Ex parte Martin

Board of Patent Appeals and Interferences

Apr 24, 2001

08751980 (B.P.A.I. Apr. 24, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROLAND MARTIN
____________
Appeal No. 2001-0025
Application No. 08/751,980
____________
HEARD: APRIL 11, 2001
____________
Before COHEN, McQUADE, and LAZARUS, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 9
through 14 and 21 through 31. These claims constitute all of
the claims remaining in the application.
Appellant’s invention pertains to a brake disk for a
vehicle brake. A basic understanding of the invention can be
Appeal No. 2001-0025
Application No. 08/751,980
1 The examiner refers to this document as JP ‘237, while
appellant uses the first name of the inventor, i.e., Sadataka,
to identify this reference. We shall refer to this Japanese
reference as JP ‘237.
2 Our understanding of this document is derived from a
reading of a translation thereof prepared in the United States
Patent and Trademark Office, which translation we refer to in
the opinion set forth below. A copy of this translation is
appended to this opinion. We are aware of a translation of
this document provided by appellant (Paper No. 23).
2
derived from a reading of exemplary claim 9, a copy of which
appears in the appendix to the brief (Paper No. 28).
As evidence of obviousness, the examiner has applied the
documents listed below:
Stehle 3,809,192 May 7, 1974
Goodyear 1,433,090 Apr. 22, 1976
(Great Britain)
Oyano1 58[1983]-13237 Jan. 25, 1983
(Japan)2 (JP ‘237)
The following rejections are before us for review.
Appeal No. 2001-0025
Application No. 08/751,980
3
Claims 9 through 12 and 21 through 30 stand rejected
under 35 U.S.C. § 103 as being unpatentable over JP ‘237 in
view of Goodyear.
Claims 13, 14, and 31 stand rejected under 35 U.S.C. §
103 as being unpatentable over JP ‘237 in view of Goodyear and
Stehle.
The full text of the examiner’s rejections and response
to the argument presented by appellant appears in the office
action dated September 2, 1998 and the answer (Paper Nos. 18
and 29), while the complete statement of appellant’s argument
can be found in the brief (Paper No. 28).
In the Grouping of Claims section of the brief (page 5),
appellant groups the claims on appeal as follows. As to the
first ground of rejection, claims 9 through 12 and 21 through
28 are indicated to stand or fall together, while claims 29
and 30 are considered to be separately patentable and do not
stand or fall with the former claims. With respect to the
second ground of rejection, appellant specifies that claims
Appeal No. 2001-0025
Application No. 08/751,980
3 In our evaluation of the applied prior art, we have
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
(continued...)
4
13, 14, and 31 stand or fall together. In light of the above,
and consistent with 37 CFR 1.192(c)(7), we shall focus our
attention, infra, exclusively upon selected claims 9, 29, and
13. The remaining claims shall respectively stand or fall
with the claim selected from their group.
OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
assessed appellant’s specification and claims, the applied
teachings,3 the declaration of inventor and appellant Roland
Appeal No. 2001-0025
Application No. 08/751,980
3(...continued)
5
Martin (Paper No. 20), which declaration was executed December
16, 1998, and the respective argued points of view of
appellant and the examiner. As a consequence of our review,
we make the determinations which follow.
The rejection of claims 9 through 12
and claims 21 through 28
We sustain the rejection of claim 9. It follows that we
likewise sustain the rejection of claims 10 through 12 and 21
through 28 since, as earlier indicated, these claims stand or
fall with claim 9.
Claim 9 reads as follows.
A brake disk for a vehicle disk brake
comprising a material selected from the
carbon group and configured as an
internally ventilated brake disk,
including:
a pair of friction rings, and
Appeal No. 2001-0025
Application No. 08/751,980
4 The test for obviousness is what the combined teachings
of references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
6
a plurality of pins connecting the friction
rings together, said
friction rings being
connected together only
by said plurality of
pins,
said pins each having a thickened center
part serving to space the friction rings
from one another and respective end parts
secured in respective bores in the friction
rings by a heating process.
It is worthy of noting at this point that in our
obviousness evaluation of the content of claim 9, relative to
the collective teachings of JP ‘237 and Goodyear, we have
weighed declarant Martin’s stated perceptions of the applied
prior art as set forth in the declaration (paragraphs 8
through 12).
In applying the test for obviousness,4 we reach the
conclusion it would have been obvious to one having ordinary
Appeal No. 2001-0025
Application No. 08/751,980
7
skill in the art, from a combined consideration of the applied
teachings, to fabricate the two annular disks (rings) 8A, 8B of
JP ‘237 (Figs. 1 through 3) from a carbon group material
following the suggestion therefor that would have been derived
from the teaching of Goodyear (page 2, lines 11 through 16).
This conclusion is buttressed by the express disclosure in the
JP ‘237 document itself of the alternative of “carbon fiber”
for the two annular disks (translation, page 6, lines 7 and
8). As so modified, we appreciate the resulting brake disk
plate of JP ‘237 as being responsive to the structure of the
brake disk set forth in claim 9.
The argument advanced by appellant in the brief and the
statements of declarant Martin simply do not persuade us that
the examiner erred in rejecting claim 9 under 35 U.S.C. § 103.
Appellant argues (brief, page 6) that the examiner’s
understanding of the JP ‘327 is not correct in the assertion
that the rings (disks) are connected only by way of pins
(hollow rivets). As appellant sees it, the disks of JP ‘327
are connected together by “both hollow rivets 11 and legs 2-
Appeal No. 2001-0025
Application No. 08/751,980
5 In the declaration (paragraphs 8 and 12), declarant
Martin references the rivets as “pins” or “bolts”.
8
6". We disagree with appellant’s point of view. The JP ‘327
document (translation, page 3, lines 14, 15) makes it quite
apparent to us that leg parts (2-6) are merely “sandwiched
between” the annular disks (Fig. 2), while only hollow rivets5
structurally connect the disks(rings) together.
Responsive to appellant’s and declarant’s commentary
regarding the Goodyear reference (brief, page 7), we simply
point out that the Goodyear teaching was not relied upon by
the examiner for a disclosure of a connection between friction
rings “only” by a plurality of pins, as now claimed.
It is also asserted in the brief (pages 7 through 9) that
there is no suggestion in the applied art for pins “secured in
respective bores. . . by a heating process” as in claim 9. In
the declaration (paragraphs 8, 10, and 12), declarant likewise
addresses a lack of suggestion for securement by a heating
process. The argument appears to be premised upon the view
that the process limitation in article claim 9 is
Appeal No. 2001-0025
Application No. 08/751,980
9
determinative of the patentability of that claim. We do not
share that viewpoint. The patentability of claim 9 must be
predicated upon the structure of the claimed article and not
the argued method by which the article may have been made. In
other words, the determination of patentability in a product-
by-process claim is based on the product itself, even though
the claim may be limited and defined by the process. The
product or article in such a claim is unpatentable if it is
the same as or obvious from the product of the prior art, even
if the prior product or article was made by a different pro-
cess. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985). With the above particularly in mind, we
note that neither appellant nor declarant has pointed to any
structural securement difference that would be perceived in
the final disk brake product resulting from the broadly
claimed “heating process” that would distinguish the secured
pin and bore structure of the claimed brake disk from the
secured pin and bore structure of JP ‘237, and we perceive
none. Thus, the examiner’s rejection of claim 9, in
particular, under 35 U.S.C. § 103 is well founded.
Appeal No. 2001-0025
Application No. 08/751,980
10
The rejection of claims 29 and 30
We reverse the rejection of claims 29 and 30.
In appellant’s specification (page 2, line 22 to page 3,
line 2), it is indicated that the combination of pocket bores
and through-bores for accommodating the end parts of the
distancing pieces (pins) is contemplated according to certain
embodiments of the invention. Further, appellant teaches
(specification, page 4) and shows this combination in detail
in Figure 3.
Like the examiner (answer, page 5), we fully appreciate
that the applied teachings reveal that pocket bores for
isolation parts (Figures 10(b),(c),(d),(e),(f), and (g) of JP
‘327) and through-bores for hollow rivets (JP ‘327; Figure 3)
were well known at the time of appellant’s invention.
However, the difficulty we have with the rejection of claim 29
(and claim 30) is that the evidence of obviousness before us
would clearly not have been suggestive to one having ordinary
skill in the art of using other than either all pocket bores
Appeal No. 2001-0025
Application No. 08/751,980
11
or all through-bores for the respective hollow rivets and
isolation parts. As such, we are constrained to reverse the
rejection of claims 29 and 30.
The rejection of claims 13, 14, and 31
We sustain the rejection of claim 13. We also sustain
the rejection of claims 14 and 31 since these claims stand or
fall with claim 13 as mentioned above.
Claim 13 addresses “open through bores” interposed along
radially extending channels between rows of pins.
As seen in appellant’s Figs. 1 through 3, friction rings
2,3 have “through-bores 7” (specification, page 4, line 3).
Fig. 2 shows a distribution of pins 30 with through-bores 7
therebetween.
From our perspective, it would have been obvious to one
having ordinary skill in the art, at the time of appellant’s
invention, to provide the two annular disks of JP ‘327 with
Appeal No. 2001-0025
Application No. 08/751,980
12
through-bores (recesses) between the rows of rivets 11 (Fig.
1), following the teaching of Stehle. More specifically, it
is clear to us that the incentive on the part of one having
ordinary skill in the art for making the noted modification
would have simply been to gain the recognized cooling benefit
through-bores or recesses (Fig. 8) would provide, as discussed
by Stehle (column 1, lines 44 through 47).
Appellant acknowledges that Stehle does illustrate
through- bores, but faults the rejection as being hindsight
based since Stehle does not include pins (brief, pages 10 and
11). Therefore, according to appellant, Stehle could not
possibly suggest interposing through-bores in any particular
location with respect to pins in an already ventilated disk
such as in JP ‘327. For the reasons given above, we are not
in accord with appellant’s conclusion that the rejection is
based upon impermissible hindsight. To reiterate the point
made, the combined prior art teachings themselves clearly
would have been suggestive of the addition of through-bores in
the ventilated brake disk of JP ‘327 for cooling purposes.
Appeal No. 2001-0025
Application No. 08/751,980
13
In summary, this panel of the board has sustained the
rejection of claims 9 through 12 and 21 through 28 under
35 U.S.C. § 103 as being unpatentable over JP ‘237 in view of
Goodyear, but has not sustained the rejection of claims 29 and
30 on the same statutory ground. Additionally, we have
sustained the rejection of claims 13, 14, and 31 under 35
U.S.C. § 103 as being unpatentable over JP ‘237 in view of
Goodyear and Stehle.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 2001-0025
Application No. 08/751,980
14
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )
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