Ex parte Moody

Board of Patent Appeals and Interferences

May 11, 1999

08624734 (B.P.A.I. May. 11, 1999)

Application for patent filed March 26, 1996. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL E. MOODY
____________
Appeal No. 1998-2945
Application No. 08/624,7341
____________
ON BRIEF
____________
Before CALVERT, FRANKFORT, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 4 through 7 and 12 through 15. Claims
2 and 3 are allowed. Claims 8 through 11 have been objected
to as depending from a non-allowed claim.
Appeal No. 1998-2945
Application No. 08/624,734
We REVERSE and REMAND.
Appeal No. 1998-2945 Page 3
Application No. 08/624,734
BACKGROUND
The appellant's invention relates to a power cylinder
piston (claims 1 and 4 through 6) and a damped power cylinder
system (claims 7 and 12 through 15). An understanding of the
invention can be derived from a reading of exemplary claims 1
and 7 (the independent claims on appeal), which appear in the
appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims (i.e., the applied
prior art) are:
Diesing et al. 3,002,500 Oct.
3, 1961
(Diesing)
Isham 3,013,816 Dec. 19,
1961
Taylor et al. 4,815,574 Mar. 28,
1989
Claims 1, 4, 5 and 6 stand rejected under 35 U.S.C. § 103
as being unpatentable over Taylor.
Appeal No. 1998-2945 Page 4
Application No. 08/624,734
Claims 1 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Isham.
Claims 7 and 12 through 15 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Isham in view of Diesing.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 10, mailed April 14, 1998) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 9, filed January 6, 1998) and reply brief
(Paper No. 11, filed June 15, 1998) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. Upon
evaluation of all the evidence before us, it is our conclusion
Appeal No. 1998-2945 Page 5
Application No. 08/624,734
that the evidence adduced by the examiner is insufficient to
establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the
examiner's rejection of claims 1, 4 through 7 and 12 through
15 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). The test for obviousness
is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Furthermore, the conclusion that the claimed
subject matter is obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by
knowledge generally available to one of ordinary skill in the
art that would have led that individual to combine the
relevant teachings of the references to arrive at the claimed
Appeal No. 1998-2945 Page 6
Application No. 08/624,734
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988).
The appellant argues (brief, pp. 3-7, and reply brief, p.
2) that the applied prior art does not suggest the claimed
subject matter. We agree.
Claim 1 recites a power cylinder piston for connection to
a power shaft within a power cylinder housing comprising,
inter alia, a cylinder being disposed slidably within the
power cylinder housing and an annularly corrugated sleeve
disposed within the cylinder and secured to the cylinder ends.
Claim 7 recites a damped power cylinder system
comprising, inter alia, a power cylinder housing and a piston
slidably disposed within the power cylinder housing. Claim 7
further recites that the piston comprises, inter alia, a
piston cylinder and an annularly corrugated sleeve disposed
within the piston cylinder and secured to the piston cylinder
ends.
Appeal No. 1998-2945 Page 7
Application No. 08/624,734
The above-noted limitations of claims 1 and 7 are not
suggested by the applied prior art. In that regard, the
combined teachings of Taylor, Isham and Diesing would not have
suggested a piston having an annularly corrugated sleeve
disposed within the cylinder of the piston. To compensate for
the inadequacy of the applied prior art, the examiner made
determinations (answer, pages 4, 6 and 10) that it would have
been obvious to one of ordinary skill in the art at the time
the invention was made to have placed the cylinder assembly of
Taylor (i.e., damper 10) or the cylinder assembly of Isham
(i.e., section B) within a power cylinder housing as that is a
recognized feature in the art for shielding a structure from
exposure to the environment. However, this determination by
the examiner has not been supported by any evidence that would
have led an artisan to arrive at the claimed invention.
In our view, clearly the only suggestion for modifying
Taylor or Isham in the manner proposed by the examiner to meet
the above-noted limitations stems from hindsight knowledge
derived from the appellant's own disclosure. The use of such
hindsight knowledge to support an obviousness rejection under
Appeal No. 1998-2945 Page 8
Application No. 08/624,734
Claims are considered to be definite, as required by the2
second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable
degree of precision and particularity. See In re Venezia, 530
F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976).
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Associates, Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). Furthermore, it is our opinion
that one of ordinary skill in the art would not have
considered the cylinder assembly of Taylor (i.e., damper 10)
or the cylinder assembly of Isham (i.e., section B) to be a
"piston." It follows that we cannot sustain the examiner's
rejections of claims 1 and 7 and claims 4 through 6 and 12
through 15 dependent thereon.
REMAND
We remand the application to the examiner to consider
whether or not the following two errors render independent
claims 1 and 7, and dependent claim 2, indefinite under the
second paragraph of 35 U.S.C. § 112.2
Appeal No. 1998-2945 Page 9
Application No. 08/624,734
First, the phrase "said power cylinder" in claim 1, lines
11-12, and claim 2, lines 10-11, lacks antecedent basis.
While claims 1 and 2 have previously recited "power cylinder
piston," "power cylinder housing," and "cylinder," it is not
clear that "said power cylinder" was intended to refer back to
any of those terms. In that regard, we note from Figures 1
and 2, that the power shaft 44 extends out of one end of the
cylinder 32 for connection to the mechanism being operated
(see page 4, lines 24-25, of the specification). Accordingly,
the examiner should determine if the lack of antecedent basis
for "said power cylinder" in claim 1 and claim 2 renders
claims 1 and 2, and claims dependent thereon, indefinite under
35 U.S.C. § 112, 2¶.
Second, the two position valve clause in claim 7 (see
lines 7-12) contains an error. Specifically, the two position
valve clause recites that the "one end" of the power cylinder
housing is connected to the working fluid exhaust in both
positions (i.e., the one position and the second position) of
the two position valve. As shown in Figure 1, in one position
of the valve 24, the discharge line 20 is connected to the
Appeal No. 1998-2945 Page 10
Application No. 08/624,734
right end of the power cylinder housing and in the other
position of the valve 24, the discharge line 20 is connected
to the left end of the power cylinder housing. Accordingly,
the examiner should determine if this error in claim 7 renders
claim 7, and claims dependent thereon, indefinite under 35
U.S.C. § 112, 2¶.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 4 through 7 and 12 through 15 under 35 U.S.C. § 103
is reversed. In addition, the application is remanded to the
examiner to consider whether claims 1, 2 and 7 are indefinite
under the second paragraph of 35 U.S.C. § 112.
Appeal No. 1998-2945 Page 11
Application No. 08/624,734
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED and REMANDED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-2945 Page 12
Application No. 08/624,734
OFFICE OF COUNSEL
BUILDING 112T NAVAL UNDERSEA WARFARE
CENTER DIVISION NEWPORT
1176 HOWELL STREET
NEWPORT, RI 02841-1708
APPEAL NO. 1998-2945 - JUDGE NASE
APPLICATION NO. 08/624,734
APJ NASE
APJ FRANKFORT
APJ CALVERT
DECISION: REVERSED; REMANDED
Prepared By: Gloria Henderson
DRAFT TYPED: 10 May 99
FINAL TYPED: