Ex Parte Truong et alDownload PDFPatent Trial and Appeal BoardMar 28, 201612833771 (P.T.A.B. Mar. 28, 2016) Copy Citation 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. 12/833,771 07/09/2010 Hung Truong 09/115 7187 7590 03/29/2016 LEON D. ROSEN FREILICH, HORNBAKER & ROSEN Suite 1220 10960 Wilshire Blvd. Los Angeles, CA 90024 EXAMINER KRAFT, LOGAN M ART UNIT PAPER NUMBER 3745 MAIL DATE DELIVERY MODE 03/29/2016 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 HUNG TRUONG, ANGEL CHING, and TARIQ LATIF ____________________ Appeal 2014-002423 Application 12/833,771 Technology Center 3700 ____________________ Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hung Truong et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1 and 3. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Barksdale, Inc. Br. 1. Appeal 2014-002423 Application 12/833,771 2 THE CLAIMED SUBJECT MATTER Claim 1 is the sole independent on appeal. Claim 1, reproduced below, is representative of the subject matter on appeal, with disputed limitations italicized for emphasis. 1. A hydraulic actuator comprising: a housing (22); a piston (12) that is slideable in forward and rearward directions in the housing, said piston having a first forward- facing piston surface (44) and a first rearward-facing piston surface (40), and said piston having an output part (17) that extends outside said housing; a pusher (24) that is contained in said housing and that is slideable in forward and rearward directions in the housing, said pusher having a first-forward-facing pusher surface (50) and having a rearward-facing pusher surface (48); said housing having a first port (A) that is coupled to said first piston surface (44), so when pressured fluid is applied only to said first port (A) said pressured fluid moves said piston rearward to a rear position (12R); said housing having a second port (C) that is coupled to said pusher rear-facing surface (48) and said piston rear-facing surface (40), so when pressured fluid is applied only to said second port (C) said pressured fluid moves said pusher forward (by C3) against a first housing surface (52) and moves said piston forward (by C2) against a second housing surface (46); said piston and pusher surfaces being chosen so when equal pressured fluid is applied to said first and second ports (A, C), said pusher is urged forward (C3) to abut a rearward-facing surface (52) of said housing and said piston is urged rearward and moves to a neutral position (12N); at least part of said pusher lies around said piston, said piston has a rearward-facing ledge (56), and said pusher has a forward-extending narrow extension (54) that lies around said piston and that abuts said ledge when pressured fluid is applied only to said second port (C). Appeal 2014-002423 Application 12/833,771 3 THE REJECTIONS Claims 1 and 3 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as anticipated by Hedman (US 8,312,618 B2; iss. Nov. 20, 2012). OPINION Claims 1 and 3 — Indefiniteness Appellants chose not to present arguments rebutting the Examiner’s rejection of claims 1 and 3 as indefinite, and therefore, we summarily affirm the Examiner’s rejection of claims 1 and 3 under 35 U.S.C. § 112, second paragraph. Claims 1 and 3 — Anticipation The Examiner found, inter alia, that when equal pressure is applied to Hedman’s first and second ports 108, 109, pusher 521 is urged forwardly to abut a rearward-facing surface of the housing (at 102), and piston 503 is urged rearwardly to move into a neutral position, as required by independent claim 1. Final Act. 3–4 (citing Hedman, Figs. 2a, 2b); Ans. 2–3 (referencing the Examiner’s annotated Figure 5 of Hedman). Appellants’ sole argument is that “Hedman’s Fig. 3 shows that when pressured fluid is applied to . . . ports 108 and 109, . . . piston 303 and pusher [5]21 move against each other and against a single housing part 305a, not against two different housing parts.” Br. 3. The Examiner correctly responds that although claim 1 requires the piston and pusher to contact first and second housing parts when pressurized fluid is applied only to second port C, claim 1 does not require the piston and pusher to contact first and second housing parts when Appeal 2014-002423 Application 12/833,771 4 pressurized fluid is applied to both first and second ports A and C. Ans. 2– 3; Br. (Claims App.). Moreover, Appellants’ argument does not apprise us of error in the Examiner’s findings. Ans. 4. Accordingly, we sustain the Examiner’s rejection of independent claim 1. Regarding dependent claim 3, Appellants’ sole argument is that “[c]laim 3 describes the pusher having a forward-facing surface (50, Fig. 2)” and “[t]he forward-facing surface (50) engages a housing rearward-facing surface[] (52) in the pusher neutral position (A+C) 1 which is rearward of Fig. 2 position.” Br. 3. However, Appellants’ statement describing claim 3 does not constitute a separate argument for the patentability of dependent claim 3 pursuant to 37 C.F.R. § 41.37(c)(1)(vii). See In re Lovin, 99 USPQ2d 1373, 1379 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted 37 C.F.R. § 41.37(c)(1)(vii) as requiring “more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art”). Accordingly, we also sustain the Examiner’s rejection of claim 3. DECISION The Examiner’s decision to reject claims 1 and 13 under 35 U.S.C. § 112, second paragraph, is AFFIRMED. The Examiner’s decision to reject claims 1 and 13 under 35 U.S.C. § 102(b) is AFFIRMED. Appeal 2014-002423 Application 12/833,771 5 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation