Ex Parte Ulicny et al

Patent Trial and Appeal Board

Apr 28, 2016

12105438 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/105,438 04/18/2008 John C. Ulicny
104102 7590 04/28/2016
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
POOl 065-R&D-JMC 5736
EXAMINER
SY, MARIANO ONG
ART UNIT PAPER NUMBER
3657
MAILDATE DELIVERY MODE
04/28/2016 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 JOHN C. ULICNY, MICHAEL D. HANNA, and
MARK A. GOLDEN
Appeal2014-000728
Application 12/105,438
Technology Center 3600
Before: CHARLES N. GREENHUT, JILL D. HILL, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
3, 5-7, 9-11, 13-16, 18-20, 24, 25, and 27. 1 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 The Examiner entered an amendment cancelling claims 4, 8, 12, 17, and
21.
Appeal2014-000728
Application 12/105,438
The claims are directed to product comprising a filler material to
dampen vibrating components and method of manufacture. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A product comprising:
a component having a closed and sealed chamber defined
therein and a filler material carried and confined in the closed
and sealed chamber, the filler material converting from a solid
state and into a molten state with application of heat during
operation of the component, the chamber and the filler material
being constructed and arranged to provide an interface between
an inner surface located within the component and the filler
material so that relative movement between the component and
the filler material helps dampen vibrations in the component and
noise produced when the component is vibrated and wherein the
filler material comprises gallium.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wagenfuhrer
Schenk
Bissonnette
Naerheim
Pelfrey
us 3,575,270
us 5,139,118
us 6, 142,262
US 6,528,132 Bl
US 7,431,504 Bl
REJECTIONS
Apr. 20, 1971
Aug. 18, 1992
Nov. 7, 2000
Mar. 4, 2003
Oct. 7, 2008
Claims 1-3, 5-7, 9-11, 13-16, 18-20, 24, 25, and 27 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Wagenfuhrer and
Pelfrey.
Claims 1, 9, 18, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Naerheim, Bissonnette, and Pelfrey.
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Application 12/105,438
OPINION
Each rejection is argued as a group based on limitations concerning
the filler material, similar versions of which are found in each of the
independent claims before us. There is no dispute that either of
W agenfuhrer or N aerheim discloses the basic brake or product structure with
a filler material other than gallium. The main point of contention is whether
the Examiner has established that it would have been obvious to either
substitute or include gallium as a filler material to thereby yield the claimed
subject matter.
We begin our discussion with the statement of facts provided on pages
20-26 of Appellants' Brief. The Examiner has correctly identified the fact
statements of critical significance: SF6, SF18, SF19, SF20, SF25, SF26, and
SF37. The Examiner has correctly analyzed these statements and we adopt
the Examiner's analysis concerning them as our own. We note that there are
instances in which the Examiner states that the "Examiner disagrees" with
the stated fact, but what the Examiner actually expresses is disagreement
with the implied conclusion Appellants are attempting to suggest from the
statement of fact. Considering SF6, for example, it is perfectly true that
"Wagenfuhrer discloses that specifically lead alloy may be used as a
dampening material." Appeal Br. 21. However, it is also true that
"Wagenfuhrer discloses 'Use of other filling material depends upon the
economy in the production of the disc or drum and may also be chosen in
consideration of the natural frequency of the disc or the drum.'" Ans. 8
(quoting Wagenfuhrer col. 2, 11. 60-66). Essentially, instead of pointing to
errors in facts SF6, SF18, SF19, and SF25, the Examiner articulates to facts,
all of which are correct, that support different conclusions. Ans 8-10. We
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Application 12/105,438
will discuss the remaining fact statements of critical significance in the
context of addressing Appellants' arguments.
Wagenfuhrer and Pelfrey
Appellants attempt to draw a distinction between the "squeeze
damping" used in Pelfrey and what Appellants characterize as "friction
damping" in Wagenfuhrer. Appeal Br. 9-10. Appellants argue the main
concern of Wagenfuhrer is noise damping. Appeal Br. 10. First, as the
Examiner points out, Pelfrey expressly states "'the present invention is not
intended to be limited to squeeze film dampers."' Ans. 3 (quoting Pelfrey
col. 3, 11. 3-6) (emphasis by the Examiner). Second, as noise is simply
unwanted audible sound produced by vibration, it is not clear why
Appellants believe gallium-a material demonstrated as suitable for
damping vibration, the underlying source of noise-would not reasonably be
expected to function similarly. It is also unclear why Appellants believe
there to be a distinction between the ultimate byproduct of the damping in
Pelfrey and Wagenfuhrer, moreover why any such distinction is particularly
relevant. See Appeal Br. 23, SF20. It is true that Wagenfuhrer expressly
describes the general nature of damping as involving the dissipation of
kinetic energy as heat. See col. 1, 11. 45--46. It is also true that Pelfrey is
silent on the precise mechanics and theory of the mode of damping
employed itself. However, Appellants do not apprise us of any alternative
means of energy dissipation employed by Pelfrey, or more importantly, why
any such alternative mechanism for dissipating the energy of vibration
would negatively impact the expectation of one skilled in the art that gallium
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Application 12/105,438
would be suitable for the primary purpose of vibration mitigation itself as
taught by Pelfrey. See Appeal Br. 10-11; see also Appeal Br. 17-18.2
We affirm the rejection predicated on Wagenfuhrer and Pelfrey.
Naerheim, Bissonnette, and Pelfrey
Much of Appellants' argument is devoted to alleging that inconsistent
terminology in Pelfrey and Bissonnette associated with gallium's state of
matter would confuse one skilled in the art, so much so that a skilled artisan
would have dismissed Pelfrey as essentially indecipherable. Appeal Br. 14--
16; Appeal Br. 22, SF15. A careful reading of Pelfrey reveals no internal
inconsistency. Pelfrey simply regards gallium as, technically speaking, a
"liquid" at room temperature but one that does not exhibit "liquid-like"
properties such as flowability, because of its "paste-like consistency."
Pelfrey Abst.; col. 2, 11. 30-43; col. 3, 11. 3-9. There is nothing inconsistent
with describing a particular property of a liquid as not being "liquid-like."
Similarly, with a careful reading of Bissonnette it is clear that
Bissonnette simply departs from the particular terminology of Pelfrey to
describe material 48. Bissonnette refers to "a material then [sic that]
preferably does not become liquid and freely flowable. Rather, the material
will preferably have a paste-like consistency such that it will be a good
vibration dampener." Bissonnette, col. 3, 11. 35-37. The distinction between
Pelfrey and Bissonnette concerning the state-of-matter descriptions is that
Pelfrey considers a paste to be a liquid having non-liquid-like properties
whereas Bissonnette does not appear to consider a paste as a liquid.
Ultimately, the references simply use different terminology to describe the
2 We understand Appellants' remarks on pages 17-18 to address the portion
of the Advisory Action discussing the first rejection.
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Appeal2014-000728
Application 12/105,438
same thing: paste. "[I]t is unlikely that independent specification writers
will use identical language in describing even identical embodiments of an
invention." Application of Wolfensperger, 302 F.2d 950, 956 (CCPA 1962).
We cannot agree with Appellants that this use of inconsistent terminology
would confuse one skilled in the art.
Appellants argue that the materials ofNaerheim and Bissonnette are
incompatible. Appeal Br. 13-14. The Examiner correctly points out that
Bissonnette expressly teaches using, and not away from, a material that
changes from solid to liquid. Ans. 10-11 (citing Bissonnette col. 2, 11. 2---6);
Appeal Br. 24, SF26. Moreover, Bissonnette is cited by the Examiner as
demonstrating that a particular filler can perform both heat dissipating and
damping functions, whereas Naerheim only discusses heat dissipating. Ans.
5. We recognize that the addition of gallium would be likely to result in at
least an upward shift of the horizontal portion of the X curve in N aerheim' s
figure 3 due to the latent heat associated with a phase change occurring at a
higher temperature. See, e.g., Pelfrey col. 2, 11. 40-41 (estimating the boiling
point of gallium at about 3,000°F). However, Appellants themselves
acknowledge that N aerheim does not regard the disclosed invention as
confined to operate at the particular temperature range illustrated in the
preferred embodiment. Appeal Br. 13 (citing Naerheim col. 3, 11. 10-13).
The Examiner reasonably concluded that it would have been obvious to one
having ordinary skill in the art to include gallium in Naerheim's3 device in
order to dampen vibration. Final Act. 6. It is not necessary that the
motivation articulated by the Examiner in support of an obviousness
3 We correct the typographical error substituting Wagenfuhrer for Naerheim
as acknowledged by both Appellants and the Examiner. Appeal Br. 12; Ans.
4.
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Application 12/105,438
rejection be a benefit identified by the reference describing the prior art
device that the Examiner proposes to modify. The vibration damping
benefit of gallium is taught by Pelfrey and the ability of substances similar in
nature to both dampen and disperse heat, thereby meeting the goals of both
Naerheim and Pelfrey, is taught by Bissonnette. See Appeal Br. 12. We
therefore do not agree that the addition of gallium to N aerheim would
destroy Naerheim's device for its intended purpose. See Appeal Br. 14.
We also affirm the rejection predicated on Naerheim, Bissonnette, and
Pelfrey.
DECISION
The Examiner's rejections 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). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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