Kazuki KOSHIYAMADownload PDFPatent Trials and Appeals BoardNov 17, 20212021003838 (P.T.A.B. Nov. 17, 2021) Copy Citation 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 Copy with citationCopy as parenthetical citation