10463905 (B.P.A.I. Sep. 9, 2008)

Ex Parte Omi et al

Board of Patent Appeals and InterferencesSep 9, 2008

10463905 (B.P.A.I. Sep. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte TOSHIO OMI and YUKIHIRO SUGIMOTO ____________ Appeal 2008-1762 Application 10/463,905 Technology Center 3600 ____________ Decided: September 9, 2008 ____________ Before JENNIFER D. BAHR, LINDA E. HORNER, and MICHAEL W. O’NEILL, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Toshio Omi and Yukihiro Sugimoto (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 4-7. Claims 1-3 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal No. 2008-1762 Appl. No. 10/463,905 2 SUMMARY OF DECISION We AFFIRM. THE INVENTION The Appellants’ claimed invention is directed to a strut-type suspension device for an automobile (Spec. 1:¶0001). Claim 6, reproduced below, is representative of the subject matter on appeal (some paragraphing added). 6. A strut type suspension device which comprises a strut, an insulator supporting an upper end of the strut and mounted on a vehicle body, an upper seat arranged on a lower face of the vehicle body, a support member and a bearing interposed between the upper seat and the lower face of the vehicle body, a lower seat fixed to said strut, a compression coil spring arranged around the strut between the upper seat and the lower seat, and first and second angle adjusting members for causing the bearing to be mounted on the upper seat in an inclined fashion and a kingpin axis and the bearing central axis to approximately coincide so that no rotational moment is generated about the kingpin axis, Appeal No. 2008-1762 Appl. No. 10/463,905 3 the first angle adjusting member being integrally formed on the support member, which contacts with the base of the insulator, the second angle adjusting member being integrally formed with the upper seat, the device supporting the vehicle body by means of the strut and is capable of turning about the kingpin axis. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Momose US 6,923,461 B2 Aug. 2, 2005 The Appellants seek our review of the rejection of claims 4-7 under 35 U.S.C. § 102(e) as anticipated by Momose. ISSUE The issue before us is whether the Appellants have shown that the Examiner erred in rejecting claims 4-7 under 35 U.S.C. § 102(e) as being anticipated by Momose. This issue turns on whether Momose discloses an insulator “mounted on a vehicle body” and a “second angle adjusting member being integrally formed with the upper seat.” FINDINGS OF FACT We find that the following enumerated findings are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d Appeal No. 2008-1762 Appl. No. 10/463,905 4 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. A customary meaning of “mount” is to fix securely to a support: mount an engine in a car. The American Heritage Dictionary of the English Language (4th ed. 2000). 2. The Appellants’ Specification shows insulator 3 mounted on vehicle body 1 via a support member (unnumbered) (Spec.:¶¶0002, 0018, 0019 & Fig. 1). 3. Momose discloses an insulator 10c that is mounted to vehicle body 7 via upper bracket 17 (Momose, Fig. 2). 4. The Specification describes an integral angle adjusting member as follows: “[T]he upper sheet [sic, seat] 5 is inclined at an angle as shown in the Figure, so insertion of an angle adjusting member 11 as a separate member is not required either” (Spec.:¶0022; Fig. 3). 5. Elsewhere, the Specification generally describes the angle adjusting members as being used to mount bearing 4 on the upper seat 5 with an angle (Spec.:¶0019). 6. Momose’s upper spring seat 8c has a portion that underlies the bearing 9c and is thus used, in conjunction with the first angle adjusting member 16c, to mount the bearing to the upper seat 8c with an angle that is coincident with a kingpin axis 20 (Momose, Fig. 2). 7. Further, Momose’s upper spring seat 8c is inclined at an angle (Momose, Fig. 2). Appeal No. 2008-1762 Appl. No. 10/463,905 5 8. As such, the portion of the upper spring seat 8c that underlies the bearing 9c is an angle adjusting member. 