Ex Parte Lloyd

Board of Patent Appeals and Interferences

Jun 29, 2007

10850258 (B.P.A.I. Jun. 29, 2007)

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for publication and is not binding precedent of the Board.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
____________

Ex parte JEFFREY LLOYD
____________

Appeal 2007-1218
Application 10/850,258
Technology Center 3600
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Decided: June 29, 2007
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Before WILLIAM F. PATE III, HUBERT C. LORIN and
JENNIFER D. BAHR, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from the final rejection of claims 1-13, 19-21, 23
and 24. These are the only claims remaining in the application.
We have jurisdiction under 35 U.S.C. § 134.

Appeal 2007-1218
Application 10/850,258

Appellant claims a strut assembly for an automobile suspension which
has a normal shock absorber combined with an air spring.
Claims 1 and 7, reproduced below, are further illustrative of the claimed
subject matter.
1. An air spring assembly comprising:

an air spring piston supported by a shock body; and

a flexible member having a first portion mounted to the
shock body at an attachment interface wherein said air spring
piston is deformed against said first portion to form said
attachment interface.

7. A strut assembly comprising:

a shock absorber including an outer cylinder; and

an air spring including an air spring piston mounted to said
outer cylinder and a flexible member defining a sealed fluid
cavity between said flexible member and said outer cylinder
wherein said flexible member is positioned between said air
spring piston and said outer cylinder at a sealed interface.

The references of record relied upon by the examiner as evidence of
anticipation and obviousness are:

McGavern U.S. 2,933,308 Apr. 19, 1960
Pees U.S. 4,921,226 May 01, 1990
Gubitz U.S. 5,518,225 May 21, 1996
Weitzenhof WO 02/40888 A1 May 23, 2002

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Application 10/850,258

Claims 1-5, 19 and 20 stand rejected under 35 U.S.C. § 102 as being
anticipated by Weitzenhof.
Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable over
Weitzenhof in view of McGavern
Claims 7-10, 13, 21, 23 and 24 stand rejected under 35 U.S.C. § 102
as being anticipated by Pees.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Pees in view of Gubitz.

ISSUES
The issues raised for our consideration are whether the examiner, by
preponderance of evidence, has established that the claimed invention lacks
novelty or is obvious under §§ 102 and 103.

FINDINGS OF FACT
Weitzenhof discloses an air spring for a motor vehicle. Weitzenhof is
concerned with the problem of high frequency vibrations and provides a
blocking mass on the air spring to damp out such vibrations. The examiner
refers us to the embodiment found in Figure 16. The Figure 16 embodiment
discloses two air springs joined at the center by a blocking mass 48, 34, 85.
Weitzenhof also discloses two pistons 10, that change the shape of the air
spring in response to loading and unloading due to vehicle bumps. In the
rejection, the Examiner refers to the blocking mass or a portion of the
blocking mass as the piston. We cannot agree with the Examiner’s
interpretation of the reference. We are in agreement with Appellant that
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Application 10/850,258

Weitzenhof discloses pistons 10 and these are the members that function as a
piston. We recognize that a piston for an air spring is normally a surface
that intrudes onto the air spring volume by longitudinal movement. The
blocking masses of Weitzenhof do not perform this function. Accordingly,
Weitzenhof does not anticipate claims 1-5, 19 and 20.
On the other hand, Pees shows an air spring--strut combination with
an outer cylinder 16 having two reduced diameter portions 30 and 32. A
piston lining 90 is slip--fitted over the reduced diameter portions of the outer
cylinder 16. A resilient sleeve or flexible member 70 with liner 80 forms a
lobe 84 that rides on the surface of the piston lining and a reentrant portion
of the resilient sleeve curves back around and is clamped to the reduced
diameter portion 32 of the outer cylinder 16. The metallic clamp or band 82
fastens the flexible member in this location underneath the smaller profiled
end of the piston 90. The other end of the resilient sleeve 70 is secured by a
retaining member 92.
Accordingly, it can be seen that Pees provides a shock absorber with
an outer cylinder wherein an air spring piston 90 is mounted to the outer
cylinder and a flexible member defines a sealed fluid cavity, rolling lobe 84.
Note further that the flexible member 70 is clamped between the outer
cylinder, that is, the reduced diameter portion 32 and the air spring piston 90
at its sealed interface. It is our finding that Pees clearly anticipates
claims 7 and 8. With respect to claim 9, we note that the flexible member of
Pees is composed of a sleeve 70 and liner 80 and the piston 90 engages two
sides of the outer sleeve 70 at the sealed interface. As to claims 10 and 23,
we agree with the Examiner that the limitation to a crimped attachment is in
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Application 10/850,258

the nature of a product-by-process limitation and the clamp band 82 is
patentably indistinguishable from a crimped attachment interface. As to
claim 21, we agree that Pees discloses the claimed retaining member.
As to claim 11 rejected under § 103 based on the combined teachings
of Pees and Gubitz, we note that the piston 90 of Pees has a first end near the
attachment interface and a second end 91 of greater diameter. We further
note that the greater diameter portion has a piston surface that is radially
spaced apart from the surface of the outer cylinder and that this second end
is of greater diameter that the first end. With respect to claims 23 and 24,
we agree with the Examiner that these limitations are product-by-process
limitations and as long as the piston 90 partly holds the flexible member 70
against the reduced diameter portion 32 of the outer cylinder, the claim does
not patentably distinguish over the structure shown in Pees.

PRINCIPAL OF LAW
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). Express
anticipation occurs when the prior art expressly discloses each limitation
(i.e., each element) of a claim. Id. In addition, [i]t is well settled that a prior
art reference may anticipate when the claim limitations not expressly found
in that reference are nonetheless inherent in it. Id.
“A claimed invention is unpatentable if the differences between it and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
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in the pertinent art.” In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329,
1334-35 (Fed. Cir. 2006) citing 35 U.S.C. § 103(a) (2000); Graham v. John
Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 467 (1966). “The ultimate
determination of whether an invention would have been obvious is a legal
conclusion based on underlying findings of fact.” Id. (citing In re
Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir. 1999)).
“In assessing whether subject matter would have been non-obvious
under § 103, the Board follows the guidance of the Supreme Court in
Graham v. John Deere Co. 383 U.S. at 17, 148 USPQ at 467. The Board
determines ‘the scope and content of the prior art,’ ascertains ‘the
differences between the prior art and the claims at issue,’ and resolves ‘the
level of ordinary skill in the pertinent art.’” Id. (citing Dann v. Johnston, 425
U.S. 219, 226, 189 USPQ 257, 261 (1976)) (quoting Graham, 383 U.S. at
17, 148 USPQ at 467). “Against this background, the Board determines
whether the subject matter would have been obvious to a person of ordinary
skill in the art at the time of the asserted invention.” Id. (citing Graham, 383
U.S. at 17, 148 USPQ 467). In making this determination, the Board can
assess evidence related to secondary indicia of non-obviousness like
“commercial success, long felt but unsolved needs, failure of others, etc.”
Id., 383 at 17-18, 148 USPQ at 1335; accord In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1455-56 (Fed. Cir. 1998). “We have explained that
to reject claims in an application under section 103, an examiner must show
an unrebutted prima facie case of obviousness. ‘On appeal to the Board, an
applicant can overcome a rejection by showing insufficient evidence of
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prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.’” Id. (citing Rouffet, 149 F.3d at
1355, 47 USPQ2d at 1455).
It is well settled that “anticipation is the epitome of obviousness.”
In re McDaniel, 293 F3d. 1379, 1385, 63USPQ2d 1462, 1466-67 (Fed. Cir.
2002)(quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548, 220
USPQ 193, 198 (Fed. Cir. 1983)); In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571(CCPA 1982).

ANALYSIS
As noted above, we do not agree with the Examiner that the blocking
mass can be considered a piston in the disclosure of Weitzenhof. Therefore,
we have reversed the rejections of claims 1-5, 19 and 20 under § 102 and
also the rejection of claims 6 under § 103.
Furthermore, as our findings of fact demonstrate, Pees fully
anticipates the structure claimed in claims 7-10, 21, 23 and 24. We therefore
affirm the anticipation rejection of these claims, as well as claim 13, which
Appellant has grouped with claims 7 and 8 (Appeal Br. 12). By our
analysis, Pees also anticipates the structure in claims 11 and 12. Therefore,
anticipation being the epitome of obviousness, we affirm the obviousness
rejection of claims 11 and 12.

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CONCLUSION
The rejections of claims 1-6, 19 and 20 have been reversed. The
rejections of claims 7-13, 21, 23 and 24 have been affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a) (1) (iv).

AFFIRMED-IN-PART

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