NIPPON STEEL & SUMITOMO METAL CORPORATION et al.

Patent Trials and Appeals Board

Dec 22, 2021

2021000799 (P.T.A.B. Dec. 22, 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.
16/064,478 06/21/2018 Takahiro FUJIMOTO 12054-0322 3330
22902 7590 12/22/2021
CLARK & BRODY
1700 Diagonal Road
Suite 310
Alexandria, VA 22314
EXAMINER
SAHNI, VISHAL R
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
12/22/2021 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 TAKAHIRO FUJIMOTO, ATSUSHI SAKAGUCHI,
KAZUTAKA ASABE, KAZUMICHI KAWASAKI, TAKESHI NAKANO,
TOKITAKE OKAHIRA, YASUSHI KARINO, and HAJIME TAKAMI
____________

Appeal 2021-000799
Application 16/064,478
Technology Center 3600
____________

Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 3–6.2 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “Nippon Steel Corporation (by name
change) and Fine Sinter Co. Ltd, the joint assignees of record” as the real
parties in interest. Appeal Br. 3.
2 Claim 2 is cancelled. Appeal Br. 29 (Claims App.).
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THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A brake lining configured to be pressed against a sliding
surface of a brake disk fastened to a wheel or an axle of a railway
vehicle, the brake lining comprising:
a plurality of friction members arranged to be spaced from
each other, each of the friction members having a front surface
that is to face the sliding surface of the brake disk;
a back board fastened to a back surface of each of the friction
members;
a base plate supporting each of the friction members at a
region including a center portion of each of the friction members;
and
an elastic member disposed between the base plate and the
back board, on a back surface side of each of the friction
members;
wherein:
two of the plurality of friction members that are adjacent to
each other are taken as at least one pair, and the back board that
is fastened to the at least one pair of friction members is a one-
piece member;
in each of the at least one pair of friction members, the two
friction members are arranged along a circumferential direction
of the brake disk; and
each friction member is fastened to the base plate by a
fastening member, and a direction of a line extending between
two of the fastening members in the at least one pair of friction
members extends along the circumferential direction of the brake
disk,
wherein in a plan view of the base plate, none of the friction
members are disposed on a radial line extending in a radial
direction of the brake disk, the radial line extending throughout
the base plate and positioned at a middle portion of the base plate
with respect to a direction along the circumferential direction of
the brake disk.
Appeal Br. 29 (Claims App.).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Russo US 7,648,007 B2 Jan. 19, 2010
Kato US 2014/0097049 A1 Apr. 10, 2014

THE REJECTION
Claims 1 and 3–6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kato and Russo. Final Act. 3–6.
OPINION
Claims 1 and 3
The Examiner finds that Kato discloses most of the limitations of
independent claim 1, including the claimed structure of and relationship
between friction members, a back board, a base plate, and an elastic
member. Final Act. 4. The Examiner acknowledges, however, that not each
pair of such friction members is arranged along a circumferential direction
of the brake disk, and consequently, not every line extending between two
fastening members that fasten each friction member to a base plate extends
along the circumferential direction. Id. Rather than each pair of friction
members being so disposed, the Examiner finds that “Kato discloses that
only some . . . of the at least one pair of friction members are arranged along
the circumferential direction.” Id. (citing Kato Fig. 2a) (emphasis added).
The Examiner points out that Kato teaches that the embodiment
shown in Fig. 2a has a certain number of pairs of friction members arranged
in a radial direction and a certain number of friction members arranged in a
circumferential direction, but states that “[t]he arrangement and number of
the friction members 3 are not particularly limited.” Kato ¶ 43; Final Act. 4.
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The Examiner concludes that it would have been obvious to orient all pairs
of friction members in the circumferential direction in light of Kato’s
statement regarding the arrangement of friction members not being
particularly limited and the recognition of circumferentially arranged friction
members being known in the art. Final Act. 4. Significantly, the Examiner
also points to Russo’s teaching of “all of the pairs of friction elements (3)
[being] arranged along a circumferential direction of the brake disk.” Id.
(citing Russo Figs. 1, 3, 5); see also Ans. 11 (“Russo not only depicts all
pairs of friction members in the claimed circumferential arrangement, but
does so . . . to reduce brake squeal.”).
As to the limitation in the last clause of independent claim 1, the
Examiner concludes that it would have been obvious to preclude any friction
members from being disposed on the middle radial line of the brake disk
because if the center friction member pair of Kato were modified so as to be
oriented circumferentially, “a radial line in the center of the base plate would
not pass through any friction members.” Final Act. 5; see also Ans. 9
(depicting the Examiner’s proposed modification).3,4

3 Because we affirm the Examiner’s rejection on another basis as described
herein, we need not consider the alternative basis of the Examiner’s rejection
in which the Examiner takes the position that the lack of friction members
disposed on two radial lines extending in a radial direction of the brake disk
in the middle portion of the base plate in Kato (i.e., the “space for a radially
extending line between the center pair of friction members and those pairs to
the immediate left/right”) (Final Act. 5; Kato Fig. 2a) is sufficient to meet
the claim, nor Appellant’s arguments in response thereto (Appeal Br. 15).
4 We also need not consider the Examiner’s position in which the radially
extending friction member pairs are removed completely (Final Act. 5;
Ans. 7), nor Appellant’s arguments in response thereto (Appeal Br. 17).
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Appellant argues that “[l]acking a recognition of avoiding putting the
friction member on the middle portion radial line, there is no reason for the
Examiner to conclude that a rearrangement of the friction members must
have the arrangement of claim 1.” Appeal Br. 16; see also id. at 18
(“[T]here is still no teaching in Kato that the friction member[s] are not to
intersect the middle portion radial line that extends through the brake disk
with respect to the circumferential direction as claim 1 requires.”). The
Examiner takes the position that
because the central Kato pair of friction members is located at
the precise center of the brake pad, . . . when it is modified to
extend in the circumferential direction (pursuant to the Russo
reference teaching), the pair will be “precisely placed” so that
the friction members (3) are not on the radial line while the
back board (4a) will be.
Ans. 13 (citing Kato Figs. 2a, 2b).
We determine the Examiner to have the better position. Even if there
is a lack of recognition in the art of the benefits discovered by Appellant in
avoiding the arrangement of friction members on a radial line of the brake
disk in the middle portion of the base plate, the Examiner has explained
adequately how modification to Kato’s centrally located pair of radially
arranged friction members so as to be circumferentially arranged (i.e., a
known arrangement of friction member pairs explicitly recognized in both
Kato and Russo) will result in the claimed feature of a centrally located pair
of circumferentially arranged friction members. The fact that Appellant has
recognized another advantage which would flow naturally from following
the prior art’s teaching or suggestion of using centrally located,
circumferentially arranged friction member pairs cannot be the basis for
patentability when the differences, if any, would otherwise have been
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obvious. See Ex Parte Obiaya, 227 USPQ 58, 60 (BPAI 1985); see also In
re Kubin, 561 F.3d 1351, 1357–58 (Fed. Cir. 2009) (quoting In re Wiseman,
596 F.2d 1019, 1023 (C.C.P.A. 1979) as “rejecting the notion that ‘a
structure suggested by the prior art, and, hence, potentially in the possession
of the public, is patentable . . . because it also possesses an inherent, but
hitherto unknown, function which [patentees] claim to have
discovered.’”).5,6
Appellant also argues that simply rotating each of Kato’s friction
member pairs so as to be circumferentially arranged results in an imbalance
of friction members along the circumferential lines passing through the
various friction members, which in turn, results in contact pressure of the
friction members not being uniform. Reply Br. 7. Appellant also argues
that “if the center radially –aligned pair is rotated 90 degrees, this
modification also requires movement of the adjacent friction members in a

