Ex Parte Sowinski et alDownload PDFBoard of Patent Appeals and InterferencesFeb 12, 200910992590 (B.P.A.I. Feb. 12, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TIMOTHY JAMES SOWINSKI, MARK ALLEN KLECKNER, JOSEPH A. FADER, STEPHEN YUE, LUIZ G. LOPES, JR., WILLIAM JAMES ELDERS, MAURICE A. BECHARD, LEO MEDEIROS and PETE NICK KIOUSIS ____________ Appeal 2008-6100 Application 10/992,590 Technology Center 3600 ____________ Decided:1 February 12, 2009 ____________ Before JAMESON LEE, SALLY C. MEDLEY and MICHAEL P. TIERNEY, Administrative Patent Judges. MEDLEY, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 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 2008-6100 Application 10/992,590 2 DECISION ON APPEAL A. Statement of the Case Meritor Suspension Systems Company (“Meritor”), the real party in interest, seeks review under 35 U.S.C. § 134(a) of a Final Rejection of claims 1, 4-6 and 9. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Meritor discloses a suspension assembly including a stabilizer bar, a bushing, and a strap supporting the bushing. (Abs., Spec. 2-4). Representative claim 1, reproduced from the Claim Appendix of the Appeal Brief, reads as follows: A suspension assembly comprising: a stabilizer bar rotatable about an axis, said stabilizer bar including a first angled portion transverse to said axis; a first bushing having a hole with said first angled portion disposed within said hole, said first hole defining a first bushing axis transverse to said axis, wherein outer ends of said first bushing include thickened flared portions which are thicker in a radial direction than an intermediate central portion; and a strap supporting said first bushing with said first bushing arranged between said stabilizer bar and said strap, said strap having an arched portion cupped between said flared portions. The Examiner relies on the following prior art in rejecting the claims on appeal: Allison 3,733,087 May 15, 1973 Reid 5,118,070 Jun. 2, 1992 The Examiner rejected claims 1, 4-6 and 9 as unpatentable under 35 U.S.C. § 103(a) over Allison and Reid. Appeal 2008-6100 Application 10/992,590 3 B. Issues Does Meritor demonstrate that the Examiner erred in determining that claims 1 and 4-6 are obvious on the basis that there is no teaching, suggestion, or motivation to modify Allison? Does Meritor demonstrate that the Examiner erred in determining that claim 9 is obvious on the basis that modifying Allison would render Allison unsatisfactory for its intended purpose and change the principle of operation? C. Findings of Fact (“FF”) Allison 1. Referring to figure 1 below [numbers from figure 1 inserted], Allison describes a suspension system including a pair of torsion bar springs (“bars) [42], [44] and first and second bushings [46],[48] . 2. The bars [42], [44] are provided to support the vehicle frame [10] upon the suspension arms [14], to control body roll and to control the longitudinal position of the suspension arms [14]. (Col. 2, ll. 15-20). 3. The bars [42],[44] have transversely extending midportions [45],[47] which are journalled in rubber bushings [46], [48] which are secured to frame cross member [50]. (Col. 2, ll. 20-24). Figure 1, reproduced from Allison’s figure 3, is below: Appeal 2008-6100 Application 10/992,590 4 Figure 1 depicts a vehicle suspension system. 4. Allison describes that the bars, e.g., [42],[44] provide support for the chassis upon the suspension arms, provide an anti-roll stabilizer function and function as struts to control the longitudinal position of the suspension arms. (Col. 1, ll. 29-34). 5. Allison describes that use of two or more bars provides a backup system for wheel location in the event of a bar failure due to imperfect material or corrosion. (Col. 3, ll. 18-21). 6. Allison does not describe that the two bars, e.g., [42],[44] cooperate with one another or are required to provide the principal resilient support for the chassis, the anti-roll stabilizer function, or strut function. Reid 7. Referring to figure 2, [numbers from figure 2 inserted], Reid describes a single stabilizer bar [6] secured to the vehicle frame [8] by stabilizer bar mounts [10]. Figure 2, reproduced from Reid’s figure 1, is below: Appeal 2008-6100 Application 10/992,590 5 Figure 2 depicts a vehicle suspension system. 8. Referring to figures 3 and 4 [numbers from figure 3 and 4 inserted], the stabilizer bar mount [10] is an elastic member [14] held in position to vehicle frame [8] by a U-shaped metal support bracket [12] secured at both longitudinal ends [12a],[12b] to the vehicle frame. (Col. 2, ll. 32- 37). 9. The elastic member [14] is secured in position by a seating surface [14a] formed in the elastic member [14] and a corresponding protuberance [12c] on the U-shaped member [12]. (Col. 2, ll. 37-40). 10. The elastic member [14] includes a bore [16] extending therethrough in which the stabilizer bar [6] is mounted. (Col. 2, ll. 40-44). Figure 3, reproduced from Reid’s figure 2, is below: Appeal 2008-6100 Application 10/992,590 6 Figure 3 depicts an elevational view of the stabilizer bar mount. Figure 4, reproduced from Reid’s figure 3, is below: Figure 4 depicts a sectional view of the stabilizer bar mount. D. Principles of Law Motivation to Combine In KSR, the Supreme Court rejected the rigid application of the “teaching, suggestion, or motivation” (TSM) test, instead favoring the “expansive and flexible approach” used by the Court. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1739 (2007). In an obviousness analysis, it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. Id. at 1741. Appeal 2008-6100 Application 10/992,590 7 Based on its precedent, the Court reaffirmed the doctrine that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 1741. United States v. Adams, 383 U.S. 39, 40 (1966) is illustrative of the application of the doctrine, in which “[t]he Court recognized that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR at 1740-41. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 1742. Any judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Argument of counsel cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). E. Analysis Claims 1 and 4-6 Independent claim 1 recites “wherein outer ends of said first bushing include thickened flared portions which are thicker in a radial direction than an intermediate central portion . . .”. (App. Br. 8). The Examiner finds that Allison describes all of the claim limitations with the exception of describing the details of the first and second bushings, e.g., that the bushing(s) includes a thickened flared portion thicker in a radial Appeal 2008-6100 Application 10/992,590 8 direction than an intermediate central portion. (Final Rejection 2-3; Ans. 4- 5; see FF2s 1-3). Instead, the Examiner finds Reid to describe bushings [14] for stabilizer bar mounts [10] that include thickened flared portions which are thicker in a radial direction than an intermediate portion [14a] and a strap [12] having an arched portion [12c] cupped between the flared portions. (Final Rejection 3; Ans. 5; see FFs 7-10). The Examiner determined that it would have been obvious to modify the suspension of Allison with Reid’s flared bushings having a flat base and cut so as to secure the position of the bushings and facilitate assembly respectively. (Final Rejection 3; Ans. 5). Meritor argues that there is no motivation, suggestion or benefit to modify Allison in the manner proposed by the Examiner. (App. Br. 4-5, Reply Br. 2). Meritor argues that Allison’s bushing hole surface area, receiving two stabilizer bars [42], [44], is twice as much as the surface area of a bushing hole receiving a single stabilizer bar. (App. Br. 4). Meritor argues that as a result, the increased contact between the bars and bushing would provide greater friction between the bars and bushing. (App. Br. 4). Meritor also argues that one of ordinary skill would see no benefit in providing Reid’s bushings with an additional locating feature (i.e., the thickened flared portions) since the increased friction of Allison’s two bar arrangement would be more than adequate. (App. Br. 4). Lastly, Meritor argues there is no motivation to modify Allison because the bushing material between the bars would be pinched as the two bars deflect which would further retain the bushing relative to the bars. (App. Br. 4). Meritor’s arguments are unpersuasive because Meritor does not provide objective evidence to support its arguments. Meritor does not provide 2 FF denotes Finding of Fact. Appeal 2008-6100 Application 10/992,590 9 evidence to establish that (1) the bushing hole surface area for receiving two stabilizer bars would be twice as much as the bushing hole surface area for receiving a single stabilizer bar; (2) there would be significantly greater friction; (3) the increased friction of Allison’s two bar arrangement would be more than adequate; and (4) that the bushing material between the bars would be pinched as the bars deflect. In addition, Meritor does not provide evidence to support its arguments that one with ordinary skill in the art would see no benefit in providing thickened flared portions. Argument of counsel does not take the place of evidence lacking in the record. Meritor also argues that the references do not support the Examiner’s stated motivation that the proposed modification would secure the position of the bushings and facilitate assembly. (Reply Br. 2-3). Meritor argues that the references and the prior art in general do not suggest that (1) Allison’s bushings are not adequately secured or are difficult to assemble; and (2) Reid’s bushings are better secured or easier to assemble. (Reply Br. 3). Meritor’s arguments are misplaced. In an obviousness analysis, it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. Thus, it is not necessary to find teachings in the prior art that describes a need for improvement in the bushing securement or ease of assembly, as Meritor argues. Nor is it necessary for the references to teach that Reid’s bushing securement and assembly is superior to Allison’s. The Examiner modifies the Allison reference to include Reid’s bushings. The combination of familiar elements according to known methods is obvious when it does no Appeal 2008-6100 Application 10/992,590 10 more than yield predictable results. Meritor does not provide evidence to demonstrate that the combination yields unpredictable results. Meritor argues that the Examiner uses hindsight, and uses Meritor’s structure as a template and selects elements from the references to fill in the gaps. (Reply Br. 3). A judgment of obviousness based on hindsight reconstruction is proper if