Ex Parte Ruiz

Board of Patent Appeals and Interferences

Oct 31, 2007

09716113 (B.P.A.I. Oct. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEPHEN JOHN RUIZ
____________________

Appeal 2007-1860
Application 09/716,113
Technology Center 3600
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Decided: October 31, 2007
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Before: JENNIFER D. BAHR, ANTON W. FETTING and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from the final
rejection of claims 1, 3, 5, 6, 21, 23, 25 and 26. 35 U.S.C. §134 (2002). We
have jurisdiction under 35 U.S.C. § 6(b) (2002).1
The Appellant’s invention relates to improved air flow motion over a
disk brake rotor system used in a vehicle. (Specification 1). As described in
the Appellant’s Specification:

1 This application was the subject of previous Appeal 2004-0998.
Appeal 2007-1860
Application 09/716,113

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Through mechanical linkage, the movement of [a]
brake pedal is transmitted to a set of opposing
fixed brake pads, between which is a brake rotor
that rotates as the axle of the automobile turns
from the rotation of the wheel assembly . . . . The
brake rotor may be fixed to the hub of a vehicle
axle by an array of drive pin or drive lug/bolt
combinations radially distributed about the
axle. . . .
As the driver applies force to the brake
pedal, that force may be transmitted as friction to
the moving brake rotor by the fixed brake pads so
as to slow the vehicle down or bring it to rest
through controlled slippage. The energy absorbed
by the controlled slippage may be converted into
heat, principally within the brake rotor.

(Specification 1). Air flow through the disk brake rotor system aids in the
dissipation of this heat. Id.
Independent claims 1 and 21 read as follows:

1. A mounting hat for a brake rotor
comprising:
a lower section coupled to an upper section,
a plurality of aerodynamically shaped
standoff vanes each having a leading edge, a
trailing edge, a top, and a bottom coupled to the
upper section, the aerodynamically shaped standoff
vanes space apart the upper section from a brake
rotor, wherein the leading edge and the trailing
edge are curved and have different shapes; and
a plurality of vents formed between adjacent
aerodynamically shaped standoff vanes, wherein
the vents are circumferentially distributed on the
upper section, and air located within said mounting
hat and air deflected from said brake rotor are
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induced to substantially flow through the plurality
of vents in a direction outward from a radial
interior of said mounting hat to a radial exterior of
said mounting hat. [Emphasis added.]

21. A brake rotor comprising:
a rotor,
a hub having a plurality of aerodynamically
shaped standoff vanes each having a leading edge,
a trailing edge, a top, a bottom and a plurality of
vents formed between adjacent aerodynamically
shaped standoff vanes coupled to the rotor, the
leading edge and the trailing edge each having
different shapes, wherein the vents are
circumferentially distributed between the hub and
the rotor, air flow is induced to flow through the
plurality of vents, and the aerodynamically shaped
standoff vanes space apart the hub from the rotor.
[Emphasis added]

The appealed claims are rejected under 35 U.S.C. § 102(b) as being
anticipated by Caskey (U.S. Patent 3,403,760). Caskey discloses a two-
piece rotor for a disk brake including a brake disk and an attaching hub.
(Caskey, col. 2, ll. 54-65). The Examiner contends that the attaching hub
disclosed in Caskey has a plurality of “aerodynamically shaped standoff
vanes” and that these “aerodynamically shaped standoff vanes” have leading
and trailing edges which are curved and have different shapes. (Ans. 4 and
8). The Appellant contends that the leading and trailing edges of these
structures do not have different shapes. (Br. 5-6).
We reverse.

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ISSUE
The sole issue in this appeal is whether the Appellant has shown that
the Examiner erred in contending that Caskey discloses a mounting hat or
hub for a disk brake rotor including standoff vanes with leading and trailing
edges having different shapes.

FINDINGS OF FACT
The record supports the following findings of fact by a preponderance
of the evidence.
1. The phrase “different shapes” consists of commonly understood
words. The widely accepted meaning of this phrase excludes shapes which
are symmetrical, that is, which are merely “flipped over” so that one shape is
a duplicate of the other. One dictionary defines shape as a “spatial form or
contour that is [usually fixed] by a relatively constant spatial relation
between the parts of the periphery or surface . . . .” WEBSTER’S THIRD NEW
INTERNATIONAL DICTIONARY at 2087 (G. & C. Merriam Co. 1971) (entry 2,
definition 1b). This definition implies that a “shape” is a geometrical
abstraction. As such, shapes can be compared by mentally “flipping one
shape over” and moving that shape toward the other to see if the two shapes
may be made coincident with one another. Therefore, two “shapes,” one of
which may be “flipped over” so that one shape is a duplicate of the other, are
not “different.” There is no evidence in the specification or the prosecution
history sufficient to demonstrate that the phrase “different shapes” as used in
claims 1 and 21 should be given a meaning broader than this widely
accepted meaning.
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2. Caskey (U.S. Patent 3,403,760) issued October 1, 1968, more
than one year before the Appellant’s filing date.
3. Caskey discloses a two-piece rotor for a disk brake including a
brake disk and an attaching hub. (Caskey, col. 2, ll. 54-65). Figure 3 of
Caskey is reproduced below.
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Figure 3 is a sectional view of Caskey’s wheel structure showing a broken-
away portion of the brake disk (32) and the attaching hub. Arrows 3-3 in
Fig. 2 (not reproduced) indicate that the view depicted in Fig. 3 is parallel to
an axis of the wheel structure.
4. Caskey discloses that “the attaching hub [ ] has a radially
extending flange [ ] which is employed to attach the braking disk portion 32
of the two-piece or composite rotor to the attaching hub [ ]. This is
accomplished by means of spaced radially inwardly extending tabs 60
positioned about the inner periphery of the disk 32 that are positioned in
engagement with the flange [ ] at spaced intervals around the periphery of
the disk 32.” (Caskey, col. 3, ll. 10-17 [reference numerals not appearing in
Fig. 3 omitted]). Caskey further discloses that this flange “is provided with
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recesses [ ] at spaced positions thereof on either side of the tabs 60 to
provide air-directing surfaces [ ] that are spaced from the brake engaging
surface [ ] of the disk 32.” (Id., col. 3, ll. 26-29). [reference numerals not
appearing in Fig. 3 omitted].
5. Caskey’s flange appears to include structure corresponding to
the “standoff vanes” of claims 1 and 2, namely, portions of the flange
surrounding the recesses along an azimuthal direction.
6. Caskey describes the recesses as “generally rectangular” in
radial configuration. (Caskey, col. 3, ll. 34-38). This description is
illustrated in Figure 6 of Caskey, which is reproduced below.
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Figure 6 is a sectional view of Caskey’s brake disk and attaching hub
looking radially inwardly from outside the attaching hub toward one of the
recesses (65) in the flange (38).
7. The surface surrounding the recess (65) shown in Fig. 6 appears
to include an azimuthally extending edge or first portion (68) and edges (no
reference numeral) extending generally axially from opposite ends of the
first portion (68). The latter edges correspond to the “leading edge” and the
“trailing edge” of claims 1 and 21.
8. Figure 3 of Caskey appears to show a set of hidden lines
depicting the generally axially extending edges of the recesses (65 in Fig. 6).
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These hidden lines are not identified by a reference numeral in Fig. 3. In
light of the shapes of the hidden lines in Fig. 3 and of the section of the
recess (65) in Fig. 6, Caskey’s standoff vanes appear to have symmetrical
leading and trailing edges.2

ANALYSIS
The Examiner rejected claims 1, 3, 5, 6, 21, 23, 25 and 26 as
anticipated by Caskey. “A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros. v. Union Oil of
California, 814 F.2d 628, 631 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
The Examiner contends that “Caskey’s leading edge and trailing edge of a
standoff vane are of different shapes in that each edge curves in an opposite
direction, as shown in figure 3 of Caskey above.” (Ans. 13). The Appellant
disagrees. If Caskey’s attaching hub does not include structure
corresponding to standoff vanes with leading and trailing edges having
different shapes, then Caskey does not anticipate the appealed claims.
The first step in determining whether Caskey discloses an attaching
hub including standoff vanes with leading and trailing edges having different
shapes is to determine the broadest reasonable interpretation of the phrase

2 The briefs included some discussion regarding whether the tabs (60 in
Fig. 3) have differently shaped leading and trailing edges. E.g., Br., 5-6.
Since the Examiner does not contend that the tabs (60) correspond to the
“standoff vanes” recited in claims 1 and 21 (Ans. 13), these arguments have
not been considered.
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“different shapes” as that phrase is used in claims 1 and 21. When
addressing issues of anticipation,

the [Patent and Trademark Office] applies to the
verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary
usage as they would be understood by one of
ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or
otherwise that may be afforded by the written
description contained in the applicant’s
specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The phrase “different shapes” consists of commonly understood
words. “In some cases, the ordinary meaning of claim language as
understood by a person of skill in the art may be readily apparent even to lay
judges, and claim construction in such cases involves little more than the
application of the widely accepted meaning of commonly used words.”
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (citing Brown
v. 3M, 265 F.3d 1349, 1352 (Fed. Cir. 2001)). The widely accepted meaning
of the words “different shapes” excludes shapes which are symmetrical, that
is, merely “flipped over” so that one shape is a duplicate of the other. There
is no evidence in the specification or the prosecution history sufficient to
demonstrate that the phrase “different shapes” as used in claims 1 and 21
should be given a meaning broader than this widely accepted meaning.
The Examiner contends that “Caskey’s leading edge and trailing edge
of a standoff vane are of different shapes in that each edge curves in an
opposite direction, as shown in figure 3 of Caskey above.” (Ans., 13). The
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phrase “different shapes” as used in claims 1 and 21 cannot be extended
reasonably to include standoff vanes having edges curved in opposite
directions if those edges have shapes which are symmetrical.
The second step in determining whether Caskey discloses an attaching
hub including standoff vanes with leading and trailing edges having different
shapes is to compare the claim language to the disclosure of the allegedly
anticipatory reference. Caskey does not expressly or inherently disclose an
attaching hub including standoff vanes with leading and trailing edges
having different shapes since Caskey’s standoff vanes appear to have
symmetrical leading and trailing edges. Since Caskey does not disclose at
least one element of claims 1 and 21, Caskey does not anticipate those
claims.
On the record before us, the Examiner erred in rejecting claims 1 and
21 under 35 U.S.C. § 102(b). Since claims 3, 5, 6, 23, 25 and 26 are
narrower than claims 1 and 21, it follows that those claims were not properly
rejected as anticipated by Caskey.

CONCLUSION OF LAW
On the record before us, the Appellant has shown that the appealed
claims, when given their broadest reasonable interpretation, do not cover a
mounting hat or hub for a disk brake rotor including standoff vanes with
symmetric leading and trailing edges. Since the only structure disclosed by
Caskey which corresponds to the “standoff vanes” of the appealed claims
has symmetric leading and trailing edges, the Appellant has shown that the
Examiner erred in rejecting the appealed claims as anticipated by Caskey.
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DECISION
The Examiner’s rejection of claims 1, 3, 5, 6, 21, 23, 25 and 26 is
reversed.

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REVERSED

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