Ex Parte Manuel

Patent Trial and Appeal Board

Jul 31, 2017

14179720 (P.T.A.B. Jul. 31, 2017)

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.
14/179,720 02/13/2014 Mark Manuel 67311-2723PUS 1 2863
26096 7590 08/02/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
LANE, NICHOLAS J
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
08/02/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK MANUEL1
Appeal 2016-003218
Application 14/179,720
Technology Center 3600
Before CARLA M. KRIVAK, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 5—7, 10-19, and 21—28. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant identifies AVM INDUSTRIES as the real party in interest.
Appeal 2016-003218
Application 14/179,720
STATEMENT OF THE CASE
Appellant’s invention is directed to a “vibration tolerant damper”
including “an outer tube, a shaft received within the outer tube, and a piston
valve received within the outer tube. The shaft can move independently
from piston valve as the shaft as the shaft extends and retracts relative to the
outer tube” (Spec. 14).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A vibration tolerant damper, comprising:
an outer tube;
a shaft received within the outer tube;
a piston valve received within the outer tube; and
an orifice plate received within the outer tube and moveable together
with the piston valve, wherein the shaft can move independently from the
piston valve as the shaft extends and retracts relative to the outer tube,
wherein the orifice plate is rigid.
REFERENCES and REJECTIONS2
The Examiner rejected claim 1 under 35 U.S.C. § 102 (a) as
anticipated by Imaizumi (GB 2122305 A, Jan. 11, 1984).
The Examiner rejected claims 1, 2, 5, 7, 10-12, 14—17, and 25 under
35 U.S.C. § 103(a) based upon the teachings of Imaizumi and Fuhrmann
(US 6,007,057, Dec. 28, 1999).
2 The Examiner withdrew the rejection of claims 2, 5—7, 10—18 and 23
under § 112(b) (Ans. 3).
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Application 14/179,720
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) based upon
the teachings of Imaizumi, Fuhrmann, and Sorgatz (US 4,004,662, Jan. 25,
1977).
The Examiner rejected claims 13, 18, 22, and 26—28 under 35 U.S.C.
§ 103(a) based upon the teachings of Imaizumi, Fuhrmann, and Adoline (US
2004/0222579 Al, Nov. 11, 2004).
The Examiner rejected claims 19 and 21 under 35 U.S.C. § 103(a)
based upon the teachings of Adoline and Imaizumi.
The Examiner rejected claims 23 and 24 under 35 U.S.C. § 103(a)
based upon the teachings of Imaizumi, Fuhrmann, Adoline, and Sorgatz.
ANALYSIS
Rejection under 35 U.S.C. § 102
Appellant contends the Examiner errs in finding Imaizumi’s plate 23,
shown in Figures 3—6, discloses an orifice plate because Imaizumi’s plate 23
does not have any orifices (App. Br. 3).
However, as the Examiner finds, the term “orifice plate” is not
defined in Appellant’s Specification (see Ans. 4—5). Rather, the only
description of orifices in the Specification, other than the term “orifice plate”
itself, is with respect to the piston valve 50 (| 49—“orifices within the piston
valve 50”) (Ans. 5). There is no further mention or disclosure in the text of
Appellant’s Specification of orifices within the orifice plate 58 nor any
description of Figure 13 regarding orifices located in the orifice plate.
Lastly, we note claim 1 merely recites an orifice plate without mention of
orifices in the plate or where the orifices are located.
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Application 14/179,720
The Examiner reasonably articulated an interpretation of the term
“orifice plate” in the Advisory Action dated June 10, 2015, including that
“[t]he term ‘orifice plate,’ however does not require that the plate comprise
an orifice” and “the ‘orifice plate 58’ [in Appellant’s Specification] is
located adjacent to the orifices in the valve member ‘50’ and acts as a
member that opens and closes the orifices.” Appellant did not introduce any
dictionary definition or evidence in the Appeal Brief of how a person of
ordinary skill in the art would have interpreted “orifice plate” beyond
pointing to Figure 13 of the Specification, which as discussed above is never
expressly described as containing any orifices. Rather, Appellant first
introduced a dictionary definition in the Reply Brief, which did not give the
Examiner an opportunity to address that definition. “Any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal.” 37 C.F.R. § 41.37(c)(l)(iv);
see also § 41.41(b). Thus, on this record, the Examiner’s conclusion that an
orifice plate is merely a plate that selectively closes an orifice in the piston
valve is reasonable in light of Appellant’s Specification and Imaizumi (Ans.
5).
We agree with the Examiner’s finding that Imaizumi’s plate 23
selectively closes holes 26 (Advisory Action 2; Imaizumi Figs. 4—6, p.2, col.
2,11. 117—121). We also agree with the Examiner’s determination that
Imaizumi’s plate 23 “has a central orifice,” which meets the interpretation of
