Ex Parte Sasaki et alDownload PDFPatent Trial and Appeal BoardJul 14, 201512306709 (P.T.A.B. Jul. 14, 2015) 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. 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 Appeal 2013-007279 Application 12/306,709 2 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. Appeal 2013-007279 Application 12/306,709 3 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 Appeal 2013-007279 Application 12/306,709 4 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 Appeal 2013-007279 Application 12/306,709 5 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, Appeal 2013-007279 Application 12/306,709 6 “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 Appeal 2013-007279 Application 12/306,709 7 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. Appeal 2013-007279 Application 12/306,709 8 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 rvb Copy with citationCopy as parenthetical citation