Ex Parte Pang

Board of Patent Appeals and Interferences

Aug 11, 2009

10679051 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YI-HSUNG PANG1
____________________

Appeal 2009-004272
Application 10/679,051
Technology Center 3600
____________________

Decided: August 11, 2009
____________________

Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, and
JAMESON LEE and SALLY G. LANE, Administrative Patent Judges.

MOORE, Vice Chief Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is Yi-Hsung Pang. (App. Br. 1).
Appeal 2009-004272
Application 10/679,051

2
STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 (2002) from a final 2
rejection of claims 12-30.2 We have jurisdiction under 35 U.S.C. § 6(b) 3
(2008). 4
The Appellant’s claims are directed to a braking buffer device. (Spec. 5
1, ll. 6-7). 6
Claims 12, 26, 27 and 28 are the only independent claims in the 7
application. The Appellant asserts the same arguments for claims 12-22 and 8
26-28. Therefore, we select claim 12 to decide the appeal regarding these 9
rejections. The Appellant separately asserts the same arguments for claims 10
23-25, 29, and 30. Therefore, we select claim 23 to decide the appeal 11
regarding these rejections. See 37 C.F.R. § 41.37(c)(1)(vii) (2008). 12
Accordingly, claims 12-22 and 26-28 stand or fall with claim 12 and claims 13
23-25, 29 and 30 stand or fall with claim 23. 14
Claim 12 reads as follows: 15
12. A braking buffer device for a motorcar having a front and 16
a back, said braking buffer device intended to provide a more 17
comfortable braking experience for passengers of said 18
motorcar, said braking buffer device comprising: 19
a guiding axis coupled from said front to said back of 20
said motorcar; 21
a weighty drum circumferentially surrounding a portion 22
of said guiding axis equal to a length of said weighty drum such 23
that said weighty drum is capable of moving along said guiding 24
axis, said guiding axis confining motion of said weighty drum 25
between said front and said back of said motorcar, said weighty 26
drum having a predefined resting position upon said guiding 27
axis wherein said weighty drum moves toward said front of said 28

