Ex Parte Reinke et al

Patent Trial and Appeal Board

Apr 24, 2017

13090872 (P.T.A.B. Apr. 24, 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.
13/090,872 04/20/2011 Florian Reinke P2008-157 3415
47988 7590 04/24/2017
Walter Ottesen, P.A.
PO BOX 4026
GAITHERSBURG, MD 20885-4026
EXAMINER
MOMPER, ANNA M
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
04/24/2017 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 FLORIAN REINKE, MICHAEL KLETTKE, and
DIETHARD SCHNEIDER
____________

Appeal 2015-000767
Application 13/090,872
Technology Center 3600
____________

Before LYNNE H. BROWNE, WILLIAM A. CAPP, and
ERIC C. JESCHKE, Administrative Patent Judges.

JESCHKE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Florian Reinke et al. (“Appellants”) seek review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated March 6, 2014 (“Final Act.”), rejecting claims 1–6, 8, 9, and 12–15.1
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify ContiTech Vibration Control GmbH as the real
party in interest. Appeal Br. 2. Appellants state that they also “remain a
party of interest because of the German law (Gesetz über
Arbeitnehmererfindungen) covering employed inventors.” Id.
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BACKGROUND
The disclosed subject matter relates to a hydromount. Spec. 1, ll. 2,
11. Claims 1, 12, and 15 are independent. Claim 1 is reproduced below,
with emphasis added:
1. A hydromount for a motor vehicle comprising:
a housing defining a longitudinal axis;
a compensating diaphragm;
said housing and said compensating diaphragm conjointly
enclosing a hydraulic volume;
a partition wall partitioning said hydraulic volume into a
working chamber and a compensating chamber;
said partitioning wall having a transfer channel
interconnecting said working chamber and said compensating
chamber;
a membrane of flexib1e elastomeric material;
said partitioning wall having an opening for
accommodating said membrane;
first and second components arranged in said wall
transverse to said axis and disposed in spaced relationship to one
another to define an adjustable gap therebetween;
said membrane having a peripheral edge disposed in said
gap;
said first and second components clamping said
membrane at said peripheral edge thereof so as to impart a
radial pretensioning to said membrane adjusted via the distance
by which said components are pressed toward each other along
said axis to narrow said gap; and,
said membrane having a non-circular shape so as to have
a principal direction of expansion defining a first percentage of
pretension and a secondary direction of expansion defining a
second percentage of pretension greater than said first percentage
of pretension when said membrane is clamped between said first
and second components whereby structure borne vibration is
damped.

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REJECTIONS
1. Claims 1–6 and 12–14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Ide (US 5,769,402, issued June 23, 1998) and Brenner
(US 5,386,973, issued Feb. 7, 1995).
2. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ide, Brenner, and Pelletier (US 2011/0047819 A1,
published Mar. 3, 2011).
3. Claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ide and Pelletier.

DISCUSSION
Rejection 1 – Claims 1–6 and 12–14
Both independent claims in this Rejection—claims 1 and 12—recite,
among other limitations, a “membrane” and “first and second components”
with “said first and second components clamping said membrane at said
peripheral edge thereof so as to impart a radial pretensioning to said
membrane adjusted via the distance by which said components are pressed
toward each other along said axis to narrow said gap.” Appeal Br. 27, 29–30
(Claims App.).2
For claims 1 and 12, the Examiner identified element 56 in Ide as the
“membrane” and elements 42 and 44 as the “first and second components.”
Final Act. 6, 7; see also Ide, Fig. 1 (showing elements 42, 44, 56). For the
remaining claim language above (which we will refer to as the

