Ex Parte King et al

Patent Trial and Appeal Board

Apr 18, 2017

12413856 (P.T.A.B. Apr. 18, 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.
12/413,856 03/30/2009 Robert Dean King 233619-1 9932
7590
GE GLOBAL PATENT OPERATION
GE VENTURES-LICENSING (ME 131278)
901 MAIN AVENUE
NORWALK, CT 06851
EXAMINER
WHALEN, MICHAEL F
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
04/20/2017 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):
gpo.mail@ge.com
gedocket@meagheremanuel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DEAN KING, AYMAN M. EL-REFAIE, and
CHRISTOF MARTIN SIHLER
Appeal 2015-0056731
Application 12/413,8562
Technology Center 3600
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—10, 12—16, and 18—23. We have jurisdiction under 35 U.S.C.
§ 6(b).
1 Our decision references Appellants’ Specification (“Spec.,” filed Mar. 30,
2009), Appeal Brief (“Appeal Br.,” filed June 30, 2014), and Reply Brief
(“Reply Br.,” filed May 12, 2015), as well as the Final Office Action (“Final
Action,” mailed Jan. 29, 2014) and the Examiner’s Answer (“Answer,”
mailed Sept. 30, 2014).
2 According to Appellants, “[t]he real party in interest is General Electric
Company.” Appeal Br. 2.
Appeal 2015-005673
Application 12/413,856
We REVERSE.
According to Appellants, the invention relates “to the control of disk
brakes via magnetic field sensors and magnetically encoded disk brake
rotors.” Spec. 11. Claims 1, 13, and 18 are the only independent claims on
appeal. Appeal Br., Claims App. We reproduce claim 1, below, as
illustrative of the claims on appeal.
1. A disk brake system comprising:
a magnetically encoded disk brake rotor having at least
one magnetized section encoded therein, wherein the at least one
magnetized section comprises a pair of oppositely polarized
regions positioned adjacently to each other and forming a
magnetic domain boundary therebetween;
a disk brake caliper comprising a plurality of disk brake
pads attached thereto, the disk brake pads positioned adjacently
to the disk brake rotor and configured to ffictionally engage the
disk brake rotor upon operation of the disk brake caliper;
a sensor assembly mounted proximately to the disk brake
rotor and comprising at least one magnetic field sensor
configured to detect the magnetic domain boundary;
a controller configured to receive signals from the at least
one magnetic field sensor, wherein the controller is further
configured to:
determine a brake rotor torque based on a change of
the magnetic domain boundary; and
enable selective operation of the disk brake caliper
based on the brake rotor torque.
Id.
2
Appeal 2015-005673
Application 12/413,856
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1—8 and 13—16 under 35 U.S.C. § 103(a)
as unpatentable over what the Examiner characterizes as Appellants’
“admitted prior art” and Brown (US 2004/0140166 Al, pub. July 22, 2004).
The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103(a) as
unpatentable over the admitted prior art, Brown, and Howell (US 7,694,555
B2, iss. Apr. 13, 2010).
The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over the admitted prior art, Brown, and Baumgartner
(US 7,610,998 B2, iss. Nov. 3, 2009).
The Examiner rejects claims 18—21 under 35 U.S.C. § 103(a) as
unpatentable over the admitted prior art.
The Examiner rejects claims 22 and 23 under 35 U.S.C. § 103(a) as
unpatentable over the admitted prior art, Brown, and Takagi
(JP 403074596 A, pub. Mar. 29, 1991).
ANALYSIS
Each of the Examiner’s rejections relies on a portion of Appellants’
Specification—paragraphs 23—25—that the Examiner characterizes as
“admitted prior art.” See, e.g., Final Action 2. It is true that “[a] statement
by [Appellants] in the [Specification or made during prosecution identifying
the work of another as ‘prior art’ is an admission which can be relied upon
for both anticipation and obviousness determinations, regardless of whether
the admitted prior art would otherwise qualify as prior art under the statutory
categories of 35 U.S.C. [§] 102.” MPEP § 2129(1), citing RiverwoodInt’l
Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1354 (Fed. Cir. 2003).
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Appeal 2015-005673
Application 12/413,856
In this case, however, based on our review of the Specification as well
as the Final Action and the Examiner’s Answer, the Examiner’s
determination that Appellants made such an admission in not supported
adequately. See, e.g., Appeal Br. 5—8. More specifically, the cited portions
of Appellants’ Specification do not state that any work described therein is
the work of another, for example. Further, the Examiner does not otherwise
establish that the discussion in Appellants’ Specification describes prior art
under any section of 35 U.S.C. § 102. See, e.g., id. at 6—7. Thus, based on
the foregoing, we do not sustain any of the rejections of claims 1—10, 12—16,
and 18—23.
DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1—10,
12-16, and 18-23.
REVERSED
4