Kazuki KOSHIYAMA

Patent Trials and Appeals Board

Nov 17, 2021

2021003838 (P.T.A.B. Nov. 17, 2021)

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.
12/829,516 07/02/2010 Kazuki KOSHIYAMA SN-US105133 8684
22919 7590 11/17/2021
GLOBAL IP COUNSELORS, LLP
DAVID TARNOFF
1233 20TH STREET, NW
SUITE 600
WASHINGTON, DC 20036-2680
EXAMINER
BURCH, MELODY M
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
11/17/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAZUKI KOSHIYAMA

____________

Appeal 2021-003838
Application 12/829,516
Technology Center 3600
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
JAMES P. CALVE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Oct. 30, 2020, hereinafter “Final
Act.”) rejecting claims 1–7, 9, 11–14, and 22.2 Appellant’s representative

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Shimano Inc. is identified as the real party in interest in
Appellant’s Appeal Brief (filed Feb. 12, 2021, hereinafter “Appeal Br.”).
Appeal Br. 2.
2 Claims 25 and 26 are allowed and claims 8 and 27 are objected to by the
Examiner as being dependent upon a rejected base claim and otherwise
indicated as being allowable if rewritten in independent form including all of
the limitations of the base claim and any intervening claim. Final Act. 7.
Appeal 2021-003838
Application 12/829,516

2

presented oral argument on November 8, 2021. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention is directed to “a brake rotor assembly with a
cooling member that dissipates heat generated during braking.” Spec. para.
3.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A brake rotor assembly comprising:
a rotor member having an annular portion and a
braking surface on the annular portion such that a brake
pad is urged into contact with the braking surface;
a cooling member coupled to the rotor member,
the cooling member being formed of a material selected
from the group consisting of a metal material, a metal
alloy and a carbon material; and
a hub attachment member including at least at least
[sic] one radially extending arm,
a distance from a rotational axis of the brake rotor
assembly to a radially innermost portion of the braking
surface of the rotor member being greater than a distance
from the rotational axis of the brake rotor assembly to a
radially outermost portion of the cooling member such
that the cooling member is spaced apart from the braking
surface of the rotor member in a radial direction,
the cooling member being coupled to a radially
innermost portion of the annular portion of the rotor
member via the at least one radially extending arm, and
Appeal 2021-003838
Application 12/829,516

3

a surface area of the cooling member being greater
than a surface area of the braking surface of the rotor
member.

Appeal Br. 12 (Claims App).

REJECTIONS
I. The Examiner rejects claims 1–5, 7, 9, 11–14, and 22 under 35
U.S.C. § 103(a) as being unpatentable over Wagner.3
II. The Examiner rejects claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Wagner and Lee.4

ANALYSIS
Rejection I
The Examiner finds that Wagner discloses a brake rotor assembly 1
including, inter alia, rotor member 2 having an annular portion and a
braking surface on the annular portion (near index number 13), metallic
cooling member 6 coupled to rotor member 2, and hub attachment 4 having
at least one radially extending arm. Final Act. 2–3 (citing Wagner, Abstract,
Fig. 1). The Examiner further finds that in Wagner’s Figure 2 “a distance
from a rotational axis of the brake rotor assembly to a radially innermost
portion of the braking surface of the rotor member [2]” is “greater than a
distance from the rotational axis of the brake rotor assembly to a radially
outermost portion of the cooling member 6.” Id. at 3–4 (see the Examiner’s

3 Wagner, WO 2007/016806 Al, published Feb. 15, 2007. However, for
understanding, the Examiner relies on the English language equivalent US
2010/0133054 Al, published June 3, 2010 (hereinafter “Wagner ’054”).
4 Lee, US 2010/0148639 A1, published June 17, 2010.
Appeal 2021-003838
Application 12/829,516

4

annotated Figure 2 of Wagner). However, the Examiner finds that Wagner
“is silent with regards to the surface area of the cooling member being
greater than a surface area of the braking surface of the rotor member.” Id.
at 4. Nonetheless, the “Examiner notes that there are a finite number of
predictable solutions for classifying the surface area of the cooling member
[6] with respect to the surface area of the braking surface of the rotor
member [2].” Id. at 5. According to the Examiner,
[T]here are three identified solutions: 1. The surface area of the
cooling member and the braking surface can be the same,
2. The surface area of the cooling member can be less than the
surface area of the braking surface, or 3. The surface area of the
cooling member can be greater than the surface area of the
braking surface as recited.

