Shimano Inc.

Patent Trials and Appeals Board

Apr 27, 2020

14712082 - (D) (P.T.A.B. Apr. 27, 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.
14/712,082 05/14/2015 Akio NAGAI SN-US155391 2382
22919 7590 04/27/2020
GLOBAL IP COUNSELORS, LLP
David Tarnoff
1233 20TH STREET, NW
Suite 600
WASHINGTON, DC 20036-2680
EXAMINER
SCHWARTZ, CHRISTOPHER P
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
04/27/2020 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):
mailpto@giplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKIO NAGAI, WATARU YAMAUCHI, TORU IWAI
Appeal 2019-000059
Application 14/712,082
Technology Center 3600
Before DANIEL S. SONG, CHARLES N. GREENHUT, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from the
Examiner’s decision to reject claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Shimano, Inc.
Appeal Br. 3.
2 Appellant presented arguments during a hearing conducted by telephone on
April 2, 2020.
Appeal 2019-000059
Application 14/712,082
2
CLAIMED SUBJECT MATTER
The claims are directed to a bicycle disc brake rotor.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter.
1. A bicycle disc brake rotor comprising:
a main body made of a metallic material and including an
outer portion, an inner portion and a cooling facilitation part, the
outer portion having oppositely facing braking surfaces; and
a heat release layer formed on a surface of the main body
such that the heat release layer at least partially overlies the
cooling facilitation part, the heat release layer including a
nonmetallic material selected from the group consisting of
alumite, a phenolic resin, an epoxy resin, an unsaturated
polyester resin, a vinyl ester resin, a diallyl phthalate resin, and a
polyimide resin.
Appeal Br. 13 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Norton US 1,924,622 Aug. 29, 1933
Takakusagi US 2003/0089563 A1 May 15, 2003
Iwai US 2013/0168193 A1 July 4, 2013
REJECTION
Claims 1–21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Iwai, Takakusagi, and Norton.

Appeal 2019-000059
Application 14/712,082
3
OPINION
The Examiner finds that Iwai discloses many of the elements recited
in claim 1, including a cooling facilitation part (cooling fin 24, fin portions
24a), but does not disclose “a heat release layer that includes a nonmetallic
material and that the layer overlies the cooling facilitation part or cooling
fins 24, 24a.” Final Act. 3. To address this deficiency in Iwai, the Examiner
finds “Takakusagi teaches it is known to use resin based coatings to prevent
corrosion and reduce vibrations.” Id.
Appellant argues that the epoxy resin disclosed by Takakusagi
contains aluminum zinc phosphomolybdate, and, therefore, fails to qualify
as a “non-metallic” material as required by claim 1. Appeal Br. 9 (citing
Takakusagi, Abstract, Spec. ¶¶ 6, 10).
In response, the Examiner states:
The Publication to [Takakusagi] also teaches a brake rotor
but with the hub 6 covered with a rust preventive epoxy resin
based paint . . . Appellant’s open ended language/limitation of
“the heat release layer including a non-metallic material selected
from the group consisting of ...” does not preclude the use of
metallic materials. Therefore the aforesaid limitation in
[A]ppellant’s independent claims does not overcome the
combined teachings of the layer in Takakusagi and Norton.
Ans. 7. Thus, the Examiner determines that the heat release layer recited in
claim 1 may include metal.
Appellant replies that the Examiner’s response does not fully address
the argument because the proposed combination of the teachings of Iwai and
Takakusagi fails to provide a non-metallic material as required by claim 1.
See Reply Br. 3–4.
Although we agree with the Examiner that claim 1 does not preclude
the use of metal in the heat release layer, Appellant has the better position
Appeal 2019-000059
Application 14/712,082
4
because claim 1 explicitly requires a non-metallic material in the heat release
layer. The Examiner has not established by a preponderance of the evidence
that a person of ordinary skill in the art would consider the epoxy resin
disclosed by Takakusagi to be a non-metallic material. To the extent that the
Examiner relies on Takakusagi’s epoxy resin, as a whole, as a teaching of
non-metallic material, Appellant’s identification of aluminum zinc
phosphomolybdate in Takakusagi’s epoxy resin (Appeal Br. 9) substantially
undermines (albeit not conclusively), any finding that the epoxy resin of
Takakusagi qualifies as non-metallic.3
To the extent that the Examiner relies on the portion of Takakusagi’s
epoxy resin that is not aluminum zinc phosphomolybdate to meet the
requirement in claim 1 for a non-metallic material, this interpretation of
“non-metallic” is unreasonably broad. Such an interpretation would mean
that providing any material that includes a constituent component that is not
metal, i.e., providing anything other than completely pure metal, amounts to
providing a non-metallic material.
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
and claims 2–14 and 17–21 depending therefrom, as unpatentable over Iwai,
Takakusagi, and Norton. Claims 15 and 16 independently also recite the
limitation discussed above regarding claim 1, and the Examiner relies on the
same findings of fact in rejecting these claims. See Appeal Br. 15–16
(Claims App.); Final Act. 3–4. Accordingly, we do not sustain the rejection
of claims 15 and 16 as unpatentable over Iwai, Takakusagi, and Norton.

3 For example, it is unlikely that a person of ordinary skill in the art would
consider rum or vodka to be non-alcoholic liquids despite the fact that
alcohol comprises only 40% of their volumes.
Appeal 2019-000059
Application 14/712,082
5

CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–21 103(a) Iwai, Takakusagi,
Norton
1–21
REVERSED