Ex Parte Verriet

Board of Patent Appeals and Interferences

Jun 13, 2006

10282658 (B.P.A.I. Jun. 13, 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for publication and is not binding precedent of the Board.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 FRANK VERRIET
____________

Appeal No. 2006-0523
Application No. 10/282,658
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD, and BAHR, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 9, 10,
12, 14 to 16, 18, 20 to 32, which are all of the claims pending in this application.
Claims 1 to 8, 11, 13, 17 and 19 have been cancelled.

Appeal No. 2006-0523
Application No. 10/282,658

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The appellant's invention relates to a shock absorber having a check valve
damping adjustment (specification, p. 1). A copy of the claims under appeal is set forth
in the appendix to the appellant's brief.
The Prior Art
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Silberstein 4,874,066 Oct. 17, 1989
Spiess et al. (Spiess) 5,085,299 Feb. 4, 1992

Jenni 674,251 May 15, 1990
(Swiss Patent Document)

Shimoda et al. (Shimoda) 2001-099338 Apr. 10, 2001
(Japanese Patent Document)

The Rejections

Claims 9, 10, 12, 14 to 16, 18 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Spiess in view of Jenni.
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Spiess in view of Jenni and Shimoda.
Claims 21 to 26 stand rejected under 35 U.S.C. § 103 as being unpatentable in
view of Jenni in view of Shimoda.
Claims 27 to 29 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Silberstein in view of Jenni.
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Application No. 10/282,658

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Claims 30 to 32 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Silberstein in view of Jenni and Shimoda.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
(mailed June 28, 2005) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed May 13, 2005) and reply brief (filed August 25, 2005)
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.
We turn first to the examiner's rejection of claims 9, 10, 12, 14 to 16, 18 and 20
under 35 U.S.C. § 103 as being unpatentable over Spiess in view of Jenni. We initially
note that the test for obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
The examiner finds that Spiess describes the invention as recited in claim 9
including a check valve 101 disposed in a cylindrical chamber in a piston, except that
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Application No. 10/282,658

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Spiess does not describe a polygonal check valve (see answer at page 3). The
examiner relies on Jenni for teaching a polygonal check valve.
The appellant argues that Spiess does not describe a rod with a cylindrical
chamber containing a check valve like that defined in claim 9 on appeal. Rather, in
appellant's view the cylindrical chamber 96 which contains a valve 101 is contained in a
cylindrical chamber within the piston rather than the rod.
We agree with the appellant. The chamber 96 of Speiss is disposed in the head
portion of piston 14 (see Fig. 1). In addition, rod 12 does not include first and second
portions respectively adjacent first and second chambers of the cavity as required by
claim 9.
In view of the foregoing, we will not sustain this rejection as it is directed to claim
9 and claims 10, 12, 14 to 16, 18 and 20 dependent thereon.
We turn next to the examiner's rejection of claim 15 under 35 U.S.C. § 103 as
being unpatenable over Spiess in view of Jenni and further in view of Shimoda.
Claim 15 depends from claim 9 and thus includes the subject matter of a
cylindrical chamber having a check valve therein formed in the rod. As we noted above,
Spiess does not describe a rod with a cylindrical chamber having a check valve therein
nor a rod that has first and second portions respectively adjacent first and second
chambers of the cavity. We have reviewed the disclosure of Shimoda and found that
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Application No. 10/282,658

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Shimoda does not cure the deficiency noted above for the Spiess and Jenni
combination. Therefore, we will not sustain this rejection.
We turn next to the examiner's rejection of claims 21 to 26 under 35 U.S.C.
§ 103 as being unpatenable over Jenni in view of Shimoda.
The examiner is of the opinion that Jenni describes the invention as recited in
claim 21 except that Jenni does not describe a check valve having linear engagement
surfaces between the flat surfaces. The examiner relies on Shimoda for teaching linear
engagement surfaces between flat portions of the valve (Fig. 8) and concludes it would
have been obvious to place the linear engagement surfaces of Jenni between flat
portions of the valve as taught by Shimoda as such would be an obvious design choice
and would improve the flow characteristics of the valve. (final rejection page 4).

We agree with the appellant that :
The Jenni reference is directed to providing a valve assembly that does
not rotate. Jenni accomplishes this by providing guide ribs 9 on the duct 2
that cooperate with flat or level surfaces 17 (see Claim 1). To move these
engagement portions to be positioned on the non-flat portions would
clearly defeat the benefits provided by Jenni [reply brief at page 8].

We additionally note that it is an object of the Jenni invention to provide a check
valve where one can guarantee the touching of the closing body upon the seal portion
when the valve is in the closing position (page 3) and that it is the engagement of the
flat surfaces 17 with the guides 9 which prevent the twisting of the closing body. As
such, in our view, a person of ordinary skill in the art would not be motivated to move
the linear engagement surfaces to non-flat portions of the valve, as taught by Shimoda,
as such would defeat the purpose of the Jenni invention.
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In view of the foregoing, we will not sustain this rejection as it is directed to claim
21 or claims 22 to 26 dependent thereon.
We turn next to the examiner's rejection of claims 27 to 29 under 35 U.S.C.
§ 103 as being unpatenable over Silberstein in view of Jenni.
The examiner is of the opinion that Silberstein discloses the invention of claim 27
except that Silberstein does not disclose a polygonal check valve. The examiner relies
on Jenni for describing a polygonal check valve. The examiner concludes:
It would have been obvious to one of ordinary skill in the art at the time of
the invention to have provided the shock absorber of Silberstien [sic] with
the check valve of Jenni in order to improve the flow characteristics of the
valve [Office Action dated December 30, 2004, page 5].

Appellants argue that there is no motivation to combine the teachings of
Silberstein and Jenni to arrive at the subject matter of claim 27. Specifically, appellants
argue:
. . . there is no support for the examiner's assertion that the Jenni valve
has improved flow characteristics over Silberstein. Silberstein does not
allude to any problems relating to fluid flow, and further, Jenni does not
disclose that a polygonal check valve is a solution for improving fluid flow
characteristics. In fact the polygonal surfaces in Jenni, i.e. the three flat
surfaces 17, have nothing to do with flow and instead prevent rotation of
the valve. There is absolutely no evidence in any of the references or
prior art to support the examiner's assertion that modifying Silberstein to
include the check valve of Jenni would improve Silberstein's flow
characteristics [brief at page 17].

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In response, the examiner asserts that there would also be motivation for
modifying the Silberstein valve so as to have a polygonal shape as taught by Jenni, i.e.,
to improve the sealing characteristics of the Silberstein valve.
The appellants respond that Silberstien does not allude to any problems
associated with positioning a valve against a seal.
We agree with the appellants. In our view the only reason for modifying the
shock absorber of Silberstein so as to have the check valve described in Jenni is the
hindsight reconstruction of the prior art using appellants invention as a template.
Therefore, we will not sustain this rejection.
We will likewise not sustain the rejection of claims 30 to 32 under 35 U.S.C. § 103
as being unpatentable over Silberstein in view of Jenni and Shimoda as this rejection
relies on the combination of Silberstein and Jenni.

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Application No. 10/282,658

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The decision of the examiner is reversed.

CHARLES E. FRANKFORT
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2006-0523
Application No. 10/282,658

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