Ex Parte Walker et al

Patent Trial and Appeal Board

Jul 12, 2016

13243050 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/243,050 09/23/2011 Michael J. Walker
104102 7590 07113/2016
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.
GP-308590-DIV-R&D-MJL 1024
EXAMINER
SY, MARIANO ONG
ART UNIT PAPER NUMBER
3657
MAILDATE DELIVERY MODE
07/13/2016 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 MICHAEL J. WALKER, MICHAEL D. HANNA,
and JAMES G. SCHROTH
Appeal2014-005472
Application 13/243,050
Technology Center 3600
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
MARK A. GEIER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael J. Walker et al. (Appellants) appeal under 35 U.S.C. § 134
from the rejection of claims 1, 2, 4--8, 12-14, 28, 31-33, 35--43, and 46-50.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-005472
Application 13/243,050
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1 A product comprising:
an insert constructed and arranged to be incorporated into
a part to provide at least a portion of a frictional damping means
to dampen the part, the insert comprising:
a body comprising an inner edge and an outer edge;
the body including lines of weakness constructed and
arranged to segment the body into separate sections upon
exposure to molten material, and further comprising a plurality
of tabs extending from at least one of the inner edge or the outer
edge of the body.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Snyder
Osborne
Hanna
us 5,143,184 Sept. 1, 1992
US 2002/0027054 Al iviar. 7, 2002
US 2007/0056815 Al Mar. 15, 2007
REJECTIONS
I. Claims 1, 2, 4, 31, 32, 40, and 41 stand rejected under 35
U.S.C. § 102(b) as anticipated by Osborne.
II. Claims 1, 2, 4, 5, 7, 8, 12-14, 28, 31-33, 37, 41--43, and 46-50 1
stand rejected under 35 U.S.C. § 102(b) as anticipated by
Hanna.
1 Although the statement of this rejection (Ans. 4) does not include claims
46-50, the explanation of the rejection includes these claims (id. at 8).
Accordingly, we understand claims 46-50 to stand rejected as anticipated by
Hanna.
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Application 13/243,050
Ill. Claims 6, 12, and 31 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Snyder.
IV. Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hanna.
V. Claims 38 and 39 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hanna and Snyder.
DISCUSSION
Rejection I
The Examiner finds that Osborne discloses each and every limitation
of independent claims 1 and 31. See Final Act. 2-3. In particular, the
Examiner finds that Osborne discloses "lines of weakness 124." Id. The
Examiner further determines that "the phrase 'to segment the body into
separate sections upon exposure to molten material' is a functional language
and product by process limitations is based on the product itself and do not
distinguish over the apparatuses of the references, see MPEP 2113." Id.
Appellants contend that "the present specification supports an
interpretation where the phrase 'to segment the body into separate sections
upon exposure to molten material' denotes an actual state of configuration
that fundamentally ties the lines of weakness to the body of the insert."
Appeal Br. 9. Appellants further argue that "the disputed claim language
reaches well beyond merely describing an intended use since the claims
actively recite an actual state of configuration." Id.
Claims 1 and 31 require a "body including lines of weakness
constructed and arranged to segment the body into separate sections upon
exposure to molten material." We do not understand this language to be a
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Application 13/243,050
product-by-process limitation, because the product claimed is not the result
of a process whereby the body is exposed to molten material. Rather, it is a
functional limitation. The law governing functional limitations is well
settled:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an
applicant can be put to this burdensome task, the Examiner must provide
sufficient evidence or scientific reasoning to establish the reasonableness of
the Examiner's belief that the functional limitation is an inherent
characteristic of the prior art. In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir.
1993). Here, the Examiner must find that Osborne's lines of weakness
(identified as corresponding to grooves 124) will separate Osborne's body
(identified as insert 112) into separate sections upon exposure to molten
material. The Examiner makes no such finding; and thus, fails to set forth a
prima facie case of obviousness.
For this reason, we do not sustain the Examiner's decision rejecting
claims 1 and 31, and claims 2, 4, 32, 40, and 41, which depend from claim 1,
as anticipated by Osborne.
Rejection II
The Examiner finds that Hanna discloses each and every limitation of
independent claims 1, 12, and 31. See Final Act. 4--7. In particular the
Examiner finds that Hanna discloses a "body including lines of weakness
(lines tangential to edges of hole 45 toward inner and outer edges of the
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Application 13/243,050
annular body 30)." Id. Again, the Examiner determines that "the phrase 'to
segment the body into separate sections upon exposure to molten material' is
a functional language and product by process limitations is based on the
product itself and do not distinguish over the apparatuses of the references,
see MPEP 2113." Id.
Appellants again argue "that the phrase 'to segment the body into
separate sections upon exposure to molten material' is not merely functional
language and denotes an actual state of configuration of the body of the
insert." Appeal Br. 11.
As discussed supra, the limitation in question is a functional
limitation. The Examiner does not make the requisite findings to support the
conclusion that Hanna is capable of performing the recited function.
Accordingly, the Examiner fails to set forth a prima facie case of
obviousness.
For this reason, we do not sustain the Examiner's decision rejecting
independent claims 1, 12, and 31, and claims 2, 4, 5, 7, 8, 13, 14, 28, 32, 33,
37, 41--43, and 46-50, which depend from claim 1 as anticipated by Hanna.
Rejection III
The Examiner finds that Snyder discloses each and every limitation of
independent claims 6, 12, and 31. See Final Act. 8-9. In particular, the
Examiner finds that Snyder discloses a "body including lines of weakness[]
compris[ing] a plurality of slots 30." Id. at 8. As in the previous rejections,
the Examiner determines that "the phrase 'to segment the body into separate
sections upon exposure to molten material' is a functional language and
product by process limitations is based on the product itself and do not
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Application 13/243,050
distinguish over the apparatuses of the references, see MPEP 2113." Id. at
8-9.
Appellants repeat the argument "that the phrase 'to segment the body
into separate section upon exposure to molten material' is reciting an actual
state of configuration of the body of the insert, and is not merely functional
language as stated by the Examiner." Appeal Br. 13.
Again, the Examiner fails to make the findings, discussed supra,
necessary to support a conclusion that the functional limitations are met by
Snyder.
For this reason, we do not sustain the Examiner's decision rejecting
claims 6, 12, and 31 as anticipated by Snyder.
Rejections IV and V
The Examiner rejections of claims 35 and 36 as unpatentable over
Hanna and claims 38 and 39 as unpatentable over the combined teachings of
Hanna and Snyder incorporate the same incomplete rejection of claim 1 as
anticipated by Hanna discussed supra. Accordingly, we do not sustain the
Examiner's decisions rejecting these claims for the same reason we do not
sustain the Examiner's decision rejecting claim 1 as anticipated by Hanna.
DECISION
The Examiner's rejections of claims 1, 2, 4--8, 12-14, 28, 31-33, 35-
43, and 46-50 are REVERSED.
REVERSED
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