Ex Parte Reineck

Board of Patent Appeals and Interferences

Jan 26, 2011

11085643 (B.P.A.I. Jan. 26, 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.
11/085,643 03/21/2005 Benjamin R. Reineck 60,130-2376/02MRA0346,
34
3201
26096 7590 01/27/2011
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
DICKSON, PAUL N
ART UNIT PAPER NUMBER
3616
MAIL DATE DELIVERY MODE
01/27/2011 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 BENJAMIN R. REINECK
____________

Appeal 2009-008115
Application 11/085,643
Technology Center 3600
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, 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.

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STATEMENT OF THE CASE
Benjamin R. Reineck (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision to finally reject claims 2 and 4-17. Claims 1 and 3
have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6.

THE INVENTION
Appellant’s invention relates to a trailing arm suspension system.
Spec. 1, para. [2].
Claim 6 is representative of the claimed invention and reads as
follows:
6. A trailing arm for a vehicle suspension comprising:

a forward portion extending longitudinally to a rearward
portion with said trailing arm having at least a portion with an
open bottom defined by a generally U-shaped cross-section,
said U-shaped cross-section defined by opposing sides
and an upper wall adjoining said opposing sides, wherein a
shock absorber bracket is provided at said upper wall.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Masser US 3,406,983 Oct. 22, 1968
Kami US 4,717,171 Jan. 5, 1988
Wallace US 5,649,719 Jul. 22, 1997
Depue US 6,123,349 Sep. 26, 2000
Pierce US 6,508,482 B2 Jan. 21, 2003

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The following rejections are before us for review:2
The Examiner rejected claims 6 and 12 under 35 U.S.C. § 102(b) as
anticipated by Depue.
The Examiner rejected claims 6 and 12 under 35 U.S.C. § 102(b) as
anticipated by Pierce.
The Examiner rejected claims 7, 9, and 15-17 under 35 U.S.C. §
102(b) as anticipated by Masser.
The Examiner rejected claims 2, 4, 5, 10, 13, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Masser and Kami.
The Examiner rejected claims 6-9, 11, 12, and 15-17 under 35 U.S.C.
§ 103(a) as unpatentable over Masser, Kami, and Wallace.

SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. §
41.50(b).

ANALYSIS
The anticipation rejections based on Depue and Pierce
The Examiner found that support plate 28 of Depue and plate 47 of
Pierce constitute a shock absorber bracket. Ans. 3, 4. Appellant argues that
air spring 31 of Depue and air spring 25 of Pierce do not constitute a shock
absorber as understood by a person of ordinary skill in the art and as such,
support plate 28 of Depue and plate 47 of Pierce cannot function as a shock

2 The rejection of claim 17 under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement has been
withdrawn by the Examiner. Ans. 2.
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absorber bracket because a shock absorber requires a pivot mounting to a
structure, whereas an air spring does not. Reply Br. 3, 4. See also App. Br.
5, 6.
Although we appreciate the Examiner’s position that an air spring
may be interpreted as a shock absorber because “it uses the compressive
qualities of air to absorb wheel vibrations and shock” (Ans. 11, 14).
Nonetheless, it is well established that claim language is read 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). In
this case, Appellant’s Specification distinguishes air springs 20 from shock
absorbers 22. Spec. 4, para. [14] and fig. 1. Similarly, Pierce teaches air
spring 25 as a separate element from shock absorber 26. Pierce, col. 6, ll.
43-45. As such, we agree with Appellant that a person of ordinary skill in
the art would not have readily interpreted an air spring to be a shock
absorber. Reply Br. 2, 4. Furthermore, although we agree with the
Examiner that the limitation of a “shock absorber bracket” merely recites the
intended use of the claimed bracket (Ans. 12), we note that the Examiner has
not provided any evidence or technical reasoning (and none is apparent to
us) to establish a prima facie case that air spring support plates 28 of Depue
and 47 of Pierce are reasonably capable of functioning as a shock absorber
bracket, so as to shift the burden to Appellant that this is not the case .
In conclusion, neither support plate 28 of Depue nor plate 47 of Pierce
constitutes a “shock absorber bracket,” as called for by independent claim 6.
Accordingly, the rejection of independent claim 6, and its dependent claim
12, as anticipated by either Depue or Pierce cannot be sustained.

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The anticipation rejection based on Masser
Claims 7 and 9
Appellant argues that shock absorber 82 of Masser connects the axle
and the frame rather than the trailing arms and the frame, as required by
independent claim 7. App. Br. 6. At the outset, we agree with the Examiner
that claim 7 does not require a “direct connection, free of [any] intervening
structure.” Ans. 15. Further, we note that Appellant’s Specification does
not expressly define the term “connecting” or otherwise indicate that this
term is used in a manner other than its ordinary and customary meaning. We
find that an ordinary and customary meaning of the term “connect” is “to
join or fasten together usu. by something intervening.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997). In this case, shock
absorber 82 of Masser connects trailing arm 18 to frame 12 via bracket 32
and axle housing 30. Masser, col. 2, ll. 49-53 and fig. 1. Hence, shock
absorbers 82 of Masser “connect” the trailing arms and the frame, as
required by independent claim 7. Therefore, the rejection of claim 7 as
anticipated by Masser is sustained. With respect to the rejection of claim 9,
Appellant does not make any additional arguments. App. Br. 7.
Accordingly, the rejection of claim 9 as anticipated by Masser is likewise
sustained.

Claims 15 and 16
Claims 15 and 16 limit independent claim 7 in that “each trailing arm
includes a shock absorber bracket.” The Examiner found that the structure
supporting either air spring 78 or shock absorber 82 of Masser constitutes
the claimed “shock absorber bracket.” Ans. 10. First, as discussed supra, a
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person of ordinary skill in the art would not have readily interpreted an air
spring to be a shock absorber. As such, we disagree with the Examiner’s
position that the structure supporting air spring 78 constitutes a “shock
absorber bracket.” Second, we note that the Examiner has not identified the
specific structure of Masser’s trailing arm 18 that includes a “shock absorber
bracket.” See Ans. 5, 15, and 16. Hence, it is not clear which portion of
trailing arm 18 of Masser the Examiner considers to include the claimed
“shock absorber bracket.” An anticipation rejection cannot be predicated on
an ambiguous reference. Rather, disclosures in a reference relied on to
prove anticipation must be so clear and explicit that those skilled in the art
will have no difficulty in ascertaining their meaning. In re Turlay, 304 F.2d
893, 899 (CCPA 1962). As such, the rejection of claims 15 and 16 cannot
be sustained.

Claim 17
In contrast to claim 7, claim 17 requires shock absorbers that “directly
connect” the trailing arms and the frame. App. Br., Claims Appendix.
Emphasis added. The Examiner found that air spring 78 of Masser directly
connects trailing arm 18 and frame 12. Ans. 16. See also, Masser, fig. 1.
However, for the reasons set forth supra, in this case we do not agree with
the Examiner’s position that an air spring can be reasonably interpreted as a
shock absorber. Furthermore, as noted above, although shock absorbers 82
of Masser connect trailing arm 18 and frame 12, they are not directly
connected. As such, since air spring 78 of Masser does not constitute a
shock absorber and shock absorber 82 does not directly connect trailing arm
18 and frame 12, we agree with Appellant that Masser does not teach shock
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absorbers that “directly connect” the trailing arms and the frame. App. Br.
7, Reply Br. 7. Accordingly, the rejection of claim 17 as anticipated by
Masser likewise cannot be sustained.

