Ex Parte Forbes

Patent Trial and Appeal Board

Dec 17, 2013

12538506 (P.T.A.B. Dec. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES W. FORBES
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Appeal 2011-011791
Application 12/538,506
Technology Center 3600
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Before: JAMES P. CALVE, JILL D. HILL, and BEVERLY M. BUNTING,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the rejection of claims
1-13. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below.
1. A truck bolster for mounting cross-wise between first and
second sideframes of a rail road freight car truck, said truck
bolster having:
a center plate bowl;
first and second ends distantly outboard from said center
plate bowl;
a longitudinal axis running centrally from end to end of
said bolster;
said first end of said bolster having four bolster pockets
formed thereat for accommodating a first set of
friction damper wedges;
said second end of said bolster having four bolster
pockets formed thereat for accommodating a
second set of friction damper wedges;
said four bolster pockets at said first end of said bolster
including first and second bolster pockets oriented
to face toward a first sideframe column of the first
sideframe, and third and fourth bolster pockets
oriented to face toward an opposed, second
sideframe column of the first sideframe;
said first bolster pocket being outboard of said second
bolster pocket, and said third bolster pocket being
outboard of said fourth bolster pocket, said bolster
having a first partition located between said first
and second bolster pockets, and a second partition
located between said third and fourth bolster
pockets;
each of said bolster pockets has a sidewall extending in a
plane to which said longitudinal axis is normal;
and
said bolster pockets having respective sloped surfaces
each having a primary angle, alpha, measured in a
planar cross-section of the bolster perpendicular to
the length of the bolster between vertical and said
sloped surface oriented to urge a damper engaged
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therewith toward one of the sideframe columns,
alpha being greater than 35 degrees.

REJECTIONS
Claims 1-5, 7-10, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Barber (US 3,714,905; iss. Feb. 6, 1973), Hawthorne (US
4,244,298; Jan. 13, 1981), and Neumann (US 3,901,163; iss. Aug. 26, 1975).
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Barber, Hawthorne, Neumann, and Wiebe (US 4,915,031; iss. Apr. 10,
1990).
Claims 1-6, 9, and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hawthorne and Neumann.
Claims 1-13 are rejected on the grounds of non-statutory obviousness
double patenting over claims 11-23 of Forbes (US 7,571,684 B2; iss. Aug.
11, 2009).
ANALYSIS
Claims 1-5, 7-10, and 12 as unpatentable over Barber, Hawthorne, and
Neumann
Appellant argues claims 1-5, 8-10, and 12 as a group and separately
argues claim 7. App. Br. 9-14. We select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii) (2011). Claims 3-5, 8-10, and 12 stand or fall with
claim 1. We separately address Appellant’s arguments as to claim 7.
The Examiner found that Barber discloses a truck bolster as claimed
except for a center plate bowl, which Hawthorne discloses. Ans. 3-4. The
Examiner found that Neumann discloses a bolster pocket with a slope angle
of 35-42 degrees preferred. Ans. 4. The Examiner determined that it would
have been obvious to form the angle of the dampers and damper pockets of
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Barber in the range suggested by Neumann to achieve the expected
performance and advantages thereof and avoid the disadvantages of sharper
wedge angles. Ans. 4, 8-9.
Appellant argues that Hawthorne teaches that the wedge angle should
be reduced to below 35 degrees and this disclosure is a clear teaching away.
Reply Br. 4-5; App. Br. 10-11. This argument amounts to an individual
attack on the references where the Examiner relied on Neumann to disclose
the claimed wedge angle and Hawthorne to disclose a center bowl plate.
Ans. 9. The Examiner also found that Neumann and Hawthorne describe
preferences for alternative wedge angles and Neumann prefers wedge angles
greater than 35 degrees as claimed. Ans. 8. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004) (the prior art’s disclosure of alternate designs is
not a teaching away from any of the alternatives unless a reference criticizes,
discredits, or discourages a claimed solution). The alleged teaching away of
Hawthorne discusses a parametric study that concluded that varying a single
parameter would not result in a practical system to secure wedges against
undesirable loading during vertical motion and suggested reducing the angle
from 35 to 30 degrees in a multi-parameter context along with reducing the
column coefficient of friction and increasing the empty and loaded wedge
spring force substantially. See Hawthorne, col. 5, ll. 8-18; App. Br. 10.
Appellant’s arguments that the Examiner is impermissibly picking and
choosing features from each reference (App. Br. 11-13) is not persuasive as
the test for obviousness is what the combined teachings of the references
would suggest to a skilled artisan.
We sustain the rejection of claims 1-5, 8-10, and 12.

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Claim 7
Claim 7 depends from claim 1 and recites “wherein each of said
bolster pockets is of a width corresponding to a coil spring of a size at least
as a [sic] great as an AAR B432 spring.” The Examiner determined that it
would have been obvious to size the dampers and damper pockets of Barber
to a width that corresponds to an AAR B432 spring, as recited in claim 7, to
accommodate such springs for supporting an expected load corresponding to
the capacity of such springs as a matter of routine engineering. Ans. 5, 9.
Appellant argues that claim 7 is not about a particular size of a spring
but rather spring size is an indirect proxy for the portion of the spring group
spring rate driving the dampers and thereby the relative damping of the truck
suspension, which is a subtle task not a routine task. App. Br. 13-14. This
argument is not persuasive because it is not commensurate with the scope of
claim 7. We sustain the rejection of claim 7.
Claim 13 as unpatentable over Barber, Hawthorne, Neumann, and Wiebe
The Examiner found that Wiebe discloses a second spring nested in a
first spring as recited in claim 13 and determined that it would have been
obvious to use such nested springs under the damper wedges of Barber, as
modified, to enhance the performance of the damping assembly. Ans. 5-6.
Appellant argues that if increased damping from nested springs were
expected to improve ride quality, then nested coils should have been used to
optimize damper spring rate values in railroad car suspensions but this has
not been done even though nested coils were known for years. App. Br. 15.
This argument is not persuasive as the mere passage of time without a
claimed invention is not evidence of nonobviousness. See In re Kahn, 441
F.3d 977, 990-91 (Fed. Cir. 2006). We sustain the rejection of claim 13.
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Claims 1-6, 9, and 11 as unpatentable over Hawthorne and Neumann
Appellant does not present separate arguments as to this rejection,
except for claims 2 and 11. See App. Br. 4-15. Accordingly, we summarily
affirm the rejection of claims 1, 3-6, and 9.
Claim 2
The Examiner found that Hawthorne discloses partitions 66 that are
capable of functioning as a spring seat such as a small spring seat for a small
diameter spring. Ans. 9. Appellant argues that the Appellant’s Specification
distinguishes between a partition such as item 452 in Figure 5e and the land
of item 566 which defines an upper spring seat for spring 564 in Figure 8d of
Appellant’s Specification and it can be seen from this inspection that
Hawthorne item 66 does not define a spring seat. App. Br. 13; Reply Br. 6.
Appellant’s arguments are not commensurate with the scope of claim
2 and thus are not persuasive. Appellant has not identified any claimed
feature or a lexicographic definition of partition in the Specification that
distinguishes over Hawthorne. We decline to read unclaimed features from
Appellant’s Specification into claim 2. In addition, the Examiner had a
sound basis for finding that Hawthorne discloses partitions 66 that are
capable of functioning as a spring seat and Appellant has not shown that
Hawthorne’s partitions 66 are not capable of functioning as a spring seat.
We sustain the rejection of claim 2.
Claim 11
Claim 11 recites that “said first and second gibs being spaced apart a
distance leaving at least ¾” of travel of said bolster cross-wise relative to
said first sideframe to either side of a central position.” The Examiner found
that the gibs shown in Figure 4 of Hawthorne appear to allow a significant
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distance of travel, which appears to be at least ¾ of an inch. Ans. 7, 10.
Appellant argues that Neumann does not disclose such a feature and it is a
significant aspect of Neumann’s invention that an enlarged gib spacing is
undesirable and contrary to a primary object of the invention. App. Br. 14.
The Examiner has not established by a preponderance of evidence that
Hawthorne discloses first and second gibs that are spaced apart a distance
leaving at least ¾ of an inch of travel. The Examiner has not pointed to any
disclosure of dimensions in Hawthorne or a disclosure that the drawings are
drawn to scale. “[I]t is well established that patent drawings do not define
the precise proportions of the elements and may not be relied on to show
particular sizes if the specification is completely silent on the issue.” See
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956
(Fed. Cir. 2000). We do not sustain the rejection of claim 11.
Claims 1-13 for non-statutory obviousness-type double patenting
The Examiner rejected claims 1-13 for non-statutory obviousness-type
double patenting over claims 11-23 of Forbes. Ans. 7. The Examiner found
that although the claims are not identical, they are not patentably distinct
from each other because claims 11-23 of Forbes include all of the features
recited in claims 1-13 of the present application. Appellant argues that
claims 11-23 are patentably distinct because they are directed to an invention
that was subject to restriction and have not changed in material respects
pertinent to making of the restriction requirement. Reply Br. 2-3.
The Examiner has not established that claims 1-13 of the present
application are an obvious variation of claims 11-23 of Forbes because the
Examiner has not explained how claims 1-13, which are drawn to a truck
bolster, are an obvious variant of claims 11-23 of Forbes, which are drawn to
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a truck bolster and first and second sets of dampers. See Manual of Patent
Examining Procedure § 804 B.I. (8th ed., rev. 5, Aug. 2006). We do not
sustain the rejection of claims 1-13 for obviousness-type double patenting.

DECISION
We AFFIRM the rejection of claims 1-5, 7-10, and 12 as unpatentable
over Barber, Hawthorne, and Neumann.
We AFFIRM the rejection of claim 13 as unpatentable over Barber,
Hawthorne, Neumann, and Wiebe.
We AFFIRM the rejection of claims 1-6, and 9, and REVERSE the
rejection of claim 11 as unpatentable over Hawthorne and Neumann.
We REVERSE the rejection of claims 1-13 on the grounds of non-
statutory obviousness double patenting over claims 11-23 of Forbes.
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

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