Ex parte RAZA et al.

Board of Patent Appeals and Interferences

Mar 25, 1999

08530006 (B.P.A.I. Mar. 25, 1999)

Application for patent filed September 19, 1995. 1
In the brief (p. 1), the appellants requested that claim2
14 be amended. In the answer (p. 2), the examiner noted that
the requested amendment to claim 14 was improper, however, the
examiner indicated that claim 14 has been informally amended
to read as requested by the appellants. We suggest that the
appellants submit a formal amendment to claim 14. Since the
rejection of claim 14 under 35 U.S.C. § 112, second paragraph,
raised in the final rejection was not repeated in the answer,
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for publication in a law journal and (2) is not binding precedent of the Board.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 IRFAN F. RAZA and RONALD D. WALTHER
____________
Appeal No. 98-1457
Application No. 08/530,0061
____________
ON BRIEF
____________
Before STAAB, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
STAAB, Administrative Patent Judge, dissenting.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 15, which are all of the claims
pending in this application.2
Appeal No. 98-1457
Application No. 08/530,006
we assume that this rejection has been withdrawn by the
examiner. See Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957).
We REVERSE.
Appeal No. 98-1457 Page 3
Application No. 08/530,006
BACKGROUND
The appellants' invention relates to a vehicular wheel
suspension link. An understanding of the invention can be
derived from a reading of exemplary claim 1, which appears in
the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Schlechtendahl 3,266,339 Aug.
16, 1966
Hynds 5,064,216 Nov. 12,
1991
Crandall 5,282,396 Feb. 1,
1994
Jacques et al. 5,417,499 May
23, 1995
(Jacques)
Scowen WO 86/04122 July 16, 1986
Claims 1 through 10 and 13 through 15 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Crandall in
view of Scowen and Schlechtendahl.
Appeal No. 98-1457 Page 4
Application No. 08/530,006
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Crandall in view of Scowen,
Schlechtendahl and Jacques.
In addition to the two grounds of rejection set forth
above, the examiner's answer set forth the following new
grounds of rejection.
Claims 1 through 4, 7 through 10 and 13 through 15 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Crandall in view of Hynds and Schlechtendahl.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Crandall in view of Hynds,
Schlechtendahl and Scowen.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Crandall in view of Hynds,
Schlechtendahl and Jacques.
Appeal No. 98-1457 Page 5
Application No. 08/530,006
In view of our determination that the examiner has not3
established a prima facie case of obviousness with respect to
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 10, mailed April 16, 1997) and the supplemental examiner's
answer (Paper No. 12, mailed August 29, 1997) for the
examiner's complete reasoning in support of the rejections,
and to the appellants' brief (Paper No. 9, filed January 29,
1997) and reply brief (Paper No. 11, filed June 16, 1997) for
the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to claims 1 through 15. Accordingly, we will3
Appeal No. 98-1457 Page 6
Application No. 08/530,006
claims 1 through 15, we have not considered the evidence of
nonobviousness submitted by the appellants (i.e., the May 14,
1996 declaration of Irfan Raza).
not sustain the examiner's rejections of claims 1 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). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
Appeal No. 98-1457 Page 7
Application No. 08/530,006
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
The appellant argues that the applied prior art does not
suggest the claimed subject matter. We agree.
All the claims under appeal require a vehicular wheel
suspension link to include an elongated member formed of a
thermoplastic material and provided with an intermediate
section having an I-shaped cross-sectional configuration.
However, it is our opinion that these limitations are not
suggested by the applied prior art. In that regard, while
Crandall does disclose a vehicular wheel suspension link,
Crandall does not teach or suggest forming the link of a
thermoplastic material and providing the link with an
intermediate section having an I-shaped cross-sectional
configuration. To supply these omissions in the teachings of
Crandall, the examiner made determinations (answer, pages 5, 6
and 8) that these difference would have been obvious to an
Appeal No. 98-1457 Page 8
Application No. 08/530,006
artisan based upon the teachings of Scowen and Schlechtendahl
or Hynds and Schlechtendahl. However, it is our view that
this determination of the examiner has not been supported by
any evidence that would have led an artisan to arrive at the
claimed invention.
In our view, the only suggestion for modifying Crandall
in the manner proposed by the examiner to meet the above-noted
limitations stems from hindsight knowledge derived from the
appellants' own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 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). Specifically, we find that there is no
suggestion in the applied prior art to modify Crandall's link
to be formed of a thermoplastic material and provided with an
intermediate section having an I-shaped cross-sectional
configuration. While Schlechtendahl discloses an I-shaped
cross-sectional configuration used in a connecting rod for an
internal combustion engine and Scowen and Hynds disclose links
Appeal No. 98-1457 Page 9
Application No. 08/530,006
Scowen discloses that a connecting rod formed from fibre4
reinforced plastics material can replace conventional metal
connecting rods in reciprocating piston and cylinder machines.
Hynds discloses an automotive vehicle suspension link can be
integrally molded from a suitable plastic material.
formed of a thermoplastic material , we see no suggestion4
therein for an artisan to have modified Crandall's link in the
manner set forth by the examiner to arrive at the claimed
vehicular wheel suspension link. It follows that we cannot
sustain any of the examiner's rejections of claims 1 through
15.
As to our colleague's dissenting opinion, we do not share
his view that the subject matter of claim 1 would have been
suggested to one of ordinary skill in the art by the combined
teachings of the applied prior art. In determining
obviousness/nonobviousness, an invention must be considered "as
a whole," 35 U.S.C. § 103, and claims must be considered in
their entirety. Medtronic, Inc. v. Cardiac Pacemakers, Inc.,
721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed. Cir. 1983). Thus,
the issue presented by the rejections before us on appeal is
whether the applied prior art would have suggested to one of
Appeal No. 98-1457 Page 10
Application No. 08/530,006
ordinary skill in the art modifying the elongated member of
Crandell's suspension link (i.e., the rigid member 11,
preferably made of steel and having a cross-sectional
configuration as shown in Figures 1 and 3) to be both formed of
a thermoplastic material and provided with an intermediate
section having an I-shaped cross-sectional configuration. In
our opinion, while the applied prior art may have been
suggestive of modifying the elongated member of Crandell's
suspension link to be either (1) formed of a thermoplastic
material, or (2) provided with an intermediate section having
an I-shaped cross-sectional configuration, the combined
teachings of the applied prior art would not have been
suggestive of modifying Crandell to contain both of these
features without the use of hindsight knowledge derived from
the appellants' own disclosure.
In regard to the "well-known engineering knowledge" cited
by the examiner on page 3 of the supplemental answer and our
colleague in his dissenting opinion, we note that this "well-
known engineering knowledge" was not applied by the examiner in
Appeal No. 98-1457 Page 11
Application No. 08/530,006
the actual rejections before us on appeal (see pages 4-10 of
the answer). In addition, there is no evidence in the record
that one of ordinary skill in this art would have known about
this "well-known engineering knowledge." Moreover, while an
artisan may be presumed to know something about the art apart
from what references teach, it is the burden of the examiner to
establish a sufficient factual basis for one to be able to draw
such a presumption. This was not done in this instance.
Appeal No. 98-1457 Page 12
Application No. 08/530,006
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 15 under 35 U.S.C. § 103 is reversed.
REVERSED
JEFFREY V. NASE )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
) INTERFERENCES
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
JVN/gjh
Appeal No. 98-1457 Page 13
Application No. 08/530,006
See, for example, In re Keller, 642 F.2d 413, 425, 2081
USPQ 871, 881 (CCPA 1981).
See, for example, In re Jacoby, 309 F.2d 513, 516, 1352
USPQ 317, 319 (CCPA 1962)(artisan presumed to know something
about art apart from what references teach) and In re Sovish,
769 F.2d 738, 226 USPQ 771 (Fed. Cir. 1985)(skill in the art
presumed, rather than the converse).
STAAB, Administrative Patent Judge, dissenting.
The majority implies that the reason they find the
examiner's rejections to be lacking is because the various
secondary references applied by the examiner in rejecting the
claims do not disclose the use of an I-shaped cross-sectional
configuration and thermoplastic material in the specific
environment called for in the appealed claims, namely, a
vehicular wheel suspension link. There are several flaws in
the sort of analysis, if that is what they meant. For
example, it does not properly consider what the combined
teachings of the applied references would have suggested to
one of ordinary skill in the art , nor does it take into1
account the baseline knowledge that a person of ordinary skill
in the art is presumed to possess in approaching the question
of obviousness .2
Appeal No. 98-1457 Page 14
Application No. 08/530,006
Confining my remarks, for the sake of brevity, to the
standing § 103 rejection of claim 1 based on Crandall, Hynds
and Schlechtendahl, admittedly the Schlechtendahl reference
does not disclose the use of an I-shaped cross-sectional
configuration in the environment of a vehicular wheel
suspension link. However, as aptly noted by the examiner on
page 3 of the supplemental answer, and as not disputed by
appellants, "[it] is well-known in the field of engineering
that members having I-shaped cross-section have a desirably
high strength-to-weight ratio." Also relevant in this regard
is the Hynds patent, which is directed to an automotive
vehicle suspension link. Concerning the cross-sectional shape
of the suspension link 12 thereof, Hynds states (column 2,
lines 32-37):
As illustrated best in Fig. 3, the cross section
of the link 12 can include longitudinal ribs 18, 20
to increase strength and resistance to stresses.
Preferably, the ribs 18, 20 are integrally molded on
the outer surface of the link 12. Other cross
sections for the link 12 are within the scope of the
invention.
Appeal No. 98-1457 Page 15
Application No. 08/530,006
The claimed "vehicular wheel suspension link" is merely3
a special purpose connecting rod.
Thus, Hynds may be fairly viewed as teaching that the Fig. 3
cross-sectional shape for the suspension link 12 is merely
exemplary, and that other cross sectional shapes may be
employed for a vehicle wheel suspension link so long as they
adequately take into account the strength and resistance
requirements of the link.
From my perspective, the basic engineering knowledge of
the strength characteristics of an I-shaped cross-sectional
configuration, the above-noted teaching of Hynds, and the
teachings of Schlechtendahl regarding the use of an I-shaped
cross sectional configuration in a connecting rod are3
sufficient to establish prima facie that it would have been
obvious to one of ordinary skill in the automotive vehicle
suspension art to provide the intermediate section of
Crandall's suspension link with an I-shaped cross-sectional
configuration in order to take advantage of the well known
strength characteristics such a configuration provides. This
view is bolstered by the circumstance that there is nothing in
Appeal No. 98-1457 Page 16
Application No. 08/530,006
the record which leads me to believe that the I-shaped cross-
sectional configuration was selected and used by appellants
for other than its well-known strength-to-weight
characteristics.
Looking at the requirement of claim 1 calling for the
link to be formed of thermoplastic material, the disclosure of
Hynds that link 12, barrel portion 14 and ring portion 16 of
the suspension assembly "are integrally molded from a suitable
plastic material, e.g., DELRIN" (column 2, lines 27-28) is
sufficient, in my view, to establish prima facie that it also
would have been obvious to one of ordinary skill in the art to
form the corresponding elements of Crandall's suspension link
of thermoplastic material for the self evident purpose of
taking advantage of the well known characteristics of
thermoplastic material (e.g., weight reduction).
Thus, when the combined teachings of Crandall, Hynds and
Schlechtendahl are properly taken into consideration, such
teachings are sufficient to establish a prima facie case of
obviousness of the subject matter of claim 1. As to
Appeal No. 98-1457 Page 17
Application No. 08/530,006
It should not be inferred from my focus on the rejection4
of claim 1 based on Crandall, Hynds and Schlechtendahl that I
necessarily agree with the majority that the remainder of the
examiner’s rejections of the appealed claims should be
reversed.
appellants' evidence of nonobviousness (i.e., the May 14, 1996
declaration of Irfan Raza), suffice it to say I have reviewed
same but find it insufficient to outweigh the above noted
reference evidence of obviousness. Accordingly, at the very
least, the standing § 103 rejection of claim 1 based on
Crandall, Hynds and Schlechtendahl should be affirmed.4
) BOARD OF PATENT
) APPEALS
LAWRENCE J. STAAB ) AND
Administrative Patent Judge ) INTERFERENCES
Appeal No. 98-1457 Page 18
Application No. 08/530,006
MARK P. WATSON
LALOS & KEEGAN
1146 NINETEENTH STREET NW FIFTH FLOOR
WASHINGTON, DC 20036
APPEAL NO. 98-1457 - JUDGE NASE
APPLICATION NO. 08/530,006
APJ NASE
APJ CRAWFORD
APJ STAAB
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 01 Feb 99
FINAL TYPED: