Ex Parte Wood

Board of Patent Appeals and Interferences

Nov 26, 2008

10341024 (B.P.A.I. Nov. 26, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES GARY WOOD
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Appeal 2007-2646
Application 10/341,024
Technology Center 3600
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Decided: November 26, 2008
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and DAVID B.
WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our Decision of August 4, 2008,
wherein we affirmed the Examiner's rejection of the appealed claims 1-2 and
4-13 under 35 U.S.C. § 112, first paragraph.1

1 We also reversed the Examiner’s rejection of claims 1-2 and 4-13 under 35
U.S.C. § 103(a). Appellant does not challenge that portion of our decision.
Appeal 2007-2646
Application 10/341,024

2
Appellant contends that we improperly credited evidence provided by
the Examiner for the first time on appeal. In particular, the Appellant
contends that we incorrectly based our decision on the finding that “‘[t]he
Examiner[] found that the combination of a planar spring and mass, as
claimed would provide damping’” (Request for Reconsideration 3; citing
Decision 8). According to the Appellant, this is an incorrect conclusion
from the record. This argument is not persuasive, because Appellant ignores
the passage of the Answer actually relied on in our Decision, which states
that “[e]ven if it were true that planar springs are un-damping, the
combination of a planar spring and mass, as claimed, would provide
damping.” (Answer 4, cited at Decision 8).
Appellant further argues that the Examiner’s dictionary definitions of
the term “damping or dampen” should be rejected because the Examiner did
not provide the documents showing the definitions, and the Appellant had no
chance to proffer contrary evidence (Request for Reconsideration 3). The
Appellant further argues that the “Examiner’s uncertain, vague and
essentially unsupported declaration [that a vibration absorber, as claimed,
seems to meet these definitions] should not form the cornerstone to the
Decision [o]n Appeal.” (Id.). This argument is not persuasive because the
Appellant neither addresses the finding of the Examiner actually relied upon
in our Decision nor argues that the Examiner’s definition is incorrect.
The Appellant contends that the Board fails to apprehend that
Appellant does not claim a vibration damper that has no damping (Request
for Reconsideration 2). This argument is not persuasive because the
Appellant argues that he claims a narrow range of vibration absorbers that
have no substantial damping other than hysteresis losses in the springs,
Appeal 2007-2646
Application 10/341,024

3
without pointing to anything in the Specification that indicates possession of
the invention at the time of filing, or explaining why the disclosed spring
and mass arrangements would indicate to one of skill in the art that the
inventor had possession of a substantially undamped vibration absorber at
the time the instant application was filed (Decision 8).
The Appellant also argues that “[a]n important claim limitation –
‘wherein said vibration absorbers have no substantial damping other than
small hysteresis losses in their respective springs’ – was not taken into
consideration when the Wood Declaration was dismissed” (Request for
Reconsideration 5). This argument is not persuasive because the disputed
limitation was squarely addressed at page 8 of the Decision, where we
concluded that Appellant addresses damping of only a portion of the
vibration absorber that is required by the claims to be substantially
undamped.
Finally the Appellant argues that the Board overlooked Appellant’s
arguments on pages 5-9 of the Reply Brief and pages 11-12 of the Appeal
Brief (Request for Reconsideration 6). The Appellant specifically cites to
pages 8-9 of the Reply Brief for the position that Appellant’s vibration
absorber absorbs vibration by its out of phase movement relative to the
machine’s moving parts and does not dissipate substantial energy to
diminish progressively the vibration or oscillation of the machine (Request
for Reconsideration 8). This argument is not persuasive because the only
reference the Appellant makes to the Specification refers to a phase
relationship between the housing and the combination of the piston and
displacer (Specification [0011]), without teaching that the phase relationship
is out of phase or is used to absorb vibration. The cited passage also does
Appeal 2007-2646
Application 10/341,024

4
not teach that the vibration absorbers have no substantial damping other than
small hysteresis losses in their respective springs. The Appellant still has
not pointed to anything in the Specification that indicates possession of the
invention at the time of filing, or explained why the disclosed spring and
mass arrangements would indicate to one of skill in the art that the inventor
had possession of a substantially undamped vibration absorber at the time
the instant application was filed.
For the above reasons we are not convinced of reversible error in our
decision. Accordingly, Appellant's request is granted to the extent we have
reconsidered our Decision, but is denied with respect to making any change
therein. 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) (2007).

DENIED

hh

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