Ex Parte Vu

Board of Patent Appeals and Interferences

Mar 23, 2010

10642868 (B.P.A.I. Mar. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VINH THANH VU

____________

Appeal 2009-007579
Application 10/642,8681
Technology Center 2800
____________

Decided: March 23, 2010
____________

Before JOHN C. MARTIN, SCOTT R. BOALICK, and
CARLA M. KRIVAK, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed August 18, 2003. The real party in interest is the
inventor, Vinh Thanh Vu.
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2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-22 and 26-32.2 Claims 23-25 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

STATEMENT OF THE CASE
Appellant’s invention relates to a vibration-control platform that
includes a bottom plate having three or more wells, a plurality of vibration-
control elements (such as, for example, rubber balls) located in the wells,
and a top platform. (Spec. Abstract.)
Claims 1 and 11 are exemplary:
1. An article for use with spherical vibration-control elements,
wherein said article comprises:
a plate having a number, n, of spaced wells arranged in a two-
dimensional array, wherein:
(i) said two-dimensional array comprises at least two rows of said
spaced wells with a minimum of three wells in each row;
(ii) said wells are suitably sized so that when a well receives said
spherical vibration control element, said vibration control
element contacts said plate at substantially every point along a
perimeter of said well; and
(iii) said wells underlie said spherical vibration control elements,
and further wherein, in use, the only constraint to unrestricted
lateral movement of said spherical vibration control elements
are said wells.
11. The article of claim 9 wherein there are fewer of said vibration-
control elements than said n wells.

2 Claim 32 depends from cancelled claim 24. However, both Appellant and
the Examiner treat claim 32 as if it depends from independent claim 26 (see,
e.g., App. Br. 22; Ans. 9). For the purpose of administrative efficiency, we
also will treat claim 32 as if it depends from independent claim 26 rather
than cancelled claim 24. However, this error will require correction should
there be further prosecution before the Examiner.
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3
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Huyett 6,230,460 B1 May 15, 2001
Van Goubergen 5,330,165 July 19, 1994
Bach 3,679,159 July 25, 1972

Claims 1-3, 5 and 7-14 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Huyett and Van Goubergen.
Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Huyett, Van Goubergen and Bach.
Claims 15-20 and 26-32 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Van Goubergen.
Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Bach and Van Goubergen.

ISSUES
With respect to independent claim 1, Appellant argues that the
combination of Huyett and Van Goubergen “does not disclose what is
recited in the pending claims and/or the combination is inappropriate.”
(Br. 11.)
With respect to dependent claim 10, Appellant argues that the
combination of Huyett and Van Goubergen does not teach or suggest the
limitations “said vibration control element contacts said plate at substantially
every point along a perimeter of said well”, “the only constraint to
unrestricted lateral movement of said spherical vibration control elements
are said wells” and “wherein, when said vibration-control elements are
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disposed in said wells, they do not abut a bottom of said wells” (Br. 16-18)
and that “because the vibration control approaches taken by Van Goubergen
and Huyett are incompatible with one another, it is inappropriate to
‘combine’ them” (Br. 16).
With respect to dependent claim 11, Appellant argues that the
combination of Huyett and Van Goubergen does not teach or suggest the
limitation “wherein there are fewer of said vibration-control elements than
said n wells” because neither reference provides a disclosure of placing
vibration-control elements in only some wells. (Br. 19.) Appellant presents
similar arguments with respect to independent claims 15, 21 and 26, which
recite similar limitations. (Br. 20-24.)
Appellant’s arguments present the following issue:
Has the Examiner erred in rejecting claims 1-22 and 26-32 under 35
U.S.C. § 103(a)?
The resolution of this issue turns on the following subsidiary issues:
1. Has the Examiner erred in finding that the combination of Huyett
and Van Goubergen teaches or suggests all the limitations of claim 1?
2. Has the Examiner erred in finding that the combination of Huyett
and Van Goubergen teaches or suggests “said vibration control element
contacts said plate at substantially every point along a perimeter of said
well”?
3. Has the Examiner erred in finding that the combination of Huyett
and Van Goubergen teaches or suggests “the only constraint to unrestricted
lateral movement of said spherical vibration control elements are said
wells”?
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4. Has the Examiner erred in finding that the combination of Huyett
and Van Goubergen teaches or suggests “wherein, when said vibration-
control elements are disposed in said wells, they do not abut a bottom of said
wells”?
5. Has the Examiner erred in combining Huyett and Van Goubergen?
6. Has the Examiner erred in finding that the combination of Huyett
and Van Goubergen teaches or suggests “wherein there are fewer of said
vibration-control elements than said n wells”?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Huyett
1. Huyett relates to a “resilient flooring system including a number of
laterally spaced, shock absorbers for positioning upon a fixed
subfloor.” (Abstract.) For example, such flooring systems are used
by professional dance companies (col. 1, ll. 9-12) to avoid “hard and
soft spots which can destroy a dancer’s rhythm and lead to fatigue or
injury” (col. 1, ll. 15-17).

2. The flooring subsystem 10 includes multiple laterally spaced shock
absorbers 16. (Col. 2, ll. 25-27; fig. 1.) “Each shock absorber 16 has
a sole plate 20 and a top plate 22 retained in a spaced-apart
relationship by a plurality of rubber spheres 24.” (Col. 2, ll. 49-51;
fig. 2.) A cup-shaped socket 26 is located in the sole plate 20 to retain
the rubber spheres 24. (Col. 2, ll. 51-53; fig. 2.) To provide a “snug
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fit,” the radius of curvature of the spheres 24 is the same as that of the
sockets 26. (Col. 2, ll. 61-65.)

3. Figure 1 illustrates that the sole plate 20 includes a one-dimensional
array of spheres 24. Huyett also discloses that “the number, location
and dimensions of the elements of the shock absorbers 16 may be
varied to control the resiliency of flooring system 10.” (Col. 3,
ll. 52-55.)

Van Goubergen
4. Van Goubergen relates to a “vibration damper.” (Col. 1, l. 6.) An
embodiment of Figure 1 includes a layer of elastomeric bodies 1
between two elastomeric plate elements 2. (Col. 5, ll. 3-6; fig. 1.)
The elastomeric bodies 1 are spherical and seated in recesses 4 of the
plate elements 2. (Col. 5, ll. 8-10.) The elastomeric bodies or
spheres 1 are connected by thin bands or strips of material 6 to form a
mat. (Col. 5, ll. 25-28; fig. 1.) Figure 1 illustrates that each of the
recesses 4 in the bottom plate element 2 is occupied by an elastomeric
body 1.

5. In an embodiment of Figure 2, plate elements 2 include polyhedron-
shaped recesses 4a for seating elastomeric bodies 1. (Col. 5, ll. 45-47;
fig. 2.) For this embodiment, the elastomeric bodies 1 contact the
recesses 4a at “spaced points of contact 3''.” (Col. 5, ll. 47-48.)
Figure 2 illustrates that the elastomeric bodies 1 do not contact the
bottoms of the recesses 4a. Figure 2 also illustrates that each of the
recesses 4a is occupied by an elastomeric body 1.
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6. Figures 3 to 5 illustrate that each of the recesses 4, 4c and 4d,
respectively, is occupied by an elastomeric body 1. Figures 6 to 8
illustrate that each of the recesses (unreferenced) in the bottom dish 2e
(also referred to as plate elements (see e.g., col. 5, ll. 11-12)) is
occupied by an elastomeric body 1. Figure 9 also illustrates that each
of the recesses 14 in a second plate 13 is occupied by a conical or
pyramidal projection 11. (Col. 6, ll. 33-35.) Likewise, Figures 10 and
12 illustrate each of the recesses (unreferenced) in the bottom dish 2 is
occupied by an elastomeric body 1.

7. Figure 11 illustrates a vibration damper placed under the feet of a
machine 16. (Col. 7, ll. 4-6; fig. 11.) Figure 11 also illustrates a
vibration damper with a two-dimensional array (e.g., shown as a 5 × 6
array) of elastomeric bodies seated between two elastomeric plate
elements.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and discussed circumstances in which a patent might be
determined to be obvious.
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In particular, the Supreme Court emphasized that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” Id. at 416. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417.

ANALYSIS
We conclude that the Examiner has not erred in rejecting claims 1-10
and 12-14 under 35 U.S.C. § 103(a). However, we conclude that the
Examiner has erred in rejecting claims 11, 15-22, and 26-32 under 35 U.S.C.
§ 103(a).

Claims 1-3, 5, 7-9 and 12-14
We are not convinced by Appellant’s arguments (Br. 11-14) that the
combination of Huyett and Van Goubergen does not teach or suggest all the
limitations of claim 13 and that the Examiner improperly combined the
applied references.

3 Appellant argues claims 2, 3, 5, 7-9 and 12-14 together as a group.
(Br. 14.) Therefore, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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The Examiner found that Huyett discloses all the features of claim 1
except the limitation “said two-dimensional array comprises at least two
rows of said spaced wells with a minimum of three wells in each row.”
(Ans. 4-5.) The Examiner cited Van Goubergen for the disclosure of a
vibration damper with a two-dimensional array of elastomeric bodies 1.
(Ans. 5; see FF 7.) The Examiner concluded that “[i]t would have been
obvious . . . to employ the Van Goubergen two-dimensional array with the
Huyett design because the two-dimensional array would help distribute the
load applied to the system throughout the whole contact surface, in this
manner providing for economical savings.” (Ans. 5-6.) We agree with the
Examiner.
Huyett relates to a flooring subsystem 10 with multiple laterally
spaced shock absorbers 16 including a sole plate 20 and a cup-shaped
socket 26 located in the sole plate 20 to retain a one-dimensional array of
rubber spheres 24. (FF 2.) Huyett also teaches that the dimensions of the
shock absorbers 16 can be varied to control the resiliency of flooring
subsystem 10. (FF 3.) Van Goubergen relates to a vibration damper
including a layer of elastomeric bodies 1 between two elastomeric plate
elements 2. (FF 4.) Van Goubergen teaches that the vibration damper can
be a two-dimensional array (e.g., 5 × 6) of elastomeric bodies 1 seated in an
elastomeric plate element 2. (FF 7.) In other words, Van Goubergen
teaches the limitation “said two-dimensional array comprises at least two
rows of said spaced wells with a minimum of three wells in each row.”
Combining Huyett with Van Goubergen is no more than the simple
substitution of Van Goubergen’s known two-dimensional array of
elastomeric bodies 1 seated in elastomeric plate elements 2 for Huyett’s
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known one-dimensional array of rubber spheres 24 seated in sole plate 20,
with no unexpected results. See KSR, 550 U.S. at 417. Appellant has not
presented any convincing arguments or evidence that the Examiner erred in
combining Huyett with Van Goubergen.
Therefore, the Examiner has not erred in combining the applied
references or in finding that the combination of Huyett and Van Goubergen
teaches or suggests all the features of claim 1.
We conclude that the Examiner has not erred in rejecting claim 1
under 35 U.S.C. § 103(a). Claims 2, 3, 5, 7-9, and 12-14 were not argued
separately and fall with claim 1.

Claim 10
We are not convinced by Appellant’s arguments (Br. 14-18) regarding
Huyett and Van Goubergen.
Huyett relates to a flooring subsystem 10 with multiple laterally
spaced shock absorbers 16, including a sole plate 20 and a cup-shaped
socket 26 located in the sole plate 20 to provide a “snug fit” for the rubber
spheres 24. (FF 2.) Van Goubergen relates to a vibration damper, including
a layer of elastomeric bodies 1 between two elastomeric plate elements 2
(FF 4) in which the elastomeric bodies 1 are seated in polyhedron-shaped
recesses 4a to provide spaced points of contact without contacting the
bottoms of the recesses 4a (FF 5). In other words, Van Goubergen teaches
the limitation “wherein, when said vibration-control elements are disposed
in said wells, they do not abut a bottom of said wells.”
Combining Huyett with Van Goubergen is no more than the simple
substitution of Van Goubergen’s known configuration of seating elastomeric
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bodies 1 in polyhedron-shaped recesses 4a for Huyett’s known configuration
of snuggly fitting rubber spheres 24 into cup shaped-sockets 26, with no
unexpected results. See KSR, 550 U.S. at 417. Appellant has not presented
any convincing arguments or evidence that the Examiner erred in combining
Huyett with Van Goubergen.
Appellant argues that Huyett does not teach or suggest that the
vibration-control element “does not abut a bottom of the wells.” (Br. 16.)
However, Huyett is not relied upon for teaching or suggesting this feature.
Instead, as discussed previously, Van Goubergen teaches or suggests this
feature.
Next, Appellant argues that Van Goubergen does not teach or suggest
that the vibration-control elements “contact[] substantially every point along
the perimeter of the well.” (Br. 16.) Van Goubergen teaches seating
elastomeric bodies 1 in polyhedron-shaped recesses 4a to provide for spaced
points of contact without contacting the bottoms of the recesses 4a. (FF 5.)
A polyhedron having many sides of a relatively short length would
approximate a circle and, as such, the spaced points of contact between the
surfaces of the polyhedron-shaped recesses 4a correspond to the limitation
“said vibration control element contacts said plate at substantially every
point along a perimeter of said well.”
Furthermore, Appellant argues that Van Goubergen does not teach or
suggest “the only constraint to unrestricted lateral motion of the . . .
[vibration-control elements] is the wells” (Br. 16) because Van Goubergen
discloses that the elastomeric bodies 1 are adjoined by thin bands or strips of
material 6. (Br. 17). However, Van Goubergen is not relied upon for
teaching or suggesting this feature. Huyett teaches that the rubber
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spheres 24 are seated into cup shaped-sockets 26 with a “snug fit,” which
teaches or suggests that the rubber spheres 24 are restrained from lateral
motion. (See FF 2.)
Last, Appellant argues that “the vibration control approaches taken by
Van Goubergen and Huyett are incompatible with one another” (Br. 16)
because “Huyett teaches a ‘snug fit’ and Van Goubergen favors ‘point
contact’” (Br. 17). However, as discussed previously, combining Huyett
with Van Goubergen is no more than the simple substitution of one known
element for another, with no unexpected results.
Therefore, the Examiner has not erred in combining the applied
references or in finding that the combination of Huyett and Van Goubergen
teaches or suggests the limitations “said vibration control element contacts
said plate at substantially every point along a perimeter of said well,” “the
only constraint to unrestricted lateral movement of said spherical vibration
control elements are said wells” and “wherein, when said vibration-control
elements are disposed in said wells, they do not abut a bottom of said wells.”
We conclude that the Examiner has not erred in rejecting claim 10 under 35
U.S.C. § 103(a).

Claims 11, 15-22 and 26-32
We are, however, convinced by Appellant’s arguments (Br. 18-20)
that the combination of Huyett and Van Goubergen does not teach or
suggest “wherein there are fewer of said vibration-control elements than said
n wells,” as recited in dependent claim 11.
The Examiner concluded that claim 11 would have been obvious
because “it would have been an obvious matter of design choice to employ a
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desired amount of wells and/or vibration-control elements . . . [and] it has
been held that omission of an element and its function in a combination
where the remaining elements perform the same function as before involves
only routine skill in the art.” (Ans. 6.) We do not agree.
Huyett teaches a resilient flooring system that avoids “soft spots” in
the flooring. (FF 1.) In other words, Huyett teaches or suggests that to
avoid such “soft spots,” each of the cup shaped-sockets 26 in the sole
plate 20 contains a rubber sphere 24. (See FF 1-2.) Similarly, each of Van
Goubergen’s embodiments teaches that each recess in the bottom plate
element 2 (or bottom dish 2e) contains an elastomeric body 1. (FF 4-6.) We
do not find any teaching or suggestion of a well that does not have a
vibration-control element in Huyett or Van Goubergen, either alone or in
combination.
Therefore, the Examiner has erred in finding that the combination of
Huyett and Van Goubergen teaches or suggests “wherein there are fewer of
said vibration-control elements than said n wells,” as recited in dependent
claim 11. We conclude that the Examiner has erred in rejecting claim 11
under 35 U.S.C. § 103(a).
Independent claims 15 and 26 recite limitations similar to those
discussed with respect to dependent claim 11, and the Examiner has erred in
rejecting claims 15 and 26, as well as claims 16-20 and 27-32, which depend
from claims 15 and 26, under 35 U.S.C. § 103(a) for the reasons previously
discussed with respect to claim 11.
Independent claim 21 recites limitations similar to those discussed
with respect to dependent claim 11, and the Examiner has erred in rejecting
claim 21, as well as claim 22, which depends from claim 21, under 35
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U.S.C. § 103(a), for the reasons previously discussed with respect to
claim 11. Bach does not cure the above-noted deficiencies of Van
Goubergen.

Claims 4 and 6
Although Appellant nominally argues the rejection of dependent
claims 4 and 6 separately (Br. 20), the arguments presented do not point out
with particularity or explain why the limitations of the dependent claims are
separately patentable. Instead, Appellant summarily alleges that these
claims are allowable because “Bach et al. does not provide any disclosure
that, in combination with Huyett and Van Goubergen, would obviate
claim 1. As a consequence, claims 4 and 6 are allowable based on their
dependence on claim 1.” (Br. 20.) Therefore, we will sustain the rejection
of claims 4 and 6 for the reasons discussed with respect to independent
claim 1, from which claims 4 and 6 depend.

CONCLUSION
Based on the findings of fact and analysis above, we conclude that:
(1) the Examiner has not erred in rejecting claims 1-10 and 12-14
under 35 U.S.C. § 103(a);
(2) the Examiner has erred in rejecting claims 11, 15-22 and 26-32
under 35 U.S.C. § 103(a).

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DECISION
The rejection of claims 1-10 and 12-14 under 35 U.S.C. § 103(a) is
affirmed.
The rejection of claims 11, 15-22 and 26-32 under 35 U.S.C. § 103(a)
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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