Ex Parte Hanna et al

Patent Trial and Appeal Board

Mar 27, 2015

12183104 (P.T.A.B. Mar. 27, 2015)

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.
12/183,104 07/31/2008 Michael D. Hanna P001861-R&D-JMC 5019
104102 7590 03/30/2015
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
EXAMINER
HSIAO, JAMES K
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
03/30/2015 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 MICHAEL D. HANNA, RICHARD M. KLEBER, MOHAN
SUNDAR, and THOMAS C. ZEBEHAZY
____________

Appeal 2013-002668
Application 12/183,104
Technology Center 3600
____________

Before JENNIFER D. BAHR, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Michael D. Hanna et al. (Appellants)1 appeal under 35 U.S.C. § 134
from the Examiner’s decision to finally reject claims 1–4 and 7–16. Claims
5 and 6 have been withdrawn. Appeal Br. 4. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellants, the real party in interest is General Motors LLC.
Appeal Br. 4.
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Application 12/183,104

2
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim subject to this appeal, is
reproduced below, with the disputed limitation italicized for emphasis.
Claim 1 is representative of the subject matter of this appeal.
1. A multi-piece, sound dampened brake rotor
for attachment to a vehicle wheel, the rotor
comprising:
a hub with a round cylindrical body with a
partial closure at one end of the cylindrical body
providing support for attachment of the brake rotor
to a vehicle wheel, and a radially outwardly
extending hub flange from the cylindrical body;
and
an annular rotor body comprising a radially
internal circumferential surface with a flange, the
body extending to an external diameter with an
external circumferential surface and having
parallel opposing body surfaces for frictional
engagement in braking of the vehicle wheel, the
rotor body comprising at least one annular insert
between the parallel body surfaces and
constructed and arranged to provide coulomb
friction damping; 2
the hub flange and annular rotor body flange
are attached to form the brake rotor and to
withstand torsional forces arising from vehicle
braking.

Appeal Br. 25, Claims App. (emphasis added).

2 Appellants explain that “[i]n Coulomb Damping the vibration energy is
dissipated by the frictional sliding of dry surfaces against one another.”
Reply Br. 5.
Appeal 2013-002668
Application 12/183,104

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THE REJECTION

Claims 1–4 and 7–16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Giorgetti (US 5,810,123; iss. Sept. 22, 1998) and Boss
(US 6,465,110 B1; iss. Oct. 15, 2002).

ANALYSIS
Claim 1
Regarding claim 1, the Examiner finds that Giorgetti discloses the
limitations of claim 1, except that Giorgetti “lacks at least one annular
insert.” Ans. 4–5. The Examiner further finds that Boss “teaches at least
one annular insert (84) for sound damping [] enclosed between parallel body
surfaces (fig. 10) . . . capable of providing coulomb damping.” Ans. 5
(citing Boss, Abstract; col. 4, lines 23–34; Fig. 10). The Examiner reasons
that “[i]t would have been obvious to one of ordinary skill in the art . . . to
combine [Giorgetti’s] rotor assembly . . . with [Boss’] damping inserts . . .
because the damping inserts of Boss provide vibrational damping and
thermal insulation for the disk.” Ans. 5 (citing Boss, Abstract). Regarding
Boss, the Examiner finds that “friction is present between the metal felt and
interior surfaces of the rotor[,]” and therefore, Boss “teaches a brake rotor
with an annular insert arranged to provide coulomb friction-damping.” Ans.
8.3

3 The Examiner notes that Boss “also discloses . . . that the metallic felt can
be held by a friction fit arrangement.” Ans. 8 (citing Boss, col. 4, ll. 10–14).
However, this passage in Boss relates to tubing formed from inner and outer
metal layers with metallic felt held therebetween by frictional forces rather
than adhesive. See col. 3, ll. 46–col. 4, ll. 22; Figs. 5–7. This passage is not
relevant to the Examiner’s reliance on the brake rotor embodiment disclosed
Appeal 2013-002668
Application 12/183,104

4
Appellants acknowledge that Boss “discloses that the metal felt may
be attached to parallel annular disc[s] of a brake rotor wherein each disc 78,
80 has a metallic felt disposed within the solid metal portion 86 formed from
a metal such as cast iron, steel, nickel-based alloy or composite materials.”
Appeal Br. 8–9 (citing Boss, col. 4, ll. 23–34; see also Figs. 8–10).
However, Appellants argue that Boss “fails to disclose or teach exactly how
to make the metal felt so that the metal felt is disposed within the solid metal
portion 86 of the brake rotor” and contend that “[t]here is no disclosure or
teaching in Boss [] of how molten melt [sic] or composite material is
prevented from flowing into the void of the metallic felt to thereby prevent
molten metal or composite material, upon solidification, from bonding to the
metallic felt or producing a mechanical lock preventing relative movement
of the metallic felt and the cast metal of composite.” Id. at 9, 15. Appellants
further submit that “[e]ven if Boss [] discloses a metallic felt capable of
coulomb damping . . . , the reference in [sic] not prior art because the
reference is non-enabling for the purposes relied on in the rejection.”
Appeal Br. 16. The Examiner responds that “claim 1 does not require a
method of production; it only requires that coulomb friction damping be
provided” and “[t]herefore, the process . . . to make the apparatus [depicted
Boss’ Figures 8–10] is irrelevant.” Ans. 8.
We are not persuaded by Appellants’ arguments. Boss depicts and
discloses “metallic felt, flat, annular layer 84 disposed within a solid metal

in Boss at column 4, lines 23–34 and Figures 8–10; see also Reply Br. 4–5.
The Examiner specifically states that the rejection relies on Boss’s
embodiments depicted in Figures 8–10 and described at column 4, lines 23–
33, noting that “arguments focused on other embodiments are irrelevant.”
Ans. 7.
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Application 12/183,104

