Ex parte Satou

Board of Patent Appeals and Interferences

Feb 28, 2001

08855104 (B.P.A.I. Feb. 28, 2001)

Claim 1 was amended subsequent to the final rejection.1
See Paper No. 8. While the examiner has approved entry of the
1
The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte MASAHIRO SATOU
________________
Appeal No. 2000-1472
Application No. 08/855,104
________________
HEARD: February 13, 2001
________________
Before FRANKFORT, GONZALES, and LAZARUS, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 1 through 5, which are all of the claims
pending in this application.1
Appeal No. 2000-1472
Application No. 08/855,104
amendment after final rejection, we note that this amendment
has not been clerically entered.
2
We REVERSE.
The appellant’s invention is directed to a variable rate,
hydraulic shock absorber. See specification, p. 1. A copy of
the claims under appeal is set forth in the appendix to the
appellant’s brief (Paper No. 14).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ivers et al. (Ivers) 4,972,929 Nov. 27, 1990
Axthammer 2,157,808 Oct. 30, 1985
(Published British application)
Additionally, the examiner relies on the admitted prior
art (APA) illustrated in Figure 2 of the appellant’s drawings.
Claims 1 through 4 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Axthammer.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Axthammer in view of Ivers or the APA.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 15) for
Appeal No. 2000-1472
Application No. 08/855,104
3
the examiner’s complete reasoning in support of the
rejections, and to the brief for the appellant’s arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant’s specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
The § 102(b) rejection
We will not sustain the 35 U.S.C. § 102(b) rejection of
claims 1 through 4 based on Axthammer.
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
Appeal No. 2000-1472
Application No. 08/855,104
4
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987).
With reference to the embodiment illustrated in the
appellant’s Figures 3 through 5, independent claim 1 requires
a piston 26 dividing a cylinder 22 into first and second fluid
chambers 27 and 28, a first and second series of apertures 42
and 45 extending through the piston from one fluid chamber to
the other, and a first plate type valve 43 for controlling the
flow through the first series of apertures and a second plate
type valve 46 for controlling the flow through the second
series of apertures, each of the plate type valves having a
plurality of separate plates in stacked abutting relation to
the respective series of apertures on opposite sides of the
piston and to each other and biased by their interaction to
positions preventing flow through the respective series of
apertures, at least one of the plate type valves comprising a
shim 49 interposed between the plates for controlling the
preload at which the one plate type valve opens to permit flow
through the respective series of apertures, the shim being an
annular member having an outer diameter that is not greater
Appeal No. 2000-1472
Application No. 08/855,104
5
than the outer peripheral edges of the series of apertures
with which it is associated.
Before addressing the examiner's rejections based upon
prior art, it is an essential prerequisite that the claimed
subject matter be fully understood. Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. §§ 102
and 103 begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the
prior art. In determination of the scope of the claim "resort
must be had in the first instance to the words of the claim"
and words "’will be given their ordinary and accustomed
meaning, unless it appears that the inventor used them
differently.’" Envirotech Corp. v. Al George, Inc., 730 F.2d
753, 759, 221 USPQ 473, 477 (Fed. Cir. 1984). It is equally
"fundamental that claims are to be construed in the light of
the specification and both are to be read with a view to
ascertaining the invention." United States v. Adams, 383 U.S.
39, 49, 148 USPQ 479, 482 (1966). Accordingly, we will
initially direct our attention to the appellant’s claim 1,
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Application No. 08/855,104
6
which is the only independent claim on appeal, to derive an
understanding of the scope and content thereof.
According to the words of the claim, a valve is
“associated” with a particular series of apertures only if it
controls the flow of fluid through that particular series of
apertures and in order to control the flow through the series
of apertures the valve must be capable of preventing flow
until it opens. Thus, we understand the language “preventing
flow through the respective series of apertures” as meaning
that no fluid passes through the series of apertures when the
valve associated with that series of apertures is in abutting
relation to the apertures. This interpretation is consistent
with the specification which teaches that the “valve plates 43
are held in abutment with the piston 26" and are illustrated
as completely closing the apertures 42 and that “the valve
element 43 is free of the end of the apertures 45 so that it
will not affect the flow therethrough.” See specification p.
5.
Our interpretation is also consistent with the
appellant’s argument on page 3 of the brief and the argument
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Application No. 08/855,104
7
made by the appellant’s counsel at the telephonic oral hearing
held on February 13, 2001, to the effect that to control the
flow through the apertures in the piston, the valve must
completely close the apertures.
Turning now to the merits of the § 102 rejection of
claims 1 through 4, at page 3 through 5 of the answer, the
examiner determined that both Figures 2 and 3 of Axthammer
disclose each and every element of appealed claim 1. With
reference to Figure 2, the examiner describes the reference as
teaching a piston 118 dividing a cylinder 110 into first and
second fluid chambers 12a and 12b, a first and second series
of apertures 120 and 122 extending through the piston from one
fluid chamber to the other, a first plate type valve (shown by
plates 124b1, 124b2, 124b3, 124a, 124c1 and 124c2) for
controlling the flow through the first series of apertures and
a second plate type valve (shown in Fig. 2 located above
annular channel 146) for controlling the flow through the
second series of apertures, each of the plate type valves
being biased to positions preventing flow through the
respective series of apertures, and at least one of the plate
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8
type valves including a shim (non-planar valve plate 124a).
As to the language in claim 1 describing the shim as an
annular member having an outer diameter that is not greater
than the outer peripheral edges of the series of apertures
with which it is associated, the examiner notes that “shim”
124a does not extend beyond the left most portion of aperture
122.
With reference to Figure 3, the examiner describes
Axthammer as disclosing a piston 218 dividing a cylinder 210
into first and second fluid chambers 12a and 12b, a first and
second series of apertures 220 and 222 extending through the
piston from one fluid chamber to the other, a first plate type
valve (shown by plates 224b1, 224b2, 224a, 224c1, 224c2 and
224c3) for controlling the flow through the first and second
series of apertures and a second plate type valve (shown in
Fig. 3 located above apertures 220 and 222) for controlling
the flow through the first and second series of apertures, at
least one of the plate type valves comprising a shim 224a
interposed between the plates for controlling the preload at
which the one plate type valve opens to permit flow through
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Application No. 08/855,104
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the respective series of apertures, the shim being an annular
member having an outer diameter that is not greater than the
outer peripheral edges of the series of apertures with which
it is associated. As to the language of claim 1 requiring
that each of the plate type valves be biased to positions
preventing flow through the respective series of apertures,
the examiner determined that the language “preventing flow
through the respective series of apertures” merely connotes
that the flow through the apertures is hindered to some extent
and, thus, the second plate type valve (shown in Fig. 3
located above apertures 220 and 222) does “prevent” flow
through the apertures 220 and 222. See answer, p. 7.
Considering first the rejection based on Figure 2 of
Axthammer, we find no evidence supporting the examiner’s
determination that “shim” 124a is “associated” with aperture
122 (see answer, p. 8) as required by claim 1. A valve is
“associated” with a particular series of apertures only if it
controls the flow of fluid through that particular series of
apertures, supra. We find no teaching in Axthammer that the
plates 124b1, 124b2, 124b3, 124a, 124c1 and 124c2 control the
Appeal No. 2000-1472
Application No. 08/855,104
10
flow of fluid through the aperture 122. Thus, the fact that
the “shim” 124a is shorter than the outer edge of aperture 122
is of no moment. Rather, we agree with the appellant’s
argument (brief, p. 3) that the plates 124b1, 124b2, 124b3,
124a, 124c1 and 124c2 are solely associated with aperture 120
(i.e., the valve is biased to prevent flow through the
aperture 120 and opens to permit flow through the aperture
120) and that the shim element 124a is disposed radially
outwardly of the aperture 120. Hence, the claim does not read
on the embodiment shown in Figure 2 of Axthammer.
As to the rejection based on Figure 3 of Axthammer, we
find no evidence supporting the examiner’s determination that
“shim” 224a is “associated” with aperture 222 (see answer, p.
8) as required by claim 1. Once again, a valve is
“associated” with a particular series of apertures only if it
controls the flow of fluid through that particular series of
apertures, i.e., the valve must be capable of preventing flow,
supra. We find no teaching in Axthammer that the plates
224b1, 224b2, 224a, 224c1, 224c2 and 224c3 are capable of
preventing the flow of fluid through the aperture 222. Thus,
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Application No. 08/855,104
11
the fact that the “shim” 224a is shorter than the outer edge
of aperture 222 is of no moment. Hence, the claim does not
read on the embodiment shown in Figure 3 of Axthammer.
In view of the above, we will not sustain the rejection
of claim 1 under 35 U.S.C. § 102(b) as being anticipated by
Axthammer.
Claims 2 through 4 are dependent on claim 1 and contain
all of the limitations of that claim. Therefore, we will also
not sustain the rejection of claims 2 through 4 under 35
U.S.C.
§ 102(b) as being anticipated by Axthammer.
The § 103(a) rejection
Since neither Ivers nor the APA cures the above noted
deficiencies of Axthammer with respect to the subject matter
recited in independent claim 1, we also will not sustain the
standing 35 U.S.C. § 103(a) rejection of dependent claim 5.
CONCLUSION
In summary, the examiner’s decision to reject claims 1
through 4 under 35 U.S.C. § 102 and claim 5 under 35 U.S.C. §
103 is reversed.
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Application No. 08/855,104
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
)
JOHN F. GONZALES ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Appeal No. 2000-1472
Application No. 08/855,104
13
Administrative Patent Judge )
JG/RWK
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