Ex Parte Forbes

Patent Trial and Appeal Board

Mar 30, 2016

13225449 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/225,449 09/04/2011 James W. Forbes
21324 7590 04/01/2016
HAHN LOESER & PARKS, LLP
One GOJO Plaza
Suite 300
AKRON, OH 44311-1076
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.
200405.00150 1572
EXAMINER
LE, MARKT
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
04/01/2016 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):
patents@hahnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES W. FORBES
Appeal2013-003738
Application 13/225,449 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1 and 4---6. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, "[t]he real party in interest in the present
application is National Steel Car Limited, by assignment from the inventor
James W. Forbes." Appeal Br. 2.
Appeal2013-003738
Application 13/225,449
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. A railroad freight car truck having a load rating, said truck
compnsmg:
a bolster, sideframes, spring groups and wheelsets;
said bolster being mounted cross-wise to said sideframes;
said bolster having respective ends supported on respective
ones of said spring groups carried by said side frames,
said spring groups having vertical spring rates;
said sideframes being swingingly mounted on said wheelsets;
said bolster being moveable through a lateral displacement
relative to said sideframes, said lateral displacement
having an overall magnitude and including a first
component associated with a first lateral stiffness,
kpendulum, opposing cross-wise swinging deflection of
said sideframes and a second component associated
with a second lateral stiffness, kspring shear, opposing
sideways shear of said spring groups;
said first lateral stiffness being softer than said second lateral
stiffness;
said bolster being movable in non-trivial yaw relative to said
sideframes;
said truck having yaw resisting members mounted yieldingly
to oppose yawing of said bolster relative to said
sideframes;
dampers mounted to work between said respective ends of
said bolster and the sideframes, said dampers having
damper wedges;
said damper wedges each having a first face for working
against an associated wear surface in a friction
relationship, and a second face for seating in a damper
wedge pocket, said first and second faces being angled
with respect to one another at a primary damper wedge
angle, said primary damper wedge angle being at least
35 degrees.
2
Appeal2013-003738
Application 13/225,449
Petitionable Matter
The Appellant seeks review of the Examiner's decision "making
'final' ... the Office Action of April 11, 2012." Appeal Br. 14. However,
this matter is reviewable by petition under 3 7 C.F .R. § 1.181 (see Manual of
Patent Examining Procedure (MPEP) §§ 706.07(c), 1002.02(c)(3)(a), 1201)
and is not within the jurisdiction of the Board. See also In re Mindick, 371
F.2d 892, 894 (CCPA 1967).
Rejections
Claims 1, 5, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Applicant Admitted Prior Art (AAP A) and Barber
(US 3,714,905, iss. Feb. 6, 1973).2'3
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over the
AAPA, Barber, and Duncan (US 6,374,749 Bl, iss. Apr. 23, 2002).
ANALYSIS
The Examiner rejects the subject matter of claim 1 based on the
combined teachings of AAPA and Barber. Final Act. 2. The Examiner's
citation to AAPA is directed in-part to the Specification's Figures la-le
(Final Act. 2), which "illustrate[ s] ... a swing motion truck produced by
National Castings Inc., more commonly referred to as 'NACO"' (Spec.,
para. 3 5). The Examiner finds that AAP A "uses transom A60 for
maintaining the truck square, while Barber uses four damper arrangements at
2 AAP A is directed to the "[p ]rior art structure shown in Figs. 1 a-1 c of the
instant drawings and described in paragraph [0058] of the instant
specification." Final Act. 2.
3 The Examiner's rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over AAPA and Barber has been withdrawn. Ans. 5.
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Appeal2013-003738
Application 13/225,449
the bolster ends for maintaining the truck square." Final Act. 2. The
Examiner concludes that "it would have been obvious to one skilled in the
art to substitute four damper arrangements, similar to that taught by Barber,
for the transom of the Prior art structure so as to achieve the expected
advantages of Barber's teaching, such as softer responses [to improve ride
quality]." Id.; see Ans. 6.
The Appellant contends AAP A and Barber "teach away from each
other and from the proposed combination of elements," and that the
proposed combination of teachings from AAP A and Barber "destroys the
function of at least one of the references." Appeal Br. 13. The Appellant
also contends that the Examiner's rejection fails to "provide a clearly
articulated reason for making the proposed combination." Id. These
contentions are based primarily on the assertion that the sideframes of a
NACO truck are substantially rigid and do not accommodate yaw by flexing
resiliently; whereas Barber's truck accommodates yaw by flexing
resiliently. 4 See id. at 9. The Appellant's contentions are not persuasive.
In this case, we agree with the Examiner that the substitution of
AAPA's transom with Barber's four damper arrangements is merely a
predictable use of prior art elements according to their established functions,
i.e., maintaining the truck square. Ans. 6. Notably, the Examiner also
explained that the substitution would result in improved ride quality due to
softer responses. Id. As such, we determine that the Examiner's articulated
4 The Appellant also provides List (US 4,483,253, iss. Nov. 20, 1984) and
Schindehutte (US 4,674,411, iss. June 23, 1987) as evidence to support the
assertion that NACO-type trucks that use a transom to eliminate yaw, i.e.,
emphasize a rigid connection and a stiffer ride instead of a softer ride. See
Appeal Br. 9, 10-12.
4
Appeal2013-003738
Application 13/225,449
reason to modify AAPA's truck, to use four dampers as taught by Barber, is
based on rational underpinnings.
In response, the Appellant contends that "Barber does not use the four
damper arrangement to maintain the truck square. Barber's four dampers
allow the truck to flex, and then urge the truck to return to square under the
moment-couple generated by flexing to a non-square condition." Reply
Br. 7. The Appellant's contention is unpersuasive. Although the AAPA
truck and the Barber truck use separate techniques to return the truck to
square condition, both trucks ultimately return the truck to a square
condition.
Further, the Appellant's point that the NACO truck's use of transoms,
which are rigid, as compared to Barber's use of dampers, which flex
resiliently, is not persuasive because a person of ordinary skill in the art
would be able to weigh the simultaneous advantages and disadvantages of
the Examiner's modification. See also Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) ("[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine[.]" (citing Winner Int 'l Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000)). In this case, we determine
that a person of ordinary skill in the art would understand that in some
circumstances the advantage of improving ride quality by providing a softer
ride would offset the disadvantages of no longer having substantially rigid
truck sideframes. Based on the foregoing we fail to ascertain how AAP A
and Barber teach away from each other and from the proposed combination
of elements. In this case, a person of ordinary skill in the art, upon reading
AAPA, would not be discouraged from following the path set out in Barber,
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Appeal2013-003738
Application 13/225,449
and would not be led in a direction divergent from the path that was taken by
the Appellant. See also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). For
similar reasons, we disagree with the Appellant that the proposed
combination of teachings from AAP A and Barber destroys the function of at
least one of the references.
The Appellant also contends that the Examiner's premise "that a
person of skill in the art would have known at the time that removing the
transom improves performance in a swing-motion truck" lacks objective
evidence and lacks a predictable result. Reply Br. 6. The Appellant's
contention is not persuasive. We agree with the Examiner that the result of
the Examiner's substitution obtains "predictable results, i.e.[,] maintaining
the truck square while improving ride quality due to softer responses."
Ans. 6.
The Appellant asserts that claim 1 "requires damper wedges having a
primary angle greater than 35 degrees." See Appeal Br. 8 (emphasis
added). The Appellant's assertion is inaccurate because claim 1 recites,
"said primary damper wedge angle being at least 35 degrees." Appeal Br.,
Claims App. (emphasis added). The Appellant also contends that "nothing
in Barber suggests that the angle be at least 35 degrees." Appeal Br. 8. The
Appellant's argument is not persuasive.
The Appellant's Specification at paragraph 58, with added emphasis,
describes:
the damper wedges shown in Barber appear to have relatively
sharply angled wedges, with an included angle between the
friction face (i.e., the face bearing against the side frame column)
and the sliding face (i.e., the angled face seated in the damper
pocket formed in the bolster, typically the hypotenuse) of
roughly 35 degrees.
6
Appeal2013-003738
Application 13/225,449
The Examiner finds that the Specification's description of "roughly 3 5
degrees" would be understood by a person of ordinary skill in the art to be "a
little more or less than 35 degrees." See Ans. 7, Final Act. 2-3. We agree.
Here, the Specification's description of Barber's damper wedges being
roughly 35 degrees corresponds to "damper wedge angle being at least 35
degrees," as recited in claim 1.
We have considered the remaining arguments in the Appeal Brief and
the Reply Brief and have determined that they are not persuasive. Thus, we
sustain the Examiner's rejection of independent claim 1.
Although the Appellant has a separate heading for the rejection of
claims 5 and 6, the Appellant relies on a similar argument as presented
against the Examiner's rejection of claim 1. Appeal Br. 13-14. Hence, for
similar reasons as discussed above, we sustain the Examiner's rejection of
claims 5 and 6. The Appellant also provides a separate heading for the
rejection of claim 4 as unpatentable over AAP A, Barber, and Duncan.
Id. at 14. However, the Appellant does not advance any further arguments,
rather the Appellant "submits that to the extent that claim 1 is allowable, so
too is claim 4." Id. For the same reasons we have sustained the rejection of
claim 1, we likewise sustain the rejection of claim 4.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1 and 4---6.
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Application 13/225,449
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)(l )(iv).
AFFIRMED
8