Ex Parte McCann et al

Board of Patent Appeals and Interferences

Jan 9, 2008

10701351 (B.P.A.I. Jan. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENIS JOHN MCCANN and DENNIS A. KRAMER
____________

Appeal 2007-4018
Application 10/701,351
Technology Center 3600
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Decided: January 09, 2008
____________

Before WILLIAM F. PATE, III, TERRY J. OWENS and JOHN C. KERINS,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Denis John McCann et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-5, 7, 8, 13, 14, 27 and 29-32. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
Claims 20-26 are canceled, pending Claims 6 and 9-12 are withdrawn, and
Claims 15-19 and 28 have been indicated by the Examiner as containing allowable
subject matter.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ invention is a vehicle parking brake system that employs the
electronic braking system (EBS) of the vehicle to apply the vehicle brakes in
response to a parking brake demand, and employs a pneumatically-controlled
locking device to lock the vehicle brake assembly in the applied position in
response to the parking brake demand. The parking brake system employs a dual
hand control having an electronic control element and a pneumatic control
element, such that, when the dual hand control is operated to demand application
of the parking brake, the electronic control element will control the application of
the vehicle brakes and the pneumatic control element will control the locking
device. The parking brake system, when used on a heavy commercial vehicle,
eliminates the need to use bulky and expensive pneumatically-controlled spring
actuators that are separate from the vehicle brake system.
Claims 1, 3, 27, 30 and 32, reproduced below, are representative of the
subject matter on appeal.
1. A parking brake system for a vehicle comprising:

an air chamber for actuating a vehicle brake assembly;

a parking demand mechanism selectively actuated to
mechanically apply a brake force to the vehicle brake
assembly, said parking demand mechanism comprising a
dual hand control including an electronic control element
for communicating with an electronic braking system
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control unit and a pneumatic control element for
communicating with a parking brake air reservoir; and
an air cylinder having a locking component that locks the
vehicle brake assembly in an applied condition wherein
said locking component is pneumatically controlled in
response to movement of said dual hand control.

3. The system of claim 1 wherein said dual hand control
is operably connected to a hand control valve fluidly
connecting said parking brake air reservoir to said air
cylinder.

27. The system of claim 1 wherein said locking
component includes a first locking mechanism and a
second locking mechanism that cooperate with each other
to hold the vehicle brake assembly in said applied
condition.

30. The system of claim 29 including an air connection
line connecting said pneumatic control element to said air
cylinder.

32. The system of claim 1 wherein said electronic
control element generates an electronic signal to apply
the vehicle brake assembly in response to a park demand
and wherein said pneumatic control element generates an
air signal to actuate said locking component in response
to the park demand.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
McCann WO 99/48738 September 30, 1999

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The following rejections are before us for review:
1. Claims 1, 2, 27, and 29-32 stand rejected under 35 U.S.C. § 102(b) as
anticipated by McCann.
2. Claims 3-5, 7, 8, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as
being obvious in view of McCann.
ISSUES
A first issue before us is whether Appellants have shown that the Examiner
erred in finding that the subject matter of Claims 1, 2, 27, and 29-32 is anticipated
by McCann. A second issue before us is whether Appellants have shown that the
Examiner erred in concluding that the subject matter of Claims 3-5, 7, 8, 13 and 14
would have been obvious to a person of ordinary skill in the art at the time the
invention was made. One particularly significant issue common to the rejection of
all claims is whether Appellant has demonstrated that the Examiner erred in
interpreting the McCann reference as disclosing a “dual hand control” in the
parking demand mechanism set forth therein.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed.
Cir. 1988) (explaining the general evidentiary standard for proceedings before the
Office).
1. The system disclosed in the cited McCann reference includes an electrical
hand control 20, described as being a manually operated electrical device,
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employed to send electrical control signals to the vehicle EBS to control
application of the vehicle brakes, and to control a separate parking latch
mechanism used to lock the vehicle brakes in their applied position to serve as
parking brakes. (McCann, p. 2, l. 26-p. 3, l. 1; p. 4, ll. 3-9).
2. The parking latching mechanisms in McCann can be electrically or
electro-pneumatically operated. (McCann, p. 4, ll. 12-13).
3. One embodiment of the McCann latching mechanism employs a stop
device in the form of a wedge which can be driven by a controlled actuator into
engagement with a component of the vehicle brake, to maintain the brake in a
selected parking brake condition. The controlled actuator is disclosed as
preferably being an air cylinder or an electric motor. (McCann, p. 3, ll. 20-23).
4. In the embodiment in which the McCann system employs a
pneumatically-operated latching mechanism, the electrical hand control 20 has an
electronic control element and a pneumatic control element.
5. Appellants’ “dual hand control” is “dual” in that it controls two (“dual”)
subsystems, one being the EBS for applying the vehicle brakes, and the other being
a pneumatic brake locking subsystem. The two subsystems are controlled via an
electronic control element and a pneumatic control element which are part of the
dual hand control. (See, e.g., Specification, p. 6, ¶[0036]).
6. McCann discloses an embodiment in which the hand control device 20
includes a ganged slider in conjunction with two potentiometers, and that this hand
control device can be used to effect graduated braking via the vehicle brake EBS,
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as the hand control device is moved between its “ brakes off” and “parking brake
on” positions. (McCann, p. 8, ll. 3-12).
7. McCann discloses that an air cylinder may be used, in conjunction with a
locking wedge as a locking component, to move the wedge toward and away from
a brake-locking position. (McCann, p. 3, ll. 20-23). The use of a pneumatic air
cylinder necessarily requires that the system have means for pressurizing and
depressurizing the air cylinder to move the locking wedge.

PRINCIPLES OF LAW
Anticipation of a claim exists when each and every element set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed.
Cir. 1987), cert. denied, 484 U.S. 827 (1987); In re Cruciferous Sprout Litig., 301
F.3d 1343, 1349 (Fed. Cir. 2002). Once a prima facie case of anticipation has been
established, the burden shifts to the Appellant to prove that the prior art product
does not necessarily or inherently possess the characteristics of the claimed
product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d at
708-09.
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, (1966), the
Supreme Court set out a framework for applying the statutory language of §103:
[T]he scope and content of the prior art are to be determined; differences
between the prior art and the claims at issue are to be ascertained; and the
level of ordinary skill in the pertinent art resolved. Against this background
the obviousness or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but unsolved
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needs, failure of others, etc., might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Id. at 17-18.

While the sequence of these questions might be reordered in any particular
case, the factors continue to define the inquiry that controls. If a court, or patent
examiner, conducts this analysis and concludes the claimed subject matter was
obvious, the claim is invalid or unpatentable under §103. See KSR Int’l v. Teleflex
Inc., 127 S.Ct. 1727 (2007).
Patent application claims are given their broadest reasonable interpretation
during the application process, for the simple reason that before a patent is granted
the claims may be readily amended, for the purpose of distinguishing cited
references, or in response to objections raised under Section 112, as part of the
examination process. Burlington Industries, Inc. v. Quigg, 822 F.2d 1581, 1583
(Fed. Cir. 1987). This broadest reasonable construction is to be assessed in light of
the specification as it would be interpreted by one of ordinary skill in the art. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Further, in
making this assessment, embodiments present in the specification will not be read
into the claims in determining their scope. Phillips v. AWH Corp., 415 F.3d 1303,
1323 (Fed. Cir. 2005) (en banc); see also, In re Trans Texas Holdings Corp., 498
F.3d 1290 (Fed. Cir. 2007).
ANALYSIS
Anticipation rejection of Claims 1, 2, 27, and 29-32
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Appellants contend that the rejection of Claim 1 under 35 U.S.C. § 102(b) as
being anticipated McCann1 is erroneous for two reasons, summarized as follows:
(1) the McCann parking brake system does not employ a “dual hand
control” having both an electronic control element and a pneumatic control
element; and
(2) the McCann parking brake system does not disclose the use of an air
cylinder having a locking component which is pneumatically controlled in
response to a movement of a dual hand control, in combination with a dual hand
control having a pneumatic control element.
(Appeal Br. 4, 5).
Initially, we note that the McCann reference clearly discloses the use of an
air cylinder having a locking component which operates in response to movement
of a hand control, to lock the vehicle brakes in position (Findings of Fact 1-3), so
only contention (1) above requires any detailed analysis.
Appellants insist that the McCann system does not have a dual hand
control2, on the basis that it does not have a pneumatic control element, because it
is capable of sending only electrical signals. Appellants would thus have us

1 The McCann parking brake system, like the claimed system, enables the
elimination of a separate pneumatically-controlled spring brake system that
operates essentially independently of the main vehicle braking system.

2 The “dual hand control” element found in Claim 1 is “dual” in the sense that it
controls two (dual) subsystems, i.e., the EBS for the vehicle brakes, and a
pneumatic circuit for the brake locking subsystem, using an electronic control
element and a pneumatic control element, respectively. (Finding of Fact 5).

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interpret the “pneumatic control element” of the claimed dual hand control as
requiring that the control element itself operate pneumatically, e.g., that the
element is a valve or similar controller.3 Appellants’ specification, however, does
not adequately evidence that the term “pneumatic control device” must be or
should reasonably be interpreted this narrowly.
The specification does not provide any specific definition for the term
“pneumatic control device” which would restrict its meaning so as to include only
a pneumatically-operated device. Appellants’ drawing figures illustrate the
component only in schematic form. (See, e.g., Fig. 1). The scant description in the
specification states that the pneumatic control element comprises a “hand control
valve”, which operates to depressurize or pressurize (in two different
embodiments) the air connection line 56 or 256 when the hand control is moved
into the “park” position. (Specification, p. 7, ¶[0039]; p. 13-14, ¶[0059]).
We are not permitted, however, to interpret claims by reading into the claims
elements set forth in the specification. Given the absence of a definition or other
evidence that would dictate otherwise, a reasonable interpretation of the term
“pneumatic control element” is that it would include any element that controls a
component, such as an air cylinder, that operates pneumatically.4

3 Claim 1 recites that the pneumatic control element is “for communicating with a
parking brake air reservoir”. There is, however, no requirement that the
“communicating” between the element and the reservoir necessarily requires the
use of pneumatics to effect the communication.

4 A reading of the claims supports this interpretation. Claim 1 sets forth that the
dual hand control includes a pneumatic control element, whereas dependent Claim
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The hand control 20 in McCann, described as being a manually operated
electrical device, is employed to send electrical control signals to the vehicle EBS
to control application of the vehicle brakes, and to separately send electrical signals
to control parking latch mechanisms at each wheel, to lock the vehicle brakes in
their applied position to serve as parking brakes. (Finding of Fact 1). The parking
latching mechanisms can be electrically or electro-pneumatically operated, using
an air cylinder and a locking wedge. (Findings of Fact 2, 3). Thus, the portion of
hand control 20 that sends signals to initiate operation of the pneumatic air cylinder
and locking wedge is reasonably regarded as being a “pneumatic control element”.
(Finding of Fact 4).
The Examiner correctly concluded that McCann thus discloses a dual hand
control having an electronic control element and a pneumatic control element, as
set forth in Appellants’ Claim 1.
Appellants, in their Reply Brief, further argue that actuation of the latching
mechanism in McCann is initiated by a feedback quantity related to the brakes
being applied to a preset level, and that this evidences that the hand control 20 has
no pneumatic control device. (Reply Br. 3). While feedback may be relied on, in
part, in operating the latching mechanism, the hand control 20 clearly controls

3 recites that this dual hand control is operably connected to a hand control valve,
and that the hand control valve fluidly connects the parking brake reservoir to the
air cylinder. Claim 3 thus requires that the hand control valve be a component
different from the pneumatic control element of the dual hand control, and that the
pneumatic control element would be used to control the valve in a pneumatic
circuit.

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whether the latching mechanism is or is not to be actuated, as admitted by
Appellants in their Appeal Brief.5
Appellants have failed to show reversible error in the Examiner’s
interpretation of Claim 1 and the McCann reference, and we therefore affirm the
Examiner’s rejection of that claim under 35 U.S.C. § 102(b).
Claim 2 depends from Claim 1, and further recites that the dual hand control
provides proportional control for applying the vehicle brakes in proportion to a
braking demand generated by movement of the dual hand control. Appellants
contend that the Examiner has misinterpreted the scope of the claim, and assert that
the cited portion of the McCann reference does not disclose proportional braking in
response to a braking demand generated by the dual hand control.
The Examiner’s position is that the elements found in Claim 2 require only
that the hand control generate a signal that is communicated to the braking system
control unit, which unit applies the brakes in response to the braking demand.
(Answer 9). The Examiner cites to the last paragraph on page 6 and first paragraph
on page 7 of McCann as disclosing these features. Although not stated explicitly,
we believe that underlying the Examiner’s interpretation of Claim 2 is an
assumption that proportional control is inherent in all braking systems.
To the extent that this would be a contested assumption or finding, we note
that the McCann reference further explicitly teaches that the parking brake system
therein employs proportional control. McCann describes that the hand control