2 Although neither Appellants nor the Examiner discuss the
construction of “radial pretensioning,” we note that the Specification
discusses “pretensioning” of an exemplary rectangular-shaped structure in
terms of “expansion” of the width and height. See Spec. 9, l. 8 – 10, l. 4.
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“pretensioning limitation”), the Examiner stated that the relied-upon
structures from Ide were “capable of providing such a function.” Final
Act. 7. In the Response to Arguments section of the Final Office Action, the
Examiner added:
As Ide et al. has a substantially similar structure to that of the
disclosed invention with regards to the elements which appear,
to the Examiner’s understanding of the invention, to provide the
adjustable functionality, therefore, it is understood that the
structure of Ide et al. would be functionally capable of providing
the adjustable gap and pretensioning functions recited by the
claims even if not explicitly discussed.
Id. at 3.
Responding to this, Appellants argue that “the pretensioning is not a
function but a physical property which the hydromount of [Appellants’]
invention possesses in order to achieve a specific result, namely, the
dampening of structure borne vibration.” Appeal Br. 13. Appellants also
contend that the Examiner’s position “does not take into account the
additional structural feature of [Appellants’] invention, namely, a membrane
having a non-circular shape to which are imparted physical properties to
dampen structure borne noise.” Id. at 12. According to Appellants, the
claimed hydromounts are “provided with these particular physical properties
which are not suggested in Ide et al, let alone, in Brenner et al.” Id.
The Examiner responds that
the manner in which the claim is written recites “so as to impart
a radial pretensioning to said membrane adjusted via the distance
by which said components are pressed towards each other along
said axis to narrow said gap” as a function provided by the
structure of “said first and second components clamping said
membrane at said peripheral edge thereof.”
Ans. 10.
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Here, the Examiner does not take the position that Ide either explicitly
or inherently discloses that element 56 is in radial pretension. Rather, the
Examiner finds that Ide “discloses” the recited “pretensioning” by disclosing
structures that—based on their structural configurations—would allegedly
be capable of providing the recited “pretensioning.” See Ans. 9 (stating that
“the base structure disclosed by Ide et al. discloses the pretensioning of the
membrane by the clamping configuration”); Final Act. 8 (stating that “Ide et
al. discloses the pretension”); see also Ide, Fig. 1.
Considering the pretensioning limitation as a whole, we determine
that the phrase “so as to impart a radial pretensioning to said membrane”
does not set forth a function, but rather, describes a required physical
characteristic or property of the apparatus—i.e., the “membrane” being in
some degree of radial pretension—necessarily brought about by the recited
“clamping” of the “membrane” at the “peripheral edge” by the “first and
second components.” The Specification supports this view. See Spec. 2,
ll. 27–30 (“The object is achieved by virtue of the fact that the diaphragm is
clamped between the two components in such a way that, as a result of the
clamping, a radial pretension is produced in the diaphragm.”) (emphasis
added); id. at 7, ll. 6–14 (“The diaphragm 20 is clamped between the two
grid plates (22, 24) in such a way that, . . . as a consequence of the clamping
of the diaphragm 20 between the two grid plates (22, 24), a pretension in the
diaphragm is obtained in the radial direction . . . .”) (emphasis added); id. at
8, ll. 5–10 (“Pressing the two grid plates (22, 24) in the axial direction forces
the annular bead 40 of the diaphragm 20 radially outward in a radial
direction. This leads to a radial pretension of the diaphragm 20 owing to the
clamping of the diaphragm 20 between the two grid plates (22, 24).”)
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(emphasis added). Thus, even if assumed to be correct, the finding that the
relied-upon structures in Ide would be capable of providing radial
pretensioning in the identified membrane (element 56) does not properly
address all the requirements of the pretensioning limitation.
For these reasons, we do not sustain the rejection of independent
claims 1 and 12, and also do not sustain the rejection of claims 2–6 and 14
(which depend from claim 1) and claim 13 (which depends from claim 12).
Rejection 2 – Claims 8 and 9
Claims 8 and 9 depend from claim 1. Appeal Br. 29 (Claims App.).
The Examiner’s added reliance on Pelletier does not remedy the deficiencies
discussed above. Thus, for the same reasons discussed above, we do not
sustain the rejection of claims 8 and 9.
Rejection 3 – Claim 15
Independent claim 15 recites the same limitations set forth above with
regard to independent claims 1 and 12 (see supra Rejection 1). Compare
Appeal Br. 30–31 (Claims App.), with id. at 27, 29–30. For these aspects of
claim 15, the Examiner relies on the same deficient findings and conclusions
with regard to Ide as discussed above. Compare Final Act. 10, with id. at 6,
7. Moreover, the Examiner’s reliance on Pelletier does not remedy the
deficiencies discussed above. Thus, for the same reasons discussed above,
we also do not sustain the rejection of claim 15.

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DECISION
We REVERSE the decision to reject claims 1–6, 8, 9, and 12–15.

REVERSED