Ex Parte Raab

Board of Patent Appeals and Interferences

Aug 14, 2012

11401988 (B.P.A.I. Aug. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte SIMON RAAB

Appeal 2010-007781
Application 11/401,988
Technology Center 3600

Before KEN B. BARRETT, JAMES P. CALVE, and
REMY J. VANOPHEM, Administrative Patent Judges.

VANOPHEM, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2010-007781
Application 11/401,988

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter on appeal.
1. An automobile brake pad dust diverter,
comprising:
a caliper extension operatively associated
with a brake caliper, the caliper extension
positioned to direct airflow generated by a rotating
wheel or a rotating rotor across an area adjacent
the rotor and to vent such directed airflow away
from a wheel surface.

REJECTIONS
Claims 1-4, 6, and 9-12 were rejected under 35 U.S.C. § 102(b) as
being anticipated by the disclosure of Bosch (US 5,035,304; iss. July 30,
1991).
Claim 5 was rejected under 35 U.S.C. § 103(a) as being unpatentable
over the teachings of Bosch in view of the teachings of Weiss (US 7,281,613
B2; iss. October 16, 2007).
Claims 7 and 8 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over the teachings of Bosch in view of the teachings of
Nishiyama (US 4,226,308; iss. October 7, 1980).

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ISSUES
1. Does Bosch disclose an automobile brake pad caliper extension
across an area adjacent the rotor and vents directed airflow away from a
wheel surface?
2. Does Bosch in view of the teachings of Weiss teach an
automobile brake pad wherein the internal channels interact with apertures
in the rotor to generate airflow across or around a surface of the rotor?
3. Does Bosch in view of the teachings of Nishiyama teach an
automotive brake pad dust diverter wherein the extension is attached by
means of a deformable arm having an aperture or a pin interacting with an
aperture or pin of the caliper or wherein the extension is attached by means
of an adhesive or tape, a clam shell over the top of the caliper, a spring clip,
or a set screw?

PRINCIPLES OF LAW
It is well settled that “[a] claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently, in a
single prior art reference. Verdegaal Bros. v. Union Oil Co. of Cal., 814
F.2d 628, 631 (Fed. Cir. 1987).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966). Further, the Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
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rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

ANALYSIS
Claims 1-4, 6, and 9-12 as anticipated by the disclosure of Bosch
Since Appellant has failed to provide a statement as required under 37
C.F.R. § 41.37(c)(1)(vii) we will presume that the rejected claims stand or
fall together. Accordingly, we elect claim 1 as the representative claim.
The Examiner contends that Bosch discloses an automobile brake pad
dust diverter or collector as shown in FIGs. 1-3 (Ans. 3) and, as shown in
FIG. 1 and cutout section 11-11 shown in FIG.2,
wherein the air with brake dust generated from the
brake shoe 4 rubbing on brake disc 3 during
braking, pass through flow guide lattice 9 via
vanes 9a wherein the dust are collected by the
filter 8 and the air continue to flow out of housing
7 through the opening shown on the left-and side
of FIG. 2, towards the shaft 2 as shown in FIG. 1.
This shows diverting the air (after passing through
the filter) away from a wheel surface.
Ans. 5.
The Appellant contends that
it is clear from the claim language that the
extension must direct (via an air channel of some
sort (that being the only way to direct air in a setup
such as this) air across a portion of the rotor and
vent (via a vent (that being the only way to vent air
in a channel) the air away from the wheel. Just as
this is clear from the claim language, it is also
clear when read in the light of the specification.
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App. Br. 4.
The Appellant further contends “…Bosch is not venting anything.
Rather, it is collecting and storing brake dust incident to the pad (on the
rotor).” Id. Further, “…Bosch is not directing airflow and venting it away
from the wheel surface (it is collecting the brake dust immediately off the
surface of the rotor).” Id.
We disagree. Merriam Webster’s Dictionary defines a vent as “an
opening for the escape of a gas or liquid or for the relief of pressure.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY 1388 (11th ed.). Bosch
discloses, at column 3, lines 17-22, that the two filter layers 8a and 8b are
held fastened in their place by a flow guide lattice 9 or grating which, as is
visible in FIG. 3 is constructed with vanes 9a to make it effective to guide
the air entrained by the brake disc, together with the abraded particles it
carries, into the filter. The filter, or more particularly its thickness, is to be
so dimensioned to enable it to accumulate as much abraded dust as is
produced by one pair of brake shoes in the course of its entire life. This
combination of elements serves the objective of “… the disc brake having
provisions made to prevent substantial quantities of particles, metallic and
adhesive, abraded off the brake shoes and brake disc, from being blown by
the cooling air into the atmosphere, to thus drastically reduce the
contamination of the environment by such abraded dust.” Col. 1, ll. 59-65.
The Appellant contends that “Bosch is not venting anything.” App.
Br. 4. We disagree, in view of the disclosure of Bosch as clearly shown in
FIG. 3.
The air entrained contaminants flow from the rotor surface into the
lattice 9 or grating constructed with vanes 9a to guide the contaminated air
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flow through an opening located between the end of one vane and the
backside of the adjacent vane in order to vent such contaminated airflow
away from the rotor surface and a wheel surface and into the filters 8a, 8b,
Bosch, col. 3, ll. 15-22. Independent claim 1 as appealed calls for nothing
more. Therefore, the Examiner’s rejection of Claims 1-4, 6, and 9-12 under
35 U.S.C. § 102(b) is affirmed.

Claim 5 as unpatentable over the teachings of Bosch in view of the teachings
of Weiss
The Examiner found that Bosch does not disclose rotor apertures, as
called for in dependent claim 5, but that Weiss teaches the use of a rotor that
comprises apertures. Ans. 4. Appellant contends that Weiss is not related to
vented brake dust diverters, and in that regard, “Weiss does not make up for
the deficiencies of Bosch” noted for the rejection of claim 1. App. Br. 4.
Because we sustain the rejection of claim 1 as anticipated by Bosch,
there is no deficiency for Weiss to cure as to claim 1. Appellant’s argument
regarding Weiss also is not persuasive because the Examiner relied on the
teachings of Weiss solely to teach the use of a rotor with apertures in the
rotor to increase airflow. See Weiss, col. 7, ll. 45-50. As such, we sustain
the rejection of claim 5 based on the combined teachings of Weiss and
Bosch.

Claims 7 and 8 as unpatentable over the teachings of Nishiyama
The Examiner found that Bosch discloses does not disclose that the
extension is attached by a deformable arm having an aperture or pin
interacting with an aperture or pin of the caliper but that Nishiyama
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discloses such means for attaching the extension of a caliper. Ans. 4.
Appellant contends Nishiyama is used simply to illustrate that various
mechanisms for attaching objects to calipers (in this case, a mud water cover
for two wheeled vehicles) are known. As such, Nishiyama is not related to
vented brake dust diverters, and in that regard, Nishiyama does not make up
for the deficiencies of Bosch as to claim 1. App. Br. 5.
Because we sustain the rejection of claim 1 as anticipated by Bosch,
there is no deficiency for Nishiyama to cure as to claim 1. Appellant’s
argument regarding Nishiyama also is not persuasive because the Examiner
relied on the teachings of Nishiyama solely to teach the use of means 3, 7 for
attaching the extension 1 to the caliper 10. Nishiyama, col. 1, ll. 53-60. As
such, we sustain the rejection of claims 7 and 8 based on the combined
teachings of Nishiyama and Bosch .

CONCLUSIONS
The rejection of claims 1-4, 6 and 9-12 under 35 U.S.C. § 102(b) as
being unpatentable over Bosch is affirmed.
The rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch in view of Weiss is affirmed.
The rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as being
unpatentable over Bosch in view of Nishiyama is affirmed.

DECISION
The decision of the Examiner to reject claims 1-12 is affirmed.
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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).
AFFIRMED

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