Ex Parte Soucy

Board of Patent Appeals and Interferences

Feb 28, 2006

09953030 (B.P.A.I. Feb. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ALAN J. SOUCY
_____________
Appeal No. 2006-0294
Application No. 09/953,030
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ON BRIEF
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Before KIMLIN, JEFFREY T. SMITH and FRANKLIN, Administrative
Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-19
and 21. Claims 1 and 19 are illustrative:
1. An apparatus for dampening vibrations, comprising:
an enclosure containing a gel-like material and
a bladder disposed within the enclosure, the bladder at
least partially surrounded by and in contact with the
gel-like material.
19. A method of attenuating vibration, the method
comprising the steps of:
disposing a vibration dampening apparatus in a fixture,
the vibration dampening apparatus comprising:
Appeal No. 2006-0294
Application No. 09/953,030
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an enclosure containing a gel-like material;
and

a bladder disposed within the enclosure, the
bladder at least partially surrounded by and
in contact with the gel-like material;

disposing a work piece on the fixture; and

adjusting the apparatus to vary contact between the
apparatus and at least a portion of one of the work piece
and the fixture to change a frequency characteristics [sic]
thereof.

The examiner relies upon the following reference as evidence
of obviousness:
Thomas et al. (Thomas) 6,049,927 Apr. 18, 2000
Appellant’s claimed invention is directed to an apparatus
and method for dampening vibrations. The apparatus comprises an
enclosure containing a gel-like material and a bladder, with the
bladder at least partially surrounded by and in contact with the
gel-like material.
Appealed claims 1-19 and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Thomas.
We have carefully reviewed the respective positions advanced
by appellant and the examiner. In so doing, we find ourselves
in agreement with appellant that the examiner has failed
to establish a prima facie case of obviousness for the claimed
Appeal No. 2006-0294
Application No. 09/953,030
3
subject matter. Accordingly, we will not sustain the examiner’s
rejection.
According to the examiner, the only difference between the
claimed invention and the invention disclosed by Thomas is that
the bladder of the claimed invention is in contact with the gel-
like material. The examiner explains that it would have been
obvious for one of ordinary skill in the art to remove bladder
pad 140 from the device of Thomas to result in contact between
gel-like material 110 and the bladder.
The flaw in the examiner’s reasoning, as pointed out by
appellant, is that Thomas does not describe member 110 as a gel-
like material. Rather, Thomas describes support layer 110 as
high density base foam. The examiner reasons, however, that “the
member 110 is a gel-like member to the broad degree claimed”
(page 3 of answer, second paragraph).
Appellant’s specification provides the following disclosure:
The enclosure 6 is filled with a gel-like material 10, or
other suitable dampening material, for example, propylene
glycol, highly plasticized polyvinyl chloride, hydrogel,
etc., although, any generally viscous material may be
employed. [Sentence bridging pages 4 and 5.]
Accordingly, it can be seen that when the claim language “gel-
like material” is read in light of the present specification, it
cannot be reasonably said that the language embraces the high
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Application No. 09/953,030
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density foam of Thomas. The examiner has not provided any
factual basis for concluding that a gel-like material would
include high density foam. Also, the examiner has failed to make
any correlation between the high density foam material of Thomas
and the gel-like material of the present invention which,
according to the supporting specification, should be a viscous
material. Nor has the examiner presented any line of reasoning
why it would have been obvious for one of ordinary skill in the
art to replace the high density foam of Thomas with a gel-like
material.
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In conclusion, based on the foregoing, we are constrained to
reverse the examiner’s rejection.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY T. SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )
ECK:hh
Appeal No. 2006-0294
Application No. 09/953,030
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