Id. Thus, the Examiner concludes that it would have been obvious to a
person of ordinary skill in the art to modify the surface area of Wagner’s
cooling member 6 to be greater than the surface area of the braking surface,
“in light of the obvious to try rationale, in order to provide a cooling member
with comparatively greater heat dissipation capacity.” Id. The Examiner
explains that a skilled artisan “could have pursued the known potential
solutions with reasonable expectation of success depending on the heat
dissipation needs of the particular brake application.” Id. (citing KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)).
In response, Appellant argues “that the Examiner’s ‘obvious to try’
rationale is improper and fails to support the conclusion that Wagner renders
obvious a brake rotor assembly in which a surface area of the cooling
member is greater than a surface area of the braking surface of the rotor
member.” Appeal Br. 7. According to Appellant, the Examiner’s reference
Appeal 2021-003838
Application 12/829,516

5

to three solutions “are not the only three solutions to the problem of
dissipating heat from the braking surface portion of a brake disc”; rather,
“different materials could be used for the cooling member, or a different
design could be used entirely.” Id. at 8 (underlining omitted). Thus,
according to Appellant, the three solutions the Examiner discusses “are
merely solutions to the problem of how to design the surface area of the
cooling member relative to the braking surface of the brake disc” and
“[n]othing in Wagner or the art teaches a need to solve” such a problem. Id.
(underlining omitted). Thus, Appellant concludes that “the Final Office
Action has failed to identify any reasons why a skilled artisan would make
the particular modification to the surface area of the cooling member relative
to that of the braking surface of the rotor member, or any beneficial effect in
doing so.” Id. at 9. In other words, Appellant argues that absent
impermissible hindsight a person of ordinary skill in the art would not have a
“reason to modify the surface area of the cooling member 6 of Wagner in
any of the alleged ‘finite number of possibilities’ suggested in the Final
Office Action, because Wagner fails to teach that the surface area of the
cooling member is a variable that should be adjusted.” Id. at 10.
The Federal Circuit has pointed out that in a proper obvious to try
approach to obviousness, the possible options for solving a problem must
have been “known and finite.” Rolls-Royce, PLC v. United Techs.
Corp., 603 F.3d 1325, 1339 (Fed. Cir. 2010) (citing Abbott Labs. v. Sandoz,
Inc., 544 F.3d 1341, 1351 (Fed. Cir. 2008)). In other words, the obvious to
try rationale can properly be used to support a conclusion of obviousness
only when the claimed solution would have been selected from a finite
number of potential solutions known to persons of ordinary skill in the art.
Appeal 2021-003838
Application 12/829,516

6

Appellant is correct that
The Federal Circuit has held that the “obvious to try” rationale
is improper . . . where the Examiner alleges that it would have
been obvious to vary certain parameters to arrive at a
successful result, and “the prior art gave either no indication of
which parameters were critical or no direction as to which of
many possible choices is likely to be successful.”

Reply Brief (filed June 1, 2021, hereinafter “Reply Br.”) 3 (citing In re
Kubin, 561 F.3d 1351, 1359 (Fed. Cir. 2009)).
Appellant’s Specification describes braking surface S as the annular
portion of rotor member 30 defined by radii r1 and r2. Spec. paras. 28, 37,
Figs. 5, 7. The Specification further describes brake pads 26 generating a
braking force when contacting braking surface S, wherein the braking force
generates heat dissipated via contact with cooling member 34. Id. at paras.
26, 39. Hence, sizing the area of Appellant’s cooling member 34 relative to
the area of braking surface S is not merely a problem of “classifying the
surface area of the cooling member with respect to the surface area of the
braking surface of the rotor member,” as the Examiner asserts. See Final
Act. 5 (emphasis added). Rather, it is a problem of heat dissipation because
depending on the relationship between the areas of braking surface S and
cooling member 34, the degree of heat dissipation is determined.
As such, we agree with Appellant that “there are not merely three
solutions to the alleged problem” of heat dissipation in a braking system and,
moreover, the prior art does not indicate that using the area of the cooling
member relative to the area of the braking surface S was a “known” solution.
Appeal Br. 8 (underlining omitted). In particular, we agree with Appellant
that the Examiner’s stated solutions to the alleged problem of heat
Appeal 2021-003838
Application 12/829,516

7

dissipation in a brake system are not “finite” as there are other solutions on
how to efficiently dissipate heat from the brake disc, such as, employing
different materials (ceramic, copper, steel, cast iron) or designs (cooling
holes, cooling fins, cooling fasteners). Appeal Br. 8.
We appreciate the Examiner’s position that simple physics describes
heat transfer as a function of surface area and that there is a need to dissipate
heat generated during braking. See Examiner’s Answer (dated Apr. 7, 2021,
hereinafter “Ans.”) 10–11 (“surface area plays a very major role in
achieving a desired heat transfer or dissipation rate.”), 12. However, just
because heat transfer is a function of surface area and a skilled artisan would
know that heat dissipation is desired in a braking system does not mean “that
the surface area of the cooling member relative to the [braking surface area
of the] rotor member was a known parameter in the art that could be varied
to affect heat dissipation from the braking surface.” Reply Br. 4 (emphasis
added). Furthermore, Appellant is correct that Wagner does not even teach
that its intermediate ring 6, which the Examiner equates to the claimed
“cooling member,” “even has the function of dissipating heat from the
braking surface of a rotor member [2].” Id. Rather, Wagner concerns itself
with air cooling rivets 3, which does not involve the size of the cooling
member [6] surface area relative to the size of the braking surface area of
rotor member [2]. See Wagner ’054, para. 7.
As such, we agree with Appellant that the Examiner’s rejection fails
to identify prior art that “suggests that the surface area of the cooling
member relative to the [braking surface area of the] rotor member was a
known parameter in the art that could be varied to affect heat dissipation
from the braking surface.” Reply Br. 4 (emphasis added). Therefore,
Appeal 2021-003838
Application 12/829,516

8

having the “surface area of the cooling member . . . greater than a surface
area of the braking surface of the rotor member,” as called for by
independent claim 1, “would not have presented itself as an option at all, let
alone an option that would have been obvious to try.” Rolls-Royce, 603 F.3d
at 1339.
Lastly, the reason proffered by the Examiner to modify the teachings
of Wagner, i.e., “to provide a cooling member with comparatively greater
heat dissipation capacity,” appears to already be adequately performed by
Wagner’s cooling holes located on the periphery of rotor member 2. See
Wagner, Fig. 1. Thus, we agree with Appellant that the Examiner’s
rejection appears to be the result of hindsight analysis. Reply Br. 5; see also
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, 550 U.S. at 418).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1–5, 7, 9, 11–14, and 22 as
unpatentable over Wagner.

Rejection II
The Examiner’s reliance on Lee does not remedy the deficiency of the
Examiner’s rejection based on Wagner discussed supra. See Final Act. 6–7.
Therefore, for the same reasons discussed above, we likewise do not sustain
the rejection of claim 6 over the combined teachings of Wagner and Lee.

Appeal 2021-003838
Application 12/829,516

9

CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7, 9,
11–14, 22
103(a) Wagner 1–5, 7, 9,
11–14, 22
6 103(a) Wagner, Lee 6
Overall
Outcome
1–7, 9, 11–
14, 22

REVERSED