5
portion 86” without describing any mechanical locking therebetween. See
Boss, col. 4, ll. 23–34; Figs. 8–10. Notably, the Background of the
Invention section of Appellants’ Specification, states that
sometimes it is desired to incorporate one or more annular
inserts in the annular rotor body to produce columbic friction
between contacting surfaces of the embedded insert(s) and
surrounding rotor body metal to dampen noise otherwise
transmitted by the vibrating brake rotor. These additional
structural features of the annular rotor body have significantly
complicated the manufacture of low mass articles such as
vented and sound dampened brake rotors.
See Spec. ¶ 5. Thus, Appellants appear to acknowledge that manufacturing
techniques for incorporating annular inserts into the rotor body while
preserving contact surfaces for columbic friction, although complicated, are
known. In view of the foregoing, Appellants have not presented a
persuasive argument or sufficient evidence that Boss is a non-enabling
reference.
Appellants also argue that in Boss “[t]here is no disclosure or teaching
of how relative movement, which is necessary for coulomb or friction
damping, of the metallic felt and the cast in place brake rotor is
accomplished” and therefore Boss “fails to disclose the frictional movement
of parts relative to each other sufficient to produce [coulomb] friction
damping of noise of the brake rotor.” Appeal Br. 9, see also id. at 14.
Appellants contend that Boss “discloses damping a brake rotor using
different material having different densities or damping properties associated
with structure” and conclude that “[t]he damping of the brake rotor in Boss .
. . is accomplished by a fundamentally different principle or mode of
operation than coulomb damping.” Id. at 9, 14.
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Application 12/183,104

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We are not persuaded by Appellants’ argument. Appellants’
contentions appear to represent mere attorney argument without supporting
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)
(“Arguments and conclusions unsupported by factual evidence carry no
evidentiary weight”). In particular, Appellants offer no evidence to support
the assertion that Boss’ vibration dampening as set forth in the embodiment
described at column 4, lines 23–33 relies on differences in the densities of
materials rather than relative movement between the interface between the
metallic felt and the surrounding solid structure. In addition, Appellants’
Specification describes coulomb friction damping inserts 36, 38 as “typically
hav[ing] very small (microscopic) hills and valleys (which may be provided
or enhanced by a suitable particulate coating . . . ), that interact with the
enclosing iron body portions 28, 30 of the rotor to dampen vibrations
produced in a revolving rotor.” Spec. ¶ 24. As acknowledged by
Appellants, Boss’ metallic felt comprises voids, which would appear to
present an irregular surface at the interface between the metallic felt and the
surrounding solid metal portion. Thus, Appellants have not apprised us of
error in the Examiner’s finding that Boss’ metallic felt inserts would be
capable of providing coulomb friction damping, as required by claim 1.
Finally, Appellants argue that “the Examiner has failed to articulate a
reason supported by some rational underpinning that would support the
combining and modifying of the references to arrive at the claim[ed] subject
matter on appeal.” Appeal Br. 16. We disagree. The Examiner reasons that
one of ordinary skill in the art would modify the Giorgetti’s rotor to include
Boss’ inserts for providing vibrational damping, and Appellants have not
apprised us of any error in such findings or reasoning. See Ans. 4–5.
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Application 12/183,104

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Accordingly, we sustain the Examiner’s rejection of claim 1.
Appellants have not presented separate arguments for claims 2–4 and 7–14,
which depend from claim 1, and therefore, we also sustain the Examiner’s
rejection of claims 2–4 and 7–14.

Claims 15 and 16
The Examiner finds that Boss discloses the limitations of claims 15
and 16 by teaching that “the annular inserts have a coating of high
temperature-resistant particles and comprising refractory particles.” Final
Act. 3 (citing Boss, col. 2, ll. 53–67). In particular, the Examiner “maintains
that the metallic felt has an outer coating of said material as the outer surface
is made from said material[,]” which is also refractory in that it is resistant to
heat. Ans. 9. Alternatively, the Examiner appears to reason that selecting
such a coating would have been obvious to one of ordinary skill in the art
given the high temperature requirements of the application, as “a matter of
obvious engineering design choice.” Final Act. 3.
Appellants argue that Boss “simply fails to disclose coatings, particles
or the materials set forth in dependent claim 15” and also “simply does not
disclose ‘a coating comprising refractory particles over the insert’” as recited
in claim 16. Appeal Br. 16–17.
Because we agree with Appellants, we do not sustain the Examiner’s
rejection of claims 15 and 16.

DECISION
We AFFIRM the Examiner’s rejection of claims 1–4 and 7–14 under
35 U.S.C. § 103(a)
Appeal 2013-002668
Application 12/183,104

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We REVERSE the Examiner’s rejection of claims 15 and 16 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-IN-PART

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