Ex Parte Davis

Board of Patent Appeals and Interferences

Apr 21, 2006

10050061 (B.P.A.I. Apr. 21, 2006)

1
The opinion in support of the decision being entered
today was not written for publication and is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte TOREN S. DAVIS

_____________

Appeal No. 2006-0651
Application No. 10/050,061
_______________

ON BRIEF
_______________

Before FRANKFORT, MCQUADE, and BAHR, Administrative Patent Judges.

MCQUADE, Administrative Patent Judge.

DECISION ON APPEAL
Toren S. Davis appeals from the final rejection (mailed January 13, 2005)
of claims 5, 7-10 and 12-14, all of the claims pending in the application.

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THE INVENTION
The invention relates to a tuned mass damper designed to counteract
mechanical vibrations. Representative claims 5, 8 and 9 read as follows:
5. A tuned mass damper, comprising:
a mass having predetermined inertia properties; and
a plurality of isolators arranged in a hexapod configuration, each isolator having
at least a first end and a second end, each isolator first end coupled to the mass and
each isolator second end adapted to couple to a structure that may experience
vibrations at particular frequencies and at particular locations on the structure in six
independent degrees of freedom,
wherein each of the isolators, in combination with the mass, is configured to be
tuned independent of the other isolators to reduce a first particular frequency of the
vibrations experienced by the structure at a first particular location on the structure.

8. The damper of claim 5, wherein:
each isolator comprises a spring having an adjustable spring constant;
each isolator second end is adapted to couple to the structure at a predetermined
location thereon; and
each isolator is individually tuned by adjusting its spring constant and the
predetermined location on the structure to which its second end will couple.

9. The damper of claim 5, wherein each isolator comprises:
a tubular damping strut coupled between the isolator first and second ends;
a first spherical pivot coupled to the isolator first end; and
a second spherical pivot coupled to the isolator second end.

THE PRIOR ART
The references relied on by the examiner to support the final rejection are:
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Cunningham et al. 5,305,981 Apr. 26, 1994
(Cunningham)
Gran et al. 6,022,005 Feb. 08, 2000
(Gran)
Griffin et al. 6,315,094 Nov. 13, 2001
(Griffin)
THE REJECTIONS
Claims 5, 7, 10 and 12 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Griffin.
Claims 8 and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Griffin in view of Cunningham.
Claims 9 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Griffin in view of Gran.
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Attention is directed to the brief (filed February 21, 2005) and answer (mailed
April 28, 2005) for the respective positions of the appellant and examiner regarding the
merits of these rejections.1

1 In the final rejection and answer, the examiner mistakenly designates
the statutory basis for the anticipation rejection of claims 5, 7, 10 and 12
as § 102(b) rather than § 102(e). Griffin, which has a patent date (November
13, 2001) less than one year prior to the filing date (January 15, 2002) of
the instant application, is not prior art with respect to the subject matter
on appeal under § 102(b), but is prior art under § 102(e). The examiner’s
oversight in this matter appears to have been inadvertent and does not
prejudiced the appellant to any meaningful degree.

DISCUSSION
I. The 35 U.S.C. § 102(e) rejection of claims 5, 7, 10 and 12 as
being anticipated by Griffin

Griffin discloses a passive “virtual” skyhook isolation
system (shown generally in Figure 4) which is “used to isolate a
system or machine from the transfer of mechanical vibrations to
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or from other systems or the environment” (column 2, lines 15-
17). The “virtual” skyhook system differs from known skyhook
systems (see Figure 1B) in that it utilizes a secondary tuned
spring mass damper instead of an inertial reference frame. For
purposes of the appealed rejections, the examiner focuses on the
“virtual” skyhook embodiment shown in Figure 9 which
“incorporates both rotational and translation isolation in
multiple directions using a hexapod type suspension” (column 2,
lines 54 and 55). As explained by Griffin, “[s]ince the hexapod
suspension couples to rotation and translation in all three
dimensions, the primary suspension and the secondary mass and
suspension can be designed to attenuate disturbances, including
moments, acting on the primary mass in any direction” (column 7,
lines 22-27). The hexapod suspension involves six spring and

viscous dampers/isolators of the sort shown in Figure 1A (see
column 7, lines 14-17).
Anticipation is established only when a single prior art
reference discloses, expressly or under principles of inherency,
each and every element of a claimed invention. RCA Corp. v.
Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). In other words, there must be no
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difference between the claimed invention and the reference
disclosure, as viewed by a person of ordinary skill in the field
of the invention. Scripps Clinic & Research Found. v. Genentech
Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
As indicated above, independent claim 5 defines each of the
isolators recited therein as being “configured to be tuned
independent of the other isolators.” Independent claim 10
recites the same limitation. In response to the appellant’s
ostensibly accurate observation (see pages 8-10 in the brief)
that Griffin does not describe any of the isolators contained in
the hexapod type suspension disclosed therein as configured to be
tuned, the examiner states that
Applicant's “Summary” on page 2 of the specification
refer[s] to Prior Art [i.e., the Cunningham patent]
which specifically discloses wherein the prior art
teaches wherein struts can be adjusted and decoupled
from each other by changing “strut” angles, stiffness,
damping, and the TMD mass properties. As disclosed by
Applicant, tuning struts is extremely well known in the
art as ANY damper is inherently tuned to the specific
requirements of the application for which it is used.
The inherent design of a strut construction would
result in “tuning” the strut to operate according to
desired characteristics. Griffin et al. clearly
discloses tuning in column 7, lines 17-29 and Column 1,
line 67-Column 2, line 9 [answer, page 5].

It is of no moment, however, that Cunningham discloses
isolators or struts which are configured to be tuned. The
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anticipation rejection at hand rests on Griffin alone, and
Griffin simply does not teach isolators which are “configured to
be tuned” in the sense set forth in claims 5 and 10. The
examiner’s implication that any damper or isolator, including
those disclosed by Griffin, meets the “configured to be tuned”
limitations because it is inherently “tuned” as manufactured to
meet specific requirements and desired characteristics is not
well taken. Although an isolator arguably is inherently “tuned”
to function in a desired manner when made, this does not mean
that it is “configured to be tuned.” The appellant’s
specification (see pages 2 and 4) clearly sets forth the
difference between the two through its contrasting discussions of
a tuned mass damper which is adjusted at the factory by changing
springs or removing material from the oscillating mass based on
estimates of the frequency of the device to be damped (i.e., an
isolator which is “tuned”) and of a strut or isolator which can
be finely tuned by adjusting its respective spring constant and
mounting location on a particular structure to be damped (i.e.,
an isolator which is “configured to be tuned”).
Thus, Griffin does not disclose each and every element of
the subject matter recited in claims 5 and 10. Consequently, we
shall not sustain the standing 35 U.S.C. § 102(e) rejection of
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independent claims 5 and 10, and dependent claims 7 and 12, as
being anticipated by Griffin.
II. The 35 U.S.C. § 103(a) rejection of claims 8 and 13 as being
unpatentable over Griffin in view of Cunningham

Acknowledging that Griffin does not respond to the
limitations in claim 8, or to the corresponding limitations in
claim 13 (which depends from claim 10), relating to the spring
with an adjustable spring constant, the examiner turns to
Cunningham.
Cunningham discloses a “vibration isolating and damping
apparatus that passively isolates vibrations between a supporting
structure and a supported structure while permitting movement of
the supported structure over six degrees of freedom with respect
to the supporting structure” (column 2, lines 22-27). In the
exemplary embodiment described, the supported structure comprises
a reaction wheel assembly mounted on a cradle 12 and the
supporting structure comprises a base 10. Six viscous isolators
14 arranged in a symmetrical pattern of three isolator pairs
spaced 120° apart link the cradle to the base. Each isolator,
whose basic construction is illustrated in Figure 3, includes
flexible joints 20 for connection to the cradle and base. These
joints may take the form of spherical bearings or two-axis
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flexures (see column 5, lines 6-10). The isolators also include
fluid damping structure, and a coil spring which can be adjusted
or tuned to optimize the isolator for performance along one
degree of freedom (see column 6, lines 28-36; column 7, lines 19-
21; and column 9, lines 24-27). In Cunningham’s words, “the
deterministic design of the isolators allows calculation to
establish the required amount of damping and the required
stiffness of the elastic [isolator] members when given the force,
direction of force, frequency range, amplitudes and directions of
vibrations to be expected” (column 8, lines 43-48).
The appellant does not dispute that it would have been
obvious to utilize Cunningham’s isolators to implement Griffin’s
broadly disclosed hexapod suspension, or that such isolators are
“configured to be tuned” as recited in parent claims 5 and 10.2
The appellant does contend, however, that the rejection of claims
8 and 13 is unsound because the combined teachings of Griffin and
Cunningham would not have suggested a system meeting the
limitations in these claims, and in parent claims 1 and 5,
pertaining to the coupling of each isolator second end to the
structure at a predetermined or particular location to reduce

2 Indeed, the appellant’s specification (see page 2) cites Cunningham
for its disclosure of such tunable isolators.
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vibrations at that location. The appellant has failed to
cogently explain, however, and it is not apparent, why the second
ends of the isolators resulting from the proposed combination of
Griffin and Cunningham are not so coupled, why these second ends
are not capable of such coupling, or why the coupling would not
reduce vibrations at the coupling location.
Thus, the combined teachings of Griffin and Cunningham
justify the examiner’s conclusion that the differences between
the subject matter recited in claims 8 and 13 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. Accordingly, we shall sustain the
standing 35 U.S.C. § 103(a) rejection of claims 8 and 13 as being
unpatentable over Griffin in view of Cunningham.
III. The 35 U.S.C. § 103(a) rejection of claims 9 and 14 as being
unpatentable over Griffin in view of Gran

Conceding that Griffin does not meet the limitations in
claim 9, or the corresponding limitations in claim 14 (which
depends from claim 10), requiring each isolator to comprise a
tubular damping strut and first and second spherical pivots, the
examiner looks to Gran.
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Gran discloses a vibration isolation device for reducing
vibrational disturbances of precision equipment mounted on a
payload platform which is subject to vibrations transmitted from
a base platform. Three pairs of semi-active isolators 14 support
the payload platform 10 on the base platform 12. Each isolator
14, which is pivotally connected at spherical ends to the payload
and base platforms (see Figures 2 and 6), comprises a passive
spring, preferably a slotted cylinder 22, and an active damping
component, preferably a voice coil actuator 24, mounted parallel
to the passive spring. A control system 58 for actuating the
voice coil actuators in response to sensed vibrations includes
six damping and isolation control loops 62 corresponding to the
six isolators.
The appellant does not dispute that it would have been
obvious to utilize Gran’s isolators to implement Griffin’s
broadly disclosed hexapod suspension, or that such semi-active
isolators are “configured to be tuned” as broadly recited in
parent claims 5 and 10. The appellant does submit, however, that
the rejection of claims 9 and 14 is untenable because the
combined teachings of Griffin and Gran would not have suggested a
system meeting the limitations in parent claims 1 and 5
pertaining to the coupling of each isolator second end to the
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structure at a particular location to reduce vibrations at that
location. The appellant has failed to cogently point out,
however, and it is not evident, why the second ends of the
isolators resulting from the proposed combination of Griffin and
Gran are not so coupled, why these second ends are not capable of
such coupling, or why the coupling would not reduce vibrations at
the coupling location.
Hence, the combined teachings of Griffin and Gran warrant
the examiner’s conclusion that the differences between the
subject matter recited in claims 9 and 14 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. Accordingly, we shall sustain the standing 35
U.S.C. § 103(a) rejection of claims 9 and 14 as being
unpatentable over Griffin in view of Gran.
IV. Remand to the examiner
This application is remanded to the examiner pursuant to 37
CFR § 41.50(a)(1) for consideration of the following matters.
The conclusion that it would have been obvious to use the
particular isolators disclosed by either Cunningham or Gran in
the hexapod suspension disclosed by Griffin is reasonable on its
face and, as indicated above, has not been challenged by the
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appellant. On remand, the examiner should consider whether the
combined teachings of Griffin and Cunningham justify a 35 U.S.C.
§ 103(a) rejection of claims 5, 7, 9, 10, 12 and 14, and whether
the combined teachings of Griffin and Gran warrant a 35 U.S.C.
§ 103(a) rejection of claims 5, 7, 10 and 12.

SUMMARY
The decision of the examiner to reject claims 5, 7-10 and
12-14 is affirmed with respect to claims 8, 9, 13 and 14, and
reversed with respect to claims 5, 7, 10 and 12. In addition,
the application is remanded to the examiner for further
consideration.
In addition to affirming the examiner's rejection of one or
more claims, this decision contains a remand. 37 CFR § 41.50(e)
provides that
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[w]henever a decision of the Board includes a remand,
that decision shall not be considered final for
judicial review. When appropriate, upon conclusion of
proceedings on remand before the examiner, the Board
may enter an order otherwise making its decision final
for judicial review.
Regarding any affirmed rejection, 37 CFR § 41.52(a)(1)
provides "[a]ppellant may file a single request for rehearing
within two months of the date of the original decision of the
Board."
The effective date of the affirmance is deferred until
conclusion of the proceedings before the examiner unless, as a
mere incident to the limited proceedings, the affirmed rejection
is overcome. If the proceedings before the examiner do not
result in allowance of the application, abandonment or a second
appeal, this case should be returned to the Board of Patent
Appeals and Interferences for final action on the affirmed
rejections, including any timely request for rehearing thereof.
AFFIR
MED-IN-PART AND REMANDED

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CHARLES E. FRANKFORT ) Administrative
Patent Judge )
)
)
)
JOHN P. MCQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
) )
JENNIFER D. BAHR )
Administrative Patent Judge )

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