Ex parte NEUMANN et al.

Board of Patent Appeals and Interferences

Nov 24, 1998

08114293 (B.P.A.I. Nov. 24, 1998)

Application for patent filed August 30, 1993. 1
According to appellants, this application is a continuation of
Application No. 07/646,611, filed January 24, 1991, now
abandoned.
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journal and (2) is not binding precedent of the Board.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. 41
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte UDO NEUMANN
and RAINER KALLENBACH
_____________
Appeal No. 95-4918
Application 08/114,2931
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, COHEN
and BARRETT, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4918
Application No. 08/114,293
2
This is an appeal from the final rejection of claims 2
through 22 and 24, and from the refusal of the examiner to
allow
claim 23, as amended subsequent to the final rejection. These
claims constitute all of the claims remaining in the
application.
Appellants’ invention pertains to a device, and process
for damping the motion sequences of two masses. An
understanding of the invention can be derived from a reading
of exemplary claims 13, 19 and 21, copies of which appear in
the corrected APPENDIX communication of Paper No. 39.
As evidence of obviousness, the examiner has applied the
documents listed below:
Fujishiro et al. 4,696,489 Sep. 29,
1987
(Fujishiro)
Wolfe 4,953,089 Aug. 28,
1990
Ivers et al. 5,004,079 Apr. 2,
1991
(Ivers)
The following rejection, as set forth in the answer
Appeal No. 95-4918
Application No. 08/114,293
A final rejection of claim 23 under 35 U.S.C. § 112,2
second paragraph, was withdrawn by the examiner responsive to
an amendment after final (Paper No. 25).
3
(Paper No. 27), is the sole rejection before us for review.2
Claims 2 through 24 stand rejected under 35 U.S.C. § 103
as
being unpatentable over Fujishiro in view of Wolfe or Ivers in
view of Wolfe.
Appeal No. 95-4918
Application No. 08/114,293
An earlier reply brief (Paper No. 28) was denied entry3
by the examiner (Paper No. 30). A supplemental reply brief
(Paper No. 33) was also denied entry by the examiner (Paper
No. 34). Thus, these noted briefs are not before us.
In our evaluation of the applied patents, we have4
considered all of the disclosure thereof for what it would
have fairly taught one of ordinary skill in the art. See In
re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account
4
The full text of the examiner's rejection and response to
the argument presented by appellants appears in the main and
supplemental answers (Paper No. 27 and 32), while the complete
statement of appellants’ argument can be found in the main and
reply briefs (Paper Nos. 26 and 31).3
In the main brief (page 5), appellants indicate that
claims 2 through 24 stand together. In light thereof, we
select claim 13 for review, and claims 2 through 12 and 14
through 24 shall stand or fall therewith; 37 CFR §
1.192(c)(7).
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered
appellants’ specification and claim 13, the applied patents,4
Appeal No. 95-4918
Application No. 08/114,293
not only the specific teachings, but also the inferences which
one skilled in the art would reasonably have been expected to
draw from the disclosure. See In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
5
and
the respective viewpoints of appellants and the examiner. As
a
consequence of our review, we make the determination which
follows.
We reverse the rejection of appellants’ claims under
35 U.S.C. § 103.
Claim 13 is drawn to a device for damping the motion
sequences of two masses, comprising, inter alia, a signal
processing circuit including means for filtering at least
sensor output signals representing relative motion between the
two masses, dependent on frequencies of at least respective
ones of sensor output signals representing relative motion.
Akin to appellants’ invention, each of the relevant
patents
relied upon by the examiner addresses a circuit including
Appeal No. 95-4918
Application No. 08/114,293
6
sensors for detecting relative motion (speed or velocity)
between two masses (components of an automotive suspension
system).
The examiner relies upon the Wolfe disclosure as the
basis for the asserted obvious modification of either of the
Fujishiro or Ivers teachings to include a filter for the
respective
relative motion signals thereof. The proposed modification
would
have been obvious, according to the examiner, notwithstanding
the
Appeal No. 95-4918
Application No. 08/114,293
7
patentee Wolfe’s teaching of filtering only absolute motion
signals, the teaching being acknowledged by the examiner (main
answer, page 4).
The examiner refers us (main answer, page 4) to the
disclosure by Wolfe (column 3, lines 42 through 45) of a first
order low pass filter for eliminating unwanted “noise.”
Clearly, filters for noise elimination are known in this art.
However, the difficulty we have with the rejection before
us is that when we set aside what appellants have taught us in
the present application, and consider the evidence of
obviousness as a whole, we conclude that the evidence relied
upon would not have motivated one of ordinary skill in the art
to make the modification proposed by the examiner. Of
consequential importance to us is the circumstance that one of
ordinary skill
in this art would have been clearly instructed by the teaching
of Wolfe to only filter an absolute velocity signal, when both
absolute velocity and relative velocity signals are generated.
Appeal No. 95-4918
Application No. 08/114,293
8
Accordingly, based upon the stated deficiency in the evidence
of obviousness, we are constrained to reverse the rejection on
appeal.
The decision of the examiner is reversed.
REVERSED
)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
ICC/sld
Appeal No. 95-4918
Application No. 08/114,293
9
Anthony Niewyk
Baker & Daniels
111 East Wayne Street
Suite 800
Ft. Wayne, IN 46802