2 Claims 1-11 have been canceled. (App. Br. 1).
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motorcar when brakes of said motorcar are engaged while said 1
motorcar is in motion and said weighty drum returns to said 2
predefined resting position after said motorcar slows down or 3
comes to a stop; and 4
a recovery device tending to bias said weighty drum to 5
said predefined resting position. 6
7
Claim 23 reads as follows: 8
23. A braking buffer device as recited in claim 12, wherein 9
said guiding axis is tilted down towards said front of said 10
motorcar. 11
(App. Br. 13, Claims App’x.). 12
13
Figures 1 and 5 from the Application, reproduced below, illustrate one 14
embodiment of the claimed braking buffer device. (Spec. 4, ll. 7-16). 15
16
17
18
19
20
21
22
23
24
25
{Figure 1 illustrates the structure of a braking buffer device of the 26
invention comprising the weighty drum 114 and guiding axis 108. 27
Figure 5 illustrates two braking buffer devices 504, 504’ of the 28
invention under the body of a car. (Id.).} 29
30
31
32
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4
THE EVIDENCE 1
The Examiner relies upon the following as evidence in support of the 2
rejections: 3
4
Hanel US 2,155,130 Apr. 18, 1939 5
Palowsky US 3,501,167 Mar. 17, 1970 6
Carlson US 3,614,126 Oct. 19, 1971 7
Powers US 4,588,206 May 13, 1986 8
9
THE REJECTIONS 10
The following rejections are before us for review: 11
1. Claims 12-16, 19, 20, and 26-28 stand rejected under 35 U.S.C. § 12
103(a) as being unpatentable over the combination of Carlson and Palowsky. 13
2. Claims 17, 18, 21 and 22 stand rejected under 35 U.S.C. § 103(a) as 14
being unpatentable over the combination of Carlson, Palowsky and Hanel. 15
3. Claims 23-25, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as 16
being unpatentable over the combination of Carlson, Palowsky and Powers. 17
We AFFIRM. 18
ISSUE 19
Has the Appellant established that the Examiner erred in determining 20
that it would have been obvious to one of ordinary skill in the art at the time 21
the invention was made to re-orient a known braking buffer device? 22
FINDINGS OF FACT 23
The record supports the following findings of fact by a preponderance 24
of the evidence. 25
1. Carlson describes a stabilizing device for automotive vehicles 26
consisting of one or more masses, i.e., weighty drums, adapted to be 27
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disposed upon the vehicle such that “the generally longitudinal axis of the 1
stabilizer assemblies is disposed in the normal direction of travel of the 2
vehicle.” (Carlson col. 3, ll. 26-28). 3
2. Carlson describes that the masses are positioned “so that 4
substantially universal pivotal movement of the center of gravity of the mass 5
about a point may be realized as the vehicle is subjected to transient forces.” 6
(Carlson Abstract). 7
3. Carlson describes that vehicle stabilization systems in which “the 8
mass is free to slide along a single axis as, for example, by mounting a 9
weight so that it is free to slide along a rod extending transversely between 10
the rear wheels” were known in the art. (Id. at col. 1, ll. 37-44). 11
4. Palowsky describes “[a] vehicle stabilizer having an inertia 12
actuated mass, [i.e., weighty drum,] which applies a counteracting force in 13
the opposite direction” to both sudden lateral movements and front-to-rear 14
movements of the vehicle. (Palowsky Abstract). 15
5. Palowsky figure 2 is reproduced below: 16
17
18
{Figure 2 shows of the invention. (Id.).} 19
20
21
{Figure 2 shows a side elevational view of the 22
stabilizer of the invention. (Id. at col. 2, ll. 7-8).} 23
24
6. Palowsky describes that the stabilizer comprises a cylindrical 25
weight 8, i.e., weighty drum, slidably and rotatably mounted on the shaft 7, 26
i.e., guiding axis, and “is axially biased to the medial portion of the housing 27
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by a pair of compression springs, each of which is mounted between an end 1
of the housing and a respective end of the weight.” (Id. at col. 1, ll. 48-58; 2
col. 2, ll. 20-24). 3
7. Powers describes a vehicle stabilizing apparatus for reducing 4
vehicle skidding and for dampening vehicle vibration. (Powers Abstract). 5
8. Powers figure 4 is reproduced below: 6
7
8
9
10
11
12
{Figure 4 shows a perspective view of the 13
stabilizer of the invention installed within the trunk 14
compartment of an automobile. (Id. at col. 2, ll. 27-29).} 15
16
9. Powers describes that the stabilizer comprises “an inverted V-17
shaped hollow tubular member or housing 20 positioned transversely to the 18
imaginary longitudinal axis of vehicle 10.” (Id. at col. 2, ll. 50-52). 19
10. Powers describes that the inverted V-Shaped configuration allows 20
the weight(s) to react more effectively to counteract the centrifugal forces on 21
the vehicles than stabilizers using a straight horizontal tube. (Id. at col. 1, ll. 22
23-29). 23
11. Powers describes that the degree of bend or the angle at the apex 24
of the inverted V-shaped tubular member 20 may be increased or decreased 25
in accordance with specific requirements of the vehicle to optimize 26
stabilizing results. (Id. at col. 3, ll. 29-43). 27
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PRINCIPLES OF LAW 1
“A reference may be said to teach away when a person of ordinary 2
skill, upon reading the reference, would be discouraged from following the 3
path set out in the reference, or would be led in a direction divergent from 4
the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 5
(Fed. Cir. 1994). 6
“A known or obvious composition does not become patentable simply 7
because it has been described as somewhat inferior to some other product for 8
the same use.” Id. 9
“If a person of ordinary skill can implement a predictable variation, 10
§ 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 11
398, 417 (2007). 12
ANALYSIS 13
I. The Rejection of Claims 12-16, 19, 20, 26, 27 and 28 under 35 U.S.C. 14
§ 103(a) over the combination of Carlson and Palowsky. 15
Claims 12-16, 19, 20, 26, 27 and 28 stand rejected under 35 U.S.C. § 16
103(a) over the combination of Carlson and Palowsky.3 17
A. The Examiner’s Rejection 18
The Examiner found that Carlson describes a braking buffer 19
comprising a weight element or drum 63/65 movable along an axis parallel 20
to the front to rear axis of the vehicle, which drum will move toward the 21
front of the motorcar when brakes of the motorcar are engaged while the 22
motorcar is in motion, and then the drum returns to the predefined resting 23

