Ex Parte Morris

Board of Patent Appeals and Interferences

Jan 29, 2009

10607427 (B.P.A.I. Jan. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROYSTON L. MORRIS
____________

Appeal 2008-2683
Application 10/607,427
Technology Center 3600
____________

Decided: January 29, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge, for the majority.

BAHR, Administrative Patent Judge, concurring.

HORNER, Administrative Patent Judge, joining the majority, in part, and
joining the concurrence, in part.

DECISION ON APPEAL

Appeal 2008-2683
Application 10/607,427

STATEMENT OF THE CASE
Royston L. Morris (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 2, 7-9, 13, 14, 18, 19, and 24-32.1
Claims 6, 10-12, 17, and 20-23 have been withdrawn from consideration as
being drawn to a nonelected species. Claims 3-5, 15, and 16 also have been
withdrawn as being drawn to a nonelected species. Accordingly, those
claims are not before us for review, and we are not considering any
arguments addressing the propriety of the Examiner’s withdrawal of those
claims or the patentability of those claims. That issue is reviewable by
petition under 37 C.F.R. § 1.181 and thus is not within the jurisdiction of the
Board. In re Mindick, 371 F.2d 892, 894 (CCPA 1967). We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

The Invention
The claimed invention is to a pad spring and a disc brake
incorporating the pad spring.
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1 The Examiner acknowledges in the Answer that claim 14 was improperly
withdrawn in the Final Office Action. (Ans. 3.) The Examiner stated that
claim 14 “should have been rejected on the same grounds as claim 2.” (Ans.
6.) The Appellant agrees claim 14 is rejected under 35 U.S.C. § 103(a).
Based on the Examiner’s statement that claim 14 should have been rejected
on the same grounds as claim 2, and its dependence from claim 13, which is
rejected under 35 U.S.C. § 112, first paragraph, we understand claim 14 to
be also rejected under 35 U.S.C. § 112, first paragraph, for the same reasons
that claims 2 and 13 are rejected under § 112, first paragraph. (See Ans. 3-
4.) Accordingly, we will treat the Examiner’s rejection under 35 U.S.C.
§ 112, first paragraph, as including claim 14.
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1. A pad spring for supporting a brake pad in a
brake assembly having a carrier, the brake pad
having a backplate supporting friction material, the
pad spring comprising:
a spring portion that engages an outer face of a
backplate to resiliently restrain an end of the brake
pad from radial movement relative to the carrier;
and
an abutment surface to be disposed between the
brake pad and the carrier in a primarily radial
direction, wherein the pad spring is made from a
single material and wherein the abutment surface
is configured such that, when secured to the brake
pad, the brake pad can be fitted into the carrier by
employing a solely radially inward motion.

The Prior Art
The Examiner relies upon the following as evidence of
unpatentability:
Asquith US 4,134,477 Jan. 16, 1979
Takeo JP 2001234955 A Aug. 31, 2001

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 2, 7-9, 13, 14,2 18, 19, 24, 25, and 30-32 are rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 1, 2, 7-9, 13, 14, 18, 19, and 24-32 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Asquith and Takeo.

2 See footnote 1.
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SUMMARY OF DECISION
We AFFIRM.

OPINION
35 U.S.C. § 112, first paragraph, Rejection
The Examiner determined that the added3 limitation “the brake pad
can be fitted into the carrier by employing a solely radially inward motion”
to independent claims 1 and 13 was not described in the originally filed
disclosure. (Ans. 3-4.)
The Appellant contends that the Examiner erred in rejecting the
claims because “[i]t is clear from Figure 14 that in order to install the brake
pad and the pad springs to the upper end 812 of the carrier, the springs must
be slid over the end of the carrier in a radial inward direction only.” (Br. 7-
8.)
The Examiner determined that the term “solely” in the claim should
be interpreted as “to the exclusion of all else” and because there is no written
disclosure in the Specification to support a “solely radially inward motion”
of the brake pad, the invention as now claimed is not supported by the
originally filed disclosure. (See Ans. 6.)
Issue(1)
Has the Appellant shown that the Examiner erred in determining that
there is no support for the limitation “wherein the abutment surface is
configured such that ... the brake pad can be fitted into the carrier by
employing a solely radially inward motion”?

3 Amendment filed August 31, 2004.
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Facts Pertinent to Issue(1)
Figure 14 is a partial perspective view of the carrier 812 with slot 864
and a pad spring 838 having spring legs 860. One of ordinary skill in the art
of brakes uses a radial coordinate system to identify the location of brake
parts that comprise a disc brake assembly. To express this coordinate
system one of ordinary skill in the art would apply the following principles
to translate this radial system into a Cartesian coordinate system reflective of
a two-dimensional piece of paper used to illustrate this invention that uses a
radial coordinate system. The radial direction when viewing the drawings is
the vertical direction of the page. Accordingly, from Figures 3 and 6, one of
ordinary skill in the art understands the bight structure of the carrier, labeled
as 12, 112, 812 (Fig. 14) is located inwardly, i.e. closer to the center of the
rotor, than the opposing legs, thus forming a U-shaped structure. As such,
the brake pad and pad spring have to be moved in an inward direction in
order to be installed on the carrier, i.e., toward the bight of the carrier. As
such, when viewing the drawing of Figure 14, one of ordinary skill in the
brake art would understand that in order for the spring legs 860 to engage
the slot 864, the pad spring is located above the carrier structure 812 and slid
downwardly until the spring legs 860 engage the slot 864.
Principles of Law relevant to Issue(1)
Drawings alone may be sufficient to satisfy the description
requirement of 35 U.S.C. § 112, first paragraph. See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991). Precisely how close the
original description must come to comply with the description requirement
must be determined on a case-by-case basis. The primary consideration is
factual and depends on the nature of the invention and the amount of
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knowledge imparted to those skill in the art by the disclosure. See e.g. Vas-
Cath, at 1564. Accordingly, the inquiry into whether the description
requirement is met is a question of fact. In re Wilder, 736 F.2d 1516, 1520
fn* (Fed. Cir. 1984).
Analysis for Issue(1)
We find that the originally filed disclosure satisfies the description
requirement under § 112, first paragraph, for the claimed invention as “now
claimed.” See Vas-Cath, at 1564. To us, it is clear that one of ordinary skill
in the brake art would deduce from Figure 14 and paragraphs 12 and 13 in
the originally filed Specification (explaining the pad spring is configured to
permit brake pad mounting in an inward radial direction) that the pad spring
and the brake pad attached thereto would slide over the top of the carrier 812
down the carrier until the spring legs 860 engage the slot 864. Thus, the
originally filed disclosure describes the “now claimed” invention of “the
abutment surface [846 of the pad spring 838] can be fitted into the carrier
[812] by employing a solely radially inward motion[, as shown in Figure 14,
starting from the top of carrier 812 and moving in a downward direction on
the page until the spring legs 860 engage slot 864].”
We understand the Examiner’s response regarding the term “solely”
and how it should be interpreted to mean to the exclusion of all else; and
thus, this adverb should further limit this claimed feature to only moving in
the radially inward direction without having a capability to move in an axial
or translational motion in order for a mechanic to place the pad into the
caliper. (See Ans. 6.) However, we conclude that one of ordinary skill in
the brake art would only interpret the term “solely” to preclude insertion of
the pad and pad spring in another direction, such as from the sides or from
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the bottom, and thus only have the insertion of the pad and pad spring 838
into the carrier 812, as shown in the drawings, from the top or in a motion
that moves the pad and pad spring from the edge of a disc rotor toward the
center of that rotor. Plainly speaking, in the brake art, the term “solely” does
not preclude wiggling the brake part to set it into its final position.
Conclusion for Issue(1)
The Appellant has shown that the Examiner erred in determining that
the there is no support for the limitation “wherein the abutment surface is
configured such that ... the brake pad can be fitted into the carrier by
employing a solely radially inward motion.”

35 U.S.C. § 103(a) Rejection
Claims 1, 2, 7-9, 13, 14, 18, 19, 24, 25, and 32
The Appellant argues claims 1, 2, 7-9, 13, 14, 18, 19, 24, 25, and 32
as a group. We select claim 1 as the representative claim for the group. As
such, claims 2, 7-9, 13, 14, 18, 19, 24, 25, and 32 stand or fall with claim 1.
The Appellant contends that neither Asquith nor Takeo disclose,
teach, or suggest, when a pad spring is secured to a brake pad, the
combination of the spring and pad can be installed into the carrier by
employing a solely radially inward motion. (Br. 9-10.) Further, the
Appellant contends that there is no motivation or suggestion to modify
Asquith with the teachings of Takeo. (Br. 11.)
The Examiner found Asquith discloses pad springs that are radially
installed upon the replacement of the brake pads and what Asquith lacks is
installing the pad springs onto the brake pads prior to installation in the
carrier. The Examiner then relied on Takeo to teach it is well known in the
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brake art to install pad springs onto brake pads before installing the
assembly into the carrier. The Examiner concludes an artisan would apply
the teachings of Takeo to Asquith because the combination of the pad
springs and brake pad being installed as a single unit would save time and
make replacement of the brake pad and pad spring easier. (Ans. 4, 5, and 7.)
Issue(2)
Has the Appellant, by arguing that neither Asquith nor Takeo
discloses, teaches, or suggests, when a pad spring is secured to a brake pad,
the combination of the spring and pad can be installed into the carrier by
employing a solely radially inward motion and there is no motivation to
combine Asquith and Takeo, shown that the Examiner erred in concluding
that the claimed invention is obvious?
Facts Pertinent to Issue(2)
Asquith discloses a carrier 12 being bifurcated to present a pair of
opposing lateral arms 14 situated at respective circumferential regions to
create a space for the disc brake assembly to slide downwardly in a radial
motion (referring to Figure 1 and the top of the page as the horizontal y-axis)
until resting on pad guide surface 62. (Asquith, col. 2, ll. 27-29 and Figure
1.)
Guides 28 and 30 lie between an outerface of the brake pad assembly
and the radially extending walls 64 that are part of each lateral arm 14, (see
Figure 1).
Guide 28 comprises an elongated spring with a main portion 65 that
has a curved, principal sectional contour to conform to that of the lateral,
convex sliding surface of the rails 22a of the caliper 20 such that the spring
member locates itself with respect to the caliper as shown in Figure 1.
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(Asquith, col. 3, ll. 6-11 and Figure 1.) Radially extending tag portions 33,
34 at the axial ends (reference the z-axis perpendicular to the page) of the
spring members define surfaces 36 and 38 that are adapted to respectively
engage surfaces 40 and 42 on the lateral arms. (Asquith, col. 3, ll. 15-18.)
Below the main body portion 65, the guide 28 includes projecting portions
66 that overlie upper corner portions 67 of the brake pad support plates in
order to assist in locating the brake pad support plates against radially
outward displacement. (Asquith, col. 3, ll. 34-37, Figures 1 and 3.)
The guide 30 includes radially inwardly projecting leg portions 60a,
60b for engaging pad guide surfaces 62 on the carrier 12. As found supra,
from Figure 1, leg portions 60a, 60b lie between the side surfaces of the
brake pad assembly and the adjacent radially extending walls 64 of the
carrier’s 12 lateral legs 14. (Asquith, col. 4, ll. 29-35.)
The Examiner relies on Asquith to disclose the pad springs 28 and 30
described supra and found these springs, along with the brake pad assembly,
are installed radially into the carrier 12. (Ans. 5 and 7.) The Examiner
determined Asquith meets the claimed invention except for installing the
springs onto the brake pad assembly prior to installing the combination into
the carrier 12 so that the pad and springs can be installed as a unit. (Ans. 7.)
Accordingly, the Examiner relies on Takeo to teach applying the spring
member 22 onto the brake pad assembly’s 18 projecting portions 19 and 20
prior to installing the assembly into the carrier of a disc brake assembly.
(Ans. 5 and 7.) The Examiner reasoned that it would have been obvious to
apply the teachings of Takeo of installing the spring members to the brake
pad prior to installing the spring members and brake pad into the carrier.
(Ans. 5 and 7.) The Examiner explained that applying Takeo’s teachings to
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Asquith would make the installation of Asquith’s pad spring and brake pad
assembly faster and easier. (Ans. 5 and 7.) Additionally, the Examiner
found that a pad spring having a different hardness from a backing plate is
old and well known in the brake art in order to attenuate any noise caused by
the contact between these two components. (Ans. 5.) The Examiner
explained that Giacomazza bolsters this finding. (Ans. 5.)
Principles of Law relevant to Issue(2)
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (Quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
There must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. KSR Int’l. Co.
v. Teleflex, Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007).
Analysis for Issue(2)
The Appellant’s arguments fail to demonstrate that there is
insufficient evidence of a prima facie case of obviousness. In addition, the
Appellant has not rebutted the prima facie case with evidence of secondary
considerations. Nor, does the Appellant’s argument that there is no
motivation or suggestion to modify Asquith with Takeo show that the
Examiner’s articulated reasoning to support the conclusion of obviousness
does not have a rational underpinning.
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In particular, the Appellant’s argument that Asquith does not disclose
installing the springs 28, 30 in a solely radial direction because the
transversely extend tag portions 44, 58 would hit the bridging portions 18a,
18b of the carrier does not show error in the Examiner’s rejection because
neither does Asquith disclose such would occur nor does the Appellant
provide evidence that such would occur. The Appellant’s argument that
Takeo cannot by installed by a solely radial motion is not persuasive of error
because the Examiner did not rely on Takeo to teach such installation.
Instead, the Examiner relied on Takeo for its teachings that it is well known
to an artisan to install the pad springs onto a brake pad prior to installing the
combination into an assembly such as a carrier, (see Ans. 4-5 and facts
pertinent, supra). The Appellant’s arguments that Asquith discloses
installing the pad spring separately from the brake pad, Asquith’s springs
and pads are not secured together, Asquith does not require the spring to
contact the pad, the manner Asquith’s springs are installed, and Takeo’s
brake pad cannot be radially installed (see Br. 10) are not persuasive as to
error on the part of the Examiner because, in this case, the Appellant has not
addressed the combination of prior art references as a whole but simply
improperly argues the merits of each reference individually. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981); In re Young, 403 F.2d 754, 757-58
(CCPA 1968).
The Examiner needs to articulate a reason with some rational
underpinning to support the legal conclusion of obviousness. In this case,
the Examiner reasoned that an artisan in the brake art would apply the
teachings of Takeo to Asquith in order to have the assembly together prior to
installation into the carrier in order to save time and make replacement of the
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brake pads and pad springs easier, (see Ans. 4, 5, and 7 and facts pertinent
supra). The Appellant’s argument (see Br. 11) of no motivation or
suggestion to modify Asquith with Takeo does not show that the Examiner’s
articulated reason to support the conclusion of obviousness does not have a
rational underpinning. Instead, the argument merely identifies a purpose of
Asquith’s invention, how Asquith accomplishes that purpose, and alleges the
Examiner’s modification of Asquith would render Asquith unsatisfactory for
that purpose and change Asquith’s principle of operation. However, the
Appellant provides no evidence that installing the pad springs onto the brake
pads prior to installing the combination into the carrier would render Asquith
unsatisfactory for that purpose or change Asquith’s principle operation.
Additionally, the Appellant has not provided evidence that a substantial
reconstruction and redesign of Asquith would be in order if the pad springs
were installed onto the brake pads as taught by Takeo prior to installing the
combination into the carrier. Moreover, a prior art reference is analyzed
from the vantage point of all that it teaches one of ordinary skill in the art.
In re Lemelson, 397 F.2d 1006, 1009 (C.C.P.A. 1968) (“The use of patents
as references is not limited to what the patentees describe as their own
inventions or to the problems with which they are concerned. They are part
of the literature of the art, relevant for all they contain”). Furthermore, “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at ___, 127 S. Ct. at 1742.
To us, the claimed invention appears to be no more than a
combination of familiar elements according to known methods found in two
separate pieces of prior art and yields a predictable result. As the Supreme
Court has stated, “[t]he combination of familiar elements according to
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known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 550 U.S. at ___, 127 S. Ct. at 1739.
Claim 26
For the same reasons supra, the Appellant has not shown that the
Examiner erred in rejecting claim 26 as obvious. The Appellant’s argument
that Asquith teaches away is without merit because it fails to establish how
one of ordinary skill in the art would be discouraged from following the path
set out in Asquith and fails to explain how the Examiner’s use would render
the result inoperable. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994);
see also McGinley v. Frankin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir.
2001).
Claim 27, 28, and 31
The Appellant argues claims 27, 28, and 31 as a group. We select
claim 27 as the representative claim for the group. As such, claims 28 and
31 stand or fall with claim 27.
We are not persuaded by the Appellant’s arguments that the Examiner
erred in rejecting claim 27, because the Appellant does not contest the
Examiner’s finding that it is well known in the brake art to have a pad spring
of a different hardness than that of the backing plate. Instead, the
Appellant’s argument focuses on the fact that Giacomazza does not show the
claimed feature of a pad spring formed of a single material. This line of
argument does not show an error on the part of the Examiner because the
Examiner did not use Giacomazza to teach a pad spring formed of a single
material. Instead, the Examiner used Giacomazza to bolster the Examiner’s
finding that those of ordinary skill in the brake art consider it well known to
make pad springs and backing plates of different hardnesses in order to
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attenuate the noise generated by these components contacting each other,
(see Ans. 5 and facts pertinent supra). As such, the Appellant’s argument
does not directly address the Examiner’s finding.
Claim 29
For the same reasons supra, the Appellant’s argument that “Asquith
teaches away from such a configuration by separately installing the brake
pad and spring members 28, 30 into the caliper” and thus defeats Asquith’s
benefit is unpersuasive and without merit against the rejection of claim 29
because the argument alleges a defeat of benefits but does not explain why
this would be the case. Instead, the Appellant’s argument concludes there
would be a defeat of benefits. Additionally, as stated supra, the Appellant
has not explained how one of ordinary skill in the art would be discouraged
from following the path set out in Asquith and fails to explain how the
Examiner’s use would render the result inoperable.
Conclusion for Issue(2)
The Appellant, by arguing that neither Asquith nor Takeo discloses,
teaches, or suggests, when a pad spring is secured to a brake pad, the
combination of the spring and pad can be installed into the carrier by
employing a solely radially inward motion, and there is no motivation to
combine Asquith and Takeo, has not shown that the Examiner erred in
concluding that the claimed invention is obvious.
Claim 30
The Appellant argues that there is no motivation or suggestion to
combine Asquith and Takeo; Asquith and Takeo do not together disclose,
teach, or suggest the features of claim 30; and the Examiner has not
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specified where the combination of features in claim 30 are disclosed in
either reference.
The Examiner concluded claim 30 is obvious for the same reasoning
as applied to claims 1, 2, 7-9, 13, 14, 18, 19, 24-29, 31, and 32.
Issue(3)
Has the Appellant shown that the Examiner erred in rejecting claim 30
because neither Asquith nor Takeo disclose, teach, or suggest “a first
circumferential spacing between said at least two pad springs at a radially
outermost portion is at least the same as a second circumferential spacing at
a radially innermost portion”?
Facts Pertinent to Issue(3)
Claim 30 further provides that “a first circumferential spacing
between said at least two pad springs at a radially outermost portion is at
least the same as a second circumferential spacing at a radially innermost
portion.”
As shown in Figure 1 of Asquith, the circumferential spacing between
the springs 28, 30 at the top (the radially outermost portion) of the brake pad
is at least the same as the circumferential spacing at the bottom (the radially
innermost portion of the brake pad). As such, the brake pad can be slid or
fitted into the carrier 12 by a radial inward motion, i.e., as shown in Figure
1, from the top of the page toward the bottom.
Principles of Law relevant to Issue(3)
The Appellant can overcome the § 103 rejection by showing there is
insufficient evidence to establish a case of prima facie obviousness. See In
re Kahn, 441 F.3d at 985-86.

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Analysis for Issue(3)
From our review of Asquith, it appears that Asquith alone teaches the
first circumferential space between the two springs at the radially outermost
portion is the same as the second circumferential space at the radially
innermost portion, (see pertinent facts supra). As such, the Appellant has
failed to show there is insufficient evidence in the record to establish a prima
facie case of obviousness.
Conclusion for Issue(3)
The Appellant has not shown that the Examiner erred in rejecting
claim 30 because Asquith alone does teach “a first circumferential spacing
between said at least two pad springs at a radially outermost portion is at
least the same as a second circumferential spacing at a radially innermost
portion.”

DECISION
The decision of the Examiner to reject claims 1, 2, 7-9, 13, 14, 18, 19,
24, 25, and 30-32 as failing to have an adequate description is reversed.
The decision of the Examiner to reject claims 1, 2, 7-9, 13, 14, 18, 19,
and 24-32 as being obvious 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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BAHR, Administrative Patent Judge, concurring.

I agree with my colleague, writing for the majority, that the rejection
of claims 1, 2, 7-9, 13, 14, 18, 19, 24, 25, and 30-32 under 35 U.S.C. § 112,
first paragraph should not be sustained. I also agree that the rejection of
claims 1, 2, 7-9, 13, 14, 18, 19, and 24-32 under 35 U.S.C. § 103(a) should
be sustained. I write separately because my reasons for reaching those
conclusions differ somewhat from those articulated by my colleague.

The Written Description Rejection
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language. See Vas Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “[D]rawings
alone may be sufficient to provide the ‘written description of the invention’
required by § 112, first paragraph.” Id. at 1564.
The Examiner found that the limitation that the abutment surface is
configured such that, when secured to the brake pad, “the brake pad can be
fitted into the carrier by employing a solely radially inward motion”
(emphasis added) lacks written description support in the Appellant’s
application as originally filed. The term “solely” is of particular concern to
the Examiner, because it is “more specific than what is called for in the
specification.” Answer 4. According to the Examiner, the Specification as
originally filed “does not preclude some amount of axial or translational
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maneuvering by a mechanic or other individual in placing the pad into the
caliper to overcome slight manufacturing imperfections or tolerances in any
of the brake components.” Answer 6.
I do not agree with my colleague that the term “solely,” within the
context of the language at issue in the claims rejected as lacking written
description support, precludes insertion of the pad and pad spring in another
direction. Such an interpretation might be appropriate, in my opinion, if the
term “solely” preceded “by employing.” Positioned as it is in the clause in
question, the term “solely” modifies “radially inward motion.” As such, I
construe the language in question as requiring that the abutment surface be
configured to permit the brake pad to be fitted into the carrier by employing
a solely radially inward motion, without the need for movement in any other
direction in addition to the radially inward motion. The language in question
does not preclude capability of fitting the pad into the carrier in some other
manner, by motion in some other direction.
The Appellant’s Specification states, in paragraph 12, that “the pad
spring is configured to permit the brake disc pad to be mounted to the brake
carrier in an inward radial direction with the spring pad fitted thereto” and,
in paragraph 13, that the “subassembly can then be mounted to the brake
carrier in a radially inward direction.” While the Examiner correctly notes
that the term “solely” does not appear in either of these statements, I find
that a person of ordinary skill in the art would readily appreciate from these
statements and the illustration in Figure 14 that the pad spring, with the pad
attached thereto, can be easily slid over the top of the carrier 812 down the
carrier until the spring legs 860 engage the slot 864. Accordingly, the
disclosure in the Appellant’s application, as originally filed, is sufficient to
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reasonably convey to a person of ordinary skill in the art that the Appellant
was in possession of the invention as now claimed, at the time the
application was filed.

The Obviousness Rejection
I agree with my colleague that the Appellant’s argument that Asquith
does not disclose installation of springs in a solely radial direction because
the transversely extending tag portions 44 would clearly hit bridging
portions 18a, 18b (Br. 9) does not demonstrate error in the Examiner’s
rejection of claim 1. I reach this conclusion for three reasons. First, claim 1
does not require a step of installing the pad spring in a solely radial
direction. Rather, claim 1 merely requires that the abutment surface be
configured such that, when secured to the brake pad, the brake pad can be
fitted into the carrier by employing a solely radially inward motion. Second,
the Examiner’s rejection is not based on the teachings of Asquith alone.
Rather, the rejection is based upon the teachings of Asquith in combination
with Takeo. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Third, while Asquith’s tag portions 44 are adapted to
engage under the bridge portions 18a, 18b (col. 3, ll. 50-55), they are also
capable of being pushed inward to be released from engagement with the
bridge portions (col. 3, ll. 57-61). A person of ordinary skill in the art would
readily appreciate that the portions of the guides above the tag portions, as
illustrated in Figures 1 and 3, could be made resilient so as to permit the tag
portions to slide past the bridging portions 18a, 18b upon insertion and snap
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Appeal 2008-2683
Application 10/607,427

back to secure the guides in place. In fact, a person of ordinary skill in the
art would likely have inferred such resilience from the description of the
guide as comprising a “spring member” (col. 3, ll. 6-7 and 56).
Nor does the Appellant’s argument on page 11 of the Appeal Brief
that modification of Asquith to attach the spring members to the brake pad
as taught by Takeo would defeat the benefits of Asquith with regard to the
specific spring attachment configuration demonstrate error in the Examiner’s
rejection. As noted above, the provision of a resilient guide or “spring
member” permits the tag portions to be moved inwardly to slide past the
bridging portions during insertion and, once fully inserted, to snap back
outward to engage under the bridge portions to keep the guides or “spring
members” firmly secured. Consequently, modification as proposed by the
Examiner to attach the guides or “spring members” to the pad for insertion
together would not defeat the benefits of Asquith with regard to the specific
spring attachment configuration.
I join the majority in all other aspects of the opinion directed to the
obviousness rejection.

JDB
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Appeal 2008-2683
Application 10/607,427

HORNER, Administrative Patent Judge, joining the majority, in part and
joining the concurrence, in part.

I join my concurring colleague in her treatment of the rejection of
claims 1, 2, 7-9, 13, 14, 18, 19, 24, 25, and 30-32 under 35 U.S.C. § 112,
first paragraph. I join the majority in all other aspects of the opinion
directed to the obviousness rejection.

LEH

LV:

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