Ex Parte Philpott

Board of Patent Appeals and Interferences

Jun 29, 2011

10644354 (B.P.A.I. Jun. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/644,354 08/20/2003 Daniel J. Philpott 60,130-1752;03MRA0141 5864
26096 7590 06/29/2011
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
TORRES WILLIAMS, MELANIE
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
06/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL J. PHILPOTT
____________________

Appeal 2010-001358
Application 10/644,354
Technology Center 3600
____________________

Before JAMESON LEE, KEVIN F. TURNER, and JOSIAH C. COCKS,
Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001358
Application 10/644,354

2
A. STATEMENT OF THE CASE
The real party in interest, ArvinMeritor Technology, LLC
(“ArvinMeritor”), appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 24-33, 35-37, 39 and 401. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

References Relied on by the Examiner
Hockley 5,699,880 Dec. 23, 1997
White et al. (“White”)2 US H2026 H Jun. 4, 2002

The Rejections on Appeal
The Examiner rejected claims 24-27, 32, 33, 35-37, and 39 under 35
U.S.C. § 102(b) as anticipated by Hockley.
The Examiner rejected claims 28-31 and 40 under 35 U.S.C. § 103(a) as
unpatentable over Hockley and White.

The Invention
The invention relates to a disc brake assembly, specifically, a system for
indicating that an “overstroke” condition has occurred in the air chamber of a
disc brake assembly. (Spec. 1: ¶ 1.) An “overstroke” condition is an excessive
stroke of a push rod that can result due to such factors as brake lining wear and

1 The Examiner objected to claims 38 and 41-44 as being dependent upon a
rejected base claim, but indicated that the claims are otherwise allowable if
rewritten in independent form. (Ans. 4:18-20.)

2 White is a “Statutory Invention Registration” document.

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Application 10/644,354

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loosening of mechanical linkages between the push rod and brake linkages. (Id.
at 1: ¶ 3.)
Claim 24 is reproduced below (App. Br. 15 Claims App’x.):
24. A brake assembly comprising:

a housing portion comprising a fixed component adapted for
attachment to a vehicle structure;

an overstroke sensor mounted to said housing portion; and

an operating shaft that actuates a brake mechanism, said operating
shaft rotating about a pivot axis relative to said housing portion, and
wherein said operating shaft cooperates with said overstroke sensor to
identify an overstroke condition.
B. ISSUES
1. Did the Examiner correctly find that Hockley discloses a brake
assembly comprising a housing portion and an overstroke sensor mounted to the
housing portion?
2. Did the Examiner correctly find that Hockley’s bracket 30 is a
“brake component”?
3. Did the Examiner adequately account for the features of claim 33
directed to a movable post or a resilient member, either of which are movable
relative to the housing portion in response to contact from an operating shaft to
indicate an overstroke condition?
4. Did the Examiner correctly find that Hockley discloses a housing
wall with an opening in which an overstroke sensor is mounted?
5. Did the Examiner correctly find that Hockley discloses an
overstroke sensor that is mounted to a “brake housing”?
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Application 10/644,354

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6. Did the Examiner correctly determine that there is adequate
motivation to combine the teachings of Hockley and White?
7. Did the Examiner correctly determine that the prior art would have
led a person of ordinary skill in the art to attach a switch, as part of an
overstroke sensor, to a housing portion?
8. Did the Examiner adequately account in the prior art for the
features required by claims 30 and 31?
C. PRINCIPLES OF LAW
During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000).
Under the doctrine of claim differentiation, dependent claims are
presumed to be of narrower scope than the independent claims from which they
depend. AK Steel Corp. v. Sollac and Ugine, 344 F.3d 1234, 1242 (Fed Cir.
2003).
It is improper to read into an independent claim a limitation explicitly set
forth in another claim. Environmental Designs, Ltd. v. Union Oil Co. of
California, 713 F.2d 693, 699 (Fed. Cir. 1983).
Anticipation is established when a single prior art reference discloses all
elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990).
The test for obviousness is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. In re Young, 927 F.2d
588, 591 (Fed. Cir. 1991).
In an obviousness analysis, it is not necessary to find precise teachings in
the prior art directed to the specific subject matter claimed because inferences
Appeal 2010-001358
Application 10/644,354

