Ex Parte CITRO et al

Patent Trial and Appeal Board

Feb 28, 2019

14888420 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/888,420 10/30/2015
72932 7590 02/28/2019
Steinfl + Bruno LLP
155 N. Lake Ave. Ste 700
Pasadena, CA 91101
FIRST NAMED INVENTOR
Marco CITRO
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.
Pl574-US 8739
EXAMINER
SCHWARTZ, CHRISTOPHER P
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
02/28/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO CITRO, GAETANO CASCINI,
FRANCESCO BUTERA, and PAOLO BARBATELLI 1
Appeal2019-001092
Application 14/888,420
Technology Center 3600
Before JAMES P. CALVE, LISA M. GUIJT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Office Action finally rejecting claims 1-3, 5-8, 10, and 13-26. Appeal Br.
2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a New Ground of
Rejection.
1 Saes Getters S.P.A. and Gruppo Rold S.P.A. are identified as the real
parties in interest (Appeal Br. 2) and also are identified as the applicants
pursuant to 37 C.F.R. §§ l .42(b) and l.46(a).
2 Appellants' Request to Participate in the Patent Prosecution Highway
Program and Petition to Make Special under 3 7 C.F .R. § 1.102( a) was
granted on March 30, 2016.
Appeal 2019-001092
Application 14/888,420
CLAIMED SUBJECT MATTER
Appellants' shock absorbers exploit the "buckling effect" in which
straight or flat slender structures transition from simple compression to
bending and large deformation under compressive loads/impacts directed
along their axes. Spec. 4:9--12, 5: 18-21. Superelastic alloys and shape
memory metals are particularly useful for this purpose. Id. at 10:20-11 :31.
Claim 1, the sole independent claim, is reproduced below.
1. A shock-absorbing device comprising a first holding
element and a plurality of slender metallic structures having a
first end and a second end, said slender metallic structures
respectively having a slenderness ratio equal to or higher than
10, wherein the slender metallic structures are respectively
fixed at their first ends to said first holding element, wherein
the slender metallic structures are fixed at different points of
said holding element, wherein:
the mutual distance between the slender metallic
structures of at least one pair of slender metallic
structures is equal to or lower than 0.75 times their length
L, said distance being measured with respect to their first
ends,
at least 90% of the planes perpendicular to adjacent
slender structures are parallel to each other or form an
angle equal to or lower than 20°,
the slender metallic structures are flat laminar or sheet
elements or straight filiform or wire elements,
at least 90% of the slender metallic structures are made
of superelastic alloy,
said length L is between 3 mm and 3 0 cm, and
the slender metallic structures are arranged so as to
absorb energy of impacts acting in a direction
perpendicular to planes that are in tum perpendicular to
the slender structures.
Appeal Br. 24 (Claims App.).
2
Appeal 2019-001092
Application 14/888,420
REJECTIONS
Claims 1-3, 5-8, and 13-26 are rejected under 35 U.S.C. § 103 as
unpatentable over Ahem (US 6,460,837 Bl, iss. Oct. 8, 2002), Tungseth
(US 3,616,126, iss. Oct. 26, 1971), and Schuh (US 8,282,746 B2, iss. Oct. 9,
2012).
Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
Ahem, Tungseth, Schuh, and Williams (US 6,290,037 Bl, iss. Sept. 18,
2001).
ANALYSIS
Claims 1-3, 5---8, and 13-26
Unpatentable Over Ahern, Tungseth, and Schuh
Appellants argue claims 1, 3, 5-8, and 13-26 as a group. Appeal Br.
6-19, 21. We select claim 1 as representative of this group (see 37 C.F.R.
§ 4I.37(c)(l)(iv)) and address Appellants' arguments for claim 2 separately.
Claims 1, 3, 5-8, and 13-26
Regarding claim 1, the Examiner relies on Ahem's filament based
energy absorbing system in Figures 2, 4--9, and 11 with filaments made of
brass, steel, and other materials as needed by an application. Final Act. 3.
The Examiner finds Ahem's filaments can be linear or non-linear and can
have the same or different cross-sectional diameters. Id. The Examiner also
finds that Figure 4--9 of Ahem "present a prima facie case that ' ... at least
90% of the planes perpendicular to adjacent slender structures are parallel to
each other."' See Ans. 4. The Examiner relies on Tungseth to teach a
filament slenderness ratio that is application specific. Final Act. 3. The
Examiner also relies on Schuh to teach superelastic alloys in mechanical
damping applications. Id.
3
Appeal 2019-001092
Application 14/888,420
The Examiner determines that it would have been obvious to use the
superelastic metallic filament structures taught by Schuh with the claimed
slenderness ratio (and dimension) taught by Tungseth in Ahem as "simply
dependent upon the particular application of the device." Id. at 4.
Appellants argue that Ahem does not teach "at least 90% of the planes
perpendicular to adjacent slender structures are parallel to each other or form
an angle equal to or lower than 20Q" because Ahem does not indicate the
orientation of the filaments to each other. Appeal Br. 8. Appellants argue
that Ahem's teaching that filaments extend substantially perpendicular to a
surface does not teach the filaments are parallel to one other. Reply Br. 4--5.
We interpret this limitation to mean that at least 90% of the filaments
or slender metallic structures are parallel to one another, or that at least 90%
of the filaments or slender metallic structures extend at angles that are within
20Q of one another. See Ans. 4. This interpretation is consistent with the
Specification, which discloses that:
Also in this case the majority, in particular 90% or higher, of
the metallic filiform elements are substantially parallel to each
other, i.e. being them filiform elements in a 3D tri-dimensional
space, which means that their normal planes are parallel or form
an angle equal to or lower than 20°.
Spec. 7:28-31 (emphasis added), see 6:29-7:5 (similar disclosure).
Similarly, Ahem's teaching that filaments extend in a substantially
perpendicular relationship from a planar member would be understood to
mean that they extend with the same orientation as one another, i.e., parallel
to one another. See, e.g., Ahem 4:20-21 (disclosing, with reference to
Figure 1, that "first plurality of filaments 18 are shown as extending
substantially perpendicular to top surface [12] limitation of the invention").
4
Appeal 2019-001092
Application 14/888,420
Figures 2 and 4--9 of Ahem illustrate individual filaments extending
substantially perpendicular to a base (12', 20', 114, 116, 118, 120, 122, 124)
and in parallel relationship to one another. Ahem's teaching that filaments
18' may extend at an angle of about 20Q to 7 OQ from planar surface 14 also
suggests that all of the filaments share the same angled orientation such that
they are parallel to one another. Ahem 4:20-27 ("[I]t may be desirable, for
various design reasons, to have the first plurality of filaments 18' ... extend
a[t] an angle, e.g. an angle of about 20 to 70 degrees, with respect to top
surface 14."); see Ans. 4.
It is well-settled that the drawings in a utility patent can be cited
against the claims of a utility patent application even if the features shown in
the drawings are not explained in the specification of the reference patent.
In re Aslanian, 590 F.2d 911,914 (CCPA 1979) (citations omitted). In this
case, Figures 2 and 4--9 of Ahem illustrate continuous filaments that extend
with the same orientation from a base element such that adjacent filaments
are parallel to each another, as claimed. That is, they extend at the same
angle or within 20Q of one another. See Spec. 7:28-31, 6:29-7:5.
Like Ahem, Tungseth and Schuh disclose filaments and structures that
extend parallel to one other. Tungseth 2:58-3:39, Figs. 1-7 (illustrating that
filaments 13, 13a extend substantially parallel to one another from sheet 12);
Schuh 12:56-13:32, Figs. 6A, 6B (illustrating that pillars 10, fibers/wires 25,
bundles of wires 48, and cables 49 extend substantially parallel to one other
from supports 58, 68). See Ans. 6 (finding that Tungseth and Schuh have
similar structure and purpose as Ahem and the claimed energy absorbing
structure).
5
Appeal 2019-001092
Application 14/888,420
Appellants also argue that Ahem lacks any teaching or suggestion of
"straight filifonn or wire elements" as claimed. Appeal Br. 9. Appellants
argue that the word "straight" does not appear in Ahem, and the Examiner's
reliance on the linear and non-linear energy absorption traits of the filaments
does not establish that the filaments are straight. Id.; Reply Br. 5---6.
