Ex Parte Meyer et al

Patent Trial and Appeal BoardMay 30, 2017

13139015 (P.T.A.B. May. 30, 2017)

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. 13/139,015 06/10/2011 Leon M. Meyer PA8694US ;67008-231PUS1 7358 74187 7590 06/01/2017 Carlson, Gaskey, & Olds, P.C./Sikorsky 400 West Maple Road, Suite 350 Birmingham, MI 48009 EXAMINER BEEBE, JOSHUA R ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): ptodocket @ cgolaw. com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEON M. MEYER, RICHARD C. LAY, and DAVID N. SCHMALING Appeal 2015-006604 Application 13/139,015 Technology Center 3700 Before LINDA E. HORNER, CHARLES N. GREENHUT, and PAUL J. KORNICZKY, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1— 3, 5—11, and 13—20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2015-006604 Application 13/139,015 CLAIMED SUBJECT MATTER The claims are directed to an elastomeric bearing system motion limiter. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A backing plate comprising: a plate which defines an at least partial annulus about an axis; a motion limiter which extends from said plate generally parallel to said axis; a redundant pivot which extends from said plate generally parallel to said axis; and wherein said plate defines an annulus radial opening located generally at zero degrees, said motion limiter located generally at 90 degrees, and said redundant pivot located generally at 270 degrees. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Richardson US 2,078,411 Apr. 27, 1937 Noehren US 4,244,677 Jan. 13, 1981 Markowski US 4,754,958 July 5, 1988 Doolin US 5,913,659 June 22, 1999 Schmaling US 2003/0235499 A1 Dec. 25, 2003 REJECTIONS Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Markowski and Noehren. Claims 1—3, 6, 8—11, 13, 14, and 16—18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Doolin, Noehren, and Markowski. Claims 5 and 15 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Doolin, Noehren, Markowski, and design choice. 2 Appeal 2015-006604 Application 13/139,015 Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Doolin, Noehren, Markowski, and Richardson. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Doolin, Noehren, Markowski, and Schmaling. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Doolin, Noehren, Markowski, and engineering expedient. OPINION The sole point of contention regarding the rejection of claim 16 based on Markowski and Noehren raised in Appellants’ brief is: the combination of Noehren and Markowski would not result [in] a redundant pivot and motion limiter being part of a single plate, as claimed. Instead, if the two references were combined, Noehren’s frame member 72 would appear to be separately attached to Markowski’s mounting surface 61 A. App. Br. 4. The Examiner correctly points out that Noehren’s redundant pivot, or snubber 68, is detachably secured to Noehren’s plate-like frame member 72 by bolt 74. Ans. 3; Noehren, Fig. 2, col. 4,11. 34-41. Thus, to implement the proposed modification to Markowski, one skilled in the art need not incorporate Noehren’s frame member because the snubber alone could be mounted, for example, to plate 56A to which Markowski’s wall 90, interpreted as the recited “motion limiter,” is mounted. This combination would satisfy the “single plate” language of claim 16. A conclusion of obviousness does not require the claimed invention, or some subcombination thereof, to be expressly suggested in any one or all of the references: the question is whether the claimed subject matter would have been obvious to 3 Appeal 2015-006604 Application 13/139,015 those of ordinary skill in the art in light of the combined teachings of the references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner correctly points out that it is the Appellants, and not the Examiner, that propose to incorporate additional structure, frame member 72, into the proposed combination such that the proposed combination would fail to satisfy the “single plate” claim language. Ans. 2—3. Appellants apparently misunderstand the Examiner’s point in this regard, incorrectly accusing the Examiner of neglecting the “single plate” limitation. Reply Br. 1. Appellants also argue the Examiner is improperly picking and choosing elements from the prior art. Reply Br. 2. However, the Examiner need not bodily incorporate all the specific elements of a reference when proposing to incorporate its teachings. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.”). That is particularly true here when Noehren itself demonstrates a form of modularity, bolt 74, facilitating incorporation of the structure relied upon into other devices. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). For the foregoing reasons, we sustain the Examiner’s rejection of claim 16 over Markowski and Noehren. Turning to the rejection of claims 1—4, 6, 8—11, 13, 14, and 16—18 based on Doolin, Noehren, and Markowski, Appellants argue that there would not be room in Noehren to incorporate Markowski’s wall 90, the “motion limiter.” App. Br. 4—6. This argument is not relevant to the rejection which proposes to incorporate Noehren’s snubber 68, the 4 Appeal 2015-006604 Application 13/139,015 “redundant pivot,” and Markowski’s wall 90 into Doolin, which appears to have plenty of room to accommodate both structures about Doolin’s damper 22. See Final Act. 6—8 (citing Doolin, Fig. 2); see also 37 C.F.R. § 41.37(c)(l)(iv)(“The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant.”). Further, it is clear that Noehren did not intend to limit the location of snubber 68 to the inboard location depicted in the figures. Final Act. 7 (citing Noehren col. 4,1. 29- col. 5,1. 6 and quoting from col. 4,11. 29—38, specifically (“auxiliary snubber 66, which could be readily inboard or outboard [of primary snubber 40]”). Accordingly, we also sustain the rejection of claims 1—4, 6, 8—11, 13, 14, and 16—18 based on Doolin, Noehren and Markowski. As to the rejections of the remaining dependent claims, Appellants rely on the arguments discussed above. App. Br. 6. Accordingly, we also sustain the remaining rejections of dependent claims 5, 7, 15, 19, and 20. DECISION The Examiner’s rejections are affirmed. 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 5