Ex Parte Bronowicki

Patent Trial and Appeal Board

May 25, 2016

12807660 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/807,660 09/10/2010
32205 7590 05/27/2016
Patti & Malvone Law Group, LLC
One North LaSalle St., 44th Floor
Chicago, IL 60602
FIRST NAMED INVENTOR
Allen J. Bronowicki
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. CONFIRMATION NO.
NGC-366/004073-804 6086
EXAMINER
AUNG,SANM
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
info@cplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLEN J. BRONOWICKI
Appeal2014--005548
Application 12/807,660
Technology Center 3600
Before THOMAS F. SMEGAL, MARK A. GEIER, and
GORDON D. KINDER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
ii.Jlen J. Bronov1icki (ii .. ppellant) 1 seeks our reviev,r under 35 U.S.C.
§ 134 of the Examiner's Final Rejection of claims 1-3, 11, 12, 16-18, and
20 under 35 U.S.C. §102(b) as anticipated by Koshika (US 5, 339,580, iss.
Aug. 23, 1994); and of claims 4--10, 13-15, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Koshika). 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Northrop Grumman
Systems Corporation. Appeal Br. 3
2 We note that Appellant's listing of claims in the Appeal Brief misstates
claim 2. The correct version of claim 2 is found, for example, in the
Specification, at page 13.
Appeal2014--005548
Application 12/807,660
CLAIMED SUBJECT MATTER
Claims 1, 11, and 16 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter.
1. A vibratory isolator, comprising:
at least one mass inertia component and at least one compliant
component which are configured to exhibit:
a vibratory bandgap; and
shear/bending coupling.
ANALYSIS
Appellants argue claims 1-20 together in contesting the rejections of
claims 1-3, 11, 12, 16-18, and 20 as anticipated by Koshika and of claims
4--10, 13-15, and 19 as obvious over Koshika. See Appeal Br. 7-11 and
Reply Br. 3-8. We select claims 1, 11, and 16 as the representative claims
for these groups, and the remaining claims stand or fall with claims 1, 11,
and 16. See 37 C.F.R. 41.37(c) (l)(iv).
The Examiner finds that Koshika anticipates claims 1, 11, and 16 by
disclosing "at least one mass inertia component (8) and at least one
complaint component ( 1) which are configured to exhibit . . . a vibratory
bandgap ... and Shear/bending coupling." Final Act. 2-3. The Examiner
explains that a "bandgap is the difference in energy between the valence
band and the conduction band of a solid material that consists of the range of
energy values forbidden to electrons in the material" and concludes "that
[the] Koshika structure and [the] structure of invention [are] substantially
[the] same and have a bandgap."3 Id. The Examiner reasons "the vibratory
bandgap [of Koshika] is equivalent to [the] vibratory bandgap of the
3 The Examiner included an annotated version of Fig. 3 of Koshika at page 5
of the Non-Final Rejection mailed October 16, 2012.
2
Appeal2014--005548
Application 12/807,660
invention," while also pointing out that the stated object of Koshika "is to
provide a damping device having little shearing stiffness and a long period
highly stabilized against deformation by the stacking of hollow laminated
rubber dampers in multi-stage by means of connection plate[s]." Id. at 8
(citing Koshika, col. 3, 11. 19-24).
Appellant first contends that "the sections of Koshika cited [by the
Examiner] . . . disclose a physical gap between adjacent damping devices,
which does not anticipate, teach or suggest a vibratory isolator featuring a
vibratory bandgap, as recited in independent claims 1, 11, and 16." Appeal
Br. 8. Appellant also contends that while "the sections of Koshika cited by
the Examiner ... disclose a vibration damping device[,] ... a vibration
damping device does not anticipate, teach or suggest [either] a vibratory
isolator exhibiting a vibratory bandgap, as recited by independent claims 1
and 16," or "a method of isolating vibrations such that a vibratory bandgap
occurs, as recited in independent claim 11." Id. at 9.
However, the Appellant's arguments do not address the Examiner's
findings regarding the claimed vibratory bandgap. The Examiner explains
that the "laminated rubber building support and vibration damping device"
of Koshika, including "the plurality of hollow laminate rubber damping
device[s] (equivalent to [the] compliant component of the instant invention)
and horizontal connection plate[ s] (equivalent to [the] mass inertia
[component] of the invention)," "[are] substantially [the] same as [the]
instant invention," again reasoning "the function of vibratory bandgap [that]
must be performed by the Koshika structure is [the] same as [the] instant
invention's vibratory bandgap since these two structures are substantially the
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Appeal2014--005548
Application 12/807,660
same."4 Ans. 3--4 (emphasis partially removed). Appellant does not apprise
us of any error in the foregoing. 5 Specifically, Appellant does not explain
why Koshika's vibratory gap is not a vibratory bandgap as the Examiner has
defined that term.
Appellant continues by contending that because "Koshika does not
discuss frequencies of any of the individual steel plates, only of the
frequency of the payload and the total stiffness of the stack," that "Koshika
does not disclose anything that would teach a person of skill in the art to
create a vibratory bandgap, as recited in claims 1-20 of the current
invention." Reply Br. 4. However, we find Appellant's contention to be
unavailing as it is not commensurate with the scope of claims 1, 11, and 16,
none of which recite a specific frequency for the vibratory bandgap.
Furthermore, "limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)).
Finally, Appellant contends while "[ c ]ountless examples are known in
the literature of structures that appear similar or even identical in one or
more figures and yet have substantially different functions," that "the
Examiner makes no argument anywhere in the record that the Koshika
invention performs similar functions to the current invention, simply
4 "It is well settled that a prior art reference may anticipate when the claim
limitations not expressly found in that reference are nonetheless inherent in
it. Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates." In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations
and internal quotation marks omitted).
5 We also note that Appellant does not argue that Koshika lacks any
structure recited by claims 1 and 16, and we find none lacking.
4
Appeal2014--005548
Application 12/807,660
inserting unsupported assertions that it does so based on a similar
appearance in some figures." Reply Br. 5. However, we find Appellant's
contention is merely repeating the prior argument that we found did not
address the Examiner's findings regarding the claimed vibratory bandgap
inherently taught by Koshika. See footnote 5. Ans. 4.
While we agree with the Examiner that Koshika teaches the structure
of claims 1 and 16, we also find the phrase "configured to exhibit" (in claim
1 ), and the term "exhibits" (in claim 16) to be functional limitations that do
not impose any structural limitation on the claimed apparatus that
differentiates those claims from a prior art apparatus that otherwise discloses
all the recited limitations and is capable of performing the recited function.
Functional claim language covers all devices that are capable of performing
the recited function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (Appellant's contention that the claimed structure will be used to
perform a function not taught by the prior art reference does not have
patentable weight if the structure is already known).
"A reference anticipates a claim if it discloses the claimed invention
'such that a skilled artisan could take its teachings in combination with his
own knowledge of the particular art and be in possession of the invention.'"
In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice,
301 F.2d 929, 936, In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985))
(parallel citations omitted).
For the reasons set forth above, we discern no error in the Examiner's
findings and agree that the vibration dampening device disclosed by Koshika
anticipates claims 1, 11, and 16. Appellant does not present separate
arguments for the patentability of claims 2-10, which depend from claim 1,
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Appeal2014--005548
Application 12/807,660
claims 12-15, which depend from claim 11, and claims 17-20, which
depend from claim 16. Appeal Br. 10. Accordingly, we sustain the
Examiner's rejection of claims 2, 3, 12, 17, and 18 under 35 U.S.C. § 102(b)
as anticipated by Koshika and claims 4--10, 13-15, and 19 under 35 U.S.C.
§ 103 (a) as obvious over Koshika, for the same reasons stated for claims 1,
11, and 16.
DECISION
We AFFIRM the Examiner's rejections.
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
6