Ex Parte McCord et al

Patent Trial and Appeal Board

Sep 6, 2017

12492261 (P.T.A.B. Sep. 6, 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.
12/492,261 06/26/2009 Herschel L. McCord DKT07059A 6976
67424 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
09/06/2017 EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
09/06/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERSCHEL L. MCCORD, ROBERT A. DENES,
BENJAMIN S. LAMBERS and PAUL M. PRICKETT
Appeal 2016-001980
Application 12/492,261
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
March 3, 2015 decision finally rejecting claims 1—8, 10-18, and 23—27
(“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART,
1 Appellants identify the real party in interest as Borg Warner, Inc. (Appeal
Br. 4).
Appeal 2016-001980
Application 12/492,261
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a friction material having a base
layer and a secondary layer over the base layer (Abstract). The secondary
layer comprises carbon particles having a very specific particle size
distribution (id.). Details of the invention are described in claims 1 and 23,
which are reproduced below from the Claims Appendix of the Appeal Brief:
1. A friction material comprising a base layer and a
secondary layer over the base layer, the secondary layer
comprising carbon particles having a tightly controlled particle
size distribution in which about 30 to about 60 wt. % of the
carbon particles are sized between about 105 and about 210
microns and about 20 to about 30 wt. % are sized between
about 74 and about 105 microns, and wherein the base layer
comprises an upper surface area and the secondary layer covers
about 50% to 100% of the upper surface area.
23. The friction material of claim 1, wherein the carbon
particles constitute the entirety of the secondary layer.
REJECTIONS
I. Claims 1—4, 7, 8, 13—16, and 18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Foge.2
II. Claims 1 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Foge alone, or alternatively in view of Lam ’507.3
III. Claims 5, 6, 10-12, and 17 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Foge in view of Seitz.4
2 Foge et al., US 2008/0308365 Al, published December 18, 2008.
3 Lam et al., US 5,958,507, issued September 28, 1999.
4 Seitz et al., US 6,524,681 Bl, issued February 25, 2003.
2
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Application 12/492,261
IV. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Foge in view of Seitz, and further in view of Jahn.5
V. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Foge, and further in view of Lam ’750.6
DISCUSSION
Appellants limit their arguments to the rejections of independent
claims 1 and 13 and dependent claim 23, with the remaining claims standing
or falling with the independent claims (Appeal Br. 6). Accordingly, our
discussion will be focused on Rejections I and II, particularly as they apply
to claims 1,13, and 23.
Rejection I. The Examiner finds that Foge discloses each of the
elements of claim 1, except that Foge fails to disclose the weight percentages
of particles with the claimed sizes (Final Act. 2—3, citing Foge, FIGS. 2 and
3,3, 11, 38, 49, 50, 53). Though the Examiner finds that Foge fails to
disclose the weight percent of particles with the claimed sizes, the Examiner
determines that arriving at these values would be a matter of routine
optimization to enhance the friction effect while simultaneously providing
resistance to galling (Final Act. 3). The Examiner further determines that
because Foge discloses no improvement in the friction lining by using
particle sizes in excess of 200 microns, it would have been obvious not to
provide particles sized between 210 and 500 microns {id., citing Foge, 111).
Appellants present three principal arguments urging reversal of the
rejections: (1) the Examiner has failed to make out a prima facie case of
5 Jahn, US 5,958,608, issued September 28, 1999.
6 Lam, US 6,001,750, issued December 14, 1999.
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Application 12/492,261
obviousness because the cited art does not teach or suggest all of the claim
limitations; (2) the Examiner has not taken into account Foge’s teaching
away from the Examiner’s proposed modification, and (3) the proposed
modification of Foge would render it unsuitable for its intended purpose
(Appeal Br. 13).
Regarding argument (1), Appellants contend that the Examiner has
not shown that Foge discloses the limitation7 “wherein the base layer
comprises an upper surface area and the secondary layer covers about 50%
to 100% of the upper surface area.” The Examiner finds that this limitation
is disclosed in Foge: “The functional surface [of Foge] is at least partially
provided with the friction lining, which discloses the functional surface can
be completely covered with the friction lining (i.e.[,] the secondary layer
covers about 100% of the upper surface of the base layer)” (Final Act. 2,
citing Foge 13). The Examiner further finds that the phrase “at least
partially” includes full coverage (i.e.[,] 100%) (Ans. 5). The Examiner’s
position is supported by Foge’s FIGS. 1 and 2, which show the functional
(base) layer being completely covered by the frictional (secondary) layer.8
We find that the preponderance of the evidence supports the Examiner’s
finding that Foge discloses an amount of coverage from 50-100%.
Appellants also argue that the language used in Foge — “which
functional surface is at least partially provided with a friction lining, and a
7 The quoted language is in both claim 1 and claim 13.
8 While there is, as noted by Appellants, case law which suggests that not-to-
scale drawings may not be completely reliable for measurement purposes
(Appeal Br. 23), in this instance Foge’s drawings show complete coverage,
which is consistent with the inference drawn by the Examiner that the phrase
“at least partially” includes 100% coverage.
4
Appeal 2016-001980
Application 12/492,261
friction unit comprising at least a first and a second friction (| 3, emphasis
added) — does not teach that the surface is covered, as “provided” does not
mean the same thing as “covered” (Appeal Br. 21—22). This argument is not
persuasive. The Supreme Court has made clear that an obviousness analysis
“need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). That is because “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421 Appellants have not shown reversible error in the
Examiner’s finding (Ans. 5) that, in context, a person of skill in the art
would have understood that Foge’s use of “provide” would mean the same
thing as “cover.”
Accordingly, Appellants’ argument (1) — that Foge would not have
rendered obvious each of the limitations of claims 1 and 13 — is not
persuasive of reversible error.
With regard to argument (2), Appellants argue that because Foge
allegedly “discloses a claimed range of a surface coating of friction particles
on the outer surface of the friction lining with explicit and implicit
disadvantages outside of that range,” it teaches away from the 50-100%
coverage limitation of claims 1 and 13 (Appeal Br. 33).
Whether a reference teaches away from a claimed invention is a
question of fact. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference . . . would be led in a direction divergent from the
path that was taken by the applicant.” In re Hamna, 249 F.3d 1327, 1335
5
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Application 12/492,261
(Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d
1353, 1360 (Fed. Cir. 1999)). “When a piece of prior art ‘suggests that the
line of development flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant’ the piece of prior art is said
to ‘teach away’ from the claimed invention.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994)). A prior art reference must be considered in its
entirety, i.e., as a whole, including portions that would lead away from the
claimed invention. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1550 (Fed. Cir. 1983). However, “[t]he prior art’s mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed . ...” In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004).
In this instance, the portion of Foge relied on by Appellants states that
the surface coating of friction particles “may be selected” in a range from 3
to 45% (Foge 124). However, the “friction particles” only constitute a
portion of the friction lining (which corresponds to the claimed secondary
layer) (see, Foge 13 (indicating that the friction lining comprises a binding
matrix and friction particles)).9 Therefore, even if Foge is read as limiting
the amount of friction particles to a maximum of 45% coverage, that would
9 Appellants argue that the term “friction particles” as used in Foge’s 124
includes both the particles and the binder (Appeal Br. 37). This argument is
not persuasive, as Foge’s 13 is explicit in distinguishing the frictional
particles from the frictional lining, which includes the particles and a
binding matrix.
6
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Application 12/492,261
not teach away from the claimed coverage of the secondary layer in a range
of 50-100%.
Similarly, Appellants’ argument (3) that having Foge’s frictional
lining (corresponding to the claimed secondary layer) cover 50-100% of the
functional surface (corresponding to the claimed base layer) would destroy
the purpose of Foge of reducing costs is unavailing. As noted above, the
description in Foge’s paragraph 24 of capping the coverage to 45% is
directed explicitly to the frictional particles. Thus, even if Foge limited its
frictional particle coverage to 45% in order to limit costs, its overall
frictional lining coverage could still exceed 50% without destroying the
purpose of Foge.
Accordingly, we sustain the rejection of claims 1—4, 7, 8, 13—16, and
18 over Foge.
Rejection II. This rejection is based on Foge either alone or in
combination with Lam ’507. With respect to the rejection of claim 1, we
determine, for the reasons outlined above, that Appellants have not
demonstrated error in the rejection of claim 1 over Foge. Thus, with respect
to claim 1, we need not address the teachings of Lam ’507.
Claim 23 states that “the carbon particles constitute the entirety of the
second layer.” The Examiner finds that the disclosure of Foge 124 that the
surface coating of friction particles on the outer surface of the friction lining
may be selected from a range with a lower limit of 3% by surface area and
an upper limit of 45% by surface area, in combination with Lam ’507’s
disclosure of a secondary layer comprising carbon and a retention layer
7
Appeal 2016-001980
Application 12/492,261
where the carbon particles cover 3% to 80% of a primary layer, suggests a
high carbon coverage (Final Act. 5).
However, as noted by Appellants (Appeal Br. 30, Reply Br. 15—16),
claim 23 recites that carbon particles constitute the entirety of the secondary
layer (see, for example, Spec. 5:24—6:1; 9:3—6), while both Foge and Lam
’507 teach a secondary layer which includes at least a matrix/binder in
addition to the carbon particles. The Examiner has not provided a
persuasive explanation of why a person of skill in the art would have
modified either Foge or Lam ’507 in order to form the secondary layer
entirely of carbon. The Examiner’s finding that the carbon in the friction
layers of Foge and Lam ’507 constitutes a separate layer (Ans. 6) is not
supported by a preponderance of the evidence, particularly as the example
cited by the Examiner discloses the use of a silicon carbide material, not a
carbon particle.
Accordingly, we reverse the rejection of claim 23.
CONCLUSION
We AFFIRM the rejection of claims 1—4, 7, 8, 13—16, and 18 under
35 U.S.C. § 103(a) as being unpatentable over Foge.
We AFFIRM the rejection of claim 1 under 35 U.S.C. § 103(a) as being
unpatentable over Foge alone, or alternatively in view of Lam ’507.
We REVERSE the rejection of claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Foge alone, or alternatively in view of Lam ’507.
We AFFIRM the rejection of claims 5, 6, 10-12, and 17 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Foge in view of Seitz.
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Application 12/492,261
We AFFIRM the rejection of claims 24 and 25 under
35 U.S.C. § 103(a) as being unpatentable over Foge in view of Seitz, and
further in view of Jahn.
We AFFIRM the rejection of claims 26 and 27 under
35 U.S.C. § 103(a) as being unpatentable over Foge, and further in view of
Lam ’750.
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-IN-PART
9