11146569 (P.T.A.B. Feb. 11, 2013)

Ex Parte Al-Dahhan et al

Patent Trial and Appeal BoardFeb 11, 2013

11146569 (P.T.A.B. Feb. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SADIQ AL-DAHHAN and WILLIAM G. DIETER ____________ Appeal 2011-002194 Application 11/146,569 Technology Center 3600 ____________ Before JAMES P. CALVE, RICHARD E. RICE, and JILL D. HILL, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HILL. Opinion Dissenting filed by Administrative Patent Judge CALVE. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appeal 2011-002194 Application 11/146,569 2 Sadiq Al-Dahhan and William G. Dieter (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 12-20, 25-33, 36-44, and 47-50. Claims 25 and 36 are the independent claims on appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellants’ claimed invention relates to an assembly for a suspension system of a vehicle having a coil spring isolator. Spec. 1, para. [0002]. Claim 25 is representative of the subject matter on appeal and is reproduced below with the key disputed limitations emphasized. 25. A spring seat assembly comprising: a spring seat retainer having a base and a pocket portion extending axially from said base to a distal rim defining a cavity with said distal rim encircling said cavity and said pocket portion including a stem disposed between said distal rim and said base to define a bottom of said cavity; a securing device extending from said distal rim into said cavity above said stem; a jounce bumper mounted to said pocket portion within said cavity by said securing device and extending from said distal rim for exerting radial forces within said cavity against said rim; and a restrictor abutting at least a portion of said distal rim of said pocket portion for preventing deformation of said rim upon the exertion of radial forces by said jounce bumper to retain said jounce bumper in said cavity. THE EVIDENCE The Examiner relies on the following evidence: Ratu US 5,467,970 Nov. 21, 1995 Appeal 2011-002194 Application 11/146,569 3 Remmert US 2002/0109328 A1 Aug. 15, 2002 Handke US 7,077,248 B2 Jul. 18, 2006 THE REJECTION Appellants seek review of the following rejections: Claims 12-20, 25-27, 31-33, 36, 37, 42-44, 49, and 50 under 35 U.S.C. § 103(a) as unpatentable over Remmert and Ratu. Claims 28-30, 38-41, 47, and 48 under 35 U.S.C. § 103(a) as unpatentable over Remmert, Ratu, and Handke. ANALYSIS Rejection of Claims 12-20, 25-27, 31-33, 36, 37, 42-44, 49, and 50 over Remmert and Ratu. With respect to independent claim 25, the Examiner finds that Remmert teaches a spring seat assembly comprising: a spring seat retainer having a base at 11 defined as a flange extending radially from a pocket portion 21, the pocket portion 21 extending axially from the base to a distal rim at 22 to define a cavity. Ans. 4. The Examiner finds that Remmert also discloses a jounce bumper 9 mounted to the pocket portion 21 within the cavity and extending from the distal rim of the cavity, and exerting radial forces within the cavity against the distal rim. Id. The Examiner admits that Remmert does not teach a restrictor and a securing device as claimed. Id. The Examiner finds, however, that Ratu’s figure 5 teaches a spring seat assembly having a restrictor 46 with a securing device 60 as claimed, the restrictor 46 abutting “at least a portion of a distal rim 54 of a pocket portion 30 for preventing deformation of said rim upon the exertion of radial forces by” the jounce bumper 13. Id. The Examiner also finds that the securing Appeal 2011-002194 Application 11/146,569 4 device 60 retains the jounce bumper 13 in the cavity. Id. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Remmert’s assembly to comprise a restrictor with a securing device as taught by Ratu in order to strengthen the seat assembly and to retain the jounce bumper as taught by Ratu. Id. Appellants argue that claim 25 requires that the securing device extend from the distal rim of the cavity, and that Ratu’s securing device 60 extends from the restrictor. App. Br. 5. The Examiner points out that claim 25 recites “a securing device extending from said distal rim” and “a jounce bumper . . . extending from said distal rim,” and that therefore “extending from” should not be construed to require a one-piece construction. Ans. 8-9. On page 5 of the Reply Brief, Appellants state that their intent was not to argue that “a securing device extending from said distal rim” required an integral configuration of the securing device and the distal rim; however, Appellants do not provide a construction of the term “extending” or “extending from” and do not explain why, if “extending from” does not imply a one-piece construction of the securing device and the distal rim, Ratu’s extension from a portion of the restrictor abutting the distal rim does not satisfy the limitation “extending from said distal rim” as claimed. As to both independent claims 25 and 36, Appellants argue that the combination of Remmert and Ratu does not meet all of the limitations of claims 25 and 36, because claims 25 and 36 require a stem that defines a bottom of the cavity, and the restrictor 46 of Ratu includes a bottom that, when placed into the pocket portion of Remmert, defines the bottom of the cavity when placed therein. App. Br. 6. The Examiner counters that the Appeal 2011-002194 Application 11/146,569 5 stem 15 of Remmert would define the bottom of the cavity and the restrictor 46 of Ratu merely abuts the bottom of the cavity. Ans. 9. Appellants state that the Examiner “ignores” the fact that Ratu’s insert 46 is changing where the bottom of the cavity is located. Reply Br. 3. We do not agree that the Examiner is ignoring any fact; rather, the Examiner is disagreeing with Appellants about whether the insert 46 redefines the bottom of the cavity or merely abuts it. Appellants have not persuaded us that “bottom” or “cavity” as used in claims 25 and 36 should be construed narrowly such that the presence of an insert within a cavity redefines the bottom of the cavity. Thus, we agree with the Examiner that, when Ratu’s insert is placed in Remmert’s cavity, Remmert’s stem remains “disposed . . . to define a bottom of said cavity” as required by the claims. On page 4 of the Reply Brief, Appellants argue that the depth of the cavity of Remmert is much greater than the depth of the cavity of Ratu’s insert, which creates a completely different bottom, and that this completely different bottom causes the depth of the jounce bumper in the cavity to be much less. As stated above, we do not agree that the insert creates a different cavity bottom, particularly because the cavity bottom is not defined in the claims by contact with or support of the jounce bumper. Further, the Examiner states, at page 9 of the Answer, that “restrictor 46 of Ratu abuts said bottom of the cavity.” Thus, the Examiner’s intent in combining Ratu’s restrictor with Remmert appears to be for the insert 46 to extend to the bottom of Remmert’s cavity, rather than at the cavity depth shown in Ratu. Appellants do not advance any separate argument suggesting that claims 12-20, 26, 27, and 31-33 might be patentable over Remmert and Ratu if claim 25 is obvious over Remmert and Ratu. In addition, Appellants do Appeal 2011-002194 Application 11/146,569 6 not advance any separate argument suggesting that claims 37, 42-44, 49, and 50 might be patentable over Remmert and Ratu if claim 36 is obvious over Remmert and Ratu. For the reasons set forth above, we sustain the rejection of claims 12- 20, 25-27, 31-33, 36, 37, 42-44, 49, and 50 under 35 U.S.C. § 103(a) as unpatentable over Remmert and Ratu. Rejection of Claims 28-30, 38-41, 47, and 48 over Remmert, Ratu and Handke. The Examiner finds that, with respect to claims 28, 38, and 39, and in addition to the teachings above, Handke’s Figure 2 discloses a restrictor 41 being located outside of a pocket portion 23 as another well-known arrangement of a spring seat assembly. Ans. 7. On page 7 of the Reply Brief, Appellants argue that the Declaration under 37 C.F.R. § 1.131, filed on September 17, 2007 by inventor Sadiq Al- Dahhan, antedates Handke. More particularly, Appellants argue that the Declaration included an exhibit with photos (e.g., photos 4, 5, 6, and 8) illustrating a restrictor encircling a distal rim of a jounce bumper cavity. The Examiner counters that “none of the photographs show the ring/restrictor encircling the [distal] rim,” further stating that “[w]hen the ring is placed on top or inside the rim, said ring is not encircling the rim.” Ans. 10. Having reviewed the original photos submitted with the Declaration on June 20, 2007, we find that at least photo 5 of exhibit C shows a restrictor encircling a distal rim of the jounce bumper cavity. Because the Examiner’s rejection over Remmert, Ratu, and Handke is based on an erroneous analysis of the content of photo 5 and therefore an erroneous decision regarding the associated Declaration that was submitted Appeal 2011-002194 Application 11/146,569 7 to antedate Handke, we cannot sustain the Examiner’s rejection of claims 28-30, 38-41, 47, and 48 under 35 U.S.C. § 103(a) as unpatentable over Remmert, Ratu, and Handke. DECISION We affirm the rejection of claims 12-20, 25-27, 31-33, 36, 37, 42-44, 49, and 50 under 35 U.S.C. § 103(a) as unpatentable over Remmert and Ratu. We reverse the rejection of claims 28-30, 38-41, 47, and 48 under 35 U.S.C. § 103(a) as unpatentable over Remmert, Ratu, and Handke. AFFIRMED-IN-PART mls App App CAL rejec and axial encir betw with porti the r 15 o botto illus view eal 2011-0 lication 11 VE, Admi I respect tions of cl 36 recite a ly from th cling the c een the di Appellant on 21 in R estrictor 4 f Remmert m of the c trated in F Figure 1 s of spring 02194 /146,569 nistrative fully disse aims 12-2 spring sea e base to a avity and stal rim an s that stem emmert an 6 of Ratu a (Ans. 9) w avity rath igure 1 of of Remm seat assem Patent Jud nt from th 0, 25-33, 3 t retainer w distal rim the pocket d the base 15 define d placing buts the b ould resu er than the Remmert a ert and Fig blies. 8 ge, dissen e majority 6-44, and ith a base to define portion in to define s the botto Ratu’s ret ottom of th lt in the re stem 15 o nd Figure ure 5 of R ting. ’s decision 47-50. In and pock a cavity w cluding a a bottom o m of the c ainer 46 in e cavity f strictor 46 f Remmer 5 of Ratu atu are sid to affirm dependent et portion ith the dis stem that f the cavit avity of th that cavit ormed by of Ratu d t. These f reproduce e, cross-se the claims 25 extending tal rim is disposed y. I agree e pocket y so that the stem efining the eatures are d below: ctional Appeal 2011-002194 Application 11/146,569 9 I agree with Appellants that placing Ratu’s restrictor 46, which has its own bottom (see fig. 5), in the pocket portion 21 of Remmert would redefine the bottom of the cavity formed by the pocket portion 21. The cavity would have a different volume and depth, and the stem 15 would no longer define the bottom or lowest part of the cavity. Instead, the bottom of restrictor 46 would define the bottom of the cavity. By the Examiner’s logic, centering pin 20 of the base 11 of Remmert defines the bottom of the cavity of pocket portion 21 that extends from the base 11 and stem 15 merely abuts centering pin 20 of base 11 in the same way that Ratu’s restrictor 46 abuts the stem 15 of Remmert according to the Examiner’s proposed combination.