Ex Parte Kim et alDownload PDFPatent Trial and Appeal BoardJun 26, 201512434057 (P.T.A.B. Jun. 26, 2015) Copy Citation 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. 12/434,057 05/01/2009 Chongmin Kim P000711-R&D-MJL 1354 104102 7590 06/29/2015 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER SCHWARTZ, CHRISTOPHER P ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 06/29/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHONGMIN KIM, MICHAEL D. HANNA, and JAMES G. SCHROTH ____________ Appeal 2013-007431 Application 12/434,0571 Technology Center 3600 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and LEE L. STEPINA, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Chongmin Kim et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1, 6, 8, 10, 12–14, 16, and 18–20 as unpatentable over Dessouki (US 2006/0076200 A1, pub. Apr. 13, 2006), Engels (DE 25 37 038, pub. Mar. 3, 1 According to Appellants, the real party in interest is General Motors LLC. Appeal Br. 3 (filed Jan. 11, 2013). Appeal 2013-007431 Application 12/434,057 2 1977)2, and Lowey (US 3,948,364, iss. Apr. 6, 1976), and claims 7, 11, and 17–19 as unpatentable over Dessouki, Engels, Lowey, and Martino (US 2009/0026027 A1, pub. Jan. 29, 2009). We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. INVENTION Appellants’ invention relates to “damped products such as brake rotors, and methods of making the same.” Spec. ¶ 1. Claims 1, 10, 14, and 20 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A product comprising: a brake rotor comprising a cheek portion comprising a working portion acted upon by a braking element during use and being made of a first material, and the cheek portion comprising a nonworking portion not acted upon by the braking element during use and being made of the first material, the working portion having a first density and the nonworking portion having a second density, the first density being greater than the second density, wherein the first material consists essentially of a sintered powder metallurgy material, wherein the working portion comprises a first working surface of the cheek portion contacting the braking element during use, and comprises a second working surface of the cheek portion contacting the braking element during use and located on an opposite side of the cheek portion than the first working 2 We derive our understanding of Engels from the translation contained in the image file wrapper of this application. All references to the text of this document are to portions of the translation. Appeal 2013-007431 Application 12/434,057 3 surface, and the cheek portion being solid between the first and second working surfaces, wherein the nonworking portion comprises at least some of an interior portion of the cheek portion. ANALYSIS The Examiner finds that although Dessouki discloses a brake rotor including a cheek portion 104, with working portions 108 made from an unspecified “first material,” and an insert 106, i.e., non-working portion, made from metal powders, Dessouki fails to disclose that insert 106 is made from the “first material” and that the density of the non-working portion 106 is smaller than the density of the working portions 108. Ans. 4; see also Dessouki, Fig. 3. Nonetheless, the Examiner finds that Engels discloses a brake disc that provides a good vibration damping effect by including an insert portion 3, i.e., non-working portion, having a density lower than that of surrounding cast material, i.e., working portions. See Ans. 4–5; see also Engels, p. 3, Fig. 2. The Examiner further finds that Lowey discloses making an entire brake component, having areas of different densities, from metal powders. See Ans. 5; see also Lowey, col. 1, ll. 36–38; col. 2, ll. 22– 29; and Fig. 2. Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art to have used metal powders, i.e., first material, to make both working portions 108 and non-working portion 106 (insert) of Dessouki’s rotor, as taught by Lowey, such that the density of insert 106 is lower than the density of working portions 108, as taught by Engels, in order for “adapting the rotor to a specific vehicle (i.e. sports vs[.] utility vehicle) and/or specific application.” Ans. 13. Appeal 2013-007431 Application 12/434,057 4 Appellants argue that “[one] of ordinary skill in the art, upon reading the Lowey and ‘038 reference [Engels], would not be led to modify the Dessouki reference to arrive at the present claims 1, 10, 14, and 20 as suggested by the Examiner, because Dessouki reference makes no apparent suggestion to do so.” Appeal Br. 10. We are not persuaded by Appellants’ argument because this argument appears to be holding the Examiner to the old teaching, suggestion, or motivation (“TSM”) standard where there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Appellants further argue that the Examiner’s proposed modification “would destroy the intent, purpose, or function of the Dessouki invention,” because “Dessouki relies on the Coulomb friction damping principle.” Id. at 9, 11. Thus, Appellants contend that the Examiner’s modification “would destroy the existence of the interfacial boundary in the Dessouki disc brake,” and thus, would change its principle of operation. Id. at 11–12. We are not persuaded by Appellant’s argument because it is not commensurate in scope with the Examiner’s proposed rejection. The Examiner is not proposing to eliminate Dessouki’s “interfacial boundary,” but merely to make the entire rotor of Dessouki’s from a first material, i.e., metallic powders, as taught by Lowes, where insert 106 has a density that is lower than the density of working portions 108, as taught by Engels. We thus agree with the Examiner that: There no destruction of the intent, purpose, or principle of operation of the Dessouki reference Appeal 2013-007431 Application 12/434,057 5 since the concept of coulomb friction damping would remain intact. This is because the structure of the product– i.e. rotor, insert(s), inter[f]acial boundaries–have not been changed. Only the materials and densities of the existing structure in Dessouki is being modified. Ans. 12 (emphasis omitted). Hence, Dessouki’s rotor, as modified by Engels and Lowes, would continue to provide vibration damping by Coulomb friction3, but would additionally provide damping due to the density difference between working portions 108 and non-working portion (insert) 106. As long as friction (mechanical interaction) exists between non-working portion (insert) 106 and working portions 108 of Dessouki’s rotor, as modified by Engels and Lowey, vibration damping by Coulomb friction likewise occurs. Appellants have not provided any persuasive argument or evidence to show otherwise. For example, in view of Lowey and Engels, Dessouki’s rotor 300 is first sintered from metallic powders to include slots 304 and working portions 306, as shown in Dessouki’s Figure 14A, and then, in a second step shown in Figure 14C, metallic powder inserts 316 are sintered into slots 304 so as to have a lower density than the density of rotor 300. See also Dessouki, ¶ 51. Thus, the Examiner’s modification retains an “interfacial boundary” between the different-density working and non-working portions and is nothing more than the mere application of a known technique (i.e., using 3 Dessouki states that, “‘Coulomb friction’ represents the energy absorption processes at the interface between two material surfaces through mechanical interaction of the surfaces, as for example temperature, pressure, time, etc.” Dessouki ¶ 10. Appeal 2013-007431 Application 12/434,057 6 inserts having a density lower than the surrounding material) to a piece of prior art ready for the improvement. Moreover, attorney argument such as the alleged destruction of Dessouki’s interfacial boundary, cannot take the place of evidence in the record. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). Lastly, we are not persuaded by Appellants’ arguments regarding the modification of Lowey, because the Examiner does not propose to modify Lowey, but rather Dessouki. See Reply Br. 4. Also, merely because Lowey describes “an opposite structure of the instant claim 1” is not persuasive because, obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). In conclusion, for the foregoing reasons, we sustain the rejection of independent claims 1, 10, 14, and 20 under 35 U.S.C. § 103(a) as unpatentable over Dessouki, Engels, and Lowey. In regards to the rejection of dependent claims 6–8, 11–13, and 16–19, Appellants rely on the arguments presented with respect to the rejection of independent claims 1, 10, and 14 discussed supra. See Appeal Br. 11. Therefore, we also sustain the rejections under 35 U.S.C. § 103(a) of claims 6, 8, 12, 13, 16, 18, and 19 as unpatentable over Dessouki, Engels, and Lowey, and claims 7, 11, and 17–19 as unpatentable over Dessouki, Engels, Lowey, and Martino. Appeal 2013-007431 Application 12/434,057 7 SUMMARY The Examiner’s decision to reject claims 1, 6–8, 10–14, and 16–20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED pgc Copy with citationCopy as parenthetical citation