Ex Parte Kern

Patent Trial and Appeal Board

Jun 28, 2016

11462439 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111462,439 08/04/2006 John Louis Kern
39083 7590 06/30/2016
KENEALY VAIDYA LLP
3000 K Street, N.W.
Suite 310
Washington, DC 20007
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HRA3009-0032 5285
EXAMINER
NGUYEN, XUAN LANT
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
06/30/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
avaidya@kviplaw.com
uspto@kviplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte JOHN LOUIS KERN
Appeal2014-001788 1
Application 11/462,4392
Technology Center 3600
Before ANTON W. PETTING, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 4, 7-9, 11, 13, 14, and 18-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
Apr. 10, 2013) and Reply Brief ("Reply Br.," filed Oct. 22, 2013), and the
Examiner's Answer ("Ans.," mailed Aug. 22, 2013) and Non-Final Office
Action ("Non-Final Act.," mailed Aug. 22, 2012).
2 Appellant identifies Honda Motor Co. Ltd. as the real party in interest.
App. Br. 3.
Appeal2014-001788
Application 11/462,439
CLAIMED INVENTION
Appellant's claimed invention "relates to an engine mount that
includes a stopper having a bladder mechanism or fluid cushion system."
Spec. ,-r 1.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. An engine mount for use with a vehicle that includes
a vehicle power system, a vehicle frame, and a vehicle body,
compnsmg:
a first connection device configured to connect to the
vehicle power system;
a second connection device configured to connect to one
of the vehicle frame and the vehicle body;
a damper system located adjacent the first connection
device and second connection device and configured to prevent
transmission of at least one of vibration and motion between the
first connection device and the second connection device; and
a stopper mechanism located adjacent to one of the first
connection device and second connection device and configured
such that it provides an ultimate limit for one of axial and radial
movement of the first connection device relative to the second
connection device, the stopper mechanism including a first
bladder device, wherein the first bladder device includes a
hollow sealed elastomeric bladder formed from an elastic
material that completely seals a hollow portion and a liquid
contained within the hollow portion;
wherein the hollow sealed elastomeric bladder has a first
position prior to an input to the engine mount such that the
hollow sealed elastomeric bladder is completely spaced from one
of the first connection device and the second connection device
and the hollow sealed elastomeric bladder has a second position
in response to an input to the engine mount such that the hollow
sealed elastomeric bladder engages the one of the first
connection device and the second connection device when the
hollow sealed elastomeric bladder is in the second position, and
the liquid limits maximum compression of the hollow sealed
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Application 11/462,439
elastomeric bladder when the hollow sealed elastomeric bladder
engages the one of the first connection device and the second
connection device.
REJECTIONS
Claims 1, 2, 4, 7-9, 11, 13, and 14 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. 3
Claims 11 and 14 are rejected under 35 U.S.C. § 102(b) as anticipated
by Shimoda (JP 62-209241, pub. Sept. 14, 1987)4 .
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shimoda and Tanaka (US 6,557,839 B2, iss. May 6, 2003).
Claims 1, 5, 7, 8, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shimoda and Fader (US 2007 /0131501 Al, pub. June 14,
2007).
Claims 2 and 4 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Shimoda; Fader; and Tanaka.
ANALYSIS
Indefiniteness
Claim 1 recites an engine mount comprising, in part, a hollow sealed
elastomeric bladder having "a first position prior to an input to the engine
3 The Examiner has withdrawn the rejection of claim 5 under 35 U.S.C.
§ 112, second paragraph. Ans. 3.
4 In the Non-Final Rejection, the Examiner relies on an English-language
abstract of the Japanese patent. We refer to the English-language abstract as
"Shimoda." In the Answer, the Examiner provides an English-language
translation of the Japanese patent. We refer to the English-language
translation as "Shimoda Translation."
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Appeal2014-001788
Application 11/462,439
mount ... and a second position in response to an input to the engine
mount." Claim 11 includes substantially similar language.
The Examiner finds the claim language indefinite because the
relationship between the inputs is ambiguous. See Ans. 5---6. The Examiner
interprets the inputs as being the same input, because the language "prior to
an input" and "in response to an input" suggests a sequence. Id.
In response, Appellant argues that "these two inputs are not
necessarily the same." App. Br. 15. Appellant contends that to move the
hollow elastomeric bladder from the first position to the second connection
structure, or to move from the second position to engagement in the first
position, the input must be in a particular direction and have a sufficient
magnitude. Id. In the Reply Brief, Appellant cites examples from the
Specification and asserts that the Examiner's interpretation of the claim
language "contradicts the express disclosure provided in Appellant's
Specification." Reply Br. 2.
In prosecution before the PTO "[i]t is the applicants' burden to
precisely define the invention, not the PTO's." In re Morris, 127 F. 3d
1048, 1056 (Fed. Cir. 1997). The purpose of this requirement is to provide
the public with adequate notice of the boundaries of protection involved.
The time to do so is during prosecution where an applicant has the ability to
amend the claims to more precisely define the metes and bounds of the
claimed invention. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1210-12
(PT AB 2008).
Here, the claims do not recite language, such as an amplitude
characteristic(s) associated with each input, indicating that the two inputs
may differ. Thus, Appellant's contention that an input at the second position
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Application 11/462,439
claim would be understood as having a large amplitude characteristic, while
the input at the first position would be understood as encompassing a variety
of amplitude characteristics is not persuasive. In light of the multiple
interpretations applicable to the claims, as set forth by the Examiner and
Appellant, it is appropriate for Appellant to amend the claims to make clear
which interpretation is required.
Accordingly, we sustain the Examiner's rejection of claims 1, 2, 4, 7-
9, 11, 13, and 14 under 35 U.S.C. § 112, second paragraph.
Anticipation
Appellant's argue that the Examiner erred in rejecting independent
claim 11under35 U.S.C. § 102(b) because Shimoda does not disclose that
"the bladder [has] a second position where ... the fluid limits maximum
compression of the bladder when the bladder engages the one of the first
connection structure and the second connection structure," as recited in
claim 1. App. Br. 15-17. In contrast, the Examiner finds that Shimoda's
bladder 40, 42 discloses the argued limitation. Non-Final Act. 4--5.
Appellant argues that Shimoda states that stopper part 34 - not the
fluid in member 40 - limits axial movement. App. Br. 16. But the
Examiner takes the position that the fluid and the stopper within bladder 40
work together to limit maximum compression. Ans. 6-7. To support this
conclusion, the Examiner finds that: (1) bladder 40 includes a liquid that
"would yield to compression"; (2) when a space in the bladder is at a
maximum compression, conventional understanding would dictate that the
pressure of the liquid would resist further compression; and (3) the claims do
not recite any limitation to prevent the bladder from including other
elements with the liquid. Id.
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Appeal2014-001788
Application 11/462,439
Shimoda discloses a fluid-filled member mount stopper having an
effective impact relaxation or absorption function when an excessive
vibration is input in the axial direction of a member mount. Shimoda
Translation 3. Figure 1 shows a displacement regulating member 58 that can
regulate an upward displacement of inner tube metal fitting 10 with respect
to outer tube metal fitting 14. Id. at 16. When contact part 22 depresses
bladder 40, fluid from fluid chamber 52 flows into fluid chamber 54 of
bladder 42. Id. at 16-17. The fluid is a "non-compressive fluid," such as
water. Id. at 15. The flow resistance of the fluid flowing between chambers
generates a soft spring characteristic, absorbing axial displacement. Id. at
17-18.
But when the axial displacement becomes more excessive, contact
part 22 abuts stopper part 34, which is vertically installed in the bladder 40.
Id. The stopper thus "effectively absorb[ s] an impact due to an abrupt
displacement in the axial direction due to the input vibration." Id. at 17.
