Ex Parte Sprainis et al

Patent Trial and Appeal Board

Aug 29, 2016

13233270 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/233,270 09/15/2011
82357 7590 08/31/2016
James Ray & Associates Intellectual Property, LLC
4268 Northern Pike Rd
Monroeville, PA 15146
Ronald J. Sprainis
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.
CRD 11006 6942
EXAMINER
SAHNI, VISHAL R
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
jray@jrayassoc.com
apogeegroup@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD J. SPRAINIS and PETER GREGAR
Appeal2014-005660
Application 13/233,270
Technology Center 3600
Before JENNIFER D. BAHR, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ronald J. Sprainis and Peter Gregar (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-29. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Appeal2014-005660
Application 13/233,270
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A compressible spring comprising:
(a) a substantially solid body defining a central axis
and manufactured from an elastomeric material;
(b) a substantially solid abutment upstanding axially
on one end of said substantially solid body; and
( c) a lip disposed on a distal end of said axial abutment in
a plane being substantially transverse to said central axis.
REJECTIONS
I. Claims 1, 3---6, 8, 10, 17, 18, 24, and 25 stand rejected under
35 U.S.C. § 102(b) as anticipated by Carlstedt (US 5,351,844, iss.
Oct. 4, 1994).
II. Claims 2, 7, 11-13, 15, 26, and 29 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Carlstedt and Spemer (DE 29 44 669
Al, pub. May 14, 1981). 1
III. Claims 9, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Carlstedt and Toms (US 4,997,171, iss. Mar. 5,
1991 ).
IV. Claims 19-23 and 27 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Toms.2
1 An English-language translation of Spemer, provided by the Examiner,
was entered into the electronic record for the present application on February
13, 2013.
2 The Examiner withdrew the rejection of claims 1---6, 12, 24, and 26 under
35 U.S.C. § 102(b) as anticipated by Toms. Ans. 2.
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V. Claim 28 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Toms and Urquidi (US 7,360,756 B2, iss. Apr. 22, 2008).
DISCUSSION
Rejection I
Claims 1, 4, and 5:
Appellants contend that the portion of Carlstedt' s pad 60 identified by
the Examiner as corresponding to the claimed "lip" follows the
approximately 45 degree angle of intumed flanges 33, "rather than being
disposed 'substantially transverse"' to the central axis, as called for in claim
1. Appeal Br. 15.
Claim 1 recites "a lip disposed on a distal end of said axial abutment
in a plane being substantially transverse to said central axis." Id. at 39
(Claims App.). The term "substantially" is a term of degree. Thus, we look
to Appellants' Specification to see if it provides some standard for
measuring that degree. See, e.g., Seattle Box Co. v. Indus. Crating &
Packing, Inc., 731F.2d818, 826 (Fed. Cir. 1984) ("When a word of degree
is used ... [it] must [be determined] whether the patent's specification
provides some standard for measuring that degree."). Appellants'
Specification describes an elastomeric pad having "a lip that is disposed on a
distal end of the axial abutment in a plane being substantially transverse to
the central axis." Spec. 3, 11. 7-9; see also id. at 8, 11. 16-19 (disclosing
same). The Specification further discloses mechanically securing a rigid
plate member to the elastic pad by passing the abutment through a central
aperture in the rigid member "wherein the lip cages a thickness portion of
the rigid member around the central aperture." Id. at 3, 11. 13-16; see also
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id. at 4, 11. 19-22 (emphasizing that an object of the invention is to provide
an elastomeric pad "that includes an axial lip disposed on one end of the pad
so as to cage a thickness portion of a plate shaped member"). The
Specification adds that "[i]t would be understood that the peripheral lip ...
has an annular shape in the plane being substantially transverse to the central
axis." Id. at 8, 11. 19-21.
Thus, based on these disclosures in Appellants' Specification, we
construe the limitation "a lip disposed ... in a plane being substantially
transverse to said central axis" as requiring that the lip be disposed
sufficiently transverse to the central axis to be able to cage a thickness
portion of a rigid plate. As the lip defined by top rivet head 62 of Carlstedt' s
pad 60 cages a thickness portion (i.e., boss 28) of plate 20, the lip satisfies
the "substantially transverse" limitation of claim 1.
Appellants also contend that the portion of Carlstedt' s pad 60
identified by the Examiner as corresponding to the claimed "abutment" (i.e.,
"the portion of 60 that extends though top opening 30 in Fig. 6") does not
upstand on the end of pad 60 as required in claim 1. Appeal Br. 15-16; see
Final Act. 2; Appeal Br. 39 (Claims App.). In support of this contention,
Appellants point out that Carlstedt' s Figure 5 depicts portions of the end
surface of pad 60 flowing into apertures 32 so as to "protrude beyond the
general end surface of the resulting pad," Carlstedt's Figure 5 depicts the
distal end of projection 44 prior to formation of the lip (rivet head 62) being
"disposed below the end surface of the pad 60," and Carlstedt describes
portions of central boss 28 "extending from the normal height of' metal
plate 20 "inwardly into" elastomeric pad 60. Appeal Br. 15 (citing Carlstedt,
Fig. 5; col. 3, 11. 65---66). Appellants add that "such 'abutment' is reset
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within the thickness of the elastomer pad 60, as it is clearly shown in FIG.
6." Id. at 16. In essence, Appellants urge that because there are portions of
the top surface of Carlstedt' s upper end that extend beyond the top face of
the "lip," and hence also beyond the "abutment" portion of pad 60, the
"abutment" (i.e., the portion of pad 60 extending through top opening 30)
cannot reasonably be considered to be "upstanding axially on one end of'
pad 60, as required by claim 1.
Appellants' argument is not convincing. Appellants do not direct our
attention to, nor do we discern, any recited requirement in claim 1 that the
abutment protrude outward beyond all other portions on the end of the
substantially solid body. Notably, Appellants' Specification does not restrict
the end or "end surface" to the most extreme point on the substantially solid
body. See Spec. 7, 11. 10-12 (noting that end surfaces 416 and 420 "may
include deviations such as depression( s) and protrusions( s )").
For the above reasons, Appellants do not apprise us of error in the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1, as
well as claims 4 and 5, which fall with claim 1, as anticipated by Carlstedt.
See Appeal Br. 19 (stating that claims 4 and 5 "stand or fall with claim 1 ").
Claim 3:
Appellants point out that "end surface ( 416) clearly defines the 'end'
of [Appellants'] pad" and contend that Carlstedt does not anticipate claim
3's limitation "that [the] 'substantially solid abutment is upstanding on one
of said first and second end surfaces' (emphasis added)." Appeal Br. 16-
17. This argument is essentially the same argument made with respect to the
"abutment" limitation of claim 1, which, for the reasons discussed above, is
not convincing. Appellants do not direct our attention to, nor do we discern,
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any recited requirement in claim 3 that the abutment protrude outward
beyond all other portions on the end, or end surface, of the substantially
solid body. The recitation of first and second "end surfaces" and an
"abutment ... upstanding on one of said first and second end surfaces" in
claim 3 does not, either explicitly, or implicitly, impart such a requirement.
Notably, Appellants' Specification does not restrict the end or "end surface"
to the most extreme point on the substantially solid body. See Spec. 7, 11.
10-12 (noting that end surfaces 416 and 420 "may include deviations such
as depression( s) and protrusions( s )").
Accordingly, we sustain the rejection of claim 3 as anticipated by
Carlstedt.
Claim 6:
Appellants argue that "'bottom 62' of Carlstedt ... is a part of a
central rivet head produced during cold forming process and is essentially a
round, mushroom shaped projection that does not read on the term 'ridge."'
