Ex Parte Iwai et al

Patent Trial and Appeal Board

Jun 12, 2017

13038679 (P.T.A.B. Jun. 12, 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.
13/038,679 03/02/2011 Torn Iwai SIC-11-004 9318
29863 7590 06/14/2017
DELAND LAW OFFICE
P.O. BOX 69
KLAMATH RIVER, CA 96050-0069
EXAMINER
SY, MARIANO ONG
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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):
bdeland 1992 @gmail.com
jdeland @ sisqtel.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORUIWAI and MAKOTO SOUWA
Appeal 2016-008220
Application 13/038,679
Technology Center 3600
Before JOHNNY A. KUMAR, JOHN A. EVANS, and
CARL L. SILVERMAN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3—5, 8, 9, 14, and 18. Claims 6, 7, 10-12, 15—17, and 20 have
been indicated to contain allowable subject matter. Final Act. 5. Claims 2,
13, and 19 were previously canceled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify Shimano, Inc. as the real party in interest. App. Br. 1.
Appeal 2016-008220
Application 13/038,679
Exemplary Claim
Independent claim 5 illustrates the invention as follows:
5. A disk brake rotor apparatus comprising:
an annular inner member for mounting to a hub;
at least one annular outer member concentric with the
annular inner member and having at least one braking surface
with at least one opening formed on the at least one braking
surface; and
a first intermediate member extending radially outwardly
from the annular inner member;
a second intermediate member extending radially
outwardly from the annular inner member;
wherein the apparatus is not structured to mount a tire;
wherein the first intermediate member is at least partially
and axially spaced apart from the second intermediate member
and forms a chamber therebetween; and
wherein the at least one of the first and second
intermediate members and the at least one annular outer
member are formed as one piece.
Rejection
Claims 1, 3—5, 8, 9, 14, and 18 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Chou (US 6,336,531 Bl, Jan. 8, 2002). Final Act. 2—
5.
ANALYSIS
Independent claim 5 recites, inter alia, “wherein the at least one of the
first and second intermediate members and the at least one annular outer
member are formed as one piece” (emphasis added).* 2
2 Claim 1 recites similar subject matter.
2
Appeal 2016-008220
Application 13/038,679
Appellants argue Chou does not disclose this limitation. App. Br. 3—
5; Reply Br. 2-A.
In particular, Appellants argue, and we agree,
As a minimum, a one-piece structure assembled from two
components requires some kind of permanent immobilization,
one with respect to the other, and Chou’s braking disc assembly
does not even disclose that. As discussed at col. 2:35-59 and
shown in Fig. 5, the five insertion portions (34) of disc body
(30) are laterally slidably mounted around the shanks (424) of
locking members (42), wherein a protective sleeve (46) is
placed around each shank (424) to protect against wear of
the locking member (42) during lateral sliding. Springs (48)
encircle each locking member (42) for biasing disc body (30) to
the left as shown in the upper portion of Fig. 5. As discussed at
col. 2:60-67 and shown in the upper portion of Fig. 5, disc body
(30) floats laterally to the right in response to rightward
movement of movable brake pad (16) during the operation of
the brake, so clearly Chou’s fastening seat (20) and disc body
(30) do not even function as one piece. Furthermore, there is
nothing permanent about merely bolting two components
together.
Reply Br. 2—3 (emphasis added).
We agree with Appellants as our interpretation of the disclosure of
Chou coincides with that of Appellants. See App. Br. 3—5; Reply Br. 2—\.
We conclude that the Examiner’s findings are not supported by Chou
for the reasons set forth by Appellants.
Therefore, on this record, we find the weight of the evidence supports
the positions articulated by Appellants in the briefs. Accordingly, as such,
we cannot sustain the Examiner’s rejections of claims 1 and 5. Because we
reverse the rejection of independent claims 1 and 5 on appeal, we also
reverse the rejections of dependent claims 3, 4, 8, 9, 14, and 18, which
depend on claims 1 and 5 respectively.
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Appeal 2016-008220
Application 13/038,679
DECISION
The Examiner’s decision to reject claims 1, 3—5, 8, 9, 14, and 18 is
reversed.
REVERSED
4