The flow action of the fluid in this example helps prevent the abutting from
being a "strong abutting," that generates a "push-up" feeling when riding in
a vehicle. Id. at 19.
Although Shimoda describes the fluid as providing damping, Shimoda
does not describe the fluid as limiting a maximum compression of the
bladder, as required by claim 11. Instead, Shimoda describes stopper part 34
as providing a final, utmost boundary for compression (i.e., a limit on
maximum compression of the bladder). 5
5 The term "limit" is generally understood to mean "the final, utmost, or
furthest boundary or point as to extent, amount, continuance, etc." See
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Application 11/462,439
The Examiner ostensibly maintains that Shimoda inherently discloses
fluid limiting a maximum compression of the bladder. See Non-Final Act.
4--5 ("[i]t is believed that the fluid in the bladder would limit[] maximum
compression of the bladder because of its presence in the bladder."). But to
establish inherency, more than speculation is required. In particular, the
Examiner must provide evidence and/or technical reasoning that makes
"clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill." Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d
1264, 1268 (Fed.Cir.1991 ). "Inherency ... may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." Id. at 1269 (quoting In
re Oelrich, 666 F.2d 578, 581(CCPA1981)).
The Examiner speculates here that the fluid in Shimoda's bladder
limits maximum compression of the fluid, because the Examiner presents no
evidence or technical reasoning to support an inherency finding. For
example, the Examiner finds that that bladder 40 includes a liquid that would
yield to compression (Ans. 6-7), but the liquid is described as non-
compressive (Shimoda Translation 15). Likewise, the Examiner finds that
pressure of the liquid in the bladder would resist further compression when
the space of the bladder is reduced (Ans. 7), but Shimoda discloses that: (1)
liquid flows to another bladder 42 when contact part 22 compresses bladder
40; and (2) contact part 22 is precluded from compressing bladder 40
beyond stopper part 22.
Random House Kemerman Webster's College Dictionary, Random House,
Inc. (2010) (available at http://www.thefreedictionary.com/limit).
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Application 11/462,439
Therefore, we do not sustain the Examiner's rejection of claim 11
under 35 U.S.C. § 102(b). For the same reasons, we also do not sustain the
rejection of dependent claim 14.
Obviousness
Dependent claim 13
Claim 13 depends from claim 11. The Examiner's rejection of claim
13 under 35 U.S.C. § 103(a) based on Tanaka, in combination with
Shimoda, does not cure the deficiency in the Examiner's rejection of claim
11under35 U.S.C. § 102(b). Therefore, we also do not sustain the
Examiner's rejection of claim 13 under 35 U.S.C. § 103(a).
Independent claims 1 and 18, and dependent claims 5, 7, 8, 19, and 20
Independent claims 1 and 18 include language substantially similar to
the language of claim 11, and are rejected based on the same rationale as
claim 11. See Non-Final Act 6-9. The Examiner's rejection of claims 1 and
18 under 35 U.S.C. § 103(a) based on Fader, in combination with Shimoda,
does not cure the deficiency in the Examiner's rejection of claim 11.
Therefore, we do not sustain the Examiner's rejection of claims 1 and 18,
and dependent claims 5, 7, 8, 19, and 20 under 35 U.S.C. § 103(a).
Dependent claims 2 and 4
Claims 2 and 4 depend from claim 1. The Examiner's rejections of
claims 2 and 4 based on Tanaka, in combination with Shimoda and Fader, do
not cure the deficiency in the Examiner's rejection of claim 1. Therefore,
we do not sustain the Examiner's rejection of claims 2 and 4 under
35 U.S.C. § 103(a) for the same reasons set forth with respect to claim 1.
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Application 11/462,439
DECISION
The Examiner's rejection of claims 1, 2, 4, 7-9, 11, 13, and 14 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner's rejection of claims 11 and 12 under 35 U.S.C.
§ 102(b) is reversed.
The Examiner's rejections of claims 1, 2, 5, 7, 8, and 18-20 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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