Ex Parte Lowe et al

Patent Trial and Appeal Board

Jun 9, 2016

12174320 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/174,320 07/16/2008 Brent D. Lowe
104102 7590 06/09/2016
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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.
P001079-NAPD-LH 8443
EXAMINER
AUNG,SANM
ART UNIT PAPER NUMBER
3657
MAILDATE DELIVERY MODE
06/09/2016 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 BRENT D. LOWE, MARKT. RIEFE,
OMAR S. DESSOUKI, MOHAN SUNDAR,
and KEVIN M. THOMPSON
Appeal2014-006083
Application 12/174,320
Technology Center 3600
Before EDWARD A. BROWN, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brent D. Lowe et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's Final decision rejecting claims 11-20 and 23. i, 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Appellants submit the real party in interest is General Motors LLC. App.
Br. 4.
2 In an After Final amendment, filed June 3, 2013, Appellants added new
claim 25, which the Examiner rejected under 35 U.S.C. § 112, second
paragraph. Adv. Act. 2 (mailed June 21, 2013). Because claim 25 has not
Appeal2014-006083
Application 12/174,320
We REVERSE.
THE CLAIMED SUBJECT MATTER
Claims 11 and 20 are the independent claims. Claim 11, reproduced
below, is illustrative of the claimed subject matter.
11. A product comprising:
a body portion comprising a first face and a second face, a
frictional damping insert overlying the first face of the body
portion and underlying the second face of the body portion, the
insert having a throughhole and a portion of the body portion
extending from the first face of the body portion through the
throughhole of the insert to the second face of the body portion,
and a layer of particles or fibers provided on at least one face of
the frictional damping insert, wherein the layer of particles or
fibers does not bond the frictional damping insert to the body
portion.
REJECTIONS ON APPEAL3
1) Claims 11 and 12 are rejected under 3 5 U.S. C. § 102(b) as
anticipated by Berry JR. (US 2007 /0108004 Al, pub. May 17,
2007)4 .
been twice rejected, the rejection of this claim is not before us on appeal. 37
C.F.R. § 41.3l(a)(l).
3 The Examiner withdrew the rejection of claims 20 and 23 under 35
U.S.C. § 102(b) as anticipated by Dessouki (US 2006/0076200 Al, pub.
Apr. 13, 2006). Ans. 2; Final Act. 3--4. Accordingly, we do not address
claims 20 and 23 in this Decision.
4 The Examiner and Appellants both refer to Berry JR. as "JR." For
consistency, we will also use this reference.
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Appeal2014-006083
Application 12/174,320
2) Claims 14--18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berry JR. and Dessouki .
3) Claims 13 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Berry JR. and Daudi (US 6,241,055 B 1, iss.
June 5, 2001).
DISCUSSION
Anticipation - Claims 11 and 12
Appellants' invention relates to rotating parts such as an automobile
brake rotor that may be subject to undesirable vibrations during operation.
Spec. i-f 3. The Examiner finds that all limitations of claim 11 are disclosed
in JR. Final. Act. 2-3. Appellants argue, inter alia, that JR. does not
anticipate claim 11 because it does not disclose the recited "layer of particles
or fibers provided on at least one face of the frictional damping insert."
App. Br. 16. The Examiner states this limitation is found in JR. 's "two layer
60 and 62" damping insert of Figure 2, (Final Act. 2-3), wherein "inner liner
62 can be made of plastic or other similar material ... [and] function[ s] as a
layer of fiber." Ans. 4. For the following reasons, we find Appellants'
argument to be persuasive.
Claim 11 recites "a frictional damping insert" with "a layer of
particles or fibers provided on at least one face of the frictional damping
insert." Appeal Br. 36, Claims App. Figure 7 of Appellants' Specification
discloses frictional damping insert 504 with a coating of irregularly shaped
particles 514 on its outer surfaces in the areas facing body 506. Spec. i-f 30,
Fig. 7. Claim 11 thus requires a coating of discrete particles on at least one
surface of the frictional damping insert.
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Appeal2014-006083
Application 12/174,320
JR. discloses that liner 62 is fabricated from "rubber, either natural or
synthetic such as thermoplastic or neoprene." JR. i-f 28. JR. discloses that
liner 62 creates a frictional damping effect by pushing against rod 22. See
id. i-f 30, Fig. 2. The surface of liner 62 is in direct contact with rod 22. Id.
at Fig. 2. JR. contains no disclosure that liner 62 contains fibers, or
"function[ s] as a layer of fiber," or that a layer of particles or fibers is
provided on at least one face of liner 62 or shell 60. Consequently, the
Examiner's finding that JR. discloses the recited "layer of particles or fibers"
is not supported by the disclosure of JR. and claim 11 is not anticipated by
JR. We, thus, reverse the rejection of claim 11, and claim 12 which depends
on claim 11, under 35 U.S.C. § 102(b).
Obviousness - Claims 14-18
The Examiner rejects these claims, which are all dependent on claim
11, over JR. and Dessouki. Final Act. 5-7. The Examiner does not rely on
Dessouki for disclosing a layer of particles provided on at least one face of a
frictional damping element, as recited in claim 11, for any one of claims 14--
18. Id. However, in regard to claim 16, the Examiner finds that Dessouki
discloses particles embedded in an insert. Id. at 6 (citing Dessouki i-fi-1 31,
54). We note Dessouki discloses "providing a polymer, ceramic or metal
powder insert molded into or otherwise located in the annular slot of the
rotor cheek." Dessouki i-f 31. This description does not disclose that the
insert has a layer of particles or fibers provided on at least one face thereof.
Paragraph 54 of Dessouki discloses an insert with a surface treatment, but
not a layer of particles or fibers on at least one face of the insert.
Accordingly, the Examiner does not identify any disclosure in Dessouki of a
layer of particles or fibers provided on at least one face of a frictional
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Appeal2014-006083
Application 12/174,320
damping insert, as recited in claim 11. The Examiner's application of
Dessouki, therefore, does not cure the deficiency in JR. noted above in
connection with claim 11. Therefore, we reverse the rejection of claims 14--
18 under 35 U.S.C. § 103(a).
Obviousness - Claims 13 and 19
The Examiner rejects these claims, which are dependent on claim 11,
over JR. and Daudi. Final Act. 7-8. For claim 13, the Examiner determined
that the recited thickness range of the particles or fibers in the layer of claim
11 would have been obvious. However, as discussed above, the Examiner's
finding that JR. discloses the layer of particles recited in claim 11 is not
supported by JR. For claim 19, the Examiner cites Daudi for materials that
could be used to fabricate the particles or fibers recited in claim 11, not for
disclosing a layer of particles or fibers provided on a face of a frictional
damping insert, as recited in claim 11. 5 Id. The Examiner's application of
Daudi, therefore, does not cure the deficiency in JR. noted above in
connection with claim 11. Therefore, we reverse the rejection of claims 13
and 19 under 35 U.S.C. § 103(a).
5 The Examiner refers to Daudi at column 6, lines 53---61 and Figure 4 for
this disclosure. Final Act. 8. However, the subject matter referred to by the
Examiner in the Final Action does not appear in the cited portions in Daudi.
We are unable to locate this subject matter anywhere else in Daudi.
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Appeal2014-006083
Application 12/174,320
DECISION
The Examiner's decision rejecting claims 11-19 is reversed.
REVERSED
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