Ex Parte Longacre

Patent Trial and Appeal Board

Jun 28, 2018

14987096 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/987,096 01/04/2016 Christian Longacre
67424 7590 06/28/2018
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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.
DKT15104
(0016.0042.001)
CONFIRMATION NO.
6137
EXAMINER
VERDIER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
06/28/2018 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 CHRISTIAN LONGACRE 1
Appeal2017-010290
Application 14/987 ,096
Technology Center 3700
Before: DANIEL S. SONG, ERIC C. JESCHKE, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
Final Office Action (hereinafter "Final Act.") rejecting claims 1-21, 23, and
24 in the present application, claims 22, 25, and 26 having been previously
withdrawn (App. Br. 4). We have jurisdiction under 35 U.S.C. §§ 6(b) and
134.
We AFFIRM.
1 Referred to as "Appellant" herein. The Applicant and real party in interest
is Borg Warner (Appeal Brief (hereinafter "App. Br.") 4).
Appeal2017-010290
Application 14/987 ,096
The claimed invention is directed to a damper that at least partially
surrounds a bearing of a product such as a turbocharger (Abstract; Spec.
,r 2). Independent claim 1 is illustrative of the invention, and reads as
follows (App. Br. 16, Claims App'x, emphasis added):
1. A product comprising:
a rotor comprising a shaft having a rotation axis, a bearing
at least partially surrounding the shaft allowing for rotation of the
shaft within the bearing, and a solid damper at least partially
surrounding the bearing wherein the damper is constructed and
arranged to restrict axial movement of the bearing wherein the
damper axially comprises a plurality of layers comprising at
least one plastic layer and at least one metal layer.
Independent claim 11 is directed to a method, and recites the same
limitation of claim 1 emphasized above (App. Br. 17, Clams App 'x).
REJECTIONS 2
1. Claims 4, 5, 9, 14, 15, 19, 21, 23, and 24 stand rejected under
35 U.S.C. § 112(a) for failing to comply with the written description
requirement (Final Act. 4).
2. Claims 1-3, 6-9, 11-13, 16-19, and 23 stand rejected under 35
U.S.C. § 103 as unpatentable over House et al. (US 2013/0202432 Al, pub.
Aug. 8, 2013 (hereinafter "House")) in view of Dodoro et al. (US
2008/0253710 Al, pub. Oct. 16, 2008 (hereinafter "Dodoro")) (Final Act.
6).
2 Rejection of claim 23 under 35 U.S.C. § 112(b) has been withdrawn by the
Examiner (Ans. 3).
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Application 14/987 ,096
3. Claims 4, 5, 14, 15, and 21 stand rejected under 35 U.S.C.
§ 103 as unpatentable over House and Dodoro in view of Baumhauer et al.
(US 2009/0005183 Al, pub. Jan. 1, 2009 (hereinafter "Baumhauer")) (Final
Act. 8).
4. Claims 10 and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over House and Dodoro in view of McEachem, Jr. et al. (US
4,708,602, pub. Nov. 24, 1987 (hereinafter "McEachem")) (Final Act. 9).
5. Claim 24 stands rejected under 35 U.S.C. § 103 as unpatentable
over House and Dodoro in view ofBaumhauer (Final Act. 10).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential)).
Rejection 1
The Examiner rejects dependent claims 4, 5, 9, 14, 15, 19, 21, 23, and
24 for failing to comply with the written description requirement (Final Act.
4 ). The Examiner finds that the limitations of these dependent claims lack
written descriptive support "in the specification as original filed in
combination with the damper axially comprising a plurality of layers
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comprising at least one plastic layer and at least one metal layer, and
therefore add new matter." (Final Act. 5).
The Appellant disagrees and points to Paragraph 22 of the
Specification as providing the requisite written description of these
dependent claims (App. Br. 10). However, the Examiner is correct that
Paragraph 22 does not provide support for the recited limitations of these
claims "in combination with the damper axially comprising a plurality of
layers comprising at least one plastic later [ sic, layer] and at least one metal
layer." (Ans. 4). As the Examiner explains, Paragraph 22 "merely set[s]
forth numbers of variations of alternate materials, without any positive link
to the damper axially comprising a plurality of layers comprising at least one
plastic layer and at least one metal layer." (Ans. 5). In particular, Paragraph
22 discloses "variations" in which the damper may be made using the
various different materials identified therein, and discloses two "variations"
in which the damper is made with layers of plastic and metal (see Spec.
,r 22). However, this paragraph does not disclose a multi-layer damper of
plastic and metal in combination with additional layers made from the
variety of materials identified earlier in paragraph 22 (see id.). The
Appellant also cites to additional paragraphs in the Specification for support
(Reply Brief (hereinafter "Reply Br.") 4 ). However, upon inspection, those
cited paragraphs also fail to provide written descriptive support.
In response to the Examiner's Answer, the Appellant further argues
that "one of ordinary skill in the art would be sufficiently informed and
enabled to arrive at claims 4-5, 9, 14-15, 19, 21 and 23-24 without undue
experimentation," and in view of the "large number of interchangeable
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components and elements" disclosed in the Specification and what was
known in the art, "one of ordinary skill in the art could modify or combine"
them to attain the subject matter of these claims "without undue
experimentation and despite the lack of a 'positive link."' (Reply Br. 4--5).
However, this rejection is not based on lack of enablement, but rather,
is based on lack of sufficient written descriptive support for the claimed
subject matter. The test for written description "requires an objective
inquiry into the four comers of the specification from the perspective of a
person of ordinary skill in the art. Based on that inquiry, the specification
must describe an invention understandable to that skilled artisan and show
that the inventor actually invented the invention claimed." Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Moreover, the fact that the claimed subject matter may have been
obvious to, and attainable through modification by, one of ordinary skill in
the art in view of the Specification is not material in establishing possession.