9. The Appellants’ Specification does not describe that the second angle adjusting member has to have a thicker portion under one side of the bearing in order to mount the bearings at the required angle. PRINCIPLES OF LAW “Both anticipation under § 102 and obviousness under § 103 are two- step inquiries. The first step in both analyses is a proper construction of the claims. . . . The second step in the analyses requires a comparison of the properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted). We determine the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not a part of the Appeal No. 2008-1762 Appl. No. 10/463,905 6 claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.”) The challenge is to interpret claims in view of the specification without unnecessarily importing limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). ANALYSIS The Appellants argue claims 4-7 as a group. As such, we select claim 6 as representative of the group, and claims 4, 5, and 7 will stand or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(vii) (2007). The Appellants argue the Examiner incorrectly found that bracket 17 of Momose is the claimed insulator (Reply Br. 2). The Examiner presumably used bracket 17 as the insulator because claim 6 requires that the insulator is “mounted on” the vehicle body. Momose’s insulator 10c is not mounted directly on vehicle body 7; rather, the insulator 10c is mounted on vehicle body 7 via bracket 17 (Fact 3). In order to determine whether the insulator 10c of Momose is “mounted on” the vehicle body as claimed, we must first interpret the phrase “mounted on” as used in claim 6 to determine whether this phrase requires Appeal No. 2008-1762 Appl. No. 10/463,905 7 direct mounting of the insulator on the vehicle body. A customary meaning of “mount” is to fix securely to a support: mount an engine in a car (Fact 1). The Appellants’ Specification shows insulator 3 mounted on vehicle body 1 via a support member (unnumbered) (Fact 2). One having ordinary skill in the art would understand “mounted on,” as that phrase is used within the context of the claims and in view of the disclosure in the Appellants’ Specification, to mean that the insulator is fixed securely to the vehicle body either directly or via an intermediate bracket. Since Momose clearly discloses an insulator 10c that is mounted to vehicle body 7 via upper bracket 17 (Fact 3), Momose still anticipates this element of claim 6, notwithstanding the Examiner’s incorrect description in the Answer. The Appellants also contend the Examiner erred in rejecting claim 6 because Momose does not disclose “a second angle adjusting member integrally formed with the upper seat for causing the bearing to be mounted on the upper seat in an inclined fashion and a kingpin axis and the bearing central axis to approximately coincide” (App. Br. 5). The Examiner pointed to the portion of the upper spring seat 8c that is adjacent to the bearing 9c as corresponding to the second angle adjusting member (Ans. 3). The Appellants contend that this portion of the upper spring seat 8c cannot satisfy the limitation of the second angle adjusting member because the upper portion of the upper side spring seat 8c has the same thickness throughout and does not provide an angle adjusting function at its outer peripheral portion (App. Br. 4). Appeal No. 2008-1762 Appl. No. 10/463,905 8 This angle adjusting member is depicted in the Appellants’ Specification in Figure 3. The Specification describes, “the upper sheet [sic, seat] 5 is inclined at an angle as shown in the Figure, so insertion of an angle adjusting member 11 as a separate member is not required either” (Fact 4). Elsewhere, the Specification generally describes the angle adjusting members as being used to mount bearing 4 on the upper seat 5 with an angle (Fact 5). One having ordinary skill in the art would understand “angle adjusting member” to refer to a member that is used to mount a bearing on an upper seat with an angle and would understand the specific second angle adjusting member of claim 6 to refer to an upper seat that is inclined at an angle. Momose’s upper spring seat 8c has a portion that underlies the bearing 9c and which mounts the bearing at an angle that is coincident with a kingpin axis 20 (Fact 6). Further, Momose’s upper spring seat 8c is inclined at an angle (Fact 7). As such, we agree with the Examiner that the portion of the upper spring seat 8c that underlies the bearing 9c is the second angle adjusting member, as recited in claim 6 (Fact 8). We do not agree with the Appellants that the second angle adjusting member has to have a thicker portion under the bearing 9c. This is nowhere described as a structural requirement of the angle adjusting member in the Specification (Fact 9). Appeal No. 2008-1762 Appl. No. 10/463,905 9 CONCLUSIONS We conclude the Appellants have failed to show that the Examiner erred in rejecting claims 4-7 under 35 U.S.C. § 102(e) as anticipated by Momose. DECISION The decision of the Examiner to reject claims 4-7 is affirmed. 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) (2007). AFFIRMED LV: FLYNN THIEL BOUTELL & TANIS, P.C. 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1631