Ex Parte Figura

Patent Trial and Appeal Board

Mar 23, 2017

12186629 (P.T.A.B. Mar. 23, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/186,629 08/06/2008 Michael Georg Figura 81178956 1530
73442 7590 03/27/2017
JONES ROBB, PLLC (w/Ford Motor Co.)
1420 Spring Hill Road
Suite 325
McLean, VA 22102
EXAMINER
NGUYEN, XU AN LAN T
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
03/27/2017 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):
elizabeth.burke@jonesrobb.com
docketing @j onesrobb. com
susanne.jones @j onesrobb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL GEORG FIGURA
Appeal 2015-006399
Application 12/186,629
Technology Center 3600
Before CHARLES N. GREENHUT, FRANCES L. IPPOLITO, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 1—9 and 20-34 under 35 U.S.C. § 103(a) as being
unpatentable over Spaltofski (US 5,123,625; iss. June 23, 1992) and Song
(EP 1 526 212 A2; pub. Apr. 27, 2005).3 We have jurisdiction under
35 U.S.C. § 6(b).
1 Appellant identifies the real party in interest as Ford Global Technologies,
LLC. Appeal Br. 2.
2 Appeal is taken from the Final Office Action dated April 2, 2014 (“Final
Act.”).
3 The Examiner’s rejection of claims 1—9 and 20—28 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement has
Appeal 2015-006399
Application 12/186,629
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 1 and 29 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claims on appeal, with disputed
limitations italicized for emphasis.
1. A silent block comprising:
a first basic element including a threaded bolt;
a rubber body at least partially surrounding the first basic
element, the rubber body having a bearing side having a bearing
surface oriented toward a fastening side of the silent block,
a radially inner projection and a radially outer projection
on the bearing side of the rubber body, each of the radially inner
projection and the radially outer projection projecting outwardly
away from the bearing surface of the rubber body in a direction
of the fastening side, the radially inner projection being circular
and surrounding the threaded bolt and the radially outer
projection being spaced from the radially inner projection in a
radial direction and surrounding the radially inner projection, the
radially outer projection being substantially concentric with the
radially inner projection;
radially extending connecting projections projecting
outwardly away from the bearing surface of the rubber body, the
radially extending connecting projections extending from the
radially inner projection to the radially outer projection, and
being spaced along a circumference of the bearing surface; and
expansion spaces on the bearing side of the rubber body,
the expansion spaces comprising recesses located between
adjacent connecting projections and between the radially inner
projection and the radially outer projection.
been withdrawn. See Final Act. 2; Ans. 2.
2
Appeal 2015-006399
Application 12/186,629
ANALYSIS
Independent claim 1 and dependent claims 2—9 and 20—28
Regarding independent claim 1, the Examiner finds that Spaltofski’s
rod T, head t, and plate P2 correspond to the claimed first basic element, and
that Spaltofski’s element 1 corresponds to the claimed rubber body. Final
Act. 3 (citing Spaltofski, Fig. 4). The Examiner determines that the bearing
surface of Spaltofski’s element 1 is “the bottom surface of groove [(or gaps)]
6.” Ans. 6. The Examiner also finds that Spaltofski discloses a radially
inner projection being spaced from a radially outer projection in a radial
direction. Id. The Examiner identifies the radially inner and radially outer
projections, as well as connecting projections and expansion spaces, as
indicated by the Examiner in the Examiner-annotated Figures 2 and 3 of
Spaltofski, reproduced below. Final Act. 3^4.
3
Appeal 2015-006399
Application 12/186,629
Figures 2 and 3 of Spaltofski respectively depict a diametrical view and a
top view of a resilient support element, annotated by the Examiner to
identify inner, outer, and connecting projections, and expansion spaces. Id.
at 5. Regarding the radially outer projection, the Examiner finds that “the
outer projection is a collection of arch shaped portions.” Ans. 8 (citing
Spaltofski, Fig. 3). The Examiner determines that Spaltofski does not
disclose that rod T is a threaded bolt, and relies on Song for teaching
threaded part 11, reasoning that it would have been obvious “to have
employed a threaded bolt such as taught by Song in the block of Spaltofski
in order to provide a secured yet adjustable connection.” Id. at 4.
4
Appeal 2015-006399
Application 12/186,629
Appellant argues, inter alia, that Spaltofski’s stud 5 “cannot satisfy all
of the features of the recited radially inner and outer projections.” Appeal
Br. 16. Specifically, Appellant argues that because Spaltofski’s “stud 5 is a
unitary piece that extends in a radial direction from a center ... to an outer
edge of [element 1], without any apparent differentiation between the inner
portion of the stud 5 and the outer portion of the stud[,] . . . there is no
spacing in a radial direction” between the radially inner and outer
projections as required by claim 1. Appeal Br. 16—17. Appellant submits
that “the outer portion of element 5 [is] separated from the inner portion of
element 5 only by an arbitrarily drawn imaginary line fashioned by the
[Examiner].” Id. at 17.
The Examiner responds that the Specification depicts inner and outer
projections 7, 8 as also being a unitary piece. Ans. 6 (Figs. 1, 2); see also
Spec. 132 (“As shown in Figures 1 and 2, a radially inner projection 7 is
radially spaced from a radially outer projection 8.”). The Examiner
determines that “Appellant’s silent block also has no distinction between the
projections because they are also the same one piece, one surface.” Ans. 8.
Based on the record before us, we agree with Appellant that the
Examiner relies upon Spaltofski’s external studs 7 to arbitrarily divide
portions of studs 5 into inner, outer, and connecting projections. Appeal Br.
16; see Ans. 6—7. Turning to the Examiner’s annotated versions of
Spaltofski’s Figures 2 and 3, we note that the Examiner relies on the
“collection of arch shaped portions” in Spaltofski’s Figure 3 for the claimed
outer projections. Ans. at 8. However, based on the record before us, the
Examiner has not explained sufficiently why one of ordinary skill in the art
would view Figure 3 as containing three separate projections, including a
5
Appeal 2015-006399
Application 12/186,629
“collection of arch shaped portions,” differentiated from the rest of stud 5’s
structure. Rather, Appellant’s position is consistent with Spaltofksi’s
description of embodiments depicted in Figures 1 to 3, as relied on by the
Examiner, that include
[ejlement 1, made in one piece from moulded elastomer,
comprises a central body 4 covered, on each of its two opposite
faces, with a first series of base studs 5 of reduced cross section,
in the form of sectors of a circle with equal angles at the centre
and separated equi-angularly by radial gaps 6.
Spaltofski 3:47, 55—60, Figs, 1—3. Spaltofski further discloses that
“[e]ach base stud 5 serves as a substructure for an external stud of
appreciably smaller cross section 7.” Id. at 3:60-62.
Appellant’s position is also consistent with the disclosure of the
Specification, which provides that “the bearing side of the rubber body has
expansion spaces and projections arranged to look like slices of cake, a
radially inner projection being connected to a radially outer projection via
connecting projections.” Spec. 120, Fig. 3 (emphasis added). In other
words, the inner and outer projections, as described in the Specification, are
radially spaced and differentiated structurally by expansion spaces, or
recesses, that define each projection as separately claimed. Id. Thus, we
agree with Appellant that the Examiner has arbitrarily identified portions of
the sectors of the circle forming studs 5 to meet the claimed inner, outer, and
connecting projections, without support in Spaltofski for doing so.
Appellant also argues that “the elements identified [(by the
Examiner)] as the inner projection and the outer projection (portions of
element 5) do not ‘project[] outwardly away from the bearing surface of the
rubber body in a direction of the fastening side’ as recited in independent
claim 1 but rather form the bearing surface.’” Appeal Br. 18 (alteration in
6
Appeal 2015-006399
Application 12/186,629
original). We agree. Spaltofski’s Figure 3, which is annotated by the
Examiner supra, “is a top view” of the support element depicted in Figure 1.
Spaltofski 3:12 (emphasis added). Spaltofski discloses that “element 1 ... is
compressed between . . . chassis C,from underneath, and another abutment
plate P2 . . ., whose bottom is engaged in the widened portion 3 of the hole
which passes through the element and is held in position by the head t of rod
T.” Id. at 4:3—8, Fig. 4. As depicted in Figure 4 of Spaltofski, rod T is
inserted into bottom side of Spaltofski’s element 1. Id., Fig. 4. Therefore,
we are persuaded that the record supports Appellant’s argument that the
bottom side of Spaltofski’s element 1 is the bearing surface oriented toward
a fastening side, as claimed. Thus, the Examiner erred by relying on
structures on the top side of element 1 as depicted in Figure 3 as meeting the
recitations of claim 1, because such structures do not project outwardly away
from the bearing surface of the rubber body in a direction of the fastening
side, as required by claim 1. Spaltofski, 3:7—9 (“FIG. 1 is a bottom view of
a resilient support element”); cf. id. at 3:12 (“FIG. 3 is a top view of same
[(Figure 1)] element.”).
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2—9 and 20—28 depending therefrom.
Independent claim 29 and dependent claims 30—34
The Examiner appears to rely on the same findings with respect to the
radially inner and outer projection limitations of claim 29 as relied upon for
the limitations of claim 1, including the projections projecting from a
bearing side of the rubber body (element 1), which is oriented toward a
fastening side. Final Act. 8—9. Appellant argues that “Spaltofski lacks
sufficient disclosure of a radially outer projection on the bearing side for at
7
Appeal 2015-006399
Application 12/186,629
least the reasons set forth [(with respect to claim 1)].” Appeal Br. 24. We
agree for the reasons set forth supra.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 29 and claims 30—34 depending therefrom.
DECISION
The Examiner’s decision to reject claims 1—9 and 20—34 is
REVERSED.
REVERSED
8