Ex Parte Huang et al

Patent Trial and Appeal Board

Feb 28, 2017

13449505 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/449,505 04/18/2012 Xiaodi Huang HU1.002.US 7742
23893 7590
Timothy E Siegel Patent Law, PLLC
Mari Yamamoto
777 108th Avenue, Suite 2240
Bellevue, WA 98004-5178
EXAMINER
NGUYEN, XU AN LAN T
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
tim @ intproplaw .com
Michele @ intproplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAODI HUANG,
XIAOBIN SONG, and
NANNON R. HUANG
Appeal 2015-006142
Application 13/449,505
Technology Center 3600
Before STEVEN D.A. McCARTHY, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1
2
3
4
5
6
7
1 The Appellants identify one of the named inventors, Xiaodi Huang, as
the real party in interest. (Appeal Br. 1).
STATEMENT OF THE CASE
The Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 9—12 and 24—33 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Strom (US 2010/0084110 Al, publ.
Apr. 8, 2010); claims 1—4 under § 103(a) as being unpatentable over Strom
and Ihm (US 5,620,042, issued Apr. 15, 1997); claim 5 under § 103(a) as
being unpatentable over Strom, Ihm and Wirth (US 6,098,764, issued Aug.
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
Appeal 2015-006142
Application 13/449,505
8, 2000); claim 6 under § 103(a) as being unpatentable over Strom, Ilim,
Wirth and Nowak (US 2004/0195053 Al, publ. Oct. 7, 2004); claims 7 and
8 under § 103(a) as being unpatentable over Strom, Ilim and Miller (US
5,024,300, issued June 18, 1991). Claims 13—18 and 20 are withdrawn from
consideration; and claims 19 and 21—23 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Claims 1,9,24 and 27 are independent. Claims 9 and 24 are
illustrative:
9. A disc brake rotor, comprising:
(a) mounting hat; and
(b) solid disc, rigidly affixed to said mounting hat, and
including:
i. a transverse dimension core, made of a first metal;
ii. two rubbing surface claddings, set on either
transverse side of said core, said claddings made of
a second metal and having a thickness of 1—10 mm,
and further defining physical engagement features;
iii. a third metal interposed between said first metal and
said second metal; and
iv. wherein said second metal bonded with said first
metal metallurgically through said third metal and
mechanically by said engagement features; and
(c) wherein said rotor has a conductance of greater than 4
Watts/0 C.
24. A disc brake system having a rotor that has a conductance
greater than 2 Watts/°C.
2
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
Appeal 2015-006142
Application 13/449,505
The Specification describes a brake assembly 8 including a brake
rotor 10 including a disk 11 and a mounting hat 12. (Spec. 5,11. 13—17 &
Fig. 4). The Specification teaches that:
In currently available brake assemblies, when braking is
no longer applied, the inner brake pad 20 retracts slightly, but the
outer brake pad 22 does not necessarily retract adequately, and
may continue to contact the rotor, causing drag on movement and
reducing fuel efficiency. In brake assembly 8, however, rotor 10
is made in part of a metal that has a high coefficient of thermal
expansion and a high thermal conductivity, so that disk 11
expands during braking. Heat is then quickly conducted away
by hat 12 into wheel 13, so that disk 11 shrinks when braking is
no longer applied. As a result, outer brake pad 22 is not
positioned as far inward as it would be if not for the disk 11
expansion, and when disk 11 contracts, it withdraws from contact
of outer brake pad 22, thereby avoiding the problems caused by
this contact.
(Spec. 5,1. 25 — 6,1. 5; see also id. at Fig. 1). More specifically, the
Specification teaches fabricating the rotor 10 from a metal disk core 32
composed of an aluminum alloy such as A356. (See Spec. 6,11. 14—18 &
Fig. 4; see also Ans. 4). “Unfortunately, however, aluminum alloys are
typically too soft to use in a brake rotor. In a preferred embodiment this
problem is addressed by providing a steel cladding 30 affirmatively attached
to [the] second metal disk core 32.” (Spec. 6,11. 18—22).
