Ex Parte Sasaki et al

Patent Trial and Appeal Board

Jul 14, 2015

12306709 (P.T.A.B. Jul. 14, 2015)

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.
12/306,709 05/06/2009 Kazuhiko Sasaki NAKAI021US 6016
7663 7590 07/14/2015
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
NGUYEN, XUAN LAN T
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
07/14/2015 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 KAZUHIKO SASAKI,
MITSURU MIYAZAKI,
KAZUAKI SHIKI, and KAZUHIRO NAGASHIMA
________________

Appeal 2013-007279
Application 12/306,709
Technology Center 3600
________________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1‒7, 9‒19, and 21. App. Br. 3. Claims
8 and 20 have been cancelled. App. Br. 3; see also App. Br. 16‒17 (Claims
App.). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a friction damper, and more
particularly to a friction damper mounted between a pair of structural
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members of a building structure that relatively displaces [sic] with each
other when repeated tensile and compressive forces are added thereto due to
earthquake or the like and absorbing the energy.” Spec. ¶ 3. Claim 1, the
only independent claim, is illustrative of the claims on appeal and is
reproduced below:
1. A friction damper comprising:
a cylinder box defining an inner peripheral surface;
a plurality of cylinder members axially fixed in said
cylinder box, a clearance being formed between an outer
peripheral surface of each of the cylinder members and the
inner peripheral surface of the cylinder box;
a plurality of slide bearings, each slide bearing being
press-fitted into an inner peripheral surface of a respective one
of said plurality of cylinder members; and
a shaft made of metal, said shaft being axially slidably
press-fitted into an inner peripheral surface of said plurality of
slide bearings;
wherein when the cylinder box and the shaft move
axially in relation to each other, an outer peripheral surface of
said shaft and the inner peripheral surface of said plurality of
slide bearings frictionally slide in relation to each other to
absorb vibration energy under a condition that said clearance
between the outer peripheral surface of each of the cylinder
members and the inner peripheral surface of the cylinder box
allows an axial line of the shaft to always coincide with all axial
lines of the slide bearings.
REFERENCES RELIED ON BY THE EXAMINER
Domange US 2003/0026650 A1 Feb. 6, 2003
Okimura US 2005/0087414 A1 Apr. 28, 2005
Masato JP 2006038180 (A) Feb. 9, 2006

THE REJECTIONS ON APPEAL
Claims 1, 7, 18, 19, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Domange and Okimura.
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Claims 2‒6 and 9‒17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Domange, Okimura, and Masato.
ANALYSIS
The rejection of claims 1, 7, 18, 19, and 21 as
unpatentable over Domange and Okimura
Appellants present arguments for independent claim 1 (App. Br. 9‒
13) and contend that dependent claims 7, 18, 19, and 21 are allowable “as
being dependent upon an allowable base claim” (App. Br. 13). Accordingly,
we select claim 1 for review with claims 7, 18, 19, and 21 standing or falling
with claim 1. See also 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner primarily relies on the teachings of Domange for
showing the limitations of claim 1, including cylinder members 23, 29 and
slide bearing 24 press-fitted thereinto. Final Act. 2. However, the Examiner
acknowledges that Domange shows only “one slide bearing 24 while the
claim requires a plurality of slide bearings.” Final Act. 3. On this point,
“Okimura is cited to teach the individual slide bearings 9, 10, 11 being press
fitted to a respective one of the cylinder members 4, 5, 6, as shown in figure
1.” Final Act. 3. The Examiner concludes that it would have been obvious
“to have modified Domange’s damper to include a plurality of slide bearings
respectively for each cylinder member such as taught by Okimura for ease of
repair and replacement.” Final Act. 3.
Appellants initially contend that “there is no motivation or suggestion
to make this proposed modification.” App. Br. 9. Appellants base this
contention on two reasons: first, the cited references “do not render obvious
a friction damper having a plurality of bearings;” and second, the cited
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references do not render obvious a configuration “to allow for spacing
between the cylinder members and the cylinder box.” App. Br. 10.
Regarding Appellants’ first basis (i.e., a “plurality of bearings”),
Appellants address Domange contending that “the explicit teachings of
Domange et al. actually teach away from the Examiner’s proposed
modification because it teaches a single slide bearing 24 extending through
several cylinder members.” App. Br. 11 (referencing Domange Figure 10
and Paragraph 44); see also Reply Br. 3‒4. As further support, Appellants
discuss Domange’s creation of “a constant pressure force,” and that “[i]f
several bearings were used [to create this force], as suggested by the
Examiner, it is likely that the pressure exerted within the friction segment
would not be constant.” App. Br. 11 (referencing Domange Paragraph 41);
see also Reply Br. 4. In other words, “there will likely be differences in the
conditions of friction and wear among the plurality of bearings” in the
Examiner’s combination and since such friction and wear “will likely not be
uniform,” this “defeats the stated purpose of Domange.” App. Br. 11‒12.
The Examiner, referencing the same paragraphs and figure relied on
by Appellants, states that “[i]t is true that figure 10 shows one slide bearing
24” and that “paragraph [0044] employs a plural term of the friction
segments and a singular term for the slide friction.” Ans. 4. However, the
Examiner continues stating that “the illustration and the wording only serve
to describe the embodiment at hand. Domange does not show any teaching
against having multiple slide bearings.” Ans. 4.
Referenced Paragraph 44 of Domange describes the alternative
embodiment of Figure 10 (see Domange ¶ 23) stating that “the device
comprises” (emphasis added) “segments” 23 and “element” 24. The
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Examiner, addressing this Paragraph 44, states that “[a]s such, there is no
teaching from Domange against having multiple slide bearings . . . in the
slide bearing 24.” Ans. 4. We agree that the language employed by
Domange in Paragraph 44 does not expressly restrict Domange’s device to
only plural segments 23 and a single element 24 as asserted by Appellants.
App. Br. 11‒12.
Further, Appellants’ assertion that Domange “actually teach[es] away
from the Examiner’s proposed modification” (App. Br. 11) fails to be
persuasive because a teaching away requires a reference to actually criticize,
discredit, or otherwise discourage investigation into the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We are further
guided by instructions from our reviewing court that “[w]e will not read into
a reference a teaching away from a process where no such language exists.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). Here, Appellants do not indicate where
Domange actually criticizes, discredits or otherwise discourages
investigation into other arrangements, such as that suggested by Okimura
which describes and illustrates the use of multiple bearings and multiple
cylinder members. See, e.g., Okimura Figure 1 and Paragraph 46.
Additionally, regarding Appellants’ reference to Domange Paragraph
41 and the creation of “a constant pressure force” (App. Br. 11), Appellants
acknowledge that the language of this Paragraph 41 is directed to a pressure
force “as constant as possible” (Reply Br. 4), which is not the same as “a
constant pressure force” as asserted in Appellants Appeal Brief (see supra).
Hence, Domange Paragraph 41 actually allows for some variation in the
pressure force applied. Nevertheless, the Examiner correctly states,
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“paragraph [0041] is teaching about the friction segments 13, not the slide
bearing 24.” Ans. 4. Indeed, Domange Paragraph 41 is directed to an
embodiment different from that depicted in Domange Figure 10 and relied
on by the Examiner. Final Act. 2; see also Domange ¶ 23. Accordingly,
Appellants’ contentions premised on Domange’s need for the bearings to
apply “a constant pressure force” are not persuasive of Examiner error.
Appellants also contend, without evidentiary support, that “having
multiple bearings would increase the likelihood that at least one of the
bearings would fail and require repair and replacement.” Reply Br. 5.
Attorney argument cannot take the place of evidence in the record. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Hence, according to
Appellants, the Examiner’s reason to combine Domange and Okimura (“for
ease of repair and replacement” (see also, Final Act. 3)) “would tend to
increase the repair and replacement cost.” Reply Br. 5. Appellants’
assertion that one of the multiple bearings in the suggested combination
might fail and thus increase repair costs is equally applicable to Appellants’
claimed plurality of bearings, which also might fail and increase costs too.
As such, Appellants’ resort to speculation as to bearing failure is not
persuasive of Examiner error, or that the reason to combine Domange and
Okimura is unreasonable.
Appellants also believe that “manufacturing a single bearing would be
less expensive than manufacturing a plurality of bearings.” Reply Br. 5. We
understand Appellants to be contending that manufacturing a single
elongated bearing having multiple axially spaced bearing surfaces along its
length is less expensive than manufacturing a plurality of individual
bearings. Appellants present no evidence to support such a contention and it
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is not otherwise self-evident from the record. As such, Appellants’
contention is deemed to be attorney argument, which is “not the kind of
factual evidence that is required to rebut a prima facie case of obviousness.”
Geisler, 116 F.3d at 1470 (citation omitted).
Appellants also assert that the Examiner relied on “disfavored
hindsight” in making this rejection. App. Br. 12. However, Appellants do
not identify that which was specifically gleaned only form Appellants’
disclosure. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Further,
and specifically addressing this point, the Examiner states that having
multiple slide bearings “would provide ease for repair and replacement” and
that “[t]he benefits and the clear teachings from the two references,
Domange and Okimura, provide for a reasonable combination. It is not a
hindsight reconstruction.” Ans. 5. Appellants’ contentions to the contrary
are not persuasive of Examiner error.
Regarding Appellants second basis (no “spacing between the cylinder
members and the cylinder box” (App. Br. 10)), Appellants contend that “the
Examiner’s rejection relies on incorporating the Okimura et al. slide
bearings into the Domange et al. damping device.”1 App. Br. 12. In other
words, Appellants contend that because Okimura’s bearings 9, 10, 11
include particular structure (“tightening means” “located in the
corresponding support 4, 5, 6”), Okimura’s bearings with associated

1 Appellants further assert that “[t]he Examiner proposed substituting the
single ‘slide bearing’ 24 taught in the Domange reference with the plurality
of ‘slide bearings’ 9, 10, 11 disclosed in the Okimura reference.” Reply Br.
6 (emphasis added). Appellants mis-characterize the Examiner’s rejection
by contending that the Examiner actually proposed a substitution of one part
for the other. See Final Act. 2‒3, Ans. 5.
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supports cannot be incorporated into the Domange device and still retain the
recited clearance. App. Br. 12‒13; see also Reply Br. 6.
Appellants’ contention is not persuasive of Examiner error because
the Examiner is not bodily incorporating Okimura’s bearings (and especially
bearings with Okimura’s supports) into the device of Domange. Instead, as
stated by the Examiner, “[t]he modification of Domange in view of Okimura
only seeks to change the one [(Domange’s)] slide bearing 24 into multiple
slide bearings” as taught by Okimura. Ans. 6; see also Final Act. 3.
Based on the record presented, we sustain the Examiner’s rejection of
claims 1, 7, 18, 19, and 21.
The rejection of claims 2‒6 and 9‒17
as unpatentable over Domange, Okimura, and Masato
Appellants do not argue this rejection separately from the rejection of
claim 1 above. Because we sustain the Examiner’s rejection with respect to
claim 1 supra, we likewise sustain the rejection of dependent claims 2‒6 and
9‒17.
DECISION
The Examiner’s rejections of claims 1‒7, 9‒19, and 21 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)(l)(iv).

AFFIRMED

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