Ex Parte Luce et al

Board of Patent Appeals and Interferences

Sep 1, 2011

11622958 (B.P.A.I. Sep. 1, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM E. LUCE and SCOTT C. MAITLAND
____________________

Appeal 2010-002004
Application 11/622,958
Technology Center 3600
____________________

Before: KEN B. BARRETT, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002004
Application 11/622,958
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3-12, and 16-21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

THE INVENTION
Appellants’ claimed invention “relates to aircraft shock struts for
absorbing and damping shock forces, such as during landing, taxiing or
takeoff, and particularly an aircraft shock strut having a titanium cylinder
and bearings compatible wherewith.” Spec. 1:10-13. Independent claim 1,
reproduced below, is representative of the claimed subject matter:
1. An aircraft shock strut comprising:
a cylinder comprised of titanium, the cylinder having an
inner surface, wherein the inner surface of the cylinder is bare
titanium;
a piston telescopically movable within the cylinder;
a bearing on the piston, the bearing having a non-metallic
bearing surface providing sliding engagement with the inner
surface of the cylinder.

REJECTIONS
1. Claims 1, 3, 6-10, and 16-21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hartel (US 3,652,040 issued March 28, 1972), Kim
(US 2004/0228555 A1 published November 18, 2004), and Davies
(US 6,676,076 B1 issued January 13, 2004);
2. Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hartel, Kim, Davies, and Rembold (US 3,676,200 issued
July 11, 1972).
Appeal 2010-002004
Application 11/622,958
3
3. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hartel, Kim, Davies, and Del Monte (US 5,333,816 issued
August 2, 1994).

ISSUES
Did the Examiner articulate adequate reasoning based on a rational
underpinning to explain why a person of ordinary skill in the art would have
been led to modify Hartel’s bearing to have a non-metallic bearing surface,
as taught by Kim, to reach the subject matter of independent claim 1?
Does Davies disclose a cylinder having a bare titanium inner surface
as called for in independent claim 1?
Would the subject matter of claim 1 have been obvious to a person
having ordinary skill in the art in view of the combined teachings of Hartel,
Kim, and Davies?

ANALYSIS1
Claims 1, 3, 6-10, and 16-21 as being unpatentable over Hartel, Kim, and
Davies
Claims 1, 3, 6-10, and 16-18
Appellants argue claims 1, 3, 6-10, and 16-18 as a group. App. Br. 5-
11. We select claim 1 as the representative claim, and claims 3, 6-10, and
16-18 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).

1 The Reply Brief filed September 10, 2009, is not in compliance with
37 C.F.R. §41.41(a)(2) as it introduces new evidence into the appeal record.
See Reply Br. 2 and attached Boeing Design Manual dated November 20,
1998. Pursuant to 37 C.F.R. § 41.41(b) we do not consider the new evidence
or the arguments based thereon in the Reply Brief.
Appeal 2010-002004
Application 11/622,958
4
Independent claim 1 is directed to an aircraft shock strut that includes
a piston having a bearing that includes a non-metallic bearing surface
providing sliding engagement with the bare titanium inner surface of a
cylinder.
The Examiner found that Hartel discloses an aircraft shock strut that
includes a bearing (bearings 19, 22) on a piston (11) in sliding engagement
with the inner surface of a cylinder (10). Ans. 4. The Examiner found that
Hartel does not disclose the inner surface of the cylinder (10) being bare
titanium, and does not disclose the bearing having a non-metallic bearing
surface. Id. The Examiner further found that Kim discloses a non-metallic
bearing surface, and concluded that it would have been obvious to modify
Hartel’s bearing to include a non-metallic bearing surface, as taught by Kim,
in order to create “a low friction, strong bearing surface.” Id. The Examiner
found that Davies discloses an outer cylinder 14 comprised of titanium, a
high strength and corrosion resistant material. Ans. 4-5. The Examiner
concluded it would have been obvious to modify Hartel’s cylinder (10) to be
formed of bare titanium (to include the cylinder’s inner surface), as taught
by Davies, “to create a high strength and corrosive free product.” Ans. 5, 8.
Appellants argue the Examiner has not articulated an adequate
rationale for modifying Hartel’s bearing to include a non-metallic bearing
surface as disclosed by Kim because the Examiner has not given a
reasonable basis for selecting Kim’s material: one, from the hundreds or
thousands of potential bearing materials; and two, for use in a hydraulic fluid
environment, such as an aircraft strut. App. Br. 8.
Appellants’ argument regarding the number of possible materials is
not commensurate in scope with independent claim 1. Independent claim 1
calls for the bearing surface to be non-metallic. Thus, there are not hundreds
Appeal 2010-002004
Application 11/622,958
5
or thousands of choices, as Appellants allege; rather, Kim’s material was
chosen from one of two choices (i.e., metallic or non-metallic). In addition,
the hypothetical person of ordinary skill in the art is attributed with
knowledge “of all prior art in the field of the inventor’s endeavor and of
prior art solutions for a common problem even if outside that field.” In re
Nilssen, 851 F.2d 1401, 1403 (Fed. Cir. 1988). Given that “a person of
ordinary skill in the art has good reason to pursue the known options within
his or her technical grasp” and that Appellants have not provided any
evidence or persuasive arguments as to why Kim’s material, in particular,
would be excluded from the purview of one of ordinary skill in the art, we
are not persuaded by Appellants’ arguments. See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007).
Appellants’ argument regarding the environment for use of Kim’s
bearing surface is not supported by the reference. Kim discloses that bearing
surface is useful in applications where the use of externally supplied
lubricants may be difficult or undesirable. Kim, 1, para. [0003]. However,
Kim does not disclose that the bearing surface is inappropriate for an
environment that includes external lubricants, such as an aircraft shock strut.
Further, Appellants’ assertion is not supported by objective evidence, as
Appellants failed to set forth any affidavits or declarations in support of that
assertion. Appellants’ arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. See,
e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984).
Further, given that Kim discloses a bearing surface that improves
wear and erosion while maintaining low friction, the Examiner’s rationale
that the proposed modification would create “a low friction, strong bearing
Appeal 2010-002004
Application 11/622,958
6
surface” is reasonable. See Kim, 1, para. [0010]; see also Ans. 4.
Appellants’ argument (App. Br. 8) that the Examiner does not provide an
adequate rationale is unpersuasive because it fails to address the reasonable
rationale actually set forth by the Examiner.
Appellants argue that the Examiner has not provided any evidence
that Davies’s cylinder is bare titanium. App. Br. 7; Reply Brief 1-22. We
disagree.
Appellants define “titanium” as including “any titanium alloy that a
skilled artisan could deem suitable for use in an aircraft landing gear shock
strut,” and defines “bare” as a surface that is not plated or otherwise coated
by another metal or other wear-resistant material. Spec. 5:14-17; 8:18-21.
Accordingly, we interpret independent claim 1 to call for the inner surface of
the cylinder to be comprised of any titanium alloy that is not plated or
otherwise coated and to be suitable for use in an aircraft landing gear shock
strut.
Davies discloses a shock strut having two chambers or stages of
dampening characteristics that includes a cylinder (outer cylinder 14) having
a cylindrical wall 19 and end plate 21 formed of a high-strength corrosion
resistant material such as titanium that withstands aircraft landing forces.
Davies, col. 1, ll. 6-8; col. 4, ll. 12-19; figs. 1, 2. Davies does not specify
that outer cylinder 14 is plated or otherwise coated by another metal or other
wear-resistant material, and Davies does not depict a coating on the inner
surface 25 of outer cylinder 14. Davies, col. 4, l. 35; fig. 2. Consequently,
Davies discloses a cylinder (outer cylinder 14) having an inner surface (25)

2 We consider those portions of this section of the Reply Brief not excluded
as explained, supra.
Appeal 2010-002004
Application 11/622,958
7
comprised of titanium that is not plated or otherwise coated, and is suitable
for use in an aircraft landing gear shock strut as called for in claim 1.
Appellants argue that Davies does not disclose a bearing in sliding
contact with the inner surface of the cylinder, and thus, when considered as a
whole, Davies would not have led a person of ordinary skill in the art to
modify Hartel as proposed by the Examiner. App. Br. 9 (citing W.L. Gore &
Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540 (Fed. Cir. 1983)). We agree
with Appellants that Davies does not disclose a bearing in sliding contact
with the inner surface of a cylinder, and that a reference must be considered
as a whole. However, we cannot agree with Appellants that there is no
reasonable basis for making the proposed modification.
First, we fail to see how Davies, considered as a whole, would lead
away from the claimed invention. See W.L. Gore & Assoc., Inc. v. Garlock,
Inc., 721 F.2d at 1550 (A prior art reference must be considered in its
entirety, i.e., as a whole, including portions that would lead away from the
claimed invention). While Davies does not disclose a bearing on a piston
providing sliding engagement with the inner surface of a cylinder, Davies
does not criticize, discredit, or otherwise discourage such an arrangement.
Thus, Davies would not have led a person of ordinary skill in the art in a
direction divergent from that chosen by Appellant. See In re Haruna, 249
F.3d 1327, 1335 (Fed. Cir. 2001) (“‘A reference may be said to teach away
when a person of ordinary skill, upon reading the reference, . . . would be led
in a direction divergent from the path that was taken by the applicant.’”
(citation omitted)).
Second, Appellants failed to address the Examiner’s rationale for the
proposed modification, namely, to create “a high strength and corrosive free
product.” Ans. 5, 7. This rationale is reasonable given that Davies discloses
Appeal 2010-002004
Application 11/622,958
8
that outer cylinder 14 is formed of a high-strength, corrosion resistant
material such as titanium that withstands aircraft landing forces. Davies,
col. 4, ll. 12-19; figs. 1, 2.
Appellants argue that in comparing the prior art and the claims, the
Examiner failed to consider Appellants’ discovery that use of a non-metallic
bearing surface on bare titanium prevents galling, and in doing so, the
Examiner failed to consider the invention as a whole. App. Br. 10.
Appellants elaborate that such discovery weighs in favor of a finding of
nonobviousness. App. Br. 10-11. We are unconvinced by this argument
because it is not supported by Appellants’ disclosure.
Appellants’ Specification does not describe the use of a non-metallic
bearing surface on bare titanium as solving the problem of galling. In fact,
Appellants’ Specification makes no mention of galling. Rather, Appellants’
Specification describes the problem to be solved by the claimed invention as
reduction of aircraft weight without sacrificing durability. See generally
Spec. 1:10-2:12; see also Spec. 2:19-20. We cannot find, and Appellants
failed to identify, evidence in the record that Appellants discovered that use
of a non-metallic bearing surface on bare titanium solves the problem of
galling. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (Appellants’
arguments do not take the place of evidence). As such, we sustain the
rejection of claim 1, and claims 3, 6-10, and 16-18 fall with claim 1.
Claims 19 and 21
Appellants argue claims 19 and 21 as a group. App. Br. 9-10. We
select claim 19 as the representative claim, and claim 21 stands or falls with
claim 19. See 37 C.F.R. § 41.37(c)(1)(vii).
Independent claim 19 is directed to a method for reducing the weight
of an aircraft landing gear, and is similar to independent claim 1 in that it
Appeal 2010-002004
Application 11/622,958
9
includes mounting a first bearing to a piston so that the bearing is in sliding
engagement with the bare titanium inner surface of a cylinder. Appellants
repeat the arguments used again the rejection of claim 1. App. Br. 11-12.
For the reasons explained in the analysis of claim 1, supra, those arguments
are unpersuasive here as well. Claim 21 falls with claim 19.
Claim 20
Claim 20 depends from claim 19, adding the limitation that the first
bearing provides sliding engagement without excessive wear of the inner
surface of the titanium cylinder. Appellants’ Specification simply repeats
that the bearing does not provide excessive wear, and does not define
excessive wear. See, e.g., Spec. 2:17-19; 6:2-5. Appellants argue that the
rejection does not address this element of the claim. App. Br. 12-13. We
cannot agree.
The Examiner explains that the bearing surface of the proposed
combination prevents excessive wear as called for in claim 20. Ans. 8.
Given that Kim discloses a bearing surface that improves wear and erosion
while maintaining low friction, we agree with the Examiner. See Kim, 1,
para. [0010]; see also Ans. 4.
Appellants also repeat the arguments used again the rejection of claim
1. App. Br. 12. For the reasons explained in the analysis of claim 1, supra,
those arguments are unpersuasive here as well. As such, we sustain the
rejection of claim 20.

Appeal 2010-002004
Application 11/622,958
10
Claims 4 and 5 as being unpatentable over Hartel, Kim, Davies, and
Rembold; and claims 11 and 12 as being unpatentable over Hartel, Kim,
Davies, and Del Monte
Claims 4, 5, 11, and 12 depend from independent claim 1. The
rejections of these claims relies upon the same combination of Hartel, Kim,
and Davies used for the rejection of claim 1.
Appellants repeat the arguments used again the rejection of claim 1.
App. Br. 13-14. For the reasons explained in the analysis of claim 1, supra,
those arguments are unconvincing here as well.

CONCLUSIONS
The Examiner articulated adequate reasoning based on a rational
underpinning to explain why a person of ordinary skill in the art would have
been led to modify Hartel’s bearing to have a non-metallic bearing surface,
as taught by Kim, to reach the subject matter of independent claim 1.
Davies discloses a cylinder having a bare titanium inner surface as
called for in independent claim 1.
The subject matter of claim 1 would have been obvious to a person
having ordinary skill in the art in view of the combined teachings of Hartel,
Kim, and Davies.

DECISION
We affirm the Examiner’s decision to reject 1, 3-12, and 16-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED
Appeal 2010-002004
Application 11/622,958
11

nlk