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and creative steps that a person of ordinary skill in the art would employ can be
taken into account. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The initial burden is on the examiner to establish a prima facie basis to
reject the claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
D. FINDINGS AND ANALYSIS
The Examiner rejected claims 24-27, 32, 33, 35-37, and 39 as anticipated
by Hockley and claims 28-31 and 40 as unpatentable over Hockley and White.
Anticipation
Claims 24 and 36 are independent claims. ArvinMeritor argues
dependent claims 27 and 32 collectively with claim 24. Claims 25, 26, 33, 35-
37, and 39 are each separately argued.
Claims 24, 27, and 32
Independent claim 24 is drawn to a brake assembly. As a part of the
assembly, the claim requires a “housing portion” and an “overstroke sensor
mounted to said housing portion.” (App. Br. 15 Claims App’x.)
The Examiner found that Hockley discloses a brake assembly as recited in
claim 24 including the above-quoted features. Hockley discloses a braking
system 10 for “trucks, trailers and the like.” (Hockley 4:15-17.) The braking
system includes a brake adjustment indicator having bracket 30 and first and
second reference pointers 32 and 34. (Id. at 4:34-36.) The Examiner
determined that bracket 30 constitutes a housing portion and reference pointers
32 and 34 form an overstroke sensor. (Ans. 3:12-15.)
ArvinMeritor challenges the Examiner’s determination. ArvinMeritor’s
challenge is two-fold. ArvinMeritor first contends that bracket 30 is not a
housing portion. (App. Br. 3:21-22.) It also contends that reference pointers 32
Appeal 2010-001358
Application 10/644,354

6
and 34 are not an overstroke sensor. (Id. at 4:21). Neither contention is
persuasive.
With respect to the first contention, although ArvinMeritor generally
asserts that bracket 30 is not a housing and would not be regarded by one of
ordinary skill in the art as a housing (Reply Br. 2:20-22), ArvinMeritor does not
substantiate the assertion with any meaningful explanation. ArvinMeritor
appears to urge that claim 24 requires that its “housing portion” must form a
“brake housing,” i.e., an enclosure for a brake mechanism. (App. Br. 3:19-20.)
However, the claim refers only generically to a “housing portion” without
specifying what component must be enclosed or supported thereby. During
examination, claim terms are given their broadest reasonable interpretation
consistent with the specification. In re Hyatt, 211 F.3d at 1372.
Here, it is neither unreasonable nor inconsistent with ArvinMeritor’s
specification that the “housing portion” set forth in claim 24 may simply be a
component that forms a part of the brake assembly but need not itself house or
enclose a brake mechanism, i.e., the housing portion need not necessarily be a
brake housing. Indeed, we note that other of ArvinMeritor’s claims which
depend on claim 24, e.g., claim 41, are necessary to make explicit that “said
housing portion is part of a brake housing that substantially encloses the brake
mechanism.” (App. Br. 17 Claims App’x.) Under the doctrine of claim
differentiation, dependent claims are presumed to be of narrower scope than the
independent claims from which they depend. AK Steel Corp., 344 F.3d at 1242.
Moreover, it is improper to read into an independent claim a limitation explicitly
set forth in another claim. Environmental Designs, Ltd., 713 F.2d at 699.
On this record, and consistent with the doctrine of claim differentiation,
we conclude that the recitation in claim 24 of a “housing portion” includes a
Appeal 2010-001358
Application 10/644,354

7
structure that is other than a component which forms a “brake housing.” The
term “housing” means “[s]omething that covers, protects, or supports.”
Webster’s II New Riverside University Dictionary 595 (1988). Hockley’s
bracket 30 is described as a “support means” (Hockley 4:44) that operates to
support first and second reference pointers 32 and 34 (id. at Fig. 4). In
supporting the pointers, bracket 30 is reasonably viewed as constituting a
housing or housing portion for those pointers. We reject ArvinMeritor’s general
assertion that Hockley’s bracket 30 is not a housing portion.
Furthermore, Hockley identifies its Figures 1-3 as showing its braking
system. (Hockley 4:15.) Each of the figures illustrates bracket 30 as a part of
the system. Therefore, we conclude that Hockley’s bracket 30 is a housing
portion that forms a part of its braking system or assembly. That is sufficient to
account for “a brake assembly comprising…a housing portion” as required by
claim 24.
With respect to ArvinMeritor’s assertion that Hockley’s reference pointers
32 and 34 are not an overstroke sensor, we do not agree. ArvinMeritor’s
specification describes one embodiment of its invention in which an overstroke
sensor is an electrical component which sends an electrical signal to a controller
in certain instances indicating that an overstroke condition has occurred. (Spec.
5: ¶ 30.) However, the specification also describes other embodiments
involving a “mechanical overstroke member” that visually indicates to an
operator when an overstroke condition has occurred. (Id. at 6: ¶ 34.)
ArvinMeritor’s claims make clear that, in the context of its invention, the term
“overstroke sensor” also encompasses an arrangement of mechanical
Appea
Applic

compo
condit

indicat
shown
includ
a push
Brake
brakin
of push

3
overstr
(App.

