Ex Parte Cheng et al

Patent Trial and Appeal Board

Nov 15, 2012

11062101 (P.T.A.B. Nov. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YANG-TSE CHENG, THOMAS ARTHUR PERRY, and
MARK W. VERBRUGGE
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Appeal 2010-009781
Application 11/062,101
Technology Center 3600
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Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
BART A. GERSTENBLITH, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/062,101

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STATEMENT OF THE CASE
Yang-Tse Cheng et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a)
claims 1-4, 10, 11, and 19-28 as unpatentable over Kern (DE 3238924 A1,
publ. Apr. 26, 1984), Kwan (US 7,306,082 B2, iss. Dec. 11, 2007), and
Jacobs (US 6,354,576 B1, iss. Mar. 12, 2002). Claims 5-9 and 12-18 have
been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a device for damping engine noise of
a vehicle by placing damping elements within a plurality of voids in the
engine block. Spec. 2, para. [0012].
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A vehicle, comprising:
a chassis;
a body disposed on the chassis; and
a drive train disposed on the chassis, the drive train
comprising a metal housing having a void and a metallic
damping element disposed within the void;
wherein the damping element comprises endwalls,
material of the damping element between the endwalls defining
an axial stiffness of the damping element;
wherein the void has a boundary disposed to interact with
the endwalls of the damping element such that an axial stiffness
of the void is influenced by the axial stiffness of the damping
element;
wherein the natural frequency of vibration of the housing
itself is changeable by changing the axial stiffness of the
damping element;
wherein the void is a cored channel formed by removal
of interior material of the metal housing to define a side wall
that completely circumscribes a central axis of the void, and the
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damping element is disposed within and retained around its
outer perimeter by the side wall of the cored channel.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
Appellants argue the rejection under 35 U.S.C. §103(a) of claims 1-3,
10, and 19-26 together as a group. Br. 7. Therefore, in accordance with 37
C.F.R. § 41.37(c)(1)(vii)(2011), we have selected claim 1 as the
representative claim to decide the appeal, with claims 2, 3, 10, and 19-26
standing or falling with claim 1. In view of Appellants’ arguments, we will
address the rejection of claims 4, 11, 27, and 28 separately. See id.

Claims 1-3, 10, and 19-26
Appellants argue that: (1) the Examiner’s rejection lacks clarity “and
therefore a prima facie case of obviousness cannot be unambiguously
established” (Br. 5) and (2) the Examiner’s proposed modification of Kern
with the teachings of Kwan and Jacobs “would render Kern unsatisfactory
for its original intended purpose” (id.) and “the principle of operation of
Kern would be substantially changed” (Br. 6).

Appellants’ First Argument
Appellants take the position that the Examiner’s rejection lacks clarity
because the rejection does not mention the teachings of Jacobs until the
fourth paragraph of page 5 of the Final Rejection, mailed Jan. 7, 2009. Br.
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4. Thus, according to Appellants it is not clear whether the teachings of
Jacobs are applied against claims 2, 3, and 19-26. Br. 5.
At the outset, although we appreciate Appellants’ concerns regarding
the clarity of the Examiner’s combination of the teachings of Kern, Kwan,
and Jacobs, nonetheless, we note that the heading of the Examiner’s
rejection specifically states that, “Claims 1-4, 10, 11, and 19-28 are rejected
under 35 U.S.C. 103(a) as being unpatentable over Kern (DE-3238924) in
view of Kwan et al. (US-7306082) and in further view of Jacobs et al (US-
6354576).” Final Rejection 2; Ans. 3. See also Advisory Action 2, mailed
March 27, 2009. Furthermore, Appellants recognize that the Examiner is
“alleging unpatentability of Claims 1, 4, 10, 11, 27, and 28 (see page 5,
fourth paragraph) based on Kern, Kwan and Jacobs.” Br. 4.
Lastly, with respect to the rejection of dependent claims 2, 3, and 19-
26, since these claims depend from independent claims 1 and 10,
respectively, and the Examiner has rejected independent claims 1 and 10
over the combined teachings of Kern, Kwan, and Jacobs, we find that
dependent claims 2, 3, and 19-26 are also rejected over the combined
teachings of Kern, Kwan, and Jacobs. The Examiner does not specifically
mention Jacobs because, according to the Examiner, it is the teachings of
Kern and Kwan that meet the additional limitations recited in dependent
claims 2, 3, and 19-26. See Ans. 4-6. Thus, we find that the Examiner has
provided an adequate description to place Appellants on notice of the
Examiner’s interpretation of the disclosures of Kern, Kwan, and Jacobs. See
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).1

