Ex Parte McCarthy

Board of Patent Appeals and Interferences

Nov 15, 2006

10163249 (B.P.A.I. Nov. 15, 2006)

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for publication and is not binding precedent of the Board.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

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK McCARTHY
____________

Appeal No. 2006-0600
Application No. 10/163,249
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the examiner's final
rejection of claims 1 through 4, 6, 7, 9, 12 through 15, 17, 18, 20
and 25 through 30, all the claims remaining in the application.
Claims 5, 8, 10, 11, 16, 19 and 21 through 24 have been cancelled.

Appellant’s invention relates to a leaf spring assembly (Fig.
1) and a pivot bushing used therein that has an anti-walkout
feature to stop the tendency of the eye of the leaf spring to walk
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Application No. 10/163,249

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out of, or off of, the bushing. Independent claims 1, 12, 25 and
28 are representative of the subject matter on appeal and a copy of
those claims can be found in Appendix A of appellant’s brief.

The prior art references of record relied upon by the examiner
in rejecting the appealed claims are:
Dawda et al. 5,941,511 Aug. 24, 1999
(Dawda)

Overby 6,015,158 Jan. 18, 2000

Cummings et al. 6,364,296 Apr. 2, 2002
(Cummings)
McLaughlin et al. 6,430,774 Aug. 13, 2002
(McLaughlin)

Claims 1 through 4, 6, 7 and 9 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Overby in view of Dawda and
Cummings.

Claims 12 through 15, 17, 18 and 20 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Dawda in view of
Cummings.

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Application No. 10/163,249

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Claims 25 through 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McLaughlin in view of Dawda and
Cummings.

Rather than reiterate the examiner's full statement of the
above-noted rejections and the conflicting viewpoints advanced by
the appellant and examiner regarding those rejections, we make
reference to the examiner's answer (mailed August 31, 2005) for the
reasoning in support of the rejections, and to appellant’s brief
(filed July 6, 2005) and reply brief (filed October 27, 2005) for
the arguments thereagainst.

OPINION

In reaching our decision in this appeal, we have given careful
consideration to appellant’s specification and claims, to the
applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of our
review, we have made the determinations which follow.

In making the rejection of claims 1 through 4, 6, 7 and 9
based on the combined teachings of Overby, Dawda and Cummings
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(answer, pages 3-4), the examiner is of the view that it would have
been obvious to one of ordinary skill in the art at the time of
appellant’s invention to provide the elastomeric bushing (18) of
Overby with a retaining ring located adjacent a first radially
extending longitudinal end portion (following the teachings of
Dawda) and to ensure that the entire outer surface of the retaining
ring is encompassed by and in contact with the elastomeric bushing,
as evidenced by Cummings. From the examiner’s perspective, the
artisan would have been led to make such a modification in the
bushing of Overby in order to improve the axial load capability of
the bushing, i.e., “in order to be able to sustain many cycles of
considerable axial load without deteriorating the primary isolation
function” (answer, page 4).

While we have fully considered the arguments advanced by
appellant in the brief and reply brief, we are not convinced
thereby that the examiner's conclusion of obviousness as regards
independent claim 1 is in error. Although appellant points to
alleged distinctions between the applied prior art and the
invention of claim 1 based upon the particular problem which the
invention was intended to solve, appellant has not specifically
Appeal No. 2006-0600
Application No. 10/163,249

5
addressed the examiner’s stated position and reasons for the
proposed combination of Overby, Dawda and Cummings.

Dawda expressly indicates that the bushing therein “improves
the axial load capability of attachments of suspension members to
structural members of a motor vehicle” (abstract, lines 1-3), and
points out that the bushing apparatus “is useful for providing a
resilient, pivotal suspension attachment capable of sustaining many
cycles of considerable axial load without deteriorating the primary
isolation function of the bushing device” (col. 1, lines 7-11).
Overby involves the very type of suspension attachments that Dawda
indicates can be improved by using the bushing assembly described
therein. Cummings involves a form of vehicle shear mount used to
dampen vertical vibrations transmitted from the vehicle frame to
the body and which also provides good lateral shake control. As can
be seen in Figure 4, the bushing member (100) of Cummings includes
an insert member (30) entirely encompassed by the elastomeric
material of the bushing. The insert member (30), like that at (60)
of Dawda, is used to provide an increased degree of lateral
stiffness to the elastomeric bushing (note, col. 6, lines 1-6).

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With an eye toward improving the axial load capability of the
suspension mount of Overby, we are of the opinion that it would
have been obvious to one of ordinary skill in the art at the time
of appellant’s invention to provide the suspension mount of Overby
with an improved bushing apparatus like that of Dawda, in place of
the bushing (18), and wherein the insert member of such bushing
apparatus is fully encompassed by the material of the elastomeric
bushing, as in Cummings, for the self-evident purpose of protecting
the metal insert member from exposure to the harsh environment,
e.g., road chemicals used for snow and ice removal, etc., that can
be present under a motor vehicle.

As for appellant’s argument that the examiner’s combination of
the applied prior art does not address the same problem confronted
by appellant, i.e., elimination of bushing walkout, we note that
the purpose proposed as the reason why an artisan would have found
the claimed subject matter to have been obvious based on the
teachings of the prior art need not be identical to the purpose or
problem which appellant indicates to be the basis for having made
the invention in order to establish a prima facie case of
obviousness. As long as some reasonable motivation or suggestion
to combine the references is provided by the applied prior art
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taken as a whole, as we believe there is in this case, the law does
not require that the references be combined for the particular
reasons contemplated by appellant. See In re Beattie, 974 F.2d
1309, 24 USPQ2d 1040 (Fed. Cir. 1992); In re Dillion, 919 F.2d 688,
16 USPQ2d 1897 (Fed. Cir. 1990) and In re Kronig, 539 F.2d 1300,
190 USPQ 425 (CCPA 1976). Thus, appellant’s arguments in the brief
and reply brief that the applied references to Overby, Dawda and
Cummings do not address appellant’s problem and would not have been
combined so as to solve appellant’s problem, are not persuasive.

The examiner’s rationale of improved axial load capability for
the bushing of Overby, i.e., in order to be able to sustain many
cycles of considerable axial load without deteriorating the primary
isolation function, as the stated basis for the combination of the
applied references remains essentially unrebutted by appellant.
Appellant’s mere statement in the reply brief that “[t]here is
nothing in Overby or Dawda, et al. which supports the examiner’s
position” or the examiner’s reasoning for combining the references,
without an explanation of why, is wholly inadequate to address this
rejection.

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For the above reasons, we will sustain the examiner’s
rejection of claim 1 under 35 U.S.C. § 103. Since no separate
argument has been made by appellant regarding claims 2, 3, 4, 6, 7
and 9, we consider that those claims will fall with claim 1, from
which they depend. Accordingly, the examiner’s rejection of claims
2 through 4, 6, 7 and 9 under 35 U.S.C. § 103 is likewise
sustained.

Appellant’s arguments in the brief and reply brief concerning
the examiner’s rejection of claims 12 through 15, 17, 18 and 20
under 35 U.S.C. § 103(a) as being unpatentable over Dawda in view
of Cummings, and the rejection of claims 25 through 30 under 35
U.S.C. § 103(a) as being unpatentable over McLaughlin in view of
Dawda and Cummings are essentially the same as those already
addressed above concerning claim 1. In each instance appellant
urges that “the above discussion regarding the... [applied
references] and the impermissibility of combining these references
applies here also” (brief, pages 16-17). For the reasons already
set forth in our discussion of claim 1, we again find those
arguments to be unpersuasive. Accordingly, the examiner’s
rejection of claims 12 through 15, 17, 18 and 20 under 35 U.S.C.
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Application No. 10/163,249

9
§ 103(a) as being unpatentable over Dawda in view of Cummings, and
of claims 25 through 30 under 35 U.S.C. § 103(a) as being
unpatentable over McLaughlin in view of Dawda and Cummings are
sustained.

To summarize, since each of the rejections before us on appeal
has been sustained, the decision of the examiner is 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

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

Appeal No. 2006-0600
Application No. 10/163,249

10
Harness, Dickey & Pierce, P.L.C.
P.O. Box 828
Bloomfield Hills, MI 48303

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