Ex Parte Koshiyama

Patent Trial and Appeal Board

Jun 21, 2018

12829516 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/829,516 07/02/2010
22919 7590 06/25/2018
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
FIRST NAMED INVENTOR
Kazuki KOSHIY AMA
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-US105133 8684
EXAMINER
BURCH, MELODY M
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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 KAZUKI KOSHIY AMA
Appeal 2016-004486 1
Application 12/829,516
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-
Kazuki Koshiyama ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision in the Final Office Action (dated Mar. 23,
2015, hereinafter "Final Act.") rejecting claims 1-14, 19, 20, and 22. 2
Appellant's 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 Sept. 14, 2015, hereinafter "Appeal Br."). Appeal Br. 3.
2 Claims 15-18 and 21 are canceled. See Appellant's After Final
Amendment 4 (filed Mar. 11, 2015).
Appeal 2016-004486
Application 12/829,516
We AFFIRM.
SUMMARY OF DECISION
INVENTION
Appellant's invention "relates to [a] disk brake rotor with [a] cooling
member that has exposed surfaces providing disk brake rotor cooling."
Spec. para. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A brake rotor assembly comprising:
a rotor member having at least one braking surface and
an annular portion, the at least one braking surface is defined
so as to be on at least one of opposite sides of the annular
portion; and
a cooling member coupled to the rotor member,
a distance from a rotational axis of the brake rotor
assembly to a radially innermost portion of the annular potion
of the rotor member is greater than a distance from the
rotational axis of the brake rotor assembly to a radially
outermost portion of the cooling member.
REJECTIONS
I. The Examiner rejects claims 1--4, 7-11, 14, and 22 under 35 U.S.C.
§ I02(b) as being anticipated by Nakamura et al. (US 6,164,421,
issued Dec. 26, 2000, hereinafter "Nakamura").
II. The Examiner rejects claims 5, 12-14, 19, and 20 under 35 U.S.C.
§ I03(a) as being unpatentable over Nakamura and Souwa et al. (US
2011/0240420 Al, published Oct. 6, 2011, hereinafter "Souwa").
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Application 12/829,516
III. The Examiner rejects claim 6 under 35 U.S.C. § I03(a) as being
unpatentable over Nakamura and Lee (US 2010/0148639 Al,
published June 17, 2010).
ANALYSIS
Rejection I
The Examiner finds that Nakamura discloses, inter alia, a rotor
member 3 2 (brake disc member) and a coo ling member 3 0 ( disc support). 3
Final Act. 2; see also Nakamura, Fig. 2.
Appellant argues that "[t]here is clearly no express disclosure [in
Nakamura] that disc support 30 is a cooling member." Appeal Br. 6.
Furthermore, Appellant contends that because Nakamura "is completely
silent as to a suitable material that would enable the disk support 30 to be a
cooling member," and, moreover, already discloses cooling system 20
having a cooling member 24, "there is simply no evidence that
[Nakamura's] disc support 30 is inherently a cooling member." Id. at 7.
According to Appellant, the claimed cooling member is defined by "a
specific structure and material composition." Reply Brief 3 (filed Mar. 22,
2016, hereinafter "Reply Br."). Thus, Appellant concludes that "there is no
evidence that the disc support 30 necessarily is a cooling member." Appeal
Br. 7-8.
There is no dispute that Nakamura fails to explicitly disclose that disc
support 30 constitutes a cooling member. See Appeal Br. 6, see also Ans. 6.
Rather, the dispute is whether the Examiner is correct in finding that
3 Parenthetical nomenclature refers to Nakamura.
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Application 12/829,516
Nakamura's disc support 30 inherently, that is, necessarily, constitutes a
cooling member. In such a case, the USPTO 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). Once the USPTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the applicant to prove
that the prior art does not possess the characteristic at issue. See Id.
It is well settled that "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 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) (quoting In re Oelrich, 666
F.2d 578, 581 (Fed. Cir. 1991)). In this case, the Examiner has provided a
basis in fact and/or technical reasoning to support reasonably that
Nakamura's disc support 30 necessarily constitutes a "cooling member," as
called for by claim 1, in order to shift the burden of proof to Appellant to
prove otherwise.
First, the Examiner is correct in that Nakamura's disc support 30 has a
structure similar to Appellant's cooling member 34. See Examiner's Answer
6 ( dated Jan. 25, 2016, hereinafter "Ans."). Specifically, we agree with the
Examiner that like Appellant's cooling member 34 having central aperture
62 and peripheral apertures 64, Nakamura's disc support 30 likewise
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Application 12/829,516
includes a central aperture and peripheral apertures 42. See id.; Compare
Nakamura, Fig. 7, with Appellant's Figure 5.
Secondly, as an artisan must be presumed to know something about
the art apart from what the references disclose, 4 the Examiner is also correct
in that a skilled artisan would readily recognize Nakamura's apertures
located between the central aperture and peripheral apertures 42 as heat
dissipation features. 5 See Ans. 3 (Examiner's annotated Figure 2 of
Nakamura), 6. Appellant does not persuasively show error in the
Examiner's findings.
Thirdly, we note that in Appellant's brake rotor assembly 12 the
radius to the innermost portion of rotor member 30 (r2) is greater than the
radius to the outermost portion of cooling member 34 (r3). See Spec. para.
38, Fig. 7. Appellant describes this arrangement as (1) enabling heat
conduction through projections 42 of rotor member 30 and fasteners F to
cooling member 34 and (2) providing cooling member 34 with a greater
surface area than braking surfaces S, such that heat is dissipated by
convection and radiation from cooling member 34 to the surrounding air.
Appeal Br. 6; see also Spec. paras. 37, 38.
Here, the Examiner is correct that like Appellant's brake rotor
assembly 12, the radius to the innermost portion of Nakamura's brake disc
member 3 2 is likewise greater than the radius to the outermost portion of
disc support 30. Ans. 7-8 (Examiner's annotated Figure 2 of Nakamura.)
4 See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
5 For example, Souwa discloses apertures 68, 69, 80, 82, 100, and 102 in
rotor members 42, 44, and 46 as ventilation holes for heat dissipation. See
Souwa, paras. 59, 62, and Fig. 6.
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Therefore, Nakamura's disc member 32 and disc support 30 satisfy the same
dimensional relationship as Appellant's rotor member 30 and cooling
member 34. Accordingly, because such an arrangement is described as a
cooling feature, a skilled artisan would readily recognize that Nakamura's
disc member 32 would operate in the same manner as Appellant's cooling
member 34 and, thus, would dissipate heat. Appellants do not persuasively
show error in the Examiner's findings.
Fourthly, we appreciate Appellant's position that the Specification
describes the "cooling member ... [as] made of a material, such as
aluminum material, aluminum alloy (sic), or a carbon material with good
heat transmitting characteristics." Reply Br. 4. However, we do not agree
with Appellant that when construing the phrase "cooling member," in light
of Appellant's Specification, such construction "requires that the term
cooling member be met by a structure that has good cooling characteristics
... such as an aluminum material, aluminum alloy, or a carbon material."
Reply Br. 4. 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. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In this case, the
Examiner is correct in that claim 1 "is completely silent as to a particular
material of the recited cooling member." Ans. 7. It is well established, that
limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, although
a specific material and structure defines Appellant's cooling member 34 as
described in the Specification, we note that only structure defines the
claimed cooling member. See Spec. paras. 34, 37, and 38.
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We also do not agree with Appellant's position that the Examiner's
construction of the phrase "cooling member" renders the term "cooling"
superfluous. See Reply Br. 4. As discussed supra, the dimensional
relationship of Appellant's rotor member 30 and cooling member 34 defines
the claimed "cooling member" and the same dimensional relationship is
present between Nakamura's disc member 32 and disc support 30. See
Spec. paras. 37, 38. Therefore, because Nakamura's disc member 32 and
disc support 30 satisfy the claimed relationship, which is described as a heat
dissipation feature, i.e., cooling feature, the Examiner's construction of the
phrase "cooling member," in light of Appellant's Specification, to
encompass Nakamura's disc support 30 is reasonable.
Lastly, we are not persuaded by Appellant's argument that because
Nakamura discloses a cooling system 20 having a cooling member 24,
"Nakamura does not intend for the disk support 30 to be a cooling member."
Appeal Br. 7. Rather, we agree with the Examiner that Nakamura's cooling
member 24 "is a cooling member for the brake caliper and not for the disk
[32]." Ans. 8. The Examiner is thus correct that Nakamura "having a
cooling member for the brake caliper would not preclude the use of a
cooling member for the brake disk [32]." Id.
In conclusion, for the foregoing reasons, the Examiner has provided a
basis in fact and/or technical reasoning to support reasonably that
Nakamura's disc support 30 necessarily constitutes a "cooling member."
Therefore, the Examiner is on solid footing to shift the burden of proof to
Appellant to prove that Nakamura's disc support 30 does not constitute a
"cooling member," as called for by claim 1. Appellant has not come forth
with persuasive evidence to satisfy such burden.
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Accordingly, we sustain the rejection of claims 1--4, 7-11, 14, and 22
under 35 U.S.C. § 102(b) as anticipated by Nakamura.
Rejections II and III
With respect to Rejection II and III, Appellants rely on the arguments
discussed supra in Rejection I. See Appeal Br. 8.
Therefore, for the same reasons discussed above we sustain the
rejections under 35 U.S.C. § 103(a) of claims 5, 12-14, 19, and 20 as
unpatentable over Nakamura and Souwa and of claim 6 as unpatentable over
Nakamura and Lee.
SUMMARY
The Examiner's decision to reject claims 11-14, 19, 20, and 22 under
35 U.S.C. §§ 102 and 103 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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