Ex Parte Lindahl et al

Patent Trial and Appeal Board

May 19, 2016

12951861 (P.T.A.B. May. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/951,861 11/22/2010
63759 7590 05/23/2016
DUKEW. YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Gary M. Lindahl
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.
10-0620-US-NP 1515
EXAMINER
BENEDIK, JUSTIN M
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
05/23/2016 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):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY M. LINDAHL and
MITCHELL LOREN RAY MELLOR
Appeal2014-003976
Application 12/951,861
Technology Center 3600
Before NEALE. ABRAMS, LYNNE H. BROWNE, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gary M. Lindahl and Mitchell Loren Ray Mellor (Appellants) appeal
under 35 U.S.C. § 134 from the rejection of claims 1, 2, and 4--20. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-003976
Application 12/951,861
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1 A device comprising:
a first hydraulic piston;
a second hydraulic piston disposed within the first
hydraulic piston; and
a third hydraulic piston disposed within both the first
hydraulic piston and the second hydraulic piston, the third
hydraulic piston comprising a floating piston, and wherein the
first, second, and third hydraulic pistons are contained within a
common outer wall; and
a manifold connected to the first, second, and third
hydraulic pistons, the manifold disposed relative to the first,
second, and third hydraulic pistons such that a fluid moving
through the manifold can control positions of the first, second,
and third hydraulic pistons.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mas cl et us 4,088,286 May 9, 1978
REJECTIONS
I. Claims 1, 2, and 4--20 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
II. Claims 1, 2, 4--6, and 9-20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Masclet.
III. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Masclet.
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Appeal2014-003976
Application 12/951,861
DISCUSSION
Rejection I
The Examiner determines that independent claims 1 and 20 are
indefinite because "there is no third piston disclosed in the Figures and the
piston applicant seems to be referring to is simply the inner part of the
second piston." Final Act. 2.
35 U.S.C. § 112 states in relevant part:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of carrying
out his invention.
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
The first paragraph of§ 112 pertains to the Specification and the
second paragraph of§ 112 pertains to the Claims. The Examiner's
determination is based on an alleged deficiency in the Specification rather
than the Claims. Accordingly, the Examiner fails to set forth a prima facie
case of indefiniteness. Moreover, the Examiner's statement quoted supra is
incorrect. The Specification describes a floating piston. See e.g. Spec. i-f 45.
Further, this piston is shown throughout the drawings, with the floating
feature most clearly shown in Figure 5.
For these reasons, we do not sustain the Examiner's decision rejecting
independent claims 1 and 20, and claims 2 and 4--19, which depend
therefrom as indefinite.
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Appeal2014-003976
Application 12/951,861
Rejection II
The Examiner finds that Masclet discloses each and every limitation
of independent claims 1 and 20. See Final Act. 3-7. In particular, the
Examiner finds that Masclet discloses "a third floating hydraulic piston (18)
disposed within both the first hydraulic piston and the second hydraulic
piston." Id. at 3.
Noting that "[p]iston (18) is mounted to slide in a fluid-tight manner
within chamber (8) and is solidly connected to a sleeve (19) which extends
through a wall (10) of the piston-rod (2)," Appellants argue that "piston (18)
cannot be a floating piston." Appeal Br. 6 (emphasis omitted).
Masclet states, "[t]hat portion of the chamber 8 between the
pistonhead 7 and the underside of the piston 18 for retracting the shock-
absorber, is connected to the inner chamber 13 through the central passage
of the sleeve 19." Masclet 4:3---6. Thus, Appellants are correct.
For this reason, we do not sustain the Examiner's decision rejecting
independent claims 1 and 20, and claims 2, 4--6, and 9-19, which depend
therefrom as anticipated by Masclet.
Rejection III
Claims 7 and 8 depend from independent claim 1. The Examiner's
rejection of claims 7 and 8 relies upon the erroneous finding discussed
supra. Accordingly, we do not sustain the Examiner's decision rejecting
claims 7 and 8 for the same reasons.
DECISION
The Examiner's rejections of claims 1, 2, and 4--20 are REVERSED.
REVERSED
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