Ex Parte Deferme

Board of Patent Appeals and Interferences

Sep 21, 2010

11879727 (B.P.A.I. Sep. 21, 2010)

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.
11/879,727 07/18/2007 Stefan Deferme 1316N-001690/REB 4686
27572 7590 09/21/2010
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
KING, BRADLEY T
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
09/21/2010 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 STEFAN DEFERME
____________________

Appeal 2010-008543
Application 11/879,727
Patent 7,070,029 B2
Technology Center 3600
____________________

Before STEFAN STAICOVICI, KEN B. BARRETT, and FRED A.
SILVERBERG, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-008543
Application 11/879,727
Patent 7,070,029 B2

2
STATEMENT OF THE CASE
Stefan Deferme (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 8-28 in reissue application 11/879,727.
The reissue application seeks to reissue U.S. Patent 7,070,029 B2, issued
July 4, 2006, based on application 10/662,544, filed September 15, 2003.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to automotive shock absorbers.
Spec., col. 1, ll. 6-9. Claim 8, reproduced below, is representative of the
subject matter on appeal.
8. A shock absorber comprising:
a pressure tube forming a working chamber;
a piston disposed for movement in an axial direction
within said pressure tube, said piston dividing said working
chamber in the axial direction into an upper working chamber
and a lower working chamber, said piston defining a plurality
of fluid passages extending through said piston;
a first valve assembly engaging said piston, said first
valve assembly comprising:
a first disc engaging said piston to close at least one of
said plurality of fluid passages, said entire first disc being
movable in the axial direction with respect to said piston;
a first annular interface engaging said first disc, said
entire first annular interface being movable in the axial
direction with respect to said piston;
a first interface disc engaging said first annular interface,
said first interface disc urging said first annular interface into
Appeal 2010-008543
Application 11/879,727
Patent 7,070,029 B2

3
engagement with said first disc and said first disc into
engagement with said piston; and
a piston rod attached to said piston and extending out one
end of said pressure tube, an open gap being defined between
said piston rod and said first annular interface.

THE REJECTION
Before us for review is the Examiner’s rejection of claims 8-28 under
35 U.S.C. § 102(b) as being anticipated by Deferme (US 6,371,264 B1,
issued Apr. 16, 2002).
The Examiner has withdrawn the anticipation rejection of claims 8-13,
15-17, and 21-23 based on Imaizumi (US 4,953,671, issued Sep. 4, 1990).
Ans. 3.

OPINION
Appellant agrees that claims 8-28 stand or fall together. App. Br. 11.
We select claim 8 as the representative claim.
Claim 8 recites: “said entire first annular interface being movable in
the axial direction with respect to said piston.” We agree with the
Examiner’s interpretation of this phrase as requiring the capability of the
entire interface to be moved axially. Ans. 6.
The Examiner found that Deferme’s spring 82 corresponds to
Appellant’s first annular interface, and that the entire spring 82 could be
compressed and then slid axially in the space provided, thus satisfying the
“being movable” requirement. Ans. 4, 6.
Appellant argues that the upper end of the spring abuts retainer 78,
and that the upper end of the spring therefore is not movable. App. Br. 10;
Appeal 2010-008543
Application 11/879,727
Patent 7,070,029 B2

4
Reply Br. 2. Appellant also argues that there is no mechanism that moves
that end of the spring and that “there is no method of moving the upper coil
that is biased against retainer 78.” Reply Br. 2-3. However, as claimed, the
entire interface is merely required to be capable of axial movement. While
Appellant is correct that Deferme shows the spring abutting the retainer,
Appellant does not suggest that the spring end is somehow affixed to the
retainer or is otherwise prevented from being compressed and moved as the
Examiner found. We agree with the Examiner’s finding that the spring 82 is
a structure “being movable in the axial direction” as recited in claim 8.
The Examiner also maintains, apparently in the alternative, that the
recited entire first annular interface could be construed as only the surface of
the spring in contact with the valve disc 80. Ans. 6. In light of our
determination above that the entire spring is capable of moving axially, we
do not reach the merits of this alternative construction.
Claim 8 also recites: “said first interface disc urging said first annular
interface into engagement with said first disc and said first disc into
engagement with said piston.” Appellant contends that Deferme’s retainer
78 does not urge any component in any direction and therefore the
Examiner’s finding that the retainer corresponds to the recited interface disc
is erroneous. App. Br. 10. Specifically, Appellant argues that retainer 78
merely acts as a stop for spring 82 (found to be the annular interface) and
does not generate a load which urges the spring 82 against disc 80. Reply
Br. 3. Appellant suggests that the only urging is performed by spring 82.
App. Br. 10. Appellant does, however, agree that retainer 78 is a necessary
component in the urging of the spring. Reply Br. 4.
Appeal 2010-008543
Application 11/879,727
Patent 7,070,029 B2

5
Appellant does not direct us to any portion of the Specification that
sheds light on the meaning of “urging” or that necessitates a narrow
interpretation of “urging” such that a stop does not “urge” another member
or that only a spring or spring-like component can perform the “urging.”
Rather, the Specification, in describing the embodiment shown in Figure 2,
suggests that fixed-location components generate a load in Appellant’s
device. The Specification explains that spring disc plate 50 (which contacts
the spring-like interface discs 48 and which does not appear to move during
normal operation) is preloaded via preload spacer 52 to load piston assembly
10 and then, when the proper preload is determined on the disc 44, a weld 54
is made to fix the location of the preload spacer 52. Spec., col. 4, ll. 22-31;
fig. 2. Thus, in Appellant’s embodiment, the preload spacer 52, along with
the spring disc plate 50, generate a preload force while serving as a fixed
stop for the spring-like first interface discs 48.
The Examiner found, and we agree, that Deferme’s retainer 78 is
urging spring 82 in that the retainer provides an equal and opposite force to
the spring. Ans. 7. Moreover, similar to Appellant’s embodiment,
Deferme’s retainer 78 also generates a preload force while serving as a fixed
stop for spring 82 (first annular interface). Deferme, fig. 3. Hence, the
Examiner’s position is reasonable in light of the Specification’s description
of the invention and is not inconsistent with Appellant’s proffered dictionary
definition of “urge” as meaning “to push or drive forward forcefully,”
(Reply Br. 4 (citing the AMERICAN HERITAGE DICTIONARY).
The Examiner’s rejection of claim 8 as anticipated by Deferme is
sustained. Claims 9-28 fall with claim 1.
Appeal 2010-008543
Application 11/879,727
Patent 7,070,029 B2

6

DECISION
The decision of the Examiner to reject claims 8-28 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

mls

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303