The obviousness rejection over Masser and Kami
Claims 2 and 10
The Examiner found that Masser discloses all the limitations of claims
2 and 10 with the exception of lateral flanges (as per claim 2) and an open
bottom (as per claim 10) extending along the length of the trailing arm. Ans.
6. The Examiner further found that Kami discloses a suspension arm 41
having an open bottom and lateral flanges extending along the length of the
arm. Ans. 7. The Examiner concluded that it would have been obvious for a
person of ordinary skill in the art to have modified the trailing arm of Masser
to include the open bottom and lateral flanges of Kami so as to increase the
stiffness of the trailing arm while reducing the amount of material needed.
Ans. 7, 17, and 18.
Appellant argues that the claimed trailing arm is a longitudinally
extending trailing arm which extends in a direction along the vehicle length.
In contrast, Appellant continues, lateral link 41 of Kami extends across a
width of the vehicle. Appellant hence concludes that the flanges of the
lateral link of Kami constitute longitudinal flanges rather than lateral
flanges, as required by claim 2. App. Br. 8, 9. As such, according to
Appellant, “[t[here is nothing in Masser or Kami to suggest that including
lateral flanges on a longitudinally extending arm would be beneficial.”
Reply Br. 9. With respect to claim 10, Appellant further argues that “there is
nothing in Kami to suggest that such a configuration [open bottom] would
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be appropriate for a trailing arm that extends in a longitudinal direction.”
Reply Br. 10.
We find Appellant’s arguments unpersuasive because they do not
address the Examiner’s proposed combination. The Examiner is not
proposing to use the particular construction of Kami (i.e., longitudinally
extending flanges and an open bottom lateral link). Rather, the Examiner is
proposing to modify the trailing arm of Masser to include an open bottom
and lateral flanges that extend along the length of the trailing arm.
To justify combining reference teachings in
support of a rejection it is not necessary that a
device shown in one reference can be physically
inserted into the device of the other. The test for
obviousness is not whether the features of a
secondary reference may be bodily incorporated
into the structure of the primary reference; nor is it
that the claimed invention must be expressly
suggested in any one or all of the references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (internal citations omitted).
Furthermore, while the Examiner must articulate some “reasoning
with some rational underpinning to support the legal conclusion of
obviousness,” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006), in establishing
that “there was an apparent reason to combine the known elements in the
fashion claimed,” KSR Int’l v. Teleflex, 550 U.S. 398, 418 (2007), the
apparent reason need not appear in, or be suggested by, one or more of the
references on which the Examiner relies. Instead, the Examiner, when
analyzing the evidence, may employ common sense not inconsistent with the
ordinary level of knowledge and skill in the art. Perfect Web Techs. v.
InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009). In this case, we
agree with the Examiner’s reasoning that modifying the trailing arm of
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Masser to include an open bottom and lateral flanges as shown in Kami
would increase the stiffness of the trailing arm while reducing the amount of
material needed. See Ans. 7, 17, and 18. If a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill. KSR, 550
U.S. at 417.
In conclusion, for the foregoing reason, we shall sustain the rejection
of claims 2 and 10 over the combined teachings of Masser and Kami.

Claims 4 and 5
Appellant makes a similar argument to the one asserted with respect
to claim 2, that is, since Kami does not teach lateral flanges, but rather
longitudinal flanges, the combined teachings of Messer and Kami do not
disclose lateral flanges. App. Br. 10, 11, Reply Br. 9, 10. However, for the
reason set forth supra, we find Appellant’s argument unpersuasive.
Accordingly, the rejection of claims 4 and 5 is likewise sustained.

Claims 13 and 14
Claims 13 and 14 limit independent claim 2 in that each trailing arm
includes a shock absorber “mount.” 3 The Examiner found that the structure
mounting either air spring 78 or shock absorber 82 of Masser constitutes the
claimed “shock absorber mount.” Ans. 9, 19, and 20. First, as discussed

3 We find that an ordinary and customary meaning of the term “mount”
is “an attachment for an accessory.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (10th Ed. 1997).
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supra, a person of ordinary skill in the art would not have readily interpreted
an air spring to be a shock absorber. As such, we disagree with the
Examiner’s position that the structure mounting air spring 78 constitutes a
“shock absorber mount.” Second, we note that the Examiner has not
identified the specific structure of Masser’s trailing arm 18 that includes a
“shock absorber mount.” See Id. Hence, it is not clear which portion of
trailing arm 18 of Masser the Examiner considers to include the claimed
“shock absorber mount.” As such, we find that the Examiner’s legal
conclusion of obviousness is not supported by facts, and thus, cannot stand.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he
legal conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”). Therefore, we are
constrained to reverse the rejection of claims 13 and 14 over Masser and
Kami.

The obviousness rejection over Masser, Kami, and Wallace
Claims 6 and 12
The Examiner found that the combined teachings of Masser and Kami
disclose all the limitations of independent claim 6 with the exception of a
shock absorber end supported by the top of a trailing arm. Ans. 9. The
Examiner then looked to Wallace to show a shock absorber 49 supported
directly to the top of a trailing arm 31, 33. Ans. 20. However, in contrast to
the Examiner’s interpretation of claim 6, we find that the combined
teachings of Masser and Kami render obvious the subject matter of claim 6.
At the outset, we interpret claim 6 to merely require a shock absorber
bracket that is provided at an upper wall of the U-shaped cross section of the
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trailing arm. App. Br., Claims Appendix. It is our finding that Masser
discloses in Figure 4 a U-shaped trailing arm 18 having an upper wall and
vertical side walls. Further, we find that the term “provide”4 does not
require that the trailing arm itself include the shock absorber bracket. In
Masser, bracket 32, which supports both axle housing 30 and shock absorber
82, is provided at the upper wall of trailing arm 18. Masser, fig. 1.
In conclusion, we shall sustain the rejection of claim 6 and its
dependent claim 12. However, because our interpretation of the term
“provided” and our reading of the claim language on the disclosure of
Masser differ from that articulated by the Examiner, we denominate the
affirmance of this rejection as a new ground of rejection pursuant to 37
C.F.R. §41.50(b).

Claims 7 and 9
With respect to claims 7 and 9, Appellant argues that shock absorber
82 of Masser connects the axle 30 and the frame 12 rather than the trailing
arms and the frame, as required by independent claim 7. App. Br. 14, Reply
Br. 13. However, for the reasons set forth supra, this argument is not
persuasive. Accordingly, the rejection of claim 7 over the combined
teachings of Masser, Kami, and Wallace is sustained. With respect to the
rejection of claim 9, Appellant does not make any additional arguments.
App. Br. 14. Accordingly, the rejection of claim 9 is likewise sustained.

4 We find that an ordinary and customary meaning of the term
“provide” is “to make something available to.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1997).

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Claim 8
Appellant argues that neither Masser nor Kami discloses “a trailing
arm that supports a shock absorber.” App. Br. 15, Reply Br. 14. We
disagree. At the outset, we find that the term “support”5 does not require a
direct connection between the trailing arm and the shock absorber. In this
case, trailing arm 18 holds up (supports) shock absorber 82 via bracket 32
and axle housing 30. Masser, figs. 4 and 5. As such, we shall sustain the
rejection of claim 8.

Claim 11
Appellant makes the same argument as presented with respect to the
rejection of claim 10 over the combined teachings of Masser and Kami.
App. Br. 15, Reply Br. 14. However, for the reasons presented supra, we
find Appellant’s argument unpersuasive. Accordingly, we shall sustain the
rejection of claim 11.

Claims 15 and 16
Appellant argues that because shock absorber 82 of Masser is
mounted to axle housing 30, trailing arm 18 does not include a “shock
absorber bracket,” as called for by claims 15 and 16. App. Br. 15, 16, Reply
Br. 14, 15. For the reasons set forth supra with respect to the rejection of
claims 15 and 16 as anticipated by Masser, we find Appellant’s argument
persuasive. Furthermore, the addition of Kami and Wallace does not remedy

5 We find that an ordinary and customary meaning of the term
“support” is “to hold up or serve as a foundation or prop for.” MERRIAM
WEBSTER’S COLLEGIATE DICTIONARY (10th Ed. 1997).

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the deficiency of Masser as discussed above. Accordingly, the rejection of
claims 15 and 16 over the combined teachings of Masser, Kami, and
Wallace cannot be sustained.

Claim 17
Appellant makes the same argument as presented with respect to the
rejection of claim 17 as anticipated by Masser. App. Br. 16, Reply Br. 15.
For the reason set forth supra, we find Appellant’s argument persuasive.
Accordingly, the rejection of claims 17 likewise cannot be sustained.

SUMMARY
The decision of the Examiner is affirmed as to claims 2 and 4-12 and
reversed as to claims 13-17.
For the reasons discussed above, we denominate our affirmance of the
rejection of claims 6 and 12 over Masser, Kami, and Wallace as new
grounds of rejection pursuant to 37 C.F.R. §41.50(b).
Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides "Appellant may
file a single request for rehearing within two months from the date of the
original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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)(2009).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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mls

CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009