KNORR-BREMSE Systeme fuer Nutzfahrzeuge GmbH

Patent Trials and Appeals Board

Sep 13, 2021

2021000483 (P.T.A.B. Sep. 13, 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.
16/010,151 06/15/2018 Matthias KLINGNER 037068.PB334US 3899
23911 7590 09/13/2021
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
RODRIGUEZ, PAMELA
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
09/13/2021 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MATTHIAS KLINGNER,
MICHAEL PESCHEL, and JOHANN STICH
____________

Appeal 2021-000483
Application 16/010,151
Technology Center 3600
____________

Before JENNIFER D. BAHR, SUSAN L. C. MITCHELL, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1, 3, and 5 under 35 U.S.C. § 103 as being unpatentable over
Kobayashi2 and Pahle3,4. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH as the real party in interest. Appeal Br. 1.
2 JP 2006002855 A (published Jan. 5, 2006).
3 DE 102008056161 A1 (published May 20, 2010).
4 We refer to the English language translations provided in the record.
Appeal 2021-000483
Application 16/010,151
2
Appellant’s invention relates to “a floating-caliper disc brake of a
utility vehicle.” Spec. ¶ 2. Claim 1, reproduced below as the sole
independent claim on appeal, is illustrative of the subject matter on appeal.
1. A floating-caliper disc brake of a utility vehicle,
comprising:
a brake disc;
a brake carrier spanning the brake disc having pad shafts
arranged on both sides of the brake disc;
a brake caliper engaging over the brake disc that is
displaceable relative to the brake carrier;
brake pads arranged on both sides of the brake disc in a
respective pad shaft of the brake carrier, each brake pad having
a pad carrier plate and a friction lining attached to the same,
wherein
an application-side brake pad is pressable against the
brake disc via an application device and a reaction-side brake pad
is pressable via a brake caliper back by shifting the brake caliper
against the brake disc,
the brake caliper is adjustable by a wear adjustment travel
axially to an axis of rotation of the brake disc via an adjustment
device,
with an identical volume of the friction linings in a new
condition, a friction lining thickness of the reaction-side brake
pad is unequal to a friction lining thickness of the application-
side brake pad,
the friction lining thickness of the reaction-side brake pad
is less than the friction lining thickness of the application-side
brake pad, and
a friction ring thickness of the brake disc on a side of the
brake pad with the smaller friction lining thickness is less than a
Appeal 2021-000483
Application 16/010,151
3
friction ring thickness of the brake disc on the side of the brake
pad with the greater friction lining thickness.5

OPINION
Regarding independent claim 1, the Examiner finds that Kobayashi
discloses a floating-caliper disc brake, as claimed, including a friction lining
thickness of a reaction-side brake pad that is less than a friction lining
thickness of an application-side brake pad (i.e., thickness T1 of friction
lining 15b of brake pad 10b is depicted as less than thickness T2 of friction
lining 15a of brake pad 10a, in Kobayashi’s Figure 20). Final Act. 3–4. The
Examiner determines that Kobayashi fails to disclose friction ring
thicknesses, as claimed, and the Examiner relies on Pahle’s brake disc
body 1 formed of two friction rings 3, 4 connected together by webs 5 for
disclosing “a friction ring 3 thickness of a brake disc 1 on a side of a
reaction-side brake pad being less than a friction ring 4 thickness of the
brake disc 1 on the application side of a brake pad.” Id. at 4 (citing Pahle,

5 Notably, the Specification states, “As is further evident in Figure 1, the
friction ring thickness of the brake disc 4 on the side of the reaction-side
brake pad 6 . . . is less than the friction ring thickness of the brake disc 4 on
the side of the application-side friction lining 5.” Spec. ¶ 34. Figure 1
depicts friction ring surfaces 41, 42, and the Specification discloses that
“brake disc 4 is positioned in the brake disc opening of the brake carrier in
such a manner that a friction ring surface 42 of the brake disc 4 facing the
reaction-side pad shaft is nearer to the reaction-side pad shaft of the brake
carrier 3 than a friction ring surface 41 of the brake disc 4 facing the
application-side pad shaft.” Id. ¶ 36. It is not altogether evident to us how
the structure of the claimed friction rings (and their respective thicknesses)
of the brake disc is identifiable relative to brake disc 4 as depicted in the
Specification’s Figure 1 or how the friction rings are structurally distinct
from and disposed relative to the brake disc. Figure 1 appears to depict
friction ring surfaces 41, 42 as surfaces of brake disc 4 itself.
Appeal 2021-000483
Application 16/010,151
4
Abstract, Figs. 1, 2). The Examiner reasons that it would have been obvious
“to have designed the friction ring thicknesses of the brake disc of
Kobayashi . . . as taught by Pahle in order for the brake pads to wear more
evenly.” Id.
Appellant submits that Kobayashi discloses reducing the friction
lining thickness of the reaction-side brake pad “to keep pad temperature
down” (i.e., the thinner reaction side pad 15b having a larger surface area),
whereas Pahle teaches “a design that deliberately makes the pad-disc
interface hotter on the thin side of the disc to increase thin-side radial
expansion to counteract the tendency to ‘cone.’”6 Appeal Br. 6–9; see also
id. at 9 n.4 (“As shown in Kobayashi Fig. 20, supra, its brake disc 1 is a
monolithic disc, which behaves differently than a twin-friction ring disc [as
in Pahle] in response to temperature differences on opposite sides of the
disc.”). Appellant argues that not only is the Examiner’s reasoning
unsupported by the prior art references, but that Pahle teaches away from the
modification proposed by the Examiner. Id. at 9–11.
The Examiner responds by acknowledging that Pahle is “directed to
solving a different braking issue than . . . Kobayashi.” Ans. 8. In other
words, the Examiner does not point to any findings relative to managing
temperature changes using the thicknesses of the friction linings and friction
rings in Kobayashi and Pahle that contradict those findings as presented by

6 The translation of Pahle in the record is unclear on the topic of Appellant’s
assertion. See Pahle Transl. 2:56–58 (“According to a further concept of the
invention, it is provided that the neck-side friction ring is thinner than the
other, and as a result heats up less than the neck-side, which tends to expand
less. This leads to the fact that both friction rings expand equally, which
effectively prevents deformation in the sense of the aforementioned
shielding.”).
Appeal 2021-000483
Application 16/010,151
5
Appellant supra.7 The Examiner maintains that the proposed combination
results in the structure recited in the claim 1. Id. The Examiner appears to
rely on “knowledge which was within the level of ordinary skill at the time
the claimed invention was made” as factual support for the Examiner’s
reason to design Koboyashi’s brake disc to have the claimed friction ring
thicknesses, as taught by Pahle. Id. at 9; see also Adv. Act. 2 (“[T]he
[E]xaminer is relying on the Pahle reference merely to teach that varying the
friction ring thicknesses on opposite sides of the brake disc in a brake
assembly is known in the art.”).
Appellant replies that the Examiner fails to state a prima facie case
because the Examiner fails to “provide a credible explanation of why it
would have been obvious to combine the multiple references’ teachings.”
Reply Br. 2.
On the record before us, we agree with Appellant that the Examiner
fails to provide an adequate factual basis for determining that it would have

7 We cannot find express support in the English language translation of
Kobayashi for concluding that brake pad 15b is narrower in thickness than
brake pad 15a for the purpose of maintaining a cooler temperature, nor does
Appellant provide a citation for concluding that Kobayashi discloses that
“[the] reaction brake pad was made wider to decrease pad temperatures.”
Appeal Br. 9. Kobayashi appears to teach that a caliper made of lightweight
material (i.e., an aluminum alloy) will have a decrease in rigidity due to a
temperature rise caused by the friction between rotor 1 and pads 10a, 10b at
the time of braking, as compared to a steel caliper (see, e.g., Kobayashi ¶ 6)
and that the rotor may move axially due to a temperature rise during braking
(id. ¶ 18). However, Kobayashi discloses that the thickness differences in
the brake pads affect the rigidity and bending of the claws (and caliper), the
distance (milling width) between the inner side surfaces of the claw and
cylinder portions, and the uniformity of pressing the pads on the rotor to
avoid partial lining wear so that both pads may be replaced at the same time.
See, e.g., Kobayashi ¶¶ 10, 12, 19–21.
Appeal 2021-000483
Application 16/010,151
6
been within the knowledge of a person of ordinary skill in the art to modify
Kobayashi’s floating-caliper disc brake to reduce the thickness of the
friction ring of the reaction-side brake disc, in view of Pahle, for the purpose
of allowing the brake pads to wear more evenly. The Examiner does not
state, or provide any evidence for concluding, that in the event a friction
lining of a reaction-side brake pad has the same volume but a lesser
thickness than the friction lining of an application-side brake pad, as in
Kobayashi, it would have been within the knowledge of one of ordinary skill
in the art (and obvious at the time of the invention) to also design the friction
ring thicknesses (or friction ring surfaces of the brake disc), which
presumably are acted upon by such brake pads, to have surfaces and
thicknesses that result in even wear by somehow matching the thickness
parameters and volumes of the friction linings and opposing friction rings.
We decline to speculate as to whether this is the reasoning intended by the
Examiner or whether there is factual support for such a design consideration.
Accordingly, we cannot sustain the Examiner’s rejection of
independent claim 1, and dependent claims 3 and 5.

Appeal 2021-000483
Application 16/010,151
7
CONCLUSION
The Examiner’s decision rejecting claims 1, 3, and 5 is reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5 103 Kobayashi, Pahle 1, 3, 5

REVERSED