Ex Parte Mower

Board of Patent Appeals and Interferences

Dec 21, 2006

10860445 (B.P.A.I. Dec. 21, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL L. MOWER
____________

Appeal 2006-3196
Application 10/860,445
Technology Center 3600
____________

Decided: December 21, 2006
Heard: December 12, 2006
____________

Before JENNIFER D. BAHR, ROBERT E. NAPPI, and LINDA E. HORNER,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1, 3, and 5, all of the claims pending in the application.
Claims 2 and 4 have been canceled.
We AFFIRM IN PART.
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BACKGROUND
The appellant's invention relates to an electromagnetic-actuated brake.
Claim 1, reproduced below, is representative of the subject matter on appeal. A
copy of all of the claims on appeal can be found in the appendix to the appellant’s
brief.
1. In an electromagnetic actuated brake, the improvement comprising:
a plurality of interleaved disc segments which are less than complete
circles;
some segments being rotatable about an axis of rotation; and
some disc segments having friction brake material carried thereon at a
position remote from said axis.

The examiner relies upon the following as evidence of unpatentability:
LeBlanc 3,550,740 Dec. 29, 1970
Ely 3,731,769 May 08, 1973
Bok 4,747,473 May 31, 1988
Ericson 5,226,508 Jul. 13, 1993
Hyde 5,558,186 Sep. 24, 1996
The following rejection is before us for review:
1. Claims 1, 3, and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ericson in view of Hyde.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellant regarding this appeal, we make reference to the
examiner's answer (mailed May 31, 2006) for the examiner's complete reasoning in
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support of the rejection and to the appellant's brief (filed March 30, 2006)1 and
reply brief (filed June 15, 2006) for the appellant's arguments.

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations that follow.
The appellant argues claims 1 and 5 as a group. Brief, p. 3.2 As such, we
select claim 1 as the representative claim. 37 CFR § 41.37(c)(1)(vii) (2006). The
appellant argues claim 3 separately.
In the rejection of independent claim 1, the examiner determined that
Ericson discloses an electromagnetically-actuated brake having a plurality of
interleaved disc segments (60, 70). The examiner found that some of the
segments are rotatable about an axis of rotation and some segments have friction
brake material disposed at a position remote from the axis. The examiner

1 The appellant filed an Appeal Brief on October 13, 2005; however, the Board
found the brief to be defective, returned the application to the examiner, and
ordered the applicant to file a Substitute Appeal Brief in compliance with 37 CFR
§ 41.37. See Order Returning Undocketed Appeal to Examiner, mailed March 22,
2006. The appellant filed a Substitute Appeal Brief on March 30, 2006. We refer
to this Substitute Appeal Brief throughout the opinion as the appellant’s brief.
2 The appellant attempts to condition the grouping of claims 1 and 5 on the Board
selecting claim 5 as the representative claim. We decline to do so. The appellant
has not separately argued the patentability of claim 5. As such, we treat this claim
as standing or falling together with claim 1.
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acknowledged that Ericson does not teach that the disc segments are less than
complete circles. The examiner relied on Hyde to teach using interleaved disc
segments that are less than complete circles. In particular, the examiner
determined that because the interleaved annular discs disclosed in Hyde – and in
LeBlanc, Ely, and Bok to which Hyde refers – are formed from segments, they
meet the limitation of claim 1 of “a plurality of interleaved disc segments which
are less than complete circles.” Answer, p. 4. The examiner found that it would
have been obvious to one having ordinary skill in the art at the time the invention
was made to have used the segmented disc of Hyde in the brake of Ericson to
provide additional stability in high energy applications. Answer, p. 3.
The appellant contends that none of the prior art patents disclose interleaved
segments. Brief, p. 4. In particular, the appellant argues that Hyde and the
references cited in Hyde disclose segmented annular members useful in disc brakes
and that these segments are attached to an annular ring and to each other. Brief, p.
5. The appellant argues,
All of the claims require a plurality of interleaved disc
segments which are less than complete circles. All of the
references teach interleaving complete circles of braking
elements. None of the references teach simply
interleaving segments. Brief, p. 5.
While we agree with the appellant’s description of the prior art, we do not
construe claim 1 as narrowly as the appellant proposes. Rather, claim 1 is written
more broadly to require “a plurality of interleaved disc segments which are less
than complete circles.” We read the claim to require only that each segment is less
than a complete circle. We do not read the claim to require that each segment
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remains independent from other segments such that they do not collectively form a
disc.
Hyde teaches a brake assembly having a brake stack formed of a plurality of
interleaved stator and rotor friction disks formed of a structural core carrier and
mechanically attached friction linings. Hyde, col. 2, lines 8-11. In one
embodiment, Hyde teaches forming the carrier (45) for the friction rotor disc (44)
using mechanically-joined segments. Hyde, col. 4, lines 45-48 (citing to Ely,
LeBlanc, and Bok). Each of the references referred to in Hyde discloses forming
annular discs using sector-shaped segments. Ely, col. 2, lines 19-22; LeBlanc, col.
2, lines 50-53; and Bok, col. 2, lines 25-28. When these annular discs are
interleaved with other such discs to form the brake stack, as taught in Ericson and
Hyde, the brake includes interleaved disc segments as recited in claim 1. As such,
we sustain the examiner’s rejection of claims 1 and 5 under 35 USC § 103(a) as
being unpatentable over Ericson in view of Hyde.
Pursuant to 37 CFR § 41.50(c), we suggest that the appellant consider
amending claim 1 in a way to recite more clearly the invention described in the
specification and to distinguish the prior art relied upon by the examiner. For
example, the appellant might consider amending the recitation of “a plurality of
interleaved disc segments which are less than complete circles” to more clearly
claim “an interleaved disc pack wherein some layers of the disc pack each consist
of a single disc segment which is less than a complete circle.” Such an amendment
would overcome the rejection of the claims as unpatentable over Ericson and
Hyde.
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With regard to claim 3, the appellant argues that all of the cited prior art
patents disclose disc brake assemblies having annular friction lining assemblies,
some of which are assembled using segments to form a circle. Brief, p. 4. The
appellant contends that none of the cited references show friction material which is
circular in plan view. Brief, p. 4.
The examiner interprets claim 3 to be broad enough to cover a situation in
which, when all of the segments are combined to form a disc, the friction lining is
“circular in plan view.” Answer, p. 5. The examiner appears to have found that
the segmented discs shown in Bok, LeBlanc and Ely, in which the segments, and
thus the corresponding friction material on the segments, combine to form an
annulus, satisfy the claimed limitation that the friction material is “circular in plan
view.” We disagree with the examiner’s interpretation of claim 3.
Claim 3 recites that “the friction material of some segments is circular in
plan view.” The specification describes that “[t]he segment 14 carries a disc
friction puck 40 on each side (see Figure 6) positioned near the end remote from
the shaft 20.” Specification, page 2, lines 28-29. As shown in Figure 5, the disc
friction puck 40 is circular in plan view. We interpret claim 3 in view of the
specification and find that one having ordinary skill in the art at the time of the
invention would understand this claim to mean that the friction brake material on
each individual interleaved disc segment is circular in plan view.
While we agree with the appellant that none of the art shows an individual
segment with friction material that is circular in plan view, we note that Hyde
suggests that the friction lining “may be in the form of individual pads or sectors of
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an annular ring.” Hyde, col. 5, lines 4-5. The question before us is whether this
suggestion in Hyde to form the friction lining of individual pads renders obvious
the claimed circular friction material. We find that the disclosure in Hyde of using
individual pads to form an annular ring would not have led one having ordinary
skill in the art to make the friction material on each disc segment in a circular
shape. Specifically, we do not see why a person having ordinary skill in the art,
intending to form an annular ring of friction material as suggested in Hyde, would
use circular friction pads to do so. Rather, presumably, one would use a pad
shaped in a way that would most closely form a ring when the disc segments are
connected together to form the disc.
The examiner further determined that the “applicant does not have criticality
for the claimed ‘circular’ shape and it appears that the invention would perform
equally well with a variety of friction material shapes.” Answer, p. 5 (citing In re
Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). We disagree with the
examiner’s assertion, because Hyde teaches that “[p]ads or sectors of currently
available carbon material have been found to wear much faster than continuous
annular friction members of the same material.” Hyde, col. 5, lines 5-7. As such,
were one to use circular pads, as recited in claim 3, according to Hyde, such pads
would wear faster and thus the invention would not perform equally well, as
posited by the examiner. Accordingly, we do not sustain the examiner’s rejection
of claim 3 as unpatentable over Ericson and Hyde.

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CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 5 is
sustained, and the decision of the examiner to reject claim 3 is not sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a). See 37 CFR § 1.136(a)(1)(iv).
AFFIRMED IN PART

)
JENNIFER D. BAHR )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal 2006-3196
Application 10/860,445

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