Ex Parte IWAI et al

Patent Trial and Appeal Board

Jun 22, 2018

13352868 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/352,868 01/18/2012
22919 7590 06/26/2018
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Torn IWAI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SN-US115393 9530
EXAMINER
SICONOLFI, ROBERT
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TORU IW AI and MAKOTO SOUW A
Appeal2016-004987
Application 13/352,868
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
ANTHONY KNIGHT, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tom Iwai and Makoto Souwa ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision in the Final Office Action (dated Feb.
23, 2015, hereinafter "Final Act.") rejecting claims 1, 4, 7-13, and 15. 2
Appellants' representative presented oral argument on June 19, 2018.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 Shimano, Inc. is identified as the real party in interest in Appellant's
Appeal Brief (filed Aug. 21, 2015, hereinafter "Appeal Br."). Appeal Br. 3.
2 Claims 2, 3, 5, 6, and 14 are canceled. See Appellant's Amendment 2, 3,
filed Nov. 10, 2014.
Appeal 2016-004987
Application 13/352,868
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION pursuant
to our authority under 37 C.F.R. 41.50(b ).
INVENTION
Appellants' invention relates to a bicycle disc brake rotor including a
base rotor plate and a surface region, wherein the surface region is formed
by a diffusion process and has corrosion resistance characteristics superior to
the base rotor plate. Spec. para. 5.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A bicycle disc brake rotor comprising:
a base rotor plate including an outer portion formed of
iron, the outer portion having first and second base surfaces
facing in opposite axial directions; and
a surface region formed by a diffusion process on the
base rotor plate, the diffusion process being a calorizing
process, and the surface region having a corrosion resistant
characteristic which is superior to the base rotor plate, and
including a calorized zone, which is formed by the calorizing
process, the calorized zone having a compounded material
infiltrated into the first and second base surfaces and at least
one peripheral edge of the outer portion.
REJECTIONS
I. The Examiner rejects claims 1 and 4 under 35 U.S.C. § 102(b) as
being anticipated by Fuller et al. (US 2006/0272909 Al, published
Dec. 7, 2006, hereinafter "Fuller").
II. The Examiner rejects claims 1, 4, 7-13, and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Seymour (US 6,467,589 B2,
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Application 13/352,868
issued Oct. 22, 2002) and Fuller or Holly et al. (US 2008/0000550 Al,
published Jan. 3, 2008, hereinafter "Holly").
ANALYSIS
Rejection I
The Examiner finds that Fuller discloses, inter alia, a base rotor plate
302 capable of being used on a bicycle including an outer portion made from
iron and having first and second base surfaces, facing in opposite axial
directions, with corrosion resistant characteristics formed by a diffusion
process, i.e., calorizing, wherein the calorized zone includes "a compounded
material infiltrated into the first and second base surfaces and at least one
peripheral edge of the outer portion." Final Act. 2-3 (citing Fuller, paras.
34--36, 63---64, Fig. 6).
Appellants argue that Fuller fails to disclose "coating a peripheral
edge of an outer portion of a bicycle disk rotor brake, as recited by claim 1."
Appeal Br. 7. According to Appellants, in light of the Specification, the
phrase "peripheral edge of the outer portion" means "the radially facing
surface 22a of the outer portion." Id. (citing Spec. para. 21, Fig. 4).
In response, the Examiner asserts that:
It should be noted that the at least one peripheral edge of the
outer portion has not been defined in claim 1 to be a radially
facing surface (22a) as shown in Figs. 3-5 of the instant
application. Accordingly, the Examiner submits that an axially
facing surface on the outermost periphery of the first and
second base surfaces can be reasonably interpreted as "the at
least one peripheral edge of the outer portion" as broadly
recited.
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Application 13/352,868
Examiner's Answer 2 (dated Feb. 11, 2016, hereinafter "Ans.").
The Examiner is correct in that Appellants' Specification does not
explicitly define the claim language "at least one peripheral edge of the outer
portion." Nonetheless, during examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
Specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). In this case, ordinary and customary meanings of the terms
"periphery" and "edge" are "an external boundary or surface of a body" and
"the line where an object or area begins or ends," respectively. 3 As such, an
ordinary and customary meaning of the phrase "peripheral edge" is the
external boundary where an object or area begins or ends. Such an
interpretation is consistent with Appellants' Specification, which in Figure 3
shows inner peripheral edge 22b as the external boundary where outer
portion 22 begins and outer peripheral edge 22a as the external boundary
where outer portion 22 ends.
Accordingly, the Examiner's claim construction, which relies on the
view that "an axially facing surface on the outermost periphery of the first
and second base surfaces" would meet the "at least one peripheral edge of
the outer portion" limitation, is unreasonably broad in view of the ordinary
and customary meaning of the phrase "peripheral edge" as it would be
understood by persons of ordinary skill in the art when read in light of
Appellants' Specification. Furthermore, we note that the Examiner's
3 See https://www.merriam-webster.com/dictionary/periphery,
https://www.merriam-webster.com/dictionary/edge (last visited June 13,
2018).
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Application 13/352,868
reliance on Fuller's Figure 6 is deficient because in Fuller's Figure 6, there
is an uncoated annular region, i.e., a ring, located between the outermost
edge of surfaces 306 and the edge of rotor plate 302.
In conclusion, we agree with Appellants that "Fuller clearly fails to
disclose a calorized zone having a compounded material infiltrated into ...
at least one peripheral edge of the outer portion," as recited by claim 1.
Reply Brief 3 (dated Apr. 8, 2016, hereinafter "Reply Br."). Therefore, we
do not sustain the rejection under 35 U.S.C. § 102(b) of claims 1and4 as
anticipated by Fuller.
Re} ection II
The obviousness rejection based upon Seymour and Fuller
The Examiner finds that Seymour discloses most of the limitations of
independent claim 1, but fails to disclose a "calorized zone having a
compounded material infiltrated into ... at least one peripheral edge of the
outer portion," as recited by claim 1. Final Act. 3--4 (citing Seymour, col. 1,
11. 5-7, Figs. 2, 3 ).
In a first instance, the Examiner relies on Fuller to disclose the
missing limitation. Id. at 4 (citing fuller, paras. 34--36, 63-64, Fig. 6).
However, as Appellants correctly note, and for the reasons set forth supra in
Rejection I, Fuller fails to disclose the missing limitation. See Appeal Br. 9;
Reply Br. 4. Therefore, the combined teachings of Seymour and Fuller do
not disclose "a calorized zone having a compounded material infiltrated into
... at least one peripheral edge of the outer portion," as recited by claim 1.
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Application 13/352,868
In the alternative, the Examiner finds that "that the surface region as
taught by Fuller ... could be formed on all exposed surfaces of the bicycle
disc brake rotor of Seymour, including the first and second base surfaces and
at least one peripheral edge of the outer portion, as claimed." Final Act. 5
(emphasis added). According to the Examiner, "[i]t would have been
obvious to do so in order to provide the predictable results of a uniform
surface treatment based on various factors such as cost and
manufacturability, and to ensure that improved corrosion resistance is
provided to the entirety of the bicycle disc brake rotor." Id. at 5---6.
Appellants argue that "there is no reasoning as to why one of ordinary
skill would have formed the claimed structure using Fuller and Seymour"
because Fuller discloses "improving corrosion resistance at the areas of the
disk brake that are subjected to wear" and there is no discussion in Fuller
that the surface region on the peripheral edge constitutes such an area.
Appeal Br. 9.
Although we appreciate the Examiner's position that coating all of the
exposed surfaces of Seymour's brake rotor, as modified by Fuller, would
provide "improved corrosion resistance ... to the entirety of the disc brake
rotor" (see Ans. 3), nonetheless, we agree with Appellants that "the
Examiner has provided no evidence that one of ordinary skill in the art
would modify a structure to protect a surface from corrosion that is not
subjected to wear." Reply Br. 4. Even though the Examiner's position is
that calorizing all surfaces of Seymour's brake rotor, as modified by Fuller,
would have been obvious to a person of ordinary skill in the art, the
Examiner has not made any findings as to why the skilled artisan would do
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Application 13/352,868
so when Fuller specifically discloses treating only those surfaces that are
subjected to wear. See Fuller, paras. 21, 29, and 32. Merely because all
surfaces of Seymour's brake rotor, as modified by Fuller, could be calorized,
is not, in itself, a reason to make the modification. Rather, an obviousness
rejection further must explain the reasoning by which those findings support
the Examiner's conclusion of obviousness. Perfect Web Techs., Inc. v.
Info USA, Inc., 587 F.3d 1324, 1328-30 (Fed. Cir. 2009). Here, the
Examiner fails to adequately explain why a person of ordinary skill in the art
would calorize surfaces that are not subject to wear in Seymour's brake
rotor, as modified by Fuller. The Examiner's conclusory statement "that
other various surfaces of a disc brake rotor can be subjected to corrosion as
well" (see Ans. 3) is not enough to satisfy the Examiner's duty to provide a
reasoned explanation.
As such, we find that the Examiner's legal conclusion of obviousness
is not supported by sufficient factual evidence, and thus, cannot stand. See
In re Warner, 379 F .2d 1011, 1017 (CCP A 1967). Therefore, for the
foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a)
of claims 1, 4, 7-13, and 15 as unpatentable over Seymour and Fuller.
The obviousness rejection based upon Seymour and Holly
The Examiner finds that Seymour discloses most of the limitations of
independent claim 1, but fails to disclose a "calorized zone having a
compounded material infiltrated into the first and second base surfaces and
at least one peripheral edge of the outer portion," as recited by claim 1.
Final Act. 3-5 (citing Seymour, col. 1, 11. 5-7, Figs. 2, 3). Nonetheless, the
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Application 13/352,868
Examiner relies on Holly to disclose this limitation. Id. at 5 (citing Holly,
paras. 10, 12, and 27, Figs. 4A, 4B). According to the Examiner, "the
entirety of the disc brake rotor of Seymour, [as modified by Holly,]
including a radially facing peripheral edge of the outer portion, would
clearly be coated since the entirety of the disc brake rotor would be
immersed in a salt bath." Ans. 4 (citing Holly, Abstract).
Appellants argue that because Holly discloses a nitrocarburizing
process (citing Holly, paras. 12, 29), Holly does not disclose "a calorizing
process," as called for by claim 1, because "calorization is known in the art
as being performed with aluminum." Appeal Br. 9--10. According to
Appellants, a skilled artisan would readily understand that "calorization is
performed with aluminum" and, moreover, "the [S]pecification indicates the
calorization process is performed with aluminum." Id. at 10.
In response, the Examiner takes the position that because "the claims
do not define the calorizing process," "the broad recitation of 'a calorizing
process' does not clearly impart or require the use of aluminum." Ans. 4.
The Examiner refers to Cox (US 1,527,538, issued Feb. 24, 1925) as
evidence "that a calorizing process, as broadly recited, does not necessarily
require the use of aluminum." Id. (citing Cox, p. 1, 11. 11-17)4 .
We appreciate the Examiner's position that Appellants do not provide
an explicit definition of the phrase "calorizing process," and although the
Specification describes the "calorizing process" as being performed with
4 "The term 'calorizing' has been recently adopted in the art to identify the
process of rendering the surface of oxidizable metals inoxidizable by heat
treatment with another metal, usually aluminum, which forms a surface alloy
which is inoxidizable at high temperatures."
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Application 13/352,868
aluminum (see Spec. para. 22), nonetheless, the Examiner is correct in that
we must be careful not to read a particular embodiment appearing in the
written description into the claim if the claim language is broader than the
embodiment. Ans. 4; see also Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Here, we agree with the
Examiner's position that "aluminum is not the only metal that can be used"
in a "calorizing process." Ans. 4. 5
However, we note that Holly does not use a metal, but rather a
nitrocarburizing salt. See Holly, para. 11 ("The brake rotors are then
immersed (submerged) into a molten nitrocarburizing salt bath.").
Therefore, even when considering the Examiner's broader definition of a
"calorizing process," the combined teachings of Seymour and Holly fail to
disclose a "calorizing process," as called for by claim 1, because Holly does
not treat the surface of Seymour's rotor with another metal, but rather with a
salt bath that consists of salts and reagents necessary to perform the ferritic
nitrocaburizing surface treatment of the case iron brake rotors that results in
nitrogen and carbon being introduced into the surface structure of the brake
rotor. See Holly paras. 36-40.
Accordingly, for the foregoing reasons, we likewise do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1, 4, 7-13, and 15 as
unpatentable over Seymour and Holly.
5 The Examiner's position is also consistent with Fuller, which discloses the
use of zinc, magnesium, aluminum, or their alloys to diffuse into a substrate
resulting in increased corrosion resistance as compared to untreated surfaces.
Fuller, paras. 35, 64.
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Application 13/352,868
NEW GROUND OF REJECTION
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Seymour, Fuller, and Holly.
Seymour discloses a bicycle disc rotor including a base rotor plate 12
having an outer portion with first and second base surfaces facing in
opposite axial directions. Seymour, col. 1, 11. 5-7, Fig. 2. Seymour does not
disclose: (1) making the outer portion of the base rotor plate from iron;
(2) forming a surface region on the base rotor plate by a diffusion process,
wherein the diffusion process is a calorizing process that generates a
compounded material infiltrated into the first and second base surfaces and
at least one peripheral edge of the outer portion; and (3) wherein the surface
region has a corrosion resistant characteristic that is superior to the base
rotor plate.
Fuller discloses a braking assembly including a base rotor plate 302
(see Fuller, Figs. 2, 6) (1) having an outer portion formed of cast iron or
steel (see id. para. 33); (2) a corrosion resistant region formed on surfaces
subjected to wear by diffusing aluminum into first and second base surfaces
306 of base rotor plate 302 (i.e., calorizing process) (see id. paras. 29, 34,
35, 63, 64, Figs. 2, 4, 6), thereby generating a compounded material
infiltrated into the first and second base surfaces (see id. para. 36); and
(3) wherein corrosion resistant region 306 has a corrosion characteristic that
is superior to base rotor plate 302 (see id. para. 34).
Holly discloses that in addition to wear caused by braking, other
factors, affect brake rotor corrosion. Specifically, Holly discloses
"[ e ]nvironmental effects caused by exposure to corrosive agents, such as
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Application I3/352,868
road salt and water, and "[ o ]pen style wheel designs ... [which] leave the
rotor braking surfaces visible to onlookers." Holly paras. 4, 5. As such,
Holly discloses providing a corrosion resistant layer to all surfaces of a cast
iron brake rotor by immersing it into a salt bath. Id., paras. I I, I 2.
It would have been obvious for a person of ordinary skill in the art
to make Seymour's base rotor plate from iron, as taught by Fuller, in order
to provide a suitable material for its base rotor plate based on various factors
such as availability, cost, weight, and manufacturability. As Seymour does
not disclose a base rotor plate material, a skilled artisan would look to Fuller
to determine what type of material is suitable to make Seymour's base rotor
plate. 6
Furthermore, it would have been obvious for a person of ordinary skill
in the art to provide surfaces subjected to wear in Seymour's base rotor plate
with a corrosion resistant region superior to the base rotor plate, formed by
diffusing aluminum into first and second base surfaces of Seymour's base
rotor plate, thereby generating a compounded material infiltrated into the
first and second base surfaces, as taught by Fuller, in order to better protect
the surfaces subjected to wear from corrosion.
It would also would have been obvious for a person of ordinary skill
in the art to provide Fuller's corrosion resistant region to all surfaces of
Seymour's base rotor plate, not just surfaces subjected to wear, as taught by
Holly, in order to protect surfaces from corrosion caused by factors other
6 The selection of a known material based upon its suitability for the
intended use is a design consideration within the skill of the art. In re
Leshin, 277 F.2d I97, I99 (CCPA I960).
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Application 13/352,868
than wear, such as, environmental factors, i.e., road salt and water, and open-
wheel design that exposes the surfaces to the surrounding environment.
Moreover, treating the entirety of Seymour's disc brake rotor, as modified
by Fuller and Holly, as opposed to only a portion of it, is also more desirable
or practical based on various other factors such as cost and
manufacturability.
Although we decline to reject every claim under our discretionary
authority under 3 7 C.F .R. § 41. 50(b ), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.
SUMMARY
The Examiner's decision to reject claims 1 and 4 under 35 U.S.C.
§ 102(b) as anticipated by Fuller is reversed.
The Examiner's decision to reject claims 1, 4, 7-13, and 15 under
35 U.S.C. §103 as unpatentable over Seymour and Fuller is reversed.
The Examiner's decision to reject claims 1, 4, 7-13, and 15 under
35 U.S.C. § 103 as unpatentable over Seymour and Holly is reversed.
We enter a new ground of rejection of claim 1under35 U.S.C. § 103 as
unpatentable over Seymour, Fuller, and Holly.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides:
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When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 41.50(b)
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