"[I]t is the specification itself that must demonstrate possession. And while
the description requirement does not demand any particular form of
disclosure, ... or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement." Id. at 1352 (emphasis added).
Therefore, in view of the above considerations, we affirm Rejection 1.
Rejection 2
The Examiner rejects claims 1-3, 6-9, 11-13, 16-19, and 23 as
unpatentable over House in view of Dodoro, finding that as to the
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Application 14/987 ,096
independent claims, House discloses a product and method substantially as
claimed, but fails to disclose that "the damper axially comprises a plurality
of layers comprising at least one plastic layer and at least one metal layer."
(Final Act. 6-7). The Examiner relies on Dodoro to remedy this deficiency
of House, finding that Dodoro discloses a bearing with a damper that:
axially comprises a plurality of layers comprising at least one plastic
layer 6b and at least one metal layer 6a, 6c, the bearing comprises a
visco-elastic material 6b, the damper comprising epoxy 6b (note
paragraph [0039]), for the purpose of providing materials for the
damper which provide vibration isolation.
(Final Act. 8).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art:
to form the damper of House such that the damper axially comprises a
plurality of layers comprising at least one plastic layer and at least one
metal layer, such that the bearing comprises a visco-elastic material,
and such that the damper comprises epoxy, as taught by Dodoro, for
the purpose of providing materials for the damper which provide
vibration isolation.
(Final Act. 8).
The Appellant argues that:
Dodoro does not disclose "a damper that is constructed and arranged
to restrict axial movement of the bearing" nor a multi-layer damper
partially surrounding the bearing. Dodoro teaches a damper wherein
the direction of the laminations coincide[ s] with the axial direction.
(SF4) A person skilled in the art would not modify the damper of
House with the damper of Dodoro because they serve different
damping functions.
(App. Br. 12).
The Appellant further argues that "if House were modified by a
person skilled in the art to relocate the damper as taught in Dodoro,"
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numerous limitations of the independent claims would not be met (App. Br.
12-13).
The Appellant's arguments are unpersuasive. While a portion of
Dodoro' s damper is positioned such that the layers coincide with the axial
direction, the remaining portion of the damper extends radially in an
orientation same as the damper of House, so that the disclosed damper
"axially comprises a plurality of layers comprising at least one plastic layer
and at least one metal layer" as recited by the claims (Dodoro ,r 3 8, Fig. 1 ).
Accordingly, in applying the damper construction and combination of
materials taught in Dodoro, a person of ordinary skill in the art would have
provided the layers arranged in the axial direction as disclosed by the
radially extending portion of the damper in Dodoro in view of the same
orientation of the damper in House.
In addition, as the Examiner finds, the primary reference House
discloses substantially the same product disclosed in the Appellant's
Specification (compare Spec. Figs. 2a, 3a, 3b, with House, Figs. 7B, 8A,
8B). As such, we agree with the Examiner that "damper 91 of House is
constructed and arranged to restrict axial movement of the bearing" (Ans. 7),
and that upon implementation of the damper of House to have the multi-
layer construction taught in Dodoro, the claim language is clearly met.
The Appellant essentially argues House and Dodoro individually
whereas the rejection is based on the combination of these references and
what they reasonably disclose and suggest to one of ordinary skill in the art.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test for obviousness
is not ... that the claimed invention must be expressly suggested in any one
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or all of the references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art");
see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
Appellant does not apprise us of error in the Examiner's determination that a
person of ordinary skill in the art would not have found it obvious to apply
the multi-layer construction as taught in Dodoro in implementing the damper
of House, especially considering that both dampers are provided for the
purpose of reducing vibration, and House is silent as to the material
construction of its damper.
The Appellant's argument based on modifying House "to relocate the
damper as taught in Dodoro" (App. Br. 12-13) is misdirected and
unpersuasive in that this rejection does not rely on modifying House in such
a manner.
Therefore, in view of the above considerations, we affirm Rejection 2.
Rejection 3
The Examiner rejects claims 4, 5, 14, 15, and 21 as unpatentable over
House and Dodoro in view of Baumhauer, relying on Baumhauer for
disclosure of a multi-layer damper made of silicone and rubber as recited in
these claims (Final Act. 8). The Appellant argues that Baumhauer fails to
disclose, and the Examiner has not explained how Baumhauer can be
modified to attain, the limitation reciting "a bearing at least partially
surrounding the shaft allowing for rotation of the shaft within the bearing,
and a solid damper at least partially surrounding the bearing wherein the
damper is constructed and arranged to restrict axial movement of the
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bearing." (App. Br. 13). However, the Appellant's arguments are
misdirected and unpersuasive because as the Examiner notes (Ans. 11-12),
the primary reference House already discloses these limitations and the
rejection does not rely upon Baumhauer for such limitations. Therefore, we
affirm this rejection as well.
Rejection 4 and 5
These rejections of claims 10, 20, and 24 are not acknowledged in the
Appeal Brief (see App. Br. 6 (listing Rejections 1-3, but omitting Rejections
4 and 5)), but they are noted in the Reply Brief (see Reply Br. 3). The
Appellant argues that these rejections do not overcome "the deficiencies of
House and Dodoro already established." (Reply Br. 5-6). Having found no
deficiency in the combination of House and Dodoro, we affirm these
rejections as well.
CONCLUSION
Rejections 1-5 are AFFIRMED.
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
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