Ex Parte Stillabower

Patent Trial and Appeal BoardSep 27, 2012

11434947 (P.T.A.B. Sep. 27, 2012)

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. 11/434,947 05/16/2006 Morris D. Stillabower DP-314137 4360 22851 7590 09/27/2012 Delphi Technologies, Inc. M/C 480-410-202 P.O. Box 5052 Troy, MI 48007 EXAMINER SCHWARTZ, CHRISTOPHER P ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 09/27/2012 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 MORRIS D. STILLABOWER ____________ Appeal 2010-006717 Application 11/434,947 Technology Center 3600 ____________ Before STEVEN D.A. McCARTHY, EDWARD A. BROWN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006717 Application 11/434,947 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-5. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim on appeal, is reproduced below, and is representative of the subject matter on appeal. 1. Apparatus for securing a mounting flange of a vibration-sensitive module to a vibrational base with a bushing assembly secured to said vibrational base, where said mounting flange includes an internal through-hole bordered by an annulus, and said bushing assembly includes upper and lower elastomeric bushings disposed above and below said annulus, the improvement wherein: said upper and lower bushings are cylindrical in profile; and said mounting flange has cammed peripheries disposed radially outboard of said annulus and said upper and lower bushings such that said cammed peripheries are not substantially engaged by said upper and lower elastomeric bushings except in response to a vibrational movement of said base when said elastomeric bushings bulge against said cammed peripheries and increasingly engage said cammed peripheries in relation to a force impulse associated with said vibrational movement. Appeal 2010-006717 Application 11/434,947 3 REJECTIONS The following Examiner’s rejections are before us for review. Claims 1, 3, 4, and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Jung1 (EP 0058911 A1, pub. Sept. 1, 1982) in view of admitted prior art represented by Figure 1 of the Appellant’s Specification (hereinafter “APA Figure 1”). Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over Jung in view of APA Figure 1 and further in view of Beck (US 3,304,043, iss. Feb. 14, 1967). Claims 1, 3, 4, and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over APA Figure 1 in view of Jung. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over APA Figure 1 in view of Jung and further in view of Beck. OPINION Prior to discussing the issues involved in this appeal, we note that the Examiner’s findings with respect to Jung are based on the figures of Jung alone. See Ans. 3. The Jung publication is written in a foreign language and a translation of the publication is not of record. Since we are required decide the issues of this appeal based on the record, we are limited to the factual findings that are adequately supported by Jung’s figures. This is also evidenced by the Examiner’s finding that Jung “shows a vibration damping apparatus similar to applicant's [(Appellant’s)] as can be clearly seen in the drawings.” Ans. 3 (emphasis added). Here the term “shows” implies the 1 The Examiner’s Answer, as well as the Appeal Brief and the Reply Brief, referred to this publication as EP '911. Appeal 2010-006717 Application 11/434,947 4 Examiner’s findings are supported by the figures. Additionally, the Examiner did not appear to cite to Jung’s written disclosure in the Examiner’s Answer. Obviousness based on Jung in view of APA Figure 1 Claim 1 calls for the mounting flange’s cammed peripheries to be disposed in at least two orientations with respect to the claimed upper and lower bushings. The first orientation occurs when the cammed peripheries are “disposed radially outboard of said annulus and said upper and lower bushings such that said cammed peripheries are not substantially engaged by said upper and lower elastomeric bushings” except when a condition is met. The first orientation, for example, is depicted in Figure 2 of the Appellant’s Specification where cammed peripheries 36e, 36f do not substantially engage bushings 38, 40, respectively. Spec. para. [0012]. The second orientation, otherwise stated as a “conditional” limitation, occurs when the “bushings bulge against said cammed peripheries and increasingly engage said cammed peripheries in relation to a force impulse associated with said vibrational movement [of a base].” The second orientation, for example, is depicted in Figure 4 of the Appellant’s Specification where cammed peripheries 36e, 36f engage bushings 38, 40, which bulge in response to a force. See Spec. 5, para. [0014]. The Examiner has found that Jung’s vibration dampening apparatus shows the second orientation but not the first orientation. See Ans. 3; see also figs. 1, 22. More specifically, the Examiner has found that Jung shows 2 The abbreviation “Abb.” on the drawings of Jung is understood as the English equivalent of abbreviation “fig.” for the term figure. Appeal 2010-006717 Application 11/434,947 5 “upper and lower bushings at 4 and 5 that variably engage cammed peripheries 6 and 7 . . . [that are disposed] radially outboard of an annulus located near numeral 11.” Ans. 3; see fig. 1. The Examiner also finds that Jung does not show the “cammed peripheries not being substantially engaged by the upper and lower bushings except in response to an extreme amount of movement.” See Ans. 3. In other words, Jung does not show the first orientation, e.g., bushings 4, 5 having no contact with cammed peripheries 6, 7. To remedy Jung’s deficiency with respect to claim 1, the Examiner finds APA Figure 1 discloses the first orientation, i.e., a mounting flange with peripheries disposed radially outboard of said annulus and said upper and lower bushings such that said peripheries are not substantially engaged by said upper and lower elastomeric bushings, apparently because bushings 18, 20 do not contact the vertical portion of the L-shaped housing 12. See Ans. 3, 5-6. The Examiner concludes, at page 3 of the Examiner’s Answer, that: It would have been obvious to the ordinary skilled worker in the art at the time of the invention to have spaced the upper and lower bushings 4, 5 of EP '911 [(Jung)] from the cammed peripheries at 6, 7 simply dependent upon the type of vibrations to be damped and/or for a particular application of the device. The Examiner appears to have acknowledged that by modifying the positioning of Jung’s upper and lower bushings 4 and 5 with respect to cammed peripheries 6 and 7 to not be substantially engaged, APA Figure 1 also needs to disclose the second orientation as well as the first orientation. Appeal 2010-006717 Application 11/434,947 6 As such, the Examiner found that the apparatus of APA Figure 1 can have “excessive vertical and/or lateral loads on the mount the upper elastomeric bushing [18 such that it] is capable of contact with the [vertical portion of the] L-shaped flange on the left side of the support 12.” Ans. 6. The Examiner bolsters this finding by adding “[t]his could also happen if the elastomeric material [of bushing 18] is selected to be made of a softer material, or on purpose, to restrain lateral motion of the mount against the flange of the support 12.” Ans. 6. The Appellant persuasively contends that this finding, with respect to APA Figure 1 disclosing the second orientation, is based on incorrect speculation. See App. Br. 10-11. Indeed, APA Figure 1’s bushings 18, 20 contact the un-cammed flange 12 and not the vertical portion of the L- shaped housing 12. Additionally, even if Jung’s cammed peripheries 6, 7 reasonably corresponded to the vertical portion of the L-shaped housing 12 of APA Figure 1, there is inadequate support to find that a load would cause APA Figure 1’s bushings 18, 20 to substantially engage the L-shaped module housing 12. See also App. Br. 11, Reply Br. 2. Furthermore, the Examiner’s reason for modifying Jung’s apparatus with the APA Figure 1, i.e., because the modification is “simply dependent upon the type of vibrations to be damped and/or for a particular application of the device” is inadequate. See App. Br. 10-12. Indeed, neither Jung’s Figures nor APA Figure 1 disclose varying the space between the upper and lower bushings from a cammed periphery or an L-shaped module housing based on a type of vibration or a particular application. Hence, the Examiner’s reasoning is not supported by rational underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds Appeal 2010-006717 Application 11/434,947 7 [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). Thus, for the foregoing reasons, the rejection of claim 1 and its dependent claims 3-5 as unpatentable over Jung in view of APA Figure 1 cannot be sustained. As for the rejection of claim 2 as unpatentable over Jung in view of APA Figure 1 and further in view of Beck, the Examiner’s additional findings and reasoning with respect to additional modification of upper and lower shoulders of a mounting flange of Beck (see figs. 1-5) do not remedy the deficiency in the Examiner’s rejection of claim 1 as discussed above. See Ans. 4. Thus, we cannot sustain the rejection of claim 2 as unpatentable over Jung in view of APA Figure 1 and further in view of Beck. Obviousness based on APA Figure 1 in view of Jung The Examiner has found that APA Figure 1 discloses the recitations of claim 1 except the use of cammed peripheries, which is taught by Jung’s Figures 1-2. See Ans. 4. As discussed above, the Examiner’s finding that APA Figure 1 discloses the second orientation as called for in claim 1, i.e., that bushings bulge against said peripheries and increasingly engage said peripheries in relation to a force impulse associated with said vibrational movement of a base, is based on incorrect speculation. Moreover, the Examiner’s modification of APA Figure 1 with Jung’s cammed peripheries 6, 7 does not remedy the incorrect speculative finding discussed above. The Examiner’s reason for modifying the housing 12 of APA Figure 1 with Jung’s cammed peripheries, i.e., because the Appeal 2010-006717 Application 11/434,947 8 modification is “simply dependent upon the type of vibrations to be damped and/or for a particular application of the device” (Ans. 4), is based on inadequate reasoning. See App. Br. 15. As stated above, neither Jung’s Figures nor APA Figure 1 disclose varying the space between the upper and lower bushings from a cammed periphery or an L-shaped module housing based on a type of vibration or a particular application. Hence, the Examiner’s reasoning is not supported by rational underpinning. In re Kahn, 441 F.3d at 988. Thus, for the foregoing reasons, the rejection of claim 1 and its dependent claims 3-5 as unpatentable over Jung in view of APA Figure 1 cannot be sustained. As for the rejection of claim 2 as unpatentable over APA Figure 1 in view of Jung and further in view of Beck, the Examiner’s additional findings and reasoning with respect to additional modification of upper and lower shoulders of a mounting flange of Beck (see figs. 1-5) do not remedy the deficiency in the Examiner’s rejection of claim 1 as discussed above. See Ans. 4, 5. Thus, we cannot sustain the rejection of claim 2 as unpatentable over APA Figure 1 in view of Jung and further in view of Beck. DECISION We REVERSE the rejections of claims 1-5. REVERSED Klh