Ex Parte Crabtree

Board of Patent Appeals and Interferences

Apr 13, 2009

10627034 (B.P.A.I. Apr. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL L. CRABTREE
____________

Appeal 2009-1447
Application 10/627,034
Technology Center 3600
____________

Decided:1 April 13, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-1447
Application 10/627,034

2
STATEMENT OF THE CASE
Michael L. Crabtree (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-3, 12, and 15. Claims 4-11 and
13-14 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002).

THE INVENTION
The Appellant’s invention is drawn towards an air spring having at
least two plies, wherein the helix angle of the cord of the inner ply is greater
than the helix angle of the cord of the outer ply. Specification 1, ll. 10-14
and figs. 1 and 2.
Claim 1 is representative of the claimed invention and reads as
follows:
1. An air spring sleeve comprising:

an elastomer body having first and second ends
configured to be coupled to first and second structures;

a first cord embedded in the elastomer body, the first
cord wound with a first helix angle with respect to a
sleeve centerline and extending from said first end to said
second end;

a second cord embedded in the elastomer body, the
second cord wound with a second helix angle with
respect to a sleeve centerline and extending from said
first end to said second end;

the first helix angle and the second helix angle describe a
differential helix angle;

the first cord is disposed radially inward of the second
cord; and
Appeal 2009-1447
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the first helix angle is greater than the second helix angle.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Hirtreiter US 3,897,941 Aug. 5, 1975
Warmuth, II2 US 4,741,517 May 3, 1988

The Appellant seeks review of the Examiner’s rejection of claims 1-3,
12, and 15 under 35 U.S.C. 103(a) as unpatentable over Warmuth in view of
Hirtreiter.

THE ISSUE
Has the Appellant demonstrated that the Examiner erred in concluding
that it would have been obvious for a person of ordinary skill in the art to
modify the cords of Warmuth in view of the teachings of Hirtreiter such that
the bias (helical) angle of the inner cord is greater than the bias (helical)
angle of the outer cord?

SUMMARY OF DECISION
We REVERSE.

FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d

2 Hereafter referred to as Warmuth.
Appeal 2009-1447
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1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Warmuth discloses an air spring 10 having a cap 12, a piston 14, a
flexible membrane 18, and a fabric restraining cylinder 40. Warmuth,
col. 3, ll. 14-20; col. 3, l. 65 through col. 4, l. 1; and fig. 1.
2. The flexible membrane 18 includes two layers of cords 29 and 31 that
are arranged at predetermined bias angles 25 and 27, respectively.
Warmuth, col. 3, ll. 37-41 and fig. 3B. Similarly, the fabric
restraining cylinder 40 includes two layers of cords 41 and 42 that are
arranged at equal predetermined bias cord angles 45 and 47,
respectively. Warmuth, col. 4, ll. 1-12 and fig. 4B. The bias angles
45 and 47 of the fabric layers of the restraining cylinder 40 are greater
than the biasing angles 25 and 27 of the fabric layers of the flexible
membrane 18. Warmuth, col. 6, ll. 47-51 and figs. 3B and 4B.
3. The fabric restraining cylinder 40 reduces the axial and radial stress in
the rolling portion 32 of the flexible membrane 18. Warmuth, col. 4,
ll. 63-65. In use the flexible membrane 18 forms a meniscus 32 that
rolls up and down the outer periphery of the piston 14 forming a
rolling lobe. Warmuth, col. 3, ll. 53-57 and fig. 1.
4. Hirtreiter discloses an air spring 1 having a flexing portion 11 or 30
and a non-flexing connecting portion 13 or 31. Hirtreiter, col. 4, ll.
42-44; col. 7, ll. 34-41; and figs. 1 and 10. During the operation of the
spring the flexing portion 11 undergoes a flexing rolling motion and
non-flexing connecting portion 13 does not undergo a flexing rolling
motion. Hirtreiter, col. 4, ll. 47-53 and fig. 8.
5. The flexing portion includes fabric layers or plies 7 and 8 having a
plurality of cords 9 that extend along the entire body of the air spring
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1 and are oriented at an “as molded” angle of approximately 35º to
50º. Hirtrieter, col. 4, ll. 27-31 and col. 7, ll. 3-6 and fig. 1. The non-
flexing connecting portion 13 includes cords 17 that are wrapped
around plies 7 and 8 at an “as molded” angle of approximately 20º to
30º to form reinforcement 16. Hirtreiter, col. 4, l. 61-633 and col. 6, l.
68 through col. 7, l. 2 and fig. 1.
6. The cords 17 of the reinforcement 16 in the non-flexing connecting
portion 13 of Hirtrieter are composed of high modulus metal filaments
that are generally less flexible than the cords 9 of the inner plies 7 and
8 and the oriented (biased angle) such as to achieve optimum stiffness
and rigidity. Hirtreiter, col. 5, ll. 5-9 and 43-45.
7. The non-connecting portion 13 reduces buckling or distortion of the
air spring 1 during its compression, i.e., buckling or distortion of the
flexing portion 11. Hirtreiter, col. 5, ll. 2-4; col. 7, ll. 25-33; and figs.
9 and 9A.

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be
patented and the prior art are such that the subject
matter as a whole would have been obvious at the
time the invention was made to a person having
ordinary skill in the art to which said subject
matter pertains.”

3 Hirtreiter refers in col. 4, ll. 61-63 to“reinforcement 16” and
“elements 16.” Emphasis in Hirtreiter. We believe this is a typographical
error and that Hirtreiter is actually referring to elements 17.
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KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, _, 127 S. Ct. 1727, 1734 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at _, 127 S. Ct. at 1734 ("While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.")
The Supreme Court stated that in cases involving more than the
simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement, it will be necessary to "determine whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue." Id. at 1740-41. The Court noted that "[t]o facilitate
review, this analysis should be made explicit." Id. at 1741 (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness")).
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis. In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
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Where the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tec Air Inc. v. Denso Mfg.
Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984). "A reference may be said to teach away
when a person of ordinary skill, upon [examining] the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant." In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

OPINION
The Appellant argues that the Examiner relies on the
helix angle of the steel wire cords 17 of the
connecting portion 13 [of Hirtreiter] for allegedly
teaching that the helix angles of the inner cords of
Warmuth II et al can be larger than the helix angle
of the outer cords.
App. Br. 5. Moreover, according to the Appellant, the combination is
improper because:
the function of the steel wire cords 17 of the
connecting portion 13 [of Hirtreiter] is entirely
different than the fabric cords 29, 31 of Warmuth
II et al. The purpose of the connecting portion 13
of Hirtreiter is specifically disclosed as being “a
non-flexing generally cylindrical connecting
portion 13.”
App. Br. 5. Emphasis in original. See also Reply Br. 2.
In other words, the Appellant is arguing that because the steel wire
cords 17 of Hirtreiter form a “non-flexible portion,” whereas the cords 29
and 31 of Warmuth are part of a flexible membrane, i.e., a flexible portion, a
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person of ordinary skill in the art would not have been prompted to modify
the equally biased (helical) angles of the cords of the flexible membrane 18
of Warmuth with the unequally biased (helical) angles of the “non-flexible”
portion cords of Hirtreiter, as suggested by the Examiner.
As noted above, rejections based on 35 U.S.C. § 103 must rest on a
factual basis and the Examiner has the initial duty of supplying the requisite
factual basis. In this case, the Examiner used the teachings of Hirtreiter
merely to show that it is known to have differential helix angles between the
cords of the inner and the outer layers of an air spring. Ans. 5. Specifically,
the Examiner determined that:
It would have been obvious to one of
ordinary skill in the art to modify the cords of
Warmuth with [a] helix angle of the first cord
[that] is greater than the helix angle of the second
cord and the differential helix angle is in the range
of approximately 0 to 5 degrees or 0 to 2.5
degrees, as taught by Hirtreiter et al., in order to
optimize the dynamic flexibility of the sleeve
depending upon the type of application.
Ans. 4. Emphasis added.
However, the Examiner has not provided any factual basis to show
that modifying the equally biased (helical) angles between the inner and the
outer cords of the flexible membrane (sleeve) of Warmuth with the
differentially biased (helical) angles of the non-flexing connecting portion of
Hirtrieter necessarily optimizes the dynamic flexibility of the flexible