5 Because we affirm the Examiner rejection for the reasons stated herein, we
need not consider the Examiner’s alternative position based on the teachings
of “Figure 1 of Kato, which . . . shows a radial center free of any frictional
members” (Final Act. 5) in connection with “a conventional typical disc
brake for railway vehicles” in which “the friction members 103 have a fairly
wide plate shape” (Kato ¶¶ 9, 38). We also do not consider Appellant’s
arguments in response thereto. Appeal Br. 16.
6 We do note that Figures 1 and 2a of Kato illustrate brake discs with friction
member pairs that are symmetrically disposed relative to a central radial
line. Kato Figs. 1, 2a. To maintain symmetry of the friction member pairs
of Kato’s brake disc relative to the central radial line when utilizing all
circumferentially arranged friction member pairs in accordance with the
Examiner’s modification, no friction member would be disposed on the
central radial line. We also note that Russo depicts only “partial view[s]” of
brake pads (Russo 2:36–51, Figs. 1, 3, 5, 7, 9), so it is unclear where a
central radial line of the brake disk is, and it is entirely possible that Russo
lacks friction members on the central radial lines of its brake disks.
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radial direction to provide an optimum arrangement of the friction
members,” which “may result in a part of the friction member not coming
into contact with the brake disc and poor brake performance.” Id. at 7–8.
Appellant’s assertions regarding optimal arrangements of friction
members amount to attorney argument unsupported by evidence, and thus,
are entitled to little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further,
Appellant has not explained adequately why such disadvantages, even if
true, would be of such concern to outweigh the Examiner’s noted advantages
relating to a reduction in brake squeal. Moreover, even if modification of
the location of other friction member pairs may be desirable to maintain any
alleged optimal functionality of Kato’s brake disc, Appellant has not
provided any persuasive technical reasoning or evidence to support that the
Examiner’s proposed modification of Kato’s brake disc so as to orient all the
friction member pairs circumferentially would have been beyond the level of
ordinary skill in the art or unpredictable to a person of ordinary skill in the
art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
The Examiner has provided an adequate reason with rational underpinnings
to utilize all circumferentially arranged friction member pairs in Kato’s
brake disc, namely, the explicit recognition in Kato of such friction member
pairs being disposed either radially or circumferentially and Russo’s
teaching of all circumferentially arranged friction member pairs in
connection with a brake disc that reduces brake squeal. Appellant has not
persuasively argued that the Examiner’s conclusion of obviousness lacks
rational underpinnings.
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Appellant also argues that the Examiner is ascribing too much
meaning to Kato’s teaching in paragraph 43 that “[t]he arrangement and
number of the friction members 3 are not particularly limited.” Kato ¶ 43;
Appeal Br. 16–17. Rather than making a suggestion “about the directional
arrangement of the pairs of friction members,” Appellant argues that “[t]he
arrangement discussed in this paragraph can also be reasonably interpreted
to refer to the total number of pairs and how many pairs are radial and how
many are circumferential, and not that the radial pairs can be . . . rearranged
longitudinally.” Id. We are not persuaded by such an argument. By
suggesting that the number of pairs that are radial and the number of pairs
that are circumferential may differ, it is implicit that Kato contemplates that
a radially extending friction member pair may be changed to a
circumferentially extending friction member pair so as to result in a different
number of pairs in each orientation.7
Appellant also argues that “there is no proper reason to apply the
circumferential arrangement of friction members of Russo to Kato.” Appeal
Br. 18. More particularly, Appellant points to the fact that “the structure of
the brake lining of Kato is quite different from that of Russo” in that Kato
fastens friction members to the base plate at the center of the friction
member resulting in friction members that are “less mobile,” whereas Russo
does not fasten the friction member to the base plate, but instead fastens a
support element for the friction member to the base plate and does so at a

7 Appellant also argues that the Examiner is ascribing too much meaning to
Kato’s teachings in paragraph 45. Appeal Br. 17–18. Because we do not
rely on the suggestion of paragraph 45 in affirming the Examiner’s rejection,
we need not consider this argument by Appellant in detail.
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support position in between the friction members which allows vibration of
friction members with “large amplitude.” Id. at 18, 19–21. Consequently,
Appellant argues that due to the differences in structure between Kato and
Russo, one of ordinary skill in the art would not have been led to modify
Kato with the teachings of Russo so as to utilize circumferentially arranged
friction member pairs for the purpose of suppressing brake squeal. Id. at 19;
see also id. at 21 (“The[] different vibration modes [of Kato and Russo]
weigh against the Examiner taking just one feature of Russo and concluding
that it has application in Kato.”). Appellant also urges that “the center line
mounting of the support element is a critical aspect of Russo and it cannot be
jettisoned when looking at Russo to modify Kato.” Id. at 22. Appellant
continues that:
[a]s Kato uses a completely different kind of friction member
mounting including a mounting that involves a completely
different kind of vibration, one of skill in the art would not find
it obvious to take only the circumferential mounting aspect of
Russo and use it in Kato or even look at Russo as a candidate to
modify Kato given the different structural arrangement of the
friction members and associated vibration modes.
Id.
The Examiner responds that “[b]oth references are directed to brake
pads specifically designed for rail vehicles, using a plurality of pairs of
friction members in a variety of numbers and orientations, with each pair of
friction members disposed on a single back board that is connected to the
base plate via two fastening elements.” Ans. 10–11. The Examiner further
responds that “Kato explicitly discusses the possibility of varying the
number and orientation of the friction pairs, explicitly referring to a
circumferential arrangement.” Id. at 11 (citing Kato ¶ 43). In light of
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Kato’s explicit contemplation of both radial and circumferential friction
member pairs for brake pads for rail vehicles, as well as explicit
contemplation of varying the number and orientation of such friction
member pairs, it is reasonable that one of ordinary skill in the art would have
considered Russo’s teachings of circumferential friction pairs for the
purpose of reducing brake squeal to be instructive with respect to the
structure of Kato. The Examiner has provided adequate reasoning having
rational underpinning to explain why one of ordinary skill in the art would
have been led to modify Kato so as to arrange all friction member pairs in a
circumferential orientation as taught by Russo.8
Appellant also argues that the Examiner failed to consider the
objective evidence of nonobviousness, namely, “comparative data in the
specification . . . on the reduction in brake squeal when all of the pairs of
friction members are arranged longitudinally and no pair of friction
members is on the middle portion radial line.” Appeal Br. 23. Appellant
states that “the inventors . . . discovered that if the pairs of friction members

8 Appellant also argues that the Examiner “errs in concluding that an
arrangement of pairs of friction members in a circumferential manner is a
simpler design ‘due to Russo’ that dictates modifying Kato to be like
claim 1.” Appeal Br. 22. Although we acknowledge the Examiner’s
statement that “it would be obvious to implement the simpler design of
orienting all pairs in the circumferential direction . . . due to Russo” (Final
Act. 4), we understand the Examiner’s reasoning to rely on “the explicit
language in the Kato specification” (id.) and Russo’s teaching of a reduction
in brake squeal (Ans. 11). We also note Russo’s statement that the all
circumferential arrangement of friction element pairs “employ[s] the lowest
overall dimensions in a radial direction with respect to the same pad.”
Russo 3:13–15. Similarly, it appears that an all circumferential arrangement
of friction element pairs in Kato could potentially maximize the use of space
on Kato’s brake pad in the radial direction.
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are arranged so that they are all circumferentially aligned and no pair is on
the middle portion radial line, brake squeal is significantly improved” and
“[t]his finding is completely unexpected from Kato or Russo.” Id. at 23–24.
Appellant continues that “[it] was only when the inventors realized the
existence of a large amplitude of unstable vibration mode for the Kato brake
lining that the invention could be made.” Id. at 24. Appellant states that
“[n]either Kato nor Russo recognize the vibration problem associated with
radially aligned friction members or those pairs with a friction member on
the middle portion radial line of the brake lining.” Id. at 25.
The Examiner appears to have considered the evidence of unexpected
results, but determines that “the comparative data in the instant application
fails to rebut the assertion of obviousness made in the rejection.” Ans. 13.
The comparative data in the Specification relates to “FIG. 6 [which] shows a
comparison of the maximum squeal indicates of [three] brake linings” (Spec.
¶ 51), including (i) “a brake lining provided in a disk brake of the inventive
example” and illustrated in Figure 5A (id.¶ 48), (ii) “a brake lining provided
in a disk brake of comparative example 1” and illustrated in Figure 5B (id.
¶ 49), and (iii) “a brake lining provided in a disk brake of comparative
example 2” and illustrated in Figure 5C (id. ¶ 50). Figure 5A illustrates six
pairs of circumferentially arranged friction disk members, with no friction
disk member arranged on the center radial line. Spec. Fig. 5A. Figure 5B
illustrates six pairs of friction disk members in which four pairs are arranged
circumferentially and two outer pairs are arranged radially, with no friction
disk member arranged on the center radial line. Id. at Fig. 5B. Figure 5C
illustrates six pairs of radially arranged friction disk members, with no
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friction disk member arranged on the center radial line. Id. at Fig. 5C. The
Specification states that:
The size of the maximum squeal index value has a correlation
with the number of pairs of friction members arranged along the
radial direction (not arranged along the circumferential direction)
of the brake disk, and the greater the number of such pairs of
friction members is, the larger the maximum squeal index value
becomes. That is, it was confirmed that brake squeal can be
reduced by eliminating pairs of friction members that are not
arranged along the circumferential direction of the brake disk.
Id. ¶ 52.
Although the comparative data of Figure 6 suggests a reduction in
brake squeal when utilizing all circumferentially arranged friction member
pairs, the record before us does not support that such a finding was
unexpected. In particular, the Examiner points out that “Russo . . . identifies
that when the various friction members are properly aligned
circumferentially [see col. 3, lines 4–15], the ‘reduction of noise obtained is
well clear and evident.’ See col. 3, line 47.” Ans. 12–13. The Examiner
further points out that “Figure 8 in Russo offers strikingly similar
‘comparative data’ on the measure of brake squeal based on a brake pad
including this circumferential alignment feature versus a ‘known pad’
without this feature. See col. 3, lines 42–46.” Id. at 13. On the record
before us, we agree with the Examiner’s determination that Appellant’s
evidence is not persuasive of the unexpected nature of the reduction in brake
squeal that circumferentially arranged friction member pairs has when
considering Russo’s teachings. See In re Eli Lilly, 902 F.2d 943 (Fed. Cir.
1990) (evidence of improved feed efficiency in steers was not sufficient to
rebut prima facie case of obviousness based on prior art which specifically
taught the use of a particular compound to enhance weight gain in animals
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because the evidence did not show that a significant aspect of the claimed
invention would have been unexpected).
We have also considered Appellant’s argument that “the Examiner
has not pointed to any direct statement in Russo that says that only the
circumferential arrangement of brake members, regardless of how the
friction members are mounted, results in a reduction in brake squeal.” Reply
Br. 3. More specifically, Appellant argues that “when reducing brake
squeal, one has to look at the entirety of the brake pad structure and cannot
merely conclude that one aspect alone is linked to a reduction in brake
squeal.” Id. Appellant states that “[t]he flaw in the Examiner’s reasoning is
conflating the construction of the brake pad of Russo to just a
circumferential arrangement of friction members to reduce brake squeal and
then concluding that this circumferential arrangement is solely responsible
for the reduction in brake squeal in Russo.” Id. at 4. Appellant continues
that “[t]he proper conclusion to take away from Russo is that having the
circumferentially arranged friction members with [Russo’s] radially aligned
fixing points results in reduced brake squeal.” Id. at 6; see also id. at 8
(emphasis omitted) (“[T]he reduction in brake noise from Russo relates to
the particular construction of the Russo brake pad, which use cantilevered
friction members, circumferentially arranged friction members, and radially
aligned fixing means.”). In our view, the Examiner need not support that
only the circumferential arrangement of friction members reduces brake
squeal or that such arrangement is solely responsible for reducing brake
squeal, as argued by Appellant. See Reply Br. 4. Even if it is a combination
of features in Russo that reduces brake squeal, this still supports the
Examiner’s determination that it is not unexpected for one of those features
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in the combination to have the same benefit disclosed in Russo. In short,
although we acknowledge the differences in structure between Kato and
Russo already pointed out by Appellant, we are not persuaded that such
differences in structure render the benefits of circumferential arrangement of
friction disk member pairs unexpected.
As to Appellant’s suggestion that an improvement in brake squeal due
to not placing a pair of friction members on the middle radial line is
unexpected (Appeal Br. 23–24), we note that all of the examples used to
generate the comparative data of Figure 6 lack a friction member on the
middle radial line (see Spec. Figs. 5A–5C), so such comparative data cannot
be suggestive of any benefit to not placing a friction member on the middle
radial line.
We acknowledge Figure 2 of the Specification “illustrating the
distribution of amplitudes that arises during a braking motion of the
conventional brake lining” and that “the closer to black (the darker the color)
that a portion is, the greater that the amplitude of an unstable vibration mode
is at the relevant portion.” Spec. ¶ 18. As shown in Figure 2, the darkest
color is at a radially disposed pair of friction members on a middle radial
line. Id. Fig. 2. We further acknowledge Figure 3A of the Specification,
along with supporting textual description stating that “[r]eferring to FIG. 3A,
on the base plate 6, a friction member 3 is not disposed at the middle portion
along the circumferential direction of the brake disk 1” and that “[b]y this
means also, the amplitude of an unstable vibration mode of the friction
members 3 is lessened and brake squeal is suppressed.” Id. ¶ 44; Fig. 3A.
Appellant, however, fails to show comparison of brake squeal between the
claimed invention in which a friction member is not disposed on the middle
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radial line relative to a brake disk in which a friction member is disposed on
the middle radial line. See In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”) (citing In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984)); see also De Blauwe, 736 F.2d at 705 (stating that “[w]hen an article
is said to achieve unexpected (i.e., superior) results, those results must
logically be shown as superior compared to the results achieved with other
articles.”). Here, there is never a comparison between the brake squeal of
brake disks both with and without friction members on the middle radial
line. Appellant must provide objective evidence that is factually supported
by an appropriate affidavit or declaration for any suggestion of unexpected
results to have probative value. Graham v. John Deere Co., 383 U.S. 1
(1966); In re Schulze, 346 F.2d 600, 602 (CCPA 1965).
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s conclusion of obviousness with respect to claim 1.
Accordingly, we sustain the rejection of claim 1 under 35 U.S.C. § 103 as
unpatentable over Kato and Russo. We also sustain the rejection of claim 3,
which depends from claim 1, and for which Appellant presents no
additional, separate argument.
Claims 4 and 5
Claim 4 recites that “the backboard is disposed on the radial line,” and
claim 5 similarly recites that “at least one of the back boards is disposed on
the radial line.” Appeal Br. 30 (Claims App.). The Examiner’s position is
that upon modifying Kato in accordance with the teachings of Russo so as to
orient the center pair of friction members circumferentially, “the Kato back
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board (4) of the center pair of friction members (3) would be disposed on the
radial line, in a plan view of the base plate.” Final Act. 6 (citing Kato
Fig. 2a).
Appellant questions “what reason does the Examiner have to say that
the friction member pair that crosses the middle portion radial line is
precisely placed so that the friction members are not on the middle portion
radial line[,] but the back board is?” Appeal Br. 25. Appellant continues
that “there is no guidance from Kato as to this circumferential arrangement
of pairs of friction members would be made with respect to the middle
portion radial line” and because “Kato does not even recognize the
importance of not having a friction member on the middle portion radial
line, the Examiner cannot presumptively conclude that the arrangement of
claims 4 and 5 regarding the back board on the middle portion radial line
would be met if the Kato friction members were realigned.” Id. at 25–26.
For the same reasons described above in connection with independent
claim 1, the Examiner has the better position in explaining that “because the
central Kato pair of friction members is located at the precise center of the
brake pad, and that when it is modified to extend in the circumferential
direction (pursuant to the Russo reference teaching), the pair will be
‘precisely placed’ so that the friction members (3) are not on the radial line
while the back board (4a) will be.” Ans. 13.
Appellant does not apprise us of error in the Examiner’s conclusion of
obviousness with respect to claims 4 and 5. Accordingly, we sustain the
rejection of claims 4 and 5 under 35 U.S.C. § 103 as unpatentable over Kato
and Russo.
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Claim 6
Claim 6 recites:
an edge of a pressing region intersects at least one of the
friction members, the pressing region being a region of the base
plate on which a pressing pressure is applied by a brake caliper,
and
one pair of the friction members including the friction
member intersected by the edge are inclined at an inclination
angle so that a proportion of a portion of the pair of the friction
members that does not enter the pressing region is decreased in
terms of area in comparison with the proportion where the
inclination angle is zero.
Appeal Br. 30 (Claims App.).
The Examiner concludes that “[i]t would be obvious to try [to rotate a
friction member pair in a direction that will decrease the pressing region]
[because] only two directions of rotation exist and furthermore because Kato
explicitly states that the paired friction members (3) ‘may be in adjacent
relation in any direction without limitation . . . in radial directions of the
brake disc 1, in circumferential directions thereof, or in any other
directions.’” Final Act. 6 (citing Kato ¶ 45).
Appellant questions that “even if Kato says that the relationships of
adjacent pairs of friction members can be in any direction, how does this
teaching result in the conclusion that it would be obvious to modify one pair
of the friction members that intersect the edge of the pressing area as claim 6
requires?” Appeal Br. 27. Although the Examiner explains that the
“pressing region” limitation is “undefined and effectively broad” and
claim 6 can be interpreted properly to “mean that all pairs have a non-zero
inclination angle” (Ans. 14), we agree with Appellant that paragraph 45 of
Kato does not explain adequately what would have led one of ordinary skill
Appeal 2021-000799
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in the art to modify Kato so as to specifically change the inclination angle of
one pair of the friction members including the friction member intersected
by the edge of a pressing region to have an inclination of a certain amount
from the circumferential direction, considering the desire for all
circumferentially arranged friction member pairs as taught by Russo for the
purpose of reducing brake squeal. The Examiner must support a rejection
with a fact-specific analysis to explain why the claimed subject matter would
have been obvious despite differences between the subject matter claimed
and the prior art. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citation
omitted) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”).
For the foregoing reasons, Appellant apprises us of error in the
Examiner’s conclusion of obviousness with respect to claim 6. Accordingly,
we do not sustain the rejection of claim 6 under 35 U.S.C. § 103 as
unpatentable over Kato and Russo.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–6 103 Kato, Russo 1, 3–5 6

Appeal 2021-000799
Application 16/064,478

19
TIME PERIOD FOR RESPONSE
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 IN PART