Ex Parte Joslyn et al

Patent Trial and Appeal BoardDec 11, 2012

11284809 (P.T.A.B. Dec. 11, 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. 11/284,809 11/22/2005 Robert C. Joslyn 04-37 8403 30699 7590 12/11/2012 THOMPSON HINE LLP Intellectual Property Group 10050 Innovation Drive Suite 400 Dayton, OH 45342-4934 EXAMINER AUNG, SAN M ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 12/11/2012 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT C. JOSLYN, JAMES G. QUINTUS, and RANDY C. FOSTER ____________________ Appeal 2010-010349 Application 11/284,809 Technology Center 3600 ____________________ Before: LINDA E. HORNER, WILLIAM A. CAPP, and SCOTT A. DANIELS, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010349 Application 11/284,809 2 STATEMENT OF CASE Robert C. Joslyn, James G. Quintus, and Randy C. Foster (Appellants) appeal under 35 U.S.C. § 134 from a rejection of claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appellants’ invention is directed to a belt tensioner utilizing asymmetric motion control and a damping member for controlling belt tension of a vehicle drive belt which operates various vehicle components such as the alternator, power steering pump, coolant fan, etc. Spec. 1, ll. 1- 25 and fig. 2. Claims 1, 10 and 19 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A belt tensioner comprising: a support housing at least in part defining a spring cavity; an arm pivotally attached to the support housing; a spring located in the spring cavity and operatively connected to the arm and the support housing to bias the arm about a pivot axis toward an unloaded position relative to the support housing; and a damping member comprising a hub and deflectable, force-applying elements that are connected to and spaced apart about a periphery of the hub, the force-applying elements being biased toward a contact surface of the arm to apply a frictional force between the contact surface and the force-applying elements to impede rotation of the arm relative to the support housing; wherein at least one of the force-applying elements is an elastically deflectable leaf spring that is self-biased against the contact surface of the arm. Appeal 2010-010349 Application 11/284,809 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Quintus US 6,231,465 B1 May 15, 2001 Shen Matsumura US 6,609,600 B1 JP 07-238966 Aug. 26, 2003 Sept. 12, 1995 REJECTIONS The Examiner made the following rejections: Claims 1-4, 6-13, 15-20 and 22-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Quintus in view of Matsumura. Ans. 3. Claims 5, 14 and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Quintus, as applied to claims 1, 10, and 19, and further in view of Shen.1 Ans. 10. ANALYSIS Claims 1-4, 6-13, 15-20 and 22-25 as being unpatentable over Quintus in view of Matsumura. The Examiner found that Quintus discloses each of the features of claim 1 with the exception of the damping member comprising a force applying element which “is an elastically deflectable leaf spring that is self- biased against the contact surface of the arm.” Ans. 3-4. The Examiner found that Matsumura discloses a damper gear which brakes the opening and closing of a laptop lid, a toilet bowl lid, or a door, and the damper gear includes an elastically deflectable leaf spring that is self-biased against an 1 As claims 4, 14, and 21 depend from claims 1, 10, and 19, we understand the rejection to be based on Quintus, as modified by Matsumura, and further in view of Shen. Appeal 2010-010349 Application 11/284,809 4 arm. Ans. 4, 12-13; Matsumura, para. [0001], [0064]. The Examiner reasoned that it would have been obvious to modify Quintus’s damper by replacing the pivoting brake elements (34) of Quintus with the elastically deflectable leaf spring(s) from Matsumura “in order to provide [a] simple and reliable mechanism.” Ans. 4;. Appellants contend that the Examiner utilized impermissible hindsight in the combination of Quintus and Matsumura and that there is no teaching, suggestion or motivation to modify or combine Quintus with the leaf spring damper element disclosed by Matsumura. App. Br. 10-112. Appellants also argue that “Quintus does not have a rolling object similar to object 9 to work with arms 83, thus one of skill in the art would not be motivated to modify Quintus with just the arms of Shuji [Matsumura].” App. Br. 11. The Examiner admits that Quintus fails to disclose a belt tensioner damper comprising an elastically deflectable leaf spring that is self-biased against a contact surface. Ans. 4. Matsumura discloses a closure damper gear for a toilet lid (or alternatively a laptop lid or door) having a rotor 79 with circumferentially extending arms 83 which the Examiner interprets as leaf springs. Ans. 4; Matsumura, paras. [0001], [0064] and figs. 18-20. However, the operation of arms 83 in Matsumura are dynamically dependent upon Matsumura’s radial camming apparatus as object 9 moves between crevices 19 and 20 to increase or decrease the friction. We agree with Appellants that there is insufficient motivation for a person of skill in the art to remove arms 83, alone, from the mechanism taught in Matsumura because the arms do not function alone to provide the braking torque. App. Br. 11 and see Matsumura para. [0064-65] and figs. 13- 20. In addressing the question of obviousness, one must not pick and choose 2 Refers to Appeal Brief filed October 1, 2009. Appeal 2010-010349 Application 11/284,809 5 isolated elements from the prior art and combine them so as to yield the invention in question if such a combination would not have been obvious at the time of the invention. In re Wesslau, 353 F.2d 238 (CCPA 1965), compare In re Hyon, 679 F.3d 1363 (Fed. Cir. 2012). In the instant case, the Examiner erred by picking just the extension arms of Matsumura without the corresponding cam mechanism with which the extension arms interact, and thus to the exclusion of other parts necessary to the full appreciation of what Matsumura fairly suggests to one of ordinary skill in the art. Such picking and choosing of an isolated element from Matsumura constitutes an improper hindsight reconstruction of the claimed invention. Independent claims 10 and 19 also include the limitation of the force applying elements being a leaf spring and were rejected by the Examiner for similar reasoning as claim 1. Ans. 6-7, 9. Thus, for the reasons discussed supra, we do not sustain the Examiner’s rejection of independent claims 1, 10 and 19 and their respective dependent claims 2-4, 6-9, 11-13, 15-18, 20 and 22-25 under 35 U.S.C. § 103(a) as unpatentable over Quintus in view of Matsumura. Claims 5, 14 and 21 as being unpatentable over Quintus, as modified by Matsumura, and further in view of Shen. With respect to the rejection of dependent claims 5, 14 and 21 under 35 U.S.C. § 103(a), the addition of Shen to the combination of Quintus and Matsumura, fails to remedy the deficiencies of Quintus in view of Matsumura as described above. Ans. 16. Thus, we likewise do not sustain the rejection of claims 5, 14 and 21 over the combined teachings of Quintus in view of Matsumura and Shen. Appeal 2010-010349 Application 11/284,809 6 DECISION For the above reasons, the Examiner’s rejection of claims 1-25 is REVERSED. REVERSED mls