Ex Parte Klitsch et al

Board of Patent Appeals and Interferences

Sep 19, 2005

10370122 (B.P.A.I. Sep. 19, 2005)

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for publication and is not binding precedent of the Board.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
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BERND KLITSCH, STEFAN BREHM and MICHAEL MULLER
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Appeal No. 2005-1708
Application No. 10/370,122
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ON BRIEF
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Before FRANKFORT, MCQUADE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-8,
which are all of the claims pending in this application.
BACKGROUND
The appellants’ invention relates to a damping element between two masses,
comprising a container tube 8, a piston 11 arranged in the container tube, a piston rod
12 connected to the piston and a fixing component 1 to connect the damping element to
one of the two masses, the piston rod being connected to the other of the two masses.
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The fixing component comprises a base 4 with a centering extension 5, a stem 3 and a
fork 2 with fixing holes forged as one piece. A copy of the claims under appeal is set
forth in the appendix to the appellants’ brief.
The Applied Prior Art
The examiner relied upon the following prior art references of record as evidence
of anticipation and obviousness in rejecting the appealed claims:
Finn et al. (Finn) 4,377,298 Mar. 22, 1983
Niaura et al. (Niaura) 6,318,521 Nov. 20, 2001
The Rejections
The following rejections are before us for review.
Claims 1 and 3-5 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Niaura.
Claims 6-8 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Niaura.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Niaura in view of Finn.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the answer
(mailed October 19, 2004) for the examiner's complete reasoning in support of the
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rejections and to the brief (filed August 5, 2004) and reply brief (filed December 22,
2004) for the appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the rejection of claims 1 and 3-5 as being anticipated by Niaura.
Independent claim 1 expressly recites that the fixing component comprises a base, a
stem, and a fork which are “made as a single piece.” The examiner concedes on page
3 of the answer that Niaura’s cylindrical portion 9 and U-shaped strap 10, the structure
relied upon by the examiner as responding to the base, stem and fork of the fixing
component in appellants’ claim 1, are made of two pieces connected together (see
column 4, lines 1-3). The examiner, however, takes the position that “[t]he mere fact
that a given structure is a single piece does not preclude its consisting of two separate
pieces [joined] together.” For the reasons stated on pages 5 and 6 of the brief and page
2 of the reply brief, the examiner’s position is not well taken. Two separate pieces
joined together do not form a structure “made as a single piece.” Accordingly, claim 1 is
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1 Anticipation is established only when a single prior art reference discloses, expressly or under
the principles of inherency, each and every element of a claimed invention. RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be
no difference between the claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d
1565, 1576, 18 USPQ2d 1896, 1010 (Fed. Cir. 1991).
2 On page 6 of the answer, the examiner also referred to Breese (US Pat. No. 5,611,135, issued
March 18, 1977), but this reference has been given no consideration since it was not positively included in
the rejection. Ex parte Raske, 28 USPQ2d 1304, 1305 (Bd. Pat. App. & Int. 1993). Where a reference is
relied on to support a rejection, whether or not in a "minor capacity," there would appear to be no excuse
for not positively including the reference in the statement of rejection. In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
not anticipated1 by Niaura. The rejection of claim 1, as well as claims 3-5, which
depend from claim 1, as being anticipated by Niaura is not sustained.
As explained above, Niaura lacks a fixing component comprising a base, stem
and fork which are made as a single piece. We find no suggestion in Niaura, and the
examiner has pointed to no such suggestion, to form the hollow cylindrical portion 9 and
U-shaped strap 10 connected thereto as a single piece so as to arrive at the invention
recited in independent claim 1. It thus follows that the rejection of claims 6-8, which
depend from claim 1, cannot be sustained.
Finally, we turn our attention to the rejection of claim 2 as being unpatentable
over Niaura in view of Finn.2 Finn evidences that it was well known in the art at the time
of appellants’ invention to form a yoke-shaped element for connecting the sleeve 24 of a
hydraulic damper in a vehicle suspension with one of the masses (the drive axle) of the
vehicle as a single element by forging, the element comprising legs 28, 30 and an
integral tubular portion accepting the sleeve 24. In light of the teachings of Finn, it
would have been obvious to one of ordinary skill in the art to form the cylindrical portion
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9 and U-shaped strap 10 of Niaura’s damper as a single piece by forging as an art-
recognized alternative to the two-piece formation disclosed by Niaura.
The appellants argue that “[t]here is simply no way that the cylindrical section 9
and the fork 10 could be forged as one piece, because the cylindrical section 9 is a
tubular section which receives the piston rod 19" (brief, page 7). Finn’s disclosure of a
forged yoke-shaped element comprising legs 28, 30 integral with a tubular portion
clearly belies this argument. Appellants’ argument on page 3 of the reply brief that Finn
only discloses that a fork can be forged fails to appreciate Finn’s teaching of forging the
legs 28, 30 with a tubular portion accepting a separate sleeve 24 and is likewise not well
taken. Appellants’ arguments on pages 3-4 of the reply brief directed to the Breese
patent have not been considered, as Breese was not relied on in the examiner’s
refection of claim 2, as noted above. Inasmuch as appellants’ arguments fail to
persuade us of any error on the part of the examiner in rejecting claim 2 as being
unpatentable over Niaura in view of Finn, the rejection is sustained.
We note the that the examiner has not rejected claim 1, from which claim 2
depends, as being unpatentable over Niaura in view of Finn. Nevertheless, it logically
follows from our decision herein sustaining the examiner’s rejection of claim 2 as being
unpatentable over Niaura in view of Finn that claim 1 is likewise unpatentable over
Niaura in view of Finn. Thus, in the event of further prosecution in this application, the
examiner should take appropriate action with respect to independent claim 1 in light of
the affirmance of the rejection of dependent claim 2.
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CONCLUSION
To summarize, the rejections of claims 1 and 3-5 as being anticipated by Niaura
and claims 6-8 as being unpatentable over Niaura are reversed and the rejection of
claim 2 as being unpatentable over Niaura in view of Finn is sustained. The examiner’s
decision is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2005-1708
Application No. 10/370,122
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