“orifice plate” proposed in the Appeal Brief (Ans. 6; Imaizumi Figs. 4—6).
Therefore, for purposes of this appeal, we agree with the Examiner’s finding
that Imaizumi discloses an “orifice plate.”
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Application 14/179,720
Thus, we sustain the Examiner’s rejection of claim 1 as anticipated by
Imaizumi.
Rejection under 35 U.S.C. §103
Appellant contends, with respect to independent claims 1 and 14, the
Examiner errs in finding a “skilled person would replace the deflectable disc
59 [in the third embodiment] of Imaizumi with a rigid orifice plate, as taught
by Fuhrmann” (App. Br. 4).
We agree with and adopt the Examiner’s findings as our own (Ans. 7—
10). Particularly, we note the Examiner uses Fuhrmann only for the
teaching that an elastically deformable plate can be replaced with a rigid
plate (Ans. 8). Appellant’s arguments regarding scatter are not relevant as
the claims do not recite this function; they merely recite a rigid orifice plate.
The Examiner provides a reasonable rationale for this modification (Ans. 8;
Final Act. 7 (“It would have been obvious to replace the orifice plate of
Imaizumi with a rigid orifice plate, as taught by Fuhrmann, because a rigid
orifice plate was a known alternative to an elastically deformable orifice
plate”)).
We also agree with the Examiner that replacing a flexible plate with a
rigid plate would be a “simple substitution” as there are only two types of
plates possible—rigid or flexible (Ans. 9).
As to Appellant’s contention that changing the deflectable discs in
Imaizumi’s Figures 12—15 to rigid discs would render Imaizumi
unsatisfactory for its intended purpose (App. Br. 6), we do not agree. We
agree with and adopt the Examiner’s findings and reasoning (Ans. 10).
Particularly, as the Examiner finds, although the embodiment shown in
Figures 12—15 teaches an elastic plate, “Imaizumi even discloses in
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Application 14/179,720
alternative embodiments (see FIGS. 4-6) that a rigid orifice plate (23) can be
used to selectively open and close the orifices in the piston” (Ans. 10).
Therefore, Appellant’s arguments that Imaizumi cannot use a rigid plate
because it would render Imaizumi unsatisfactory for its intended purpose are
unsupported.
Thus, we sustain the Examiner’s rejection of independent claims 1
and 14 as obvious over Imaizumi and Fuhrmann, and claims 2, 5—7, 10-13,
15—18, and 25, dependent therefrom and not separately argued (App. Br. 6—
7).
With respect to independent claim 19, Appellant contends the
Examiner errs in finding Adoline could be modified by the damper of
Imaizumi because the combination would render Adoline unsatisfactory for
its intended purpose and change Adoline’s principle of operation (App. Br.
7—8). We do not agree.
As the Examiner finds, and we agree, “Adoline does not disclose
permitting undamped movement of the shaft relative to the outer tube when
the component is in the closed position” and relies on Imaizumi for
disclosing this limitation (Final Act. 13). The Examiner finds Imaizumi
provides “added functionality to a damper such as the one disclosed in
Adoline” and would be “an improvement over the device of Adoline” (Ans.
12).
Appellant contends that adding Imaizumi’s damper to Adoline’s
device would also render Adoline unsatisfactory because the movement of
Adoline’s spring and rod to an extended position would not be controlled at
a linear rate (App. Br. 7). We do not agree. We agree with the Examiner
that Adoline’s Figure 17 shows the spring rate is not linear at an initial
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Application 14/179,720
stroke of a piston rod and thus, the linearity of the spring rate during the
initial rate is not critical (Ans. 13). Appellant has provided neither evidence
rebutting the Examiner’s findings, which are reasonable, nor reasoning as to
why the Examiner is incorrect.
Appellant asserts in the Reply Brief that “[wjhether the modification
would provide an advantage to Imaizumi is irrelevant” because the rejection
states it is Adoline that is being modified (Reply Br. 5). Appellant also
contends the Examiner fails to show how the modification would benefit
Adoline (id.). Appellant’s contentions are misplaced.
The Examiner provides sufficient reasoning and a rationale for
modifying Adoline (not Imaizumi) with the damper of Imaizumi (Ans. 13).
Appellant has not persuaded us with evidence or technical reasoning as to
how the Examiner’s findings are in error.
Thus, we sustain the Examiner’s rejection of independent claim 19,
and dependent claim 21, and claims 22—24, and 26—28, not argued with
specificity (App. Br. 8).
DECISION
The Examiner’s decision rejecting claim 1 under 35 U.S.C. § 102 is
affirmed.
The Examiner’s decision rejecting claims 1, 2, 5—7, 10-19, and 21—28
35 U.S.C. § 103 is 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)(l)(iv).
AFFIRMED
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