Ex Parte Handke et al

Patent Trial and Appeal BoardJan 16, 2014

11356544 (P.T.A.B. Jan. 16, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GUNTHER HANDKE, DIETER LUTZ, and JANINE BULL ____________ Appeal 2011-013080 Application 11/356,544 Technology Center 3600 ____________ Before STEFAN STAICOVICI, LYNNE H. BROWNE, and FRANCES L. IPPOLITO, Administrative Patent Judges. IPPOLITO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-10. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-013080 Application 11/356,544 2 CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal. Claim 1 reads: 1. A vibration damper comprising: a tubular body; a stop fastened directly to the tubular body; a component fastened to the tubular body and supported against the stop; and a deformation area formed as part of one of said stop and said component, said deformation area deforming to allow said component to shift on said tubular body when a force on said component exceeds a predetermined load, said deformation area being configured so that a functionality of the vibration damper remains preserved after the deforming of the deformation area. App. Br., Claims App’x (emphasis added). REJECTION1 Claims 1-10 are rejected under 35 U.S.C. § 102(b) as being anticipated by Ohta (US 5,308,032, issued May 3, 1994). ANALYSIS Rejection of claims 1-10 as anticipated by Ohta Independent claim 1 requires, among other features, a “deformation area being configured so that a functionality of the vibration damper remains preserved after the deforming of the deformation area.” App. Br., Claims App’x. The Examiner found that Figure 10 of Ohta teaches a vibration damper with a deformation area at the “contact surfaces of element 5 or 1The Examiner withdrew the obviousness-type double patenting rejection of claims 3 and 5. Ans. 3. Appeal 2011-013080 Application 11/356,544 3 element 7 or the cut out area between adjacent elements 5 in the form of a slot….” Ans. 4. The Examiner further determined the Ohta deformation area deforms to allow the component to shift on the tubular body. In particular, the Examiner references Ohta’s teaching that when a shock input from the road surface is large, a bending load acting in a lateral direction X-X or a transverse direction Y-Y in FIG. 10 is imposed on the outer shell 3 or the knuckle bracket A. In the case of a lateral load, the clamp portions 5, 5 and the support pieces 7, 7 of the knuckle bracket A may become opened and deformed…. Ohta, col. 1, ll. 45-51; see Ans. 4. Appellants argue that Ohta does not teach or suggest the claimed deformation area because the prior art device described in Ohta does not remain functional “after the outer bracket 1 (considered to be the component) shifts on the tubular body.” App. Br. 5; Reply Br. 2. Appellants explain Ohta recognizes that in the prior art device, which the Examiner uses in the present rejection, “when a shock input from the road surface is large, a bending load acting in a lateral direction X--X or a transverse direction Y--Y in FIG. 10 is imposed on the outer shell 3 or the knuckle bracket A. In the case of a lateral load, the clamp portions 5, 5 and the support pieces 7, 7 of the knuckle bracket A may become opened and deformed; as a result, there is a fear of the knuckle bracket A tilting or coming off the outer shell 3.” (Ohta at col. 1. 11. 45- 53). Ohta then goes on to state that “it is the object of the present invention to provide a knuckle bracket capable of fully bearing lateral and transverse loads even when such loads are imposed on a member to be mounted and thereby capable of preventing lateral opening, deformation and tilting.” (Ohta at col. 1. 11. 56-60). Ohta discloses a failure mode that is evidenced by a failure of Bracket A and thus a failure of the associated vibration damper. After the failure of Bracket A, the vibration damper is no longer functional. Appeal 2011-013080 Application 11/356,544 4 Reply Br. 2 (emphasis added). The Examiner responds that “[a] fear of failure is not a failure” and that there may be “a fear of the component tilting or coming off the tubular body without the component actually tilting or coming off the tubular body and destroying the functionality of the damper.” Ans. 5. The Examiner additionally finds that “after instances of only slight deformation of the deformation area and shifting of the component, the vibration damper of Ohta would remain functional.” Id. Essentially, the Examiner’s position is that Ohta inherently teaches the claimed deformation area where a “slight deformation of the deformation area” may not result in the knuckle bracket tilting or coming off the outer shell. Ans. 5. However, although a reference may inherently anticipate a claim limitation, “[i]nherency ... may not be established by probabilities or possibilities.” Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011)(quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). Here, Ohta explicitly describes failure of the Fig. 10 device once the bracket tilts or comes off as a result of deformation. Ohta, col. 1, ll. 45-53. Indeed, this is the very problem Ohta seeks to solve. Id. at col. 1, ll. 56-60. While it may be possible that a “slight” deformation force may not cause the knuckle bracket A from tilting or coming off, “the mere fact that a certain thing may result from a given set of circumstances is not sufficient” to establish anticipation by inherency. In re Oelrich, 666 F.2d at 581. Rather, the Examiner must show “the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. Appeal 2011-013080 Application 11/356,544 5 1999) (citations and internal quotations omitted). On the record before us, we do not see where Ohta teaches a slight deformation of the alleged deformation area necessarily preserves the functionality of the device. As such, we do not sustain the rejection of independent claim 1 and dependent claims 2-10 as being anticipated by Ohta. DECISION We REVERSE the Examiner’s decision rejecting claims 1-10 under 35 U.S.C. § 102(b) as being anticipated by Ohta. REVERSED mls