it only takes into account knowledge that was within the level of ordinary skill in the art at the time the invention was made and does not include knowledge gleaned from applicant’s disclosure. In this case, the Examiner’s findings are based on the knowledge that was within the level of ordinary skill in the art at the time the invention was made. For all these reasons, Meritor does not sufficiently show that the Examiner erred in determining that claim 1 would have been obvious. Claims 4-6 stand or fall together with claim 1 since Meritor does not argue the merits of claims 4-6 separately. (App. Br. 3-4; Reply Br. 2-3). For the same reasons explained above, Meritor does not sufficiently show that the Examiner erred in determining that claims 4-6 are obvious. Claim 9 Claim 9 is dependent on claim 1 and further recites “wherein the first bushing receives a single stabilizer bar”. (App. Br. 9). It is clear from Meritor’s arguments, that Meritor believes that its claim 9 means that the bushing of claim 9 only receives a single stabilizer bar and nothing else. However, claim 9 does not mean what Meritor argues that it means because it does not recite any relationship to the stabilizer bar of claim 1 or to any of its parts. As written, claim 9 recites a structure –“a single stabilizer bar” that is in addition to what is claimed in claim 1. Therefore, claim 9, when Appeal 2008-6100 Application 10/992,590 11 properly interpreted includes a bushing having a hole with the first angled portion of a stabilizer bar disposed within the hole, and an additional “single stabilizer bar” that is received by the bushing. Thus, the scope of claim 9 is such that the bushing may receive two bars and not necessarily only one bar. Therefore, none of Meritor’s arguments are persuasive, as those arguments are directed to Allison’s two bar description and how that two bar arrangement does not teach or suggest a “single bar” arrangement. Assuming that Meritor will amend its claim 9 to recite what it intends for the claim to cover, we address Meritor’s arguments as follows. Meritor argues that Allison, when taken as a whole, teaches that at least two bars must be used. (App. Br. 4, Reply Br. 4). Meritor argues that Allison requires two bars because the stabilizer bar is serving more than the traditional stabilizer bar function. (App. Br. 5, Reply Br. 4). Thus, Meritor appears to argue that Allison’s suspension system requires multiple bars in order to perform the multiple functions and therefore there is no teaching to use a single bar as claimed. Meritor’s arguments are unpersuasive because Allison does not disclose or suggest that two bars are required in order to perform the multiple functions. (FF 6). Instead, Allison describes that using two or more bars provide a backup system in the event of a bar failure. (FF 5). Meritor also argues that modifying Allison to have a single bar instead of two bars would render Allison unsatisfactory for its intended purpose since Allison is directed to having a plurality of bars. Meritor further argues that the modification of Allison to have a single bar would change the principle of operation because the bars must cooperate with each other to provide a multitude of functions. (Reply Br. 4-5). Appeal 2008-6100 Application 10/992,590 12 Meritor’s arguments are unpersuasive. Modifying Allison’s suspension system to have a single bar instead of two bars only removes the redundancy from the system. (See FF 5). As modified, Allison’s suspension system with a single bar would remain satisfactory for its intended purposes of (1) providing resilient support for the chassis on the suspension arms; (2) providing an anti-roll stabilizer function; and (3) functioning as struts to control the longitudinal position of the suspension arms. (See FF 4). In addition, such a modification would not result in a change in the principle of operation because Allison does not describe that the two bars cooperate with one another to provide the multitude of functions. (FF 6). Lastly, Meritor’s arguments are unpersuasive because Reid describes a suspension system that operates using a single bar. Based on Reid, one with ordinary skill in the art would appreciate that a second bar need not always be provided for redundancy. For all these reasons, Meritor does not sufficiently show that the Examiner erred in determining that claim 9 would have been obvious. F. Conclusions of Law Based on the Findings of Fact and the Analysis above, Meritor has not sufficiently demonstrated that the Examiner erred in determining that claims 1, 4-6 are obvious on the basis that there is no teaching suggestion or motivation to modify Allison. Further, Meritor has not sufficiently demonstrated that the Examiner erred in determining that claim 9 is obvious on the basis that modifying Allison would render Allison unsatisfactory for its intended purpose and change the principle of operation. Appeal 2008-6100 Application 10/992,590 13 G. Decision The decision of the Examiner rejecting claims 1, 4-5 and 9 under 35 U.S.C. § 103(a) over Allison and Reid is affirmed. No time period for taking any subsequent action in connection with the appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED ack cc: CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 Copy with citationCopy as parenthetical citation