Ex Parte Sugawara et al

Patent Trial and Appeal BoardAug 28, 2017

13266564 (P.T.A.B. Aug. 28, 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. 13/266,564 12/16/2011 Hideki Sugawara Q127457 7049 23373 7590 08/30/2017 SUGHRUE MION, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON, DC 20037 EXAMINER LANE, NICHOLAS J ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 08/30/2017 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIDEKI SUGAWARA, KATSUMI SOMEYA, NAOKI MAEDA, and YUZO HATTORI Appeal 2017-000071 Application 13/266,5641 Technology Center 3600 Before ERIC S. FRAHM, JUSTIN BUSCH, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-7, which are all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is BRIDGESTONE CORPORATION. App. Br. 2. 2 Claim 8 is canceled. App. Br. 6. Appeal 2017-000071 Application 13/266,564 STATEMENT OF THE CASE Introduction Appellants’ application relates to “a vibration absorption device that is to be used as an engine mount for general industrial machinery or an automobile or the like and that absorbs and damps vibrations transmitted from a vibration generating portion such as an engine or the like to a vibration receiving portion such as a vehicle body or the like.” Spec. 11. Claim 1 is illustrative of the appealed subject matter and reads as follows: 1. A vibration absorption device comprising: a first mounting member that is coupled to one of a vibration generating portion or a vibration receiving portion; a second mounting member that is tubular and is coupled to the other of the vibration generating portion or the vibration receiving portion; an elastic body that is disposed between the first mounting member and the second mounting member and is coupled to both the mounting members; a primary chamber constituted at an inner side of the second mounting member, the elastic body serving as a portion of a dividing wall of the primary chamber, and liquid being sealed in the primary chamber; a secondary chamber in which liquid is sealed, at least a portion of a dividing wall of the secondary chamber being formed by a diaphragm, and the secondary chamber being capable of expanding and contracting; a dividing member that divides the primary chamber from the secondary chamber, the dividing member including a tubular tube portion, a flange portion that is structured to extend to a radial direction outer side from a primary chamber side end of the tube portion, an outer periphery of the flange portion being disposed along an inner periphery of the 2 Appeal 2017-000071 Application 13/266,564 second mounting member, and a movable elastic film that is disposed at the radial direction inner side of the tube portion; a restriction channel member that is an annular body separate from the dividing member, that is disposed between the tube portion of the dividing member and the second mounting member, that includes a channel outer tube portion disposed along an inner periphery of the second mounting member and a floor portion formed continuously with the channel outer tube portion, disposed opposing the flange portion, disposed between the tubular tube portion of the dividing member and the second mounting member, and disposed within the tube portion in a tube axial direction so as to overlap the tube portion in the radial direction, and that structures a restriction channel between the dividing member and the restriction channel member, the restriction channel causing fluid communication between the primary chamber and the secondary chamber, and an outer periphery end of the diaphragm being adhered to at least an inner periphery of the floor portion; and an elastic portion disposed between the second mounting member and the channel outer tube portion, wherein a portion of the second mounting member adjacent the channel outer tube portion is formed by crimping inwardly in the radial direction compressing the elastic portion; wherein the second mounting member reaches a position that intersects a radial line extending through the floor portion, wherein the radial line extends perpendicular to a central longitudinal axis of the tubular tube portion. 3 Appeal 2017-000071 Application 13/266,564 The Examiner’s Rejections3 Claims 1-7 stand provisionally rejected on the ground of non- statutory double patenting as being unpatentable over claims 1-7 of co pending Application No. 13/266,344 in view of Happou et al. (US 2007/0075470 Al; Apr. 5, 2007). Non-Final Act. 13-18. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tanahasi (JP 08-128491; May 21, 1996) and Happou. Non-Final Act. 4-9. Claims 4-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tanahashi, Happou, and Okanaka et al. (US 6,390,458 B2; May 21, 2002). Non-Final Act. 9-12. ANALYSIS Provisional Double Patenting Claims 1-7 stand provisionally rejected on the ground of non- statutory double patenting as being unpatentable over claims 1-7 of co pending Application No. 13/266,344 in view of Happou. Non-Final Act. 13-18. Appellants do not traverse the double patenting rejection. Arguments not made are considered waived. See 37 CFR § 41.37(c)(l)(iv). Accordingly, we summarily sustain the double patenting rejection. 3 In the non-final rejection, the Examiner rejected claim 8 under 35 U.S.C. 1112, first paragraph, as failing to comply with the written description requirement. Non-Final Act. 2-3. However, the Examiner withdrew this rejection in the August 7, 2015 Advisory Action. Adv. Act. 2. 4 Appeal 2017-000071 Application 13/266,564 Obviousness The Examiner finds the combination of Tanahashi and Happou teaches or suggests claim 1. Non-Final Act. 4-9. Specifically, the Examiner finds an ordinarily skilled artisan would have: replace [d] the crimping and attachment configuration of Tanahashi with the crimping and attachment configuration of Happou, wherein the second mounting member is inwardly crimped around the dividing member and the restriction channel member, to securely attach the dividing member and restriction channel member to the second mounting member, while also prevent leaks from the primary chamber to the exterior and/or the secondary chamber. Non-Final Act. 8 (citing Happou 1 53). Appellants argue the Examiner erred because an ordinarily skilled artisan would not have incorporated the crimping and attachment configuration of Happou into Tanahashi without including the configuration of Happou’s restriction channel member 72 and dividing member 74. App. Br. 8. According to Appellants, replacing Tanahashi’s restriction channel member 9 and dividing member 8 with Happou’s restriction channel member 72 and dividing member 74 would result in a configuration where the elastic film limitations recited in claim 1 would not be met. Id. Appellants argue (1) the Examiner has failed to explain how such a substitution would be made and (2) the difference in structure and configuration between Tanahashi and Happou is significant and likely the result of the difference in crimping (axial versus radial) in the two references. Id. at 9—11. In response, the Examiner finds Happou teaches the seal is formed between the seal rubber layer 34 and the outer diameter of partition member 56. Ans. 4 (citing Happou 1 53). The Examiner finds that “[bjecause 5 Appeal 2017-000071 Application 13/266,564 Tanahashi already comprises a partition member (which includes members (8), (9)) and because the partition member of Tanahashi already has an outer diameter, there is no need to replace the partition of Tanahashi with the partition of Happou to form a seal.” Ans. 4. The Examiner finds an ordinarily skilled artisan would instead form a seal using the outer diameter of the existing partition member of Tanahashi. Id. Appellants have persuaded us the Examiner erred. Happou teaches forming a seal between the seal rubber layer 34 and the outer diameter of partition member 56. Happou 1 53. In so teaching, Happou describes the specific configuration of partition member 56, including positioning and crimping details. Id. The Examiner has failed to explain how the seal formed between seal rubber layer 34 and the outer diameter of partition member 56 could be incorporated into Tanahashi’s structure, which has a different configuration for the partition member, including both positioning and crimping. Accordingly, on this record, we do not sustain the Examiner’s obviousness rejection of claim 1. We also do not sustain the obviousness rejections of claims 2-7, which depend therefrom. DECISION Because we have affirmed at least one ground of rejection with respect to each of the claims on appeal, we affirm the decision of the Examiner to reject claims 1-7. See 37 C.F.R. § 41.50(a)(1). 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 6