11410596 (B.P.A.I. Aug. 24, 2009)

Ex Parte Dooley

Board of Patent Appeals and InterferencesAug 24, 2009

11410596 (B.P.A.I. Aug. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ____________________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ____________________ 6 7 Ex parte JOHN DOOLEY 8 ____________________ 9 10 Appeal 2009-002551 11 Application 11/410,596 12 Technology Center 3700 13 ____________________ 14 15 Decided: August 24, 2009 16 ____________________ 17 18 Before LINDA E. HORNER, KEN B. BARRETT, and 19 FRED A. SILVERBERG, Administrative Patent Judges. 20 21 SILVERBERG, Administrative Patent Judge. 22 23 24 DECISION ON APPEAL 25 26 STATEMENT OF THE CASE 27 John Dooley (Appellant) seeks our review under 35 U.S.C. § 134 of 28 the final rejection of claims 1-7, 15, 17-19 and 21-27. We have jurisdiction 29 under 35 U.S.C. § 6(b) (2002). 30 31 32 Appeal 2009-002551 Application 11/410,596 2 SUMMARY OF DECISION 1 We REVERSE. 2 3 THE INVENTION 4 The Appellant’s claimed invention is directed to a frequency 5 suppressor 44 for a power steering system (Spec. 4: ¶ [0014]). 6 Claim 1, reproduced below, is representative of the claimed subject 7 matter: 8 1. A frequency suppressor for a hydraulic 9 system, comprising: 10 a housing having an interior and a plurality 11 of internal chambers within the interior; and 12 a substantially fixed mass of a compressible 13 substance contained in the housing interior, 14 wherein the substantially fixed mass of the 15 compressible substance occupies a volume that 16 varies in response to pressure fluctuations in the 17 hydraulic system. 18 19 THE REJECTIONS 20 The Examiner relies upon the following as evidence of 21 unpatentability: 22 Romstaedt US 942,666 Dec. 7, 1909 23 Hajek US 1,774,095 Aug. 26, 1930 24 25 The following rejections by the Examiner are before us: 26 1. Claims 1-7, 15, 17, 19, 22, 26 and 27 are rejected under 35 U.S.C. 27 § 102(b) as being anticipated by Romstaedt. 28 2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable 29 over Romstaedt in view of Hajek. 30 Appeal 2009-002551 Application 11/410,596 3 3. Claims 21 and 23-25 are rejected under 35 U.S.C. § 103(a) as being 1 unpatentable over Romstaedt. 2 3 ISSUE 4 The issue before us is whether the Examiner erred in finding that 5 Romstaedt describes a substantially fixed mass of a compressible substance 6 as called for in claims 1 and 15. 7 8 ANALYSIS 9 The Appellant contends that Romstaedt does not describe a 10 substantially fixed mass of a compressible substance as called for in claims 1 11 and 15 (Reply Br. 3, 15 and App. Br. 22, 23). 12 The Examiner found that in Romstaedt, the air is a fixed mass of 13 compressible substance as called for in the claimed invention (Ans. 4). 14 The Appellant’s Specification states that “[a]ny compressible 15 substance, such as air or other compressible gas, contained in suppressor 44 16 will generally remain therein ….” (Spec. 7: ¶ [0022]). Further, the 17 Appellant’s Specification and Claims describe and call for “a substantially 18 fixed mass of a compressible substance” wherein the substantially fixed 19 mass of a compressible substance occupies a volume that varies (Spec. 7-8: 20 ¶ [0023] and claim 1 (reproduced above)). 21 The ordinary and customary meaning of the word “fixed” includes 22 “not subject to change or variation; constant.” Further, the ordinary and 23 customary meaning of the word “mass” includes “the property of a body that 24 is the measure of inertia and that is commonly taken as a measure of the 25 Appeal 2009-002551 Application 11/410,596 4 amount of material it contains and causes it to have weight in a gravitational 1 field.” MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (10th ed. 1996). 2 Therefore, one having ordinary skill in the art would understand that 3 the phrase a “substantially fixed mass” requires a weight that is substantially 4 constant. The Appellant’s Specification and Claims are not inconsistent 5 with the ordinary and customary meaning of the terms “fixed” and “mass.” 6 Romstaedt describes an air vessel for a water supply pipe including 7 upper and lower chambers b, a; an opening b' between the chambers b, a; a 8 valve seat c formed around the opening b'; a pipe g in communication with 9 lower chamber a; a valve seat g' formed in the upper end of pipe g; and a 10 valve e seating loosely upon valve seat c and a valve d seating loosely upon 11 valve seat g' (p. 1, ll. 22-57). 12 Romstaedt further describes that “[t]he two valves d and e are not 13 intended to be a tight fitting but should permit the passage of air and water in 14 a limited volume ….” (p. 1, ll. 76-78). Since a limited volume of air is 15 intended to pass through valve d; the weight of the air in the upper and lower 16 chambers b, a is not intended to remain substantially constant, that is, it is 17 subject to change. Thus, the air in the upper and lower chambers b, a is not 18 a substantially fixed mass. Therefore, Romstaedt does not describe a 19 substantially fixed mass of compressible substance as called for in claims 1 20 and 15. 21 Accordingly, Romstaedt does not anticipate claims 1 and 15. For the 22 same reasons, Romstaedt does not anticipate claims 2-7 and claims, 17, 19, 23 22, 26 and 27, which depend from claims 1 and 15, respectively. 24 The Examiner has not articulated a valid reason to modify Romstaedt 25 in the manner called for in claims 21 and 23-25. See KSR Int'l Co. v. 26 Appeal 2009-002551 Application 11/410,596 5 Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness 1 grounds cannot be sustained by mere conclusory statements; instead, there 2 must be some articulated reasoning with some rational underpinning to 3 support the legal conclusion of obviousness”). 4 Therefore, for the same reasons set forth above, Romstaedt does not 5 render obvious claims 21 and 23-25, which depend from claims 1, 4 and 5, 6 respectively. 7 The Examiner has not relied on Hajek for any teaching that would 8 remedy the deficiency in Romstaedt (Ans. 5, 6, 9). We thus conclude that 9 the Examiner also erred in rejecting claim 18 over Romstaedt in view of 10 Hajek. 11 12 CONCLUSION OF LAW 13 The Appellant has established that the Examiner erred in finding that 14 Romstaedt describes a substantially fixed mass of a compressible substance 15 as called for in claims 1 and 15. 16 17 DECISION 18 The decision of the Examiner to reject claims 1-7, 15, 17, 19, 21-27 19 over Romstaedt, and claim 18 over Romstaedt in view of Hajek is reversed. 20 21 REVERSED 22 23 24 Vsh 25 26 27 Appeal 2009-002551 Application 11/410,596 6 RADER, FISHMAN & GRAUER PLLC 1 39533 WOODWARD AVENUE 2 SUITE 140 3 BLOOMFIELD HILLS, MI 48304-0610 4