3 Although not included in the heading in the Final Rejection, claim 13
remains rejected under 35 U.S.C. § 103(a) over the combination of Carlson
and Palowsky. (See Final Rejection 3).
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position after the motorcar slows down or comes to a stop. (Final Rejection 1
2). 2
The Examiner found that Palowsky describes a vehicle stabilizer that 3
comprises a weighty drum 8 biased in opposing directions along a single 4
guiding axis 7. (Id.). The Examiner also found that the drum surrounds a 5
portion of the guiding axis and is capable of moving along the guiding axis 6
in either direction. (Id.). Additionally, the Examiner found that the 7
stabilizer is provided with a supporting frame 4, and a coiled spring as a 8
recovery device. (Id.). 9
Therefore, the Examiner determined that it would have been obvious 10
to one of ordinary skill in the art to have substituted the stabilizing devices 11
of Carlson with the stabilizing device taught by Palowsky because the 12
devices “are considered to be functional equivalents aimed at achieving the 13
same result which is to stabilize the motion of the vehicle, in both the 14
longitudinal and lateral directions.” (Id. at 2-3). According to the Examiner, 15
the stabilizing devices taught by Palowsky would have been oriented as 16
intended by Carlson. (Id. at 3). 17
B. The Appellant’s Contentions 18
The Appellant challenges the Examiner’s rejection by asserting that 19
Carlson and Palowsky teach away from the claimed subject matter. (App. 20
Br. 6). Initially, we note that the arguments are all arguments of counsel, 21
and we are not provided with declaratory evidence in support of the 22
contentions. 23
The Appellant specifically argues that Carlson describes that the mass 24
“is entirely ineffective for stabilizing the vehicle except with regard to the 25
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forces exerted along the axis in which it is free to move.” (Id.) (quoting 1
Carlson col. 1, ll. 44-47). The Appellant also asserts that Carlson describes 2
that drums 63/65 are adapted such that “substantially universal pivotal 3
movement of the center of gravity of the [drum] about a point may be 4
realized.” (Id. at 7) (quoting Carlson Abstract). Therefore, the Appellant 5
asserts that Carlson’s drums “necessarily move in a direction beyond a 6
single axis.” (Id.). 7
This argument is not persuasive. A prior art “reference must be 8
considered for everything it teaches by way of technology and is not limited 9
to the particular invention it is describing and attempting to protect.” EWP 10
Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). 11
Carlson describes an improved stabilizing device that provides more 12
comprehensive vehicle stabilization. (Carlson at col. 1, ll. 55-57). In the 13
cited sections, Carlson describes some of the previously proposed systems, 14
e.g. linear systems, to be somewhat inferior stabilization devices than the 15
invention of Carlson. 16
However, “[a] known or obvious composition does not become 17
patentable simply because it has been described as somewhat inferior to 18
some other product for the same use.” In re Gurley, 27 F.3d 551, 553 (Fed. 19
Cir. 1994). 20
The Appellant next urges that Palowsky teaches away from the 21
claimed invention in that it requires a heavy weight and offers no protection 22
from fishtailing. (App. Br. 8). Appellants conclude that this somehow 23
teaches away from the claimed subject matter. We fail to see how a 24
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disclosure of the same type of mechanism, albeit inferior, can be a 1
persuasive teaching away. 2
For example, Palowsky is relied upon by the Examiner to teach the 3
specific linear structure of the now claimed braking buffer, i.e., “a weighty 4
drum circumferentially surrounding a portion of said guiding axis equal to a 5
length of said weighty drum such that said weighty drum is capable of 6
moving along said guiding axis….” (Final Rejection 2; Ans. 6). 7
The Appellant also asserts that Palowsky “teaches away from the 8
claimed invention which has a weight drum with a center of gravity around 9
the guiding axis.” (Reply Br. 5). 10
This argument is also unpersuasive. The instant claims do not require 11
a particular center of gravity. 12
Overall, Palowsky expressly describes that, despite their 13
disadvantages, the previously employed stabilizers comprising a freely 14
slidable mass of inertia “have been satisfactory for their intended purpose,” 15
i.e., vehicle stabilization. (Palowsky col. 1, ll. 35-37). This does not 16
constitute a teaching away. 17
The Appellants next assert that “because Carlson teaches away from a 18
mass free to slide along a single axis, it improper to combine Carlson with 19
Palowsky.” (App. Br. 8). 20
We remain unpersuaded by this assertion. As noted above, Carlson 21
describes the known linear stabilizer art. Both Carlson and Palowsky 22
describe buffer devices for stabilizing a vehicle during acceleration 23
operations. Carlson describes orienting the device in a longitudinal 24
direction, i.e., from the front to back of a vehicle. The Examiner found it 25
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would have been obvious to a person of ordinary skill in the art at the time 1
the invention was made to orient the system of Palowsky in a longitudinal 2
direction (rather than laterally), as taught by Carlson. (See KSR, 550 U.S. at 3
417 (“If a person of ordinary skill can implement a predictable variation, § 4
103 likely bars its patentability.”). The Appellant has not established 5
otherwise with any persuasive evidence. 6
Accordingly, we affirm the Examiner’s obviousness rejections of 7
claims 12-16, 19, 20, and 26-28. 8
II. The Rejection of Claims 17, 18, 21 and 22 under 35 U.S.C. § 103(a) 9
over the combination of Carlson, Palowsky and Hanel. 10
Claims 17, 18, 21 and 22 stand rejected under 35 U.S.C. § 103(a) over 11
the combination of Carlson, Palowsky and Hanel. (Final Rejection 3). 12
The Appellant challenges the Examiner’s rejection by asserting the 13
same argument raised regarding the rejection of claims 12, 14-16, 19, 20, 26, 14
27 and 28. (See App. Br. 9; Reply Br. 6). Consequently, we conclude that 15
the Appellant has not established that the Examiner erred in rejecting these 16
claims for the same reasons discussed supra. 17
Accordingly, we affirm the Examiner’s obviousness rejections of 18
claims 17, 18, 21 and 22. 19
III. The Rejection of Claims 23-25, 29, and 30 under 35 U.S.C. § 103(a) 20
over the combination of Carlson, Palowsky and Powers. 21
Claims 23-25, 29 and 30 stand rejected under 35 U.S.C. § 103(a) over 22
the combination of Carlson, Palowsky and Powers. 23
24
25
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A. The Examiner’s Rejection 1
The Examiner found that the combination of Carlson and Palowsky 2
teach the claimed invention, except for describing the buffer being set to 3
various angles relative to the vehicle, e.g., 1 and 4 degrees. (Final Rejection 4
4). However, the Examiner found that Powers describes a vehicle stabilizing 5
or buffer device that is situated at an angle relative to the vehicle to improve 6
the response of the stabilizing device. (Id.). Therefore, the Examiner 7
determined that it would have been obvious to a person of ordinary skill in 8
the art at the time the invention was made to have the stabilizers of Carlson, 9
as modified by Palowsky, angled to improve the damping response of the 10
stabilizer, as taught by Powers. (Id.). 11
Further, the Examiner found that it would have been an obvious 12
matter of design choice to have chosen the angle best suited for the subject 13
vehicle, including angles of 1 and 4 degrees, and to have biased the weight 14
toward the back of the motorcar when in a rest position. (Id.). According to 15
the Examiner, the Appellant has not disclosed that having the recited angle 16
or rest position solves any stated problem or is for any particular purpose. 17
(Id.). The Examiner also found that the braking buffer of Carlson, as 18
modified by Palowsky, would appear to have performed equally well at an 19
angle of between 1 and 4 degrees as well as having the rest position of the 20
weight toward the rear of the vehicle. (Id.). 21
B. The Appellant’s Contentions 22
The Appellant challenges the Examiner’s rejection by asserting that 23
“the cited references do not teach all of the essential elements of [the] 24
claims.” (App. Br. 10). The Appellant repeats the argument that “Carlson 25
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teaches away from a mass free to slide along a single axis;” that “Palowsky 1
teaches away from a mass circumferentially surrounding a portion of a 2
guiding axis capable of moving along the guiding axis oriented parallel to 3
the direction of travel of the car;” and that “it is improper to combine 4
Carlson and Palowsky.” (Id.). 5
We have already considered these arguments and found them 6
unpersuasive for the reasons stated above. 7
The Appellant additionally argues that claims 23, 24, 29 and 30 teach 8
that “said guiding axis is tilted down towards said front of said motorcar,” 9
and claim 25 teaches that the resting position of said “weight drum is 10
positioned towards said back of said motor car….” (App. Br. 10-12). 11
According to the Appellant, “the limitation specified in dependent claims 12
23-25, 29, and 30 only provides for a single tilt of the guiding axis.” (Reply 13
Br. 7). 14
The Appellant also asserts that the guiding axis recited in the claims 15
“is a single straight tube oriented longitudinally with respect to the car, 16
rather than a V-shaped tube oriented transversely.” (App. Br. 10) (citing 17
Spec. 6, l. 23 - 7, l. 10). The Appellant contends that “a guiding axis 18
oriented in a direction transverse to the car does not work in the same way as 19
a guiding axis oriented in a direction longitudinal to the car.” (Reply Br. 7). 20
According to the Appellant, the stabilizer in Powers acts to maintain 21
the rear wheels of the vehicle in contact with the road surface, whereas in the 22
presently claimed invention, the weighty drum will move toward the front 23
wheels upon deceleration of the car producing a downward component force 24
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mostly on the front wheels to increase frictional force and prevent slipping. 1
(Id.). 2
This argument is unpersuasive. First, as noted above, it is attorney 3
argument and is not evidence. Second, the Examiner relied upon Carlson’s 4
teaching to position Palowsky’s braking buffer device in a longitudinal 5
orientation in a vehicle. The Examiner then relied upon Powers’ teaching 6
that the response of a stabilizing device may be improved by providing the 7
stabilizer with an angle of a variable and desired degree. Thus, the 8
Examiner relied upon Powers’ teaching to angle, i.e., tilt, the axis of the 9
stabilizer. The Examiner did not rely upon Powers for the transverse 10
direction of the disclosed device in the combination. 11
Moreover, the instant claims are neither drawn to a “straight tube” nor 12
recite “a single tilt of the guiding axis,” as urged by the Appellant. Rather, 13
as broadly claimed, the instant invention does not exclude a V-shaped tube 14
tilted down towards the front of the motor car and further tilted down toward 15
the back of the car. 16
Finally, where general conditions of the appealed claim are disclosed 17
in the prior art, it is not inventive to discover optimum or workable ranges 18
by routine experimentation, and appellants have the burden of proving any 19
criticality. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 20
F.2d 454, 456 (CCPA 1955). The Appellant has provided no persuasive 21
evidence that the claimed range of tilt is critical or evidence in support of a 22
conclusion of nonobviousness. 23
Consequently, we affirm the Examiner’s rejection. 24
25
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CONCLUSION 1
On the record before us, the Appellants have not shown error on the 2
part of the Examiner. 3
It would have been obvious to one of ordinary skill in the art at the 4
time the invention was made to orient a known linear braking buffer device 5
in a longitudinal direction and adjust its tilt for optimized performance. 6
DECISION 7
The Rejection of claims 12, 14-16, 19, 20, and 26-28 under 35 U.S.C. 8
§ 103(a) as being unpatentable over the combination of Carlson and 9
Palowsky is AFFIRMED. 10
The Rejection of claims 17, 18, 21 and 22 under 35 U.S.C. § 103(a) as 11
being unpatentable over the combination of Carlson, Palowsky and Hanel is 12
AFFIRMED. 13
The Rejection of claims 23-25, 29 and 30 under 35 U.S.C. § 103(a) as 14
being unpatentable over the combination of Carlson, Palowsky and Powers 15
is AFFIRMED. 16
No time period for taking any subsequent action in connection with 17
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2008). 18
19
AFFIRMED 20
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