Ex Parte Iwai et al

Board of Patent Appeals and Interferences

Aug 20, 2012

10907848 (B.P.A.I. Aug. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TORU IWAI and TAKASHI FUJITANI
____________________

Appeal 2010-006069
Application 10/907,848
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
REMY J. VANOPHEM, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 7, 8, and 21-29.1 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claims 1 and 21, reproduced below, are illustrative of the claimed
subject matter.
1. A bicycle disk brake pad comprising:
a backing plate;
a friction member;
wherein a first joined area of the friction member is welded
to the backing plate such that the first joined area is sandwiched
between the friction member and the backing plate;
wherein a second joined area of the friction member is
adhesively joined to the backing plate such that the adhesive is
sandwiched between the friction member and the backing plate;
and
wherein there is no adhesive in the first joined area.

21. A bicycle disk brake pad comprising:
a backing plate;
a friction member;
wherein a first joined area of the friction member is welded
to the backing plate;
wherein the first joined area is formed by fusing, with the
friction member, a protrusion of the backing plate that
protrudes from the backing plate; and

1 The Examiner and Appellants both identify claims 4-6 as rejected. App.
Br. 2; Fin. Rej. 1. However, neither the Final Rejection nor the Examiner’s
Answer explicitly states any rejection of these claims. Neither does the
Appeal Brief include claims 4-6 in any of the grounds of rejection to be
reviewed on appeal. App. Br. 3.
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wherein a second joined area of the friction member is
joined to the backing plate by an adhesive.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Völker
Bunker
US 3,710,071
US 6,279,222 B1
Jan. 9, 1973
Aug. 28, 2001
Killian US 2004/0118645 A1 Jun. 24, 2004
Shimamura2 (Mitsubishi) JP 4-282037 Oct. 7, 1992
Yasushi3 JP 8-247189 Sept. 24, 1996
Rejections
Appellants request review of the following rejections by the
Examiner:
(1) Claim 1 under 35 U.S.C. § 102(b) as anticipated by Yasushi;
(2) Claims 21, 23, 25, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Yasushi and Bunker;
(3) Claim 1 under 35 U.S.C. § 102(e) as anticipated by Killian;
(4) Claims 2, 3, 22, 24, and 27-29 under 35 U.S.C. § 103(a) as
unpatentable over Yasushi “as modified”4 or Killian;

2 We derive our understanding of this reference from the English language
translation prepared by FLS, Inc., dated June 2009. A copy of this
translation was mailed to Appellants on March 17, 2010. The Examiner and
Appellants refer to this reference as “Mitsubishi,” so we do likewise herein.
3 We derive our understanding of this reference from the English language
translation prepared by The McElroy Translation Company, dated June
2009. A copy of this translation was mailed to Appellants on March 17,
2010. The translation identifies the named inventor as “Yasushi Katagiri.”
Both the Examiner and Appellants refer to this reference as “Yasushi,” so
we do likewise herein.
4 While it is not entirely clear what is meant by “as modified,” since claims
22, 24, and 27-29 depend from claim 21, which was rejected by the
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(5) Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Yasushi or
Killian, further in view of Mitsubishi; and
(6) Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Yasushi or
Killian, further in view of Völker.
OPINION
Rejection (1)
Claim 1 requires that there be “no adhesive in the first joined area”
(i.e., the area of the friction member that is welded to the backing plate such
that it is sandwiched between the friction member and the backing plate).
The Examiner finds that this limitation is met by Yasushi because “it is
inherent that the bonding of materials from the welding makes no room for
adhesive in areas.” Ans. 4. More specifically, relying on paragraph [0015]
of Yasushi, the Examiner explains that in the areas where Yasushi’s bonding
reinforcing member 5 and the holding plate 4 are fused by electro
deposition, the materials are bonded and meld with each other, and “because
of the interlaced metals, some adhesive must remain present in the recesses
between the lining and plate.” Ans. 7.
Yasushi discloses that in the formation methods shown in figure 3,
“binding reinforcement material 5 is mixed into the powdery material for
lining 3” and lining 3 is baked into a prescribed shape and lining 3 and
binding reinforcement material 5 are fused together by electrodeposition E
“as lining 3 settles into intricate spaces created among the metal fibers of
binding reinforcement material 5.” Yasushi Transl. 7, para. [0014]. Further,
a portion of binding reinforcement material 5 is exposed from the binding

Examiner as unpatentable over Yasushi and Bunker, we presume the
Examiner’s rejection, at least as applied to claims 22, 24, and 27-29, is based
on a combination of Yasushi and Bunker.
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surface of lining 3 either by the metal fibers protruding above the sintered
metal during the baking or by teasing up the binding surface of lining 3 after
the baking. Id. Next, binding reinforcement material 5 on lining 3 and the
binding surface of retainer plate 4 are placed together with a separately
prepared adhesive between them. Yasushi Transl. 7, para. [0015].
As electrodeposition E is applied to lining 3 and retainer plate
4, the exposed portion of binding reinforcement material 5 and
retainer plate 4 are fused together, lining 3 settles into a portion
of binding reinforcement material 5, and lining 3 and retainer
plate 4 are bound together as the adhesive is melted, whereby
friction pad 1 is created.
Id.
Appellants argue that the fact that the reinforcement material 5 and
retainer plate 4 “are welded does not mean that the two materials inherently
push out or preclude any third material.” App. Br. 5. Appellants add that
nothing in any definition of “bond” or “meld” “precludes the presence of
adhesive at any of the bonded or melded materials.” Reply Br. 1. Thus,
according to Appellants, “it cannot be said that there is no adhesive in a first
joined area as required by claim 1. Quite to the contrary, it is likely that the
adhesive simply remains or mixes in with the migrating materials.” Id.
Appellants have not presented any evidence to support their assertion
that it is “likely” that the adhesive remains or mixes in with the migrating
materials. However, when relying on the theory of inherency, the examiner
has the initial burden of providing a basis in fact and/or technical reasoning
to reasonably support the determination that the allegedly inherent
characteristic reasonably flows from the teachings of the applied prior art.
See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). In this case, the
Examiner has not provided any evidence or technical reasoning to establish a
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sound basis for the finding that the fusing of the binding reinforcement
material 5 and retainer plate 4 as described by Yasushi inherently5 makes no
room for adhesive in areas.
For the above reasons, we do not sustain the Examiner’s rejection of
claim 1 as anticipated by Yasushi.
Rejection (2)
In rejecting independent claim 21 and its dependent claims 23, 25, and
26 as unpatentable over Yasushi and Bunker, the Examiner found that
Yasushi lacks a backing plate having a protrusion, but determined it would
have been obvious to provide Yasushi’s back plate “with a protrusion as
taught by Bunker merely to assist in holding the pad.” Ans. 5.
Bunker discloses a brake pad having a cast back plate 12 formed with
projections 28 therein which are “enveloped in the block 14 of friction
material” “to resist removal of the block 14 from the back plate 12 in
directions parallel to the upper surface of the block 14 and the overhangs of
the projections act to resist removal of the block 14 [from] the back plate 12
in a direction normal to said upper surface.” Col. 3, ll. 14-15, 33-39.
Bunker’s brake pad is formed by introducing a mixture of friction material
and curable but uncured phenolic resin into a die cavity on top of a movable
punch, clamping the back plate 12, to which adhesive has been applied, over

