11386280 (P.T.A.B. Jul. 23, 2013)

Ex Parte Bauman et al

Patent Trial and Appeal BoardJul 23, 2013

11386280 (P.T.A.B. Jul. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WALTER DOUGLAS BAUMAN, BENJAMIN SETH ADAMS, MARK M. ROSE, DANIEL J. VIRGA, ALTON DALE ELVIS, and HERNAN DARIO PERIN ____________ Appeal 2011-002809 Application 11/386,280 Technology Center 3600 ____________ Before STEFAN STAICOVICI, GAY ANN SPAHN, and ADAM V. FLOYD, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002809 Application 11/386,280 2 STATEMENT OF THE CASE Walter Douglas Bauman et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1, 2, 5-9, 22, and 23 as unpatentable over Wallis (US 4,154,434, issued May 15, 1979) and Binder (US 2,149,040, issued Feb. 28, 1939); and claims 18-20 and 25 as unpatentable over Wallis, Binder, and Zantinge (US 5,133,575, issued Jul. 28, 1992). Claims 3, 4, 10-17, 21, and 24 have been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). INVENTION Appellants’ invention relates to a “gas spring assembly that includes a cover for an extendible rod that is sealed at each end.” Spec. 1, para. [0001] and fig. 1. The independent claims on appeal are claims 1, 8, and 18. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A gas spring assembly comprising: a tube; a rod axially moveable relative to said tube between a fully extended position and a fully compressed position; a resilient cover surrounding said tube and said rod, said resilient cover having a first sealed interface with said rod and a second sealed interface with said tube; a first connector attached to said rod and a second connector attached to said tube wherein one of said first and said second connectors is adapted for connection to one of a fixed member and a movable member that moves relative to the fixed member and the other of said first and said second connectors is adapted for connection to the other of the fixed member and the movable member; and Appeal 2011-002809 Application 11/386,280 3 a rod cap that secures a first end portion of said resilient cover adjacent said first connector, wherein said resilient cover establishes a groove for receiving a portion of said rod cap and an opposing second end portion of said resilient cover is secured adjacent said second connector. SUMMARY OF DECISION We AFFIRM-IN-PART. ANALYSIS Obviousness Rejection Based Upon Wallis and Binder Claims 1, 2, 6, and 9 The Examiner found that Wallis discloses a gas spring assembly including a tube 16 (cylinder), an axially moveable rod 38 (piston rod), a resilient cover 56 (expandable boot) surrounding tube 16 and rod 38, a rod cap 60 (clamp), an end cap 48 (cap), an end cap cover 58 (clamp), a first connector 76 (threaded plug) attached to rod 38, and a second connector. Ans. 3-4; see also Wallis, fig. 1 (parenthetical nomenclature to Wallis). The Examiner further found that although Wallis fails to disclose that resilient cover includes “a groove for receiving a portion of said rod cap,” as per independent claim 1, nonetheless, Binder discloses a cover 12 (flexible tubular member) that has a groove for receiving a portion of rod cap 13 (eye). Ans. 4; see also Binder, fig. 1 (parenthetical nomenclature to Binder). The Examiner concluded that: It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified the resilient cover of Wallis to have included a groove for receiving a portion of the rod cap, as taught by Binder et al., in order to provide a Appeal 2011-002809 Application 11/386,280 4 means of more securely connecting the resilient cover to the rod cap to avoid decoupling. Id. First, Appellants argue that bushing 50 of Wallis and element 13 of Binder do not constitute a “rod cap,” as called for by independent claim 1. App. Br. 4-5. Appellants’ argument is not commensurate with the Examiner’s rejection because the Examiner relied on clamp 60 of Wallis as the claimed “rod cap.” See Ans. 4. Second, Appellants argue that because the groove of Binder’s cover 12 “faces radially inward and receives the piston rod, not a rod cap,” as called for by independent claim 1, Wallis teaches away from the proposed modification. See App. Br. 5 and 7. According to Appellants, the modification of Wallis with Binder, as proposed by the Examiner, “would result in the resilient member [56] having a feature directed inwardly toward the bushing 50” such that “bushing 50 . . . would need to be modified to include grooves for receiving the lips 23, which would interfere with the passageways 