Ex Parte Adoline et al

Board of Patent Appeals and Interferences

Jun 13, 2012

10820280 (B.P.A.I. Jun. 13, 2012)

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.
10/820,280 04/08/2004 Jack W. Adoline BGEE 200017US01 8603
27885 7590 06/13/2012
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
SY, MARIANO ONG
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
06/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACK W. ADOLINE and THOMAS J. FISCHER
____________

Appeal 2010-000476
Application 10/820,280
Technology Center 3600
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
LYNNE H. BROWNE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jack W. Adoline and Thomas J. Fischer (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-32, 49-62, 72-
76, and 84-96. Claims 33-40, 42-48, 63-71, and 77-83 have been withdrawn
and claim 41 has been canceled. We have jurisdiction over this appeal under
35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a compression spring rod that
“controls the rate of compression and/or expansion of the spring system.”
Spec. 2, ll. 11-12 and fig. 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A spring system comprising a housing having an axis, an
internal chamber, and axially opposite bottom and top ends; a
rod member coaxial with said axis and positioned within said
internal chamber and having an inner end in said housing and
an outer end axially outwardly of said top end of said housing;
a guide member on said inner end of said rod member
supporting said rod member for reciprocation axially of said
housing between retracted and extended positions relative
thereto; first and second compression springs each extending
between said guide member and the bottom end of said
housing; and top and bottom bushings, said top bushing
positioned at least closely adjacent to said top end of said
housing and said bottom bushing positioned at least closely
adjacent to said bottom end of said housing; said top bushing
including an opening to enable a portion of said rod member to
pass therethrough and to support said rod member for
reciprocation axially of said housing between retracted and
extended positions relative thereto, said top bushing including a
sealing arrangement positioned at least closely adjacent to a
bottom of said top bushing to inhibit fluid from entering into
and escaping from said internal chamber between said top
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bushing and said top end of said housing, said first and second
springs being coaxial with one another and with said axis, at
least one of said springs at least partially applying a force on
said guide member as said rod member moves between fully
retracted and fully extended positions, said guide member
designed to move into engagement with or move to a position
closely adjacent to said top bushing when said rod member
moves to a fully extended position, at least one of said springs
having a free length that is at least a majority length of said
internal chamber, both of said springs contacting said bottom
bushing when said rod member in said fully retracted position,
said guide member dividing said internal chamber into at least
two sub-chambers, said guide member including a first
passageway that at least partially regulates fluid flow between
said at least two sub-chambers during said reciprocation of said
rod member, said first passageway fully spaced from an outer
edge of said guide member and passing fully through said guide
member, said outer end of said rod member including a
mounting element.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Geyer US 4,148,469 Apr. 10, 1979
Johnston US 5,360,123 Nov. 1, 1994
Johnsen US 5,551,674 Sep. 3, 1996
Fitzlaff US 5,728,174 Mar. 17, 1998
Miura US 6,315,093 B1 Nov. 13, 2001
Salice US 6,615,450 B2 Sep. 9, 2003

The following rejections are before us for review:
I. The Examiner rejected claims 1, 5, 10, 11, 13, 27, 29, 31, 49,
50, 57, 60, and 74-76 under 35 U.S.C. § 103(a) as unpatentable
over Salice, Johnston, and Fitzlaff.
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II. The Examiner rejected claims 2, 6, 8, 12, and 72 under 35
U.S.C. § 103(a) as unpatentable over Salice, Johnston, Fitzlaff,
and Johnsen.
III. The Examiner rejected claims 3, 73, and 84 under 35 U.S.C.
§ 103(a) as unpatentable over Salice, Johnston, Fitzlaff, and
Geyer.
IV. The Examiner rejected claims 4, 7, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Salice, Johnston, Fitzlaff,
Johnsen, and Geyer.
V. The Examiner rejected claims 14, 17, 18, 22, 23, 51-56, 58, 59,
61, 62, 87, 90, and 93-96 under 35 U.S.C. § 103(a) as
unpatentable over Salice, Johnston, Fitzlaff, and Miura.
VI. The Examiner rejected claims 15, 16, 19-21, 24-26, 28, 30, 32,
88, 89, 91, and 92 under 35 U.S.C. § 103(a) as unpatentable
over Salice, Johnston, Fitzlaff, Johnsen, and Miura.
VII. The Examiner rejected claims 85 and 86 under 35 U.S.C.
§ 103(a) as unpatentable over Salice, Johnston, Fitzlaff, Miura,
and Geyer.

SUMMARY OF DECISION
We REVERSE.

ANALYSIS
Rejection I
The Examiner found that Salice discloses all the limitations of
independent claims 1 and 49 with the exception of (1) “a second
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compression spring extending between said guide member and the bottom
end of said housing” and (2) “a sealing arrangement positioned at least
closely adjacent to a bottom of said top bushing.” Ans. 5. Pointing to
Figure 18 of Johnston, the Examiner further found that Johnston discloses
“the use of first 134 and second 136 compression springs extending between
the guide member and the bottom end of the housing.” Id. The Examiner
also found that Figure 1 of Fitzlaff describes, “a sealing arrangement 4
positioned at least closely adjacent to a bottom of a top bushing 2.” Id. The
Examiner concluded that it would have been obvious for a person of
ordinary skill in the art to provide, (1) a second compression spring as taught
by Johnston and (2) a seal arrangement as taught by Fitzlaff, to the spring
system of Salice, in order to “increase the linear spring force” and to provide
a “tight seal between the top bushing and the cylinder so as to avoid leakage
in the inner chamber.” Id.
Appellants argue that the Examiner arrived at the rejection by
employing impermissible hindsight reconstruction. App. Br. 17-18. More
specifically, Appellants argue that:
[T]he [E]xaminer selected various prior art
references that included one or more elements of
the claimed invention and then summarily asserted
that it would be obvious to one skilled in the art to
provide these features in the spring system of
Salice so as to make obvious the spring system
defined in the claims.

App. Br. 18.
It is undisputed that Salice fails to describe, “a sealing arrangement
positioned at least closely adjacent to a bottom of said top bushing.” See
Ans. 5 and App. Br. 13, 18. Fitzlaff is directed to a spring system including
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a seal 4 positioned between head member 2 and cylinder housing 1. Fitzlaff,
fig. 1. See also, Ans. 5. As far as we understand, the Examiner is proposing
to use seal 4 of Fitzlaff for sealing Salice’s top bushing 111 and housing 1.
See Ans. 12. According to the Examiner, the use of seal 4 of Fitzlaff for
sealing Salice’s top bushing 11 and housing 1 is “simply a substitution of
one known element for another to obtain predictable results.” Final
Rejection, mailed Oct. 2, 2008, at 10.
Although Fitzlaff discloses that it was known in the art to seal a top
bushing (head member 2) to a cylinder housing, we find the Examiner’s
rejection insufficient to explain what in the prior art would have prompted a
person having ordinary skill in the art to use Fitzlaff’s seal 4 for sealing
Salice’s top bushing 11 and housing 1. The Examiner has not provided any
findings that either Salice or Fitzlaff recognized a problem with the
conventional technique used in Salice to seal top bushing 11 to housing 1,
namely, ultrasonic welding or adhesive bonding. See Salice, col. 2, ll. 60-63
and col. 4, ll. 31-32. Thus, the reason proffered by the Examiner to modify
the teachings of Salice to include the seal arrangement of Fitzlaff, i.e., “to
provide a tight seal between the top bushing and the cylinder so as to avoid
leakage in the inner chamber” (Ans. 5), appears to already be performed by
the ultrasound weld or adhesive bond of Salice. Moreover, we are not
persuaded that substituting the seal element of Fitzlaff for the ultrasound
weld or adhesive bond of Salice is merely a “substitution of one known
element for another,” as the Examiner suggests. The Examiner has not
provided any evidence that one of ordinary skill in the art would have

1 The Examiner found that Salice’s cover 11 constitutes the claimed
“top bushing.” Ans. 11.
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expected Fitzlaff’s seal 4 to function as the ultrasound weld or adhesive
bond of Salice. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
Without a persuasive articulated rationale based on rational underpinning for
modifying the reference as proposed, the Examiner’s rejection appears to be
the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418) (“rejections 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”).
Therefore, absent hindsight, we fail to see why one having ordinary
skill in the art would have been led to modify the teachings of Salice and
Fitzlaff in the manner claimed. The addition of Johnston does not remedy
the deficiencies of the combined teachings of Salice and Fitzlaff as discussed
supra.
Accordingly, we cannot sustain the rejection of independent claims 1
and 49, and their respective dependent claims 5, 10, 11, 13, 27, 29, 31, 50,
57, 60, and 74-76, under 35 U.S.C. § 103(a) as unpatentable over Salice,
Johnston, and Fitzlaff. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).

Rejections II-VII
Since Rejections II through VII are based on the same insufficient
articulation of a reason with a rational basis to combine the teachings of
Salice and Fitzlaff, Rejections II through VII likewise cannot be sustained.

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SUMMARY
The decision of the Examiner to reject claims 1-32, 49-62, 72-76, and
84-96 is reversed.

REVERSED

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