Ex Parte Imaeda et alDownload PDFPatent Trial and Appeal BoardAug 12, 201311673315 (P.T.A.B. Aug. 12, 2013) Copy Citation 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. 11/673,315 02/09/2007 Hisato IMAEDA GOT 256 2406 23995 7590 08/12/2013 RABIN & Berdo, PC 1101 14TH STREET, NW SUITE 500 WASHINGTON, DC 20005 EXAMINER HSIAO, JAMES K ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 08/12/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte HISATO IMAEDA, MASARU FUKUSHIMA, and KAZUHIKO HAYASHI ____________________ Appeal 2011-006318 Application 11/673,315 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and ADAM V. FLOYD, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006318 Application 11/673,315 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 2, 4-10 and 12-14. Claims 3 and 11 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. THE INVENTION The claims relate to a dust boot for a hydraulic shock absorber. Spec., paras. [0001] – [0002]. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A dust boot covering at least a part of a piston rod projecting from a cylinder or a cylinder fixed member, comprising: a cylindrical bellows comprising crest parts and groove parts which are disposed alternately; wherein, an end of the bellows is supported by a support fixed to an outer surface of the cylinder; the cylinder or the cylinder fixed member comprises a projecting portion as a part which is fixed to the cylinder or the cylinder fixed member and projects into the bellows; the bellows is divided into several sections in the direction of projection of the piston rod, the several sections including a first section which comprises a plurality of some of the crest parts and the groove parts and passes a projecting end of the projecting portion without contacting when the piston rod elongates and contracts with respect to the cylinder, and a second section located between the first section and the support and comprising a plurality of other ones of the crest parts and the groove parts; the inner diameter of all the groove parts in the second section is set to be smaller than the inner Appeal 2011-006318 Application 11/673,315 3 diameter of a groove part located at a boundary between the first section and the second section; and the inner diameter of the groove parts in the first section gradually increases as a distance from the second section along the piston rod increases. REFERENCES Shibata US 6,042,092 Mar. 28, 2000 Ota US 2005/0121860 A1 Jun. 9, 2005 REJECTION Claims 1, 2, 4-10, and 12-14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Shibata and Ota. Ans. 3. ANALYSIS Independent Claim 1 The Examiner found that Shibata discloses all of the limitations of claim 1 except for (1) the inner diameter of the second section’s groove parts1 being smaller than the inner diameter of a groove part located at a boundary between the first and section sections, and (2) the inner diameter of the first section’s groove parts gradually increasing as the distance from the second section along the piston rod increases. Ans. 3-4. The Examiner finds that Ota teaches these limitations. Ans. 4. Appellants dispute, inter alia, that Ota teaches the latter limitation, i.e., a first section having groove parts with gradually increasing inner diameters. Reply Br. 6. According to Appellants, the portion of Ota’s bellows that the Examiner designated as corresponding to the claimed first 1 There appears to be no dispute that “groove parts” refers to the inner parts of the folds of the dust boot’s bellows, disposed alternately with the “crests” of the folds. See App. Br. 3; Ans. 2. The Specification refers to these as the “small diameter parts” and “large diameter parts,” respectively. Spec., para. [0024], fig. 3. Appeal 2011-006318 Application 11/673,315 4 section – portion 52 – contains groove parts that all have the same inner diameter. Id. (citing Ota, fig. 3). We agree. Ota makes clear that each of the groove parts of portion 5 has a “bottom inner peripheral diameter” of “d1.” Ota, para. [0032], fig. 3. Accordingly, the Examiner’s proposed combination of Shibata and Ota does not teach or suggest all of claim 1’s limitations, and the Examiner’s rejection of claim 1 and its dependent claims 2 and 4-10 as obvious over Shibata and Ota is not sustained. Independent Claims 12 and 14 Like independent claim 1, independent claims 12 and 14 require a first bellows portion in which the inner diameter of the groove parts gradually increases as the distance from the second section along the piston rod increases. Because, as stated above, the Examiner’s proposed combination of Shibata and Ota does not teach or suggest this limitation, we do not sustain the Examiner’s rejection of claims 12 and 14, and claim 13, which depends from claim 12, as obvious over Shibata and Ota. DECISION For the above reasons, the Examiner’s rejection of claims 1, 2, 4-10, and 12-14 is reversed. REVERSED hh 2 The Examiner actually designed portions “2 or 5” of Ota’s bellows as corresponding to the claimed first section. Ans. 4 (citing Ota, fig. 3). But Ota’s portion 2 is ring-like and does not have any folds or associated groove parts. Ota, paras. [0028] – [0029]. Copy with citationCopy as parenthetical citation