Ex Parte Hall

Board of Patent Appeals and Interferences

Feb 28, 2007

10256703 (B.P.A.I. Feb. 28, 2007)

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for publication and is not binding precedent of the Board.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 EVERETT HALL
____________

Appeal 2006-1143
Application 10/256,703
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ON BRIEF
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Before PATE, BAHR, and NAPPI, Administrative Patent Judges.

PATE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 2, 5-7 and 9. Claims 17-22
were previously allowed, and claims 10-13 and 15 were allowed in the examiner's
answer. Claims 8 and 16 stand objected to as depending from a rejected independent
claims. These are all the claims in the application.
The claimed invention is directed to a suspension system for an automobile that
has front and rear hydraulic actuators. Claim 1, reproduced below, is further illustrative
of the claimed subject matter.
1. A suspension system for a vehicle, comprising:

a vehicle frame having a front section and a rear section;
Appeal 2006-1143
Application 10/256,703

a first front hydraulic actuator and a second front hydraulic actuator in said front
section;

a first rear hydraulic actuator and a second rear hydraulic actuator in said rear
section;

a piston defining a first fluid chamber and as second fluid chamber within each of
said first and second front hydraulic actuators and first and second rear hydraulic
actuators;

a rod disposed in each of said second fluid chambers and operatively connected to
said piston of each of said first and second front hydraulic actuators and first and second
rear hydraulic actuators, wherein said first fluid chamber of said first front hydraulic
actuator is in fluid communication with said second fluid chamber of said second front
hydraulic actuator and wherein said first fluid chamber is said first rear hydraulic
actuator is in fluid communication with said second fluid chamber of said second rear
hydraulic actuator; and
a coupler that selectively fluidically couples and decouples at least one of said
first and second front hydraulic actuators and at least one of said first and second rear
hydraulic actuators.

The references of record relied upon by the examiner as evidence of obviousness
are:
Tschanz 2,184,202 Dec. 19, 1939
Wilfert 3,881,736 May 6, 1975
The examiner has rejected claims 1, 2, 5-7 and 9 under 35 U.S.C.
§ 103 as unpatentable over Wilfert in view of Tschanz.
ISSUES
Appellant has two principal arguments with respect to the obviousness rejection.
The first argument is that Tschanz does not show front and rear actuators that are
selectively coupled. Appellant's second argument is that there is no teaching, suggestion,
or motivation for combining the collective disclosures of Wilfert and Tschanz.
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Application 10/256,703

Accordingly, the sole issue on appeal is whether the examiner has by a
preponderance of the evidence established a prima facie obviousness of claims 1, 2, 5-7
and 9.
FINDINGS OF FACT
Wilfert discloses a suspension system for a vehicle with a vehicle frame having
front and rear sections. A first front and second front actuator are provided at 27 along
with the two rear actuators 27. A piston divides each actuator chamber into two fluid
chambers. Wilfert discloses that the first fluid chamber of the first front hydraulic
actuator is in fluid communication with the second fluid chamber of the second front
hydraulic actuator and vice versa. The same is true of Wilfert's rear actuators. We agree
with the examiner that Wilfert does not show us a coupler for selectively fluidly coupling
and decoupling at least one of the first and second front hydraulic actuators to said first or
second rear hydraulic actuator.
Tschanz also discloses a hydraulic suspension system for a vehicle. The system
includes two front hydraulic actuators, 1, 2, and two rear hydraulic actuators, 3, 4.
Tschanz further discloses multiple ways for a coupling the front and rear hydraulic
actuators. For example, it appears that hydraulic actuator 2 is always coupled to
hydraulic actuator 3 via 8, 25 and 15. However, it is our finding and agreement with the
examiner that large displacements of piston 5 in cylinder 24 for example, cause valve 10
to reciprocate to the left, open and bypass 12, and allowing communication via 24 and 15
with rear cylinder 4. Therefore, we are in agreement that Tschanz does allow for
selective coupling of front and rear actuators.

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Application 10/256,703

PRINCIPALS OF LAW
Precedent requires that to find a combination obvious there must be some
teaching, suggestion, or motivation in the prior art to select the teachings of separate
references and combine them to produce the claimed combination. In re Johnston,
435 F.3d 1381, 1384, 77 USPQ2d 1788, 1790 (Fed. Cir. 2006) (citing Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385, 58 USPQ2d 1286, 1293 (Fed. Cir.
2001) ("In holding an invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the references and combine them in the way
that would produce the claimed invention.")); In re Dance, 160 F.3d 1339, 1343,
48 USPQ2d 1635, 1637 (Fed. Cir. 1998) ("When the references are in the same field as
that of the applicant's invention, knowledge thereof is presumed. However, the test of
whether it would have been obvious to select specific teachings and combine them as did
the applicant must still be met by identification of some suggestion, teaching, or
motivation in the prior art, arising from what the prior art would have taught a person of
ordinary skill in the field of the invention."); In re Fine, 837 F.2d 1071, 1075, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) (there must be "some objective teaching in the prior art or
that knowledge generally available to one of ordinary skill in the art would lead that
individual to combine the relevant teachings of the references").
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Application 10/256,703

However, this is not to imply that the teaching suggestion or motivation must be
found explicitly in the prior art, since “the teaching, motivation, or suggestion may be
implicit from the prior art as a whole, rather than expressly stated in the references….”
In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)(citing In re
Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000)).
When the examiner does not include a teaching, suggestion, or motivation in the
examiner’s statement of the rejection, we infer that the examiner has used hindsight to
conclude the invention was obvious. See Kahn at 986, 78 USPQ2d at 1335.
ANALYSIS
We are in agreement with the examiner that Tschanz discloses both continuous
coupling of the front and rear actuators and selective coupling thereof. While appellant
argues that claim 1 comprehends only selective coupling, the open ended comprising
language thereof does not preclude reading on systems that permits both permanent
coupling and selective coupling in the same system. Therefore, we do not credit
appellant's argument that Tschanz does not have selective coupling.
On the other hand, it is our conclusion of law that there is no teaching, suggestion,
or motivation for combining the subject matter of Tschanz and Wilfert. We agree with
the appellant that incorporating the coupling mechanisms taught by Tschanz into the
system of Wilfert would significantly change the Wilfert system and undermine its
principle of operation. For example, Tschanz discloses direct connections between the
similarly situated chambers in the front and rear actuators. Wilfert on the other hand,
discloses a sort of cross over system where the A chambers are connected to the B
chambers on the opposite side of the vehicle. In our view, one of ordinary skill would
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Application 10/256,703

not be motivated to use the coupling of Tschanz in the Wilfert device inasmuch as the
front and rear actuators are connected in a contrary manner. Therefore, we can only
conclude that the examiner's combination of references is based on an impermissible
hindsight reconstruction of appellant's claimed subject matter.
CONCLUSION OF LAW
For the reasons given above, it is our conclusion of law that the examiner has not
established, by a preponderance of the evidence, a prima facie case of obviousness with
respect to the claims on appeal.
ORDER
The rejections of claims 1, 2, 5-7 and 9 are reversed.
REVERSED

)
William F. Pate, III )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Jennifer D. Bahr )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Robert E. Nappi )
Administrative Patent Judge )

WFP/jrg

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Appeal 2006-1143
Application 10/256,703

Carlson, Gaskey & Olds, P.C.
400 West Maple Road
Suite 350
Birmingham, MI 48009

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