Ex Parte Fabris

Patent Trial and Appeal Board

Sep 27, 2017

12201900 (P.T.A.B. Sep. 27, 2017)

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.
12/201,900 08/29/2008 Paolo Fabris CAM3-PT202 1294
3624 7590 09/29/2017
VOLPE AND KOENIG, P.C.
UNITED PLAZA
30 SOUTH 17TH STREET, 18th Floor
PHILADELPHIA, PA 19103
EXAMINER
AUNG, SAN M
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
eoffice @ volpe-koenig. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAOLO FABRIS
Appeal 2015-005670
Application 12/201,900
Technology Center 3600
Before JOHN C. KERINS, WILLIAM A. CAPP, and
BRENT M. DOUGAL, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paolo Fabris (“Appellant”) appeals under 35 U.S.C. § 134(a) from
final rejection of claims 1—3, 8—24, 26-41, 43—50, and 52—67. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on
September 20, 2017.
We AFFIRM.
Appeal 2015-005670
Application 12/201,900
THE INVENTION
Appellant’s invention is directed to a bicycle brake pad. Claim 1,
reproduced below, is illustrative:
1. A bicycle brake pad having a braking surface comprised
of a mixture of cork, in granules having an average size
between 0.3—1.0 mm, rubber, a cross-linking agent, and thermal
transmission granules.
REJECTIONS
The Examiner rejects:
(i) claims 1—3, 8, 9, 18, 26, 28, 30-33, 47—50, 52, 57—63, and 67 under
35 U.S.C. § 103(a) as being unpatentable over Moller (GB 2 138 898 A,
published Oct. 31, 1984) in view of Mathauser (US 3,921,764, issued Nov.
25, 1975);
(ii) claims 10, 11, 16, 34, 64, and 65 under 35 U.S.C. § 103(a) as
being unpatentable over Moller in view of Mathauser and Huang (US
2005/0274581 Al, published Dec. 15, 2005);
(iii) claims 12—15, 17—20, 24, 35—39, and 44^46 under 35 U.S.C.
§ 103(a) as being unpatentable over Moller in view of Mathauser, Huang
and Hoffman (DE 26 04 298 Al, published Aug. 5, 1976)1;
(iv) claims 21, 22, 24, 27, 29, 40, 41, 43, and 66 under 35 U.S.C.
§ 103(a) as being unpatentable over Moller in view of Mathauser, Huang,
Hoffman, and Akita (US 6,170,620 Bl, issued Jan. 9, 2001); and
(v) claims 29, and 53—56 under 35 U.S.C. § 103(a) as being
unpatentable over Moller in view of Mathauser and Lew (US 6,347,839 Bl,
issued Feb. 19, 2002).
1 Referred to in the Final Action as “Minnesota Mining Co.”. Final Act. 13.
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Application 12/201,900
ANALYSIS
Claims 1-3, 8, 9, 18, 26, 28, 30-33, 47-50, 52, 57-63, and 67-
Obviousness—Moller/Mathauser
Appellant argues the claims that are subject to this rejection as a
group, and do not present any arguments for the separate patentability of any
of the claims. We take claim 1 as representative of the group, and the
remaining claims stand or fall with claim 1.
The Examiner finds that Moller discloses a bicycle brake pad having a
braking surface comprising a mixture of granules of cork, rubber, and a
cross-linking agent. Final Act. 3. The Examiner notes that Moller discloses
weight ratios of cork and binder (rubber), but does not explicitly disclose
cork granules having an average size of between 0.3—1.0 mm, as claimed.
Id. The Examiner also acknowledges that Moller does not disclose the use
of thermal transmission granules. Id.
The Examiner cites to Mathauser as disclosing the use of thermal
transmission granules, in the form of flakes of copper or aluminum, in a
bicycle brake pad, and concludes that it would have been obvious to modify
the Moller brake pad to include thermal transmission granules, in order to
provide a more heat-resistant brake pad. Final Act. 3^4.
The Examiner additionally takes the position that it would have been
obvious to employ cork granules having an average size of between 0.3—1.0
mm, in that Moller discloses the general conditions of the claims, and, in
accordance with the proposition set forth in In re Aller,2 discovering the
optimal or working ranges under such general conditions involve only
routine skill in the art. Final Act. 4.
2 220 F.2d 454, 456 (CCPA 1955).
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Application 12/201,900
Appellant responds that MPEP § 2144.05(111) advises that a prima
facie case of obviousness with respect to obvious ranges of sizes can be
overcome by showing the criticality of the claimed range or by showing that
the art teaches away from the claimed invention. Appeal Br. 23—24.
Appellant maintains that both of these conditions are met. Id. at 24.
Appellant first maintains that the Specification evidences the
criticality of the claimed dimension of the cork granules, in disclosing that:
[pjreferably, the cork is in the form of granules having an
average size of 0.3-1 mm, and more preferably 0.5-0.7 mm. In
this case, granules of material with high thermal conductivity
and of a smaller size than the granules of cork are preferred, so
as to be able to insert themselves in the gaps between the
granules of cork and promote aggregation.
Appeal Br. 24, quoting Spec., para. 32 (emphasis omitted).
The above passage evidences only that the claimed range of sizes for
the cork granules is a preferred range, and that it is also preferable to have
the high thermal conductivity particles be smaller than the cork granules so
as to be able to fit into gaps between the cork granules, and that such a
construction promotes aggregation. Statements of preferred ranges do
nothing to establish criticality, especially where, as here, there is no
comparison made to other average sizes of cork granules not falling within
the range. The only importance (but not criticality) attached to anything in
this passage is the relative size of the high thermal conductivity granules and
the cork granules. Accordingly, Appellant has not established any criticality
of the claimed average size range for the cork granules.
Appellant also attempts to establish that Moller teaches away from the
claimed size range for the cork granules, asserting that Moller is completely
silent as to cork granule size, and “teaches away from specifying the size of
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Application 12/201,900
its cork granules.” Appeal Br. 24 (emphasis omitted). Appellant maintains
that Moller regards the size and form of the cork used to be inconsequential,
in that Moller states that “it is immaterial in which external form the cork is
used, whether in the form of a powder, a granular material, in coarse pieces
and sheets.” Id. at 25, quoting Moller, p. 1,11. 63—66 (emphasis omitted);
see also, Reply Br. 6. According to Appellant, Moller’s teaching of using
cork for the entire brake pad and using sheets of cork are incompatible with
the claims. Id.
We first note that the alleged teaching away from specifying a size of
cork granules, does not amount to a teaching away from Appellant’s claimed
range. The statements in Moller discussed by Appellant above do not appear
to criticize, discredit or otherwise discourage the use of cork granules having
an average size of between 0.3—1.0 mm, as claimed. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994).
Appellant’s arguments further fail to appreciate that these disclosures
in Moller are directed to a brake pad or lining material embodiment that is
100% by weight cork, and is produced by compression molding. Moller,
p. 1,11. 58—66. Immediately after that passage, Moller discloses that the all­
cork brake pad is not the preferred embodiment, and that the preferred
embodiment involves binding the cork in a binding agent. Id. at p. 1,11. 67—
68. In discussing the specific construction illustrated in Figure 1, Moller
describes the brake pad as including grains of a coarse-grained cork powder
embedded into and distributed throughout a binding agent mixture. Id. at
p. 2,11. 28—31. This disclosure evidences that Moller not only does not teach
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Application 12/201,900
away from using cork powder or coarse granules in a brake pad, rather, such
is the emphasized embodiment.
Appellant further argues that, in order to employ the rationale used by
the Examiner relative to the obviousness of the size of the cork granules, the
size of the cork granules must first be recognized as a result-effective
variable. Appeal Br. 25. According to Appellant, Moller fails to recognize
that the dimensional parameter of the cork granules is a result-effective
variable, in that Moller discloses the use of cork in any size. Id. As noted
above, Moller’s discussion of using cork in any form is directed to an
embodiment in which the brake pad or lining material is 100% cork. Moller
does evidence, when it comes to the use of cork embedded in a binding
agent, that a coarse-grained cork powder is a preferred form of cork. Moller,
p. 2,11. 29-31. Although this passage does not quantify a size range for the
cork granulated powder, the fact that Moller describes the size as a coarse­
grained powder, such that it can be embedded into and distributed
throughout the brake block,is evidence that Moller regards the size of the
cork granules to have an effect on performance of the brake pad, i.e., that the
cork granule size is a result-effective variable. In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012) (A recognition in the prior art that a
property is affected by a variable is sufficient to find the variable result-
effective).
Appellant’s final argument is that Mathauser, relied on by the
Examiner as teaching thermal transmission granules, actually discloses not
granules, but rather metal particles in the form of flakes or strands. Appeal
Br. 26. Appellant argues, without providing evidence in support, that
persons of ordinary skill in the art would recognize that strands and flakes
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Application 12/201,900
are different from granules. Reply Br. 7. Appellant additionally avers that
the distinction between flakes and strands, on the one hand, and granules, on
the other hand, is not meaningless, because the claimed thermal transmission
granules were specifically selected due to their ability to mix with the cork
granules. Appeal Br. 26; Reply Br. 7.
The argument is not indicative of Examiner error. Attorney argument
regarding the understanding of the terms in play cannot take the place of
evidence. See Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068
(Fed. Cir. 2005). As to the alleged distinction between flakes/strands and
granules, Appellant does not point to any definition of granule that would
exclude flakes and strands from being considered as falling with the term
granule. Appellant also provides no evidence that flakes or strands would
not adequately mix with cork granules in the manner contemplated by
Appellant.
Accordingly, none of Appellant’s arguments apprise us of error in the
rejection of claim 1 as being unpatentable over Moller and Mathauser. The
rejection of claim 1 is therefore sustained. Claims 2, 3, 8, 9, 18, 26, 28, 30-
33, 47—50, 52, 57—63, and 67 fall with claim 1.
Claims 10, 11, 16, 34, 64, and 65—Obviousness—Moller/Mathauser/Huang
Appellant presents no additional arguments for the separate
patentability of these claims, and therefore the rejection is sustained for the
same reasons discussed above.
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Appeal 2015-005670
Application 12/201,900
Claims 12—15, 17—20, 24, 35—39, and 44—46— Obviousness—
Moller/Mathauser/Huang/Hoffman
Appellant argues, relative to claims 12, 13, 15, and 19, that the
Examiner has failed to cite to any specific portions of the Moller, Mathauser,
Huang, and Hoffman references that disclose the average sizes for the
thermal transmission granules set forth in these claims. Appeal Br. 28.
Appellant notes that paragraphs 26—29 of the Specification explain the
advantages of the claimed sizes, including reduced abrasion and improved
aggregation and distribution of the granules. Id.
The Examiner finds that Hoffman discloses the use of graphite and
molybdenum sulfide as friction reducing agents having an average size
range of from 1—2000 microns. Final Act. 13—14. Appellant’s Specification
discloses these same materials as being thermal transmission materials.
Spec., paras. 27—28. The Examiner concludes that it would have been
obvious to use such materials as thermal transmission granules in Moller,
with the granules having an average size of from 1—500 microns. Final
Act. 14. The Examiner further relies on the Alien principle that, where the
general conditions of the claim are known, only routine skill in the art is
required to determine optimum or workable ranges. Id.
Appellant’s argument is contradicted by the record, and fails to
apprise us of error in the position taken by the Examiner in rejecting
claims 12, 13, 15, and 19. Appellant makes no additional arguments
directed to the other claims rejected over the combination of Moller,
Mathauser, Huang, and Hoffman. The rejection of claims 12—15, 17—20, 24,
35—39, and 44-46 is sustained.
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Application 12/201,900
Claims 21, 22, 24, 27, 29, 40, 41, 43, and 66-Obviousness—
Moller/Mathauser/Huang/Hoffman/Akita
Appellant presents no additional arguments for the separate
patentability of these claims, and therefore the rejection is sustained for the
same reasons discussed above.
Claims 29, and 53—56—Obviousness—Moller/Mathauser/Lew
Appellant presents no additional arguments for the separate
patentability of these claims, and therefore the rejection is sustained for the
same reasons discussed above.
DECISION
The rejections of claims 1—3, 8—24, 26-41, 43—50, and 52—67 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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