Ex Parte Voelkel

Board of Patent Appeals and Interferences

Nov 22, 2010

11124259 (B.P.A.I. Nov. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRET VOELKEL
____________________

Appeal 2009-002669
Application 11/124,259
Technology Center 3600
____________________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL and
FRED A. SILVERBERG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-002669
Application 11/124,259

2
STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s 2
decision finally rejecting claims 22-32, 34-42 and 51. The Examiner has 3
withdrawn claims 33, 49 and 50 from consideration. The Appellant has 4
cancelled claims 43-48. We have jurisdiction under 35 U.S.C. § 6(b). 5
We sustain the rejection of claims 36-42 under 35 U.S.C. § 103(a) as 6
being unpatentable over Henderson (US 3,776,536, issued Dec. 4, 1973) and 7
Raulf (US 6,286,820 B1, issued Sep. 11, 2001). We do not sustain the 8
rejections under § 103(a) of: 9
claims 22, 23, 25-30, 32 and 51 as being unpatentable 10
over Raulf; 11
claim 24 as being unpatentable over Raulf and Rau (US 12
5,044,614, issued Sep. 3, 1991); 13
claim 31 as being unpatentable over Raulf and Coleman 14
(US 2,536,626, issued Jan. 2, 1951) or Brown (US 2,133,279, 15
issued Oct. 18, 1938); and 16
claims 34 and 35 as being unpatentable over Raulf and 17
Driessen (US 5,107,970, issued Apr. 28, 1992) or Gilsdorf (US 18
5,649,692, issued Jul. 22, 1997). 19
The subject matter of the claims on appeal relates to shock absorbers. 20
(Spec. 1, l. 7). Claim 36 is illustrative of the claimed subject matter: 21
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36. A mounting device comprising: 1
a mount including means for mounting said 2
mount on one end of a hollow spring and including 3
at least one circular groove for mounting within 4
said mount at least one O-ring for 5
circumferentially and sealingly engaging a piston 6
rod extending through said mount, said piston rod 7
being part of a shock absorber. 8
9
ISSUES 10
The Appellant does not argue the rejections of claims 37-42 separately 11
from the rejection of claim 36 under § 103(a) as being unpatentable over 12
Henderson and Raulf. (See, e.g., App. Br. 39-43; Reply Br. 32-35). 13
Henderson describes a cushion mounting. The Appellant observes that 14
Henderson describes the cushion mounting as “incorporat[ing] in a single 15
unit both impact absorbing and damping facilities.” (Henderson, col. 1, 16
ll. 13-14). Henderson identifies one object of the invention to be “to provide 17
cushion mountings for use with lightweight objects, such as delicate 18
instruments, or for heavy objects, requiring long strokes, such as aircraft.” 19
(Henderson, col. 1, ll. 58-61). The Appellant contends that these passages 20
teach away from modifying the cushion mounting of Henderson in the 21
fashion claimed in claim 36. (Reply Br. 32-34). 22
Only issues and findings of fact contested by the Appellant have been 23
considered. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 24
The patentability of claims 36-42 turns on one issue: 25
Does Henderson teach away from a mount including 26
means for mounting the mount on one end of a hollow spring? 27
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The remaining dependent claims on appeal depend ultimately from 1
claim 22. Claim 22 recites a shock absorbing device including a distal 2
sealing means for sealing a distal end of a hollow spring and a piston 3
assembly having a piston rod. The piston rod extends through and slidably 4
and sealingly engages a distal mount of the distal sealing means. The 5
Appellant contends that Raulf does not disclose a piston rod which slidably 6
engages a distal mount. (App. Br. 13-14). The Appellant further contends 7
that the secondary references cited in the rejections of claims depending 8
from claim 22 fail to remedy this deficiency in the teachings of Raulf. (App. 9
Br. 21, 27-28 and 33-34). The patentability of claims 22-35 and 51 turns on 10
two issues: 11
Does Raulf disclose or teach a shock absorbing device 12
including piston rod which slidably engages a distal mount? 13
If not, do the secondary references cited in the rejections 14
of claims depending from claim 22 remedy this deficiency in 15
the teachings of Raulf? 16
17
FINDINGS OF FACTS 18
The record supports the following findings of fact (“FF”) by a 19
preponderance of the evidence. 20
1. Henderson’s cushion mounting 10 uses compression forces 21
induced in a fluid and cork filler to provide a restoring force for impact 22
absorption. (Henderson, col. 8, ll. 51-54; see also id., col. 3, l. 67 – col. 4, 23
l. 11). 24
2. Raulf discloses a combination pneumatic spring and vibration 25
damper 1, 3. (Raulf, col. 3, ll. 56-57). In other words, Raulf discloses a 26
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structure incorporating in a single unit both impact absorbing and damping 1
facilities. 2
3. The Appellant’s Specification defines a “hollow spring” as “a 3
substantially sealed bellows that may be totally or partially filled with a 4
spring filling fluid such as a gas or liquid.” (Spec. 5). The Appellant does 5
not appear to contest that hollow springs were known in the art at the time 6
the subject matter of claim 36 was made. 7
4. The Appellant does not appear to contest that Raulf’s 8
pneumatic spring is a “hollow spring.” Raulf’s pneumatic spring includes a 9
rolling bellows 5 which is sealingly clamped on one end against a fixing 10
plate 7 and stressed on the other end on a rigid rolling pipe 9. (Raulf, col. 3, 11
ll. 57-63). Raulf’s use of the term “pneumatic spring” implies that the 12
bellows 5 is filled with a fluid, namely, air. Common sense dictates, and the 13
Appellant does not contest, that a hollow spring such as Raulf’s pneumatic 14
spring uses compression forces induced in the fluid within the bellows to 15
provide a restoring force for impact absorption. (Cf. Spec. 5-6 (defining a 16
“spring filling fluid” as a fluid “that may be used to fill the hollow spring of 17
the present invention to provide pressure within the hollow spring to resist 18
compression.”)). 19
5. The cushion mounting 10 disclosed by Henderson and the 20
combination pneumatic spring and vibration damper 1, 3 disclosed by Raulf 21
are similar devices in the sense that both devices incorporate in a single unit 22
both impact absorbing and damping facilities. (Compare Henderson, col. 1, 23
ll. 13-14 with FF 2). The spring component of the cushion mounting 10 24
disclosed by Henderson and the pneumatic spring disclosed by Raulf are 25
similar devices in the sense that each uses compression forces induced in an 26
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enclosed fluid or fluid/solid filler to provide a restoring force for impact 1
absorption. (Compare FF 1 with FF 4). 2
6. Figure 1 of Raulf depicts a pair of coaxial rubber collars 3
positioned in an opening in the fixing plate 7. The pair of rubber collars 4
supports a metal bushing extending through bores through the centers of the 5
collars. A portion of the piston rod 11 extends through the metal bushing. 6
Figure 1 of Raulf also depicts metal washers placed at the opposite axial 7
ends of the pair of rubber collars. The piston rod 11 is engaged with the 8
washer at one end of the pair of rubber collars by a shoulder formed on the 9
piston rod 11. A nut engages an end portion of the piston rod 11 and 10
contacts the washer at the opposite end of the pair of rubber collars. 11
7. Raulf does not describe the piston rod 11 as being capable of 12
sliding appreciably relative to the fixing plate 7 when the nut engages the 13
end portion of the piston rod 11, despite whatever degree of elasticity the 14
pair of rubber collars may possess. Neither has the Examiner provided a 15
sound basis for belief that the piston rod 11 is capable of sliding appreciably 16
relative to the fixing plate 7 due to inherent elasticity of the pair of rubber 17
collars. 18
19
PRINCIPLES OF LAW 20
In order to establish a prima facie case of obviousness, an examiner 21
must undertake the factual inquiries listed in Graham v. John Deere Co., 383 22
U.S. 1, 17-18 (1966). In addition, the examiner must articulate some 23
“reasoning with some rational underpinning to support the legal conclusion 24
of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This 25
reasoning must show that “there was an apparent reason to combine the 26
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known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 1
U.S. 398, 418 (2007). The apparent reason need not appear in one or more 2
of the references on which the examiner relies. Instead, the examiner when 3
analyzing the evidence may employ common sense not inconsistent with the 4
ordinary level of knowledge and skill in the art at the time of the invention. 5
Perfect Web Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 6
2009). Reliance on common sense in support of a rejection under § 103(a) 7
does not imply the use of impermissible hindsight. 8
As a general rule, a reference which “teaches away” from the subject 9
matter of a claim does not support a prima facie case that the subject matter 10
would have been obvious. A reference teaches away from the subject matter 11
of a claim only if “a person of ordinary skill, upon reading the reference, 12
would be discouraged from following the path set out in the reference, or 13
would be led in a direction divergent from the path that was taken by the 14
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Prior art does 15
not teach away from claimed subject matter merely by disclosing a different 16
solution to a similar problem unless the prior art also criticizes, discredits or 17
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 18
1195, 1201 (Fed. Cir. 2004). 19
20
ANALYSIS 21
Claims 36-42 22
The Examiner finds that Henderson describes a mounting device “as 23
broadly claimed” in representative claim 36. (Ans. 7). The Examiner 24
concludes that it would have been obvious “to have adapted the mounting 25
device of Henderson so that it could be used with/or accommodate a ‘hollow 26
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spring,’ as taught by Raulf, to better adapt the device to providing a wider 1
range of damping coefficients, for a particular application.” (Id.) The 2
Appellant does not appear to contest the Examiner’s conclusion that one of 3
ordinary skill in the art would recognize that adapting Henderson’s 4
mounting device to accommodate a hollow spring would better adapt the 5
device to providing a wider range of damping coefficients. Instead, the 6
Appellant argues under various rubrics that Henderson teaches away from 7
the proposed adaptation. (See Reply Br. 32-34).2 8
Given this similarity in structure and operating principle between the 9
devices and components disclosed by Henderson and Raulf (see FF 5), it 10
would have been obvious to modify the head 11 of Henderson’s cushion 11

2 The Appellant argues that the Examiner failed to provide an affidavit
or declaration under 37 C.F.R. § 1.104(d)(2) when requested by the
Appellant. (App. Br. 41-43). There appears to be no binding precedent as to
whether an Examiner’s refusal to provide an affidavit or declaration when
requested is appealable to the Board. Since the provision of a declaration or
affidavit under § 1.104(d)(2) is “a matter of a discretionary, procedural or
nonsubstantive nature,” the Examiner’s refusal to provide an affidavit or
declaration on request is reviewable, if at all, only by a petition under 37
C.F.R. § 1.181. See In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971).
The Examiner’s refusal to provide an affidavit or declaration on request is,
thus, not within the jurisdiction of the Board.

The Appellant also argues that three findings or conclusions of the
Examiner, labeled “Allegations” 6, 7 and 8 respectively, are unsupported by
evidence. (App. Br. 43; see also id. 18-20 (quoting the findings or
conclusions labeled “Allegations” 6-8)). Even assuming for purposes of this
appeal only that the Appellant’s assertions concerning these findings or
conclusions are true, the Appellant has not explained how the lack of
evidentiary support for these findings or conclusions implies that the
Examiner failed to adequately support the conclusion that the subject matter
of representative claim 36 would have been obvious.
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mounting 10 with means for mounting the head 11 on one end of a known 1
hollow spring, exemplified by the spring of Raulf. The common sense 2
recognition that this modification would have improved Henderson’s 3
mounting by better adapting the mounting to provide a wider range of 4
damping coefficients would have provided reason to modify the head 11 in 5
the fashion claimed in claim 36. 6
Henderson’s disclosure of one solution for providing both impact 7
absorption and damping facilities does not teach away from the solution 8
embodied in claim 36. Henderson does not mention, much less criticize or 9
disparage, the modification of the head 11 of Henderson’s cushion mounting 10
10 with means for mounting the head 11 on one end of a hollow spring. To 11
the contrary, Henderson’s teaching that the cushion mounting 10 12
“incorporates in a single unit both impact absorbing and damping facilities” 13
(Henderson, col. 1, ll. 13-14) points up the similarity between the devices of 14
Henderson and Raulf. This similarity bolsters the Examiner’s conclusion of 15
obviousness. Likewise, Henderson’s assertion that the cushion mounting 10 16
would “provide cushion mountings for use with lightweight objects, such as 17
delicate instruments, or for heavy objects, requiring long strokes, such as 18
aircraft” (Henderson, col. 1, ll. 58-61) would not have discouraged one of 19
ordinary skill in the art from seeking other devices capable of serving the 20
same uses. 21
Henderson does not teach away from a mount including means for 22
mounting the mount on one end of a hollow spring. We sustain the 23
rejections of claims 36-42 under § 103(a) as being unpatentable over 24
Henderson and Raulf. 25
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Claims 22-35 and 51 1
The Examiner finds that Raulf discloses a piston assembly including 2
the piston rod 11. The Examiner additionally finds that Raulf discloses a 3
“distal sealing means” including a pair of coaxial rubber collars and a metal 4
sleeve supported by the pair of rubber collars. (Ans. 4). The Examiner also 5
finds that the piston rod 11 extends through and slidably and sealingly 6
engages a distal mount of the distal sealing means because “a portion of the 7
