Ex Parte Hartgers et al

Patent Trial and Appeal Board

Jun 9, 2016

11254009 (P.T.A.B. Jun. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111254,009 10/19/2005
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
06/09/2016
FIRST NAMED INVENTOR
Andrew Hartgers
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.
CSAZ 200234US01 1526
EXAMINER
SKURDAL, COREY NELSON
ART UNIT PAPER NUMBER
3782
MAILDATE DELIVERY MODE
06/09/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW HARTGERS, KEVIN NICHOLLS, BERNIE RICE,
DOUGLAS POWER, CHRIS DOWSON, DON HEWITT,
JEFF BRADSHAW, and MARK MCKELLER
Appeal2014-004467
Application 11/254,009
Technology Center 3700
Before LYNNE H. BROWNE, JEREMY M. PLENZLER, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andrew Hartgers et al. (Appellants) 1 seek review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 53-86. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Cooper Standard Automotive Inc. as the real
party in interest. Br. 1.
Appeal2014-004467
Application 11/254,009
The disclosed subject matter "is concerned with a damper assembly
for damping vibrations of a vehicle by modulating relative motion of a mass,
particularly a spare tire, with respect to the vehicle." Spec. i-f 2. Claims 53,
77, and 86 are independent. Claim 53 is reproduced below:
53. A damper assembly for use in an associated
vehicle structure that includes an associated existing
mass mounted thereto, the damper assembly
compnsmg:
a support member extending from the
associated vehicle structure; and
first and second dampers secured to the
support member, the dampers operatively
interconnecting the associated vehicle structure and
the associated existing mass for modulating relative
motion of the associated existing mass with respect
to the associated vehicle structure, the first damper
modulating the vertical relative motion and the
second damner modulatirn.! non-vertical relative
~ .__,
motion.
REJECTIONS
1. Claims 53-59 and 61-85 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Terwilliger (US 4,964,552, issued Oct. 23, 1990) and
Gaignard (US 5,683,215, issued Nov. 4, 1997).
2. Claims 60 and 86 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Terwilliger, Gaignard, and Yasue (US 4,174,797, issued
Nov. 20, 1979).
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Application 11/254,009
DISCUSSION
Rejection I -The rejection of claims 53-59 and
61-85 under 35 US.C. § 103(a)
To address certain claims in this Rejection (including both
independent claims 53 and 77), the Examiner found that Terwilliger taught
certain claimed structures but stated that "Terwilliger does not disclose a
first damper modulating vertical motion and a second damper modulating
non-vertical motion as claimed." Final Act. 2 (dated Dec. 18, 2012). The
Examiner found, however, that Gaignard "teaches an alternate means for
securing two elements together, wherein a damping member 3 8 for
providing shock absorption is secured around a bushing member 60, the
damper and bushing being secured together via threaded shaft 28 and a nut
30." Id. According to the Examiner, it would have been obvious to (1)
"provide the threaded shaft 30/31 of Terwilliger with the damper 3 8 and
bushing 60 taught by Gaignard in order to provide a shock/vibration
absorbing attachment to reduce the vibrations of the carrier when the vehicle
is moving" and (2) "provide the bolts 54/55/72 with the damper 38 and
bushing 60 taught by Gaignard in order to further provide shock/vibration
absorption to reduce vibrations of the tire carrier." Id. at 3. The Examiner
stated that "each of the dampers would inherently modulate some vertical
and nonvertical motions (side or fore and aft)." Id.
First, addressing the claims in this Rejection as a group, Appellants
contend that Terwilliger and Gaignard "do not in combination nor
individually teach or suggest the subject invention" and that "[t]here is no
teaching or suggestion of using the tire for damping vibrations of the
vehicle." Br. 10-11; see also id. at 13 ("The prior art is not intended to use
movement of the spare tire to counteract unwanted vibrations in the
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Application 11/254,009
frame."). Although Appellants are correct that the prior art does not
explicitly teach or suggest "using the tire for damping vibrations of the
vehicle" (Br. 11 ), Appellants have not shown error in the findings (Final
Act. 3; Ans. 6-8) that the modified structure would, when configured as
proposed, inherently perform the recited functions.
Second, Appellants contend that "Terwilliger teaches away from the
present invention by seeking to tightly secure the spare tire against the
frame." Br. 11 (citing Terwilliger, col. 5, 11. 54--63). According to
Appellants, "if the spare tire is fixed or secured against horizontal and
vertical movement relative to the truck, the spare tire becomes a part of the
truck mass and does not counteract the vibratory movements of the frame
but rather contribute[s] to such movements." Id. at 13.
The Examiner responds that Appellants "essentially rel[y] on a single
sentence of the Terwilliger reference (col. 5 lines 57-59)"2 and "read[] this
disclosure as a requirement that Terwilliger is designed to 'mount the spare
tire in as tight a manner as possible' as if to say that Terwilliger aims to
prevent all movement of the spare tire and support structure relative to the
vehicle frame." Ans. 6 (citing Br. 11, 11. 9-14). According to the Examiner,
the sentence at issue "is actually an acknowledgment that there will
inherently be both horizontal and vertical movement of the spare tire and
support structure relative to the vehicle frame" in that "the phrase 'may be
minimized' is evidence that Terwilliger contemplated that horizontal and
vehicle movement will still be present, and thus used the term 'minimized'
rather than eliminated or completely prevented." Id. The Examiner states
2 The sentence identified provides: "Hence, both horizontal and
vertical movement may be minimized when the truck [ 1] 1 is in operation."
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Application 11/254,009
that "Terwilliger is relied on merely to teach structure of the claimed device"
and "views the addition of the elastic bushing of Gaignard to the fasteners of
Terwilliger as sufficient teaching of a device which discloses all structural
features of the claim, wherein the functional limitations of the claim would
be inherently met." Id.
We are not apprised of error based on Appellants' second argument.
A reference teaches away "when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
On the record here, we are not apprised of error in the Examiner's finding
that the sentence at column 5, lines 57-59 in Terwilliger demonstrates that
relative motion between spare tire 18 and certain support structures will
inherently exist when truck 11 is in operation. Further, we agree with the
Examiner that the discussion in Terwilliger, relied upon by Appellants, does
not teach eliminating relative motion between spare tire 18 and frame
member 13, 14 and thus does not teach away from the functional limitations
in claims 53 and 77 relating to the first and second dampers. 3
Third, addressing independent claims 53 and 77, Appellants contend
that "there is ... no teaching of a first damper and a second damper that
3 Claim 5 3 recites "for modulating relative motion of the associated
existing mass with respect to the associated vehicle structure, the first
damper modulating the vertical relative motion and the second damper
modulating non-vertical relative motion" whereas claim 77 recites "for
damping vertical vibrations between the vehicle structure and the spare tire
and "for damping at least one non-vertical vibration between the vehicle and
the spare tire." Br. 17, 21 (Claims App.).
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Application 11/254,009
modulate different types of relative motion ([i.e.,] vertical motion and non-
vertical motion)." Br. 11 (identifying language in claims 53 and 77 as
allegedly "set[ting] forth" "these features/concepts"). Appellants assert that
"if the structures of the prior art are deemed to be dampers, then all of the
cited documents only disclose a damper suitable for damping vertical
motion" and that because "the other dampers of the prior art only work in a
single direction (vertical), the other directions will cause right problems
because prior art structures are unable to separate the vertical damping mode
from the lateral, fore/aft and/or torsional modes." Id. at 13-14.
The Examiner responds that "Gaignard is specifically aimed at
reducing vibrations by providing a shock absorbing bushing" and that, "[t]o
that degree, Gaignard actually addresses a problem that Terwilliger has
pointed out, i.e. minimizing vertical and non-vertical movement of the spare
tire and support structure relative to the vehicle structure." Ans. 7. The
Examiner states that "Gaignard and Terwilliger both contemplate reducing
and minimizing vibration/motion between a support structure and a vehicle,
and the bushing/ damper [of] Gaignard would serve to inherently modulate
vertical and non-vertical motion between the support and vehicle." Id.
We are not apprised of error based on Appellants' third argument.
Appellants have not provided evidence or persuasive argument supporting
the assertion that elements 38/60 in Gaignard dampen only "vertical"
motion. Br. 13-14. Although Appellants "submit[] that the addition of
Gaignard would simply further instruct one skilled in the art to tighten the
structure as much as possible and preclude any relative motion, as opposed
to modulating or damping the vertical relative motion and modulating or
damping non-vertical relative motion" (Br. 11 ), this does not demonstrate
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Application 11/254,009
that elements 38/60 in Gaignard dampen only "vertical" motion. To the
extent Appellants contend that the "first damper" should modulate/ dampen
only vertical relative motions/vibrations whereas the "second damper"
should modulate/dampen only non-vertical relative motions/vibrations, the
claims, as currently presented, do not recite such limitations. In re Self, 671
F.2d 1344, 1348 (CCP A 1982) (rejecting arguments "not based on
limitations appearing in the claims").
Fourth, Appellants state that "dependent claims 73, 74 require a travel
restrictor -- a feature which is not shown nor even be contemplated in either
Terwilliger or Gaignard since the concept is to eliminate any travel." Br. 12.
The Examiner responds that element 70 of Terwilliger "is considered a
travel restrictor to the degree claimed by Appellant[ s]." Ans. 7.
We are not apprised of error because Appellants have not shown that
the language of either claim 73 or 74 distinguishes over swing arm 70 in
Terwilliger, identified by the Examiner. See Ans. 7. 4 And Appellants have
not identified error in the finding that swing arm 70 "clearly restricts travel
of the spare tire relative to the vehicle." Ans. 7; see also Spec. i-f 48 ("In
operation, the travel restrictor 92 limits vertical displacement of the spare
tire relative to the frame as best represented in FIGURE 7."); Terwilliger,
Fig. 4. To the extent Appellants contend that the identified structure
eliminates, rather than merely restricts travel (and thus does not satisfy
claims 73 and 74), for the reasons discussed above regarding Appellants'
4 In the statement of the rejection of, inter alia, claims 73 and 74, the
Examiner stated "a travel restrictor 70 disposed in a spaced relation to the
support member 40, and is engaged to the associated frame." Final Act. 2.
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Application 11/254,009
second argument, we agree with the Examiner that, in the modified device,
relative motion between the spare tire and frame will not be eliminated.
For these reasons, we sustain the rejection of claims 53-59 and 61-85.
Rejection 2 - The rejection of claims 60 and 86
under 35 USC§ 103(a)
For this Rejection, the Examiner stated that "Terwilliger modified by
Gaignard as applied to claims 53 and 55 discloses the damper assembly ...
but does not have a winch mechanism attached to the support member."
Final Act. 4. The Examiner found, however, that "Yasue teaches a similar
spare tire carrier wherein a winch mechanism 5 6 is attached to the support
member by hook 62" and concluded that it would have been obvious "to
provide the modified Terwilliger carrier with a winch for holding up and
lowering the distal end of support member 40 in order to enable the user to
easily raise and lower the tire and support member." Id.
Althom.?:h Annellants discuss claim 60 and winch mechanism 2 8 (Br.
'-' _._ _._ '
14), as noted by the Examiner, Appellants' discussion "fails to provide any
particular argument as to what is lacking or improper about the Terwilliger,
Gaignard and Yasue combination." Ans. 8.
As to independent claim 86, Appellants contend that claim is
"patentable since there is no teaching of combining the damping structure
with the winch mechanism associated with raising and lowering of a spare
tire relative to the vehicle." Br. 14. According to Appellants, "[f]inding
separate teachings in separate prior art documents for these features of
damping and the winch mechanism are nowhere advantageously combined
except in [Appellants'] disclosure." Id. at 14--15. By arguing that none of
the prior art alone teaches certain aspects of claim 86, Appellants do not
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address the rejection as articulated, in which the Examiner relies on certain
combined teachings of the prior art. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.").
For these reasons, we sustain the rejection of claims 60 and 86.
DECISION
We AFFIRM the decision to reject claims 53-86.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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