Ex Parte Karaki et al

Board of Patent Appeals and Interferences

Aug 19, 2008

10450820 (B.P.A.I. Aug. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAKUYA KARAKI, AKIHIKO KITANO, and
SHOJI MURAI
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Appeal 2007-2737
Application 10/450,820
Technology Center 3600
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Decided: August 19, 2008
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Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and
DAVID B. WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. §§ 6(b) and 134(a) from the final
rejection of claims 3-10 and 18-20.
Representative claim 3, from which all appealed claims depend, reads
as follows:
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3. An impact energy absorption device,
comprising:
a single elongated part made of a high
strength material,
at least one column having upper and lower
faces disposed to substantially surround the
elongated part, and
an upper platen and a lower platen disposed
to keep the upper and lower faces of the column
between the platens and to cover the upper and
lower faces of the column respectively,
an upper platen being attached to each end
of the elongated part,
the elongated part, the at least one column
and the upper and lower platens being so
configured and connected relative to each other so
as to constitute a structural system in which a
deformation of the elongated part caused by an
impact force applied to it causes the upper platen
and the lower platen to move toward each other
and contact the upper and lower faces of the
column, respectively, in planes, thus
compressively deforming the at least one column
to absorb the impact energy of the impact force.

The reference set forth below is relied upon as evidence in support of
the rejections:

Muller US 5,547,310 Aug. 20, 1996
Ochi JP 07224875 A Aug. 22, 1995

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Claims 3, 7-10, 18 and 20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Muller. Claims 3-10 and 18-20 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Ochi in view of Muller.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
Id. at 1445. See also Piasecki, 745 F.2d at 1472. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki,
745 F.2d at 1472.
All of the rejected claims include the limitation that deformation of
the elongated part caused by an impact force applied to it causes the upper
platen and the lower platen to 1) move toward each other; and 2) contact the
upper and lower faces of the column.
Appellants argue that Muller and Ochi both fail to disclose the
limitation that the upper and lower platens contact the upper and lower faces
of the column upon impact (Br. 5-7). The Appellants’ argument is
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predicated on their interpretation of the claim limitation “deformation of the
elongated part caused by an impact force applied to it causes the upper
platen and the lower platen to move toward each other and contact the upper
and lower faces of the column” to mean that there must initially be a
clearance between the upper and lower platens and the respective faces of
the column before impact (Br. 5-6). The Appellants thus argue that Muller
does not meet this limitation because the spring 34 is already in contact with
the nut 33 and the strong plate 31 prior to an impact (Br. 6). The Appellants
further argue that Ochi does not meet the limitation because when Ochi’s
guardrail is erected, the bottom surface of energy absorption member 14 is in
contact with bottom wall 13a of energy absorption box 13, and trigger
portion 14a is in contact with pressing member 15 (Br. 7 referring to Ochi,
[0030]).
We agree. In order for the deformation of the elongated part caused
by an impact force applied to it to cause the upper and lower platens to
“contact the upper and lower faces of the column, respectively, in planes,
thus compressively deforming the at least one column to absorb the impact
energy of the impact force,” at least one of the platens must initially not be
in contact with its respective face of the column. Otherwise, the contact of
the upper and lower platens with the column would not be caused by the
deformation of the elongated part as required by claim 3.
Because the respective parts of Muller and Ochi that the Examiner
relies on as corresponding to the upper and lower platens and the column are
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in contact prior to any impact, neither Muller nor Ochi meets the disputed
claim limitation. Because all of the claims on appeal include the disputed
claim limitation, the Examiner has failed to establish a prima facie case of
anticipation of claims 3, 7-10, 18, and 20 over Muller and a prima facie case
of obviousness of claims 3-10 and 18-20 over Muller in view of Ochi.
The decision of the Examiner is reversed.
REVERSED

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