Ex Parte Carlstedt et al

Patent Trial and Appeal Board

Sep 27, 2012

10876135 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT P. CARLSTEDT, JAMES J. SIESEL,
and CHRISTOPHER T. SLEDZ
____________________

Appeal 2010-004593
Application 10/876,135
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, LYNNE H. BROWNE, and
HYUN J. JUNG, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
13, 15-30, 32, and 35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention “relates to a common hub design for
piston and base valve arrangements enabling a more modular damper.”
Spec., para. [001]. Claims 13, 21, and 27 are the independent claims on
appeal. Claim 13, reproduced below, is illustrative of the claimed subject
matter:
13. A valve assembly for a damper comprising:
a valve body having a central hole and a fluid
passageway spaced from said hole;
a valve having a central aperture aligned with said hole,
said valve adjacent to said valve body and at least partially
blocking said fluid passageway;
a hub having a neck disposed in said hole and said
aperture, wherein said hub includes a shoulder extending
radially outward relative to said neck;
a rod secured to said hub proximate to said shoulder, said
shoulder having a larger diameter than a diameter of said neck;
and
a retainer abutting an outer surface of said hub, said
retainer secured to said outer surface by a securing material.

REJECTIONS
Appellants seek review of the following rejections:
1. Claims 13, 15, 18, 20-22, 24-30, 32, and 35 under 35 U.S.C. § 102(b)
as anticipated by Gotz (US 6,561,326 B2; iss. May 13, 2003).
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2. Claims 13, 15-23, and 25-30 under 35 U.S.C. § 103(a) as unpatentable
over Beck (US 5,547,050; iss. Aug. 20, 1996) and Gotz.
3. Claims 16 and 19 under 35 U.S.C. § 103(a) as unpatentable over Gotz
and Beck.

ISSUES
This appeal involves the following issues:
Whether Gotz discloses a valve as called for in independent claims 13
and 21.
Whether Gotz discloses a rod secured to a hub with a second material
as called for in claim 18.
Whether the proposed modification to separate Beck’s integrated hub
and rod into two components is supported by an adequate rationale.
Whether the proposed modification to replace Gotz’s threaded
connection with a metal or adhesive weld as disclosed by Beck, is supported
by an adequate rationale.

ANALYSIS
Claims 13, 15, 18, 20-22, 24-30, 32, and 35 as anticipated by Gotz
Appellants present argument for independent claims 13 and 21
without distinguishing between the subject matter of the claims. App. Br. 5.
As such, we select claim 13 as representative, and claims 15, 20-22, 24-30,
32, and 35 stand or fall with claim 13.1 Appellants also present a separate
argument for dependent claim 18. Id. We address claims 13 and 18 in turn.

1 See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
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Claims 13, 15, 20-22, 24-30, 32, and 35
The Examiner’s determination of anticipation relied upon the
embodiment shown in Gotz’s Figure 4, with the exception of a valve disk
(discs 16) shown in the embodiment of Figures 1 and 2. Ans. 3-4.
Appellants argue that Gotz’s discs 16 are included in Figures 1 and 2, but are
not included in Figure 4, which is an alternative embodiment. App. Br. 5.
In response, the Examiner explains that the finding identified discs 16 as
corresponding to the claimed valve because Figure 4 does not identify the
valve. Ans. 5.
The Examiner clarifies that Gotz’s “disk abutting the shoulder of the
hub” shown in the embodiment of Figure 4 corresponds to a valve as
claimed. Ans. 5-6. Appellants then assert that Gotz’s Figure 4 clearly
depicts a nut, and that this nut does not function as a deflection disc. Reply
Br. 2.
Contrary to what is suggested by Appellants’ argument, the Examiner
did not find that the nut depicted in Figure 4 corresponds to a valve as
claimed. The Examiner found that the nut shown in Gotz’s Figure 4 secures
a retainer (two retaining washers) to the neck of the hub (the narrower, lower
portion of the unidentified component that surrounds disc 24) and
corresponds to a securing material as called for in claim 13. Ans. 3-4, 6; see
also Gotz, col. 3, ll. 19-21; figs. 3, 4. The Examiner found that the “disk
abutting the shoulder of the hub” shown in the embodiment of Figure 4
corresponds to a valve as claimed. Ans. 3-6. Thus, Appellants’ argument is
unconvincing because it is not responsive to the rejection as articulated by
the Examiner.
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Accordingly, we sustain the rejection of claims 13, 15, 20-22, 24-30,
32, and 35.2

Claim 18
The Examiner found that Gotz’s nut corresponds to a “second
material” as called for in claim 18 because it secures a retainer (pair of
washers). Ans. 4, 6. It appears the Examiner has confused the claim terms
“securing material” and “second material.” Claim 18 calls for a securing
material to secure the retainer (by virtue of dependence from claim 13), and
calls for a second material to secure the rod to the hub. The Examiner’s
finding that Gotz’s nut secures a retainer (two washer) relates to a securing
material as claimed. However, the Examiner makes no finding that Gotz
discloses an element that secures the rod to the hub (the claimed second
material). See App. Br. 5. Accordingly, we cannot sustain the rejection of
claim 18.

2 Additionally, with regard to claims 27-30 and 32, Appellants argue in the
Reply Brief that, “[t]he Examiner does not specify any argument why claim
27 is rejected over Goetz in the official record.” Reply Br. 2. This assertion
appears inconsistent with Appellants’ acknowledgment that these claims
were rejected as anticipated by Gotz. See App. Br. 5. Further, this assertion
is incorrect in that the Examiner has provided a rejection of these claims.
See Ans. 3-4; Office Action dated Nov. 30, 2006, at 2. As such, even if
claims 27-30 and 32 were separately argued, such argument does not
persuasively identify an error by the Examiner.
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Claims 13, 15-23, and 25-30 as unpatentable over Beck and Gotz3
The Examiner concluded that it would have been obvious to form
Beck’s rod and hub (piston 2) as separate parts, as taught by Gotz’s two-
piece construction, “to ease the complication of forming each part” and to
reduce waste material.4 Ans. 4, 6-7.
Appellants argue the rationale for the proposed modification is
inadequate because it is, “not supported by the embodiments illustrated in
Beck.” App. Br. 6. Appellants’ argument is not premised on the correct
legal standard. The Supreme Court has rejected the rigid requirement of a
teaching, suggestion, or motivation to combine known elements in order to
show obviousness. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007). Further, the proposed modification is not based upon Beck alone;
rather, the Examiner concluded that the proposed modification would have
been obvious over Beck and Gotz. Thus, Appellants’ argument is an
individual attack on Beck and does not address the proposed combination.
See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) citing In
re Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references).
Appellants also argue the rationale for the proposed modification is
inadequate because forming the hub and rod as separate pieces creates issues

3 Appellants present a single argument for independent claims 13, 21, and 27
without distinguishing between the claims. App. Br. 6. As such, select
claim 13 as representative and claims 15-23, and 25-30 stand or fall with
claim 13. See 37 C.F.R. § 41.37(c)(1)(vii).
4 The Examiner further reasons that even without the disclosure of Gotz,
forming the rod and hub as a single piece or as two pieces is not a patentable
distinction. Ans. 7.
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regarding detachment and other potential failures, and thus may not be
advantageous. Reply Br. 3. Our reviewing court has recognized that any
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate any or all reasons to combine
teachings. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense
of another benefit, however, should not nullify its use as a basis to modify
the disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”).
Here, the Examiner concludes that the proposed modification would ease the
complication of forming each part (the rod and hub) and would reduce waste
material. Ans. 4, 6-7. Appellants have not contested these benefits except to
say that it may come at the cost of possible detachment. Appellants present
no argument or evidence such a problem is beyond the level of skill in the
art to resolve. Appellants have not convincingly explained how this
drawback outweighs the benefits outlined by the Examiner.
Weighing the evidence for and against obviousness in light of
Appellants’ arguments, we conclude that the subject matter of claim 13
would have been obvious in view of Beck and Gotz. Accordingly, we
sustain the rejection of claims 13, 15-23, and 25-30.
There is a second, independent basis for affirming this rejection.
It is uncontested that Beck discloses the subject matter of independent
claim 13 except that Beck’s rod and hub (piston rod 2) are a single piece.
See Ans. 4-7; App. Br. 6; Reply Br. 3. This analysis is premised on the
claim construction that claim 13 requires the rod and hub to be separate
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pieces. See App. Br. 6 (referring to claim 13 calling for a separate rod and
hub). We discern no such requirement in claim 13.
Claims 13 does not explicitly recite that the rod and hub are separate
pieces. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (it is
Appellants’ burden to precisely define the invention). Rather, claim 13
recites that the rod is “secured” to the hub. The Specification does not
provide a lexicographical definition of “secured.” A common definition of
“secure” is to attach so as not to come apart.5 Consistent with this common
meaning, the Specification provides the example that the rod 52 may be
secured to the collar 46 of hub 12 by laser welding. Spec., para. [0028]; fig.
2.6 Therefore, claim 13 calls for the rod and hub to be attached so as not to
come apart.
The Examiner found that Beck discloses a rod (portion of piston rod 2
above shoulder 10) and a hub comprised of a shoulder (shoulder 10 of piston
rod 2) and a neck (journal 9 of piston rod 2). Ans. 4. While Beck does not
disclose if piston rod 2 is formed of a single or multiple parts, we assume,
arguendo, that piston rod 2 is formed of a single piece. See Beck passim;
figs. 2, 2a, 3, 3a. Beck’s rod (portion of piston rod 2 above shoulder 10) is
attached so as not to come apart from the hub (portion from shoulder 10 to
the distal end of journal 9), and thus is secured as called for in claim 13.
Because Appellants fail to identify any other distinction between Beck
and the subject matter of claim 13, we affirm the rejection of claims 13, 15-

5 Secure: to fix or attach (something) so as not to become loose, give way,
fall off, or come apart; to hold firmly in place; to fasten or do up; to close (a
door, window, etc.) tightly; to lock; v. trans. def. 5.a., Oxford English
Dictionary (1989) available at www.OED.com.
6 We discern nothing in Appellants’ Specification inconsistent with the
ordinary meaning of “secure.”
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23, and 25-30 on this second basis as well. See In re Pearson, 494 F.2d
1399, 1402 (CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982) (anticipation is the epitome of obviousness).

Claims 16 and 19 as unpatentable over Gotz and Beck
Here, the Examiner finds that Gotz discloses the subject matter of
claims 16 and 19, except that Gotz’s hub is secured to the neck by a nut
rather than a weld as claimed. Ans. 5. The Examiner concluded it would
have been obvious to replace the threaded fastener of Gotz (nut shown in
Figure 4) with a metal or adhesive weld as is well-known and disclosed by
Beck, “to prevent unintended disassembly.” Ans. 4-5, 7.
Appellants argue that the Examiner’s rationale is not supported by the
references because there is no apparent need or benefit to use welding
instead of a threaded fastener in the art. App Br. 6; Reply Br. 3.
It is not necessary that the references explicitly disclose a need for
replacing a threaded fastener with a weld as Appellants’ argument suggests.
Appellants have not contested the Examiner’s finding that it is well-known
to use a weld to replace a threaded fastener. Further, Appellants’ argument
is unconvincing because it does not explain why the Examiner’s rationale,
namely, to prevent unintended disassembly, is in error.
Accordingly, we sustain the rejection of claims 16 and 19.

CONCLUSIONS
Gotz discloses a valve as called for in independent claim 13.
Gotz does not disclose a rod secured to a hub with a second material
as called for in claim 18.
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The proposed modification to separate Beck’s integrated hub and rod
into two components is supported by an adequate rationale.
The proposed modification to replace Gotz’s threaded connection with
a metal or adhesive weld as disclosed by Beck, is supported by an adequate
rationale.
DECISION
We affirm the Examiner’s decision to reject claims 13, 15, 20-22, 24-
30, 32, and 35 under 35 U.S.C. § 102(b) as anticipated by Gotz.
We reverse the Examiner’s decision to reject claim 18 under
35 U.S.C. § 102(b) as anticipated by Gotz.
We affirm the Examiner’s decision to reject claims 13, 15-23, and 25-
30 under 35 U.S.C. § 103(a) as unpatentable over Beck and Gotz.
We affirm the Examiner’s decision to reject claims 16 and 19 under
35 U.S.C. § 103(a) as unpatentable over Gotz and Beck.
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)(1)(iv).

AFFIRMED

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