NTN CORPORATION

Patent Trials and Appeals Board

May 28, 2021

2021000201 (P.T.A.B. May. 28, 2021)

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.
15/342,611 11/03/2016 Yui MASUDA 1761.1358 9868
21171 7590 05/28/2021
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
BOWES, STEPHEN M
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
05/28/2021 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUI MASUDA

Appeal 2021-000201
Application 15/342,611
Technology Center 3600
Before WILLIAM A. CAPP, JILL D. HILL, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 4–9. Appeal Br. 1.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies NTN Corporation as the real party in interest.
Appeal Br. 3.
2 Claim 2 is cancelled and claim 3 is withdrawn. See Appeal Br. 15–16
(Claims App.).
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Application 15/342,611

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CLAIMED SUBJECT MATTER
The application is titled “Electric Brake Device.” Spec. 1
(capitalization omitted). Claim 1 is the sole independent claim. Appeal
Br. 15–16 (Claims App.). We reproduce claims 1 and 6, below, with
emphases added to particular language discussed in this Decision:
1. An electric brake device comprising:
a brake rotor configured to rotate in conjunction with a
wheel;
a friction pad configured to come into contact with the
brake rotor to generate a braking force;
an electric motor;
a conversion mechanism configured to convert an output
of the motor into a pressing force of the friction pad;
a braking force command section configured to output a
braking force command value that is a target value; and
a brake controller configured to drive the motor in
accordance with the braking force command value, wherein
the brake controller is provided with a positive efficiency
operation limiter configured to provide a time for maintaining or
decreasing a torque to be generated by the motor, according to
limiting a ratio of a time for increasing the braking force, relative
to a sum of the time for increasing the braking force and the time
for maintaining or decreasing the braking force, to a
predetermined value or less such that a braking force generated
by pressing between the brake rotor and the friction pad does not
decrease, while the braking force command value outputted from
the braking force command section increases.

6. The electric brake device as claimed in claim 1, further
comprising a braking force-corresponding limitation degree
change section configured to decrease a ratio of a time for
increasing the braking force relative to a sum of the time for
increasing the braking force and the time for maintaining or
decreasing the braking force, as the braking force increases.

Appeal Br. 15–16 (Claims App.) (emphases added).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Watanabe US 2008/0091326 A1 Apr. 17, 2008
Nakayama US 8,111,027 B2 Feb. 7, 2012
Nohira US 2014/0200784 A1 July 17, 2014
See Non-Final Act. 2–8.
REJECTIONS
The following rejections are before us on appeal:
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 4–9 103 Watanabe, Nohira, Nakayama
6 112(a) Enablement
See Final Act. 3–8.
OPINION
1. Rejection – Watanabe, Nohira, Nakayama
The Examiner rejects claims 1 and 4–9 as unpatentable over
Watanabe in view of Nohira and Nakayama. Final Act. 4. Appellant argues
these claims as a group. See Appeal Br. 9–12. We select independent
claim 1 as the representative claim, with claims 4–9 standing or falling with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

a. Examiner’s Rejection
In rejecting claim 1, the Examiner finds that Watanabe discloses an
electric brake device including several of the claimed features, referencing
Watanabe’s Figure 3 (see Final Act. 4–5), which we reproduce, below:
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Figure 3 illustrates an electro-mechanical brake system. See Watanabe
¶¶ 18, 19. The Examiner finds that Watanabe discloses brake rotor 1231,
friction pads 1306, 1307 configured to come into contact with the brake
rotor to generate a braking force, and conversion mechanism 1326, 1321
configured to convert an output of the motor into a pressing force of the
friction pad. Final Act. 4. The Examiner also finds that Watanabe discloses,
a brake controller . . . configured to drive the motor in accordance
with the braking force command value, wherein the brake
controller is provided with a positive efficiency operation limiter
configured to provide a time for maintaining or decreasing a
torque to be generated by the motor, according to a determined
condition such that a braking force generated by pressing
between the brake rotor and the friction pad does not decrease,
while the braking force command value outputted from the
braking force command section is applied.
Id. at 4–5 (citing Watanabe ¶¶ 101, 102, 125). The Examiner acknowledges,
however, that “Watanabe et al does not disclose wherein the excessive
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braking request increases or limiting a ratio of a time for increasing the
braking force, relative to a sum of the time for increasing the braking force
and the time for maintaining or decreasing the braking force, to a
predetermined value or less.” Id. at 5 (emphasis added).
To address this shortcoming, the Examiner relies on Nohira’s and
Nakayama’s teachings. See id.
As to Nohira, the Examiner finds that Nohira discloses a “vehicle
braking control device wherein a braking force generated by pressing
between the brake rotor and the friction pad does not decrease, while the
braking force command value outputted from the braking force command
section increases.” Id. (citing Nohira ¶ 53). In combining Watanabe with
Nohira’s teachings, the Examiner reasons that a skilled artisan would have
modified the braking system of Watanabe “by suppressing the braking force
increase under both steady and increasing braking requests as taught by
Nohira . . . in order to maintain vehicle control.” Id.
As to Nakayama, the Examiner finds that Nakayama discloses a
“motor drive device limiting a ratio of a time for increasing the braking
force, relative to a sum of the time for increasing the braking force and the
time for maintaining or decreasing the braking force, to a predetermined
value or less.” Id. (citing Nakayama, 2:18–38). In further combining
Nakayama’s teachings, the Examiner reasons that a skilled artisan would
have further modified Watanabe’s braking system “by reducing motor
output with shorter driving times rather than lower current as taught by
Nakayama in order to prevent overheating and damage.” Id. at 5–6.

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b. Analysis
In contesting the rejection, Appellant presents the following
arguments.
i. Watanabe and Nohira do not disclose, teach or
suggest to provide a time for maintaining or
decreasing a torque to be generated by the motor,
according to limiting a ratio of a time for
increasing the braking force, relative to a sum of
the time for increasing the braking force and the
time for maintaining or decreasing the braking
force, to a predetermined value or less
First, Appellant argues that
Watanabe and [Nohira] do not disclose, teach or suggest to
provide a time for maintaining or decreasing torque to be
generated by the motor, according to limiting a ratio of time for
increasing the braking force, relative to a sum of the time for
increasing the braking force and the time for maintaining or
decreasing the braking force, to a predetermined value or less.
Appeal Br. 9 (emphasis replaced).
Appellant’s argument is not persuasive.
As correctly explained by the Examiner, “one cannot show
nonobviousness by attacking references individually where the rejections are
based on a combination of references.” Ans. 3–4 (citing In re Keller, 642
F.2d 413 (CCPA 1981); In re Merck & Co., 800 F.2d 1091 (Fed. Cir.
1986)).
In the present case, the Examiner does not rely only on the teachings
of Watanabe and Nohira for satisfying the “ratio of time” portion of the
claimed limitation. See Final Act. 4–6. Indeed, the Examiner acknowledges
that “Watanabe . . . and Nohira . . . do not disclose limiting a ratio of a time
for increasing the braking force, relative to a sum of the time for increasing
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the braking force and the time for maintaining or decreasing the braking
force, to a predetermined value or less.” Id. at 5 (emphasis added). In
addition to Watanabe and Nohira, the Examiner relies on the teachings of
Nakayama to address the claimed limitation. See id. Specifically, the
Examiner relies on Nakayama for disclosing a “motor drive device limiting a
ratio of a time for increasing the braking force.” Id. (emphasis added).
Accordingly, Appellant’s first argument does not identify error in the
Examiner’s rejection.

ii. Nakayama does not disclose, teach or suggest to
provide a time for maintaining or decreasing a
torque to be generated by the motor, according to
limiting a ratio of a time for increasing the
braking force, relative to a sum of the time for
increasing the braking force and the time for
maintaining or decreasing the braking force, to a
predetermined value or less
Next, Appellant argues, “Nakayama does not discuss to provide a time
for maintaining or decreasing torque based on limiting a ratio of increasing
the brake force to a sum of the time for increasing the braking force and the
time for maintaining or decreasing the braking force.” Appeal Br. 11
(emphasis omitted). Appellant explains,
Unlike the cited references, in the electric brake device
recited in clam 1, the current is decreased by using the frictional
force to maintain the pressing force of the conversion
mechanism, thereby allowing the power consumption to be
reduced by reducing loss caused by conductor resistance. In
addition, motor heat generation is suppressed by a reduction in
the motor current, so that improvement of the reliability and size
reduction of the motor are enabled.
Id. at 11–12.
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Appellant’s arguments are not persuasive.
The Examiner relies on Nakayama for disclosing a motor drive device
that limits a ratio of a time for increasing the braking force to a
predetermined value or less. See Final Act. 5 (citing Nakayama, 9:18–38)
(emphasis added); see also Ans. 4 (“Nakayama is relied upon to teach the
concept of running the motor for shorter times as shown most clearly in
Figure 3.”). Nakayama’s Figure 3, which we reproduce below, supports the
Examiner’s finding.

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Figure 3 “is timing plots for illustrating a method of controlling an output
torque in an embodiment.” Nakayama, 4:16–18. In particular, Nakayama
discloses,
More specifically, with reference to FIG. 3, at time t=0,
that alternate current motor Ml is in an overload state is detected.
In response, output torque limitation unit 302 sets torque control
value TR for driving alternate current motor Ml to output
maximal torque T_max from time t1 to time t2, i.e., for a
prescribed period of time dt. Thus an output torque T exhibits
maximal torque T_max only for the prescribed period of time dt,
and once the prescribed period of time dt has elapsed or time t2
has arrived, output torque T gradually decreases.
Id. at 9:18–26 (bold emphasis omitted, italicized emphasis added).
Nakayama teaches gradually decreasing motor output torque after the
maximal torque exceeds a “prescribed period of time dt.” See id. Figure 3
depicts a time (between t1 and t2, or dt) during which the motor’s output
torque is equal to T_max, and after which, the torque decreases to T_std).
We agree with the Examiner that this disclosure “teaches the concept of
running the motor for shorter times . . . [or] less than a predetermined time.”
Ans. 4 (citing Nakayama, Fig. 3). Based on this teaching, we agree with the
Examiner that a skilled artisan would have modified Watanabe’s braking
system “by reducing motor output with shorter driving times rather than
lower current . . . in order to prevent overheating and damage.” Final
Act. 5–6. Indeed, Nakayama further explains that the overload state may
result in “rapidly elevating” temperature. See Nakayama, 9:11–17 (“the
present invention provides . . . intermittent[] output [of] a maximal torque if .
. . motor . . . is in an overload state . . . [to] prevent a particular switching
element from rapidly elevating in temperature”); see also id. at Fig. 3
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(depicting the “temperature of element of inverter” as dropping after
time t2).
As to Appellant’s argument that “[u]nlike the cited references, in the
electric brake device recited in clam 1, the current is decreased by using the
frictional force to maintain the pressing force of the conversion mechanism,”
Appellant’s argument is not commensurate with the scope of claim 1.
Appeal Br. 11–12. Contrary to Appellant’s argument, claim 1 does not
recite language that requires “decreas[ing the current] by using the frictional
force to maintain the pressing force of the conversion mechanism.”
Compare id., with id. at 15 (claim 1). Absent such claim language,
Appellant’s argument does not persuade us that its claims are patentably
distinct from the Examiner’s proposed combination of Watanabe, Nohira,
and Nakayama.
Accordingly, Appellant’s arguments do not identify error in the
Examiner’s rejection.

c. Summary of Rejection Based on Watanabe, Nohira, and
Nakayama
In summary, we affirm the rejection of claim 1, along with
claims 4–9, which fall therewith (see 37 C.F.R. § 41.37(c)(1)(iv)), as
unpatentable over Watanabe, Nohira, and Nakayama.

2. Enablement Rejection of Claim 6
a. Examiner’s Rejection
Claim 6 depends from claim 1 and further comprises, “a braking
force-corresponding limitation degree change section configured to decrease
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a ratio of a time for increasing the braking force relative to a sum of the time
for increasing the braking force and the time for maintaining or decreasing
the braking force, as the braking force increases.” Appeal Br. 16 (Claims
App.).
In rejecting claim 6, the Examiner explains, in the entirety,
“Maintaining the braking force with a reduced motor torque is possible and
supported, but not increasing the brake force with a reduced motor torque, as
claimed (Emphasis added). The invention cannot provide greater braking
force with less electricity than at a lower level of braking.” Final Act. 3.

b. Analysis
Appellant argues that the Examiner has failed to “establish a
reasonable basis to question the enablement provided for the claimed
invention.” Appeal Br. 12 (quoting MPEP § 2164.04 (internal citations
omitted)).
Appellant’s argument is persuasive.
Whether a disclosure would require undue experimentation is a legal
conclusion reached by weighing many factual considerations, including:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of
the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
In the present case, the Examiner failed to adequately explain why the
disclosure is not sufficiently complete to enable one of ordinary skill in the
art to make and use the invention of claim 6 without undue
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experimentation. See In re Wright, 999 F.2d 1557, 1561-62 (Fed.
Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971))
(holding that the USPTO bears the initial burden when rejecting claims for
lack of enablement.). The rejection before us does not mention, let alone
discuss, any of the Wands factors to provide Appellant or the Board with an
indication as to why one would have to engage in undue experimentation to
practice the claimed invention. See Final Act. 3; see also Ans. 4–5.
Although the Examiner is not required to provide a discussion as to
every Wands factor, it is not apparent from the Examiner’s rejection that any
of these factors has been considered or that the Examiner relies on any
evidence sufficient to support the conclusion of lack of enablement. See
Final Act. 3; see also Ans. 4–5.
Specifically, the Examiner fails to address the amount of
experimentation needed to “provide greater braking force with less
electricity than at a lower level of braking.” See Final Act. 3; see also
Ans. 4–5. As best as we can discern, in finding that the “invention cannot
provide greater braking force with less electricity than at a lower level of
braking” (See Final Act. 3; see also Ans. 4–5), the Examiner appears to
correlate braking force with the motor’s current load. Although Appellant
appears to agree that “motor torque is generally in a proportional relation
with the motor current (except for non-linear states such as magnetic
saturation),” Appellant contends that “it is possible to obtain greater braking
force with less electricity after time t3.” Appeal Br. 13. As such, there is a
factual dispute as to whether it is possible to provide greater braking force
with less electricity, and based on the limited discussion in the rejection (see
Final Act. 3; see also Ans. 4–5), we cannot discern whether undue
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experimentation is needed to practice the claimed limitation. See
Wands, 858 F.2d at 737 (“Whether undue experimentation is needed is not a
single, simple factual determination, but rather is a conclusion reached by
weighing many factual considerations.”). Here, the rejection provides no
discussion of the type of motor employed or how the braking force is applied
in relation to the motor current for us to provide any meaningful review. See
Final Act. 2; see also Ans. 4–5.
As such, we reverse the Examiner’s decision to reject claim 6
under 35 U.S.C. § 112(a) for lack of enablement.

CONCLUSION
We affirm the prior art rejection of claims 1 and 4–9 as unpatentable.
We reverse the enablement rejection of claim 6.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 4–9 103 Watanabe, Nohira,
Nakayama
1, 4–9
6 112(a) Enablement 6
Overall
Outcome
1, 4–9
TIME PERIOD FOR RESPONSE
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).

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AFFIRMED