Ex Parte Rogge et al

Patent Trial and Appeal BoardSep 26, 2012

11433914 (P.T.A.B. Sep. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TIMOTHY A. ROGGE, NEIL STEWART CUMMINGS, MIKEY L. LOVE, and ROBERT JAMES RAMM ____________ Appeal 2010-006712 Application 11/433,914 Technology Center 3600 ____________ Before JOHN C. KERINS, STEVEN D. A. McCARTHY, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006712 Application 11/433,914 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1, 7, 8, 10, 14, 15, and 21. Claims 17-20 have been cancelled. Claims 9 and 16 have been withdrawn. Claims 2-6, 11-13, and 22 have been objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. REJECTIONS The following Examiner’s rejections are before us for review. Claims 1, 7, 10, 14, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wolf (US 3,147,964, issued Sept. 8, 1964) in view of Bergdahl (US 6,416,030 B1, issued Jul. 9, 2002). Claims 8 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wolf in view of Bergdahl as applied to claims 1 and 10, and further in view of Dawda (US 5,941,511, issued Aug. 24, 1999). CLAIMED SUBJECT MATTER The claimed subject matter pertains to “an isolation mount used in securing a support structure to a vehicle body, such as a vehicle cradle mount or subframe, and for absorbing vibrations and movements between the two structures.” Spec. 1. Appeal 2010-006712 Application 11/433,914 3 Claims 1, 10, and 21 are the independent claims on appeal. Claim 1, reproduced below with emphasis added, is illustrative of the subject matter on appeal. 1. A mount assembly comprising: an insert including a generally cylindrical body having an aperture extending therethrough and a first pair of radial projections and a second pair of radial projections, said first pair of radial projections extending at a distance greater than said second pair of radial projections; a microcellular urethane body disposed over said insert; and a cup member surrounding a portion of said microcellular urethane body. Claims 10 and 21 each recite “[a] mount assembly” including “an insert . . . [and] a microcellular urethane body press-fit over said insert.” OPINION The Examiner has found that Wolf bushing “C” as shown in Figures 11-13 corresponds to the mount assembly as recited in independent claims 1, 10, and 21, except that Wolf’s polymer material “press-fit over said insert” is made of elastic rubber not microcellular urethane. See Ans. 3-5. To remedy this deficiency with respect to the independent claims the Examiner turns to Bergdahl’s disclosure that “[v]arious materials such as natural rubber compounds, microcellular urethanes, and other natural and synthetic compounds and materials are suitable for elastomeric element 12 and other elastomeric elements to be described later.” Ans. 4, citing Bergdahl, col. 3, ll. 44-48. The Examiner concludes that “[i]t would have been obvious to Appeal 2010-006712 Application 11/433,914 4 one of ordinary skill in the art to merely use the known microcellular urethane into the mount of Wolf, as taught by Bergdahl et al., as a matter of design choice depending upon the type of application in order to provide different spring rates in different directions.” Ans. 4. In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). It is incumbent upon the examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d, 1071, 1073 (Fed. Cir. 1988). In so doing, the examiner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Only if this initial burden is met does the burden of coming forward with evidence or argument shift to the appellants. See Oetiker, 977 F.2d at 1445. Wolf’s bushing is an “elastic rubber bushing[] for automobile suspensions and the like and more particularly to a durable elastic rubber bushing having a spring rate in a vertical direction materially different from its spring rate in a horizontal direction” and “is well suited for use in the front suspension of a modern automobile where the rubber of the bushing is employed to cushion angular deflections of low magnitude.” Col. 1, ll. 9-13, and 30-33; see also fig. 1. Wolf discloses in Figures 11-13 bushing assembly C, which includes a “cylindrical outer metal sleeve 8b having radial end flanges 50 and a rounded oblate cross section, a tubular elastic rubber insert 10b, and an inner metal sleeve 9b coaxial with the sleeve 8b Appeal 2010-006712 Application 11/433,914 5 and having radially outward projecting ribs 56 on opposite sides thereof.” Col. 4, ll. 4-9, figs. 11-13. Wolf’s bushing assembly C also includes grooves 53 within an intermediate portion of bushing assembly C. We note that the Examiner has found that that Wolf’s “elastic rubber insert 10b (mounted between outer metal sleeve 8 and inner metal sleeve 9b) is subjected to compression and tension when provided as rubber bushings in automobile suspensions.” Ans. 6 (emphasis added). Bergdahl is an elastomeric mounting/isolation assembly 10, especially “for the undercarriage of a motor vehicle to isolate, or at least attenuate, the influence of certain road induced forces on the vehicle body,” having an elastomeric element 12 situated between the body and the chassis of the vehicle. Abstract, col. 1, ll. 8-10, col. 2, ll. 1-24. Bergdahl’s elastomeric element 12 is concentrically disposed within outer sleeve 16, wherein suitable materials for elastomeric element 12 include “natural rubber compounds, microcellular urethanes, and other natural and synthetic compounds.” Col. 3, ll. 37-38, 44-48, fig. 1. As such, Bergdahl teaches that natural rubber compounds and microcellular urethanes are alternative materials for its particular purpose. However, the Examiner has not established that Bergdahl’s elastomeric element 12, which appears to only be subjected to compression forces, is suitable for bearing the tension forces applied to Wolf’s tubular elastic rubber insert 10b. Further, Bergdahl’s elastomeric element 12 does not have a structural component that is a similar to Wolf’s groove 53. The structure of groove 53, or a similar structural feature, is relevant in this case because it could evidence a purpose of a structure to withstand tension forces. See also App. Br. 5-7, Reply Br. 2. Therefore, the modification or Appeal 2010-006712 Application 11/433,914 6 substitution of microcellular urethane, as taught by Bergdahl, for the rubber material in Wolf would not have been a mere matter of design choice because Bergdahl’s elastomeric element 12 and Wolf’s tubular elastic rubber insert 10b appear to have different purposes. See In re Gal, 980 F.2d 717, 719-20 (Fed. Cir. 1992). Hence, the Examiner’s reasoning is not supported by rational underpinning, and as such, the Examiner’s initial burden of establishing a prima facie case of obviousness has not been met. Thus, the rejection of independent claim 1 and its dependent claims 7 and 8, independent claim 10 and its dependent claims 14 and 15, and independent claim 21, cannot be sustained. As for the remaining rejection of claims 8 and 15, the Examiner finds that “Dawda et al. teaches, as shown in fig. 2, the use of a cup member 16 with an end having a radially inwardly extending flange 40.” Ans. 5. This finding does not remedy the lack of rational underpinning as discussed above with respect to the rejection of the independent claims. Thus, the rejection of dependent claims 8 and 15 as unpatentable over Wolf in view of Bergdahl as applied to independent claims 1 and 10, and further in view of Dawda, cannot be sustained. DECISION We REVERSE the rejections of claims 1, 7, 8, 10, 14, 15, and 21. REVERSED Klh