5 Appellants’ brief states that, “[T]he hand control 20 includes a hand-operated
lever 104 that … operates a pair of switches SW1, SW2 … that provide electrical
signals for use in initiating the operation of parking brake latches.” (Appeal Br. 8).
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device can be a variable transducer, and that the variable transducer can be
employed to enable graduated braking, via the vehicle brake EBS, to be provided
between the brakes-off and park positions. (Finding of Fact 6). Accordingly, we
will affirm the rejection of Claim 2 as being anticipated by McCann.
Claim 27 also depends from Claim 1, calling for the locking component of
the air cylinder to include a first locking mechanism and a second locking
mechanism that cooperate with each other to hold the vehicle brake assembly in a
brakes-applied condition. Appellants contend that the Examiner erred in finding
that the wedge 54 and operating shaft (op-shaft) 103 of McCann meet the
limitations of a first locking mechanism and a second locking mechanism.
Specifically, Appellants note that Claim 1, from which Claim 27 depends, defines
the locking component as being a component of the recited air cylinder, whereas
the op-shaft is not a component of the air cylinder, but of the vehicle brake itself.
(Appeal Br. 7)
Wedge 54 of the McCann device is undoubtedly a first or second locking
mechanism that is part of an air cylinder locking component, in the embodiment of
McCann that employs an air cylinder. However, we agree with Appellant that the
op-shaft 103 can not reasonably be regarded as being a locking mechanism that is
part of an air cylinder locking component, as Appellant correctly notes that the op-
shaft is a component of the vehicle brake itself. The rejection of Claim 27 under
35 U.S.C. § 102(b) will therefore be reversed.
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Appellants contend that Claims 29 and 316 are not anticipated by McCann,
in that McCann does not disclose that the pneumatic control element will generate
an “air signal” when the dual hand control is moved into a park position, with the
“air signal” actuating the locking component of the air cylinder. The Examiner
counters by asserting that, “since it has been established that a pneumatic control
element is taught by the reference, most certainly it would have to generate an air
signal to actuate the pneumatic/air cylinder used to lock the parking brake.”
(Answer 10).
The term “air signal”, in the context of Appellants’ preferred embodiment,
appears to involve the opening of the hand control valve to place air line (56 or
256) in fluid communication with an air tank (42 or 242), which causes line (56 or
256) to experience a decrease (56) or an increase (256) in pressure. The decrease
or increase in pressure in turn actuates the air cylinder.
Pneumatic operation of a device such as the McCann air cylinder inherently
involves pressurizing or depressurizing the cylinder. (Finding of Fact 7). We
therefore agree with the Examiner that the pneumatic control element in the
McCann reference would necessarily cause an “air signal” of this type to be
generated in order to actuate or operate the air cylinder in that system.
Accordingly, we will affirm the rejection of Claims 29 and 31 under 35 U.S.C.
§ 102(b).
Claim 30 stands rejected under 35 U.S.C. § 102(b) in view of McCann. That
claim, which also depends from Claim 1, recites that the system is to have “an air

6 Claims 29 and 31 depend from Claim 1, as well.
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connection line connecting said pneumatic control element to said air cylinder.”
The Examiner asserts that this claim element is inherent in the McCann disclosure,
while Appellants insist that, “none of the Figures in McCann disclose any type of
air connection line to hand control 20. In order to sustain an anticipation rejection
based on an inherent disclosure of a claim element, we must find that the element
is necessarily included in the cited reference. However, as pointed out by
Appellants, the McCann reference discloses embodiments in which the hand
control has only electrical connections. It was thus erroneous to conclude that an
air connection line connecting the pneumatic control element to an air cylinder is
an inherent feature in the McCann system. We will therefore reverse the rejection
of Claim 30.
One further claim, Claim 32, is rejected as being anticipated by McCann. In
opposing this rejection, Appellants raise two of the same issues already addressed
above with respect to Claim 1 and Claim 29. McCann is argued to lack any
disclosure of a dual hand control and of a pneumatic control element which
generates an air signal to actuate the locking component. For the reasons stated
previously in the discussions directed to Claims 1 and 29, we find no error in the
Examiner’s position and conclusion, and will affirm the rejection of Claim 32.

Obviousness Rejection of Claims 3-5, 7, 8, 13 and 14
The remaining claims on appeal stand rejected under 35 U.S.C. § 103(a) as
being obvious in view of the McCann reference. Rejected Claim 3 depends from
Claim 1 and the remaining rejected claims depend directly or indirectly from
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Claim 3. Appellants argue that Claims 3 and 4; Claims 5, 7 and 8; Claim 13; and
Claim 14 are separately patentable from each of the other groupings.
Claim 3 depends from Claim 1, as noted, and further recites that the claimed
dual hand control is “operably connected to” a hand control valve, which valve
fluidly connects a parking brake air reservoir to the air cylinder recited in Claim 1.
The McCann reference does not explicitly disclose a valve7, and the Examiner has
noted that it would have been obvious to have the hand control 20 operably
connected to a valve that connects the air cylinder to an air reservoir, in order to
obtain and maintain adequate pressurization and depressurization of the latching
mechanism.
Appellants’ contend that McCann teaches away from having the hand
control connected to a valve, in that McCann was seeking to eliminate a pneumatic
hand control valve as part of eliminating a fully pneumatic spring brake system
that is a completely different system from the vehicle braking system. The
argument is not persuasive. McCann specifically notes that the parking brake
latching mechanism of the new design therein may be electro-pneumatically
operated, including the use of an air cylinder and locking wedge. A person of
ordinary skill in the art would recognize that a valve would be required in the
McCann system to control or regulate air flow and pressure in operating the air

7 The claim term, “hand control valve”, is not limited in scope to a valve that
involves control by hand, it carries that name because it is a component related to
the “dual hand control”. In the specification, Appellants describe that the
pneumatic control element portion of the dual hand control “comprises” a hand
control valve, whereas Claim 3 recites that the dual hand control is operatively
connected to a hand control valve.
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cylinder in the latching mechanism, and that such valve would obviously be
operably coupled to hand control 20, which is used to initiate operation of the
latching mechanism.
We are thus not persuaded that the Examiner erred in rejecting Claims 3 and
4 under 35 U.S.C. § 103(a) in view of McCann, and will therefore affirm the
rejection.
Appellants contend that the recitation in Claim 5 stating that the pneumatic
control element generates an air signal to the air cylinder to lock the locking
component when the dual hand control is moved to the “park” position confers
patentability on Claims 5, 7 and 8. We have addressed this limitation previously in
discussing the rejection of Claim 29 as being anticipated by McCann. For the
reasons set forth in that discussion above, we do not find error in the Examiner’s
rejection of Claims 5, 7 and 8 under 35 U.S.C. § 103(a), and will affirm the
rejection.
Claim 13 depends from Claim 5, and further requires that the system release
air via the hand control valve to depressurize the air cylinder to actuate the locking
component. The Examiner, in rejecting this claim under 35 U.S.C. § 103(a), did
not articulate a reasonable basis establishing that a person of ordinary skill in the
art would have found these claimed features to have been obvious. Accordingly,
we will reverse the rejection of Claim 13.
Appellants argue that Claim 14, which depends from Claim 13, is separately
patentable therefrom. The elements of Claim 14, relating to the use of a wedge in
the locking component, appear to be disclosed in the McCann reference. However,
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in view of our decision above to reverse the rejection of Claim 13, the rejection of
Claim 14 must be reversed as well.

CONCLUSIONS OF LAW
We conclude that Appellants have failed to establish that reversible error
exists in the rejection of Claims 1, 2, 29, 31 and 32 under 35 U.S.C. §102(b).
We conclude that Appellants have established that reversible error exists in
the rejection of Claims 27 and 30 under 35 U.S.C. § 102(b).
We conclude that Appellants have failed to establish that reversible error
exists in the rejection of Claims 3-5, 7 and 8 under 35 U.S.C. §103(a).
We conclude that Appellants have established that reversible error exists in
the rejection of Claims 13 and 14 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject Claims 1, 2, 29, 31 and 32 under
35 U.S.C. § 102(b) is AFFIRMED.
The decision of the Examiner to reject Claims 27 and 30 under
35 U.S.C. § 102(b) is REVERSED.
The decision of the Examiner to reject Claims 3-5, 7 and 8 under
35 U.S.C. § 103(a) is AFFIRMED.
The decision of the Examiner to reject Claims 13 and 14 under
35 U.S.C. § 103(a) is REVERSED.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

AFFIRMED-IN-PART

JRG

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