Ex Parte Harbu

Board of Patent Appeals and Interferences

Aug 17, 2006

10293833 (B.P.A.I. Aug. 17, 2006)

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for publication and is not binding precedent of the Board.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 JULIAN HARBU

____________

Appeal No. 2006-0320
Application No. 10/293,833
____________

ON BRIEF
____________

Before FRANKFORT, BAHR, and LEVY, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 10 through 27, all of the claims remaining
in the application. Claims 1 through 9 have been canceled.1

1 Claims 10, 14, 20, 23 and 26 were amended subsequent to
the final rejection in a paper filed concurrently with the brief
on March 2, 2005.

Appellant’s invention relates to a non-metallic gas valve
assembly for a shock absorber and to a shock absorber assembly
including such a non-metallic valve assembly. Independent claims
Appeal No. 2006-0320
Application No. 10/293,833

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10, 23 and 26, each of which are directed to a shock absorber
assembly, are representative of the subject matter on appeal
and a copy of those claims can be found in the amendment filed
March 2, 2005.

The prior art references of record relied upon by the
examiner in rejecting the claims on appeal are:
Gibson, Jr. (Gibson) 3,100,498 Aug. 13, 1963
Martin 4,568,081 Feb. 4, 1986

In addition to the foregoing prior art patents, the examiner
has also relied upon appellant’s admitted prior art (AAPA) found
in paragraph 3 on page 1 of the specification.

Claims 10 through 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over AAPA in view of Martin and Gibson.2

2 As indicated on page 10 of the answer, the examiner
has determined that the amendment filed March 2, 2005 has
overcome the rejection of claims 10 through 27 under 35 U.S.C.
§ 112, second paragraph, set forth on pages 3-4 of the final
Appeal No. 2006-0320
Application No. 10/293,833

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rejection. Thus, that rejection is no longer before us on
appeal.
Rather than reiterate the examiner's specific comments
regarding the above-noted obviousness rejection and the
conflicting viewpoints advanced by the examiner and appellant
regarding that rejection, we make reference to the examiner's
answer (mailed June 6, 2005) for the reasoning in support of the
rejection, and to appellant’s brief (filed March 2, 2005) and
reply brief (filed June 27, 2005) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the examiner’s
Appeal No. 2006-0320
Application No. 10/293,833

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above-noted rejection under 35 U.S.C. § 103(a) will not be
sustained. Our reasons follow.

The examiner’s basic position concerning the rejection of
claims 10 through 27 is set forth on pages 4-10 of the answer.3
For argument sake, in considering the examiner’s obviousness
rejection of the appealed claims, we have made the assumption
that the examiner has correctly determined that Martin and Gibson
are analogous prior art. However, after a consideration of the
collective teachings of the applied patents and the AAPA, we
must agree with appellant that there is no reasonable teaching,
suggestion or motivation in the AAPA or either of Martin and
Gibson, considered individually or collectively, for making the
particular combination asserted by the examiner. In the final

3 Although the examiner has determined that the AAPA “lacks
a valve as claimed” (answer, page 4), we note that the claims on

appeal do not actually recite a gas valve or gas valve assembly
associated with or forming a part of the shock absorber assembly
defined therein. The claims on appeal merely recite some
structure having a first portion mounted within a threaded
opening of the shock absorber body and being formed of a first
non-metallic material, and a second portion formed of a second
non-metallic material less rigid than the first material and
comprising a plug and a seal interconnected by a connecting
member.

Appeal No. 2006-0320
Application No. 10/293,833

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analysis, it is our view that the examiner is using the hindsight
benefit of appellant’s own disclosure to combine the non-metallic
needle valve assemblies shown and described in Martin and Gibson,
where they are used for inflating footballs, basketballs and
soccer balls having an operating pressure in the range of about
3 psi, with the clearly distinct field of vehicle shock absorbers
of the type described in the AAPA, where significantly higher
pressures would be involved.

From our perspective, the examiner has merely used
appellant’s claimed invention as an instruction manual or
"template" in an attempt to piece together disparate teachings of
the prior art so that the claimed invention is rendered obvious.
This approach to a determination of obviousness is improper and
cannot be sanctioned by this Board. See In re Gorman, 933 F.2d
982, 987, 18 USPQ2d 1885, 1888 (Fed Cir. 1991) and Interconnect
Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547
(Fed. Cir. 1985).

In formulating the rejection on appeal, the examiner
appears to have lost sight of the fact that when determining
Appeal No. 2006-0320
Application No. 10/293,833

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the patentability of a claimed invention which relies on the
combination of two known elements, the question to be answered
is whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making
the combination. In this case, we find that there is simply
nothing in the disparate teachings of the applied prior art
patents and the AAPA which would have indicated a desirability
for their combination and thus have led one of ordinary skill
in the art at the time of appellant’s invention to such a
combination.

Since we have determined that the teachings and suggestions
found in the AAPA, Martin and Gibson would not have made the
subject matter as a whole of independent claims 10, 23 or 26 on
appeal obvious to one of ordinary skill in the art at the time of
appellant’s invention, we must refuse to sustain the examiner’s
rejection of those claims under 35 U.S.C. § 103(a). It follows
that the examiner’s rejection of dependent claims 11 through 22,
24, 25 and 27 under 35 U.S.C. § 103(a) based on the AAPA, Martin
and Gibson also will not be sustained.

Appeal No. 2006-0320
Application No. 10/293,833

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In light of the foregoing, the decision of the examiner is
reversed.

Appeal No. 2006-0320
Application No. 10/293,833

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REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
Appeal No. 2006-0320
Application No. 10/293,833

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