Ex Parte Wilhelm

Board of Patent Appeals and Interferences

Aug 30, 2012

11014470 (B.P.A.I. Aug. 30, 2012)

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.
11/014,470 12/16/2004 Ralf Wilhelm MB 429 4507
27956 7590 08/30/2012
KLAUS J. BACH
4407 TWIN OAKS DRIVE
MURRYSVILLE, PA 15668
EXAMINER
BURCH, MELODY M
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
08/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RALF WILHELM
____________________

Appeal 2010-004347
Application 11/014,470
Technology Center 3600
____________________

Before: GAY ANN SPAHN, WILLIAM V. SAINDON, and
PATRICK R. SCANLON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004347
Application 11/014,470
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-5, 7-12, and 14-16. We have jurisdiction under
35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A shock absorber for a motor vehicle for damping the
relative movement between a vehicle wheel and a vehicle body,
comprising:
a damper housing (1) filled with an operating medium, a
piston (3) disposed in said damper housing (1) and dividing the
damper housing interior into two operating chambers (7, 8), a
piston rod (2) extending into the damper housing (1) and being
connected to the piston (3), which forms in the damper housing
(1) a first damper element, said piston including communication
bores extending between the two operating chambers (7, 8) and
valves (5, 6) for selectively restricting fluid flow through the
communication bores for damping movement of the piston (3)
and the piston rod (2) in the damper housing (1), and a second
damper element (24) disposed in the piston rod (2) in the form
of a slide member (12) arranged in a cylindrica1 cavity (11),
which is in communication with the two operating chambers (7,
8) by way of bypass bores (15, 16) extending in the piston rod
(2), said slide member (12) being disposed in the cylindrical
cavity (11) in the piston rod (2) for controlling the flow of the
operating medium between the two operating chambers (7, 8)
through the bypass bores (15, 16), springs (13, 14) arranged at
opposite ends of the slide member (12) and resiliently engaging
the slide member (12) therebetween, so as to hold said slide
member (12) in said cylindrical cavity (11) in a neutral position,
in which the bypass bores (15, 16) are open, but being movable
by the fluid flow through the bypass bores (15, 16) and through
the cylindrical cavity (11) generated by a pressure differential
Appeal 2010-004347
Application 11/014,470
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in the operating chambers (7, 8) in either direction toward a
closing position restricting the flow of the operating medium
through the bypass bores (15, 16), so as to block the medium
flow through the bypass bores (15, 16), at a predetermined
pressure difference between the two operating chambers (7, 8).

Rejections1
I. Claims 1-5, 7-12, and 14-16 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claims 1-3, 7, 10, 11, 14, and 15 are rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Furuya (JP 3-149423 A, pub. Jun. 26,
1991).
III. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Furuya and Furuta (JP 8-326828 A, pub. Dec. 10, 1996).
IV. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Furuya and Yamaoka (US 4,934,491, iss. Jun. 19, 1990).
V. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Furuya and Pineau (US 3,897,856, iss. Aug. 5, 1975).
VI. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Furuya and Allaei (US 2006/0106500 A1, pub. May 18, 2006).

1 Appellant asks us to review the Examiner’s objections to the drawings.
App. Br. 6, 7. That issue is reviewable by petition under 37 C.F.R. § 1.181,
and is not within the jurisdiction of the Board. In re Mindick, 371 F.2d 892,
894 (CCPA 1967). See Manual of Patent Examining Procedure (MPEP) §§
706.01, 1002, and 1201.
Appeal 2010-004347
Application 11/014,470
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
The Written Description Rejection
The Examiner found that the originally filed disclosure fails to
provide adequate support for the “cylindrical cavity” limitation of claim 1.
Ans. 4. In particular, the Examiner found that the Specification does not
describe a bore having a cylindrical cross-section. Ans. 9.
Appellant argues, “no matter whether the cavity 11 is called bore or
cylindrical cavity,” one of ordinary skill in the art would have understood
Appellant to have possession of a cylindrical cavity. App. Br. 7.
The relevant test is whether the originally filed disclosure reasonably
conveys to a person having ordinary skill that applicant had possession of
the subject matter later claimed. In re Kaslow, 707 F.2d 1366, 1375
(Fed.Cir. 1983). “[T]he invention claimed does not have to be described in
ipsis verbis in order to satisfy the description requirement of § 112.” In re
Lukach, 442 F.2d 967, 969 (CCPA 1971). The examiner has the initial
burden of presenting evidence or reasons why persons skilled in the art
would not recognize in appellant’s disclosure a description of the invention
defined by the claims. In re Wertheim, 541 F.2d 257, 263 (CCPA 1976).
Appellant’s argument (App. Br. 7) that, essentially, one of ordinary
skill would contemplate a cylindrical cavity when reading about a bore in
the Specification, is well taken. The Examiner does not make any findings
or provide any reasoning as to why the silence of the Specification as to the
shape of the bore means that one of ordinary skill in the art would not be
apprised of a cylindrical cavity. If the claimed shape were unusual (e.g., the
Appeal 2010-004347
Application 11/014,470
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letter ‘A’), perhaps silence would be enough. However, in this case, a
cylindrical shape would seem to be typical when thinking of the shape of a
bore. Accordingly, without findings or rationale to support the rejection, we
do not sustain the Examiner’s written description rejection, for failing to
satisfy the initial burden of explaining why the claim fails to comply with
the written description requirement.
The Prior Art Rejections
Appellant presents separate arguments for claim 1; claims 2, 3, 7, 10,
11, 14, and 15 stand or fall with claim 1. App. Br. 6. In relevant part, claim
1 requires a second damper element disposed in a piston rod2. The second
damper element fluidly connects the two operating chambers on either side
of the piston in the shock absorber, via bypass bores extending “in the piston
rod.” The second damper element (also called a slide member) moves
within the piston rod, depending on a pressure differential in the operating
chambers, to control the flow of the operating medium through the bypass
bores.
The Examiner found that Furuya describes a second damper element
(spool 15) disposed on a piston rod (3, 14) of piston (2) in a shock absorber.
Ans. 5. The Examiner found that the second damper element fluidly
connects operating chambers (A, B) on either side of the piston, via bypass
bores 3b, 3e, 32 extending in the piston rod. Ans. 4-5. The Examiner also
found that the second damper element moves within the piston rod,
“generated by a pressure differential in the operating chambers … so as to
block the medium flow through the bypass bores.” Ans. 6.

2 The first damper element is the piston.
Appeal 2010-004347
Application 11/014,470
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Appellant does not appear to disagree with the Examiner’s findings
(see App. Br. 8), but rather appears to disagree with the Examiner’s reading
of the claim on the Furuya device (see App. Br. 10). Appellant’s position is
that the second damper element identified by the Examiner (spool 15) “does
not affect the fluid flow through the piston rod.” App. Br. 10. Appellant
argues that the slide member (second damper element) in the present
invention does not affect the medium flow through the damping piston. Id.
Appellant similarly argues that the spool valve (15) in Furuya does not affect
the operating medium flow through the piston rod. Id.
Appellant’s arguments are premised on an unduly narrow
interpretation of claim 1. Claim 1 does not preclude the bypass bores from
extending through both the piston and the piston rod. Claim 1 merely
requires that the bypass bores “extend[] in the piston rod.” The claim does
not set a particular path through the bores to preclude the Examiner’s
interpretation. In the Specification, as in the Examiner’s findings of Furuya,
the bores enter the rod transverse to the longitudinal axis. Compare
Appellant’s Figure 1 at item 16 with Furuya, fig. 1 at 3e. Further, the claim
merely requires the movement of the second damper element / slide member
to “block the medium flow through the bypass bores,” not to block the
medium flow through all parts of the piston rod. As the Examiner found, the
second damper element 15 of Furuya blocks the medium flow through the
bypass bores 3e upon sufficient pressure. Ans. 5. Appellant does not
apprise us of error in the Examiner’s findings.
Appellant lastly argues that Furuya “leads a person skilled in the art
away” from the device of claim 1, but does not point to any passage in
Furuya that actually serves to “criticize, discredit, or otherwise discourage”
investigation into the claimed invention. See DePuy Spine, Inc. v. Medtronic
Appeal 2010-004347
Application 11/014,470
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Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference
does not teach away […] if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.”). In addition, a
teaching away argument cannot be persuasive as to the anticipation prong of
this rejection. Celeritas Tech., Ltd. v. Rockwell Intern’l Corp., 150 F.3d
1354, 1361 (Fed. Cir. 1998) (“whether a reference ‘teaches away’ from the
invention is inapplicable to an anticipation analysis”).
In view of Appellant’s arguments, we are not apprised of error in the
Examiner’s rejection of claim 1 as anticipated by and/or as obvious over
Furuya. Thus, we sustain the Examiner’s prior art rejections of claims 1-3,
7, 10, 11, 14, and 15. Appellant does not separately argue the obviousness
rejections of claims 4, 5, 9, and 16, which we likewise sustain.

DECISION
We affirm the Examiner’s decision to reject claims 1-5, 7, 9-11, and
14-16.
We reverse the Examiner’s decision to reject claims 8 and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART
JRG