5 “Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.” In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
and internal quotation marks omitted). “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted).
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the opening of the cavity, moving the punch toward the back plate to
compress the mixture into the shape of the block 14, such that the mixture is
pressed around the projections 28, removing the plate 12 with the uncured
block 14 adhered thereto, and curing the phenolic resin by a heat treatment.
Col. 4, ll. 36-54.
In contrast to the fabrication processes of Appellants and Yasushi,
Bunker adheres a mixture of friction material and curable resin to the back
plate. Bunker’s brake pad is not formed by fusing the friction block material
with the back plate 12, as called for in claim 21 and as described by Yasushi.
Indeed, Bunker uses the projections to resist separation of the block from the
back plate in directions parallel to and perpendicular to the bonding upper
surface of the plate. Consequently, Bunker’s projections are intended to be
kept intact in the process of adhering the block to the back plate.
Given the very disparate fabrication processes disclosed by Yasushi
and Bunker, it is not apparent why a person of ordinary skill in the art would
have been prompted to provide projections on the retainer plate of Yasushi
and to fuse those projections with either the binding reinforcement material
5 or lining 3 material. The Examiner’s assertion that it is “well known in the
art that by increasing a connection area of one member to another, a greater
adhesion between the two members can be achieved” (Ans. 8) does not
apprise us as to how the use of protrusions in Yasushi’s retainer plate, which
is adhered and fused with lining material and binding reinforcement material
that is not described as being curable and deformable around such
protrusions, would increase the connection area between the retainer plate
and the lining and binding reinforcement material. Accordingly, the
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Examiner’s articulated reason for the combination does not have rational
underpinnings. We do not sustain the rejection.
Rejection (3)
We do not sustain the rejection of claim 1 as anticipated by Killian.
The Examiner’s finding that Killian’s laser weld bead 36, which the
Examiner finds corresponds to the claimed “first joined area” (Ans. 4),
“extends underneath the friction cookie due to the nature of welding melting
metals” (Ans. 8) is not supported by Killian. Killian’s cookie 32 is joined to
the backer plate 34 by adhesive bonding or brazing. Para. [0024]. Killian’s
backer plate 34 is fused to paddle 28 by laser weld beads 36. Para. [0025].
Killian’s weld beads 36 have a low profile and thus seldom extend beyond
the height H of backer plate 34. Id. Further, backer plate 34 extends slightly
beyond cookie 32 to facilitate welding of the backer plate 34 to paddle 28
without compromising cookie 32 or its attachment to backer plate 34. Id.
Consequently, weld beads 36 do not extend underneath cookie 32 between
cookie 32 and backer plate 34.
Killian cannot satisfy both the requirement in claim 1 that the first
joined area of the friction member be sandwiched between the friction
member and the backing plate and the requirement in claim 1 that a second
joined area of the friction member is adhesively joined to the backing plate
such that the adhesive is sandwiched between the friction member and the
backing plate.
As correctly pointed out by Appellants (App. Br. 5), the Examiner
does not identify what portion(s) of Killian’s clutch disc correspond to the
claimed friction member. If Killian’s backer plate 34 is considered part of
the friction member, then Killian’s clutch disc does not satisfy the
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requirement in claim 1 that a second joined area of the friction member is
adhesively joined to the backing plate such that the adhesive is sandwiched
between the friction member and the backing plate, because Killian does not
disclose adhesive between the backer plate 34 and the paddle 28. If, on the
other hand, Killian’s backer plate 34 is considered part of the backing plate,
and the friction cookie 32 is considered to correspond to the claimed
“friction member,” then Killian’s clutch disc does not satisfy the
requirement in claim 1 that the first joined area of the friction member be
sandwiched between the friction member and the backing plate, because the
weld beads 36 are between two portions (backer plate 34 and paddle 28) of
the backing plate, and do not extend between the backing plate and the
friction cookie 32.
Rejections (4)–(6)
In making these rejections of dependent claims 2, 3, 7, 8, 22, 24, and
27-29, the Examiner does not articulate any findings or reasoning that would
remedy the deficiencies of rejections (1)-(3) discussed above. Thus, we do
not sustain rejections (4)-(6).
DECISION
The Examiner’s decision rejecting claims 1-3, 7, 8, and 21-29 is
reversed.
REVERSED

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