Ex Parte Asai et al

Patent Trial and Appeal Board

Nov 14, 2013

11262917 (P.T.A.B. Nov. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KAZUNARI ASAI and MASATO SUZUKI
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Appeal 2011-013666
Application 11/262,917
Technology Center 3600
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Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013666
Application 11/262,917

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STATEMENT OF THE CASE
Appellants seek review of the Examiner’s decision to reject claims 1
and 3-12 under 35 U.S.C. § 103(a) as unpatentable over Kitaori and Ono.1
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Appellants’ claimed invention “relates to a wet friction material that
generates a torque by applying a high pressure to an opposite surface while
being immersed in an oil.” Spec. 1:5-6. Claim 1, the sole independent claim
on appeal, is reproduced below:
1. A segment-type friction material comprising:
a core plate of a flat ring plate shape; and
a plurality of segment pieces of a fixed shape made of a
sheet-like friction material substrate, the segment pieces being
disposed at a predetermined intervals and joined on at least one
surface of the core plate with an adhesive along an entire
circumference of the flat ring plate shape of the core plate;
a setback amount between an outer peripheral edge of the
core plate and outer peripheral edges of the plurality of the
segment pieces being set at about 0.7 mm or more or at about
0.8% or more of a radius of the core plate so as to reduce a
torque generated at between the outer peripheral edges of the
plurality of the segment pieces and a separator plate facing the
segment pieces.

1 Kitaori (U.S. 6,702,088 B2; issued March 9, 2004); Ono (U.S. 6,499,579
B2; issued December 31, 2002).
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OPINION
The difference between Kitaori and the subject matter of independent
claim 1 is that Kitaori’s plurality of segment pieces are not setback either
about 0.7 mm or more, or about 0.8% or more of a radius of a the core plate.
Ans. 4-5. The Examiner concluded that it would have been obvious to
modify Kitaori so that the plurality of segment pieces are setback as called
for in claim 1,
since it has been held that where the general conditions of a
claim (which are segment pieces being setback from the outer
peripheral edges of the core plate) are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art.

Ans. 4-6 (citing In re Aller, 220 F.2d 454 (CCPA 1955)).
The Examiner misapplies the principle set forth in Aller. There, the
Court counseled that if one skilled in the art can discover the optimum or
workable ranges by routine experimentation, where the general conditions of
a claim are disclosed in the prior art, the differences between the claimed
invention and the prior art may not be patentable differences. Aller, 220
F.2d at 827. Rather than showing that only routine experimentation would
be involved in an optimization exercise directed to the setback of the
plurality of segment pieces, the Examiner presumed that because the general
conditions of the claim were met, discovery would have involved only
routine skill.
The Examiner’s reasoning also relies upon the finding that the setback
amount of Kitaori is a result effective variable because Kitaori’s setback
amount varies depending on the number of stages and dimensions of the

Appeal 2011-013666
Application 11/262,917

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segment pieces. Ans. 9-11 (citing Kitaori, col. 6, ll. 60-61). We assess this
finding as it applies to Kitaori’s outer and inner friction materials.
Kitaori discloses a core plate (base plate 72) having an outer
circumferential ring of a plurality of segment pieces (outer friction materials
73o) and an inner circumferential ring of a plurality of segment pieces (inner
friction material 73i).2 Kitaori, col. 6, ll. 24-28; fig. 6.
Kitaori discloses that the dimensional relationship between the width
and height of segment pieces (inner and outer friction material 73i and 73o)
is determined in accordance with clutch capacity and a variation in
engagement surface pressure. Kitaori, col. 6, ll. 51-62. Kitaori does not
disclose that the dimensional relationship is varied to alter setback or is in
any other way related to setback. See Br. 6-17 (arguing that Kitaori did not
recognize that setback was a result effective variable).
Regarding the outer friction material 73o, Kitaori does not disclose
that variation of the dimensional relationship of the height and width of the
segment pieces varies setback distance. To the contrary, each of Kitaori’s
embodiments appear to have the same setback for the outer friction material
73o. Kitaori, figs. 6, 8, 10, 11.
Regarding Kitaori’s inner friction material 73i, we agree that varying
the dimensional relationship of the outer friction material 73o will vary the
setback of the inner friction material 73i.3 However, claim 1 calls for the
plurality of segment pieces to be setback an amount within the specified
range so as to reduce torque generated “at between the outer peripheral

2 Kitaori discloses that there may be three or more stages of friction
materials. Kitaori, col. 11, ll. 58-60; see also Ans. 9.
3 Altering the size of outer friction material 73o alters the setback of the
inner friction material 73i. See e.g., Ans. 10.
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edges of the plurality of segment pieces and a separator plate facing the
segment pieces.” Claim 1 uses the open ended term “comprising,” so that
additional unrecited elements, such as the outer friction material 73o, may be
present. Yet, the Examiner has not explained how Kitaori meets this
functional limitation despite the presence of outer friction material 73o
between the outer peripheral edge of inner friction material 73i and the outer
peripheral edge of the core plate (base plate 72). See Ans. 5; see also Spec.
7:20-22 (defining setback); 8:9-12 (relating drag torque to the gap between
the segment piece and the outer peripheral side of the core plate).
Additionally, the Examiner interprets that the claim term “about” is so
broad that the recited range of “about 0.7 mm or more or at about 0.8% or
more of a radius of the core plate” could be 0.0 mm or 0.0% of a radius of
the core plate. Ans. 9. That is, the Examiner interprets that the claimed
setback range may be met by no setback at all.
Such interpretation is suspect because it renders the claimed setback
range superfluous (i.e., no setback). See Stumbo v. Eastman Outdoors, Inc.,
508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that
render phrases in claims superfluous). Further, the Specification states that
the claimed setback ranges from about 0.7 mm to about 2.0 mm, or about
0.8% to about 2.4% of the radius of the core plate, and is larger than the
setback of conventional segment-type friction material of about 0.6 mm or
0.7 % of a radius of the core plate. Spec. 4:7-94; 5:1-2, 7; 7:20-24; 8:1-3, 7-
9; fig. 2. Given the particularity regarding the claimed range and that the
Specification explicitly states that the claimed range is larger than the

4 We presume “lager” as used here in the Specification is a typographical
error and it intended to be “larger.”
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conventional setback, the Examiner’s interpretation that the range is so
broad that it encompasses no setback is unreasonably broad. In re Am.
Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (during
examination, claims are to be given their broadest reasonable interpretation
consistent with the specification as interpreted by one of ordinary skill in the
art.).
Consequently, we do not sustain the rejection of independent claim 1
and its dependent claims 3-12.

DECISION
We reverse the Examiner’s decision to reject claims 1 and 3-12.

REVERSED

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