Ex parte HAMAEKERS

Board of Patent Appeals and Interferences

Aug 13, 1998

08287448 (B.P.A.I. Aug. 13, 1998)

Application for patent filed August 8, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ARNO HAMAEKERS
____________
Appeal No. 97-0766
Application No. 08/287,4481
____________
ON BRIEF
____________
Before MEISTER, ABRAMS, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
Appeal No. 97-0766
Application No. 08/287,448
Claims 13 through 15, 19 and 20 were amended subsequent2
to the final rejection.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 13 through 16 and 18 through 22, which are
all of the claims pending in this application.2
We AFFIRM-IN-PART.
Appeal No. 97-0766 Page 3
Application No. 08/287,448
BACKGROUND
The appellant's invention relates to an annular vibration
damping machine element. An understanding of the invention
can be derived from a reading of exemplary claims 13 and 18,
which appear in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Dillman 2,723,573 Nov. 15,
1955
Withers 5,299,468 April 5,
1994
Gebhardt 2,162,611 Feb. 5,
1986
(United Kingdom)
Claims 13 through 15 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Gebhardt.
Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Gebhardt in view of Dillman.
Appeal No. 97-0766 Page 4
Application No. 08/287,448
Claim 18 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Gebhardt in view of Withers.
Claims 19 through 22 stand rejected under 35 U.S.C. § 103
as being unpatentable over Gebhardt in view of Withers and
Dillman.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 12, mailed October 1, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 11, filed August 16, 1996) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
Appeal No. 97-0766 Page 5
Application No. 08/287,448
examiner. As a consequence of our review, we make the
determinations which follow.
Claims 13 through 16
We do not sustain the examiner's rejection of claims 13
through 15 under 35 U.S.C. § 102(b) as being anticipated by
Gebhardt. Likewise, we do not sustain the examiner's
rejection of claim 16 under 35 U.S.C. § 103 as being
unpatentable over Gebhardt in view of Dillman.
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Gebhardt discloses a rotary vibration damper. As shown
in Figure 2, the rotary vibration damper includes a primary
member 1 formed as a flange screwed to a crank shaft (not
shown), a secondary member, and a resilient damping layer 3
Appeal No. 97-0766 Page 6
Application No. 08/287,448
provided between the members 1, 2. The secondary member
includes a support 4, a V-belt pulley unit 5 and a fly wheel-
type ring 6. Gebhardt teaches that the primary member 1
together with the resilient damping layer 3 and the support 4
may be obtained as a unit and that the V-belt pulley unit 5
and the fly wheel-type ring 6 can be connected positively or
merely be friction to the support 4 forming a unitary assembly
with the primary member 1 and the resilient damping layer 3.
The appellant argues (brief, pp. 4-5) that Gebhardt does
not disclose the claimed method steps of (1) establishing a
uniform clearance between the machine elements (i.e.,
Gebhardt's member 1 and support 4), and (2) forming a
viscoelastic layer in the clearance. We agree. Claim 13
requires that the viscoelastic layer be formed in the
clearance established between the machine elements. Gebhardt
does not disclose, either expressly described or under
principles of inherency, that his resilient damping layer 3 is
formed in the clearance established between his machine
elements (i.e., Gebhardt's member 1 and support 4). In our
opinion, the examiner's speculation (answer, p. 7) that
Appeal No. 97-0766 Page 7
Application No. 08/287,448
Gebhardt's resilient damping layer 3 is inherently formed in
the gap (i.e., clearance) established between his machine
elements is without support. While Gebhardt need not
expressly disclose each claimed element/step in order to
anticipate the claimed invention (see Tyler Refrigeration v.
Kysor Indus. Corp., 777 F.2d 687, 689, 227 USPQ 845, 846-847
(Fed. Cir. 1985)), when relying upon the theory of inherency,
the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art. See Ex parte Levy, 17
USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990). This the
examiner has not done.
For the reasons set forth above, the decision of the
examiner to reject claims 13 through 15 under 35 U.S.C. §
102(b) is reversed. In addition, the decision of the examiner
to reject dependent claim 16 under 35 U.S.C. § 103 is reversed
since the limitations of parent claim 13 are not suggested or
taught by the applied prior art.
Appeal No. 97-0766 Page 8
Application No. 08/287,448
Claims 18 through 22
We sustain the examiner's rejection of claims 18 through
22 under 35 U.S.C. § 103.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in
evaluating such references it is proper to take into account
not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
Claim 18 recites an annular machine part, comprising,
inter alia, a planar hub ring, an annular machine element, a
layer of viscoelastic material, an annular belt pulley and a
flywheel. Claim 18 further recites that the flywheel is
attached to an outer surface of the annular belt pulley and
Appeal No. 97-0766 Page 9
Application No. 08/287,448
that the annular machine element has an inner wall contiguous
with an outer peripheral surface of the hub ring.
The teachings of Gebhardt have been set forth previously.
Withers discloses an elastomeric vibrational damper. As
shown in Figure 2, the damper includes a hub section 11, an
intermediary mounting member 15, an elastomeric material
sleeve 25, an inertia ring 19 and an inertia ring member 26
with V-belt grooves 30.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Gebhardt and claim
18, it is our opinion that the only difference is the
limitation that the annular machine part includes a planar hub
ring and an annular machine element having an inner wall
contiguous with an outer peripheral surface of the hub ring.
Appeal No. 97-0766 Page 10
Application No. 08/287,448
With regard to this difference, the examiner determined
(answer, pp. 5-6) that
[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify
Gebhardt by having a separate planar hub ring and annular
machine element so that the inner wall of the annular
machine element is contiguous with an outer peripheral
surface of the hub ring in view of Withers for the
purpose of ease of assembly.
We agree.
The arguments raised by the appellant (brief, pp. 6-7)
are unpersuasive for the following reasons.
First, the appellant argues (brief, p. 7) that the
flywheel of Gebhardt is not attached to an outer surface of
the belt pulley. We do not agree. The claimed belt pulley
reads on Gebhardt's support 4 and pulley unit 5 taken
together. Thus, as shown in Figure 2 of Gebhardt his fly
wheel-type ring 6 is attached to one of the outer surfaces of
the belt pulley (i.e., the outer surface of support 4 which is
readable as part of the claimed belt pulley).
Appeal No. 97-0766 Page 11
Application No. 08/287,448
Second, the appellant argues (brief, pp. 6-7) that it
would not have been obvious to modify Gebhardt by the
teachings of Withers since this would negate the compensatory
feature of Gebhardt (i.e., the unitary nature of primary
member 1) that permits the use of a plurality of parts for the
secondary member 2 and that such a combination would increase
the complexity of assembly and maintenance for Gebhardt. We
do not agree. It is our view that the combined teachings of
Gebhardt and Withers would have suggested such a modification
to Gebhardt's primary member 1 for the self evident advantages
thereof, such as ease of replacing a broken element.
For the reasons set forth above, the decision of the
examiner to reject claim 18 under 35 U.S.C. § 103 is affirmed.
Dependent claims 19 through 22 have not been separately
argued by the appellant. Accordingly, these claims will be
treated as falling with independent claim 18. See In re
Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991); In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
Appeal No. 97-0766 Page 12
Application No. 08/287,448
(Fed. Cir. 1987); and In re Wood, 582 F.2d 638, 642, 199 USPQ
137, 140 (CCPA 1978). Thus, it follows that the decision of
the examiner to reject claims 19 through 22 under 35 U.S.C. §
103 is also affirmed.
Appeal No. 97-0766 Page 13
Application No. 08/287,448
CONCLUSION
To summarize, the decision of the examiner to reject the
claims under appeal is affirmed with respect to claims 18
through 22 but is reversed with respect to claims 13 through
16.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0766 Page 14
Application No. 08/287,448
KENYON AND KENYON
ONE BROADWAY
NEW YORK, NY 10004
APPEAL NO. 97-0766 - JUDGE NASE
APPLICATION NO. 08/287,448
APJ NASE
APJ MEISTER
APJ ABRAMS
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 11 Aug 98
FINAL TYPED: