Meckel, Nathan K.

Patent Trials and Appeals Board

Dec 30, 2019

12195994 - (D) (P.T.A.B. Dec. 30, 2019)

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.
12/195,994 08/21/2008 Nathan K. Meckel 39831-501001US 9514
64046 7590 12/30/2019
Mintz Levin/San Diego Office
One Financial Center
Boston, MA 02111
EXAMINER
IRVIN, THOMAS W
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN K. MECKEL
Appeal 2019-001650
Application 12/195,994
Technology Center 3600
Before LYNNE H. BROWNE, JILL D. HILL, and ROBERT L. KINDER,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–19, 34, 35, and 37. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Tech M3, Inc.
App. Br. 2.
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Application 12/195,994
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CLAIMED SUBJECT MATTER
The claims are directed to a brake device. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A brake disk, comprising:
a disk body having oppositely directed surfaces, the disk
body being formed of a substrate material; and
at least one of the surfaces having a plurality of spaced,
raised island formations and channels extending between the
island formations, the raised island formations being formed of
the substrate material;
each raised island formation having an outer friction
surface which contacts a brake pad during braking and each
channel having a roughened base surface, the outer friction
surface comprising a wear and corrosion resistant coating which
eliminates or greatly reduces wear of the island formations,
relative to the substrate material in an uncoated state, during use
of the brake disk in braking operation, the roughened base
surface creating turbulence in air flowing along the channels,
over the at least one surface in a direction parallel to the outer
friction surface.
REFERENCE(S)
The prior art relied upon by the Examiner is:
Name References Date
Meckel US 2005/0087406 A1 Apr. 28, 2005
Callaham US 2005/0252739 A1 Nov. 17, 2005
Baumgartner WO 2006/092270 A1 Sept. 08, 2006

Baumgartner US 2008/0041675 A1 Feb. 21, 2008

REJECTION
Claims 1–19, 34, 35, and 37 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Baumgartner, Callahan, and Meckel.
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OPINION
Claims 1–16, 18, 19, 34, 35, and 37
The Examiner determines that Baumgartner, Callahan, and Meckel
disclose or suggest all of the limitations of claims 1–16, 18, 19, 34, 35, and
37. Non-Final Act. 2–7. Specifically, in rejecting claims 1 and 34, the
Examiner determines that Baumgartner and Callahan disclose or suggest all
of the limitations except for the coating. Id. at 2–3. The Examiner further
finds that “Meckel teaches providing a brake disc (12) with a coating (24)
comprising at least one layer (28, 30) of a coating material. Id. at 3 (citing
Meckel, Abs.). The Examiner reasons that it would have been obvious to
“modify each oppositely directed surface of the disk body including the
friction surfaces of the island formations [of] Baumgartner to be coated with
a coating, as taught by Meckel, to provide an aesthetically pleasing coating
that is hard and wear resistant.” Id. at 3–4.
Appellant argues that one skilled in the art “would not have
understood that one coating material applied to a particular type of substrate
could be substituted for the same coating material being applied to an
entirely different type of substrate, let alone that such a combination might
be desirable if it were even possible.” App. Br. 17. In support of this
argument, Appellant notes that “Meckel describes the disadvantages of a
cast iron brake disk.” Id. (citing Meckel ¶ 4). Appellant argues further that
“[n]othing in the record or cited prior art (e.g., Meckel, Baumgartner, and
Callahan (which is cited for teaching roughened surfaces)), reasonably
supports a finding that the coating of Meckel can be deposited onto a disk
substrate having a material other than a Titanium alloy, and certainly not
cast iron.” Id.
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Meckel describes cast iron as being heavier than titanium or
aluminum, but does not otherwise criticize, discredit, or discourage its use.
Meckel ¶ 4. Thus, to the extent that Appellant intends to imply that Meckel
discourages the use of its coating with cast iron, Meckel does not do so. See
id. Instead, Meckel compares the relative advantages and disadvantages of
cast iron, titanium, and aluminum. Id. Further, we are not aware of any
requirement that the references relied upon expressly suggest the proposed
modification. Rather, the test for obviousness “is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Thus,
Appellant’s argument that none of the references suggest the proposed
modification does not apprise us of error.
Next, Appellant contends that one skilled in the art “would not
reasonably consider teachings relating to a coating applied to a lightweight
titanium alloy material to be properly suggestive of applying such a coating
to cast iron materials, such as the substrate described in Baumgartner, to
provide similar results without requiring significant experimentation.” App.
Br. 17. In support of this contention, Appellant asserts that “given the lack
of predictability in the art of surface chemistry and materials science, which
would be understood by any person of ordinary skill in the art, the claims
cannot be reasonably construed as unpatentably obvious based on the cited
art and the rationale set forth by the Examiner.” Id. at 17–18.
Appellant, however, does not point to any evidence in support of these
contentions. For example, Appellant does not assert that applying Meckel’s
coating to Baumgartner’s brake disk would result in an adverse chemical
reaction or provide evidence that such is the case. An attorney’s arguments
in a brief, however, cannot take the place of evidence. In re Pearson, 494
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F.2d 1399, 1405 (CCPA 1974). Thus, Appellant does not apprise us of
error.
Noting that “Baumgartner describes the expansion joints as necessary
to avoid cracking and other results of thermal stresses that commonly occur
with cast iron rotors,” Appellant argues that one skilled in the art “would
readily understand that such expansion joints would not be necessary in a
rotor formed of the lightweight titanium alloys described by Meckel.” App.
Br. 18. This argument, however, is not responsive to the rejection as
articulated by the Examiner which does not propose modification of Meckel
in the manner argued. See Non-Final Act. 2–4. Thus, Appellant does not
apprise us of error.
In addition, Appellant argues that “the friction surfaces (e.g.,
subsegments of the brake disk) of Baumgartner are specifically designed to
wear down over time, and nothing in Baumgartner points to or even suggests
the use of a coating applied to those friction surfaces to reduce wear.” App.
Br. 18. As noted above, however, there is no requirement that Baumgartner
suggested the proposed modification. Moreover, the fact that Baumgartner’s
disclosure accounts for wear, does not imply that Baumgartner’s device
would not benefit from a modification (such as the application of a coating)
which reduces or eliminations such wear. Appellant does not identify nor do
we discern where Baumgartner states that wear is a necessary. Thus,
Appellant’s argument is inapposite.
Appellant then explicitly asserts that Meckel “teaches away” from the
proposed modification. App. Br. 19. A “reference does not teach away,
however, if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
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Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). We will not read into a
reference a teaching away from a proposed combination when no such
language exists. See Dystar Textilfarben GmbH & Co. Deutschland KG v.
C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
As noted above, Meckel describes the advantages and disadvantages
of cast iron in paragraph 4. The Federal Circuit has explained that “a given
course of action often has simultaneous advantages and disadvantages, and
this does not necessarily obviate motivation to combine.” Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). “The fact that the
motivating benefit comes at the expense of another benefit . . . should not
nullify its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another.” Winner Int'l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000). Appellant does not explain why the fact
that Meckel describes cast iron as being heavier that titanium (a fact that is
not is dispute) outweighs the advantages gained by application of Meckel’s
coating to Baumgartner’s brake disk. Thus, Appellant does not apprise us of
error.
Finally, Appellant asserts that one skilled in the art would not have
known how “to apply a coating to a large number of separated subsegments
having separate friction surfaces based on the teachings of Meckel, in which
only a method is described for depositing a coating across nearly an entire
brake disk having a single flat annular surface extending across the entire
brake disk.” App. Br. 19. Appellant’s argument suggests that one of
ordinary skill in that art can only follow the express teachings of the
references relied upon in the rejection and ignores the fact that “a person of
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ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Appellant does
not explain why coating a segmented brake disk is beyond the skill of one
skilled in the art. Thus, Appellant does not apprise us of error.
In the Reply Brief Appellant does not identify specific errors in the
Examiner’s findings or reasoning. See general Reply Br. Instead Appellant
makes general allegations that the rejection is flawed. Id. Such general
allegations that the claims define a patentable invention do not apprise us of
error.
For these reasons, we sustain the Examiner’s decision rejecting claims
1 and 34 as unpatentable over Baumgartner, Callahan, and Meckel.
Appellant does not present separate arguments for the patentability of claims
2–16, 18, 19, 35, and 37. See generally App. Br. Accordingly, we sustain
the Examiner’s decision rejecting these claims as well.
Claim 17
Admitting that “Meckel fails to expressly disclose that the first
coating layer has a crystalline structure,” the Examiner finds that “[i]nstead,
Meckel discloses that the first coating layer has an amorphous structure.
Non-Final Act. 5 (citing Meckel ¶ 23. The Examiner reasons it would have
been obvious
to modify the first coating layer as taught by Meckel to have a
crystalline structure instead of an amorphous structure, as a
matter of simple engineering design choice, merely to provide
the predictable result of a suitable, alternative form of the first
coating material (e.g. crystalline titanium instead of amorphous
titanium) depending on various factors such as availability, cost,
and manufacturability.
Id. The Examiner submits that material selection is a routine practice
performed by those of ordinary skill in the art.” Id.
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Noting that “Meckel describes a coating 24 including a first layer 28
‘of a material having an amorphous structure (i.e. a non-crystalline
structure),’” Appellant asserts that “the Examiner erroneously asserted that it
would have been obvious to modify the first coating layer of Meckel to have
a crystalline structure instead of an amorphous structure.” App. Br. 13–14
(citing Meckel ¶¶ 10, 23) (emphasis omitted). In support of this argument,
Appellant asserts that “Meckel specifically defines an amorphous structure
as a non-crystalline structure” and that “[o]ther sources support the
definition of an amorphous structure provided in Meckel. For example, the
online Oxford Dictionary defines an amorphous solid as ‘not crystalline, or
not apparently crystalline,’ and the online [Merriam]-Webster dictionary
defines amorphous as ‘having no real or apparent crystalline form.’” Id. at
14–15 (emphasis and footnotes omitted).
Appellant’s argument is persuasive because the Examiner provides no
evidence to show that coating layers having a crystalline structure were
known at the time of the invention. Without such underlying evidence,
Examiner’s arguments are unfounded.
For this reason, we do not sustain the Examiner’s decision rejecting
claim 17 as unpatentable over Baumgartner, Callahan, and Meckel.

CONCLUSION
The Examiner’s rejection of claims 1–16, 18, 19, 34, 35, and 37 under
35 U.S.C. § 103(a) as unpatentable over Baumgartner, Callahan, and Meckel
is AFFIRMED.
The Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Baumgartner, Callahan, and Meckel is REVERSED.
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9
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19, 34,
35, 37
103(a) Baumgartner,
Callahan, Meckel
1–16, 18,
19, 34, 35,
37
17

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