Ex Parte Szyszka et al

Patent Trial and Appeal Board

Mar 31, 2014

11664499 (P.T.A.B. Mar. 31, 2014)

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.
11/664,499 04/03/2007 Axel Szyszka 204-165 1173
47988 7590 04/01/2014
WALTER OTTESEN
PO BOX 4026
GAITHERSBURG, MD 20885-4026
EXAMINER
NGUYEN, XUAN LAN T
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
04/01/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AXEL SZYSZKA and MATTHIAS HLAWATCZEK
____________

Appeal 2012-000452
Application 11/664,499
Technology Center 3600
____________

Before EDWARD A. BROWN, JAMES P. CALVE and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000452
Application 11/664,499

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STATEMENT OF THE CASE
Axel Szyszka and Matthias Hlawatczek (Appellants) appeal under 35
U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C.
§ 102(b) claims 5-12 as anticipated by Hartmut (DE 1175038 B; pub. Jul.
30, 1964).1 Claims 1-4 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter “relates to an air spring.” Spec.1, l. 4; fig.
4. Claims 5 and 7 are independent.
Claim 5 is illustrative of the claimed subject matter and recites:
5. An air spring comprising:
a roll-off piston having an end wall and an
annular side wall extending from said end wall;
said annular side wall defining a diameter of
said piston and defining a roll-off surface;
said annular side wall and said end wall
conjointly defining a roll-off edge;
an air spring flexible member having a
flexible member wall made of elastomeric
material;
said flexible member wall having a lower
end and a bead formed at said lower end to define
a lower opening of said air spring flexible member
facing toward said roll-off piston;
said end wall having a conical seat formed

1 We derive our understanding of Hartmut from the translation contained in
the image file wrapper of this application. All references to the text of this
document are to portions of the translation.
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thereon for receiving said flexible member wall
thereon at said bead so as to permit said flexible
member wall to roll off on said roll-off surface
during operation of said air spring;
said flexible member wall having a
reinforcement layer and said bead having an
annularly-shaped reinforcement core;
said reinforcement layer being formed to
include a loop around said reinforcement core and
said loop having an end ahead of said roll-off edge
within said diameter of said piston so as to cause
the flexible member wall to be less stiff beyond
said roll-off edge than ahead of said roll-off edge
when said air spring flexible member is in a
deflected state whereby a more reliable deflection
of said air spring is provided in all operating states;
and,
said bead having an upper end facing away
from said end wall and said flexible member wall
extending from said upper end and, when said air
spring flexible member is in a completely
expanded state and also during operation, a tangent
of said flexible member wall and said end wall
conjointly defining an angle lying in a range of 45°
to 90° at the location whereat said flexible member
wall projects away from said bead.

ANALYSIS
Claim Construction
The rejection of claims 5 and 7 is based on the Examiner’s
interpretation of the recitation “said loop having an [end/ending] ahead of
said roll-off edge,” as broadly encompassing an area beyond the roll-off
Appeal 2012-000452
Application 11/664,499

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edge. Ans. 5, 8-92; See also Final Rej. 4-53; Advisory Act. 14; App. Br. 20,
22, Clms. App’x. Specifically, the Examiner took the position that “[t]here
is no reference point in the claim language to specify the location of the end
of the loop . . . the terms ‘ahead’ and ‘beyond’ are similar and not . . .
opposite with respect to a reference point.” Final Rej. 4-5; See also
Advisory Act., 1. We construe the relevant claim language at the outset to
serve as a basis for our review of the rejection.
We recognize that claims are to be interpreted in light of the
Specification. Initially, we note that Appellants’ presented evidence in the
Appeal Brief of a proposed definition for the term “ahead of” to mean “in
front of” or “before.” App. Br. 12, Exhibit F. The Examiner entered the
presented evidence and accepted Appellants’ proposed definition for the
term “ahead of.” Ans. 9-10. We further note that Appellants’ proposed
definition for the term “ahead of” is consistent with Appellants’ use of this
term in the Specification. See infra. In addition, although Appellants’
Specification does not explicitly define the term “ahead of,” the
Specification describes that (1) “the back-guided loop of the reinforcement
layer does not extend into the roll-off edge” (Spec. 3, ll. 9-11(emphasis
added)); (2) “[t]he end 21 of the loop 20 is passed back into the flexible
member wall 5 and ends before the flexible member wall 5 reaches the roll-
off edge 12 of the roll-off piston” (Spec. 6, ll. 4-6; fig. 4(emphasis added))
(See also App. Br. 12, Exhibit C; Reply Br. 2, Exhibit A); and (3) “[t]he end
21 of the loop 20 does not reach the roll-off edge 12” (Spec. 6, ll. 15-16; fig.

2 The Examiner provided an annotated version of Figure 2 of Hartmut. See
Ans. 8.
3 Mailed November 3, 2010.
4 Mailed February 9, 2011.
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4(emphasis added)) (See also App. Br. 12, Exhibit C; Reply Br. 3-4, Exhibit
A).
We agree with Appellants that “the term ‘ahead of’ means before the
roll-off edge and, with reference to the roll-off edge, cannot be interpreted
by one of ordinary skill in the art as being beyond the roll-off edge when
viewed in the light of . . . [A]ppellants’ [S]pecification.” Reply Br. 3. As
such, the Examiner’s interpretation of “said loop having an [end/ending]
ahead of said roll-off edge” (Ans. 5) as broadly encompassing an area
beyond the roll-off edge is inconsistent with the understanding that one of
ordinary skill in the art would have of the claim language when read in light
of the Specification.
Anticipation
The Examiner’s determination of anticipation of independent claims 5
and 7 by Hartmut is based on an unreasonably broad interpretation of the
term “ahead of” as encompassing an area beyond the roll-off edge. Ans. 5,
8-10.5 Accordingly, we do not sustain the Examiner’s rejection of
independent claims 5 and 7 and their respective dependent claims 6 and 8-12
as anticipated by Hartmut.

5 Regarding claim 5, we note that even if the Examiner’s interpretation of
“said loop having an end ahead of said roll-off edge” were plausible (see
Ans. 5, 8, 10), the Examiner has not shown how the loop having an end
ahead of the roll-off edge would “cause the flexible member wall to be less
stiff beyond said roll-off edge than ahead of said roll-off edge,” as required
by the claim. App. Br. 20, Clms. App’x. (emphasis added); See also App.
Br. 15; Reply 3-4.
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DECISION
We REVERSE the decision of the Examiner to reject claims 5-12 as
anticipated by Hartmut.

REVERSED

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