Ex Parte Polando

Patent Trial and Appeal Board

May 25, 2017

13607500 (P.T.A.B. May. 25, 2017)

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.
13/607,500 09/07/2012 Benjamin F. Polando 351961-900901 5418
26379 7590 05/30/2017
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
IMPINK, MOLLIE LLEWELLYN
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
05/30/2017 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):
PatentDocketingU S -Palo Alto @ dlapiper. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN F. POLANDO
Appeal 2016-000342
Application 13/607,500
Technology Center 3700
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Benjamin F. Polando (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims
1—3, 5, and 22 as unpatentable over Hardigg (US 3,690,540, iss. Sept. 12,
1972) and Wylie (US 2,241,026, iss. May 6, 1941); (2) claim 23 as
unpatentable over Hardigg, Wylie, and Nakanishi (US 4,856,626, iss. Aug.
15, 1989); and (3) claims 1, 3, and 5 as unpatentable over Marsh (US
1 We note that the Examiner’s objection to the drawings {see Final Act. 2—3)
is not an appealable matter, but rather is a petitionable matter, and thus is not
within the jurisdiction of the Board. See In re Berger, 279 F.3d 975, 984 (Fed.
Cir. 2002); In re Mindick, 371 F.2d 892, 894 (CCPA 1967); see also Ans. 5.
Appeal 2016-000342
Application 13/607,500
3,892,398, iss. July 1, 1975) and Reynolds (US 4,850,490, iss. July 25,
1989). Claims 6—18, 24, and 25 have been withdrawn from consideration.
Claims 4 and 19-21 have been cancelled. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to shock and vibration dampening
devices for storage and shipping containers. Spec. 12, Fig. 1.
Claim 1, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
1. A dampening device, comprising:
opposing top and bottom walls;
an annular inner side wall extending between the top and
bottom walls;
an annular outer side wall extending between the top and
bottom walls and around the annular inner side wall, wherein at
least one portion of the outer side wall has an outwardly
protruding convex cross sectional shape;
a first threaded hole extending through a center axis of the
top wall;
a second threaded hole extending through a center axis of
the bottom wall;
wherein the inner and outer side walls are formed of a
resilient material that flexes as the top and bottom walls are
compressed toward each other.
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Appeal 2016-000342
Application 13/607,500
ANALYSIS
Obviousness over Hardigg and Wylie
Claims 1—3, 5, and 22
Appellant does not offer arguments in favor of dependent claims 2, 3,
5, and 22 separate from those presented for independent claim 1. See
Appeal Br. 5—8. We select claim 1 as the representative claim, and claims 2,
3, 5, and 22 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant contends that “backing sheet 10 [of Hardigg] is a separate
element attached to the shock isolator element 12,” and backing sheet 10
“attaches to the bottom wall of the shock isolator element, and thus is not a
bottom wall of the shock isolator element 12 from which the annular inner
side wall and the annular outer side wall extend.” Appeal Br. 7 (citing
Hardigg 4:32—37, Fig. 4); see also Reply Br. 4—5.
In this case, the Examiner finds that “[i]n the disclosure of Hardigg,
reference character 10 is reserved solely for the backing sheet. While the
backing sheet is not clearly shown in Figure 4, Figure 4 does have reference
character 10 pointing to the location of the backing sheet.” Ans. 5; see also
Final Act. 3,7. As such, the Examiner finds that “the dampening device
taught by Hardigg does have a bottom wall [the backing sheet, 10] and is
capable of being modified to include a threaded hole.” Ans. 5; see also id. at
2, 6 (the Examiner’s annotated version of Hardigg’s Figure 4); Final Act. 3,
7. Additionally, the Examiner finds that
Hardigg teaches the backing device as being part of an assembly
.... In the instant application, the preamble of claim 1 recites
“a dampening device” which can be reasonably interpreted as an
assembly of parts that together form a dampening device. The
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Appeal 2016-000342
Application 13/607,500
backing sheet taught by Hardigg is considered to be part of an
assembly that is “a dampening device.”
Ans. 5 (citing Hardigg 5:10-15).
The Examiner further clarifies in the Answer that there is
no indication that the modification of the backing sheet [10 of
Hardigg] is intended so that the backing sheet [10] can be
mounted to the shock isolator element [12],... the backing sheet
[10] is considered to be part of an overall dampening device.
Hardigg teaches that the assembly be further mounted. With this
in mind, one of ordinary skill in the art would be motivated to
mount the dampening device (which includes the backing sheet
[10]) to an object in order to provide shock absorbing protection
to that object.
Ans. 6 (citing Hardigg 6:5—15).
Under the broadest reasonable interpretation, the Examiner’s finding that
“backing sheet/member” 10 of Hardigg constitutes the “bottom wall” of
claim 1 is sound and based on rational underpinnings. Appellant does not
apprise us of Examiner error.2
Appellant contends that “even if backing sheet 10 were the bottom
wall of the shock isolator element 12 ..., there is no reason or motivation to
provide a threaded bolt hole in backing sheet 10 aligned with the center of
shock isolator element 12.” Appeal Br. 7; see also id. at 8. According to
2 We note that claim 1 does not recite a “unitary/integral” dampening device.
Similar to the claimed invention, the bottom portion of the annular outer side
