Baehrle-Miller, Frank et al.

Patent Trials and Appeals Board

Jan 2, 2020

15317075 - (D) (P.T.A.B. Jan. 2, 2020)

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.
15/317,075 12/07/2016 Frank Baehrle-Miller 2178-1661 9952
10800 7590 01/02/2020
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
IRVIN, THOMAS W
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
01/02/2020 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 FRANK BAEHRLE-MILLER and SIMON HAUBER
___________

Appeal 2019-004287
Application 15/317,075
Technology Center 3600
____________

Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
WILLIAM A. CAPP, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–16 under 35 U.S.C. § 112(a) for lack of written

1 The Examiner indicates that claim 14 would be allowable if rewritten to
overcome the rejection under 35 U.S.C. § 112(a), “[as] set forth in [the]
Office action and to include all of the limitations of the base claim and any
intervening claims.” Final Office Action (“Final Act.”) 4, dated June 14,
2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Robert
Bosch GmbH.” Appeal Brief (“Appeal Br.”) 2, filed Nov. 13, 2018.

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description and to reject claims 1–13, 15, and 16 under 35 U.S.C.
§ 102(a)(1) as anticipated by Takahashi (US 5,348,123, issued Sept. 20,
1994). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a braking device for a motor
vehicle and to a method for controlling the braking device.” Spec. 1:7–9,
Figs. 2, 3A–3C. Claims 1 and 7 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A braking device for a motor vehicle, comprising:
at least one brake, including:
at least one brake pad; and
a brake disk; and
an elastic element selectively operable to move the at least
one brake pad relative to the brake disk;
wherein the braking device, in a first non-braking
operating state, is configured to operate the elastic element to
move the at least one brake pad into contact with the brake disk
such that the at least one brake pad and the brake disk generate
either no braking force or a relatively small braking force acting
on the motor vehicle.

ANALYSIS
Written Description
Claims 1–16
The Examiner determines that as “the claims have been amended to
state that the spring ‘moves’ the brake pad,” the Specification “appears to
lack any definitive description of the act of the spring ‘moving’ the brake
pad from a released state with a release clearance, and into contact with the
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rotor.” Final Act. 2. Rather, according to the Examiner, the Specification
“appears to define that the spring force is substantial enough to keep the
brake pad in contact the rotor, overcoming the release clearance force of the
retracted piston.” Id. at 2–3.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed.
Cir. 1991). Specifically, the specification must describe the claimed
invention in a manner understandable to a person of ordinary skill in the art
and show that the inventor actually invented the claimed invention. Id.
at 1562–63; Ariad, 598 F.3d at 1351. The drawings in an application can be
relied upon to show that an inventor was in possession of the claimed
invention as of the filing date. See Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1565 (Fed. Cir. 1991) (“[D]rawings alone may be sufficient to
provide the ‘written description of the invention’ required by § 112, first
paragraph.”).
In this case, Appellant’s Specification describes that (1) “[a]s regards
[to] its elasticity, the elastic element is designed to be sufficiently powerful
to ensure that the elastic force resulting from the actuator movement in the
elastic element is sufficient to move the brake piston in the direction of the
brake disk” (Spec. 3:33–4:1 (emphasis added)) and that (2) “[p]rovision is
made here for a brake actuator of the parking brake to move the brake piston
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by means of the elastic element and thus to place the brake pad against the
brake disk” (Spec. 6:2–5 (emphases added)).
The Specification also describes:
The parking brake advantageously places the brake pad against
the brake disk by means of the elastic element. This should be
taken to mean that the parking brake is activated and undergoes
a change, e.g. a change in length. On the basis of this change, it
is possible for the parking brake to produce a change, e.g. change
in length, in the elastic element. By virtue of the characteristic
of the elastic element, said element likewise transmits such a
change, if only to a limited extent, to the brake pad and places
the latter against the brake disk.

Spec. 7:13–23 (emphasis added); see also Appeal Br. 5.
The Specification further describes that “[t]he spring constant of the
spring system 13 is chosen in such a way that the spring system 13 can push
the brake piston 5 in the direction of the brake disk 7 during application,” in
that “[t]he brake piston 5 is thereby moved axially in the direction of the
brake disk 7.” Spec. 20:5–9 (emphases added), Figs. 2, 3A–3C; see also
Appeal Br. 6–10.
Upon review of Appellant’s Specification and drawings, we agree
with Appellant that “the Specification as originally filed supports a braking
device that is ‘configured to operate [an] elastic element in order to move [a]
brake pad into contact with [a] brake disk’ as required by claim 1.” Appeal
Br. 5.
In the Final Office Action, the Examiner states that “[t]he closes[t]
[Appellant’s] [S]pecification comes to enablement” for the claim language
“the spring ‘moves’ the brake pad” “is page 10 line 34 – page 11 line 10, and
which the spring can overcome the bad clearance distance.” Final Act. 2
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(emphasis added); see also Ans. 3–53 (The Examiner explaining that the
brake assembly of the subject invention “contains no other described or
depicted structure which would enable the brake piston and brake pad to be
spaced away from the brake disk and compress the spring in an initial spaced
position (i.e. the distance in which the brake pad must ‘move’, fig[s]. 3A
and 3B)”) (emphasis added); see also Ans. 8–9.
Based on the foregoing statements from the Examiner, it appears the
Examiner intended to make an enablement rejection rather than a written
description rejection. However, the written description requirement is
separate and distinct from the enablement requirement. See Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010) (en banc).
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application.
In re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993). Here, the Examiner
fails to carry that burden. The rejection does not articulate why the
disclosure provides insufficient information to enable a skilled artisan to
make and use the invention without undue experimentation, such as by
analysis of the Wands factors. See Final Act. 2–3; see also Ans. 3–6; In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Moreover, in response to the Examiner’s position, Appellant points
out that the Specification “discloses a sealing ring (12) that, when a braking
operation ends, pulls the brake pad backwards from the state in Fig. 3c in

3 Examiner’s Answer (“Ans.”), dated Mar. 5, 2019.
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which the brake pad is in contact with the brake disk to the state in Fig. 3a in
which the brake pad is separated from the brake disk by an air gap.” Reply
Br. 2–34 (citing Spec. 21:13–20). As such, we agree with Appellant that
“the Specification as originally filed clearly and expressly includes an
example of a structure that applies a force to move the brake pad axially
away from the brake disk.” Reply Br. 3.
In summary, upon review of Appellant’s Specification and drawings,
we agree with Appellant that the Specification as originally filed describes
that the elastic element is configured to move the brake pad in order to place
the brake pad into contact with the brake disk. See Appeal Br. 5–7. Thus,
we also agree with Appellant that “the [S]pecification reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Id. at 7.
Accordingly, we do not sustain the Examiner’s rejection of claims 1–
16 for lack of written description.

Anticipation by Takahashi

Claims 1–13, 15, and 16

Independent claim 1 is directed to a braking device for a motor
vehicle, “wherein the braking device, in a first non-braking operating state,
is configured to operate the elastic element to move the at least one brake
pad into contact with the brake disk.” Appeal Br. 24 (Claims App.)
(emphasis added). The Examiner finds that “the braking device assembly
[of Takahashi] is the same as [Appellant’s] invention. . . . More specifically,

4 Reply Brief (“Reply Br.”), filed May 2, 2019.
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the braking device of Takahashi . . . encompasses and fully teaches all of the
structure and function of [Appellant’s] claims.” Ans. 7; see also Final
Act. 3–4. The Examiner finds that Takahashi’s spring element “functions in
exactly the same fashion as [Appellant’s] invention: constantly providing a
biasing force between the spindle nut and brake piston to move the piston
relative to the spindle nut, and therefore the brake pad, towards the brake
rotor.” Ans. 7 (citing Takahashi 5:56); see also Final Act. 3–4. According to
the Examiner:
The axially fixed spindle (109) [of Takahashi] rotates to cause
the spindle nut (107, 110) to move axially towards and away
from the axially facing surface of the brake piston (106). An
elastic element, spring (111), is disposed axially between the
spindle nut and the brake piston. The brake piston contacts and
causes a brake pad (102) to move towards/away from a brake
disk (104).

Ans. 7 (citing Takahashi, Fig. 5).
Appellant contends that “Takahashi does not disclose or suggest a
braking device[] that, ‘is configured to operate [an] elastic element to move
[a] brake pad into contact with [a] brake disk’ as required by claim 1.”
Appeal Br. 13. Specifically, Appellant contends that “Takahashi only
includes disclosure where the brake pad 102 is in contact with the brake
disk 104,” that Figure 5 of Takahashi “depicts a braking device prior to
activation by a brake pedal or brake lever,” and that in Figure 5 of Takahashi
“the brake pad 102 is already in contact with the brake disk 104.” Id. (citing
Takahashi 6:10–59). According to Appellant, “[a]ctivating the braking
device via the pedal 130 or lever 118 causes the piston 106 to move
rightwardly so as to increase the force of the brake pad 102 on the brake
disk 104 . . . . However, since the brake pad 102 is already in contact with
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the brake disk 104, there is no movement of the brake pad 102.” Appeal
Br. 13 (citing Takahashi 6:14–26)
Appellant has the better position here. As an initial matter, we
acknowledge the Examiner’s position that “claim 1 does not actually require
any ‘gap’ and makes no mention of one existing.” Ans. 7. However, upon
review of claim 1, a skilled artisan would intuitively recognize that in order
for the brake pad to be moved “into contact with” the brake disk, some sort
of a space/gap would necessarily already have to be present between the
brake pad and the brake disk. Appeal Br. 24 (Claims App.). In fact,
Appellant correctly points out that the Examiner acknowledges that for the
spring of the subject invention to be able to “move the at least one brake
pad” “there must necessarily exist a time/position wherein the brake pad and
brake piston are spaced at least some gap distance from the brake disk and
are not in contact with the brake disk (i.e. the distance in which the brake
pad must ‘move’, [Appellant’s] figs. 3A and 3B).” Ans. 4 (emphases
added); see also Reply Br. 3. Moreover, as discussed above, the
Specification describes a gap between brake disk 7 and brake pads 8, 8' and
how the gap is established. Spec. 21:27–35, Fig. 3A; see also Appeal Br. 7–
10; Reply Br. 2–3.
Takahashi discloses:
The rotation of the screw member 109 causes the nut member
107 to slide in the cylindrical part of the piston 106, and when
the nut member 107 moves rightwardly of FIG. 5 the sleeve 110
also moves rightwardly against an elastic force of the spring 111
and finally comes into abutment against the bottom of the piston
106. From this condition, if the nut member 107 further moves
rightwardly the first brake pad 102 depresses one side of the rotor
104 and, further, the second brake pad 103 depresses the other
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side of the rotor 104 by a reaction of the depression of the first
brake pad 102, thereby to brake the rotor 104.

Takahashi 6:14–26 (emphases added) (bolding omitted), Fig. 5.
Based on Takahashi’s disclosure and Figure 5, we agree with
Appellant that “brake pad 102 [and brake pad 103 are] already in contact
with the brake disk 104 in the position in Fig[ure] 5, and will remain in
contact with the brake disk 104 while the sleeve 110 moves rightward
toward and into contact with the piston 106.” Appeal Br. 16. In addition,
the Examiner does not provide sufficient evidence or technical reasoning to
establish that a gap/space inherently exists between brake pad 102 and/or
brake pad 103 and brake disk 104 of Takahashi, such that sleeve 110’s
movement against an elastic force of spring 111 and into contact with
piston 106 would necessarily result in spring 111 moving brake pad 102
and/or brake pad 103 into contact with brake disk 104. See Final Act. 3–5;
see also Ans. 7–9; Appeal Br. 14–15; Reply Br. 4–5. For these reasons, the
Examiner fails to establish by a preponderance of the evidence that
Takahashi anticipates the braking device of claim 1.
Similar to independent claim 1, independent claim 7 is directed to a
method for controlling a braking device for a motor vehicle and includes the
step of “operating an elastic element in a first non-braking configuration to
move at least one brake pad into contact with a brake disk.” See Appeal
Br. 26 (Claims App.). The Examiner relies on the same unsupported
findings in Takahashi as those discussed above for claim 1. See Final
Act. 3–4. As such, the Examiner’s findings with respect to Takahashi are
deficient for claim 7 as well.
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Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 1–13, 15, and 16 as anticipated by Takahashi.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
1–16 112(a) Written
Description
1–16
1–13, 15, and
16
102(a)(2) Takahashi 1–13, 15,
and 16
Overall
Outcome
1–16

REVERSED