The Examiner correctly finds that Strom describes a rotor satisfying
each limitation of claim 9, except limitation (c). (See Final Office Action,
mailed June 24, 2014 (“Final Act.”), at 3). Strom describes a composite
brake rotor 20 including an inner hub portion 30 and a generally cylindrical
interconnecting portion 34 that collectively define a mounting hat. (See
Strom, para. 39; & Figs. 1 & 2). The composite rotor 20 also includes an
outer annular rotor portion 32 and inserts 24 that collectively define a solid
3
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
Appeal 2015-006142
Application 13/449,505
disc. (See Strom, paras. 39 & 40; & Figs. 1—3). The inner hub portion 30,
the generally cylindrical interconnecting portion 34, and the outer annular
rotor portion 32 are constructed of a single core material 106 (see Strom,
para. 39), such that the three are unitary in construction. In this fashion, the
solid disc is rigidly affixed to the mounting hat.
The outer annular rotor portion 32 constitutes a transverse dimension
core for the solid disc. It is made from a first metal, namely, aluminum alloy
A356.2. (See Strom, para. 64).
The two inserts 24 constitute rubbing surface claddings. The inserts
24 are made of a second metal, namely, low carbon steel, and have
thicknesses of 5.0 mm, within the range of 1 mm to 10 mm. (See Strom,
para. 42). Each insert 24 defines physical engagement features in the form
of attachment portions 70 “to achieve retention by interaction with the core
material 106” that, in turn, defines the outer annular rotor portion 32.
(Strom, para. 43).
Strom teaches fabricating the rotor 20 by positioning the inserts 24 in
a mold and casting the single core material 106 in engagement with the
inserts. (See generally Strom, paras. 42, 53, 54 & 56; & Fig. 10).
According to one such technique, the inserts 24 receive a coating 90 of a
third metal such as zinc or copper before being positioned in the mold. The
third metal is interposed between first metal, that is, the aluminum core
material 106, and the second metal, that is, the steel of the inserts 24, as
depicted schematically in Figure 7A. The coating 90 reacts with the steel of
the inserts 24 and the aluminum core material 106 so that the second metal
bonds with the first metal metallurgically through the third metal, as well as
4
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
Appeal 2015-006142
Application 13/449,505
mechanically through the engagement features, that is, the attachment
portions 70. (See Strom, paras. 56, 58 & 59).
Strom discloses the thermal conductivity of the aluminum alloy from
which the rotor 20 is cast (see Strom, para. 64), but not that the rotor that has
a conductance greater than 2 Watts/°C, as recited in independent claim 24, or
greater than 4 Watts/°C, as recited in independent claims 9 and 27. The
Examiner correctly observes that the construction of Strom’s composite
rotor 20 is similar in shape and materials to the construction of the rotor 10
described in the Appellants’ Specification. (See Ans. 4). Nevertheless,
Strom fails to disclose sufficient dimensions to enable the Examiner to find
that the construction of Strom’s composite rotor 20 is substantially identical
to the construction of the rotor 10 described in the Appellants’ Specification;
or to infer or presume that the composite rotor 20 inherently possesses the
thermal conductance recited in claim 9, 24, or 27.
Instead, the Examiner finds that the design criteria necessary to
achieve the heat conductance as claimed “are considered as engineering
design choices in order to achieve a certain heat conductance requirement.”
(Final Act. 4). The Examiner concludes that it would have been obvious “to
have selected a set of engineering design choices in order to ensure that the
rotor of Strom would achieve a certain heat conductance requirement which
would result in higher heat dissipation, better performance and longevity of
the brake assembly.” (Id.)
The Appellants argue that the Examiner’s finding that the design
criteria are mere design choices is a taking of official notice, requiring the
Examiner to provide a supporting declaration or other written evidence
under 37 C.F.R. § 1.104(d)(2). (See App. Br. 6—8). An examiner is only
5
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
Appeal 2015-006142
Application 13/449,505
required to provide a declaration or other documentary evidence to maintain
a rejection under 37 C.F.R. § 1.104(d)(2) when the examiner alleges the
truth of facts based on the examiner’s own knowledge. Where, as here, the
Examiner merely draws inferences based on the teachings of the prior art of
record, no such declaration or evidence is required. See In re Uhlig, 376
F.2d 320 (CCPA 1967).
That said, reliance on “design choice” is appropriate only when a
proposed modification does not solve any particular problem or produce any
unexpected result. See In re Chu, 66 F.3d 292, 298 (Fed. Cir. 1995). As the
Appellants correctly point out, an “artisan of ordinary skill would have had
no ‘apparent reason’ to pursue the conductance figures recited in the claims
at issue, without first conceiving of the design goal of shunting heat to the
wheel.” (Reply Br. 4). The Examiner has not shown that one of ordinary
skill in the art would have had reason to seek to shunt heat from the brake
rotor to the wheel. Because the heat conductance recited in independent
claims 9, 24, and 27 solves a particular problem, the design criteria
necessary to achieve the heat conductance as claimed are not mere design
choices. We do not sustain the rejection of claims 9—12 and 24—33 under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Strom.
The Examiner rejects claims 1—4 under § 103(a) as being unpatentable
over the combined teachings of Strom and Ihm. Independent claim 1 recites
an automatic disk brake assembly:
(d) wherein said rotor is made at least in part of a material
having a thickness and a coefficient of thermal expansion
and a thermal conductivity, such that a complete 100
kilometer per hour, 0.9 gross weight vehicle braking
causes said disk to expand in thickness by at least. 15 mm
and cool to shrink in thickness, relative to its expanded
6
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
Appeal 2015-006142
Application 13/449,505
thickness, by at least 0.1 mm within 60 seconds of the
cessation of braking, in an ambient temperature of less
than 30°C.
The Examiner relies on Strom to teach the limitations on the rotor and
on Ihm to teach the remaining components of the automatic disk brake
assembly. (See Final Act. 6 & 7). The Examiner finds that “Strom does not
disclose the design criteria in order to achieve the heat dissipation as
claimed. These criteria are considered as engineering design choices in
order to achieve a certain heat dissipation requirement.” (Final Act. 6).
Here, as earlier, the design criteria are not mere design choices because they
solve a particular problem, namely, the potential for the outer brake pad not
to retract adequately and to continue to contact the rotor after braking ceases.
Because Ihm does not remedy the deficiencies in the teachings of Strom, we
do not sustain the rejection of claims 1—4.
With respect to claim 5, the Examiner cites Wirth as “teaching] a
heat barrier 13 separating the disk 1 from an axle bushing 5.” (Final Act. 7).
The Examiner’s reasoning does not show that the teachings of Wirth would
have remedied the deficiencies in the combined teachings of Strom and Ihm
as applied to parent claim 1. We do not sustain the rejection of claim 5
under § 103(a) as being unpatentable over Strom, Ihm and Wirth.
With respect to claim 6, the Examiner cites Nowak as “teach[ing] that
it is well known to use poly tetrafluoroethylene as a heat barrier material.”
(Final Act. 8). The Examiner’s reasoning does not show that the teachings
of Wirth would have remedied the deficiencies in the combined teachings of
Strom, Ihm and Wirth as applied to parent claim 5. We do not sustain the
rejection of claim 6 under § 103(a) as being unpatentable over Strom, Ihm,
Wirth and Nowak.
7
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
Appeal 2015-006142
Application 13/449,505
With respect to claims 7 and 8, the Examiner cites Miller as
“teaching] a thermal coupler 26 positioned between said hat 22 and said
wheel 10, to increase heat transfer from said hat to said wheel; wherein a
thermal[ly] conductive paste, thermal grease, is placed between said hat and
said wheel contact to increase heat transfer, column 2, lines 1—6.” (Final
Act. 8). The Examiner’s reasoning does not show that the teachings of
Miller would have remedied the deficiencies in the combined teachings of
Strom and Ihm as applied to parent claim 1. We do not sustain the rejection
of claims 7 and 8 under § 103(a) as being unpatentable over Strom, Ihm and
Miller.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—12 and
24—33.
REVERSED
8