Ex Parte Lähteenmäki et alDownload PDFPatent Trial and Appeal BoardMay 31, 201713428820 (P.T.A.B. May. 31, 2017) Copy Citation 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. 13/428,820 03/23/2012 Jussi LAHTEENMAKI 1381-0470PUS1 1000 127226 7590 06/02/2017 BIRCH, STEWART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER WILLIAMS, THOMAS J ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 06/02/2017 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): mailroom @ bskb. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUSSI LAHTEENMAKI and TARVO VIITA-AHO1 Appeal 2015-003166 Application 13/428,820 Technology Center 3600 Before STEFAN STAICOVICI, BRANDON J. WARNER, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jussi Lahteenmaki and Tarvo Viita-Aho (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1—3 and 5—12, 15, 16, and 18—20.2 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on May 16, 2017. We AFFIRM-IN-PART. 1 According to Appellants, the Real Party in Interest is Kone Corporation. Appeal Br. 1 (filed Aug. 21, 2014). 2 Claims 4, 13, 14, and 17 have been canceled. Appeal Br. 12—14 (Claims App.) ; see also, Amendment 3 (filed Aug. 18, 2014); Advisory Act. 2 (dated Aug. 25, 2014). Appeal 2015-003166 Application 13/428,820 CLAIMED SUBJECT MATTER The subject matter of Appellants’ claimed invention “relates to solutions for damping the noise of a brake.” Spec. 1,11. 5—6. Independent claim 1 is reproduced below and is representative of the claimed subject matter. 1. A brake comprising: a frame part; an armature part supported by the frame part in a manner that allows movement; an electromagnet for opening the brake; and a damping arrangement for damping the noise of the brake, wherein the damping arrangement is made to be conductive to magnetic flux, wherein the damping arrangement is fitted on the pathway of the magnetic flux of the electromagnet of the brake, and wherein the damping arrangement is made of a ferromagnetic composite material, which comprises a flexible matrix, to which matrix ferromagnetic material has been added. Appeal Br. 12 (Claims App.) (emphasis added). REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1—3, 5—9, 12, 15, 16, and 18—20 under 35 U.S.C. § 103(a) as being unpatentable over Pfann (US 6,321,883 Bl, iss. Nov. 27, 2001) and Imazawa (JP 59-062178 A, iss. Apr. 9, 1984)3. 3 We derive our understanding of this reference from an English language translation contained in the image file wrapper of this application. All references to the text of this document are to portions of the translation. 2 Appeal 2015-003166 Application 13/428,820 II. The Examiner rejected claims 10 and 11 under 35 U.S.C. § 103(a) as being unpatentable over Pfann, Imazawa, and Maurice (US 2002/0100646 Al, pub. Aug. 1, 2002). ANALYSIS Rejection I Claims 1—3, 5, 8, 9, 12, 15, 16, and 18—20 Appellants argue for patentability of claims 1—3, 5, 8, 9, 12, 15, 16, and 18—20 together as a group. Appeal Br. 4—7. We select claim 1 as representative of this group, and claims 2, 3, 5, 8, 9, 12, 15, 16, and 18—20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2016). For claim 1, the Examiner’s rejection finds Pfann discloses each element claimed, except “wherein the damping arrangement is made of a ferromagnetic composite material, which comprises a flexible matrix, to which matrix ferromagnetic material has been added.” Final Act. 3. Finding Imazawa teaches the claimed ferromagnetic composite material, which according to the Examiner “appears [as] providing] improved damping capability,” the Examiner concludes, it would have been obvious to one of ordinary skill in the art at the time of the invention when having to choose a damping material for the apparatus of Pfann et al. to have considered and utilized the ferrite elastic material of Imazawa et al., as this material has an improved damping capability and durability. Id. Appellants contend two errors with the Examiner’s rejection: (1) it fails to establish Imazawa is analogous art (see Final Act. 4—6), and (2) it fails to provide a motivation for replacing the entire damping arrangement of Pfann rather than just the middle plastic layer 58 between metal disks 9 and 9' (see id. at 6). Neither contention is persuasive for the following reasons. 3 Appeal 2015-003166 Application 13/428,820 Appellants allege Imazawa is non-analogous art because it “is not attempting to solve the same problem as Pfann and the claimed invention.” Id. at 4. However, “[a] reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). The Federal Circuit notes, “[t]he Supreme Court[] . . . directs us to construe the scope of analogous art broadly” because “'familiar items may have obvious uses beyond their primary purposes.” Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (quoting with emphasis, KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007)). For example, when a problem is not unique to the claimed subject matter, a skilled artisan addressing a problem with portable computers may still naturally look to areas such as “a desktop telephone directory, a piano lid, a kitchen cabinet, a washing machine cabinet, a wooden furniture cabinet, or a two-part housing for storing audio cassettes.” See In re Paulsen, 30 F.3d 1475, 1481—82 (Fed. Cir. 1994) (affirming rejection of a laptop computer hinge as obvious over hinged cabinets, piano lids, etc., because the “problem is not unique to portable computers”). The In re ICON Health & Fitness, Inc. decision is instructive. There, Icon’s invention related to a treadmill and the challenged reference related to a bed. In re ICON Health & Fitness, Inc., 496 F.3d at 1379. Icon’s invention provided “a treadmill with a folding mechanism and a means for retaining that mechanism in the folded position.” Id. at 1380. Because the 4 Appeal 2015-003166 Application 13/428,820 problem associated with the folding mechanism did not require any particular focus on treadmills, the Federal Circuit held “[ajnalogous art to Icon’s application . . . may come from any area describing hinges, springs, latches, counterweights, or other similar mechanisms — such as the folding bed in [the challenged reference].” Id. (emphasis added). Here, the Examiner finds both Pfann and Imazawa disclose applications in which “a structural element [is] used for damping the transmission of vibration from a source.” Final Act. 4. “It stands to reason,” the Examiner finds further, that a skilled artisan considering the Pfann application would have been attracted to the improved vibration absorbing capabilities of the ferrite elastic material Imazawa discloses because it would have “predictably improved the damping characteristics of the plastic layer 58” and, thereby, the overall damping characteristics of the disclosed damping arrangement Pfann discloses. Id. at 4—5. In other words, “when one is faced with solving the transmission of vibrations between two structures ... a person in the art would have considered the damping material of Imazawa.” Ans. 3. Appellants do not dispute a skilled artisan would have recognized the capabilities of the ferrite elastic material of Imazawa to improve the damping characteristics of the plastic layer 58 in Pfann, but instead contend the Examiner errs because a skilled artisan would not have looked to Imazawa’s application that damps rotational vibrations. Appeal Br. 4—6. Appellants notably do not offer any evidentiary support for this position. Appellants characterize Pfann as limited to damping sound due to collisions, but Pfann more broadly teaches, 5 Appeal 2015-003166 Application 13/428,820 [w]hen the damping means are located between the armature plate and the magnetic body not only do they attenuate the transmission of oscillations and/or impacts from the armature plate to the magnetic body and conversely, but also attenuate an initiation of oscillations in the armature plate. Pfann, col. 3,11. 14—18. Contrary to Appellants’ position, Pfann identifies concerns with attenuating (i.e., damping) the transmission of oscillations (i.e., vibrations), which supports the Examiner’s finding that Pfann and Imazawa address a common problem. Appellants, moreover, fail to provide any technical reason persuasively showing why damping the transmission of oscillation presents a different problem than damping “rotational” vibrations. Given Imazawa is directed to attenuating the transfer of oscillations (i.e., vibrations) between two structures (i.e., between the motor and the frame (see Imazawa 3)), we are not persuaded of error. To the contrary, the Examiner has made a prima facie case Imazawa is analogous art, which a preponderance of the evidence supports and the Appellants have not persuasively rebutted. Appellants also contend, “the Examiner has failed to explain why one of ordinary skill in the art would be motivated by Imazawa to replace the entire combination of metal disk 9’, plastic layer 58 and metal disk 9 with a [damping] arrangement made of a ferromagnetic composite material comprising a flexible matrix and matrix of ferromagnetic material or made from a ferrite polymer composite.” Appeal Br. 6; Reply. Br. 2. This contention is neither commensurate with the scope of claim 1 nor the Examiner’s rejection. First, the broadest reasonable interpretation of “damping arrangement” does not exclude the addition of metal disks to the claimed ferromagnetic damping material, and Appellants do not identify any evidence from the Specification that would suggest otherwise. Second, 6 Appeal 2015-003166 Application 13/428,820 rather than finding a skilled artisan would have replaced the entire damping arrangement, the Examiner’s rejection finds a skilled artisan would have been motivated to substitute Pfann’s viscoelastic layer 58 with the elastic/ferrite material Imazawa discloses to improve the damping absorption capabilities. Ans. 3. Appellants’ arguments fail to address this rationale and, thus, do not apprise us of error. Therefore, for the foregoing reasons, we sustain the Examiner’s rejection of claim 1 and, as a result, also of claims 2, 3, 5, 8, 9, 12, 15, 16, and 18—20. Claims 6 and 7 Claim 6 recites, “wherein the damping arrangement is made from a ferrite polymer composite film, the thickness of which is approx. 0.2 to 0.4 millimeters,” and claim 7 is substantially the same except it recites a “thickness of which is approx. 0.4 to 1 millimeter or even more.” Appeal Br. 12—13 (Claims App.). Finding Pfann discloses a damping arrangement in the range of 0.5 mm to 1.5 mm, the Examiner rejects claims 6 and 7 concluding the broadest reasonable interpretation of these claims are “such that the entire thickness of the damping arrangement is considered [in Pfann], and not just the elastic or polymer portion.” Final Act. 7—A. Appellants assert persuasively that the Examiner’s finding is unfounded. Appeal Br. 7—8. In particular, Appellants argue Pfann fails to disclose a ferrite polymer composite having the claimed thicknesses. Id. Appellants note that Pfann, at column 7, lines 28—30, teaches the plastic layer 58, which the Examiner determines a skilled artisan would substitute with the elastic/ferrite material Imazawa discloses (see Final Act. 4—5), “has a thickness of 0.05 mm.” Id. at 7 Appeal 2015-003166 Application 13/428,820 7. We note further Pfann teaches, “[t]he thickness of the damping means is preferably made very small, in order not to enlarge the air gap between the armature plate and the magnetic body unnecessarily.” Pfann col. 7,11. 51— 54. In view of these disclosures, a preponderance of the evidence does not support that Pfann discloses the limitations of claims 6 and 7. The Examiner’s reliance on the thicknesses Pfann discloses for the entire damping arrangement, and not just the elastic or polymer portion, relies on an unreasonably broad interpretation of claims 6 and 7. The plain meaning of the claim language requires the ferrite polymer composite itself to have the claimed thicknesses. The Examiner notably does not identity any portion from the Specification supporting a different interpretation. Therefore, we do not sustain the Examiner’s rejection of claims 6 and 7. Rejection II Appellants argue claims 10 and 11 are patentable because the Examiner does not rely on Maurice to cure the deficiencies with the rejection of claim 1. Appeal Br. 8. For the reasons discussed above (see supra, Rejection I), we are not persuaded the Examiner’s rejection of claim 1 suffers from any of the alleged deficiencies. Therefore, we sustain the Examiner’s rejection of claims 10 and 11. DECISION We affirm the Examiner’s decision rejecting claims 1—3, 5, 8—12, 15, 16, and 18-20. We reverse the Examiner’s decision rejecting claims 6 and 7. 8 Appeal 2015-003166 Application 13/428,820 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-IN-PART 9 Copy with citationCopy as parenthetical citation