Ex Parte BronowickiDownload PDFPatent Trial and Appeal BoardMay 25, 201612807660 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/807,660 09/10/2010 32205 7590 05/27/2016 Patti & Malvone Law Group, LLC One North LaSalle St., 44th Floor Chicago, IL 60602 FIRST NAMED INVENTOR Allen J. Bronowicki 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. NGC-366/004073-804 6086 EXAMINER AUNG,SANM ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 05/27/2016 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): info@cplawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALLEN J. BRONOWICKI Appeal2014--005548 Application 12/807,660 Technology Center 3600 Before THOMAS F. SMEGAL, MARK A. GEIER, and GORDON D. KINDER, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE ii.Jlen J. Bronov1icki (ii .. ppellant) 1 seeks our reviev,r under 35 U.S.C. § 134 of the Examiner's Final Rejection of claims 1-3, 11, 12, 16-18, and 20 under 35 U.S.C. §102(b) as anticipated by Koshika (US 5, 339,580, iss. Aug. 23, 1994); and of claims 4--10, 13-15, and 19 under 35 U.S.C. § 103(a) as unpatentable over Koshika). 2 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellant, the real party in interest is Northrop Grumman Systems Corporation. Appeal Br. 3 2 We note that Appellant's listing of claims in the Appeal Brief misstates claim 2. The correct version of claim 2 is found, for example, in the Specification, at page 13. Appeal2014--005548 Application 12/807,660 CLAIMED SUBJECT MATTER Claims 1, 11, and 16 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter. 1. A vibratory isolator, comprising: at least one mass inertia component and at least one compliant component which are configured to exhibit: a vibratory bandgap; and shear/bending coupling. ANALYSIS Appellants argue claims 1-20 together in contesting the rejections of claims 1-3, 11, 12, 16-18, and 20 as anticipated by Koshika and of claims 4--10, 13-15, and 19 as obvious over Koshika. See Appeal Br. 7-11 and Reply Br. 3-8. We select claims 1, 11, and 16 as the representative claims for these groups, and the remaining claims stand or fall with claims 1, 11, and 16. See 37 C.F.R. 41.37(c) (l)(iv). The Examiner finds that Koshika anticipates claims 1, 11, and 16 by disclosing "at least one mass inertia component (8) and at least one complaint component ( 1) which are configured to exhibit . . . a vibratory bandgap ... and Shear/bending coupling." Final Act. 2-3. The Examiner explains that a "bandgap is the difference in energy between the valence band and the conduction band of a solid material that consists of the range of energy values forbidden to electrons in the material" and concludes "that [the] Koshika structure and [the] structure of invention [are] substantially [the] same and have a bandgap."3 Id. The Examiner reasons "the vibratory bandgap [of Koshika] is equivalent to [the] vibratory bandgap of the 3 The Examiner included an annotated version of Fig. 3 of Koshika at page 5 of the Non-Final Rejection mailed October 16, 2012. 2 Appeal2014--005548 Application 12/807,660 invention," while also pointing out that the stated object of Koshika "is to provide a damping device having little shearing stiffness and a long period highly stabilized against deformation by the stacking of hollow laminated rubber dampers in multi-stage by means of connection plate[s]." Id. at 8 (citing Koshika, col. 3, 11. 19-24). Appellant first contends that "the sections of Koshika cited [by the Examiner] . . . disclose a physical gap between adjacent damping devices, which does not anticipate, teach or suggest a vibratory isolator featuring a vibratory bandgap, as recited in independent claims 1, 11, and 16." Appeal Br. 8. Appellant also contends that while "the sections of Koshika cited by the Examiner ... disclose a vibration damping device[,] ... a vibration damping device does not anticipate, teach or suggest [either] a vibratory isolator exhibiting a vibratory bandgap, as recited by independent claims 1 and 16," or "a method of isolating vibrations such that a vibratory bandgap occurs, as recited in independent claim 11." Id. at 9. However, the Appellant's arguments do not address the Examiner's findings regarding the claimed vibratory bandgap. The Examiner explains that the "laminated rubber building support and vibration damping device" of Koshika, including "the plurality of hollow laminate rubber damping device[s] (equivalent to [the] compliant component of the instant invention) and horizontal connection plate[ s] (equivalent to [the] mass inertia [component] of the invention)," "[are] substantially [the] same as [the] instant invention," again reasoning "the function of vibratory bandgap [that] must be performed by the Koshika structure is [the] same as [the] instant invention's vibratory bandgap since these two structures are substantially the 3 Appeal2014--005548 Application 12/807,660 same."4 Ans. 3--4 (emphasis partially removed). Appellant does not apprise us of any error in the foregoing. 5 Specifically, Appellant does not explain why Koshika's vibratory gap is not a vibratory bandgap as the Examiner has defined that term. Appellant continues by contending that because "Koshika does not discuss frequencies of any of the individual steel plates, only of the frequency of the payload and the total stiffness of the stack," that "Koshika does not disclose anything that would teach a person of skill in the art to create a vibratory bandgap, as recited in claims 1-20 of the current invention." Reply Br. 4. However, we find Appellant's contention to be unavailing as it is not commensurate with the scope of claims 1, 11, and 16, none of which recite a specific frequency for the vibratory bandgap. Furthermore, "limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). Finally, Appellant contends while "[ c ]ountless examples are known in the literature of structures that appear similar or even identical in one or more figures and yet have substantially different functions," that "the Examiner makes no argument anywhere in the record that the Koshika invention performs similar functions to the current invention, simply 4 "It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claimed limitations, it anticipates." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). 5 We also note that Appellant does not argue that Koshika lacks any structure recited by claims 1 and 16, and we find none lacking. 4 Appeal2014--005548 Application 12/807,660 inserting unsupported assertions that it does so based on a similar appearance in some figures." Reply Br. 5. However, we find Appellant's contention is merely repeating the prior argument that we found did not address the Examiner's findings regarding the claimed vibratory bandgap inherently taught by Koshika. See footnote 5. Ans. 4. While we agree with the Examiner that Koshika teaches the structure of claims 1 and 16, we also find the phrase "configured to exhibit" (in claim 1 ), and the term "exhibits" (in claim 16) to be functional limitations that do not impose any structural limitation on the claimed apparatus that differentiates those claims from a prior art apparatus that otherwise discloses all the recited limitations and is capable of performing the recited function. Functional claim language covers all devices that are capable of performing the recited function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Appellant's contention that the claimed structure will be used to perform a function not taught by the prior art reference does not have patentable weight if the structure is already known). "A reference anticipates a claim if it discloses the claimed invention 'such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention.'" In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936, In re Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985)) (parallel citations omitted). For the reasons set forth above, we discern no error in the Examiner's findings and agree that the vibration dampening device disclosed by Koshika anticipates claims 1, 11, and 16. Appellant does not present separate arguments for the patentability of claims 2-10, which depend from claim 1, 5 Appeal2014--005548 Application 12/807,660 claims 12-15, which depend from claim 11, and claims 17-20, which depend from claim 16. Appeal Br. 10. Accordingly, we sustain the Examiner's rejection of claims 2, 3, 12, 17, and 18 under 35 U.S.C. § 102(b) as anticipated by Koshika and claims 4--10, 13-15, and 19 under 35 U.S.C. § 103 (a) as obvious over Koshika, for the same reasons stated for claims 1, 11, and 16. DECISION We AFFIRM the Examiner's rejections. 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. § 1.136(a)(l )(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation