Ex Parte Chalin et al

Patent Trial and Appeal Board

Nov 26, 2012

11039051 (P.T.A.B. Nov. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte THOMAS N. CHALIN, CULLY B. DODD and
HERBERT D. HUDSON
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Appeal 2010-000808
Application 11/039,051
Technology Center 3600
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Before STEVEN D.A. McCARTHY, JOHN W. MORRISON and
NEIL T. POWELL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 1
final decision rejecting claims 1-18 under 35 U.S.C. § 112, second 2
paragraph, as being indefinite; and under 35 U.S.C. § 102(b) as being 3
anticipated by Gottschalk (US 5,403,031, issued Apr. 4, 1995). Claims4

1 The Appellants identify the real party in interest as Watson & Chalin
Manufacturing Inc. of McKinney, Texas.
Appeal 2010-000808
Application 11/039,051

2
19-24 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 1
We REVERSE. 2
3
Indefiniteness 4
Claims 1, 7 and 13 are independent. Independent claim 1 recites: 5
1. An adjustable run height lift axle 6
suspension system, comprising: 7
an axle assembly; 8
an air spring for suspending a vehicle frame 9
from above the axle assembly; 10
a lift actuator operable to lift the axle 11
assembly relative to the vehicle frame; and 12
a run height adjustment device connected to 13
both of the air spring and the lift actuator and 14
releasably attached to the axle assembly, the 15
device spacing the air spring away from the axle 16
assembly. 17
Independent claim 7 recites an adjustable run height lift axle suspension 18
system including: 19
first and second interchangeable run height 20
adjustment devices, the suspension system having 21
a first run height when the first device is connected 22
to each of the air spring and the lift actuator and 23
releasably attached to the axle assembly, and the 24
suspension system having a second run height 25
different from the first run height when the second 26
device is connected to both of the air spring and 27
the lift actuator and releasably attached to the axle 28
assembly. 29
Appeal 2010-000808
Application 11/039,051

3
The Examiner explains that: 1
Claims 1-6 recite a singular run height adjustment 2
device, while in independent Claims 7 and 13 (and 3
their corresponding dependent claims), [the 4
Appellants claim] first and second interchangeable 5
run height adjustment devices. Therefore, it is 6
unclear if [the Appellants are] claiming some sort 7
of kit where the run height adjustment devices can 8
be switched out/interchanged or just one single run 9
height adjustment device. In other words, does the 10
invention consist of one run height adjustment 11
device with two varying run heights or two 12
independent run height adjustment devices each 13
with its own run height? 14
(Ans. 3). 15
Nothing in the second paragraph of § 112 precludes the Appellants 16
from presenting claims of different scope for examination. Here, claim 1 17
recites a combination comprising a run height adjustment device. Claim 7 18
recites a combination comprising first and second interchangeable run height 19
adjustment devices. The Appellants are presumed to regard each 20
combination as their invention. In re Moore, 439 F.2d 1232 (CCPA 1971). 21
The Examiner has not rebutted this presumption. Neither has the Examiner 22
shown that one of ordinary skill in the art could not determine the broadest 23
reasonable interpretation of either claim after reading the underlying 24
application as a whole. See In re Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 25
2008). Therefore, we do not sustain the rejection of claims 1-18 under 26
§ 112, second paragraph, as indefinite. 27
Appeal 2010-000808
Application 11/039,051

4
Anticipation of Claims 1-6 1
Gottschalk describes a lift axle suspension including a downwardly 2
extending frame bracket 61 attached to a frame member 63 of a vehicle 3
(Gottschalk, col. 6, ll. 53-56) and an axle seat 71 with an axle 75 “mounted 4
thereon” (Gottschalk, col. 6, ll. 65-68). The lift axle suspension also 5
includes upper and lower control arms 65, 67, each pivotally attached at one 6
end to the frame bracket 61 and at an opposite end to the axle seat 71. 7
(Gottschalk, col. 6, ll. 61-68). Gottschalk’s lift axle suspension additionally 8
includes an air bellows 79 located between two appendages 77, each fixedly 9
attached to one of the control arms 65, 67. (Gottschalk, col. 7, ll. 7-11 and 10
fig. 3b). Figure 3b of Gottschalk depicts an air spring 85 connected at one 11
end to the axle seat 71 for suspending the frame member 63 from above the 12
axle 75. (See Gottschalk, col. 7, ll. 31-39). 13
The Examiner identifies Gottschalk’s axle 75 as corresponding to the 14
axle assembly recited in claim 1; Gottschalk’s air spring 85 as corresponding 15
to the recited air spring; Gottschalk’s air bellows 79 as corresponding to the 16
recited lift actuator; and Gottschalk’s appendages 77 and axle seat 71 as 17
corresponding to the recited run height adjustment device. (Ans. 4). 18
Assuming for purposes of this appeal only that the combination of 19
Gottschalk’s appendages 77 and axle seat 71 are a run height adjustment 20
device as recited in claim 1, the Appellants correctly point out that neither 21
the appendages 77 nor the axle seat 71 necessarily are releasably attached to 22
Gottschalk’s axle 75. (See Reply Br. 17). 23
Gottschalk’s appendages 77 are indirectly attached to the axle 75 24
through the control bars 65, 67 and the axle seat 71. (See Gottschalk, fig. 25
3b). Gottschalk describes the axle 75 as “mounted on” the axle seat 71. 26
Appeal 2010-000808
Application 11/039,051

5
(Gottschalk, col. 6, lines 65-68). The Examiner has not articulated reason to 1
believe that this mounting must be releasable. Therefore, the Examiner has 2
not shown that the combination of the appendages 77 and the axle seat 71 is 3
releasably attached to the axle 75. Since the Examiner has not shown that 4
Gottschalk expressly or inherently describes a structure including each 5
limitation of independent claim 1, we do not sustain the rejection of claims 6
1-6 under § 102(b) as being anticipated by Gottschalk. 7
8
Anticipation of Claims 7-12 9
The Examiner finds that “Gottschalk does not disclose multiple run 10
height adjustment devices.” (Reply Br. 21, quoting Ans. 11). Since there 11
appears to be no dispute that Gottschalk fails to describe a structure 12
including “first and second interchangeable run height adjustment devices” 13
as recited in independent claim 7, we do not sustain the rejection of claims 14
7-12 under § 102(b) as being anticipated by Gottschalk. 15
Anticipation of Claims 13-18 16
Independent claim 13 recites, with emphasis added: 17
13. An adjustable run height lift axle 18
suspension system, comprising: 19
an axle assembly; 20
an air spring for suspending a vehicle frame 21
above the axle assembly; 22
a lift actuator operable to lift the axle 23
assembly relative to the vehicle frame; and 24
the suspension system having first and 25
second interchangeable run heights, the air spring 26
having an approximate same operational height 27
when the suspension system is at the first and 28
second run heights. 29
Appeal 2010-000808
Application 11/039,051

6
The Appellants contend that Gottschalk fails to describe a structure 1
including the italicized limitation. (See Reply Br. 26). The Examiner finds 2
that Gottschalk’s air spring 85 “would inherently have the same approximate 3
operational height at least with a slight adjustment to the run heights as 4
described above when the spring [85] is in a position just before its position 5
shown in Figure 3b to [its] final position shown in Figure 3b.” (Ans. 5). 6
The Appellants’ Specification states that: 7
In another important feature of the suspension 8
system 10, the run heights RHa, RHb differ 9
without changing, or without substantially 10
changing, an operational height of the air spring 11
40. Thus, the same air spring 40 may be used for 12
each configuration of the suspension system 10, 13
thereby eliminating the cost of maintaining 14
multiple different air springs in inventory for the 15
different configurations. The operational height of 16
the air spring 40 is the height of the air spring 17
when the suspension system 10 is at its designed 18
run height RHa or RHb. 19
(Spec. 8, ll. 9-18). Any adjustment to the run height in Gottshalk’s 20
suspension appears to cause a proportional change in the operational height 21
of Gottschalk’s air spring 85, even where the adjustment to the run height is 22
incremental. This relationship is not that described in the passage from the 23
Specification quoted immediately above. Therefore, the Examiner has not 24
shown that Gottschalk’s suspension includes an air spring expressly or 25
inherently capable of having an approximate same operational height when 26
the suspension system is at first and second run heights. We do not sustain 27
the rejection of claims 13-18 under § 102(b) as being anticipated by 28
Gottschalk. 29
Appeal 2010-000808
Application 11/039,051

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DECISION 1
We REVERSE the Examiner’s decision rejecting claims 1-18. 2
3
REVERSED 4
5
6
Klh 7