64.” App. Br. 6-7. Thus, Appellants contend that the Examiner’s proposed modification would render passageways 64 of Wallis unsatisfactory for their intended purpose. App. Br. 7. We disagree with Appellants’ second argument because it is not commensurate in scope with the claimed resilient cover, which does not specify whether the groove is either radially inward or radially outward. Moreover, obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). We agree with the Examiner that Binder’s teaching of a resilient cover with a groove “would have suggested to those of ordinary skill in the art . . . that a groove could be placed in . . . Appeal 2011-002809 Application 11/386,280 5 resilient cover 56 of Wallis to cooperate with adjacent rod cap 60 to help reinforce the coupling between the resilient cover and the rod cap,” in order “to prevent axial movement of the resilient cover.” Ans. 8-9. We are not persuaded by Appellants’ teaching away argument because, as the Examiner explains, providing a groove in the resilient cover 56 of Wallis would not affect passageways 64. See Ans. 10. Third, Appellants argue that the Examiner has not provided an adequate reason to modify the teachings of Wallis as proposed because “Wallis is not concerned with axial movement of the clamp 60 relative to cover 56 as long as the cover 56 is sealed.” App. Br. 6-7. We do not agree with Appellants because, as the Examiner noted, “if the resilient cover 56 slides axially away from the rod cap 60 then it also slides axially away from element 50 eliminating the sealed interface.” Ans. 9. As such, the Examiner has provided a reason (providing a groove in the resilient cover 56 of Wallis) with rational underpinning (“to provide a means of more securely connecting the resilient cover [56] to the rod cap [60] to avoid decoupling”). See Ans. 4. Lastly, Appellants argue that the Examiner’s interpretation of Wallis’s clamp 60 as a “rod cap” is unreasonable. Reply Br. 2. We are not persuaded because claims under examination are to be given their broadest reasonable interpretation consistent with the underlying specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, although Appellants’ Specification does not expressly define the term “rod cap,” nonetheless, the Specification states that, “rod cap 42 clamps a portion 56 of . . . cover 30 . . . to provide the first sealed interface.” Spec. 4, para [0015] (emphasis added). Since clamp 60 of Wallis likewise clamps a Appeal 2011-002809 Application 11/386,280 6 portion of cover 56 to provide a sealed interface, we agree with the Examiner that clamp 60 of Wallis constitutes a “rod cap,” as called for by independent claim 1. In conclusion, for the foregoing reasons, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Wallis and Binder. With respect to the rejection of dependent claims 2, 6, and 9, Appellants rely on the same arguments as presented supra. App. Br. 10. Therefore, for the same reasons, we likewise sustain the rejection of claims 2, 6, and 9 over the combined teachings of Wallis and Binder. Claims 5 and 7 Appellants argue that clamp 60 of Wallis does not clamp boot 56 “axially” against the first connector, i.e., threaded plug 76, because “clamp 60 is only capable [of] exerting a radially inward clamping force.” App. Br. 7. Appellants further argue that clamp 58 of Wallis likewise “fails to ever exert any axial clamping force” against tube 16 or end cap 48. App. Br. 8. In response, the Examiner states that, “when a component A is clamped to component B, component A is clamped both radially and axially against component B since the clamping force functions to maintain component A fixed at its designated position which includes both a radial and an axial component.” Ans. 10. In other words, the Examiner interprets the limitation “rod cap clamps . . . said resilient cover axially against said first connector” in claim 5 to mean that the rod cap clamps the resilient cover against the first connector axially. Id. Likewise, the Examiner interprets the limitation “end cap cover clamps . . . said resilient cover Appeal 2011-002809 Application 11/386,280 7 axially against said tube, said end cap, or both” in claim 7 to mean that the end cap cover clamps the resilient cover against the tube, end cap, or both, axially. Id. However, in both claims 5 and 7, the term “axially” modifies the term “clamps” and not the clamped components, i.e., resilient cover and the first connector, as per claim 5 or the resilient cover and the tube, end cap, or both, as per claim 7. We thus conclude that the Examiner’s claim construction is flawed. Therefore, we agree with Appellants that because each of clamp 60 and clamp 58 only exerts a “radially inward clamping force,” clamp 60 does not constitute a “rod cap,” as called for by claim 5, and clamp 58 does not constitute an end cap cover, as called for by claim 7. As such, for the foregoing reasons, we do not sustain the rejection of claims 5 and 7 over the combined teachings of Wallis and Binder. Claim 8 Appellants argue that clamp 58 of Wallis holds cover 56 against only cap 48, not a tube and the cap,” as called for by independent claim 8. App. Br. 10. The Examiner disagrees because “element 58 [i.e., end cap cover] hold[s] resilient cover 56 against cap 48 and the concentrically located upper portion of tube 16.” Ans. 11 (citing to fig. 1 of Wallis). Although we appreciate that clamp 58 of Wallis clamps resilient cover 56 against end cap 48, we do not agree that it clamps resilient cover 56 “against” tube 16. An ordinary and customary meaning of the term “against” is “in contact with.” Merriam Webster’s Collegiate Dictionary (10th Ed. 1997). Since clamp 58 is not in contact with tube 16, we do not Appeal 2011-002809 Application 11/386,280 8 sustain the rejection of independent claim 8 under 35 U.S.C. § 103(a) as unpatentable over Wallis and Binder. Claim 22 Appellants argue that the combined teachings of Wallis and Binder do not disclose a resilient cover that “extends past said first end of said tube to an opposing, second end of said tube.” App. Br. 10. In response, the Examiner opines that resilient cover 56 of Wallis extends past the first end of tube 16 to an opposing second end of tube 16 in the same way as a “flag pole extends . . . from the ground up to the clouds in the sky,” that is, “the flag pole does not touch the clouds in the sky, but it extends to, towards, or in the direction of them.” Ans. 12. Claims are to be given their broadest reasonable interpretation consistent with the Specification. Although we appreciate that the term “to” can be used to indicate “direction,” as the Examiner proposes, we also note that it can be used to indicate contact or the limit of extent. See Merriam- Webster’s Collegiate Dictionary (10th Ed. 1997). Appellants’ Specification describes cover 30 as surrounding1 tube 12 (see Spec. 3, para. [0012]). See also fig. 1 of Appellants’ Drawings. To interpret the limitation of the “resilient cover extend[ing] . . . to an opposing, second end of said tube” (emphasis added) to mean that the resilient cover merely extends in the direction of the opposing, second end of the tube would be inconsistent with the Specification, which describes cover 1 An ordinary and customary meaning of the term “surround” is “to enclose on all sides : ENVELOP.” Merriam-Webster’s Collegiate Dictionary (10th Ed. 1997). Appeal 2011-002809 Application 11/386,280 9 30 as surrounding (enveloping) tube 12. Although cover 56 of Wallis extends past a first end of tube 16 where tube 16 receives rod 38, cover 56 does not extend to an opposing, second end of tube 16, but rather extends to an opposing, second end of rod 38. See Wallis, fig. 1. Therefore, we do not sustain the rejection of claim 22. Claim 23 Appellants argue that the combined teachings of Wallis and Binder do not disclose a tube that “is completely received within said resilient cover,” as called for by claim 23. App. Br. 10. In response, the Examiner finds that as Appellants’ tube includes plug 66, which is not received within resilient cover 30; likewise, “the upper portions of Wallis[‘s] tube 16 shown in the area near the end of the lead line of number 42 are completely received within the resilient cover 56.” Ans. 12-13; see also Fig. 4 of Appellants’ Drawings. We do not agree with the Examiner’s finding because, as Appellants point out, element 66 does not constitute a plug as the Examiner opines, but rather an end cap. See Spec. 5, para. [0016] and Fig. 4 of Appellants’ Drawings. Thus, because end cap 66 is not part of tube 12, we agree with Appellants that Wallis’s tube 16 is not “completely received within . . . resilient cover [56],” as called for by claim 23. See Reply Br. 4; see also Wallis, fig. 1. Accordingly, we do not sustain the rejection of claim 23 over the combined teachings of Wallis and Binder. Appeal 2011-002809 Application 11/386,280 10 Obviousness Rejection Based Upon Wallis, Binder, and Zantinge Claim 18-20 The Examiner found that although the combined teachings of Wallis and Binder fail to disclose a vehicle frame member and a vehicle body member, Zantinge discloses a vehicle frame 1, a vehicle body member 4, and a gas spring assembly 6. Ans. 6. The Examiner concluded that: [I]t would have been obvious to one of ordinary skill in the art to have utilized the boot covered piston cylinder assembly of Wallis, as modified, in the environment of a motor vehicle, as taught by Zantinge, in order to provide a boot covered piston cylinder assembly in a motor vehicle suspension system in order to protect the piston cylinder assembly from debris. Ans. 13. Appellants argue that there is no reason to modify the combination of Wallis and Binder with the vehicle features of Zantinge because Wallis’s piston and cylinder can move only along a single axis and it requires a gas reservoir 34. App. Br. 11-12. According to Appellants, the vehicle features of Zantinge require movements in many directions and do not need a gas reservoir. Id. As such, Appellants contend that including Wallis’s piston and cylinder assembly as modified by Binder into the vehicle features of Zantinge would necessitate changing the principle of operation of Wallis’s piston and cylinder assembly. Id. Although we appreciate that Wallis’s piston and cylinder requires a gas reservoir to urge piston 36 and rod 38, it is well settled that, “it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also Ans. 13. The artisan is not compelled to Appeal 2011-002809 Application 11/386,280 11 blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984). Attorney arguments such as the inability of Wallis’s piston and cylinder assembly to function without a gas reservoir or to accommodate movements in many directions cannot take the place of evidence in the record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). In this case, Appellants have not provided any persuasive evidence that prohibits the use of Wallis’s piston and cylinder as modified by Binder in the vehicle environment of Zantinge. Providing Wallis’s piston and cylinder modified according to Binder into the vehicle features of Zantinge would improve the vehicle features of Zantinge in the same manner as the arrangement of Wallis prevents the ingress of contaminants “to the working parts of the cylinder, piston and piston rod,” namely, by “protecting the piston cylinder arrangement of a vehicle from debris.” Ans. 14; see also Wallis, col. 1, ll. 7-9. Consequently, we are not persuaded that the Examiner's conclusion that the subject matter of clam 18 is obvious in view of the teachings of Wallis, Binder, and Zantinge is in error. We thus sustain the rejection. With respect to the rejection of dependent claim 19 and 20, Appellants rely on the arguments presented supra. App. Br. 12. Therefore, for the same reasons, we likewise sustain the rejection of claims 19 and 20 over the combined teachings of Wallis, Binder, and Zantinge. Claim 25 Appellants argue that the combined teachings of Wallis and Binder do not disclose a tube that “is sealed within said resilient cover,” as called for Appeal 2011-002809 Application 11/386,280 12 by claim 25, because “[b]oth references show a tube that is not completely received within a resilient cover.” App. Br. 12. In response, the Examiner points out that claim 25 does not require a tube that is completely received within a resilient cover. Ans. 14. Thus, according to the Examiner, “the top of . . . tube 16 is sealed within . . . resilient cover 56.” Id. Although we appreciate that claim 25 does not require a tube that is completely received within a resilient cover, as the Examiner opines, nonetheless, in order for the tube to be sealed “within2” the resilient cover, the tube must be completely received within the resilient cover. Therefore, because the bottom end of Wallis’s tube 16 is not inside of (within) resilient cover 56, Wallis fails to disclose a tube that “is sealed within said resilient cover,” as called for by claim 25. Neither Binder nor Zantinge cure the deficiencies of Wallis. Hence, we do not sustain the rejection. SUMMARY The Examiner’s decision is affirmed as to the rejection of claims 1, 2, 6, 9, and 18-20 and reversed as to the rejection of claims 5, 7, 8, 22, 23, and 25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh 2 An ordinary and customary meaning of the term “within” is “in or into the interior : INSIDE.” Merriam-Webster’s Collegiate Dictionary (10th Ed. 1997).