4
visual
memb
movea
operat
App’x
l 2010-001
ation 10/6
nents whi
ion. (See c
Turning to
or operate
in the figu
es a brake
rod 16. (I
arm 18 is
g means su
rod 16 ca

Claim 32 r
oke senso
Br. 16 Cla
Claim 33 r
indicator c
er, said on
ble relativ
ing shaft to
.)
358
44,354
ch operate
laims 323
Hockley,
s to provid
res, the sy
arm 18 co
d. at 4:16-
connected
ch that m
uses the b

ecites: “T
r comprise
ims App’x
ecites: “T
omprises
e of a mov
e to said h
indicate
to provide
and 334.)
the referen
e “a gaug
stem
nnected to
19.)
to a
ovement
raking
he brake a
s a visual
.)
he brake a
one of a m
able post a
ousing por
an overstro
8
visual ind
ce describ
e for meas
travel
visual
are wo
need a
(Hock
(repro
(below
underg

ssembly ac
indicator o
ssembly ac
oveable p
nd a resili
tion in res
ke conditi
ication of
es that its
uring” the
of a push r
signal wh
rn or have
djustment
ley 3:36-5
duced abo
right) illu
oing norm
cording to
f an overs
cording to
ost and a r
ent buckli
ponse to c
on.” (App
the overst
brake adj
inward an
od and pr
en brake c
malfunct
or replace
0.) Hockl
ve on left)
strate its b
al operati
claim 24
troke cond
claim 32
esilient bu
ng membe
ontact from
. Br. 16 C
roke
ustment
d outward
ovides a
omponent
ioned and
ment.
ey’s Figur
and Figur
rake syste
on. As
wherein s
ition.”
wherein s
ckling
r being
said
laims

s
e 1
e 2
m
aid
aid
Appea
Applic

means
(Id. at
betwee
(Id. at
which
system
is outw
of the
formin
elemen
forego
that Ho
the ant
and 32
claims
l 2010-001
ation 10/6
to engage
4:25-29.)
n referenc
5:18-21.)
form the b
.
Hockley’s
ardly exte
occurrence
g an “over
Anticipati
ts of the c
ing reason
ckley disc
icipation r
is not arg
27 and 32
358
44,354
or disenga
Attached
e pointers
Thus, refe
oundaries
Figure 3 (
nded such
of an ove
stroke sen
on is estab
laimed inv
s, we conc
loses all t
ejection o
ued apart f
.
ge based
to brake ar
32 and 34
rence poin
for norma
below left
that indic
a
i
p
i
c
w
p
c
rstroke co
sor” as req
lished whe
ention. In
lude that t
he feature
f that claim
rom claim
9
on the dire
m 18 is an
when the
ters 32 an
l moveme
) depicts a
ator 36 is
n overstro
s beyond t
ointers 32
ndication
ondition.
e are not
ointers 32
omponent
ndition, ar
uired by t
n a single
re Spada
he Examin
s of ArvinM
. The pat
24. We a
ction of tr
“indicato
system is
d 34 are m
nt of a pus
situation
beyond ref
ke conditi
he bounda
and 34 pr
to an oper
(Id. at 5:2
persuaded
and 34, w
s that allo
e not reaso
he claims.
prior art r
, 911 F.2d
er has ade
eritor’s c
entability
lso sustain
avel of the
r” 36 whic
operating
echanical
h rod in a
in which th
erence po
on. That t
ries establ
ovides a v
ator of the
8-42.) On
that the re
hich are m
w for visu
nably reg

eference d
at 708. F
quately es
laim 24.
of depend
the reject
push rod.
h moves
normally.
componen
braking
e push ro
inter 34, i.
he indicat
ished by
isual
overstrok
this recor
ference
echanical
al indicatio
arded as
iscloses al
or the
tablished
We sustain
ent claims
ion of

ts
d
e.,
or
e
d,

n
l

27
Appeal 2010-001358
Application 10/644,354

10
Claim 25
Claim 25 is dependent on claim 24 and adds the feature: “wherein said
overstroke sensor is directly mounted to said housing portion.” (App. Br. 15
Claims App’x.) According to ArvinMeritor, Hockley does not disclose the
above-quoted feature because the reference does not disclose any sensors
mounted, directly or otherwise, to a housing portion.
As discussed above in connection with claim 24, Hockley’s bracket 30 is
a housing portion and reference pointers 32 and 34 form an overstroke sensor.
The reference pointers are directly mounted to the bracket. (Hockley Fig. 1.)
Thus, the Examiner correctly found that Hockley discloses the components and
their mounting relationship which are required by claim 25.
We sustain the rejection of claim 25 as anticipated by Hockley.
Claim 26
Claim 26 is dependent on claim 24 and adds the feature: “wherein said
housing portion comprises a non-rotating brake component.” (App. Br. 15
Claims App’x.) The Examiner found that Hockley’s bracket 30 is a non-rotating
brake component. (Ans. 3:17-18.) ArvinMeritor contests that finding on the
premise that bracket 30 is mounted to a vehicle frame and does not form part of
a vehicle brake assembly. (App. Br. 5:24-25.) ArvinMeritor thus concludes that
the bracket is not a “component” of a brake assembly. (Id. at 25-26.)
We do not agree with ArvinMeritor. Hockley describes its Figures 1-3 as
illustrating its braking system. (Hockley 4:15-16.) Bracket 30 is shown as
constituting part of the system illustrated in those figures. Bracket 30 also is
described as forming a part of a brake adjustment indicator (id. at 4:33-34),
which is stated and shown as being “mounted on a front brake of a vehicle”
(Figure 6) and “mounted on a rear brake of a vehicle” (Figure 7) (id. at 4:4-9.)
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Application 10/644,354

11
That is, contrary to ArvinMeritor’s argument, the bracket, as a part of the brake
adjustment indicator, is expressly described as being mounted to front and rear
brakes, i.e., brake assemblies.
Furthermore, bracket 30 operates to support reference pointers 32 and 34
which are used to gauge whether brake arm 18 and push rod 16 are operating
normally or require replacement or adjustment. In view of bracket 30’s stated
association with a braking assembly and its described function in supporting
components of a brake adjustment indicator, we are not persuaded that the
bracket is not reasonably viewed as a “brake component.” We reject
ArvinMeritor’s argument to the contrary.
We sustain the rejection of claim 26 as anticipated by Hockley.
Claim 33
Claim 33 is dependent on claim 32 which is in turn dependent on claim
24. Claim 32 adds the feature: “wherein said overstroke sensor comprises a
visual indicator of an overstroke condition.” (App. Br. 16 Claims App’x.)
Claim 33 adds (App. Br. 16 Claims App’x.):
wherein said visual indicator comprises one of a moveable post and a
resilient buckling member, said one of a movable post and a resilient
buckling member being moveable relative to said housing portion in
response to contact from said operating shaft to indicate an overstroke
condition.

Thus, claim 33 requires that the visual indicator is formed as one of a
moveable post and a resilient buckling member which is moveable relative to
the housing portion in response to contact from an operating shaft to indicate an
overstroke condition.
The Examiner rejects claim 33 as anticipated by Hockley but does not
explain what portions of Hockley’s system form either a “moveable post” or a
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“resilient buckling member.” Indeed, the Examiner’s Answer does not use those
terms. The only explanation in support of the rejection that is offered by the
Examiner is the following (Ans.5:12-14):
Re claim 33, Applicant argues that the indicator of Hockley is not
movable. In Figure 4 of Hockley, the plate 52 is clearly movable within
the slot of bracket 30 as indicated by the arrows.

Thus, the basis for the Examiner’s rejection is that Hockley discloses, in
Figure 4, a moveable “plate 52.” As illustrated in Figure 4, Hockley’s plate 52
carries reference pointers 32 and 34 and operates as a means to adjust the
position of the pointers along an opening or slot of bracket 30. (Hockley 5:44-
56.) Once the pointers are positioned as desired on bracket 30, the plate and the
pointers are then “fixed in position on bracket 30.” (Id. at 5:63-65.) Thus,
although plate 52 is moveable, its motion simply serves to initially place
reference pointers 32 and 34 into position along bracket 30. Claim 33, on the
other hand, requires that a component that is “moveable relative to said housing
portion in response to contact from said operating shaft to indicate an
overstroke condition.” (App. Br. 16 Claims App’x, emphasis added.) Plate 52
and pointers 32 and 34, however, become fixed to bracket 30 and do not move
during operation of Hockley’s braking system. Those components therefore do
not move “in response to contact” from an operating shaft to indicate an
overstroke condition. The Examiner has not adequately explained how or where
Hockley discloses the features that are required by claim 33.
Accordingly, we do not sustain the rejection of claim 33 as anticipated by
Hockley.
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Claim 35
Claim 35 is dependent on claim 24 and adds the following feature (App.
Br. 16 Claims App’x.):
wherein said housing portion comprises a housing wall having an opening
extending through an entire thickness of said housing wall, and wherein
said overstroke sensor is mounted within said opening such that at least a
portion of said overstroke sensor extends outwardly of said housing wall.

According to ArvinMeritor, Hockley does not anticipate claim 35 because
it does not disclose an overstroke sensor mounted in the opening of a housing
wall. (App. Br. 6:14-19.) We do not agree.
As discussed above, Hockley’s brake adjustment indicator includes a
bracket 30 that constitutes a housing portion. The bracket includes a wall with
an opening 50 that extends the entire thickness of the wall. (Hockley 5:50-52;
Fig. 5.) Reference pointers 32 and 34 are mounted to bracket 30 by operation of
bolts 56 which extend through opening 50. Once the brake adjustment indicator
is assembled, the reference pointers then extend outwardly from the wall of
bracket 30. (Id. at Figs. 1-3.) In light of those teachings, we are not persuaded
of any error in the Examiner’s determination that Hockley discloses the features
required by claim 35.
We sustain the rejection of claim 35 as anticipated by Hockley.
Claims 36, 37, and 39
Claim 36 is an independent claim. Claims 37 and 39 are dependent on
claim 36. Claim 36 is directed to a method of indicating an overstroke condition
of a brake assembly. The method includes the following step: “mounting an
overstroke sensor to a non-rotating brake housing portion[.]”
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(App. Br. 16 Claims App’x.) Thus, claim 36 makes explicit that the overstroke
sensor is mounted to a “brake housing.”
The Examiner’s rejection of claim 36 is evidently premised on a theory
that Hockley’s bracket 30 constitutes a “brake housing.” In the context of
ArvinMeritor’s specification, a “brake housing” is a housing that encloses a
braking mechanism. Although, bracket 30 is properly viewed as a “housing
portion,” the bracket does not operate to enclose a braking mechanism. Bracket
30 is not a “brake housing.”
Accordingly, we do not sustain the rejection of claim 36 as anticipated by
Hockley. We also do not sustain the rejection of dependent claims 37 and 39
which include all the limitations of claim 36.
Obviousness
The Examiner rejected claims 28-31 and 40 as unpatentable over Hockley
and White. We address each claim separately.
Claim 40
Claim 40 is dependent on, and includes all the limitations of, claim 36.
As discussed above, we conclude that Hockley does not anticipate claim 36
because the reference lacks disclosure of mounting an overstroke sensor to a
“brake housing.” The Examiner relies on White only to account for features
added by claim 40 and not to account for the above-noted feature.
Accordingly, we do not sustain the rejection of claim 40 over Hockley
and White.
Claim 28
Claim 28 is dependent on claim 24 and adds the feature: “wherein said
overstroke sensor generates a signal that is communicated to a controller.”
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(App. Br. 15 Claims App’x.) The Examiner determined that Hockley does not
disclose the above-quoted feature and relied on White to make up for the
deficiency.
White discloses a brake service signaling system for use on a vehicle.
(White Abstract.) The Examiner determined that White “teaches an overstroke
sensor or switch (57) that generates a signal that is communicated to a controller
(61).” (Ans. 4:11-13.) ArvinMeritor does not dispute that determination. The
Examiner reasoned that “[i]t would have been obvious to one of ordinary skill in
the art at the time of the invention to have provided the sensor of Hockley et al
with a signal sent to a controller as taught by White et al merely to prevent the
need for manual inspection of the indicator.” (Ans. 4:13-15.) ArvinMeritor
challenges that reasoning on the theory that there is no motivation to modify
Hockley in the manner suggested by the Examiner because doing so would
render Hockley “unsatisfactory for its intended purpose” and “change [its]
principle of operation.” (App. Br. 10:13-11:2.) According to ArvinMeritor, the
“intended purpose” and “principle of operation” of Hockley’s invention is
specifically to provide a “visual” indicator of an overstroke condition which
would be prevented if the invention is modified to instead incorporate an electric
signaling mechanism. (Id.)
We are not persuaded by ArvinMeritor’s argument. ArvinMeritor does
not accurately characterize the “intended purpose” or “principle of operation” of
Hockley’s invention. Hockley recognizes that devices or gauges for signaling to
a vehicle operator when a brake malfunction has occurred are known in the art.
(Hockley 1:35-2:4.) Hockley, however, describes that the known prior art
devices have several disadvantages including that the devices may be difficult
for an operator to properly read and providing the possibility of a “false reading”
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of brake wear. (Id. at 2:5-24.) The purpose of Hockley’s invention is to
overcome those disadvantages and its operating principle is to effectively and
accurately convey to an operator when brake service is required. A particular
embodiment described by Hockley which fulfills that purpose and principle is a
brake adjustment indicator, providing, as discussed above, an accurate visual
signal to the operator that an overstroke condition has occurred.
White also discloses a system for signaling to an operator that brake
service is required. (White Abstract.) White recognizes that while “visual
inspection” of brake components may be made to ascertain if service is required
(White 2:50-54), such inspection procedures may be “inconvenient and time
consuming” and may be neglected which poses a potential safety hazard (id. at
1:16-25). White’s invention thus proposes a system involving a “push switch”
associated with a brake assembly which generates an electric signal for
indicating to an operator that brake service is required. (Id. at 2:65-3:17.)
The test for obviousness is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. In re Young, 927 F.2d
at 591. Here, a person of ordinary skill in the art, who is also a person of
ordinary creativity, KSR Int’l Co., 550 U.S. at 421, would have readily
appreciated from the combined teachings of Hockley and White that sensors
providing either visual signals or electric signals are known mechanisms for
effectively conveying to an operator of the need for brake serving. That the
inventors in Hockley implemented visual signaling components in their
signaling system does not mean that one of ordinary skill and creativity
presented with the teachings of Hockley and White would not have recognized
electrical signaling components as a viable signaling alternative. We reject
ArvinMeritor’s argument that modifying Hockley’s system to incorporate
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17
electrical signaling components in lieu of visual signaling components renders
Hockley’s invention unsatisfactory for its intended purpose or changes its
principle of operation. The record reflects that there is adequate motivation to
combine the teachings of Hockley and White.
For the foregoing reasons, we sustain the rejection of claim 28 over
Hockley and White.
Claim 29
Claim 29 is dependent on claim 28 and adds the limitation: “wherein said
overstroke sensor comprises a switch fixed to said housing portion.” (App. Br.
15 Claims App’x.) The Examiner determined that above-quoted limitation is
accounted for by the teachings of Hockley and White.
According to ArvinMeritor, “[n]either Hockley nor White disclose,
suggest, or teach mounting a switch to a housing portion as claimed.” (App. Br.
11:17-18.) That argument, however, is unpersuasive. Whether Hockley or
White individually disclose a switch mounted to a housing portion is not the
relevant inquiry. Rather, the obviousness evaluation must take into account
what the teachings when combined would have suggested to a skilled artisan. In
re Young, 927 F.2d at 591. Furthermore, in an obviousness analysis, it is not
necessary to find precise teachings in the prior art directed to the specific subject
matter claimed because inferences and creative steps that a person of ordinary
skill in the art would employ can be taken into account. KSR Int’l Co., 550 U.S.
at 398.
In this case, Hockley discloses bracket 30 as a housing portion on which
is mounted an overstroke sensor formed by reference pointers 32 and 34 for
providing a visual signal of an overstroke condition. White teaches that an
overstroke sensor may take the form of a “switch 56” which provides a signal of
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brake malfunction. In light of the combined teachings of Hockley and White, a
person of ordinary skill in the art would have reasonably appreciated that
Hockley’s housing portion is a suitable mounting location for a switch as a part
of an assembly signaling that an overstroke condition has occurred.
We sustain the rejection of claim 29 over Hockley and White.
Claim 30
Claim 30 is dependent on claim 29 and adds the following feature (App.
Br. 15-16 Claims App’x.):
wherein said operating shaft includes a cam portion defining a profile that
cooperates with the brake mechanism to move brake pads toward a brake
disc, said operating shaft extending from said cam portion to a distal end,
and wherein said distal end contacts said switch.

