Ex Parte Ohta

Board of Patent Appeals and Interferences

Apr 30, 2012

10819249 (B.P.A.I. Apr. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MAKOTO OHTA
____________

Appeal 2009-014269
Application 10/819,249
Technology Center 3600
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Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Makoto Ohta (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1, 4, 5, 7,
15, 18, 19, and 21as unpatentable over Boisseau (WO 01/34991 A1,
published May 17, 2001)1 and Heibel (US 5,769,189, issued Jun. 23, 1998)
and claims 4, 5, 7, 18, 19, and 21 over Boisseau, Heibel, and Norton (Robert
L. Norton, Machine Design: An Integrated Approach, pages 703, 773, 775,
785, 794, and 803-805 (Prentice-Hall, Inc. 1996)). Claims 8, 12, and 222
have been canceled by Appellant and claims 2, 3, 6, 9-11, 13, 14, 16, 17, 20,
23, and 243 have been canceled by the Examiner. We have jurisdiction over
this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a “parking brake mechanism
integrally incorporated into a disc brake caliper assembly.” Spec. 1, para. 1.
Claim 1, is illustrative of the claimed invention and reads as follows:
1. A parking brake mechanism for a disc brake
caliper, said mechanism comprising:
a caliper body including a piston cavity and
a ball ramp cavity, said cavities adjacent one
another;
a piston slidably supported for axial
displacement within said piston cavity of said
caliper body;

1 We derive our understanding of this reference from the translation,
filed April 4, 2008, contained in the image file wrapper of this application.
All references to the text of this document are to portions of the translation.
2 See Appellant’s Amendment at 9, filed March, 14, 2006.
3 See Office Action at 2, mailed June 26, 2009.
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a first gear supported by said caliper body
for rotational displacement about a first rotational
axis;
a second gear in constant meshing
engagement with said first gear, said second gear
supported by said caliper body coaxially with said
piston for rotational displacement about a second
rotational axis, wherein said second rotational axis
is substantially perpendicular to said first rotational
axis; and
a ball-ramp assembly operably disposed in
said caliper ball ramp cavity, said ball-ramp
assembly positioned between said second gear and
said piston adapted to translate said rotational
displacement of said second gear into axial
displacement of said piston, said ball-ramp
assembly includes a first ramp plate having a first
ramped surface, a second ramp plate having a
second ramped surface, and a bearing member
disposed therebetween adapted to move on said
first and second ramped surfaces, said first ramp
plate including said second gear and said second
ramp plate coupled with said piston for displacing
said piston in said piston cavity, thereby actuating
the parking brake mechanism.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The obviousness rejection over Boisseau and Heibel
Appellant argues that: (1) the combined teachings of Boisseau and
Heibel fail to disclose “a first gear being supported by the caliper body of
the disk brake caliper” (App. Br. 7-10); (2) the Examiner’s taking of Official
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Notice was improper (App. Br. 10-11); and (3) the Examiner has not
provided an adequate reasoning with rational underpinning to combine the
teachings of Boisseau and Heibel (App. Br. 12-13).

Appellant’s First Argument
Each of independent claims 1 and 15 requires “a first gear supported
by said caliper body.” App. Br., Claims Appendix.
Pointing to Figure 2 of Heibel, the Examiner found that Heibel
discloses a first gear, namely, worm 22, and a second gear, namely, worm
gear 24, supported by caliper body 12. Ans. 6 and 8.
Appellant argues that “the Examiner has mistakenly interpreted the
motor housing (18) as part of a caliper body, when clearly they are two
separate components.” App. Br. 9. According to Appellant, the first gear of
Heibel, namely, worm 22, “is supported by the housing of motor (18) and
not a brake caliper body.” App. Br. 10. Hence, Appellant concludes that,
“nowhere in Heibel does it teach or suggest direct support of the gear by the
caliper body.” Reply Br. 9. Emphasis added.
At the outset, we note that Appellant’s argument is not commensurate
with the scope of independent claims 1 and 15, which do not require that the
first gear be directly supported by the caliper body. As stated by our
reviewing court in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998),
“the name of the game is the claim.” It is well established that limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). Rather, independent claims 1 and
15 require that first gear be merely supported by the caliper body.
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In this case, we agree with the Examiner that the first gear 22 of
Heibel is supported by caliper body 12 (brake carrier) in a similar manner as
is Appellant’s first gear 18. See Ans. 11. When looking at Appellant’s
Figure 1 and Heibel’s Figure 2, we agree with the Examiner that in both
situations first gears 18 and 22, respectively, appear to be located outside the
caliper body. See Ans. 12. However, although we appreciate that
Appellant’s Specification describes first gear 18 as rigidly attached to input
shaft 72, which in turn “is rotatably supported in the caliper body 12 by a
bushing 74,” we note that independent claims 1 and 15 do not require that
the first gear be “supported in the caliper body,” but merely that it be
supported by the caliper body. Reply Br. 6. Emphasis added. See also,
Spec. 17, ll. 6-8. Although the claims are interpreted in light of the
Specification, limitations from the Specification are not read into the claims.
We must be careful not to read a particular embodiment appearing in the
written description into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004).
In this case, Appellant’s first gear 18 is supported by input shaft 72,
which is supported by bushing 74, which is supported by caliper body 12.
See Figure 1 of Appellant’s Drawings. In Heibel, electric motor 18, having
an armature shaft that drives worm 22 (first gear), is secured to brake carrier
12 (caliper body) that holds guide pins 14 for guiding sliding caliper 16.
Heibel, col. 5, ll. 25-30 and fig. 1. We further note that Figure 1 of Heibel
shows electric motor 18 connected directly (i.e., secured) to brake carrier 12
(caliper body). Although we appreciate that worm 22 is directly supported
by electric motor 18, nonetheless, because worm 22 is supported by electric
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motor 18 and electric motor 18 is secured to, i.e., supported by, brake carrier
12, we agree with the Examiner that worm 22 is also supported by brake
carrier 12. See Ans. 11. See also, Reply Br. 9.
Lastly, Appellant argues that the Examiner’s assertion that “anything
supported by a component which is connected to the caliper body is
supported by the caliper body … ignores the difference between a caliper
assembly and a caliper body.” Reply Br. 9. With respect to independent
claim 1, we note that Appellant’s argument is not commensurate with the
scope of independent claim 1 because claim 1 does not require a “caliper
assembly.” However, regarding independent claim 15, although a “caliper
assembly” is recited and it includes a “caliper body,” we note that similarly
in Heibel, caliper assembly, i.e., sliding-caliper disk brake 10, includes a
caliper body, i.e., brake carrier 12. Thus, we are not persuaded by
Appellant’s argument that the Examiner has ignored the difference between
a “caliper assembly” and a “caliper body.”

Appellant’s Second Argument
The Examiner took Official Notice that “screw gears, worm gears and
worm wheels and bevel gears are old and well known gear arrangements in
gear reduction assemblies of disc brakes.” Ans. 7.
Appellant argues that “[t]he record is devoid of any documentary
evidence to support this asserted ‘Official Notice’.” App. Br. 11. According
to Appellant, “the Examiner has the burden to bring forth evidentiary
support to support that an element is old and well-known within the art.”
Reply Br. 11.
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Although we appreciate that the Examiner bears the burden to provide
evidentiary support, nonetheless, the Examiner is permitted to take official
notice where the facts asserted to be well known “are capable of such instant
and unquestionable demonstration as to defy dispute.” See In re Ahlert, 424
F.2d 1088, 1091 (CCPA 1970). In this case, we agree with the Examiner
that screw gears, worm gears and worm wheels, and bevel gears are old and
well-known gear arrangements. Ans. 13. Furthermore, we are not
persuaded by Appellant’s argument because if an applicant does not
seasonably traverse the taking of official notice during examination, then the
object of the official notice is taken to be admitted prior art. In re
Chevenard, 139 F.2d 711, 713 (CCPA 1943). In this case, we agree with the
Examiner that Appellant did not traverse the Examiner’s taking of official
notice during examination. Ans. 13. Specifically, the first time Appellant
has traversed the Examiner’s taking of official notice is in the Appeal Brief.
See Id. Accordingly, Appellant did not seasonably traverse the taking of
official notice during examination and as such, we find that the facts asserted
to be well-known by the Examiner constitute admitted prior art.

Appellant’s Third Argument
Appellant argues that:
[T]here is no evidence that the gear configuration
of Heibel, or the gear configurations claimed in
claims 4, 5, 7, 18, 19, and 21 would be suitable (in
strength, durability or otherwise) to replace the
lever arm of Boisseau. Furthermore, this
modification may likely result in the inability of
Heibel to include manual actuation of the gear
since the distal end of Heibel would likely need to
be removed to accommodate this change.
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App. Br. 12. See also, Reply Br. 13.
Hence, Appellant concludes that:
In short, the record lacks any evidence of a
motivation to combine references to arrive at a
motivation to combine references to arrive at the
claimed combination as a whole. The reliance
upon hindsight is improper.

App. Br. 15.
At the outset, we note that the Examiner is not proposing to modify
the system of Heibel, but rather to modify Boisseau’s brake assembly to
include the electric motor actuation assembly of Heibel (electric motor 18,
worm 22, and worm gear 24) in place of lever 23 of Boisseau. See Ans. 6.
Furthermore, the Examiner has provided a reason with rational
underpinning (providing “a gear arrangement in place of a cable actuating
assembly … in order to simplify the brake assembly and to improve the
brake performance in case of emergency as taught by Heibel”). See Ans. 14;
See also, Heibel, col 1, l. 65 through col. 2, l. 5; In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)). It is well established that “when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” KSR, 550 U.S. at
416.
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The Examiner found that the electric motor actuation assembly of
Heibel would have been a suitable substitute for the cable actuation
assembly of Boisseau. Ans. 6-7. Given that both Boisseau and Heibel
disclose parking brake mechanisms and both require an actuation
mechanism; the Examiner has a sound basis for finding that the electric
motor actuation assembly of Heibel would have been a suitable substitute for
the cable actuation assembly of Boisseau. Moreover, the replacement of the
manually actuated lever 23 of Boisseau with the electrical actuation
assembly of Heibel is an obvious update in technology in order to gain the
commonly understood benefits of simplified operation and increased
reliability. See Leapfrog Enterprises, Inc. v. Fisher Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007).
Appellant provides no persuasive reason why a person of ordinary
skill in the art could not have implemented such a substitution. Neither does
the Appellant provide any persuasive reason why the results of the
substitution would have been unpredictable. Moreover, attorney argument
such as the strength or durability of Heibel’s gear configuration (see App.
Br. 12 and Reply Br. 12) cannot take the place of evidence in the
record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997). Although we appreciate Appellant’s concern that the motor/gear
configuration of Heibel may not generate sufficient force to cause breaking
of Boisseau’s brake (see Reply Br. 13), we do not find that choosing an
appropriately sized motor and worm/worm gear configuration to provide
sufficient force to Boisseau’s brake would have been beyond the skill of one
of ordinary skill in the art. Thus, the Examiner is correct in concluding that
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substituting the electric motor actuation assembly of Heibel for the cable
actuation assembly of Boisseau would have been obvious.
In conclusion, for the foregoing reasons, we shall sustain the rejection
of claims 1, 4, 5, 7, 15, 18, 19, and 21as unpatentable over Boisseau and
Heibel.

The obviousness rejection over Boisseau, Heibel, and Norton
The Examiner used the teachings of Norton to provide evidentiary
support for the fact that helical, bevel, and worm gears are known to
accommodate non-parallel shafts. Ans. 9. Thus, according to the Examiner,
it would have been obvious to a person of ordinary skill in the art to choose
a type of gear as taught by Norton for the brake mechanism of Boisseau and
Heibel “since it is old and well known to pick one type of gear from a
variety of gear types to use in order to accommodate different configurations
as taught by Norton.” Id.
Appellant argues that, “Norton is nothing more than a listing of
different gear configurations for transferring forces along non-parallel
shafts.” Reply Br. 14. Thus, according to Appellant, the Examiner has not
provided an adequate reasoning with rational underpinning to combine the
teachings of Boisseau, Heibel, and Norton.
Appellant’s argument appears to be holding the Examiner to the old
TSM standard; such a standard is not required. KSR, 550 U.S. at 415 ("We
begin by rejecting [TSM]"). The Examiner relies on Norton to teach that
helical (screw), bevel, and worm gear configurations can accommodate force
transfer along non-parallel shafts. See Ans. 9. The Examiner reasons that it
would have been obvious to use Norton’s gear arrangements as the particular
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gear arrangement in the Boisseau and Heibel combination because such
gears are commonly used to accommodate force transfer along non-parallel
shafts. See Ans. 9. We further note that the worm 22/worm wheel 24
arrangement of Heibel likewise transfers force along non-parallel shafts 20,
28. See Heibel, fig. 2. Although Appellant alleges that this reasoning is not
adequate, Appellant fails to provide any reason as to why it is deficient. See
Reply Br. 14. It seems highly logical to select a known gear configuration
that can accommodate force transfer along non-parallel shafts for use in a
mechanism that requires a gear configuration that can accommodate force
transfer along non-parallel shafts. See, e.g., KSR, 550 U.S. at 421 ("a person
of ordinary skill has good reason to pursue the known options within his or
her technical grasp"). Appellant gives no reason to believe otherwise.
Further, substituting one of the gear configurations of Norton for the gear
configuration of Boisseau and Heibel is so simple as to belie any notion that
this would be beyond the technical grasp of a person of ordinary skill in the
art. Thus, we are not persuaded that the Examiner's conclusion that the
subject matter of claims 4, 5, 7, 18, 19, and 21 is obvious in view of the
teachings of Boisseau, Heibel, and Norton was in error. Therefore, we
sustain the rejection.

SUMMARY
The decision of the Examiner to reject claims 1, 4, 5, 7, 15, 18, 19,
and 21 under 35 U.S.C. § 103(a) as unpatentable over Boisseau and Heibel
is affirmed.
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The decision of the Examiner to reject claims 4, 5, 7, 18, 19, and 21
under 35 U.S.C. § 103(a) as unpatentable over Boisseau, Heibel, and Norton
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

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