Ex Parte Handke et al

Board of Patent Appeals and Interferences

May 31, 2012

11205955 (B.P.A.I. May. 31, 2012)

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.
11/205,955 08/17/2005 Gunther Handke 4452-697 4377
27799 7590 06/01/2012
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
HSIAO, JAMES K
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
06/01/2012 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 GUNTHER HANDKE and MARKUS SCHULZ
________________

Appeal 2009-013432
Application 11/205,955
Technology Center 3600
________________

Before NEAL E. ABRAMS, JENNIFER D. BAHR, and STEVEN D. A.
McCARTHY, Administrative Patent Judges.

ABRAMS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Gunther Handke et al. (Appellants) seek our review under 35 U.S.C. §
134 of the Examiner’s final rejection of claims 15-27, which are all the
claims remaining in the application. We have jurisdiction under 35 U.S.C. §
6(b).
WE REVERSE.

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Application 11/205,955

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THE INVENTION
This invention relates to a mount for a vibration damper for a vehicle.
Claim 15, reproduced below, is representative of the subject matter on
appeal.
15. A mount for mounting a vibration damper to a
vehicle having a receiving opening and first connecting means
for connecting the vibration damper to the vehicle, the mount
comprising:
a bearing cap engageable with a vibration damper
and having at least one anti-twist surface which can be inserted
into the receiving opening so as to align the bearing cap with
respect to the vehicle;
second connecting means coupled to the bearing
cap and configured to cooperate with the first connecting means
to fix the vibration damper to the vehicle after the anti-twist
surface is inserted into the receiving opening, the anti-twist
surface aligning the first connecting means with the second
connecting means; and
a retainer coupled to the bearing cap and
configured to engage the vehicle to suspend the vibration
damper from the vehicle until the vibration damper is fixed to
the vehicle by the first and second connecting means, wherein
the retainer acts independently of the first and second
connecting means.

THE PRIOR ART
Zietsch US 6,572,089 B2 Jun. 3, 2003

THE REJECTION
The Examiner has rejected claims 15-27 under 35 U.S.C. §102 as
anticipated by Zietsch.

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3
OPINION
In view of the Appellants’ representations (Supp. App. Br. 6), we
shall consider that all of the dependent claims stand or fall with independent
claim 15, from which they depend. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 15 is directed to a mount for installing a vibration damper on a
vehicle having a receiving opening and first connecting means. The mount
comprises a bearing cap engageable with the vibration damper, second
connecting means coupled to the bearing cap, and a retainer coupled to the
bearing cap for suspending the vibration damper from the vehicle prior to
attachment by means of the first and second connecting means. The
Examiner has taken the position that all of the structure recited in claim 15 is
disclosed in Zietsch (Ans. 3), considering that because of the functional
language used in the claim to set forth the retainer “the reference merely has
to be capable of performing the function.” Ans. 5.
The Appellants have stated in their Specification that Zietsch defines
the state of the art for mounts for vibration brackets. Spec. 2, para. [0002].
However, according to the Appellants, their invention goes beyond the
structure disclosed in Zietsch by providing a retainer for suspending the
vibration damper from the vehicle independently of the accomplishment of
the permanent connection by way of the first and second connecting means,
which facilitates the process of attaching the vibration damper to the vehicle.
Spec. 3-4, paras. [0005-0008]. The only argument advanced by the
Appellants in opposition to the Examiner’s decision is that Zietsch fails to
disclose or teach the claimed retainer. Supp. App. Br. 4.
The objective of the Zietsch invention is to provide a mount for a
vibration damper (shock absorber) which insures that the connecting means
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mounted on the vehicle and the connecting means mounted on the vibration
damper automatically are aligned with one another during the process of
installing the damper. Col. 1, lines 51-54. To accomplish this task, Zietsch
provides a cap 19 having a generally elliptical base surface 25 which is
inserted into a complementary substantially elliptical mounting hole 9 in the
support element of the vehicle. Cap 19 is provided with a plurality of
stiffening ribs 43, each terminating in an extension 45 having a latching
detent 47 that engages a hole (not shown) in mount housing 15 to attach cap
19 to housing 15. Latching detents 47 cooperate with the lower edge of cap
19 (unnumbered) to provide a connection that allows torque to be
transmitted between twisting surfaces 23 on cap 19 and mount housing 15 as
cap 19 is being inserted into mounting hole 9 on the vehicle. Figs.1, 3-5;
Col. 3, lines 26-56.
There is no recognition in Zietsch of the need to suspend the shock
absorber from the vehicle prior to affixing it thereto by the first and second
connecting means, nor does Zietsch label any structure as a “retainer.”
However, the Examiner has taken the position that there exists in Zietsch
a retainer (near 51) coupled to the bearing cap and
capable of engaging the vehicle to suspend the
vibration damper from the vehicle until the
vibration damper is fixed to the vehicle by the first
and second connecting means, wherein the retainer
acts independently of the first and second
connecting means.
Ans. 3.
Zietsch numeral 51 denotes “an area of reduced cross-section” on
extensions 45 of stiffening ribs 43. Fig. 4; Col. 3 line 63-Col. 4 line 4. The
Examiner has not explained what portion of cap 19 constitutes the “(near
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51)” that is considered to be the “retainer” recited in claim 15, nor how this
portion has the capability to perform the function of suspending the vibration
damper from the vehicle. The only amplification provided by the Examiner
is that “[t]he ability of the retainer to suspend the vibration damper from the
vehicle is recited as function language in claim 15, therefore, the reference
merely has to be capable of performing the function,” and that since claim
15 “does not recite any details about the structure, size, type or shape of the
vehicle” the reference “merely has to disclose a retainer that is configured to
be capable of engaging a [sic] undefined structure.” Ans. 5. The Examiner
also opines that the latching detents used to form a connection with the
vibration damper housing “are capable of engaging the vehicle, similar to
how they engage the housing,” and adds that “the structure of Appellant’s
[sic] invention is very similar to the structure of Zietsch” in that both have a
rib and tab structure. Ans. 6.
The Appellants’ claim 15 is directed to a mount, one of the
components of which is a cap. This cap performs not only the torque
transmitting function to which the Zietsch mount is directed, but the
additional function of engaging the vehicle to suspend the vibration damper
independently of the first and second connection means. As recited in claim
15, this additional function is performed by “a retainer coupled to the
bearing cap,” the retainer further being “configured to engage the vehicle to
suspend the vibration damper from the vehicle . . . independently of the first
and second connecting means.” From our perspective, these words clearly
constitute a positive description of structure, albeit in broad terms, and are
not merely recitations of desired functions, as the Examiner has stated. This
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being the case, the question before us is whether such structure is disclosed
in Zietsch, and our answer to that is in the negative.
Claim 15 requires that the bearing cap be engageable with the
vibration damper and be coupled to a retainer means that is configured to
engage the vehicle to suspend the vibration damper. Zietsch discloses a
mount having a bearing cap that is engageable with the vibration damper by
means of latching detents in order to perform the function of aligning the
first and second connecting means. However, Zietsch does not disclose
structure for suspending the vibration damper from the vehicle, much less
such structure “coupled to the bearing cap.” On this basis Zietsch therefore
fails to anticipate the subject matter recited in claim 15. Alternatively if, as
the Examiner has proposed, the latching detents on the Zietsch cap instead
were somehow used to attach the cap to the vehicle in order to suspend the
damper from the vehicle, the cap would be detached from the damper and
the resulting mount structure would lose its ability to align the first and
second connecting means. Thus, the rejection would fail to be anticipatory
on that basis.
DECISION
The decision of the Examiner to reject claims 15-27 as being
anticipated by Zietsch under 35 U.S.C. § 102 is reversed.
REVERSED

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