Ex Parte Schroth et alDownload PDFPatent Trial and Appeal BoardJun 30, 201612436830 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/436,830 0510712009 James G. Schroth 104102 7590 07/01/2016 BrooksGroup 48685 Hayes Shelby Township, MI 48315 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 ATTORNEY DOCKET NO. CONFIRMATION NO. P002635-R&D-MJL 6205 EXAMINER BOWES, STEPHEN M ART UNIT PAPER NUMBER 3657 MAILDATE DELIVERY MODE 07/01/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte JAMES G. SCHROTH, MOHAN SUNDAR, SHUNG H. SUNG, MICHAEL D. HANNA, and HEEWOOK LEE Appeal2014-002850 Application 12/436,830 Technology Center 3600 Before LYNNE H. BROWNE, JILL D. HILL, and GORDON D. KINDER, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James G. Schroth et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-19 and 21-25. 1 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Claim 20 has been withdrawn from consideration. Appeal2014-002850 Application 12/436,830 CLAIMED SUBJECT MATTER Independent claim 1, reproduced below, represents the claimed subject matter. 1. A product comprising: a component having a first number of natural modes of vibrations; and an insert coupled to the component, the insert having a second number of natural modes of vibration which is different than the first number of natural modes of vibration wherein the component having the first number of natural modes of vibrations and the insert having the second number of natural modes of vibration are constructed and arranged to damp vibrations in the component when the component is vibrated. Appeal Br. 22, Claims App. REJECTION I. Claims 1, 2, 5, 21, 24, and 25 stand rejected under 35 U.S.C. § 102(b) as anticipated by Miskinis (US 2007 /0235270 Al, pub. Oct. 11, 2007). Final 1A..ct. 2. II. Claims 3, 9-11, and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Miskinis and Buechel (US 6, 131, 707, iss. Oct. 17, 2000). Final Act. 3. III. Claims 4, 6-8, 15-19, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Miskinis and Hagiwara (US 4,379,501, iss. Apr. 12, 1983). Final Act. 5. IV. Claims 12 and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Miskinis, Buechel, and Hagiwara. Final Act. 8. 2 Appeal2014-002850 Application 12/436,830 Rejection I OPINION Appellants argue claims 1, 2, 5, 21, 24, and 25 as a group. Appeal Br. 13. We select independent claim 1 as representative. See 37 C.F.R. § 1.37(c)(l)(iv)(2015). Claims 2, 5, 21, 24, and 25 stand or fall with claim 1. Claim 1 recites, inter alia, the insert having a second number of natural modes of vibration which is different than the first number of natural modes of vibration (of the component), the first and second natural modes of vibration being "constructed and arranged to damp vibrations." The Examiner finds that Miskinis discloses this limitation. Final Act. 3 (citing Miskinis i-f 3). According to the Examiner, although Miskinis does not explicitly disclose resonance frequency, it discloses a brake rotor having multiple parts that are shaped differently and can be made of different materials, and all objects "inherently have a resonance frequency based on the material, mass and/or shape," such that "multiple natural modes of vibration are an inherent property of the brake rotor of Miskinis." Ans. 2. Appellants argue that the Examiner fails to "provide a basis in fact and/or technical reasoning" to support a determination that multiple natural modes of vibration "necessarily flows from the teachings of' Miskinis. Appeal Br. 13. The Examiner responds that it is not only possible, but essential, that each component of Miskinis has a different resonance frequency. Ans. 3. Without this, the Examiner argues, "the insert would provide no damping benefit. If the insert and the rest of the rotor had the same natural frequency, the vibrations would reinforce each other and cause the overall system vibration to be worse." Id. 3 Appeal2014-002850 Application 12/436,830 Appellants reply that "the mere capability of Miskinis' brake components possibly having different natural modes of vibration is not enough to sustain the rejection." Reply Br. 4. According to Appellants, "Miskinis relies on frictional damping which would not necessarily require different resonance frequencies between a rotor and an insert," and the Examiner "has not provided any evidence beyond conclusory statements to prove the asserted fact." Id. The Examiner has the better position. While Miskinis indeed discloses that an interfacial layer can be used between the dampening ring 100 and the rest of the disc A (see Miskinis i-f 24), it appears to additionally contemplate that the dampening ring 100 having natural modes of vibration that differ from the natural modes of vibration of the rest of casting A, for the purpose of vibration damping (see Miskinis i-f 33). We therefore sustain Rejection I. Rejection 11 Appellants make no argument that claim 3 would be patentable over Miskinis and Buechel, if claim 1 is not patentable over Miskinis. 2 We therefore sustain the rejection of claim 3 for the reasons set forth above regarding Rejection I. 2 Appellants argue, for the first time in the Reply Brief, that Miskinis and Buechel are non-analogous and therefore would not be combined by one skilled in the art. Reply Br. 4--5. Because this argument was not raised in the Appeal Brief, is not responsive to an argument raised in the Answer, and has not been supported by an argument showing good cause, we decline to consider the argument. 37 C.F.R. § 41.41(b)(2). 4 Appeal2014-002850 Application 12/436,830 Appellants argue claims 9-11 and 13 as a group. Appeal Br. 15. We select independent claim 9 as representative. See 37 C.F.R. § 1.37(c)(l)(iv)(2015). Claims 10, 11, and 13 stand or fall with claim 9. Claim 9 recites, inter alia, an insert coupled to the component "to damp vibrations in the component when the component is vibrated." Appeal Br. 23, Claims App. The Examiner finds that Miskinis discloses "an insert (10) coupled to the component ... to damp vibrations in the component when the component is vibrated." Final Act. 4. Appellants argue that Miskinis' insert 10 is not coupled to the component, and does not dampen vibrations in the component, apparently because "[t]he component, insert, and sound dampening ring of Miskinis are all separate and distinct structures." Appeal Br. 14--15. The Examiner again has the better position. Miskinis discloses an insert 10 that includes a dampening ring 100. Miskinis, Fig. 1, i-f 21. The insert 10, including the dampening ring is cast within a rotor casting A. Miskinis, Fig. 5, i-f 27. Appellants have provided no definition of the term "coupled to" that excludes the insert being cast within the component. Appellants use the term "coupled to" in the Specification as follows: "The insert 10 may be positioned within or coupled to the brake rotor 12 to target particular natural modes of vibration of the brake rotor 12 for damping vibrations." Spec. i-f 21. Such use does not convince us that Miskini' s "casting within" is not "coupling to." We therefore sustain Rejection II. 5 Appeal2014-002850 Application 12/436,830 Rejection III Appellants make no argument that claims 4 and 6-8 would be patentable over Miskinis and Hagiwara, if claim 1 is not patentable over Miskinis. We therefore sustain the rejection of claims 4 and 6-8 for the reasons set forth above regarding Rejection I. Appellants argue claims 15-19, 22 and 23 as a group. Appeal Br. 16. We select independent claim 15 as representative. See 37 C.F.R. § 1.37(c)(l)(iv)(2015). Claims 16-19, 22 and 23 stand or fall with claim 15. Claim 15 recites, inter alia, an insert having plural tabs extending from, and "spaced irregularly around," a body. Appeal Br. 24, Claims App. The Examiner finds that Miskinis discloses the body and plural tabs of claim 15, except for the tabs being irregularly spaced around the body. Final Act. 7. The Examiner also finds that Hagiwara discloses such irregular spacing, and concludes that it would have been obvious "to modify the tabs of Miskinis [] by spacing them irregularly as taught by Hagiwara [] to mitigate resonance-induced warping." Id. (citing Hagiwara, col. 3, 11. 21-25; Fig. 3). Appellants argue that Hagiwara discloses non-uniform spacing of cooling veins, rather than irregular spacing of tabs, and that Hagiwara does not disclose that cooling ribs are equivalent (or similar) to tabs. Appeal Br. 16. We note that the Examiner only relies on Hagiwara for disclosing irregular spacing, not for a disclosing tabs. Appellants' argument regarding Hagiwara not disclosing the equivalence or similarity of cooling veins and tabs does not address the combination of Miskinis and Hagiwara proposed by the Examiner, and is therefore not persuasive. Appellants agree that Hagiwara discloses non-uniform spacing. Appellants fail to make any 6 Appeal2014-002850 Application 12/436,830 allegation that, or explanation regarding why, the reason for irregularly spacing Hagiwara's cooling veins would not apply to Miskinis' tabs. We are therefore not persuaded of Examiner error, and we sustain Rejection III. Rejection IV Appellants make no argument that claims 12 and 14 would be patentable over Miskinis, Buechel, and Hagiwara, if claim 9 (from which they depend via claim 11) is not patentable over Miskinis and Buechel. We therefore sustain Rejection IV for the reasons set forth above regarding Rejection II. DECISION We AFFIRM the rejection of claims 1, 2, 5, 21, 24, and 25 under 35 U.S.C. § 102(b) as anticipated by Miskinis. We AFFIRM the rejection of claims 3, 9-11, and 13 under 35 U.S.C. § 103(a) as unpatentable over iviiskinis and Buechel. We AFFIRM the rejection of claims 4, 6-8, 15-19, 22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Miskinis and Hagiwara. We AFFIRM the rejection of claims 12 and 14 under 35 U.S.C. § 103(a) as unpatentable over Miskinis, Buechel, and Hagiwara. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation