Ex Parte Kapanowski et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612651542 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/651,542 01/04/2010 73442 7590 06/02/2016 JONES ROBB, PLLC (w/Ford Motor Co,) 1951 Kidwell Drive Suite 740 Tysons Corner, VA 22182 FIRST NAMED INVENTOR Martin Christopher Kapanowski 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. 81198221 9427 EXAMINER WILLIAMS, THOMAS J ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 06/02/2016 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): elizabeth.burke@jonesrobb.com docketing@jonesrobb.com susanne.jones@jonesrobb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN CHRISTOPHER KAP ANOWSKI, JOHN CHRISTOPHER OAKWOOD, and DAVID MARTIN BASS Appeal2014-004617 Application 12/651,542 Technology Center 3600 Before JOHN C. KERINS, GEORGE R. HOSKINS, and AMANDA F. WIEKER, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Martin Christopher Kapanowski et al. ("Appellants") 1 appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-5, 8-12, and 15-19 under 35 U.SC. § 103(a) as unpatentable over Ogiwara (JP 62-274121 A, published Nov. 28, 1987), Wilwood (Brake Pad Catalog, revised June 12, 2008), and Gannon (US 3,982,611, issued Sept. 28, 1976). The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. 1 The Appeal Brief identifies Ford Global Technologies, LLC as the real party in interest. Appeal Br. 2. Appeal2014-004617 Application 12/651,542 CLAIMED SUBJECT MATTER Claims 1, 8, and 15 are independent. Claim 1 illustrates the claimed subject matter on appeal: 1. A brake pad configured for use in a vehicle brake assembly, the brake pad comprising: a friction material having an outermost edge, an innermost edge, and first and second side edges extending therebetween; and a stepped portion extending along the innermost edge of the friction material from the first side edge of the friction material to the second side edge of the friction material, the stepped portion having a depth of about 0.02 inches at a time that the brake pad is manufactured, wherein the brake pad has an effective radius at the time that the brake pad is manufactured that is about 12.5% to about 16. 7% greater than an effective radius of the brake pad after a burnishing or bedding-in process. ANALYSIS In rejecting claim 1, the Examiner finds Ogiwara discloses a brake pad comprising stepped portion 3, but Ogiwara fails to disclose stepped portion 3 having a depth of about 0.02 inches at initial manufacture, and the brake pad having an effective radius at initial manufacture that is about 12.5% to about 16.7% greater than the effective radius after a burnishing or bedding-in process. Final Act. 2-3. The Examiner relies on Gannon in relation to the claimed stepped portion depth, and on Wilwood in relation to the claimed reduction in effective radius. Id. at 3. 2 2 Given our decision that the Examiner errs in relying on Wilwood in relation to the claimed reduction in effective radius, we need not decide whether the Examiner further errs in relying on Gannon in relation to the claimed stepped portion depth. See Appeal Br. 12-16. 2 Appeal2014-004617 Application 12/651,542 As to the claimed reduction in effective radius, the Examiner finds Ogiwara's stepped portion 3 "has a width of 20 mm or less," but Ogiwara fails to disclose the overall width of its brake pad. Final Act. 2 (citing Ogiwara, Abstract). As a result, Ogiwara fails to disclose the effective radius reduction that results when stepped portion 3 disappears during the bedding-in process. Id. The Examiner finds Wilwood discloses a variety of brake pads having "a wide range" of overall widths, including Pad 9330 having a width of 70.4 mm, and Pad D394 having a width of 63.5 mm. Id. at 3. The Examiner determines providing Wilwood's Pad 9330 with Ogiwara's stepped portion having a 20 mm width would have yielded a reduction in effective radius of about 14.2% after a bedding-in process. Final Act. 3; Ans. 2-3. The Examiner also determines providing Wilwood's Pad D394 with Ogiwara's stepped portion having a 20 mm width would have yielded a reduction in effective radius of about 15.7% after a bedding- in process. Final Act. 3; Ans. 2-3. According to the Examiner, it would have been obvious to size the overall width of Ogiwara's brake pad to be one of the widths taught by Wilwood, "thus achieving a desired change in effective radius after the bedding-in process." Final Act. 3. The Examiner further reasons "[a] search of brake pads shows a wide variety of widths, of which at least two if used as a guide when sizing the overall width of the pad in Ogiwara, would have resulted in the claimed invention." Id. at 7. According to the Examiner, simply selecting an overall width for Ogiwara's brake pad "for achieving the claimed invention is nothing more than an obvious choice." Id. In short, the Examiner concludes "one could easily arrive within the recited change of effective radius feature" given Wilwood's disclosure of two brake pads 3 Appeal2014-004617 Application 12/651,542 having respective overall widths of 70.4 and 63.5 mm, and Ogiwara's disclosure of a stepped portion having a width of 20 mm. Ans. 2-3. Appellants argue the Examiner does not provide an explanation or rationale for selecting the specific widths of Wilwood's Pad 9330 and Pad D0394 from amongst the variety of brake pad widths disclosed by Wilwood. Appeal Br. 17. Appellants assert Wilwood discloses at least eight brake pads having other widths, many of which would not have resulted in the claimed effective radius reduction, and the prior art fails to provide any guidance or reason for using the specific widths in Wilwood that would satisfy the claimed reduction in effective radius. Id. at 17-18. Appellants further point out Ogiwara discloses its stepped portion width as "20 mm or less," and there is a lack of guidance for selecting 20 mm as a particular width from the range disclosed by Ogiwara. Id. at 19. Appellants accuse the Examiner of relying improperly on hindsight and using Appellants' disclosure as a roadmap in sifting through Ogiwara's and Wilwood's wide ranges of widths to select width combinations that would meet the claimed reduction in effective radius. Id. at 17-19. Appellants' arguments are persuasive. "[R]ejections on obviousness cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also KSR Int'! v. Teleflex Inc., 550 U.S. 398, 418 (quoting statement from In re Kahn with approval). "[T]o establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the [Examiner] must articulate the basis on which" it would have been obvious to make the claimed invention. Kahn, 441 F.3d at 986. Thus, 4 Appeal2014-004617 Application 12/651,542 in this case, the Examiner must explain the reasons why a person of ordinary skill in the art would have been motivated to combine Ogiwara and Wilwood to render the claimed invention obvious. Id. The Examiner's rejection establishes that if one were to select 20 mm from Ogiwara's disclosure of a stepped portion having "under 20 mm in its maximum width" (Ogiwara, Abstract), and combine it with Wilwood's Pad 9330 width of 70.4 mm or Wilwood' s Pad D394 width of 63 .5 mm, then the claimed reduction in effective radius would result. The Examiner's sole articulation as to why this would have been done is to "achiev[ e] a desired change in effective radius after the bedding-in process." Final Act. 3. This conclusory statement fails to provide a reason why a person of ordinary skill in the art would have chosen 20 mm as the stepped portion width from Ogiwara's disclosure. It further fails to provide a reason why a person of ordinary skill in the art would have chosen Pad 9330 or Pad D394 from amongst the approximately sixty similarly shaped brake pads in Wilwood's disclosure. See Wilwood, pages 21--44. It moreover fails to provide a reason why a 14.2% or a 15.7% reduction in effective radius after a bedding- in process would have been desirable. For the foregoing reasons, the Examiner errs in determining that it would have been obvious to size Ogiwara's brake pad to provide an initial effective radius being about 12.5% to about 16.7% greater than after a bedding-in process, as recited in claim 1. The other two independent claims 8 and 15 recite similar limitations. We, therefore, do not sustain the rejection of claims 1, 8, and 15, and their respective dependent claims 2-5, 9-12, and 16-19 as unpatentable over Ogiwara, Wilwood, and Gannon. 5 Appeal2014-004617 Application 12/651,542 DECISION The Examiner's decision to reject claims 1-5, 8-12, and 15-19 as unpatentable over Ogiwara, Wilwood, and Gannon is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation