Ex Parte Pillers et al

Board of Patent Appeals and Interferences

Mar 11, 2011

11452377 (B.P.A.I. Mar. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/452,377 06/14/2006 Lauritz Phillip Pillers II 08350.3436 3515
58982 7590 03/11/2011
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON, DC 20001-4413
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
03/11/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAURITZ PHILLIP PILLERS II and CHUNHUI PAN
____________

Appeal 2009-012546
Application 11/452,377
Technology Center 3700
____________

Before LINDA E. HORNER, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012546
Application 11/452,377

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STATEMENT OF THE CASE
Lauritz Phillip Pillers II and Chunhui Pan (Appellants) seek our
review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1,
3-12, 15, and 17-21. Claims 2 and 16 have been canceled, claims 13 and 14
have been objected to, and claim 22 has been allowed. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
THE INVENTION
Appellants’ claimed invention is “a shock absorber for a hydraulic,
electric or pneumatic impact tool assembly.” Spec. 1, para. [0001].
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A tool assembly comprising a housing defining a
chamber, a reciprocating work tool arranged in the chamber for
cyclical movement in a work stroke and a return stroke, and a
tool retention member arranged to restrain the work tool at the
end of the work stroke,
wherein the tool assembly includes a shock absorbing
resilient flange forming part of a bushing,2 the shock absorbing
resilient flange at least partially surrounding the work tool and
arranged to absorb impact from the work tool.
THE EVIDENCE
The Examiner relies upon the following evidence:
Gartin US 2,512,149 Jun. 20, 1950
Liddicoat US 2,685,274 Aug. 3, 1954
Lang US 3,341,213 Sep. 12, 1967

2 Independent claim 15 similarly calls for “a shock absorbing resilient flange
forming part of a bushing.” Independent claim 21 calls for the tool assembly
to include “a shock absorbing resilient flange forming part of the work tool.”
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THE REJECTIONS
Appellants seek review of the following rejections:
1. The Examiner rejected claims 1, 3-5, 7, 11, 15, 17, 18, 20, and 21
under 35 U.S.C. § 102(b) as being anticipated by Liddicoat.
2. The Examiner rejected claims 6, 8-10, and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Liddicoat and Gartin.
3. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over Liddicoat and Lang.
ISSUES
The Examiner found that Liddicoat’s resilient annular collar 28
corresponds to the claimed “shock absorbing resilient flange” and
Liddicoat’s ferrule 31 corresponds to the claimed bushing. Ans. 3, 5.
Appellants contend that the Examiner erred in rejecting claims 1 and 15
because “the ferrule 31 is not a bushing by any reasonable definition that
would be accepted by one having ordinary skill in the art.” Br. 10. See also
Br. 11 (citing Liddicoat for an understanding of what may properly be
characterized in the art as a “bushing”). Appellants further contend the
Examiner erred in rejecting claim 21 because “[i]n the context of Liddicoat’s
disclosure, the resilient annular collar 28 of Liddicoat is not a ‘resilient
flange’ by any reasonable definition that would be accepted by one having
ordinary skill in the art.” Br. 16-17.
One issue before us is whether the Examiner erred in finding that the
combination of Liddicoat’s resilient collar 28 and ferrule 31 anticipates “a
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Application 11/452,377

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shock absorbing resilient flange forming part of a bushing” as called for in
independent claims 1 and 15.
Another issue before us is whether the Examiner erred in finding that
Liddicoat’s resilient collar 28 anticipates “a shock absorbing resilient flange
forming part of the work tool” as called for in independent claim 21.
ANALYSIS
Claims 1 and 15
The Examiner interpreted “bushing” according to its dictionary
definition as a “replaceable thin tube or sleeve, usually of bronze, mounted
in a case or housing as a bearing.” Ans. 5. Based on this definition, the
Examiner found that Liddicoat’s ferrule 31 along with the shock absorbing
resilient collar 28 support the tool assembly as it reciprocates, thereby acting
as a bearing. Id. We disagree with the Examiner’s finding that the ferrule
31 and the shock absorbing resilient flange 28 of Liddicoat collectively act
as a bearing.
Appellants’ Specification describes that a “shaft 42 [of work tool 20]
passes through a tool retention member 80 in the form of a bushing with a
central aperture 82.” Spec. 3, para. [0018]. “The tool retention member 80
and the housing 11 [of the tool assembly 10] are connected by an engaging
structure 90.” Spec. 4, para. [0020]. Appellants’ Specification thus
describes that the work tool 20 can move within the bushing 80 in the
direction of arrows 22 and 24. Spec. 5-6, para. [0024], fig. 2. As such, the
“bushing” described in Appellants’ Specification is a tube through which the
shaft of the work tool moves. This description in Appellants’ Specification
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Application 11/452,377

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comports with the ordinary meaning of “bushing” adopted by the Examiner
which requires the thin tube or sleeve to be mounted in a case or housing as
a bearing.3
Liddicoat discloses “a pneumatic tool provided with a resiliently
mounted stop collar.” Liddicoat, col. 1, ll. 2-3. In particular, Liddicoat
discloses a pneumatic tool 22 provided with a collar 27 positioned
intermediate the tool shank and comprising a resilient annular collar 28
adhesively secured or otherwise fastened to the shank and enclosed by a
metallic or other rigid ferrule 31, which is concentric with the tool shank and
which is adhesively or otherwise secured to the outer peripheral surface of
the collar 28. Liddicoat, col. 3, ll. 15-29. When a piston 13 causes the
tool 22 to move, the collar 27 is moved therewith, and the collar, upon
contacting a flange 20 of retainer 14, halts the forward movement of the
tool 22, such that the resilient collar 28 absorbs at least a portion of the
shock which would normally be imparted to the tool and/or to the composite
collar by abrupt halting of the tool upon abutment of the collar with the
flange 20. Liddicoat, col. 3, ll. 41-57; fig. 3.
Liddicoat’s resilient collar 28 and ferrule 31 are securely fastened to
the shank of the tool 22 such that the collar 28 and ferrule 31 move with the
tool 22. Thus, the combined collar 28 and ferrule 31 are not acting as a

3 The ordinary meaning of “bearing” is “Mechanical Engineering: Any part
of a machine or device that supports or carries another part that is in motion
in or upon it, such as a journal bearing.” ACADEMIC PRESS DICTIONARY OF
SCIENCE AND TECHNOLOGY (1992), available at http://www.credo
reference.com/entry/apdst/bearing/2 (emphasis added).
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bushing in Liddicoat because the collar 28 and ferrule 31 do not support
another part of the tool assembly that is in motion in or upon it, but rather
move with the tool assembly, namely, tool 22. The Examiner’s rejection of
claims 1, 3-5, 7, 11, 15, 17, 18, and 20 under 35 U.S.C. § 102(b) as
anticipated by Liddicoat, as well as the Examiner’s rejection of claims 6, 8-
10, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Liddicoat
and Gartin, and the Examiner’s rejection of claim 12 under 35 U.S.C.
§ 103(a) as being unpatentable over Liddicoat and Lang, are all based on the
erroneous finding of fact that Liddicoat discloses the claimed bushing. As
such, we reverse these rejections.
Claim 21
Claim 21 is directed to the embodiment of Figure 8 of Appellants’
Specification in which the resilient flange forms part of the work tool.
Spec. 8, para. [0032]. Claim 21 does not call for a bushing.
The Examiner interpreted “flange” according to its dictionary
definition as “a projecting rim, collar, or ring on a shaft, pipe, machine
housing, etc., cast or formed to give additional strength, stiffness, or
supporting area, or to provide a place for the attachment of other objects.”
Ans. 5. Based on this definition, the Examiner found that “Liddicoat’s
shock absorbing piece . . . is a projecting collar on the shaft of the tool
assembly” and is therefore a “flange”. Id.
Appellants argue that the Examiner erred in this finding because
Liddicoat uses the word “flange” to refer to other portions of its tool
assembly and does not use the word “flange” to refer to resilient collar 28.
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Br. 16-17. We are not convinced of error simply because the author of
Liddicoat chose to use a different term for the resilient collar 28 given the
broad ordinary meaning of “flange.” According to the Examiner’s proffered
definition, a collar is one type of flange. Further, Appellants do not provide
any evidence, other than Liddicoat, to support their contention that one
having ordinary skill in the art would not consider the expressly designated
collar 28 of Liddicoat to be a resilient flange.
As we found supra, Liddicoat’s resilient annular collar 28 is
adhesively secured or otherwise fastened to the shank of tool 22. Liddicoat,
col. 3, ll. 15-29. When a piston 13 causes the tool 22 to move, the collar 27
is moved therewith, and the collar, upon contacting a flange 20 of retainer
14, halts the forward movement of the tool 22, such that the resilient collar
28 absorbs at least a portion of the shock which would normally be imparted
to the tool and/or to the composite collar by abrupt halting of the tool upon
abutment of the collar with the flange 20. Liddicoat, col. 3, ll. 41-57; fig. 3.
As such, Liddicoat’s resilient collar 28 forms part of work tool 22 by virtue
of it being fastened to the work tool, and it provides additional strength to
the work tool by absorbing some of the shock that would normally be
imparted to the tool, and thus functions in much the same way as
Appellants’ resilient flange 402 described with reference to the Figure 8
embodiment. As such, we affirm the Examiner’s rejection of claim 21 under
35 U.S.C. § 102(b) as being anticipated by Liddicoat.
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CONCLUSIONS
Liddicoat’s resilient collar 28 and ferrule 31 do not anticipate “a
shock absorbing resilient flange forming part of a bushing” as called for in
independent claims 1 and 15.
Liddicoat’s resilient collar 28 anticipates “a shock absorbing resilient
flange forming part of the work tool” as called for in independent claim 21.
DECISION
The decision of the Examiner to reject claims 1, 3-12, 15, and 17-20 is
REVERSED.
The decision of the Examiner to reject claim 21 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).

AFFIRMED-IN-PART

nlk

CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON DC 20001-4413