KIC LLC

Patent Trials and Appeals Board

May 12, 2020

2019005217 (P.T.A.B. May. 12, 2020)

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.
15/400,650 01/06/2017 Omar J. Fakhoury 405379-0053 5682
20575 7590 05/12/2020
Miller Nash Graham & Dunn
3400 U.S. Bancorp Tower
111 SW Fifth Avenue
Portland, OR 97204
EXAMINER
WILLIAMS, THOMAS J
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
05/12/2020 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):
eofficeaction@appcoll.com
patdocketing@millernash.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OMAR J. FAKHOURY and YI GE
____________

Appeal 2019-0052171
Application 15/400,6502
Technology Center 3600
____________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 6, and 8–13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our Decision references Appellant’s Specification (“Spec.,” filed Jan. 6,
2017) and Appeal Brief (“Appeal Br.,” filed Feb. 12, 2019), and the
Examiner’s Answer (“Ans.,” mailed Apr. 12, 2019) and Final Office Action
(“Final Act.,” mailed Sept. 28, 2018). Appellant has not filed a Reply Brief.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the Applicant, KIC, LLC as the real
party in interest. Appeal Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention relates to a dual-connection disc brake
rotor that both improves the heat dissipation between the discs and reduces
the thermal differential between the discs. Spec. ¶¶ 2, 16.
Claims 1 and 6 are the independent claims on appeal. Claims 1 and 6,
reproduced below with emphasis added to the language at issue, are
illustrative of the claimed subject matter:
1. A dual-connection disc brake rotor comprising:
a substantially tubular rotor body;
a first annular braking disc directly connected to the rotor
body at an inner periphery of the first braking disc;
a second annular braking disc directly connected to the
rotor body at an inner periphery of the second braking disc and
positioned a distance axially from the first braking disc,
forming a space between the first braking disc and the second
braking disc;
a plurality of vanes disposed within the space and axially
interconnecting the first braking disc and the second braking
disc;
axial passageways disposed around the inner periphery of
the first disc and the inner periphery of the second disc, each
axial passageway extending axially through the first disc and
the second disc, connecting the space to a first region exterior to
the rotor body and adjacent to the inner periphery of the first
disc, and connecting the space to a second region exterior to the
rotor body and adjacent to the inner periphery of the second
disc, an axial height of the radial passageways being
substantially equal to the distance between the first braking disc
and the second braking disc; and
radial passageways aligned with the space and extending
radially through the rotor body, connecting the space to a region
interior to the rotor body encircled by an inner diameter of the
rotor body, the axial passageways being radially aligned with
and intersecting the radial passageways.

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6. A dual-connection disc brake rotor comprising:
a substantially tubular rotor body;
a first annular braking disc directly connected to the rotor
body at an inner periphery of the first braking disc;
a second annular braking disc directly connected to the
rotor body at an inner periphery of the second braking disc and
positioned a distance axially from the first braking disc,
forming a space between the first braking disc and the second
braking disc;
a plurality of vanes disposed within the space and axially
interconnecting the first braking disc and the second braking
disc;
alternating axial passageways, the alternating axial
passageways comprising:
first axial passageways disposed around the inner
periphery of the first disc, the first axial passageways
extending axially through the first disc but not the second
disc and connecting the space to a first region exterior to
the rotor body and adjacent to the inner periphery of the
first disc; and
second axial passageways disposed around the
inner periphery of the second disc, the second axial
passageways extending axially through the second disc
but not the first disc and connecting the space to a second
region exterior to the rotor body and adjacent to the inner
periphery of the second disc, the second axial
passageways not being radially aligned with the first
axial passageways; and
radial passageways aligned with the space and extending
radially through the rotor body, connecting the space to a region
interior to the rotor body encircled by an inner diameter of the
rotor body, in which one of the first axial passageways or the
second axial passageways are radially aligned with and
intersect the radial passageways.

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REJECTION
Claims 1, 6, and 8–13 are rejected under 35 U.S.C. § 103 as
unpatentable over Suzuki (US 5,161,652, iss. Nov. 10, 1992) and Tack
(US 2,380,085, iss. July 10, 1945).

ANALYSIS
Independent Claim 1, and Dependent Claims 12 and 13
Appellant argues independent claim 1 and dependent claims 12 and 13
as a group. Appeal Br. 8–19. We select independent claim 1 as
representative, and dependent claims 12 and 13 stand or fall with
independent claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
We are not persuaded by Appellant’s arguments that the Examiner has
not demonstrated Suzuki and Tack teach or suggest a dual-disc brake rotor
having “axial passageways disposed around the inner periphery of the first
disc and the inner periphery of the second disc, each axial passageway
extending axially through the first disc and the second disc” and being
“radially aligned with and intersecting the radial passageways,” as recited in
claim 1. Appeal Br. 8–19.
By way of background, Suzuki describes brake rotor 1 having central
hub 3 with a cylindrical main part. Suzuki 2:49–51, Fig. 1. From the
cylindrical main part extends a pair of friction plates 5a, 5b axially spaced
from each other by a plurality of radial ribs 6a, 6b. Id. at 2:53–57, Figs. 1–3.
Radial ribs 6a connect with central hub 3, and radial ribs 6b do not. Id. at
2:66–67, 3:11–12, Figs. 1, 3. Radial ribs 6a, 6b define a plurality of radial
slots 7 therebetween. Id. at 2:56–58, Figs. 1, 3. Arcuate slots 10 extend in
friction plate 5a between opposing surfaces of base end portions of adjacent
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radial ribs 6a, and communicate with radial slots 7. Id. at 3:6–9, Figs. 1–3.
And radial slots 7 communicate with an interior of central hub 3 by way of
holes 8, which extend radially through the cylindrical wall of cylindrical
central hub 3 along extension lines of radial ribs 6b. Id. at 2:59–62,
2:66–67, Figs. 1–3. Figures 1 and 2 depict holes 8 radially aligned and
intersecting with arcuate slots 10. Small holes 11 are provided in friction
plate 5b, each small hole 11 opposing an end portion of each slot 10. Id. at
3:13–16, Figs. 2–3. Small holes 11 “permit easy removal of sand after
casting” and “promote air flow through the slots 7.” Id. at 3:16–18
(emphasis omitted). Small holes 11 “may be related to the slots 10 . . . in
different ways, and their size may be selected according to the amount of air
flow required.” Id. at 3:35–38 (emphasis omitted). For example, in one
embodiment holes 8 are omitted. Id. at 3:39–40. In that embodiment,
openings 11 are not formed as small holes, but instead are formed like
arcuate slots 10 in friction plate 5a “to ensure a sufficient air flow in radial
slots 7.” Id. at 3:40–43 (“[I]t is desirable to provide openings [11]
comparable to the slots [10] in both the friction plates.”).
Tack describes a disc brake rotor including cylindrical, annular
support member 2 and a pair of spaced annular friction plates 8, 10
integrally formed on an outer periphery of member 2. Tack 1, col. 1, ll. 41–
57, Fig. 1. Blades 14, 14 extend between plates 8, 10. Id. at 1, col. 1, ll. 58–
59. Aligned openings 16, 16 are formed in plates 8, 10 adjacent their
juncture with member 2. Id. at 1, col. 2, ll. 8–10. Openings 18, 18 are
formed in member 2. Id. at 1, col. 2, ll. 10–11, Fig. 2. All openings serve as
air inlets and communicate with chamber 20 between plates 8, 10. Id. at 1,
col. 2, ll. 11–14, Figs. 2, 3. Openings 16, 16 are formed in alternating
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relationship with openings 18, 18 at opposite sides of each of blades 14, 14.
Id. at 1, col. 2, ll. 14–20, Figs. 1, 2. Aligned openings 16, 16 “afford air
inlets in the side of the brake ring adjacent the member to which the rotor is
secured . . . , thus affording air intake from what is normally a dead space
between the rotor and the associated supporting member.” Id. at 1, col. 2, ll.
30–36.
In rejecting claim 1 under 35 U.S.C. § 103, the Examiner found that
Suzuki’s arcuate slots 10 and holes 11 teach the claimed axial passageways.
Final Act. 3. Specifically, the Examiner found that small holes 11 and
arcuate slots 10 together form axial passageways extending axially through
first disc 5b and second disc 5a, and that arcuate slots 10 are radially aligned
with and intersect radial passageways 8. Id. The Examiner determined that
it would have been obvious to one of ordinary skill in the art to modify
Suzuki’s small holes 11 to a size substantially equal to arcuate slots 10 to
increase airflow. Id. at 3–4. And the Examiner found that small holes 11,
once modified to a size substantially equal to arcuate slots, also would
radially align with and intersect radial passageways. Id. at 4.
Appellant’s arguments fail to persuade us of Examiner error. For
example, Appellant argues Suzuki does not teach that each axial passageway
extends axially through the first disc and the second disc, as required by
claim 1. See Appeal Br. 8–10. In particular, Appellant asserts that Suzuki
discloses arcuate slot 10 extending through friction plate 5a, but not friction
plate 5b, and small holes 11 extending through friction plate 5b, but not
friction plate 5a. Id. at 8–9 (citing Suzuki 3:6–8, 13–15, Fig. 2); see also id.
at 10 (“[I]n the rejection of independent claim 6 the [E]xaminer agrees that
‘Suzuki teaches … axial passageways 10 and 11 that extend only through a
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respective disc.’” (quoting Final Act. 5) (emphasis omitted)). However, as
described above, the Examiner determines that it would have been obvious
to modify Suzuki’s small holes 11 to have the same size and shape of
arcuate slot 10, and finds that Suzuki’s modified holes 11 and arcuate slots
10 combined disclose the recited axial passageways.
Appellant also argues that Suzuki does not teach that “the axial
passageways [are] radially aligned with and intersecting the radial
passageways,” as recited in claim 1. Appeal Br. 10–11. Specifically,
Appellant contends that small holes 11 are radially offset from holes 8. Id.
at 11 (citing Suzuki, Fig. 3). However, as set forth above, the Examiner
determines that it would have been obvious to modify the size and shape of
small holes 11 to be comparable to arcuate slots 10, and the Examiner finds
that modified holes 11 would be radially aligned with and intersect radial
passageways. For example, modified holes 11, like arcuate slots 10, would
extend between opposing surfaces of base end portions of adjacent radial
ribs 6a. See Suzuki 3:6–9, Figs. 1–3.
Appellant argues Tack does not teach that axial passageways have the
same cross-sectional area. Appeal Br. 12–14 (citing Final Act. 3). In this
regard, Appellant acknowledges that Tack teaches aligned openings 16, 16
formed in plates 8, 10 adjacent to member 2. Appeal Br. 13 (citing Tack 1,
col. 2, ll. 8–14, Fig. 2). But Appellant contends that Tack “does not discuss
the relative sizes between each hole in the pair of holes 16, 16.” Id. (citing
Tack 1, col. 2, ll. 8–36). Appellant also argues that the Examiner improperly
relies on the drawings for “precise proportions of the different holes 16, 16.”
Id. at 13–14.
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Yet, the Examiner does not rely on Tack’s drawings of aligned
openings 16, 16 for “precise” proportions, nor does the Examiner propose
modifying Suzuki’s holes 11 to a “precise” size. Instead, the Examiner finds
that Suzuki teaches that small holes 11 may be modified in size (Final Act. 3
(citing Suzuki 3:34–39)), and determines that it would have been obvious to
modify Suzuki’s holes 11, which are described as adjustable, “to a size
substantially equal that of axial passageways 10” in light of Tack’s aligned
openings 16, 16 having the same cross-sectional area (Final Act. 3–4
(emphasis added); see also Ans. 4 (finding that Tack’s aligned openings 16,
16 have “substantially the same or similar cross-sectional areas”)). At least
in Tack’s Figure 2, opening 16 in plate 8 and opening 16 in plate 12 appear
to have the same cross-sectional area. See also In re Aslanian, 590 F.2d
911, 914 (CCPA 1979) (explaining drawings can be relied upon for what
they reasonably disclose and suggest to one of ordinary skill in the art); In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (explaining that the things patent
drawings show clearly cannot be disregarded). Moreover, by using the same
reference numeral for each of the aligned openings 16, 16, Tack indicates
these holes are substantially similar.
Appellant argues that the Examiner errs in finding Suzuki teaches that
the size of holes 11 can be modified according to the amount of airflow
required. Appeal Br. 15–17. In this regard, Appellant first asserts that it is
unclear from the cited passage of Suzuki whether holes 11 or slots 10 are
adjustable. Id. at 15 (citing Suzuki 3:34–39; Final Act. 3). However, we
agree with the Examiner that the cited passage clearly refers to holes 11 as
adjustable. Ans. 5; see also Suzuki 3:34–39.
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Appellant next argues that enlarging Suzuki’s small holes 11 would
require moving small holes away from ribs 6a. Appeal Br. 15–16 (citing
Suzuki, Fig. 3). Appellant further contends that Suzuki suggests against
moving holes 11, because holes 11 serve to remove sand after a casting
process and their relocation would interfere with this removal. Yet,
modifying holes 11 to be substantially the same size as arcuate slots 10, as
proposed by the Examiner, would not require relocating holes 11. Instead, it
would require forming small holes 11 to be substantially similar to arcuate
slots 10. Like arcuate slots 10, modified holes 11 would extend between
adjacent ribs 6a at the base end of ribs 6a. See Suzuki 3:9–11, Fig. 3.
Therefore, slots 10 and modified holes 11 together would form axial
passageways radially aligned with and intersecting radial passageways 8.
Appellant argues Tack does not teach that axial passageways having
the same cross-sectional area facilitate uniform cooling or a sufficient
airflow path from both sides of the disc. Appeal Br. 17–19. Specifically,
Appellant contends that “the benefit of the device of Tack is because the
openings 16, 16 do not align axially with the openings 18, 18. If the two
different openings did align axially, the openings would not be able to
provide air flow over both sides of the blades 14 of Tack.” Appeal Br. 18.
Appellant also contends that “Tack does not provide a link between axial
passageways having the same cross-sectional area and some improvement or
purpose that might motivate a person of ordinary skill in the art.” Id. at 19.
Yet, the Examiner’s rejection does not modify Suzuki to provide an
airflow analogous to that in Tack (e.g., over both sides of the blades) or
otherwise rely on openings 18. Instead, the Examiner only relies on Tack as
further support for enlarging Suzuki’s small holes 11 to be substantially the
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same size as arcuate slots 10 to increase airflow from the first disc side. See
Final Act. 3–4; see also Ans. 5–6. As described above, Suzuki teaches
adjusting small holes 11 according to the amount of airflow required, and
further discloses that it is desirable to provide small holes 11 as comparable
to arcuate slots 10 when holes 8 are omitted to ensure sufficient air flow.
See Suzuki 3:35–43. These teachings suggest that it is possible to adjust
Suzuki’s small holes 11 to form arcuate slots comparable to arcuate slots 10
to maximize airflow. Tack, meanwhile, teaches that corresponding aligned
openings 16, 16, provide airflow where there normally is a dead space (see
Tack 1, col. 2, ll. 30–36), thereby cooling at least one side of the blade.
Here, the Examiner provided articulated reasoning with rationale
underpinning to support forming Suzuki’s small holes 11 as arcuate slots
aligned with arcuate slots 10 and, thus, radially aligned with and intersecting
radial holes 8, to increase airflow. Appellant does not persuasively rebut the
Examiner’s findings and rationale.
Therefore, we sustain the rejection under 35 U.S.C. § 103 of
independent claim 1, and claims dependent claims 12 and 13, which fall
with claim 1.
Independent Claim 6, and Dependent Claims 8–11
Appellant argues independent claim 6 and dependent claims 8–11 as a
group. Appeal Br. 19–24. We select independent claim 6 as representative,
and dependent claims 8–11 stand or fall with independent claim 6.
37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 6, the Examiner primarily relies on a second
embodiment of Tack’s disc brake rotor that is described with reference to
Tack’s Figures 4 to 6. See Final Act. 4–5 (citing Tack, Fig. 4); see also
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Tack 1, col. 2, ll. 53–52 (describing that a modification of the rotor is shown
in Figures 4 to 6). Unlike the first embodiment described above with
reference to Figures 1 through 3 of Tack, the second embodiment does not
include holes 18 in the cylindrical annular support member. Compare Tack,
Fig. 2 with id. at Fig. 4.
In the second embodiment, Tack describes a disc brake rotor
including cylindrical annular support member 102 and a pair of spaced
annular friction plates 108 and 110 integrally formed on the periphery of
member 102 with chamber 116 between the plates. Id. at 1, col. 2, ll. 53–2,
col. 1, l. 2; 2, col. 1, ll. 8–9, Fig. 4. Blades 112 are radially disposed
between plates 108 and 110. Id. at 2, col. 1, ll. 2–4, Fig. 4. Plate 108 has a
plurality of openings 114 on one side of blade 112 communicating with
chamber 116, and plate 110 has a plurality of openings 118 on the opposite
side of blade 112 communicating with chamber 116. Id. at 2, col. 1,
ll. 6–16, Figs. 4, 6.
The Examiner found that Tack’s second embodiment teaches first
axial passageways 114 that extend axially through first disc 108 but not
second disc 110, and second axial passageways 118 that extend axially
through second disc 110 but not first disc 108. Final Act. 4–5 (citing Tack,
Fig. 4). The Examiner further found that second axial passageways 118 are
not radially aligned with first axial passageways 114. Id. at 4–5. The
Examiner acknowledged that Tack’s second embodiment does not teach the
claimed radial passageways, as recited in claim 6. Id. at 5.
However, the Examiner found that Tack’s first embodiment teaches
radial passageways 18 extending through the rotor body and aligned with
axial passageways. Id. (citing Tack, Fig. 2). The Examiner also found that
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Suzuki teaches “a disc brake rotor having axial passageways 10 and 11 that
extend only through a respective disc, with a radial passageway [8] that is
aligned with and intersects at least one axial passageway 10.” Id. The
Examiner determines that the teachings of Tack and Suzuki together suggest
the use of radial passageways in a rotor body for moving air out and between
adjacent discs. Id. Therefore, the Examiner concludes that it would have
been obvious to extend the teachings of radial passageways in Figure 2 of
Tack to the embodiment shown in Figure 4 of Tack.
Appellant argues that the Examiner erred in rejecting claim 6 under 35
U.S.C. § 103, because the Examiner has not presented adequate reasoning
for combining Tack and Suzuki to arrive at the invention, as recited in claim
6. Appeal Br. 20–24. Specifically, Appellant contends that “the
embodiments shown in Figures 2 and 4 of Tack and the device of Suzuki
already independently provide a device for enhanced cooling by moving air
out and between the discs.” Id. at 21. For example, Appellant argues that
opening 114 of Tack’s Figure 4 provides air to one side of blade 112, while
opening 118 provides air to the other side of blade 112, affording equalized
cooling of the plates and reducing undesirable stress. Id. at 22 (citing Tack,
2, col. 1, ll. 13–26). Appellant contends that “the openings 18 in Figure 2 of
Tack (in the modification proposed by the [E]xaminer) would be redundant
to the openings 118 in Figure 4 of Tack, providing no additional benefit.”
Id. at 23.
However, here, the record supports the Examiner’s finding that it was
known that having both axial and radial passages in the brake disc improves
overall cooling. See Ans. 7 (“[Appellant’s] remarks regarding instant claim
6 fail to acknowledge that having more air flow passages results in greater
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air flow about the brake disc,” and “simply providing both axial and radial
passages in the brake disc results in greater flow about the brake disc.”). For
example, Suzuki describes the radial holes and axial openings individually
as useful for “improved cooling effect,” and particularly when combined.
Suzuki 2:19–21, 32–35.
Therefore, we are not persuaded that the Examiner erred in
determining that one of ordinary skill in the art would have had reason to
modify Tack’s disc brake rotor to include radial passageways extending
through the rotor body. Accordingly, we sustain the rejection under 35
U.S.C. § 103 of independent claim 6 and dependent claims 8–11, which fall
with claim 6.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
1, 6, 8–13 103 Suzuki, Tack 1, 6, 8–13

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED