Ex Parte Saito et alDownload PDFPatent Trial and Appeal BoardAug 28, 201814125923 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/125,923 12/12/2013 23995 7590 08/30/2018 Rabin & Berdo, PC 1101 14TH STREET, NW SUITE 500 WASHINGTON, DC 20005 FIRST NAMED INVENTOR Keiji Saito 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 ATTORNEY DOCKET NO. CONFIRMATION NO. GOT-389NP 1850 EXAMINER KING, BRADLEY T ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 08/30/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): firm@rabinberdo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEIJI SAITO and MIRO SHIMADA 1 Appeal 2017-011076 Application 14/125,923 Technology Center 3600 Before JAMES P. CALVE, BENJAMIN D. M. WOOD, and BRETT C. MARTIN, Administrative Patent Judges. CAL VE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Office Action finally rejecting claims 1-5, 7, and 10. Br. 1. Claims 6, 8, and 9 are cancelled. Id. at 13 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 KYB Corporation is identified as the real party in interest. Br. 2. Appeal 2017-011076 Application 14/125,923 CLAIMED SUBJECT MATTER Claim 1, the sole independent claim, is reproduced below. 1. A magnetorheological fluid shock absorber that uses a magnetorheological fluid having a viscosity that is varied by an action of a magnetic field, comprising: a tubular cylinder formed from a non-magnetic material, in which the magnetorheological fluid is sealed; a piston formed from a non-magnetic material and disposed in the cylinder to be free to slide at an interval, through which the magnetorheological fluid can pass, relative to an inner periphery of the cylinder; a piston rod to which the piston is connected; and a magnet portion attached to the cylinder in order to apply a magnetic field to an interior of the cylinder, wherein the magnet portion comprises a pair of permanent magnets that are respectively formed in an arc shape having an inner peripheral shape that aligns with an outer periphery of the cylinder, each respective permanent magnet of the permanent magnets being magnetized, with respect to an orientation of magnetic poles of the respective permanent magnet, in a circumferential direction, the permanent magnets being disposed in such a manner that end faces of one of the permanent magnets face end faces of the other one of the permanent magnets with a clearance in the circumferential direction about a central axis of the cylinder. Br. 12 (Claims App.). REJECTIONS Claims 1--4 and 10 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shunsuke (JP 2005-291388, pub. Oct. 20, 2005) and Kunimitsu (JP 57-161330, pub. Oct. 4, 1982). Claims 5 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shunsuke, Kunimitsu, and Nehl (US 6,866,127 B2, iss. Mar. 15, 2005) or Kaufmann (US 5,791,445, iss. Aug. 11, 1998). 2 Appeal 2017-011076 Application 14/125,923 ANALYSIS Claims 1-4 and 10 Rejected Over Shunsuke and Kunimitsu Appellants argue claims 1--4 and 10 as a group. Br. 5-11. We select claim 1 as representative, with claims 2--4 and 10 standing or falling with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Regarding claim 1, the Examiner finds that Shunsuke teaches a shock absorber with tubular cylinder 7 e and a magnetorheological fluid sealed in an inner periphery, piston 18f, and magnet portion 51 f, 52f attached to outer periphery of cylinder 7 e to apply a magnetic field to the cylinder interior. Final Act. 2-3. The Examiner finds that Kunimitsu suggests a segmented magnet construction with a circumferential magnetic field where end faces of the magnets don't appear to contact. Id. at 3. The Examiner determines it would have been obvious to provide such magnets on Shunsuke for ease of assembly or replacement and to provide a circumferential magnetic field "to achieve a desired magnetic field and damping effect with a reasonable expectation of success." Id. at 3, 4. Appellants argue that Shunsuke discloses permanent magnets 52EL, 52ER and 51f, 52fthat are magnetized in the radial direction rather than the circumferential direction as claimed. Br. 5. Appellants also argue that end faces of permanent magnets 52ER, 52EL and 51f, 52fface each other in a radial direction, not a circumferential direction. Id. at 6. Appellants further argue that Shunsuke allows magnetic flux F from permanent magnet 52EL to travel straight toward permanent magnet 52ER in the radial direction by crossing through a center of cylindrical body 7E rather than traveling along arc-formed body 75L as claimed. Id. at 6, 8 (same for magnets 51f, 52f). 3 Appeal 2017-011076 Application 14/125,923 As a result, Appellants argue that a skilled artisan would not have included a pair of arc-shaped permanent magnets with magnetic poles oriented in a circumferential direction as taught by Kunimitsu on Shunsuke because Shunsuke desires the magnetic flux to extend in a radial direction. Id. at 6-7. Appellants further assert that a skilled artisan would not have replaced the permanent magnets of Shunsuke with "half moon magnets" of Kunimitsu to make a magnetic field extend in the circumferential direction as the Examiner proposes because Shunsuke wants the magnetic field to move in the radial direction. Id. at 7. We agree with the Examiner that Shunsuke discloses magnetic fields oriented in the axial direction in Figures 5 and 23-25. See Ans. 2-3. This teaching is persuasive evidence that Shunsuke contemplates the use of non- radial fields and does not teach away from the use of such non-radial fields. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (mere disclosure of alternative designs in the prior art does not teach away unless the prior art criticizes, discredits, or otherwise discourages the claimed solution). Thus, Shunsuke teaches the use of different magnetic field orientations for fluids. Appellants also argue that "half moon magnets 23" of Kunimitsu must directly contact each other to be called a "ring shape" by Kunimitsu. Br. 8. Appellants argue that Figure 3 of Kunimitsu discloses magnets 23, 23 that extend through an angle of 180 degrees with their end faces parallel to one another; therefore, the end faces must contact one another to form a circle of 360 degrees. Id. at 9. In addition, Appellants argue that Kunimitsu teaches that magnetorheological fluid is attracted and held by the magnetic field of the magnets, which must be in contact with each other to hold the fluid at an appropriate location and apply a non-variable magnetic field. Id. 4 Appeal 2017-011076 Application 14/125,923 Appellants' arguments are not persuasive for several reasons. First, the Examiner relies on Shunsuke to teach embodiments with magnets that apply magnetic fields to fluid within a cylinder without end faces contacting. Final Act. 3 ("[Shunsuke] discloses embodiments where the magnets do not contact each other."). The Examiner relies on Kunimitsu to teach that it also is known in the art to apply magnetic fields in a circumferential direction to a cylinder and fluid therein using arc-shaped magnets as claimed. Id. As the Examiner points out, application of Kunimitsu's teaching to Shunsuke does not require the magnet end faces to contact one another, particularly in view of Shunsuke' s configurations that separate the magnets. In addition, both references position magnets to apply magnetic fields in the desired direction at the desired piston and fluid locations. For example, Shunsuke teaches the use of axial fields in Figure 5 in alignment with fluid flow passages 21 A in piston 16A shown in Figure 6. See Shunsuke, Abstract. As Appellants note, Shunsuke also teaches radially positioned magnets 52EL, 52ER to apply a magnetic field in a radial direction to portions of a piston shown in Figures 12-14. Kunimitsu further teaches circumferential magnets 23 "mounted to the periphery of the cylinder 13 in the vicinity of the magnetic fluid 14" that is held in a narrow circumferential groove 14 formed in the internal wall of cylinder 13. Kunimitsu, Abstract (emphasis added). The Examiner reasons that the prior art teaches a finite number of magnet field orientations such that it would have been obvious to try the orientation of Kunimitsu on the structure of Shunsuke for predictable results with a reasonable expectation of success. Final Act. 3. Indeed, Shunsuke includes embodiments (e.g., Figs. 1-3) in which magnetic fluid 6 passes between piston 16 and inner wall of cylinder 2. See Shunsuke, Abstract. 5 Appeal 2017-011076 Application 14/125,923 The Examiner correctly reasons that skilled artisans aware of the finite options available would have been motivated to use Kunimitsu's arc-shaped magnets in Shunsuke to apply the desired magnetic field and damping effect with a reasonable expectation of success. Final Act. 3. This is particularly true for embodiments of Shunsuke in which magnetic fluid 6 passes via an annular passage between a piston and cylinder (Shunsuke, Figs. 1-3, Fig. 5 (passage 64)) because Kunimitsu teaches to mount arc-shaped magnets 23 to a periphery of cylinder 13 near magnetic fluid 14, which is contained in an annular groove in an internal wall of cylinder 13. Kunimitsu, Abstract. The prior art's teaching of finite options for orienting a magnetic field to vary the viscosity of a magnetorheological fluid for damping a piston in a tubular cylinder would have given a skilled artisan "good reason to pursue the known options within his or her technical grasp" and choose from among these various design options. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,421 (2007) (quoted in ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (prior art's location of sensors in the shredder's feed left a skilled artisan with two design choices to place a thickness sensor therein and the choices were an obvious combination of prior art elements)). Appellants argue that the clearance causes the magnetic field to act in a direction following the outer wall of the piston to apply the magnetic field efficiently to the fluid. Br. 5 (citing Spec. ,r,r 47, 53). However, paragraphs 47 and 53 of the Specification disclose only that disposing the magnet poles (N or S pole) to oppose one another (para. 4 7) or combine with one another (para. 53) generates a magnetic field that follows the outer edge of cylinder 10. Thus, we agree with the Examiner that Appellants have not disclosed any criticality for the claimed "a clearance." See Ans. 3. 6 Appeal 2017-011076 Application 14/125,923 Claim 1 does not recite features of the claimed "a clearance" such as dimensions or a particular magnetic field generated by the clearance. The Specification describes the magnetic field of each magnet 31 as due to "a C- shaped segment magnet having an arc shape" (Spec. ,r 29) "magnetized by groups of magnetic poles in a circumferential direction" (id. ,r 30). The Specification discloses that this circumferential magnetic field is applied efficiently to a magnetorheological fluid by placing the arc-shaped magnets 31 so that "opposite magnetic poles oppose each other." Id. ,r 47. However, the Specification also discloses that an opposite arrangement that combines the magnetic poles of two magnets 31 (i.e., N pole faces N pole and S pole faces S pole) applies the circumferential magnetic field evenly to fluid found in the space between piston 21 and cylinder 10. Id. ,r 53. We also agree with the Examiner that Kunimitsu does not disclose whether arc-shaped magnets 23, 23 are placed around cylinder 13 with "a clearance" between end faces. Ans. 4. Appellants' reliance on Figure 3 of Kunimitsu to disclose an angle of 180 degrees is not persuasive absent a teaching in Kunimitsu of such angles or that the figures are drawn to scale. See Br. 9; In re Wright, 569 F. 2d 1124, 1127 ( C.C.P.A. 1977) ("Absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value."). Even if Kunimitsu discloses that magnets 23 are a "ring" or a "circle" as Appellants argue (Br. 8-9), such disclosure does not address whether end faces are spaced apart with a clearance between them or not. Moreover, the Examiner relies on Shunsuke' s teaching of magnets spaced with a clearance between end faces and determines a clearance is warranted with Kunimitsu's magnets 23 for ease of assembly or replacement on a cylinder. Final Act. 3. 7 Appeal 2017-011076 Application 14/125,923 Appellants' arguments do not address the Examiner's findings or reasoning in this regard and therefore do not apprise us of Examiner error. Appellants' attorney arguments are not evidence that Kunimitsu requires no clearance between end faces of permanent magnets 23, 23 or that a clearance between Kunimitsu's magnets 23, 23 would have been non-obvious to use with the cylinders of Shunsuke. Br. 8-10. This is particularly true in view of Shunsuke' s teaching of configurations with a clearance between the end faces of permanent magnets that apply a magnetic field to fluid to dampen a piston's movement in a cylinder as discussed above. Nor do we have any evidence that the Examiner's arrangement of Kunimitsu's magnets with a clearance in Shunsuke "would result in a faulty device" as Appellants argue. Id. at 9-10; see Becton, Dickinson and Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1260 (Fed. Cir. 2010) (unsupported attorney argument "is an inadequate substitute for record evidence."); In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (attorney argument cannot take the place of evidence). Even if Kunimitsu taught a configuration with no clearance, it pertains to an embodiment for which there is no counterpart in Shunsuke, which spaces the magnet faces apart to apply a magnetic field. Further, the Examiner explains why a skilled artisan would have spaced Kunimitsu' s magnet end faces apart in Shunsuke's device. Thus, we sustain the rejection of claims 1--4 and 10. Claims 5 and 7 Rejected Over Shunsuke, Kunimitsu, and Nehl or Kaufmann Appellants argue that claims 5 and 7 are allowable because they depend from an allowable independent claim. Br. 10. Because we sustain the rejection of claim 1, this argument is not persuasive and we also sustain the rejection of claims 5 and 7. 8 Appeal 2017-011076 Application 14/125,923 DECISION We affirm the rejections of claims 1-5, 7, and 10. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation