. 4,
l. 61 to col. 5, l. 19, figs. 3, 4). Tone ring 260 and brake rotor 42 are
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attached to hub 14 by studs 19. Col. 5, ll. 40-41, fig. 7. Thus, to
remove tone ring 260, the studs 19 must be removed, which would
also remove brake rotor 42 from the hub 14. Tone ring 160 has slots
172 designed to prevent the formation of oxidation (corrosion) and the
buildup of debris, which can affect the operation of sensor 80. Col. 5,
ll. 11-19, figs. 4-5.
FF3 Stimson describes an exciter (tone) ring 40 that is encapsulated and
firmly embedded within the (wheel) hub 12. Col. 4, ll. 2-7, 16-19, fig.
1 (noting interruptions 47 of tone ring 40), fig. 2-3.

PRINCIPLES OF LAW
Claim Construction
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). However, "claims are interpreted with an eye toward giving effect to
all terms in the claim." Bicon Inc. v. Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006). See also Stumbo v. Eastman Outdoors, Inc., 508 F.3d
1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which render
phrases in claims superfluous).
Obviousness
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
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F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See
In re Fine, 837 F.2d, 1071, 1073 (Fed. Cir. 1988).
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). In addition, 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. In re Kahn, 441 F.3d 997, 988 (Fed. Cir.
2006), cited with approval in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). However, "the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418. For
example, "if a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." Id. at 417.
Further, as stated in Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006):
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
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and this does not necessarily obviate motivation to combine.
See [Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1349
n. 8 (Fed. Cir. 2000)] ("The fact that the motivating benefit
comes at the expense of another benefit, however, should not
nullify its use as a basis to modify the disclosure of one
reference with the teachings of another. Instead, the benefits,
both lost and gained, should be weighed against one another.").
Where the prior art contains "apparently conflicting" teachings
(i.e., where some references teach the combination and others
teach away from it) each reference must be considered "for its
power to suggest solutions to an artisan of ordinary skill....
consider[ing] the degree to which one reference might
accurately discredit another." In re Young, 927 F.2d 588, 591
(Fed.Cir.1991).

ANALYSIS
Tolani
Independent claims 1 and 10 require that the tone ring be "removable
from said brake rotor without having to remove said brake rotor from said
wheel hub." Tolani describes a cast iron brake rotor with a cast-in stainless
steel exciter (tone) ring. FF1. The Examiner's position appears to be that
because the tone ring is formed of a different material than the rotor, it can
be removed, presumably by force. See Ans. 3, 5; Appeal Br. 4. Given that
Tolani's tone ring is cast into, and thus a part of, the brake rotor, the only
way to remove the tone ring is by destructive force, aside from melting away
the rotor (which then destroys the rotor).
However, construing the "removable from said brake rotor" limitation
to include destructive removal would not give the limitation any meaning
because virtually every part can be considered destructively removable. See
Stumbo, 508 F.3d at 1362 (denouncing claim constructions that render
phrases in claims superfluous). Therefore, the Examiner's interpretation of
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Tolani's tone ring as "removable" by destructive force is not a reasonable
interpretation of the claim limitation requiring the tone ring to be
"removable from said brake rotor."
Tolani in combination with Yuhas
Independent claims 1 and 10 require that the tone ring be mounted to
a brake rotor and "removable from said brake rotor without having to
remove said brake rotor from said wheel hub." Further, claim 1 requires that
the mount interface between the tone ring and brake rotor be independent
from the mount interface between the brake rotor and the wheel hub. Yuhas
describes three different tone ring embodiments: one integrally formed on
the brake rotor, one mounted to a flange of the wheel hub, and one mounted
to the brake rotor. FF2. The Examiner found that Yuhas describes an
integrally formed tone ring and a tone ring mounted to the rotor with
fasteners. Ans. 3.
The integrally formed tone ring depicted in the embodiment of figures
1 and 2 of Yuhas is not "removable from said brake rotor" because, as
discussed above, destructive removal is not a reasonable interpretation of the
claim limitation requiring the tone ring to be removable from the brake rotor.
Accordingly, the teachings of that embodiment alone would not make up for
the deficiency of Tolani discussed above with respect to the limitation
requiring that the tone ring be "removable from said brake rotor without
having to remove said brake rotor from said wheel hub."
Yuhas additionally teaches, however, that as an alternative to
integrally forming the tone ring with the rotor, the tone ring may be mounted
to either the wheel hub or the rotor by means of a threaded fastener. See
FF2. The Examiner proposed to modify the rotor/tone ring arrangement of
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Tolani to have a fastener arrangement as taught by Yuhas. Ans. 4.
According to the Examiner, having a fastener arrangement to secure multiple
parts together makes replacement of parts easier. Id. The ability to replace a
corroded tone ring would further Tolani's desire to alleviate the effects of
dirt and corrosion. See FF1 (Tolani uses a particular material to avoid
corrosion). Accordingly, the articulated reason for the modification has
rational underpinning.
Appellant argues that the purpose of Tolani is to integrate the tone
ring with the brake rotor, and as such, making Tolani's tone ring non-
integrated would render Tolani unsatisfactory for its intended purpose and
change its principle of operation. Appeal Br. 6-7. We find no evidence in
the record before us, however, that Tolani's wheel hub assembly would no
longer operate if modified to have a removable tone ring. Regardless of the
manner by which the tone ring is attached to the brake rotor, each
component would appear to operate exactly as before, using the same
principles of operation. Thus, the proposed modification would not change
the intended purpose or principle of operation of Tolani's brake rotor or
exciter ring.
Appellant next argues that there is no motivation or suggestion to
modify Tolani as proposed by the Examiner. Appeal Br. 6. In particular,
Appellant urges that the explicit purpose of Tolani is to have an integral tone
ring. Id. When a proposed modification has advantages and disadvantages,
"benefits, both lost and gained, should be weighed against one another."
Winner Int'l Royalty Corp., 202 F.3d at 1349. The prior art must be
analyzed to consider "its power to suggest solutions to an artisan of ordinary
skill." In re Young, 927 F.2d at 591.
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Tolani describes a tone ring designed to limit the harmful effects of
corrosion by using stainless steel. FF1. Similarly, Yuhas describes a way to
limit the harmful effects of corrosion by using a particularly shaped tone
ring non-integrally attached to the brake rotor. FF2 (the shape prevents
development of oxidization). Additionally, as identified by the Examiner, a
non-integral tone ring provides other benefits, such as replacement. Ans. 4.
Thus, the Examiner's proposal to modify Tolani's integral brake rotor and
tone ring structure to be non-integral, as taught in Yuhas, is nothing more
than using a known technique to improve a similar device in the same way.
See KSR, 550 U.S. at 417 ("if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill").
Appellant’s arguments with respect to the embodiment of figures 7
and 9 of Yuhas, describing an arrangement wherein the mounting interface
between the tone ring and the rotor is not independent from the mounting
interface between the rotor and the wheel hub (Appeal Br. 5), presume that
the teachings of Yuhas must be bodily incorporated into the primary
reference without regard to the teachings of Tolani. This line of argument is
not persuasive. Obviousness does not require that all of the features of the
secondary reference be bodily incorporated into the primary reference. See
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Furthermore, the artisan is
not compelled to blindly follow the teaching of one prior art reference over
the other without the exercise of independent judgment. See Lear Siegler,
Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). As evidenced
by the embodiment of figures 3 and 4 of Yuhas (see FF2), Yuhas also
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contemplated other fastening configurations, including one wherein the
mounting interface between the tone ring and the rotor is independent of the
mounting interface between the rotor and wheel hub. Accordingly, the
arguments of Appellant do not point to error in the Examiner's conclusion
that the combined teachings of Tolani and Yuhas render obvious the subject
matter of claims 1 and 10.
Appellant lastly argues that the Examiner has not identified where the
features of claims 2-9 and 11-20 are found in the references. Appeal Br. 7-
10, 11-14, 16-19, 19-22. Indeed, the Examiner's rejection of claims 1-20 as
unpatentable over Tolani and Yuhas or Stimson only addresses claims 1 and
10. Therefore, the Examiner's rejection has not fulfilled the initial duty of
supplying the requisite factual basis for the determination of obviousness. In
re Oetiker, 977 F.2d at 1445; In re Piasecki, 745 F.2d at 1472.

CONCLUSIONS
The combined teachings of Tolani and Yuhas render obvious a tone
ring that is mounted on a brake rotor and removable from the brake rotor
without removing the brake rotor from the wheel hub. Therefore, we sustain
the Examiner's rejection of claims 1 and 10 as unpatentable over the
combined teachings of Tolani and Yuhas.
The Examiner's rejection of claims 2-9 and 11-20 as unpatentable over
Tolani and Yuhas or Stimson does not fulfill the initial duty of supplying the
requisite factual basis for the determination of obviousness. Therefore, we
do not sustain the Examiner's rejection of claims 2-9 and 11-20.
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DECISION
We affirm the Examiner’s decision as to claims 1 and 10 and reverse
the Examiner's decision as to claims 2-9 and 11-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

hh

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