membrane (sleeve) or that a person of ordinary skill in the art would
understand this to be the case. Although the flexible membrane 18 of
Warmuth includes two layers of cords 29 and 31 that are arranged at equal
predetermined biased (helical) cord angles 25 and 27 (FF 2), the Examiner
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Application 10/627,034
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has not provided any factual basis to show that the flexible membrane of
Warmuth lacks dynamic stability.
The dynamic flexibility of the cylindrical sleeve of Warmuth is
determined by other factors in addition to the biased (helical) angles of the
cords. Such factors include the material properties of the cords, the cross-
sectional area of the cords, and the type of loading. Without taking these
factors into consideration, we find that it is not clear that merely providing a
differentially biased (helical) angle between the inner and the outer cords in
the flexible membrane (sleeve) of Warmuth would “optimize the dynamic
flexibility of the sleeve,” as suggested by the Examiner.
Furthermore, we note that the metallic filaments forming the cords 17
and the differentially biased (helical) angle formed between the cords 9 of
the inner plies 7 and 8 and the cords 17 of the outer, reinforcement 16 of
Hirtreiter reduces buckling or distortion of the air spring during its
compression (FF 5-7). As found above, the fabric restraining cylinder 40 of
Warmuth reduces the axial and radial stresses in the rolling meniscus portion
32 of the flexible membrane 18 (FF 3). Hence, since the axial and radial
(hoop) stresses in the flexible membrane 18 of Warmuth are reduced, a
person of ordinary skill in the art would have readily appreciated that the
buckling or distortion of the air spring of Warmuth during its compression is
also reduced. As such, providing a differentially biased (helical) angle, as
taught by Hirtrieter, between the inner and the outer cords of the flexible
membrane of Warmuth, as suggested by the Examiner, appears to be
superfluous.
Moreover, in view of the teachings of Hirtreiter, the same person of
ordinary skill in the art would have reasonably recognized that providing a
differentially biased (helical) angle between the inner and the outer cords of
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the flexible element of Warmuth would increase its stiffness and rigidity,
hence would reduce its ability to form a rolling portion (meniscus 32) that
rolls up and down the outer periphery of the piston, as is required by the air
spring of Warmuth to function as intended.
We thus find that the modification proposed by the Examiner of
providing differentially biased (helical) angles between the inner and the
outer cords of the flexible membrane (sleeve) of Warmuth, as taught by
Hirtreiter, would not have been obvious to the person of ordinary skill in the
art. Moreover, we find that the teachings of Hirtreiter would have
discouraged a person of ordinary skill in the art from providing differentially
biased (helical) angles between the inner and the outer cords of the flexible
membrane (sleeve) of Warmuth.
For the above stated reasons, we conclude that the Appellant has
shown the Examiner erred in the conclusion of obviousness of the subject
matter of claim 1. Therefore, we will not sustain the rejection of claim 1 or
its dependent claims 2, 3, 12, and 15 under 35 U.S.C. § 103(a) as
unpatentable over Warmuth in view of Hirtreiter. See In re Fine, 837 F.2d
1071, 1076 (Fed. Cir. 1988) (If an independent claim is nonobvious under 35
U.S.C. § 103, then any claim dependent therefrom is nonobvious).

CONCLUSION
The Appellant has demonstrated that the Examiner erred in
concluding that it would have been obvious for a person of ordinary skill in
the art to modify the cords of Warmuth, in view of the teachings of
Hirtreiter, such that the bias (helical) angle of the inner cord is greater than
the bias (helical) angle of the outer cord.

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DECISION
The decision of the Examiner to reject claims 1-3, 12, and 15 is
reversed.

REVERSED

mls

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