Ex Parte Beck

Board of Patent Appeals and Interferences

Oct 12, 2010

11266449 (B.P.A.I. Oct. 12, 2010)

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.
11/266,449 11/03/2005 Hubert Beck 4452-696 8440
27799 7590 10/13/2010
COHEN, PONTANI, LIEBERMAN & PAVANE LLP
551 FIFTH AVENUE
SUITE 1210
NEW YORK, NY 10176
EXAMINER
NGUYEN, XUAN LAN T
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
10/13/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HUBERT BECK
____________________

Appeal 2009-007784
Application 11/266,449
Technology Center 3600
____________________

Before KARL D. EASTHOM, KEVIN F. TURNER, and
DANIEL S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007784
Application 11/266,449

2
The Appellant appeals under 35 U.S.C. § 134(a) from a Final
Rejection of claims 10-17. We have jurisdiction under 35 U.S.C. § 134(a)
(2002).
The claimed invention is directed to a suspension system for a motor
vehicle. Independent claim 10 reads as follows (Supp. Br. A-1, Claims
App'x.):
10. A suspension system for a motor vehicle, the system
comprising:
a working cylinder;
a piston rod carrying a damping piston in the working
cylinder;
an outer tube surrounding the working cylinder and
forming a compensating space between the outer tube and the
working cylinder;
a piston rod guide fitted over the working cylinder and
receiving the piston rod therethrough, the piston rod guide
extending over the compensating space and having a bore over
the compensating space;
a closed envelope of changeable shape in the
compensating space;
a connecting element coupled to said envelope and
received in said bore; and
a quarter-turn-fastener which positively retains said
connecting element in said bore by introducing said connecting
element into said bore and rotating said connecting element to a
final position, wherein said connecting element cannot be
rotated when said connecting element is positively retained in
said bore and said envelope is received in said compensating
space.

THE EVIDENCE
The evidence relied upon by the Examiner in rejecting the claims:
Marosy US 3,695,648 Oct. 3, 1972
Kapgan US 4,934,743 Jun. 19, 1990
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Beck (Beck '015) US 7,097,015 Aug. 29, 2006
Beck (Beck '188) US 2002/0105118 Aug. 8, 2002

THE REJECTIONS
The Examiner rejected claims 10-17 under 35 U.S.C. § 103(a) over
US 2002/0105118 (Beck '118) in view of Marosy.
The Examiner rejected claim 10 on the ground of non-statutory
obviousness-type double patenting over US 7,097,015 (Beck '015) in view
of Kapgan.

We AFFIRM.

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Examiner erred in concluding that Beck '118 and
Marosy render obvious the suspension system having the recited connecting
element.
2. Whether the Examiner erred in concluding that claims of Beck
'015 in combination with Kapgan render obvious the suspension system
having the recited connecting element.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
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1. Beck '118 discloses a suspension strut including a work
cylinder 21; a piston rod 2 carrying a piston 10 in the work cylinder
21; an outer tube 19 surrounding the work cylinder 21; a work space 4
between the outer tube 19 and the work cylinder 21; a piston rod
guide 9 over the work cylinder 21 which receives the piston rod 2
therethrough, the piston rod guide 9 extending over the work space 4
and having a flow connection 18 over the work space 4; and an
enveloping body 8 in the work space 4 (¶¶ 0027-0028; FIG. 1).
2. Beck '118 describes that "[a]ccording to another essential
feature, the enveloping body has a connection element which is
received in an opening of the flow connection. . . . There is a
frictional engagement and/or positive engagement between the
connection element of the enveloping body and the piston rod guide."
(¶ 0012).
3. Marosy discloses a coupling including a male member 40 and a
fitting 10. The fitting 10 includes a nut portion 14. An inner sleeve
member 28 is received within a bore 20 of the fitting 10. The male
member 40 is connected to a fluid conduit 42 and is insertable into the
fitting 10 to connect the fluid conduit 42 to an element 18 of a fluid
system. (Col. 1, l. 60 to col. 2, l. 1; col. 2, ll. 23-24, 57-61; FIGS. 3
and 4).
4. In Marosy, the male member 40 includes a pair of ears 44,
which are received axially by slots 26 in the fitting 10. An
approximately quarter turn rotation of the male member 40 produces a
locking connection to the fitting 10 (col. 3, ll. 23-32).
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5. In Marosy, disconnection can be accomplished by a quarter turn
in the opposite direction followed by axial separation of the members.
(Col. 1, ll. 25-34).
6. Independent claim 1 of Beck '015 recites a suspension system
for motor vehicles comprising a piston-cylinder assembly of a
suspension system for a motor vehicle, the piston-cylinder assembly
comprising, inter alia, "an enclosed envelope body provided in an
equalization space"; "a connecting element held in a bore defined in
said piston rod guide"; and "a resilient securing ring". (Col. 4, claim
1).
7. Claim 1 of Beck '015 further recites:
said connecting element is connected to said enclosed envelope
and non-detachably inserted into said bore in said piston rod
guide for connecting said enclosed envelope to a flow
connection, said connecting element having a shoulder which is
engaged by said securing ring to prevent withdrawal of said
connecting element from said bore.
(Col. 4, claim 1).
8. Kapgan describes that a ring and a device may engage one
another in a snap-fit or a push fit, or, more preferably by means of
cooperating screw-threads. Kapgan further describes that the threads
on the device and ring can be such that they can be released from each
other by relative rotation of less than about one turn, for example,
about one quarter turn (col. 3, l. 60 to col. 4, line 12).

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PRINCIPLES OF LAW
Obviousness
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The Court also noted that "[t]o facilitate review, this analysis should
be made explicit." KSR, 550 U.S. at 418, (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)). However, "the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id.
The Court also stated that "when a patent claims a structure already
known in the art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result." KSR, 550 U.S. at 416.
As stated in In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), "[a]
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant."

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Obviousness-Type Double Patenting
The issue to consider when determining whether a non-statutory basis
exists for a double patenting rejection is whether any claim in the application
defines an invention that is merely an obvious variation of an invention
claimed in another patent. The analysis employed in an obviousness-type
double patenting determination parallels the guidelines for an obviousness
determination under 35 U.S.C. § 103(a). In re Braat, 937 F.2d 589, 593-94
(Fed. Cir. 1991). See also In re Longi, 759 F.2d 887, 892 n. 4 (Fed. Cir.
1985).

ANALYSIS
ISSUE 1
Rejection of claims 10-17 under 35 U.S.C. § 103(a) as obvious over Beck
'118 in view of Marosy
The Examiner rejects these claims as obvious over Beck '118 in view
of Marosy. With respect to this rejection, the Appellant only argues the
patentability of claims 10, 11 and 15 (Supp. Br. 5-7; Reply Brief 1-2).
Claims 12-14, which depend from claim 11; claim 16, which depends from
claim 15; and claim 17, which depends from claim 10, are not argued
separately by the Appellant. Thus, claims 12-14, 16, and 17 stand or fall
with claims 11, 15, and 10, respectively. See 37 C.F.R. § 41.37(c)(1)(vii).
Regarding independent claim 10, the Examiner's rejection is based on
the finding that Beck '118 discloses the recited suspension system except for
the structures for connecting the envelope (i.e., enveloping body 8) to the
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piston rod guide 9 (Ans. 4). To cure this deficiency, the Examiner relies on
Marosy, stating that:
Marosy teaches a well known connection between a mounting
structure 18 and a plastic element 42 comprising: a connecting
element 40 [i.e., male member 40] coupled to … the plastic
element 42 [i.e., fluid conduit 42] and insertable into a bore of
the mounting structure 18 [i.e., element 18], and a quarter turn
fastener 44 [i.e., ears 44] positively retains the connecting
element 40 in the bore by introducing said connecting element
into said bore and rotating said connecting element to a final
position.
(Ans. 4; see also FF 3-4).
The Examiner further states that when used in Beck's suspension
system, the connecting element of Marosy "would not be able to be rotated
when said connecting element is positively retained in said bore and said
envelope is received in said compensating space since [the] outer tube would
be installed outside of said envelope and said connecting element,
preventing access to the connecting element." (Ans. 4).
Therefore, 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
employed Marosy's connection to connect the envelope to the rod guide in
Beck's suspension system since Marosy's connection is readily available for
use and is well known for its excellent leak free connection . . . ." (Ans. 4-
5). In this regard, the Examiner states that "Beck and Marosy are combined
to yield a predictable result of fluid tight connection with an easy and quick
connection and disconnection as stated by Marosy . . . ." (Ans. 8).
We agree with the Examiner's conclusion that claims 10, 11 and 15
are unpatentable over the combination of Beck '118 and Marosy, and find
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the Appellant's numerous arguments set forth unpersuasive for the reasons
discussed in detail infra.
Firstly, the Appellant contends that "[i]n the present case, there is
nothing in the cited references to suggest combining their teachings." (Supp.
Br. 6). However, this argument is foreclosed by KSR, in which the Supreme
Court rejected the rigid requirement of a teaching, suggestion or motivation
to combine known elements in order to establish obviousness. KSR, 550
U.S. at 418-19. We agree that "[t]he mere fact that the Marosy connector is
known" is insufficient to combine the references in the manner suggested
(Supp. Br. 6). What is required is an articulated reason with a rational basis
to support the conclusion of obviousness. See KSR, 550 U.S. at 417-418. In
the present case, the Examiner has stated a rational reason for combining
Beck '118 and Marosy together; i.e., to provide a leak free connection (Ans.
4-5, 8).
The Appellant acknowledges that Beck '118 discloses the enveloping
body connected to the flow connection 18 in a piston rod guide 9, but
contends that "there is no disclosure of how the envelope is fixed in the
guide." (Supp. Br. 5). However, Beck '118 clearly discloses that the
enveloping body has a "connection element" in the opening of the flow
connection, and that there is a frictional engagement and/or positive
engagement provided between the connection element and the piston rod
guide (FF 2). Accordingly, we find that Beck '118 does, in fact, disclose
how the enveloping body is fixed in the piston rod guide, i.e., with the
connection element. We agree with the Appellant that Beck '118 does not
provide any specific details of the "connection element." However, in our
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view, this omission in Beck '118 actually supports the Examiner's contention
that one of ordinary skill in the art would look to known couplings, such as
that disclosed in Marosy, for implementation in the strut of Beck '118.
While the Appellant notes that in Beck '118, "there is no suggestion
that the connection between the guide 9 and the envelope is reversible"
(Supp. Br. 5), Beck '118 also does not state that the connection provided by
the "connection element" is irreversible. Absence of evidence is not
evidence of absence. It is not apparent why one of ordinary skill in the art
would exclude, and not consider, reversible connections, such as that of
Marosy, for implementation of the "connection element" in Beck '118.
The Appellant contends that the Examiner is engaging in hindsight
based on the fact that Marosy merely discloses using the coupling with a
tubular member (Supp. Br. 6). However, as noted, precise teachings
directed to the specific subject matter of the challenged claim are not
required. KSR, 550 U.S. at 418. Rather, as discussed supra, Beck ‘118 is
silent as to how to form the connection, creating a need. "[A]ny need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed[,]" and "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." Id. at 415-16, 420.
The Appellant acknowledges that Marosy discloses a coupling having
a quarter turn connection, but contends that "the combination of Beck and
Marosy fails to disclose how to implement the connection of Marosy for
connecting an enveloping body 8 which is arranged between an inner tube
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and an outer tube (i.e., the work cylinder 21 and outer tube of Beck)" (Reply
Br. 2). However, "it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). We fail to see why one of
ordinary skill in the art would not be able to implement the coupling of
Marosy in the strut of Beck '118 in view of the disclosure of a "connection
element" therein, to thereby yield a predictable result of providing a fluid
tight connection as articulated by the Examiner. In this regard, the
Appellant has not set forth any persuasive evidence establishing that one of
ordinary skill in the art would be unable to combine the elements of Beck
'118 and Marosy as set forth by the Examiner to result in the subject matter
of claim 10.
In view of the above, we find no reversible error in the Examiner's
rejection of claim 10 as being obvious over the combination of Beck '118
and Marosy. Claim 17, which depends from claim 10, falls with claim 10.
Regarding claims 11 and 15, the Appellant disagrees with the
Examiner's characterization of Marosy, stating that "the recesses 62 [i.e.,
surfaces 62] do not extend axially in the sleeve member 28 [of Marosy], and
the connecting element is not rotatable through a quarter turn after the lobe
is received through the recess." (Supp. Br. 7). The Examiner corrected the
rejection to show "axially extending recess 26." (Ans. 8). The Appellant
did not address the corrected rejection or assert error with respect to the
Examiner's position (see Reply Brief). Accordingly, we sustain the
obviousness rejection of claims 11 and 15, as well as claims 12-14 and 16
which respectively fall therewith.
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ISSUE 2
Rejection of claim 10 on the ground of obviousness-type double patenting
over Beck '015 in view of Kapgan
The Examiner rejects claim 10 on the ground of obviousness-type
double patenting over claim 1 of Beck '015 in view of Kapgan2. The
Examiner's rejection is based on the finding that claim 10 "is different from
claim 1 of Beck '015 only in the connecting element. Claim 10 of the instant
application claims a quarter turn fastener while claim 1 of the patent claims a
snap fit fastener." (Ans. 6). To cure this deficiency, the Examiner relies on
Kapgan, asserting that "Kapgan teaches … that snap fit connectors and
quarter turn connectors are well known in the art of connectors to be art
equivalents." (Ans. 6). Therefore, the Examiner concludes that it would
have been obvious to have selected any one of these types of fasteners to
perform the function of connecting (Ans. 6) and that such selection is a
"simple substitution of one known element for another to obtain predictable
results." (Ans. 6-7, 9).
The Appellant contends that "'the envelope of Beck '015 cannot be
removed from the piston rod guide without destroying it because of the snap
connection.'" (Supp. Br. 8). The Appellant further contends that Kapgan's
disclosure "falls short of teaching the equivalence of a snap-fit and a quarter-

2 In this case, because the '449 application on appeal has a later filing date
than the Beck '015 application, only a one-way determination of obviousness
is needed to resolve the issue of double patenting, i.e., whether the invention
defined in claim 10 in the application would have been an obvious variation
of the invention defined in claim 1 in the Beck '015 patent. M.P.E.P. § 804
(August 2001).
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turn connector in all applications, and in no way suggests the desirability of
incorporating a quarter-turn connector in the system of Beck '015." (Supp.
Br. 8). We agree with the Appellant and reverse the Examiner's rejection.
Claim 1 of Beck '015 recites, inter alia:
said connecting element is connected to said enclosed envelope
and non-detachably inserted into said bore in said piston rod
guide for connecting said enclosed envelope to a flow
connection, said connecting element having a shoulder which is
engaged by said securing ring to prevent withdrawal of said
connecting element from said bore.
(Claim 1, emphasis added).
As recited in claim 1 of Beck '015, the connecting element is non-
detachably inserted into the bore in the piston rod guide, and the connecting
element has a shoulder engaged by the securing ring to prevent withdrawal
of the connecting element from the bore. The Examiner did not establish
why one skilled in the art would have found it obvious or desirable to
substitute a quarter-turn connection (and provide detachability) for the
connecting element recited in claim 1 of Beck '015, which is explicitly
claimed as being non-detachable with a shoulder to prevent withdrawal
thereof. It appears that a person of ordinary skill in the art, upon reading
claim 1 of Beck '015, would be led in a direction divergent from the
combination articulated by the Examiner. See In re Gurley, 27 F.3d at 553.
Accordingly, the articulated combination is insufficient to support a
conclusion of obviousness.
Thus, the Examiner's obviousness-type double patenting rejection of
claim 10 based on Beck '015 and Kapgan is not sustained.

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CONCLUSIONS
1. The Examiner did not err in concluding that the combination of
Beck '118 and Marosy renders obvious the suspension system having the
recited connecting element.
2. The Examiner erred in concluding that the combination of Beck
'015 and Kapgan renders obvious the suspension system having the recited
connecting element.

DECISION
1. The Examiner's rejection of claims 10-17 under 35 U.S.C.
§ 103(a) over Beck '118 in view of Marosy is AFFIRMED.
2. The Examiner's rejection of claim 10 on the ground of non-
statutory obviousness-type double patenting over Beck '015 in view of
Kapgan is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

ack

Appeal 2009-007784
Application 11/266,449

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COHEN, PONTANI, LIEBERMAN & PAVANE LLP
551 FIFTH AVENUE
SUITE 1210
NEW YORK, NY 10176