Ex Parte Lindahl et alDownload PDFPatent Trial and Appeal BoardMay 19, 201612951861 (P.T.A.B. May. 19, 2016) Copy Citation 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. 2 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. 3 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 4 Copy with citationCopy as parenthetical citation