piston rod extends through the rubber element [that is, the metal sleeve and 8
the pair of rubber collars] of the distal mount/sealing means.” (Ans. 4-5). 9
The Appellant disagrees. (See, e.g., Br. 13-14). 10
The Examiner provides two lines of technical reasoning to justify the 11
latter finding. Neither line of reasoning is persuasive. The Examiner 12
reasons that the piston rod “is also slidable after the nut is secured because 13
the elasticity of the rubber element will permit relative movement between 14
the rod (or rod and inner bushing) and the mount 13.” (Ans. 5). The 15
problem with this line of reasoning is one of claim interpretation. Our 16
reviewing court disfavors any claim interpretation which would render a 17
claim term superfluous. Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 18
1362 (Fed. Cir. 2007). The Examiner fails to provide even a sound basis for 19
belief that the pair of rubber collars which support the metal bushing 20
depicted in Figure 1 of Raulf would have sufficient elasticity to permit the 21
piston rod 11 to slide any appreciable distance. (FF 7). To interpret the term 22
“slidably” as used in claim 22 to be so broad as to encompass movement 23
across essentially infinitesimal distances would render the term “slidably” 24
superfluous as a limitation. When the term “slidably” is interpreted in a 25
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reasonable manner, Raulf does not disclose a piston rod which slidably 1
engages a distal mount of a distal sealing means. 2
The Examiner also reasons that “[t]he rod is certainly slidable with 3
respect to the mount before the nut is secured to the washer on top.” (Ans. 4
5). Even assuming for purposes of this appeal only that the Examiner’s 5
statement is true, Raulf does not actually disclose Raulf’s device with the nut 6
disengaged from the end portion of the piston rod 11. The Examiner 7
articulates no reason why one of ordinary skill in the art would remove the 8
nut from engagement with the end portion of the piston rod 11 to allow the 9
piston rod to slide relative to the fixing plate 7. Neither does the Examiner 10
provide evidence or technical reasoning to suggest that there necessarily 11
exists a stage during the assembly of Raulf’s device in which the device is 12
assembled except for the engagement of the nut with the end portion of the 13
piston rod 11. 14
Raulf does not disclose or teach a shock absorbing device including 15
piston rod which slidably engages a distal mount. Neither does the 16
Examiner articulate reasoning with some rational underpinning sufficient to 17
support the conclusion that it would have been obvious to modify Raulf’s 18
device to meet this limitation. We do not sustain the rejections of claims 22, 19
23, 25-30, 32 and 51 under § 103(a) as being unpatentable over Raulf. 20
The Examiner provides no reasoning to explain how Rau, Coleman, 21
Brown, Driessen or Gilsdorf might remedy this deficiency in the teachings 22
of Raulf. We do not sustain the rejections under § 103(a) of claim 24 as 23
being unpatentable over Raulf and Rau; of claim 31 as being unpatentable 24
over Raulf and Coleman or Brown; or of claims 34 and 35 as being 25
unpatentable over Raulf and Driessen or Gilsdorf. 26
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DECISION 1
We AFFIRM the Examiner’s decision rejecting claims 36-42 2
We REVERSE the Examiner’s decision rejecting claims 22-35 and 3
51. 4
No time period for taking any subsequent action in connection with 5
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 6
§ 1.136(a)(1)(iv) (2007). 7
8
AFFIRMED-IN-PART 9
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Klh 12
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