wall of Hardigg is “distinguishable from” the bottom wall. See Hardigg 4:43—
46, Fig. 4 ; see also Reply Br. 5; compare the bottom portion of annular outer
side wall 12 and bottom wall 18 of the subject invention at Figure 1 with the
bottom portion of annular outer side wall 20 and backing sheet/member
(bottom wall) 10 of Figure 4 of Hardigg. With this in mind, we agree with
the Examiner that annular inner side wall 14 and annular outer side wall 20 of
Hardigg extend between top wall 16 and backing sheet/member (bottom wall)
10. See Final Act. 3-4; Ans. 2.
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Appeal 2016-000342
Application 13/607,500
Appellant, “[s]uch a hole could not be used to mount backing sheet 10 to the
true bottom wall of the shock isolator element 12 because the true bottom
wall does not exist at that point. . . []given its donut shape[].” Appeal Br. 7;
see also id. at 6; Reply Br. 5 (“[T]here would be no motivation to add a
threaded hole in the center of the bottom wall (because it is a void at that
location) if backing sheet 10 is not the bottom wall.” (emphasis added)).
As discussed above, the Examiner’s finding that “backing
sheet/member” 10 of Hardigg constitutes the “bottom wall” of claim 1 is
sound and based on rational underpinnings. Further, the Examiner clarifies
in the Answer that there is no proposed modification of backing sheet 10 of
Hardigg such that backing sheet 10 is mounted to shock isolator element 12.
See Ans. 6. According to the Examiner, backing sheet 10 of Hardigg “is
considered to be part of an overall dampening device” and “is capable of
being modified to include a threaded hole.” See Ans. 5, 6. Appellant does
not apprise us of Examiner error.
Moreover, Appellant’s contention that “there is no reason or
motivation to provide a threaded bolt hole in backing sheet 10 [of Hardigg]
aligned with the center of shock isolator element 12” is not persuasive
because nonobviousness cannot be established by attacking the applied
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Here, the Examiner relies on Wylie for disclosing “a
dampening device with a threaded hole [in 29] extending completely
through a center axis of the top and bottom walls of the dampening device,
the holes are aligned to each other.” Final Act. 4 (citing Wylie, Fig. 3); see
also Ans. 3. The Examiner reasons that it would have been obvious to
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Application 13/607,500
modify the dampening device of Hardigg such that top wall 16 and bottom
wall 10 include threaded holes extending through a centered/aligned axis of
the top and bottom walls, as taught by Wylie, “in order to be able to mount
the dampening device” “to an object in order to provide shock absorbing
protection to that object.” See Final Act. 3, 4 (citing Wylie col. 2:1—10); see
also Ans. 2, 3, 6. The Examiner’s reasoning is supported by the record and
based on rational underpinnings. Appellant does not apprise us of Examiner
error. Specifically, Appellant does not apprise us how the modified backing
sheet/member (bottom wall) 10 of Hardigg and Wylie, as proposed by the
Examiner, “cannot accommodate a [second] threaded hole as claimed.” See
Reply Br. 5.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of independent claim 1 as unpatentable over Hardigg and Wylie.
We further sustain the rejection of claims 2, 3, 5, and 22, which fall with
claim 1.
Obviousness over Hardigg, Wylie, and Nakanishi
Claim 23
Appellant contends that Nakanishi “fails to cure the stated
deficiencies of Hardigg and Wylie.” See Appeal Br 10. As we find no
deficiencies in the Examiner’s rejection of independent claim 1 over
Hardigg and Wylie for the reasons discussed above, we likewise sustain the
Examiner’s rejection of claim 23 as unpatentable over Hardigg, Wylie, and
Nakanishi.
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Appeal 2016-000342
Application 13/607,500
Obviousness over Marsh and Reynolds
Claims 1, 3, and 5
Appellant contends that “Marsh discloses that the size and shape of
the hole 35 dictates the spring characteristics of the device” and “one skilled
in the art would not be motivated to add threads as part of hole 35 as that
would change the spring characteristic performance of the Marsh device.”
Appeal Br. 10.
Marsh discloses that “[f]urther controls on spring characteristics are
available by changing the size and shape of the hole 35 in the core of the
spring. . . . The larger the hole, the greater the bulge area available, and
therefore the softer the spring.” Marsh 3:49—53 (emphasis added). Given
that Marsh discloses that the size and shape of hole 35 influences “the spring
characteristics of the device,” we agree with Appellant that, on the record
before us, a skilled artisan “would not be motivated to add threads” to hole
35 of Marsh, “as that, along with the insertion of a bolt [in view of
Reynolds], would change the spring characteristic performance of the Marsh
device.” Reply Br. 6.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner’s rejection of claims 1, 3, and 5 as unpatentable over Marsh and
Reynolds.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1—3, 5, and
22 as unpatentable over Hardigg and Wylie.
We AFFIRM the decision of the Examiner to reject claim 23 as
unpatentable over Hardigg, Wylie, and Nakanishi.
We REVERSE the decision of the Examiner to reject claims 1,3, and
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Appeal 2016-000342
Application 13/607,500
5 as unpatentable over Marsh and Reynolds.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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