Ex Parte Bournand

Patent Trial and Appeal Board

Sep 24, 2018

13515020 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/515,020 06/11/2012
13897 7590 09/26/2018
Abel Law Group, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
FIRST NAMED INVENTOR
Yves Bournand
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOV-49536USO 6727
EXAMINER
SCHWARTZ, CHRISTOPHER P
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
mail@Abel-IP.com
hmuensterer@abel-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YVES BOURNAND
Appeal2017-011724 1
Application 13/515,0202
Technology Center 3600
Before, JOSEPH A. FISCHETTI, GEORGE R. HOSKINS , and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellant's claimed invention "relates to the technical field of
damping relative movement between elements of a structure, and in
1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed Apr.
26, 2016) and Reply Brief ("Reply Br.," filed Sept. 18, 2017), and the
Examiner's Answer ("Ans.," mailed July 18, 2017), and Final Office Action
("Final Act.," mailed Nov. 30, 2015).
2 Appellant identifies VSL International AG as the real party in interest.
App. Br. 2.
Appeal 2017-011724
Application 13/515,020
particular to the damping of vibration in structural stay cables." Spec. 1,
11. 2--4.
Claims 1, 15, and 22 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A damper device for damping relative motion
between a first structural member and a second structural
member in a construction, the damper device comprising
a first friction element mechanically associated with the
first structural member, the first friction element including a first
friction surface made of a first friction material,
a second friction element mechanically associated with the
second structural member, the second friction element including
a second friction surface made of a second friction material,
the first and second friction surfaces being in mutual
frictional engagement such that relative motion between the first
and second friction surfaces is damped by the frictional
engagement between the first and second friction surfaces,
the damper device being characterized in that at least one
of the first and second friction materials is a low-friction polymer
material.
REJECTIONS
Claims 1, 2, 4--17, and 19--26 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Kovacs (EP 1035350 Al, pub. Sept. 13, 2000), Rudmann
(US 4,219,171, iss. Aug. 26, 1980), and Beyene (US 6,443,437 Bl, iss. Sept.
3, 2002).
Claims 3 and 18 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Kovacs, Rudmann, Beyene, and Okuda (US 5,858,521, iss. Jan. 12,
1999).
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Application 13/515,020
Claims 3 and 18 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Kovacs, Rudmann, Beyene, and Fujita (US 2002/0089105 Al, pub.
July 11, 2002).
ANALYSIS
Independent Claim 1, and Dependent Claims 2, 4-14, 16, 17, 19, and 26
In rejecting independent claim 1 under§ I03(a), the Examiner cites
Kovac' s method and device for damping oscillations and vibrations of
cables as comprising substantially all of the limitations of claim 1, except
"the specific compositions of the friction materials." Final Act. 2-3. The
Examiner cites Rudmann as describing that "it is known to use a 'low
friction polymer material' for damping purposes." Id. (citing Rudmann,
col. 4, 11. 45-50). And the Examiner relies on Beyene "to show a friction
damper and that it is well known to adjust the damping properties by
selecting specific materials." Id. at 3 (citing Beyene at col. 6-col. 7). The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of Appellant's invention "to have made the first
and second friction materials of [Kovacs] from 'low friction polymer
materials,['] as the choice of one well known low friction material for
increased durability and wear ability of the friction materials possibly due to
the lower heat generated by such materials." Id.
Appellant argues (see Reply Br. 3; see also App. Br. 8-17), and we
agree, that a person of ordinary skill in the art would have had no reason to
modify Kovacs' damper device for cables to make the first and second
materials low-friction polymer materials, as the Examiner proposes, because
Kovacs' disclosed friction brake damper "was designed to dampen only
relatively high forces and would not have been modified to dampen lower
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Application 13/515,020
energy oscillations." Appeal Br. 8. Kovacs supports Appellant's assertions.
For example, at paragraph 4 Kovacs describes "serious drawbacks" that
accompany known vibration dampers because the "damping forces begin
with very low values, near to zero," making them more susceptible to wear.
To address this problem, at paragraph 39 Kovacs discloses that the damping
device acts only after the cable vibrations exceed a specified level. Kovacs'
damper provides no relative movement until an applied force reaches the
limit of static friction, and then, as the applied force further increases, the
frictional parts move relative to one another with a significant reaction. Id.
,r,r 6, 29. The effect is called "stick-slip," and it arises as a result of a
significant difference between static and dynamic friction coefficients. See
Spec. 2 ( discussing Kovacs).
Kovacs at paragraph 34 describes ways in which overall frictional
forces can be modified. The Examiner indicates that one of ordinary skill in
the art would modify Kovacs' material to a low friction material for
increased durability. Final Act. 3. Yet, Kovacs describes using a material
with a high static coefficient force to provide no movement for vibrations
below a threshold, thereby eliminating wear due to damping at low
frequencies. And it is unclear why one of ordinary skill in the art would
seek a low friction material for use in Kovacs.
Rudmann relates to a coupling device for coupling orbiting space
craft. Rudmann, col. 3, 11. 13-15. An orbiting space shuttle has a remote
manipulator system that is capable of removing or returning objects to the
payload bay of the shuttle. Id. at col. 3, 11. 15-18. Rudmann's coupling
device at one end is connected with the remote manipulator system and at
the other end is coupled to an orbiting space craft, such as a satellite. Id. at
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Application 13/515,020
col. 3, 11. 18-22. The coupling device includes, in part, a bumper arm that
moves into contact with the payload. Id. at col. 4, 11. 32--40. The bumper
arm has a low friction polymer material to provide damping during coupling.
Id. at col. 4, 11. 45--48. Although Rudmann describes the use of a low
friction polymer in the use of its coupling device, it is unclear how or why
one of ordinary skill in the art would modify Kovacs in light of Rudmann to
result in the claimed invention.
Beyene relates to suspension struts having damping. See Beyene, col.
1, 11. 4--5. Suspension struts may be used to join a vehicle body with vehicle
wheels. Id. at col. 1, 11. 9-11. Frictional resistance provides compression
and rebound damping for the suspension strut, thereby reducing bouncing or
oscillation. Id. at col. 6, 11. 30-36. Beyene describes that "[t]he damping
rate of the strut may be more easily and effectively tuned by adjusting one or
more of several parameters," including frictional properties of engagement
surfaces. Id. at col. 7, 11. 4--6, 15-22. Yet, it is unclear why one of ordinary
skill in the art would modify Kovacs such that at least one of the first and
second friction materials is a low-friction polymer material, as required by
claim 1, in light of Beyene' s disclosure that materials with different
frictional properties could be chosen to manipulate damping.
The Examiner has not established, on this record, that a person of
ordinary skill in the art would have had an apparent reason, to replace the
friction materials of Kovacs' damper device such that at least one of the first
and second friction materials is a low-friction polymer material. As such,
the Examiner has failed to establish a prima facie case of obviousness.
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (holding that a
prima facie case of obviousness requires showing that one of ordinary skill
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Application 13/515,020
in the art would have had both an apparent reason to modify the prior art and
predictability or a reasonable expectation of success in doing so).
Therefore, we do not sustain the Examiner's rejection of claim 1 and
dependent claims 2, 4--14, 16, 17, 19, and 26 under 35 U.S.C. § 103(a).
Independent Claims 15 and 22, and Dependent Claims 20, 21, and 23-25
Independent claims 15 and 22 include language substantially similar
to the language of claim 1, and the Examiner relies on the same reasoning
set forth above with respect to claim 1 to reject claims 15 and 22. Therefore,
we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
claims 15 and 22, and dependent claims 20, 21, and 23-25 for the same
reasons described above with reference to claim 1.
Dependent Claims 3 and 18
The rejections of claims 3 and 18 do not cure the deficiency in the
Examiner's rejection of independent claim 1. Therefore, we do not sustain
the Examiner's rejections under 35 U.S.C. § 103(a) of dependent claims 3
and 18 for the same reasons described above with reference to claim 1.
DECISION
The Examiner's rejections of claims 1-26 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
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