This argument is not persuasive in view of Ahem's drawings showing
straight filaments that extend perpendicular from planar supports in parallel
relationship to one another as discussed above. Moreover, Figures 1-7 of
Tungseth illustrate straight, parallel filaments 13, 13a. Figures 6A and 6B of
Schuh also illustrate straight pillars 10, fibers and wires 25, bundles 48, and
cables 49, all of which extend in parallel to one another as claimed.
Furthermore, Appellants define "straight/rectilinear (filiform) or
planar/rectilinear (laminar)" as "for at least 90% of their length tangent lines
they form an angle lower than 5Q with the axis (straight) or central plane
(laminar) of the slender structure." Spec. 3:12-18 (noting that "[t]he 90%
length condition takes into account that the slender structures are real and
not ideal members, and also that the ends of the slender structures may be
distorted/deformed as consequence of their placement in the shock absorbing
device of the present invention"). Therefore, "straight" as claimed does not
require filaments to be completely straight along their entire length.
Appellants also argue that Ahem does not teach the limitation "the
slender metallic structures are arranged so as to absorb energy of impacts
acting in a direction perpendicular to planes that are in tum perpendicular to
the slender structures." Appeal Br. 9-10. Appellants argue that Ahem's
teaching of energy absorbing filaments with linear or non-linear energy
absorption features does not apply to the direction of energy. Id. at 10.
6
Appeal 2019-001092
Application 14/888,420
We interpret this limitation to require the force/ energy of an impact to
be delivered in a direction that is parallel to the orientation of the straight
filaments, i.e., directed along their longitudinal axes. This interpretation is
consistent with the Specification, which discloses that
the straight and/ or flat slender structures are arranged so as to
absorb the energy of impacts acting in a direction perpendicular
to planes that are in tum perpendicular to the slender structures,
e.g. in the case of straight filiform slender structures impact
forces that are essentially directed along their axes."
Spec. 5:18-21 (emphasis added). Appellants' Figure 12 shows how force
lines perpendicular to planes 1202 would be parallel to filaments 52, 52'.
A skilled artisan would understand Ahem's teachings of the linear and
non-linear energy absorption characteristics of the straight filaments to mean
that the filaments absorb energy along their longitudinal axes as claimed.
Ahem also teaches that its energy absorbing systems are used in guard rails,
elevator bump stops, and vehicles. Ahem 1: 10-23. Base structures 22, from
which the filaments extend in a substantially perpendicular orientation, may
form a vehicle pillar post panel, instrument panel, headliner, or knee bolster
to absorb energy. Id. at 4:28-31. The base supports are designed to receive
a force perpendicular to their surfaces and parallel to the filaments as is well
understood in the art. See Ans. 5---6.
Tungseth and Schuh also teach this known configuration. Tungseth
shows force being applied by loading head 14 in a direction perpendicular to
backing sheets 11, 12 and therefore parallel to the axes of straight filaments
13. Tungseth 3:26-40, Figs. 2, 3. Schuh discloses force 12 being applied in
a direction perpendicular to support 58, 68 and therefore parallel to straight
pillars 10 and straight fibers/wires 25. Schuh, 4:24--54, Figs 6A, 6B.
7
Appeal 2019-001092
Application 14/888,420
Moreover, claim 1 is an apparatus claim that recites a device rather
than a method of using such a device. The slender metallic structures are
arranged to absorb impact energy along their axes. The prior art teaches this
arrangement of slender metallic structures having linear/non-linear energy
absorption (Ahem), buckling resistance (Tungseth), and elastic deformation
(Schuh) discussed above to absorb energy along their longitudinal axes.
Appellants further argue that the Examiner has failed to articulate
reasoning with rational underpinning to support the combination of Ahem,
Tungseth, and Schuh. Appeal Br. 11-12; Reply Br. 6-8. A skilled artisan,
however, would have been motivated to combine the teachings of Tungseth
and Schuh with Ahem to improve Ahem's ability to absorb impact energy.
Ahem uses linear and non-linear energy absorption characteristics to control
energy absorption for particular applications as discussed above. Tungseth
teaches adjusting the slenderness ratio of the filaments to control buckling
resistance of an energy absorption pad comprising such filaments. Tungseth
4:2-5:38 and Table I. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417
(2007) (holding that a technique that improves one device would be
recognized by skilled artisans as obvious to use to improve similar devices
in the same way unless its actual application is beyond their skill).
Similarly, a skilled artisan would have been motivated to replace the
brass and steel material in Ahem's filaments with superelastic metal alloys
of Schuh as a simple substitution for predictable results. Id. Superelastic
materials operate for hundreds of millions and billions of cycles without
failure and provide ultrahigh damping for a wide range of applications in
macro-scale, meso-scale, micro-scale mechanical and electromechanical
system dimensions. Schuh 1:38-58, 2:23--43, 4:6-12, 12:56-61.
8
Appeal 2019-001092
Application 14/888,420
Contrary to Appellants' arguments (see Appeal Br. 12-14), Schuh
thus teaches that the superelastic materials and slender metallic structures
disclosed therein are useful not only on micro-scale systems but also on
macro-scale systems, which would encompass the systems and applications
disclosed in Ahem, as the Examiner correctly finds. See Ans. 7.
Therefore, a skilled artisan would have had a reasonable expectation
of success in simply substituting superelastic metals of Schuh in Ahem for
predictable results of ultrahigh shock absorption and enhanced durability.
Moreover, we note that Ahem teaches energy-absorbing filaments
with diameters of 0.006 and 0.060 inches, and 0.010 and 0.032 inches.
Ahem 8: 5-9. These dimensions correspond to O .15 24 mm to 1. 5 24 mm ( or
152.4 microns to 1,524 microns) and 0.254 mm to 0.8128 mm (254 microns
to 812.8 microns). These dimensions thus are in the micro dimension range
similar to the 200 micrometer (micron) dimensions of superelastic alloys
taught in Schuh and the 0.005 inch filament diameters taught in Tungseth.
As discussed above, all three references employ the "buckling effect"
that Appellants tout in their Specification. Ahem controls the buckling of
straight filaments via linear and non-linear energy-absorbing characteristics.
Tungseth adjusts slenderness ratios of straight filaments to control buckling
resistance. Schuh teaches that superelastic materials provide superior energy
absorption via elastic deformation-type buckling.
For all the foregoing reasons, we sustain the rejection of claims 1, 3,
5-8, and 13-26; however, because our findings and reasoning go beyond
those employed by the Examiner in the Final Office Action and Answer, we
designate our affirmance as a New Ground of Rejection to provide
Appellants with an opportunity to respond.
9
Appeal 2019-001092
Application 14/888,420
Claim 2
Claim 2 depends from claim 1 and recites that the configuration of the
device is such that the slender structures are subjected to compressive loads
directed along their axes for filiform/wire elements and parallel to their
planes for laminar or sheet elements. Appeal Br. 24 (Claims App.). In view
of our interpretation of claim 1 above, this issue is addressed by our findings
that Ahem, Tungseth, and Schuh teach systems that direct compressive loads
along the axes of their filament structures. Thus, we sustain the rejection of
claim 2, but we designate our affirmance as a New Ground of Rejection.
Claim 10
Unpatentable Over Ahern, Tungseth, Schuh, and Williams
Appellants argue that claim 10 is rejected improperly for the same
reasons as claim 1. Appeal Br. 22. Because we sustain the rejection of
claim 1, this argument is not persuasive, and we also sustain the rejection of
claim 10 and again designate our affirmance as a New Ground of Rejection.
DECISION
We affirm the rejections of claims 1-3, 5-8, 10, and 13-26; however,
we designate our affirmance as a New Ground of Rejection.
This decision contains a new ground of rejection entered pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
10
Appeal 2019-001092
Application 14/888,420
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PATENT EXAMINING PROCEDURE§ 1214.01 (9th
Ed., Rev. 08.2017, Jan. 2018).
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; 37 C.F.R. § 4I.50(b)
11