1 “ …all that is required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and the reference
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Appellants’ Second Argument
Appellants argue that because the “metallic shape memory alloy (of
Jacobs) has substantially different performance characteristics as compared
to a loosely fitted elastic body (of Kern)” (Br. 6), the Examiner’s proposed
modification to replace the elastomeric body element of Kern with the
metallic shape memory alloy of Jacobs “would render Kern unsatisfactory
for its original intended purpose” (Br. 5) and “the principle of operation of
Kern would be substantially changed” (Br. 6).
As far as we understand Appellants’ arguments, it appears that
Appellants consider the performance differences between an elastic body (as
per Kern) and a shape memory alloy (as per Jacobs) to be a teaching away
from the combination of Kern, Kwan, and Jacobs. However, teaching away
requires a reference to actually criticize, discredit, or otherwise discourage
the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits, or otherwise discourages the solution claimed).
Appellants’ argument is unconvincing because Appellants have not
identified any particular disclosure in Kern that criticizes, discredits, or
discourages its teachings with damping elements comprising shape memory
alloys.
Furthermore, while it is true that an elastic body is different from a
metallic memory shape alloy, Appellants’ arguments regarding Kern’s
intended purpose and principle of operation ignore Jacobs’ specific teaching

or references relied upon in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132.”
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that “[o]ther isolators such as large rubber materials or shape memory alloys,
SMAs . . . are sometimes used in situations where large shock vibrations are
expected.” Jacobs, col. 1, ll. 33-36. See also Ans. 7. Moreover, we are not
persuaded by Appellants’ arguments that the Examiner’s reliance on In re
Leshin, 227 F.2d 197 (CCPA 1960), is misplaced. See Br. 6. The selection
of a known material based upon its suitability for the intended use is a
design consideration within the skill of the art. Id. at 199. Here, as noted
above, the Examiner has specifically found in Jacobs that both rubber and
metallic shape memory alloys are suitable for use in an isolator (vibration
damping system). Thus, the Examiner has a sound basis for finding that the
shape memory alloy of Jacobs would have been a suitable substitute for the
elastic body of Kern. Appellants provide no persuasive reason why a person
of ordinary skill in the art could not have implemented such a substitution.
Neither do Appellants provide any persuasive reason why the results of the
substitution would have been unpredictable. As such, the Examiner is
correct in concluding that such a substitution would have been obvious to
one of ordinary skill in the art at the time of invention.
In conclusion, for the foregoing reasons, we shall sustain the rejection
of claim 1, and claims 2, 3, 10, and 19-26 standing or falling with claim 1,
under 35 U.S.C. § 103(a) as unpatentable over Kern, Kwan, and Jacobs.

Claims 4, 11, 27, and 28
With respect to Appellants’ argument that “Kern, Kwan and Jacobs
fail to provide the requisite motivation to combine the elements of the
claimed invention for the purpose claimed” (Br. 7), we note that while the
requirement of demonstrating a teaching, suggestion, or motivation (the
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TSM test established by the Court of Customs and Patent Appeals) to
combine known elements in order to show that the combination is obvious
may be “a helpful insight,” it cannot be used as a rigid and mandatory
formula. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Further,
contrary to Appellants’ argument, the Examiner’s articulated rationale—that
one known material can be substituted for another known to be suitable for
the intended use (Ans. 6)—is not required to originate in “the references
themselves.” E.g., KSR, 550 U.S. at 416 (“when a patent claims a structure
already known in the prior 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.”) Regardless, as indicated above, the known
suitability of the substituted material, was in fact disclosed in Jacobs.
Lastly, Appellants argue that the “combination… would not lead to a
metallic damping element, or shape memory damping element, being
disposed within a cored void of the engine block itself.” Br. 7. See also Br.
6. We do not agree with Appellants’ position because the Examiner
specifically found that Kwan discloses a damping element disposed within a
cored void of a structure. Ans. 4. See also Kwan, Abstract and fig. 3.
Accordingly, the rejection of claims 4, 11, 27, and 28 over the
combined teachings of Kern, Kwan, and Jacobs is likewise sustained.

SUMMARY
The Examiner’s decision to reject claims 1-4, 10, 11, and 19-28 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
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AFFIRMED

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