Ex parte Yuergens

Board of Patent Appeals and Interferences

Sep 27, 2000

08831198 (B.P.A.I. Sep. 27, 2000)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte KENNETH C. YUERGENS
_____________
Appeal No. 2000-0760
Application No. 08/831,198
______________
ON BRIEF
_______________
Before CALVERT, COHEN, and GONZALES, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 2 to
5, 7, 8, 10 and 12, all the claims remaining in the
application.
Appeal No. 2000-0760
Application No. 08/831,198
We note that the copies of claims 7 and 8 in the1
appendix do not include the changes made by the amendment
filed on
April 13, 1998.
The number of the Göbel patent is given incorrectly on2
page 3 of the examiner's answer.
2
The claims on appeal are drawn to a torsional vibration
damper, and are reproduced in the appendix of appellant's
brief.1
The references applied in the final rejection are:2
Göbel et al. (Göbel) 4,637,500 Jan. 20,
1987
Yanko et al. (Yanko) 5,246,399 Sep. 21,
1993
The appealed claims stand finally rejected on the
following grounds:
(1) Claims 2 to 5 and 12, unpatentable over Yanko, under
35 U.S.C. § 103(a);
(2) Claims 7, 8 and 10, unpatentable over Yanko in view of
Göbel, under 35 U.S.C. § 103(a).
Rejection (1)
First considering claim 2, the manner in which the
Appeal No. 2000-0760
Application No. 08/831,198
In appellant's disclosed apparatus, it appears that the3
retainer plates 38, 40 are actually connected to each other by
rivets 48, with the drive blocks 46 being sandwiched in
between the plates, rather than being connected by the blocks
per se.
3
structure disclosed by Yanko corresponds to the elements
recited in this claim is set forth by the examiner on page 4
of the answer, and need not be repeated here. The difference
between the claimed apparatus and that of Yanko is expressed
in the following limitation (claim 2, lines 18 to 20, emphasis
added):
the retainer plates being spaced apart and connected
to each other[ ] by means of individual drive blocks3
that
are disposed partly in the notch of the outer drive
plate and partly in the notch of the inner drive
plate.
The Yanko apparatus does not employ individual drive blocks to
space and connect retainer plates 88, 92, but instead has a
series of circumferentially spaced enlarged portions 36
positioned on a ring 32 (Fig. 3) fastened between the retainer
plates by rivets 90 (Fig. 2). The examiner takes the position
that (answer, page 4):
Having individual drive blocks disposed in the
Appeal No. 2000-0760
Application No. 08/831,198
4
notches of the inner and outer drive plates instead
of the drive blocks being connected together would
provide of [sic] an assembly that has less weight
and would allow for one of the blocks to be replaced
if it were damaged instead of having to replace the
entire ring. It would have been obvious for one of
ordinary skill at the time the invention was made to
replace the ring of drive blocks with individual
drive blocks so [as] to reduce the weight of the
assembly and to allow for one of the blocks to be
replaced if it were damaged.
She also argues (id., page 6):
Yanko et al teaches blocks that [sic] 40 that are
part of a ring 32. Each block 40 is located in its
own window, note figure 1; and each block is riveted
to the retainer plates 88, 92, note figure 2. The
[sic] since each block is fixed to the retaining
plates the ring is not necessary and only adds
additional weight to the assembly. If the element
is not necessary then it is obvious to eliminate
that element. See In re Larson, 340 F.2d 965, 144
USPQ 347 (CCPA 1965).
. . . Since it is well recognized that weight is a
problem in the automobile industry, removing un-
necessary elements to reduce the weight of the
assembly would not be improper hindsight
reconstruction.
After fully considering the record in light of the
arguments presented in appellant's brief, supplemental brief
and reply brief, and in the examiner's answer, we conclude
that claim 2 is patentable over Yanko.
Where, as here, obviousness is based on a single prior
art reference, there must still be a showing of a suggestion
Appeal No. 2000-0760
Application No. 08/831,198
5
or motivation to modify the teachings of that reference. In
re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed.
Cir. 2000). We do not find any such suggestion here, there
being no indication in Yanko of the desirability of saving
weight or ease of replacement; rather, the examiner's finding
of obviousness appears to be based on improper hindsight
gleaned from appellant's own disclosure.
The Larson case cited by the examiner is not persuasive.
In that case, the Court stated that "If this additional
features [sic: feature][disclosed by the reference] is not
desired, it would seem a matter of obvious choice to eliminate
it and the function it serves." 340 F.2d at 969, 144 USPQ at
350. This has been expressed by the Supreme Court as "if the
omission of an element is attended by a corresponding omission
of the function performed by that element, there is no
invention, if the elements retained perform the same function
as before." Richards v. Chase Elevator Co., 159 U.S. 477, 486
(1895). Note, however, In re Wright, 343 F.2d 761, 769-70,
145 USPQ 182, 190 (CCPA 1965) (determination of obviousness
must be based on § 103, and not upon a "mechanical rule" such
as this one). In the present case, assuming that the function
Appeal No. 2000-0760
Application No. 08/831,198
6
of the portions 54 of Yanko's ring 32 is to hold the "blocks"
36 in position (i.e., prevent them from rotating about the
axes of holes 94), appellant's purported elimination of these
portions 54 would not eliminate the function they serve,
because appellant's apparatus also performs that function.
Thus, applying the above-quoted language from In re Larson,
elimination of portions 54 of Yanko's ring would not have been
"a matter of obvious choice."
Accordingly, the rejection of claim 2, and of claims 3 to
5 and 7 dependent thereon, will not be sustained. Likewise,
the rejection of claim 12, which also recites individual drive
blocks, will not be sustained for the same reasons as claim 2.
Rejection (2)
Claim 7 is dependent on claim 2. Its rejection will not
be
sustained since Göbel does not overcome the above-discussed
deficiency of Yanko.
Claim 8 does not recite any drive blocks, but does claim
in lines 5 to 9:
one retainer plate extends radially
Appeal No. 2000-0760
Application No. 08/831,198
7
inwardly and carries an annular friction disk on
an inner surface confronting the inner drive
plate and the inner drive plate carries a spring
that engages an outer surface of the one
retainer plate to bias the friction disk into
engagement with the inner drive plate to create
a hysteresis effect.
Yanko discloses a conical spring washer 126 located
between the inner surface of retainer plate 88 at 118
confronting inner drive plate 60 (Fig. 2), the washer 126
pressing against the retainer plate 88 and drive plate 60 to
create frictional drag (col. 6, lines 57 to 66). Göbel
discloses a torsional vibration damper in which friction pads
16 are located between the inner surfaces of the retainer
plates 11, 12 and the inner drive plate 7, the retainer plates
("cover plates") being "initially stressed in the direction
towards the hub flange 7 and act as friction devices" (col. 3,
lines 43 to 46). The examiner states that it would have been
obvious in view of Göbel to include a friction disc between
the inner drive plate and retainer plate of Yanko.
Acknowledging that Göbel does not disclose a spring engaging
the outer surface of the retainer plate, as claimed, she finds
that inclusion of such a spring would have been obvious since
"[a] spring to bias elements into engagement is old and well
Appeal No. 2000-0760
Application No. 08/831,198
8
known" (answer, page 5).
We do not consider this rejection to be well taken. In
the first place, the examiner has cited no evidence which
would teach or suggest the use of a spring; Göbel teaches that
the retainer plates are "initially stressed," which would
remove the necessity for using a spring. Secondly, even if a
spring were used, it is not apparent how one of ordinary skill
in the art would have incorporated it in the Yanko apparatus.
If a friction disc were used instead of Yanko's spring washer
126, then, in order to meet the limitations of claim 8, the
spring would have to be positioned between the outer surface
of retainer plate 88 and element 158 in order to engage an
outer surface of the retainer plate, as claimed. However, one
of ordinary skill would not have found it obvious to have
located the spring in that position because element 158 is a
piston which moves axially (col. 8, lines 63 to 68), and such
movement would change the force exerted by the spring.
We therefore will not sustain the rejection of claim 8,
or of its dependent claim 10.
Appeal No. 2000-0760
Application No. 08/831,198
9
Conclusion
The examiner's decision to reject claims 2 to 5, 7, 8, 10
and 12 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
IAC:lmb
Appeal No. 2000-0760
Application No. 08/831,198
10
PATENT DOCKET ADMINISTRATOR
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