Appeal Br. 17. Appellants contend that the "[t]erm 'ridge' is at least
conventionally defined as an 'elongated' structure with examples being a
mountain ridge, roof ridge, ridge of waves, etc." Id. The Examiner posits
that "since no specifics are recited with regard to the 'ridge,' ... all that is
required is some protrusion." Ans. 13. Appellants do not persuade us that
the term "ridge" necessarily connotes an elongated structure, rather than,
more broadly, a raised part or area of a surface, namely, a protrusion, as
posited by the Examiner. However, even accepting Appellants' asserted
interpretation of the term "ridge" as requiring an elongated raised structure,
Appellants do not explain adequately why Carlstedt's generally annular rivet
head 62 could not reasonably be considered to be an elongated raised
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structure, or "ridge," much like Appellants' "ridge 434," which "preferably,
has an annular shape." Spec. 9, 11. 8-10. Therefore, Appellants do not
apprise us of error in the Examiner's reading of the claimed "ridge" on
Carlstedt's rivet head 62.
Accordingly, we sustain the rejection of claim 6 as anticipated by
Carlstedt.
Claims 8 and 10:
Claim 8 requires, inter alia, "said distal end of said axial abutment
extends a predetermined distance beyond [the] one of said pair of
substantially planar surfaces of said at least one rigid member [opposite the
one of said pair of substantially planar surfaces abuttingly engaging an end
surface of one end of said substantially solid body]." Appeal Br. 40 (Claims
App.). Appellants argue that the portion of Carlstedt's pad 60 identified by
the Examiner as corresponding to the claimed "abutment" (i.e., the portion
of pad 60 extending though top opening 30) "fails to extend past the upper
surface of ... plate member 20 in FIG. 6." Appeal Br. 18. The Examiner
explains that "pad 60 need not 'extend past the upper surface of ... plate
member 20' because the 'substantially planar surface' is not the upper
surface of 20, but instead the surface 33 of boss [2]8." Ans. 13. The
Examiner's position is untenable because, as Appellants point out (Reply Br.
4), surfaces 33 cannot reasonably be considered to be "substantially planar
surfaces." See Carlstedt, Fig. 6. Accordingly, we do not sustain the
rejection of claim 8, or claim 10, which depends from claim 8, as anticipated
by Carlstedt.
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Claims 17, 24, and 25:
In contesting the rejection of claims 17 and 24, Appellants merely rely
on the arguments advanced against the rejection of claim 1 and set forth
additional limitations of claims 17 and 24. Appeal Br. 18, 19. Thus,
Appellants do not present any argument for separate patentability of claims
17 and 24. See 37 C.F.R. § 41.37(c)(l)(vii) (stating "[a] statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim."). Further, Appellants state that
"claim 25 stands or falls with claim 24." Appeal Br. 19. Accordingly, we
sustain the rejection of claims 17, 24, and 25, which fall with claim 1, as
anticipated by Carlstedt.
Claim 18:
Appellants urge that the "[t]erm 'peripheral' is conventionally
construed as an external edge." Appeal Br. 18. Appellants contend that
Carlstedt's boss 28 "is disposed in the center of ... plate [20]" and, thus, is
not a peripheral flange, as required in claim 18. Appeal Br. 18. The
Examiner posits that Appellants' proffered construction of the term
"periphery" "is overly narrow." Ans. 13. According to the Examiner, "[a]
'periphery' need not be external- e.g., a 'radially-inner periphery' is a
proper use of the term." Id. at 14.
On the basis of the record before us, the Examiner's position is
untenable. We agree with Appellants that the construction of "peripheral"
applied by the Examiner "is unconventional and/or overly broad." Reply Br.
4. Appellants' proffered construction is consistent with dictionary
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definitions of the term "peripheral."3 Further, Appellants' proffered
construction is consistent with the use of the term "peripheral" in the
Specification. See, e.g., Spec. 7, 1. 13 ("peripheral surface 424"); 8, 1. 17
("peripheral lip 428"); 19, 11. 13-14 ("peripheral flange 510"); Fig. 4
(depicting peripheral surface 424 as the external edge of solid body 410 and
peripheral lip 428 on the exterior edge of abutment 426); Fig. 8 (depicting
peripheral flange 510 on the perimeter, or external edge, of rigid members
440, 441 ). The Examiner does not point to, nor do we find, any disclosure in
Appellants' Specification suggesting that Appellants use the term
"peripheral" in a manner different from the conventional meaning advanced
by Appellants.
The Examiner is correct that the term "peripheral" could be used in
connection with an aperture in the central portion of a plate, and, in fact,
Appellants' Specification does so. See Spec. 11, 11. 5-6 ("peripheral edge of
the central aperture"). In this instance, the "peripheral edge" refers to the
external or outer edge of the central aperture. However, claim 18 does not
recite a peripheral flange of a central aperture; rather, claim 18 recites that
"at least one of said plurality of plate shaped members includes a peripheral
3 See, e.g., peripheral. (1970, 1984). In Webster's New World Dictionary
(David B. Guralnik ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984) ("1. of,
belonging to, or forming a periphery 2. lying at the outside or away from the
central part; outer; external"); peripheral. Merriam-Webster.com,
http://www.merriam-webster.com/ dictionary /peripheral (last visited Aug.
10, 2016) ("1 : of, relating to, involving, or forming a periphery or surface
part"); periphery. Id., http://www.merriam-webster.com/dictionary/periphery
(last visited Aug. 10, 2016) ("1 : the perimeter of a circle or other closed
curve; also: the perimeter of a polygon"; "2 : the external boundary or
surface of a body"; 3 a: the outward bounds of something as distinguished
from its internal regions or center").
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flange." Appeal Br. 46 (Claims App.) (emphasis added). Thus, the flange
recited in claim 18 is on the periphery of the plate shaped member.
Carlstedt's boss 28 is not on the periphery of plate 20, and, thus, does not
satisfy the "peripheral flange" limitation of claim 18.
Accordingly, we do not sustain the rejection of claim 18 as anticipated
by Carlstedt.
Rejection II
Claims 2 and 12:
The Examiner acknowledges that Carlstedt lacks an "axial bore" as
required in claim 2, but determines that it would have been obvious to
include one "because it is simply another means to stack and align
compression spring units." Final Act. 10. According to the Examiner,
"[r]ather than have them contained in a hollow cylindrical space, as in
Carlstedt, Sperner teaches the well-known and commonly employed
alternative of stacking the units by placing a rod through the axial bore of
each unit." Id. at 10-11.
Appellants argue that the Examiner fails to provide the requisite
reasoning with factual underpinning "as to exactly how the center bore 2 of
Sperner is to be formed in the [preform] 40 of Carlstedt." Appeal Br. 32.
Appellants' argument is not convincing because Appellants do not
direct our attention to, nor do we discern, any reason why providing a center
bore in Carlstedt's preform 40 used to form pad 60 would have been
uniquely challenging to or beyond the technical grasp of a person having
ordinary skill in the art. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 416-19 (2007)) (modification of prior art device to incorporate a
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known device held to be obvious where no evidence was presented that the
inclusion of such a device "was uniquely challenging or difficult for one of
ordinary skill in the art" or "represented an unobvious step over the prior
art"). The Examiner finds that "[t]he 'bore' may be added to the very center
of elastomer pad 60 without preventing the 'lips' 62 from forming on the
boss 28" (Ans. 15), and Appellants do not provide any persuasive evidence
or technical reasoning to show that this would not be the case.
Further, Appellants contend that "Carlstedt is silent as to behavior of
his spring with a center bore 2 of Spemer." Appeal Br. 32. Appellants also
contend that "Spemer does not mechanically interlock his pads 1 with metal
plates 5 in a manner that Carlstedt does." Reply Br. 6. These contentions
attack Carlstedt and Spemer individually, rather than as combined in the
rejection, and, thus, do not point to error in the Examiner's conclusion of
obviousness. "Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants also allege error in the Examiner's finding that "Spemer
'teaches the well-known and commonly employed alternative of stacking the
units by placing a rod through the axial bore of each unit"' because,
according to Appellants, "Spemer lacks any teaching of a rod or any
suggestion to use one." Reply Br. 6 (quoting Final Act. 10-11 ).
Appellants' assertion is not correct. Spemer discloses placing a rod (i.e.,
shaft), through the axial bore of each spring washer/metal plate unit of an
elastic buffer comprising a series of stacked spring washer/metal plate units.
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See Spemer Transl. 24 (stating, "[t]he elastic buffer shown in Figure 1
consists of several spring washers 1, which are pushed onto a shaft 2"); Figs.
2, 3 (depicting an unnumbered shaft, like that shown and identified in Figure
1, passing through an axial bore in the spring washers and metal plates).
For the above reasons, Appellants fail to apprise us of error in the
rejection of claim 2 as unpatentable over Carlstedt and Spemer.
Accordingly, we sustain the rejection of claim 2 as unpatentable over
Carlstedt and Spemer.
In contesting the rejection of claim 12, Appellants rely solely on the
arguments advanced for claims 1 and 2. Appeal Br. 34. Having found these
arguments unpersuasive, we also sustain the rejection of claim 12 as
unpatentable over Carlstedt and Spemer.
Claims 7, 11, 13, and 15:
The Examiner's rejection of claim 7 includes a finding that Spemer
discloses an annular ridge (ridge 3) having a generally triangular cross-
section in a plane substantially parallel to a plane of the central axis and a
determination that "[i]t would have been obvious to have this cross-section
because it is merely a design choice, an alternative shape to aid in
stacking/aligning the components." Final Act. 11. The rejection lacks
clarity as to whether the Examiner proposes to modify the cross-sectional
shape of a structure already present on Carlstedt' s elastomeric spring unit or
to add a ridge having a generally triangular cross-section.
4 The Spemer Translation is not paginated. In referencing pages of this
document herein, we number the pages chronologically, citing to the first
page as page 1 or "Spemer Transl. 1," the second page as page 2 or "Spemer
Transl. 2," and so on.
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Appellants, surmising that the Examiner's rejection must be proposing
to replace bottom rivet head 62 of Carlstedt with ridge 3 of Spemer, 5
contend that such a modification "will destroy operability of Carlstedt in
terms of attaching one end of the [elastomer] pad 60 to the metal plate 20."
Appeal Br. 33. We agree with Appellants' contention. Carlstedt's rivet
head 62 is formed by cold forming nipple projection 44 of preform 40 over
central boss 28 and flanges 33 to ensure "a permanent, fixed mechanical
bond between" plates 20 and pad 60. Carlstedt, col. 5, 11. 35--42. Indeed,
this shape of rivet head 62 appears to be critical to achieving the objectives
of Carlstedt's invention. Id., col. 5, 11. 42--45. Thus, any significant change
to this shape could destroy the operability of rivet head 62 in performing this
critical attachment function. The Examiner fails to proffer any evidence or
technical reasoning to show that the proposed shape modification would not
affect the operability of rivet head 62, and, thus, fails to establish that the
proposed shape change to rivet head 62 amounts to a mere design choice or
alternative shape to aid in stacking/aligning.
Appellants, justifiably confused by the Examiner's rejection, add that
"[i]fthe Examiner meant to include ridge 3 of Spemer as an additional
element to the rivet 62, then the Examiner failed to articulate operability of
Carlstedt (with such ridge) in joining his elastomer pad 60 with the metal
plate 20." Appeal Br. 33.
In response, the Examiner states that "since the 'ridge' is so broadly
claimed, even the portion of 60 extending into 34 [in Carlstedt] may be
5 This appears to be a reasonable interpretation of the rejection in light of the
Examiner's reading of the "ridge" of claim 6, from which claim 7 depends,
on bottom rivet head 62. See Final Act. 3.
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construed as the 'ridge' and these may have a triangular cross-section as
taught by Spemer. It is unclear why/how it is expected of the Examiner to
further ' [articulate] operability."' Ans. 15. This response further obfuscates
the Examiner's rejection, as it hints, but does not state explicitly, that the
Examiner now considers the portion of Carlstedt' s pad 60 protruding into
projection 34 of plate 20 to be the claimed "ridge" and proposes to modify
its cross-section to be triangular. Assuming this to be the case, the Examiner
does not explain how such a modification would also satisfy the requirement
in claim 7 that the "ridge has an annular shape," nor does the Examiner
explain how, or if, such a ridge structure could be formed using the forming
process disclosed in column 5 of Carlstedt. See Reply Br. 7 (arguing that
Carlstedt's projections 34 "cannot result in an 'annular ridge'
configuration").
For the above reasons, the Examiner does not articulate with sufficient
clarity the requisite findings and reasoning to establish that the subject
matter of claim 7 would have been obvious from the combined teachings of
Carlstedt and Spemer. The Examiner's rejection of claims 11 and 13, which
also require an annular ridge having a generally triangular cross-section, is
likewise deficient. See Final Act. 11 (referencing the discussion of claim 7
in addressing claims 11 and 13). Accordingly, we do not sustain the
rejection of claims 7, 11, and 13, or claim 15, which depends from claim 13,
as unpatentable over Carlstedt and Spemer.
Claims 26 and 29:
In contesting the rejection of these claims, Appellants state only that
"claims 26 and 29 [stand] or [fall] with claim 24." Appeal Br. 34. We
understand Appellants to be relying on their arguments advanced against the
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rejection of claim 24 as anticipated by Carlstedt in contesting the rejection of
claims 26 and 29 as unpatentable over Carlstedt and Spemer. For the
reasons set forth above, Appellants fail to apprise us of error in the rejection
of claim 24 as anticipated by Carlstedt. Accordingly, we also sustain the
rejection of claims 26 and 29 as unpatentable over Carlstedt and Spemer.
Rejection III
Claims 9 and 16:
Claim 9 depends from claim 8 and further requires the thickness
portion of the rigid member caged between the end surface of the solid body
and an inner surface of the lip to be "disposed planar with a remaining
thickness portion of said at least one rigid member." Appeal Br. 41 (Claims
App.). Claim 16 depends from claim 13 and further requires the "caged
annular thickness portion [to be] disposed in a same plane as a remaining
thickness portion of said at least one rigid member." Id. at 46. The
Examiner finds that Carlstedt "does not disclose that the caged thickness
portion is planar with the rest of the thickness portion" of the rigid member.
Final Act. 12. The Examiner finds that Toms discloses a "caged thickness
portion (portion of 78 that is surrounded by 46, both on the radial-outer edge
and directly below it)" of "at least one rigid member (74, 78)" that "is
disposed planar with a remaining thickness portion (portion of 78 that is not
surrounded by 46, extending radially inward to 76)." Id. The Examiner
determines that "[i]t would have been obvious to ... have the caged
thickness portion be planar with the remaining thickness portion because this
is a simpler design that allows for ease in stacking the many compression
spring units." Id.
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Assuming the Examiner proposes to modify Carlstedt's plate 20 so
that the portion of the plate (i.e., intumed flanges 33) caged between the lip
(rivet head 62) and the top end of pad 60 is disposed planar with the
remainder of plate 20, such a modification would effectively eliminate rivet
head 62, which is formed during the cold form process by the presence of
intumed flanges 33, thus destroying a critical feature of Carlstedt's
elastomeric spring unit. See Appeal Br. 36 (arguing that the proposed
combination would render Carlstedt "inoperable for the intended purpose as
the flange 28 of Carlstedt is intumed into the thickness of the elastomer pad
60"). Moreover, as Appellants point out, Toms does not cage any portion of
steel plate 48 between portions of pad 46. See id. (stating, "Toms fails to
cage any portion of his steel plate 48"). Appellants are correct. In addition
to steel plates 48, Toms provides bearings 74, each with shank 76 and flange
78, and cages flanges 78 between pad 46 and steel plate 48. Toms, Fig. 6;
col. 5, 11. 24--52. The Examiner does not explain, nor do we discern, how
this arrangement taught by Toms is "a simpler design" for stacking than that
of Carlstedt. For these reasons, the Examiner does not establish an apparent
reason, with rational underpinnings, that would have prompted a person
having ordinary skill in the art to modify Carlstedt' s plate 20 so the caged
portion is planar with, or disposed in a same plane as, the remaining portion
of the plate.
In response, the Examiner states that "[t]he 'caged thickness portion'
may be the radially-inner portion of 28, and the 'remaining thickness
portion' may be the radially-outer portion of 28, which is immediately
adjacent and therefore is located in the same plane (although they may not
extend in the same plane, this is not recited)." Ans. 16. The Examiner then
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explains that "Carlstedt need not be modified, but Toms teaches that the
entire rigid member may be in the same plane and is offered for this reason."
Id.
The Examiner's position that the radially-inner portions of boss 28 of
Carlstedt's plate are disposed planar with the radially-outer portions of boss
28 is untenable. See Figs. 3, 5, 6. Boss 28 of Carlstedt's plate 20 assumes a
curved, non-planar profile. See id. Moreover, Carlstedt, unmodified, is
deficient vis-a-vis claim 8, from which claim 9 depends, for the reason set
forth above. To the extent that the Examiner offers Toms as teaching that
the entire rigid member may be in the same plane to support a conclusion
that it would have been obvious to modify Carlstedt's plate 20 to form it all
in one plane, or even to form all of boss 28 thereof in one plane, such a
conclusion is not supported by the articulation of an apparent reason with
rational underpinnings, for the reasons set forth above.
For the above reasons, the Examiner fails to establish that Carlstedt
and Toms render obvious the subject matter of claims 9 and 16.
Moreover, claim 16 depends from claim 13, and, thus, requires an
annular ridge having a generally triangular cross-section. Appeal Br. 43--44,
46 (Claims App.). The Examiner's application of Toms does not cure the
deficiency in the rejection of claim 13 vis-a-vis this limitation. See Final
Act. 12. Therefore, the Examiner's rejection of claim 16 is deficient for this
additional reason.
Accordingly, we do not sustain the rejection of claims 9 and 16 as
unpatentable over Carlstedt and Toms.
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Claim 14:
The Examiner's application of the teachings of Toms does not remedy
the deficiency in Carlstedt vis-a-vis the annular ridge having a triangular
cross-section, discussed above in addressing the rejection of claim 13, from
which claim 14 depends. Accordingly, we do not sustain the rejection of
claim 14 as unpatentable over Carlstedt and Toms.
Rejection IV
Claim 19-23 and 27:
Appellants argue that the Examiner errs in reading the pair of forming
members on bearing 76 and steel plate 48 of Toms because these elements
are "employed in the final spring assembly ... but not for forming the
elastomer pad 46." Appeal Br. 28. Appellants add that "Toms is silent as to
a method of forming his elastomer pad 46 ... , particularly inserting the stem
482 into an aperture 470 of the [preform] block 460 as required by the
claimed subject matter of claim 19." Id.
Appellants' arguments do not point to error in the Examiner's
rejection because claim 19 is not directed to a method of forming an
elastomer pad; rather, claim 19 is directed to " [a] method of manufacturing a
compressible elastomeric spring." Appeal Br. 47 (Claims App.). It is well
established that limitations not appearing in the claims cannot be relied upon
forpatentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). Consistent
with Appellants' Specification, "[t]he compressible spring includes an
elastomeric pad" and "may include a rigid, plate shape member that is
mechanically secured to the elastomeric pad during the forming process."
Spec. 3, 11. 3--4, 11-13. The only steps recited in claim 19 are providing a
preform body having an axial bore, an abutment, and generally flat axial
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ends; providing a pair of forming members, one of which comprises an
elongated member; positioning the preform body between the forming
members; inserting the elongated member into the axial bore; and applying
axial force to at least one of the forming members. Appeal Br. 47 (Claims
App.). Claim 19 does not recite a step of removing the compressible
elastomeric spring from the forming members after applying axial force,
and, thus, does not preclude the presence of the forming members as part of
a manufactured spring. Appellants do not direct our attention to, nor do we
discern, how the method steps recited in claim 19 distinguish over the steps
of assembling and pretensioning Toms's elastomer pad stack 44 as shown in
Figures 2 and 6, nor do Appellants make any attempt to explain what, if
anything, distinguishes Appellants' claimed forming members from Toms' s
bearings 74 and plates 48 or Appellants' claimed preform body from Toms's
pads 46.
In their Reply Brief Appellants also present an additional argument,
which is set forth in their Appeal Brief in contesting the rejection of claim 1
as anticipated by Toms, but which is not set forth in their Appeal Brief in
contesting the like rejection of claim 19. Reply Br. 5; see Appeal Br. 24.
Specifically, Appellants contend that the Examiner erred in finding that "pad
46 of Toms has the required 'abutment."' Reply Br. 5. The only discernible
basis advanced by Appellants in support of this argument is that because "no
portion of [Toms's] pad extends beyond the inner surface of the steel plate
48," the portion of pad 46 on which the Examiner reads the claimed
"abutment" (i.e., the "radially-inner portion of 46 extending past 72a/72b in
Fig. 6") does not meet the "upstanding on one of said pair of axial ends"
limitation of claim 19. See Appeal Br. 24 (argument advanced against the
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rejection of claim 1 ); see also Final Act. 8 (identifying the structure in Toms
corresponding to the claimed abutment). This argument does not apprise us
of error because it is directed to a limitation (i.e., the pad extending beyond
the inner surface of a steel plate) not recited in claim 19. Once again,
limitations not appearing in the claims cannot be relied upon for
patentability. Self, 671 F.2d at 1348.
In contesting the rejection of claims 20-23 and 27 as anticipated by
Toms, Appellants merely rely on their arguments advanced for claim 19.
See Appeal Br. 28, 29.
For the above reasons, Appellants fail to apprise us of error in the
rejection of claims 19-23 and 27 as anticipated by Toms, which we, thus,
sustain.
Rejection V
In contesting this rejection, Appellants contend that "Toms fail[s] to
teach any forming members for his elastomer pad 46" and that "addition of
the magnet of Urquidi ... does not cure the deficiencies of Toms." Appeal
Br. 3 7. Appellants do not elaborate on why the Examiner's finding that
Toms discloses a first forming member (bearing 74) and a second forming
member (middle plate 48 in Figure 6) is in error. Id.; see also Final Act. 9.
To the extent that the basis of Appellants' argument regarding the first and
second forming members is the same as that advanced in contesting the
rejection of claim 19, this line of argument is unpersuasive, for the reasons
set forth above.
Accordingly, Appellants fail to apprise us of error in the rejection of
claim 28 as unpatentable over Toms and Urquidi, which we, thus, sustain.
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DECISION
The Examiner's decision rejecting claims 1, 3-6, 8, 10, 17, 18, 24,
and 25 under 35 U.S.C. § 102(b) as anticipated by Carlstedt is affirmed as to
claims 1, 3---6, 17, 24, and 25, and reversed as to claims 8, 10, and 18.
The Examiner's decision rejecting claims 2, 7, 11-13, 15, 26, and 29
under 35 U.S.C. § 103(a) as unpatentable over Carlstedt and Spemer is
affirmed as to claims 2, 12, 26, and 29, and reversed as to claims 7, 11, 13,
and 15.
The Examiner's decision rejecting claims 9, 14, and 16 under
35 U.S.C. § 103(a) as unpatentable over Carlstedt and Toms is reversed.
The Examiner's decision rejecting claims 19-23 and 27 under
35 U.S.C. § 102(b) as anticipated by Toms is affirmed.
The Examiner's decision rejecting claim 28 under 35 U.S.C. § 103(a)
as unpatentable over Toms and Urquidi is affirmed.
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)(l )(iv).
AFFIRMED-IN-PART
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