Ex Parte Guether

Patent Trial and Appeal Board

Jul 5, 2017

12000502 (P.T.A.B. Jul. 5, 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.
12/000,502 12/13/2007 Hans-Michael Guether 07780011US 3926
62008 7590 07/07/2017
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
EXAMINER
WILLIAMS, THOMAS J
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
07/07/2017 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):
patent @ maierandmaier. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-MICHAEL GUETHER
Appeal 2016-006924
Application 12/000,502
Technology Center 3600
Before JOSEPH L. DIXON, CARL L. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006924
Application 12/000,502
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 50 and 52—59. Claims 1—49 and 51 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a composite brake disc. Claim 50,
reproduced below, is illustrative of the claimed subject matter (additional
indentations added):
50. A composite brake disk assembly comprising:
a brake disk chamber having a plurality of
circumferentially-spaced elongated holes,
wherein the brake disk chamber comprises a metallic
material;
a brake disk ring having a plurality of circumferentially-
spaced openings, each aligned with one of the plurality of
elongated holes of the brake disk chamber,
wherein the brake disk ring comprises a material selected
from the group consisting of a ceramic material, a fiber-
reinforced ceramic material, and combinations thereof,
wherein the brake disk chamber and the brake disk ring
have different coefficients of thermal expansion;
a plurality of washers each having a hole aligned with one
of the plurality of circumferentially-spaced openings of the brake
disk ring;
a plurality of cylindrical sleeves disposed and radially
movable within each of the plurality of circumferentially-spaced
elongated holes of the brake disk chamber; and
a plurality of fasteners,
wherein the fasteners consist of one selected from the
group consisting of blind rivets, tension pin rivets, pull-through
1 Appellant indicates that Audi AG is the real party in interest. (App. Br. 3).
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Application 12/000,502
rivets, and removable pull through rivets, and combinations
thereof,
wherein each fastener comprises a head portion and an
elastically deformable shaft portion,
wherein the elastically deformable shaft portion of each
fastener extends through and is expanded to grip:
wherein the head portion of each fastener abuts one of the
plurality of washers,
wherein only the plurality of fasteners secures the brake
disk ring to the brake disk chamber so as to prevent play in a
peripheral direction but to allow play in a radial direction with
respect to the brake disk ring for compensation of the different
coefficients of thermal expansion of the brake disk chamber and
the brake disk ring.
The prior art relied upon by the Examiner in rejecting the claims on
a hole of one of the plurality of washers,
one of the plurality of circumferentially-spaced
openings of the brake disk ring, and
one of the plurality of cylindrical sleeves,
REFERENCES
appeal is:
Proudfoot US 2,614,946
US 3,438,301
US 6,081,984
Oct. 21, 1952
April 15, 1969
July 4, 2000
Sept. 17, 2002
Mattioli
Sherry
Keck et al. US 6,450,303 B1
(hereinafter “Keck”)
Roland EP 0 985 843 Mar. 7, 2000
REJECTIONS
The Examiner made the following rejections:
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Application 12/000,502
Claims 50 and 52—57 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Keck in view of Roland and in Mattioli.
Claim 58 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Keck in view of Roland and Mattioli as applied to claim
50 above, and further in view of Proudfoot.
Claim 59 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Keck in view of Roland and in view of Sherry.
ANALYSIS
Obviousness
With respect to claims 50 and 52—57, Appellant argues the claims
together. (App. Br. 5). We select independent claim 50 as the representative
claim and address Appellant’s arguments thereto. 37 C.F.R.
§ 41.37(c)(l)(iv).
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments that
Appellant could have made but chose not to make in the Brief, and we deem
any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). We note
Appellant did not file a Reply Brief to respond to the Examiner’s further
clarifications in the Examiner’s Answer.
We disagree with Appellant’s arguments with respect to claims 50 and
52—57, and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellant’s arguments. We incorporate such findings, reasons,
and rebuttals herein by reference unless otherwise noted. However, we
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Application 12/000,502
highlight and address specific findings and arguments regarding claim 50 for
emphasis as follows.
With respect to representative independent claim 50, the Examiner has
relied upon the background and prior art Figures 7 and 8 of the Keck
reference which discloses the use of various combinations of screws, bolts,
and rivets to attach the brake disk ring to the brake disk chamber.
Additionally, the Keck reference discloses the use of elongated holes which
allows for thermal expansion due to the different coefficients of thermal
expansion of the different materials and the use of washers and bushings.
(Ans. 2—3). The Examiner additionally relies upon the Roland and Mattioli
references which teach and further suggest the use of various types of blind
rivets, washers, sleeves and to attach/fasten multiple layers of material.
(App. Br. 2-4).
Appellant maintains that the background of the Keck reference
discloses a specific combination of screws and rivets to secure a disk ring to
a disk chamber and further that the German patent No. DE-A 1 775 685,
cited in the background, discloses that it is necessary to use screws with
rivets or bolts. (App. Br. 5—6). Appellant further argues the combination of
claimed elements and proffers that the Keck reference does not “employ
rivets in conjunction with a plurality of washers and a plurality of cylindrical
sleeves.” (App. Br. 7—8).
While we agree with Appellant that the totality of the limitations are
not taught by the Keck reference, the Examiner has proffered a combination
of prior art teachings and provided a convincing line of reasoning for the
combination. (Ans. 3—4).
We first note, “one cannot show non-obviousness by attacking
references individually where . . . the rejections are based on combinations
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Application 12/000,502
of references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
Appellant’s arguments primarily focus on the Keck reference and do
not address the combination of teachings as relied upon by the Examiner in
the grounds of the rejection. As a result, Appellant’s arguments do not show
error in the Examiner’s factual findings or the conclusion of obviousness of
representative independent claim 50.
“What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). “The combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416.
We find Appellant has not shown why such a combination of old and
well-known elements would not be a predictable use of prior art elements
according to their established functions. See id. at 417. We therefore find
the Examiner’s reason to combine the teachings of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion.
Because Appellant has not shown error in the Examiner’s factual
findings or conclusion of obviousness, we sustain the Examiner’s rejection
of independent claim 50 and dependent claims 52—57 not separately argued.
With respect to dependent claim 58, Appellant does not set forth
separate arguments for patentability and contends that the Proudfoot
reference does not compensate the shortcomings in the base combination.
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(App. Br. 9). As a result, we sustain the rejection dependent claim 58 for the
same reasons discussed above with respect to independent claim 50.
With respect to independent claim 59, Appellant does not set forth
separate arguments for patentability and contends that the Sherry reference
is not cited to compensate for the shortcomings of the combination of the
Keck and Roland references. Because we found no shortcoming in the base
combination, we find Appellant’s argument does not show error in the
Examiner’s factual findings or ultimate conclusion of obviousness of
independent claim 59, and we sustain the rejection thereof for the same
reasons discussed above with respect to independent claim 50.
CONCLUSION
The Examiner did not err in rejecting claims 50 and 52—59 based upon
obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s obviousness
rejections of claims 50 and 52—59.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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