Ex Parte Karaki et alDownload PDFBoard of Patent Appeals and InterferencesAug 19, 200810450820 (B.P.A.I. Aug. 19, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte TAKUYA KARAKI, AKIHIKO KITANO, and SHOJI MURAI ________________ Appeal 2007-2737 Application 10/450,820 Technology Center 3600 ________________ Decided: August 19, 2008 ________________ 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: Appeal 2007-2737 Application 10/450,820 2 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 Appeal 2007-2737 Application 10/450,820 3 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 Appeal 2007-2737 Application 10/450,820 4 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 Appeal 2007-2737 Application 10/450,820 5 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 Appeal 2007-2737 Application 10/450,820 6 LV: MORRISON & FOERSTER LLP 1650 TYSONS BOULEVARD SUITE 400 MCLEAN, VA 22102 Copy with citationCopy as parenthetical citation