Ex Parte Daigre

Patent Trial and Appeal Board

Jun 25, 2013

11971734 (P.T.A.B. Jun. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RICHARD DAIGRE
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Appeal 2010-012497
Application 11/971,734
Technology Center 3600
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Before: JOHN C. KERINS, NEIL T. POWELL, and
JILL D. HILL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/971,734

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4-9, and 11-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the appealed
subject matter.
1. A wet brake/clutch assembly
comprising:
a shaft;
a plurality of friction disks mounted to the
shaft for rotation with the shaft, each friction disk
extending in a radial direction from a rotational
axis of the shaft, each friction disk comprising
aluminum having an anodized wear surface;
a housing receiving the shaft;
a plurality of steel reaction disks mounted to
the housing extending substantially perpendicular
to the rotational axis of the shaft, the reaction disks
being interleaved between the friction disks;
a piston disposed in the housing, the piston
being moveable between an engaged position and
a disengaged position, the engaged position being
where the piston is moved towards a friction disk
of the plurality of friction disks or a reaction disk
of the plurality of reaction disks; and
a first seal contacting the shaft and the
housing and a second seal contacting the piston
and the housing, a cavity being defined in the
housing between the first seal and the second seal,
the friction disks and the reaction disks being
disposed in the cavity and the seals being
configured to confine hydraulic fluid in the cavity.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Wassermann US 3,791,498 Feb. 12, 1974
Church US 3,956,531 May 11, 1976
Dwivedi US 5,526,914 June 18, 1996
Jackson US 6,089,357 July 18, 2000
Bigo GB 2123502 A Feb. 1, 1984

REJECTIONS
Appellant seeks our review of the following rejections.
I Claims 11-16 and 18-20 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.1 Final Rej. 2-3; Ans. 2-3, 8-9; App. Br. 12;
Reply Br. 5.
II Claims 1, 2, 4, 5, 9, 11, and 14-20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Bigo, Dwivedi, and Wassermann. Final Rej. 3-5;
Ans. 2-3, 4-5; App. Br. 12.
III Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over
Bigo, Dwivedi, Wassermann, and Church. Final Rej. 5; Ans. 2-3, 5-6; App.
Br. 12.
IV Claims 1, 2, 4-9, 11, and 13-20 stand rejected under 35 U.S.C.

1 The final rejection included a rejection of claims 9 and 11-20 as indefinite.
Final Rej. 2-3. As noted by Appellant, the Examiner’s Answer withdraws
the indefiniteness rejection of claims 9 and 17 but does not clearly withdraw
the indefiniteness rejection of claims 11-16 and 18-20. Reply Br. 5; Ans. 8-
9.
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§ 103(a) as obvious over Jackson, Dwivedi, and Wassermann. Final Rej. 5-
7; Ans. 2-3, 6-8; App. Br. 12.
V Claim 12 stands rejected under 35 U.S.C. § 103(a) as obvious over
Jackson, Dwivedi, Wassermann, and Church. Final Rej. 7-8; Ans. 2-3, 8;
App. Br. 12.

ANALYSIS
Rejection I
Because the indefiniteness rejection of claims 11-16 and 18-20 rests
entirely on concerns regarding claims 9 and 17, Appellant argues, the
Examiner should have withdrawn the indefiniteness rejection of claims 11-
16 and 18-20 with the indefiniteness rejection of claims 9 and 17. Reply Br.
5; see also Final Rej. 2-3; Ans. 8-9. We agree. Accordingly, we do not
sustain the indefiniteness rejection of claims 11-16 and 18-20.

Rejection II
With respect to rejection II, Appellant argues independent claims 1, 9,
and 17 as a group. App. Br. 14-19. We select independent claim 1 as
representative, treating claims 9 and 17 as standing or falling with
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that Bigo discloses a wet brake/clutch assembly
having a plurality of friction disks 12 and a plurality of reaction disks in the
form of brake linings 13. Ans. 4. The Examiner finds that Bigo does not
disclose its friction disks 12 “compris[e] aluminum having an anodized wear
surface,” as recited in claim 1. Id. The Examiner finds, however, that
Dwivedi discloses a disk made of aluminum with an anodized wear surface.
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Id. The Examiner concludes that it would have been obvious to make
Bigo’s friction disks 12 from aluminum with an anodized wear surface. Id.
at 4-5. The Examiner finds that a person of ordinary skill in the art would
have had reason to do so to provide a stronger, corrosion-resistant wear
surface (Ans. 5), and because Dwivedi discloses that this construction
“results in unexpected desired performance” (Dwivedi, col. 26, ll. 34-38;
Ans. 9-10).
Appellant argues that a person of ordinary skill in the art would not
have had reason to substitute anodized aluminum for steel in a friction disk
to provide a stronger, corrosion-resistant wear surface. App. Br. 16. In
support of this argument, Appellant points to Dwivedi’s disclosure that
“[s]teel has been considered as a brake rotor and clutch plate material
because of its excellent strength to weight properties.” Dwivedi, col. 2, ll.
12-14; App. Br. 16. Based on this, Appellant argues that a person of
ordinary skill in the art would have thought that “[t]he steel disk worked just
fine.” App. Br. 16.
The Examiner responds that this argument incorrectly assumes that
Bigo discloses steel disks, when Bigo actually does not disclose the material
forming its disks. Ans. 9. Additionally, the Examiner finds that even if steel
disks would work just fine, Dwivedi’s disclosure at column 26, lines 34-38
that anodized aluminum disks provide “unexpected desirable performance”
would have given a person of ordinary skill in the art reason to use anodized
aluminum as an alternative to steel. Ans. 9-10.
The Examiner’s reasoning provides rational underpinning for the
finding that a person of ordinary skill in the art would have had reason to
make the friction disks 12 of Bigo from aluminum with an anodized wear
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surface. Appellant does not apprise us of error in this finding by arguing
that a person of ordinary skill in the art would have thought a friction disk
made of steel would work. Dwivedi’s disclosure of some advantageous
properties of steel does not negate Dwivedi’s disclosure of aluminum with
an anodized layer as another outstanding choice for making a brake rotor.
Appellant further argues that a person of ordinary skill in the art
would not have had reason based on Dwivedi to replace a friction disk that
has friction lining material with an anodized aluminum disk. App. Br. 17.
Instead, Appellant argues, “one of ordinary skill in the art may have found it
obvious to replace a disk that engages a component carrying a friction lining
material with an anodized aluminum disk.” Id.
In response, the Examiner finds that Bigo’s friction disks 12 engage
components carrying a friction lining material, specifically brake linings 13.
Ans. 11-12. Given this, the Examiner further finds that the proposed
modification of Bigo involves precisely the change that Appellant concedes
“may have” been obvious: replacing a disk (friction disk 12) that engages a
component carrying a friction lining (brake lining 13) with an anodized
aluminum disk. Id. The Examiner also asserts that “[t]he claim language
simply refers to the rotors as friction disks and the stators as reaction disks
but does not recite which particular disks carry friction material.” Ans. 11.
Appellant does not dispute the Examiner’s finding that Bigo’s friction
disks 12 engage components with friction lining material – brake linings 13.
See Reply Br. 5-7. Nor does Appellant clearly and convincingly argue that
Bigo’s friction disks 12 have friction lining material. Accordingly, even if
accurate, Appellant’s argument that it would not have been obvious to
replace a friction disk having friction lining material with an anodized
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aluminum disk does not apprise us of error in the Examiner’s determination
that it would have been obvious to make Bigo’s disks 12 from aluminum
with an anodized wear surface.
In response to the Examiner’s assertion that Appellant’s claimed
“friction disks” do not require friction lining material, Appellant argues that
a person of ordinary skill in the art would conclude from the claims and
Specification that the “friction disks” recited in Appellant’s claims include
friction material. Reply Br. 5-6; Ans. 11. Regarding this argument, we first
note that the proper interpretation of Appellant’s claims has no bearing on
whether it would have been obvious to make Bigo’s friction disks 12 from
anodized aluminum. Furthermore, we cannot agree that the “friction disks”
recited in Appellant’s claims require friction lining material. The
Specification suggests that attaching friction lining material to friction disks
undesirably increases the size and cost of a brake/clutch assembly. See
Spec., paras. [0034], [0059], [0004], [0006]. The Specification further
discloses avoiding this problem by providing friction disks that have a
hardened wear surface, in lieu of friction lining material. See id. at paras.
[0059], [0060], [0034], [0004], [0006]. In view of these disclosures, we
cannot agree with Appellant’s argument that the mere use of the adjective
“friction” in the recitation “friction disks” requires friction lining material.
Appellant also argues that “Applicant’s invention does not use a
known technique to improve similar devices in the same way.” App. Br. 17.
In connection with this, Appellant argues that the weight reduction
advantages disclosed by Dwivedi would not have provided a reason to
modify Bigo because the weight of Bigo’s friction disks 12 “is not much of a
factor with regard to the performance of the hydraulic clutch/brake
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assembly.” Id. at 17-18. The Examiner responds that Bigo’s system would
still benefit from corrosion and wear resistance associated with an anodized
aluminum rotor, in addition to reduced weight. Ans. 12.
Consistent with the Examiner’s findings, even if the weight of Bigo’s
friction disks 12 matters less than the weight of other brake rotors, that by
itself does not convince us that a person of ordinary skill in the art would
dismiss the benefit of some weight savings. Moreover, Appellant’s
argument regarding weight savings does not apprise us of error in the
Examiner’s finding that corrosion and wear resistance would have given a
person of ordinary skill in the art reason to make Bigo’s friction disks from
anodized aluminum.
Appellant further argues that “Applicant’s invention is not a simple
substitution of one known element for another to obtain predictable results.”
App. Br. 18. In connection with this, Appellant argues that none of the cited
prior art suggests “to attempt to replace a steel friction disk in a hydraulic
assembly with a friction disk having an anodized aluminum surface,” or
“that such a substitution would yield predictable results.” App. Br. 18.
Appellant’s attorney argument does not provide any specific reason to
believe that the Examiner’s proposed modification of one brake assembly to
employ a construction used in another brake assembly would produce
anything but predictable results. And Appellant’s observation that none of
the cited references individually, explicitly discloses using an anodized
aluminum friction disk in the exact type of brake assembly claimed by
Appellant does not apprise us of error in the Examiner’s finding that a
person of ordinary skill in the art would have had reason to do so in view of
the collective teachings of the references. See KSR Int’l Co. v. Teleflex, Inc.,
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550 U.S. 398, 417 (2007) (noting obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”).
Finally, Appellant argues that it is desired for wet brakes to provide
slower, smoother braking than dry brakes. App. Br. 19. Based on this
contention, Appellant argues that a person of ordinary skill in the art of wet
brake/clutch assemblies would not look to a dry brake assembly like
Dwivedi’s for potential improvements. Id. at 18-19. In response, the
Examiner finds that a person of ordinary skill in the art would have viewed
Dwivedi as offering potential improvements for wet brakes because the
corrosion resistance of anodized aluminum would prove particularly
beneficial in the corrosion-conducive wet brake system. Ans. 13. The
Examiner also finds that a person of ordinary skill in the art would have also
recognized that both wet and dry brakes would benefit from weight savings
associated with the anodized aluminum disclosed by Dwivedi. Id. Finally,
the Examiner finds that the anodizing that Dwivedi discloses would reduce
friction in a wet brake, thereby reducing wear and improving disk life. Id.
We first note that Appellant provides no convincing evidence in
support of the contention that it is desired for wet brakes to provide slower,
smoother braking than dry brakes. Moreover, even if it does exist, this one
alleged difference between the desired operation of different types of brake
assemblies does not convince us of error in the rejection. Given the
Examiner’s identification of a number of problems common to wet and dry
brake/clutch assemblies, Dwivedi’s disclosure of a configuration helpful to
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solve these common problems would have logically commended itself to a
person of ordinary skill in the art of wet brake/clutch assemblies.
For the foregoing reasons, Appellant’s arguments do not apprise us of
error in rejection II with respect to claim 1. Claims 9 and 17 fall with claim
1. Additionally, Appellant argues rejection II with respect to claims 2, 4, 5,
11, 14-16, and 18-20 by pointing to the arguments presented in connection
with claims 1, 9, and 17. See App. Br. 20. Accordingly, we affirm rejection
II in its entirety.

Rejection III
Appellant traverses rejection III by pointing to the arguments
advanced against rejection II. App. Br. 19-20. For the reasons discussed in
connection with rejection II, these arguments do not apprise us of error in
rejection III.

Rejection IV
With respect to rejection IV, Appellant argues independent claims 1,
9, and 17 as a group. App. Br. 14-19. We select independent claim 1 as
representative, treating claims 9 and 17 as standing or falling with
representative claim 1.
Appellant traverses rejection IV with many of the same arguments
discussed above in connection with rejection II. See App. Br. 14-19. For
the reasons discussed in connection with rejection II, these arguments do not
apprise us of error in rejection IV.
Regarding rejection IV, Appellant also takes issue with the Examiner
relying partially on Jackson’s disclosure that its friction disks may be made
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of many different materials to support the finding that a person of ordinary
skill in the art would have had reason to make the friction disks from
anodized aluminum. Reply Br. 6-7; Ans. 10. Specifically, Appellant states
that “while Jackson does teach that ‘disks might be composed of many
different materials’ (Col. 3, lines 47-48), Jackson further elaborates that the
disks ‘are made of metal with a surface onto which paper particles have been
bonded’ (Col. 3, lines 49-50).” Id. at 6.
This does not apprise us of error because Appellant’s quotes omit a
key portion of the cited sentence of Jackson, which states in full that:
“These disks might be composed of many different materials, but in the
preferred embodiment they are made of metal with a surface onto which
paper particles have been bonded.” Jackson, col. 3, ll. 47-50 (emphasis
added). Thus, contrary to Appellant’s implication, the cited portion of
Jackson does not suggest that all embodiments of its disks must be formed
of metal with paper particles attached. And Appellant’s related attorney
argument that “[a]nodizing a metal is far different than attaching paper
particles to the metal” provides no specific reason that the alleged difference
would have negated the reasons identified by the Examiner that a person of
ordinary skill in the art would have had to make Jackson’s friction disks
from aluminum with an anodized wear surface. See Reply Br. 6-7.
For the foregoing reasons, Appellant’s arguments do not apprise us of
error in rejection IV with respect to claim 1. Claims 9 and 17 fall with claim
1. Additionally, Appellant argues rejection IV with respect to claims 2, 4, 5,
11, 14-16, and 18-20 by pointing to the arguments presented in connection
with claims 1, 9, and 17. App. Br. 20. Accordingly, we affirm rejection IV
in its entirety.
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Rejection V
Appellant traverses rejection V by pointing to the arguments advanced
against rejections II and III. App. Br. 19-20. For the reasons discussed in
connection with rejections II and III, these arguments do not apprise us of
error in rejection V.

DECISION
We reverse the Examiner’s rejection of claims 11-16 and 18-20 under
35 U.S.C. § 112, second paragraph.
We affirm each of the Examiner’s rejections of the claims under 35
U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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