Ex Parte Naber

Patent Trial and Appeal Board

Aug 11, 2017

12736354 (P.T.A.B. Aug. 11, 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.
12/736,354 12/14/2010 Thomas Naber 12841/45 9577
26646 7590 08/15/2017
ANDREWS KURTH KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
SICONOLFI, ROBERT
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
08/15/2017 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):
u spto @ keny on .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS NABER
Appeal 2016-004452
Application 12/736,354
Technology Center 3600
Before DEBRA K. STEPHENS, AMBER L. HAGY, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 17—19, 22—31, and 33—37. Claims 1—16, 20,
and 21 have been cancelled. Claims App’x. 1—2. Claim 32 has been
withdrawn. Non-Final Act. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-004452
Application 12/736,354
STATEMENT OF THE CASE
Appellant’s invention is directed to a damping device having a spring
device and a telescopic device, suitable for use in vehicles having an
automatic level control system. Spec. 1. Claim 17, reproduced below, is
representative of the claimed subject matter:
17. A damping device for a vehicle having a level control system,
comprising:
a spring device; and
a telescopic device, which is coupled to the spring device, the
telescopic device having at least three telescopic elements, which are
coupled together so that a predetermined damping force is generated
when the telescopic elements are displaced relative to each other;
wherein the telescopic device is situated inside the spring
device,
wherein the spring device is configured as a bellows,
wherein a first telescopic element has a smaller diameter than a
second telescopic element and the second telescopic element has a
smaller diameter than a third telescopic element, so that the telescopic
elements can form a first compression space and a second
compression space, each of which has two chambers, so that when the
telescopic elements are pulled apart or pushed together, a fluid present
in the compression spaces is exchanged between the chambers,
wherein to form the compression spaces, each of the telescopic
elements has outer sealing elements and inner sealing elements, the
second telescopic element having a first outer sealing element, which
is situated so that it seals off one end of the second telescopic element,
which surrounds the first telescopic element, from the first telescopic
element, and wherein the third telescopic element has a second outer
sealing element, which is situated so that it seals off an end of the
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third telescopic element, which surrounds the second telescopic
element, from the second telescopic element,
wherein the first telescopic element has a first inner sealing
element, which is situated so that it seals off an end of the first
telescopic element, which is located inside of second telescopic
element, from second telescopic element, and wherein the second
telescopic element has a second inner sealing element, which is
situated so that it seals off an end of the second telescopic element,
which is located inside of the third telescopic element, from the third
telescopic element,
wherein the first compression space is subdivided by the first
inner sealing element into two chambers, which are connected via a
first opening in the first inner sealing element, and wherein
corresponding thereto, the second compression space is subdivided by
the second inner sealing element into two chambers, which are
connected via a second opening in the second inner sealing element,
so that during an upward deflection of the damping device, the
chambers situated beneath the inner sealing elements function as
compression space, and so that during a compression of the damping
device, the chambers situated above the inner sealing elements
function as compression space,
wherein the damping device is part of the level control system
of the vehicle, and
wherein the second telescopic element is float supported
between the first telescopic element and the third telescopic element.
REJECTIONS
Claims 17—19, 22—29, 31, and 33—37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Korosladanyi et al.
(US 4,325,541; issued Apr. 20, 1982) (“Korosladanyi”) and Forster (US
6,619,445 B2; issued Sept. 16, 2003).
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Application 12/736,354
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Korosladanyi, Forster, and Salice (US
7,281,704 B2; issued Oct. 16, 2007).
ANALYSIS
Issue: Did the Examiner err in finding the combination of
Korosladanyi and Forster teaches or suggests “a telescopic device . . . having
at least three telescopic elements . . . wherein the second telescopic element
is float supported between the first telescopic element and the third
telescopic element,” as recited in independent claim 17?
The Examiner finds Korosladanyi teaches two telescoping elements —
the piston rod, and cylinder 22 of Figure 3. Non-Final Act. 2, 10; Ans. 2.
The Examiner finds Forster teaches three telescopic elements — elements 5
(piston rod), 3 (pressure tube), and 17 (intermediate tube) in Figure 2, where
the second telescopic element is float supported between the first telescopic
element and the third telescopic element. Non-Final Act. 2—3, 10; Ans. 2—3.
The Examiner finds it would have been obvious to one of ordinary skill in
the art at the time the invention was made to “modif[y] Korosladanyi to have
three telescopic elements instead of two telescopic elements as taught by
Forster to provide a damper with an increased range of damping by
increasing the maximum stroke while decreasing the minimum stroke.”
Non-Final Act. 4; see also Non-Final Act. 10—11.
Appellant argues Korosladanyi “refers to a simple piston arrangement
— and not a telescopic device having a plurality of telescopic elements ....
One of the purported ‘telescoping elements ’ (item 20) is in fact a piston
rod.'” App. Br. 8; see Reply Br. 4. With regard to Forster, Appellant argues:
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Application 12/736,354
item 3 is a pressure tube, ITEM 5 IS A PISTON ROD—AND
THEREFORE NOT A TELESCOPING ELEMENT, and item
17 is an intermediate tube. Accordingly, these three elements
(especially item 5 which is the piston rod) do not and cannot
represent three telescoping devices as provided for in the
context of the presently claimed subject matter—in which the
second telescopic element is float supported between the first
telescopic element and the third telescopic element.
Id.
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings. Final Act. 2—3, 10; Ans. 2—3. Korosladanyi teaches a
“telescopic, one-way type shock absorber” with a piston rod 20 and a
cylinder 22. Korosladanyi, col. 4,11. 17—24; Fig. 3; Title. Forster describes
a “telescopic vibration damper” with a pressure tube 3, piston rod 5, and
intermediate tube 17. Forster, col. 3,11. 19-32, Figs. 1, 2; Title.
As the Examiner points out (Ans. 2—3), Appellant explicitly describes
an embodiment in the Specification where “[djamper piston rod 222 thus
forms the first telescopic element of telescopic device 104.” Spec. 9,11. 1—2;
claim 31. Moreover, Appellant has not directed our attention to any
disclosure in Appellant’s Specification that explicitly defines a “telescopic
element” in the context of the claim. A relevant plain meaning of
“telescopic” is “(of an object) constructed of parts that slide one within
another and permit lengthening or shortening.” Webster’s Universal College
Dictionary 809 (1997). Thus, Appellant has not persuasively explained why
the combination of telescopic devices described in Korosladanyi and Forster
do not teach or suggest the claimed telescopic elements.
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Appellant further argues “the Office is simply stating, without any
supporting evidence, that it would have been obvious to try the combination
asserted by the Office Action.” App. Br. 9; see Reply Br. 5—6.
This argument is misdirected. The Non-Final Action from which this
appeal was taken did not rely on or refer to the obvious to try rationale. See
Non-Final Act. 2—11. The Examiner did not provide support for an obvious
to try rejection in the Final Action because the Examiner did not make such
a rejection in the Final Action.
Appellant further argues “the Office Actions to date offer no
evidence, but only conclusory hindsight, reconstruction and speculation.”
App. Br. 10. According to Appellant, “the Office must provide proper
evidence of a motivation for modifying or combining the references to
provide the claimed subject matter.” App. Br. 10; see Reply Br. 6.
We are not persuaded. The Examiner has articulated reasoning of
how the claimed features are met by the proposed combination of the
reference teachings with some rational underpinning, consistent with the
guidelines stated in KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
Appellant fails to persuasively address or rebut the Examiner’s specific
findings and, thus, we are not persuaded by Appellant’s mere allegation of
impermissible hindsight reconstruction. Moreover, Appellant has not
persuaded us of any knowledge relied upon by the Examiner that was
gleaned only from Appellant’s disclosure and that was not otherwise within
the level of ordinary skill in the art at the time of invention. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claim 17 under 35 U.S.C. § 103(a). For the same reasons, we
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are not persuaded the Examiner erred in rejecting dependent claims 18, 19,
22—31, and 33—37, which were not separately argued (see App. Br. 8).
DECISION
For the above reasons, the Examiner’s rejection of claims 17—19, 22—
31, and 33—37 is 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)(l)(iv).
AFFIRMED
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