Ex Parte Hanna et al

Patent Trial and Appeal Board

Jun 3, 2016

11780679 (P.T.A.B. Jun. 3, 2016)

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.
11/780,679 07/20/2007 Michael D. Hanna GP-309091-R&D-JMC 4482
104102 7590 06/03/2016
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
06/03/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MICHAEL D. HANNA, MOHAN SUNDAR,
JAMES G. SCHROTH, and THOMAS C. ZEBEHAZY
____________________

Appeal 2014-008373
Application 11/780,679
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JENNIFER R. GUPTA, Administrative Patent Judges.

GUPTA, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1–4, 8, 12, 13, 17–23, and 42–54. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the real party in interest as General Motors LLC.
Appeal Brief filed April 7, 2014 (“App. Br.”), 3.
2 Final Office Action mailed November 7, 2013 (“Final Act.”).
Appeal 2014-008373
Application 11/780,679

2
The claims are directed to a method of manufacturing a damped part.
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A method comprising:
providing a first portion of a part;
providing a second portion of the part, and wherein at least one
of the first portion or the second portion has at least a first cavity;
providing a frictional damping insert constructed and arranged to
provide frictional damping of the part, the insert having thereon
a coating comprising at least one of particles or fibers;
positioning the insert so that at least a portion of the insert is
received in the first cavity, and wherein frictional contact
surfaces are provided by at least one of the first portion of the
part or the second portion of the part and at least one of the insert,
the coating on the insert, or the particles or the fibers, the
frictional contact surfaces being constructed and arranged so that
at least a portion of the frictional contact surfaces move against
each other in frictional contact during vibration of the part so that
the frictional contact damps vibration of the part; and
joining the first portion and the second portion of the part to
enclose the insert, wherein the insert and at least one of the first
portion or second portion are in frictional contact so that the
insert moves relative to at least one of the first portion or second
portion of the part to provide the frictional damping.
See App. Br. 44 (Listing of the Claims) (emphasis added to identify the
disputed language).
We will focus on representative independent claim 1 because it
contains the argued limitations that also are present in independent claim 54.
Appeal 2014-008373
Application 11/780,679

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REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1–3, 12, 13, 17, 19, 20, 23, 42, 44–47, 50, and 52–54 are
rejected under 35 U.S.C. § 102(b) as anticipated by Diemer et al.
(US 6,732,846 B2, issued May 11, 2004) (hereinafter Diemer);
2. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Diemer in
view of Lindauer et al. (US 2005/0189194 A1, published
September 1, 2005) (hereinafter “Lindauer”);
3. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Diemer in
view of Lindauer and Shima et al. (JP 2002-174281 A, published
June 21, 2002) (hereinafter “Shima”);
4. Claims 18, 22, and 43 under 35 U.S.C. § 103(a) as unpatentable
over Diemer in view of Chen et al. (US 2004/0043193 A1,
published March 4, 2004);
5. Claims 21, 48, and 49 under 35 U.S.C. § 103(a) as unpatentable
over Diemer in view of Nishimura et al. (US 4,585,691, issued
April 29, 1986); and
6. Claim 51 under 35 U.S.C. § 103(a) as unpatentable over Diemer in
view of Lam et al. (US 2006/0241207 A1, published October 26,
2006) (hereinafter “Lam”).
Examiner’s Answer mailed June 3, 2014 (“Ans.”), 2–10.
DECISION
Anticipation Rejection (Rejection 1)
Appellants request reversal of the anticipation rejection on the basis
that the Examiner erred in finding that Diemer discloses an insert and at least
Appeal 2014-008373
Application 11/780,679

4
one of the first portion or second portion are in frictional contact so that the
insert moves relative to at least one of the first portion or second portion of
the part to provide frictional damping (see claim 1, last clause). See App.
Br. 21–25.
With respect to the argued claim limitation, the Examiner relies on
column 1, lines 30–56, column 3, lines 32–54, column 4, lines 30–50, and
Figure 5 of Diemer as disclosing “insert 34 and at least one of the first
portion 14 or second portion 18 are in frictional contact (at parts 60) so that
the insert 34 moves relative to at least one of the first portion 14 or second
portion 18 of the part to provide the frictional damping.” Ans. 3.
We have considered the relied-upon disclosure in Diemer, and agree
with Appellants that there is no disclosure (express, implicit, or inherent) of
an insert and at least one of the first portion or the second portion in
frictional contact so that the insert moves relative to at least one of the first
portion or second portion of the part to provide frictional damping. See
Diemer Fig. 1; 3:44–47 (“When acted upon by the energy storing device 20,
the friction lining elements 34 of the pressure plate 18 are pressed against
the radially outer area 40 of the clutch disk 30, and thus this radially outer
area 40 . . . is pressed against the friction surfaces 36 of the friction lining
elements 34 provided on the flywheel 14. In this way, the frictional
interaction is established between the clutch disk 30 . . . and the flywheel 14
and the pressure plate 18”); see id. at 1:14–18 (describing that the frictional
lining 34 acts on the clutch disk 30 to transmit torque); see also id. at Fig. 4;
4:30–42 (describing that retaining projections 60 prevent the friction lining
element 34 from falling out of the recesses 44).
Appeal 2014-008373
Application 11/780,679

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Thus, we agree with Appellants that there is insufficient evidentiary
support for the reasoning advanced by the Examiner in finding that all
limitations of independent claims 1 and 54 are met by Diemer. Accordingly,
we reverse the rejection of claims 1–3, 12–13. 17, 19, 20, 23, 42, 44–47, 50,
and 52–54 as anticipated by Diemer.
Obviousness Rejections (Rejections 2–5)
Claims 4, 8, 18, 21, 22, 43, 48, 49, and 51 depend directly or
indirectly from claim 1. The Examiner relies upon the factual
determinations made in the anticipation rejection of claim 1 in each of the
obviousness rejections. Because the anticipation rejection is based on
erroneous factual determinations, as discussed above, we reverse the
additional obviousness rejections.

REVERSED