The Examiner’s Answer provides little detail as to how the elements of
the above-quoted feature are met by the prior art. In particular, it is not evident
what component of the prior art constitutes the required “cam portion” or how a
distal end of an operating shaft which extends from the cam portion is the
structure that contacts the switch. The only explanation offered by the Examiner
is “[i]n Figures 3 and 4 of White, the Examiner feels that it is reasonable to
interpret the configuration such that the distal end of the shaft 36 contacts the
switch 59.” (Ans. 6:6-7.) Figures 3 and 4 of White, however, do not show that
the “distal end” of any operating shaft contacts any switch. The Examiner does
not sufficiently articulate why it is “reasonable to interpret” what is depicted in
those figures as meeting the requirements of claim 30.
The initial burden is on the examiner to establish a prima facie basis to
reject the claims. In re Oetiker, 977 F.2d at 1445. On the record before us, the
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Examiner has failed to meet that burden in connection with claim 30. We do not
sustain the rejection of claim 30 over Hockley and White.
Claim 31
Claim 31 is dependent on claim 29 and adds the following limitation
(App. Br. 16 Claims App’x.):
wherein said operating shaft includes a cam portion defining a profile that
cooperates with the brake mechanism to move brake pads toward a brake
disc, said operating shaft including a tab portion extending outward from
said operating shaft adjacent said cam portion wherein said tab portion
contacts said switch.

As with claim 30, the Examiner’s Answer is largely devoid of any
explanation as to how the elements of claim 31 are met by the prior art. The
Examiner simply states “it is the Examiner’s position that one of ordinary skill
in the art would be able to reasonably make a modification such that a sensor is
mounted to the housing portion and that the indicator 36 is capable of being the
claimed ‘tab’.” (Ans. 6:8-11.) It is simply not clear what modification is
proposed by the Examiner to account for the requirements of claim 31. It is also
not clear why “indicator 36 is capable of being the claimed” tab portion.
Indicator 36 is a component of Hockley’s brake adjustment indicator assembly.
The basis of the Examiner’s rejections involving Hockley and White is the
substitution of White’s brake service signaling system for Hockley’s brake
adjustment indicator assembly. The Examiner does not meaningfully explain
why some portion of Hockley’s assembly, i.e., indicator 36, would remain as a
component that then constitutes the claimed “tab portion.”
On this record, we do not sustain the rejection of claim 31 over Hockley
and White.
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E. CONCLUSION
1. The Examiner correctly found that Hockley discloses a brake
assembly comprising a housing portion and an overstroke sensor mounted to the
housing portion.
2. The Examiner correctly found that Hockley’s bracket 30 is a “brake
component.”
3. The Examiner did not adequately account for the features of claim
33 directed to a movable post or a resilient member, either of which are movable
relative to the housing portion in response to contact from an operating shaft to
indicate an overstroke condition.
4. The Examiner correctly found that Hockley discloses a housing
wall with an opening in which an overstroke sensor is mounted.
5. The Examiner incorrectly found that Hockley discloses an
overstroke sensor that is mounted to a “brake housing.”
6. The Examiner correctly determined that there is adequate
motivation to combine the teachings of Hockley and White.
7. The Examiner correctly determined that the prior art would have
led a person of ordinary skill in the art to attach a switch, as part of an
overstroke sensor, to a housing portion.
8. The Examiner did not adequately account in the prior art for the
features required by claims 30 and 31.
F. ORDER
The rejection of claims 24-27, 32, and 35 under 35 U.S.C. § 102(b) as
anticipated by Hockley is affirmed.
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The rejection of claims 33, 36, 37, and 39 under 35 U.S.C. § 102(b) as
anticipated by Hockley is reversed.
The rejection of claims 28 and 39 under 35 U.S.C. § 103(a) as
unpatentable over Hockley and White is affirmed.
The rejection of claims 30, 31, and 40 under 35 U.S.C. § 103(a) as
unpatentable over Hockley and White is reversed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART