Ex Parte Zimmer et alDownload PDFPatent Trial and Appeal BoardJul 26, 201612806675 (P.T.A.B. Jul. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/806,675 08/18/2010 27956 7590 07/27/2016 KLAUS J, BACH 4407 TWIN OAKS DRIVE MURRYSVILLE, PA 15668 FIRST NAMED INVENTOR Glnther Zimmer 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ZN 129 7466 EXAMINER LANE, NICHOLAS J ART UNIT PAPER NUMBER 3657 MAILDATE DELIVERY MODE 07/27/2016 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 GUNTHER ZIMMER and MARTIN ZIMMER Appeal2014-001560 Application 12/806,675 Technology Center 3600 Before JAMESON LEE, MICHARL R. ZECHER, BARBARA A. BENOIT, Administrative Patent Judges. LEE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1-10, which constitute all the claims pending in this application. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 We affirm. 1 This Decision refers to Appellants' Appeal Brief ("App. Br.," filed July 29, 2013), Examiner's Answer ("Ans.," mailed Sept. 18, 2013), Appellants' Reply Brief ("Reply Br.," filed Nov. 8, 2013), Final Office Action ("Final Act.," mailed Feb. 28, 2013), and Advisory Action ("Adv. Act.," mailed May 20, 2013). Appeal2014-001560 Application 12/806,675 The subject matter of the Application is directed to a seal element, and also a deceleration structure including a seal element. Spec. 1. The seal element or deceleration structure may be used, for example, as a part of "a drawer guide structure of a furniture piece or a sliding door arrangement." Spec. 2. The sliding movement of a drawer relative to the furniture piece may be reduced by the deceleration structure. Spec. 3. CLAIMED SUBJECT MATTER Of all claims on appeal, claims 1 and 10 are independent. Representative claim 1 is reproduced below: 1. A piston seal element ( 51) including a deformation area (53) delimited, in a longitudinal direction of the seal element (51), by two frontal face areas (58, 59), and having a sleeve surface area ( 62) provided with at least one channel ( 65) extending between the two frontal face areas (58, 59), said at least one channel ( 65) extending, at least in sections thereof, screw thread-like around the seal element ( 51 ), the seal element (51) having adjacent a front end face (57) thereof an engagement area (54), and an inner shoulder (55) formed at its end opposite the front end face ( 51) forming a support area, and a central deformation area (53) with an inner surface (71) which, when subjected to internal pressure, causes the central deformation area (53) to arch radially outward. Claim 10 recites "[a] deceleration structure (21) including a cylinder-piston unit (22) with a piston ( 43) provided with a piston seal element (51 )." Claim 10 further defines piston element ( 51) with essentially the same language as that used in claim 1 reproduced above. Figures 4 and 5 collectively illustrate all of the elements recited in claim 1, and are reproduced below: 2 Appeal2014-001560 Application 12/806,675 Fig. 5 Figure 4 illustrates what the Specification refers to as a "seal element," and Figure 5 shows the seal element of Figure 4, but in an "axial cross-sectional view." Spec. 2. The Specification states: During the defonnation of the defonnation area 53, the piston seal element is axially shortened whereby the braking effect is increased. The channels 65 which are curved around the piston seal element 51 in a screw-like fashion result in a deformation which is greater than that of a seal element with a comparable number of annular channels extending in the longitudinal direction. With the reduced spring rigidity, the piston seal element 51 presented herein will respond more rapidly and is therefore more effective than a seal element with channels extending parallel to its longitudinal axis. Spec. 9. 3 Appeal2014-001560 Application 12/806,675 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is listed as follows: Zimmer et al. ("Zimmer") US Pat. Pub. No. 2006/0118371 Al Jun. 8, 2006 Jens en et al. ("Jensen") US Pat. No. 6,290,038 Bl REJECTIONS Sept. 18, 2001 Claims 1-10 were finally rejected under 35 U.S.C. § l 12(b) (post- AIA) or 35 U.S.C. § 112, second paragraph (pre-AIA) as indefinite for failing to particularly point out and distinctly claim subject matter which the inventor (post-AIA) or applicant (pre-AIA) regards as the invention. Final Act. 2-3. Claims 1-10 were finally rejected under 35 U.S.C. § 103(a) as unpatentable over Zimmer and Jensen. Final Act. 3-7. ISSUE Did the Examiner articulate sufficient reasoning to combine the teachings of Zimmer and Jensen to arrive at the subject matter of the rejected claims? ANALYSIS A. The Claims At Issue First, we must determine which claims are at issue. That matter is put in question by the Appellants in its Reply, where it states: "it was understood that [the proposed amendments after Final Rejection] have been entered." Reply Br. 1. Appellants note that on the cover of an Advisory Action dated May 20, 2013, the Examiner checked a box in a statement as 4 Appeal2014-001560 Application 12/806,675 follows: "For the purpose of appeal, the proposed amendment(s): (a) __ will not be entered or (b) _x_ will be entered." Id. The statement indeed was checked as noted by Appellants. However, for reasons discussed below, we determine that notwithstanding checking of the box as noted above, Appellants understood at the time of filing of the Appeal Brief that the proposed amendment had, in fact, not been entered. The Advisory Action, on its cover page, also includes the following checked material: 3. _X_ The proposed amendments filed after a final rejection, but prior to the date of filing a brief, will not be entered because a) _X_ They raise new issues that would require further consideration and/or search (see NOTE below); b) _They raise issues of new matter (see NOTE below); c) _X_ They are not deemed to place the application in better form for appeal by materially reducing or simplifying the issues for appeal; and/ or d) _ They present additiOonal claims without canceling a corresponding number of finally rejected claims. The Advisory Action continues on its second page as follows: Continuation of 3. NOTE: The amendments to the claims will not be entered because they raise new issues that would require further consideration. For example, claim 10 is amended to recite that "[[a central]] at its center, the deformation area" and subsequently "the central deformation area". Because the recitation of "a central deformation area" has been deleted, the phrase "the central deformation area" now lacks antecedent basis and raises new issues under 35 U.S.C. § 112, 2nd paragraph. Therefore, the amendments do not place the claim in better condition for appeal. Additionally claim 1 was amended to recite "[[and a central]] the deformation area". This amendment broadens the claim by deleting reference to a "central" deformation area. Adv. Act. 2. 5 Appeal2014-001560 Application 12/806,675 The non-entry of the proposed amendment was understood at the time of filing of the Appeal Brief, because Appellants complained and challenged the examiner's non-entry of the proposed amendment at issue. Specifically, Appellants stated in Section IV, titled "STATUS OF AMENDMENTS": An amendment under 37 CPR 1.116 was submitted on 04/2712013 in order to overcome formality objections raised by the Examiner and to clarify certain points but was not entered by the Examiner because, according to the Examiner the amendments to the claims "raise new issues that would require further considerations." Therefore, no amendments have entered after the Final Rejection. App. Br. 2. Also, in Section VI, titled "GROUNDS FOR THE REJECTION TO BE REVIEWED ON APPEAL," Appellants requested we rule that the Examiner should have entered the proposed amendments: 2 The Board[']s opinion as to the Examiner needs to reject all proposed amendments even those proposed to correct formal matters objected to by the Examiner when the Examiner finds other subject matter proposed for amendments which the Examiner considers to raise other issues. \11 ould it be expedient to accept a corrective or formality amendment and reject the amendment only of matter considered by the examiner to raise new issues that require further consideration? Id. at 4. The Appeal Brief ends with this statement: "The Board is requested to direct the Examiner to allow the present application and also to permit Applicants to amend the application so as to overcome the Examiner's formal objections." Id. at 8. Furthermore, the appealed claims as reproduced by the Appellants in Section VIII of the Appeal Brief, titled 2 We decline to make that determination because matters petitionable to the Director of the U.S. Patent and Trademark Office such as this are not appealable to the Patent Trial and Appeal Board. See In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971); In re Mindick, 371F.2d892, 894 (CCPA 1967). 6 Appeal2014-001560 Application 12/806,675 "CLAI1\1S APPENDIX," are not the proposed amended claims, but the claims that were finally rejected by the Examiner prior to Appellants' submission of the proposed amendments. Although conflicting boxes were checked on the cover of the Advisory Action with regard to whether the proposed amendments will be entered, the specific statements of the Examiner in the body of the Advisory Action were clear that the proposed amendments will not be entered and Appellants reflected that understanding in its Appeal Brief. There was no confusion on this subject at the time of filing of the Appeal Brief. Appellants' assertion in the Reply, diametrically opposite to Appellants' position in the Appeal Brief, is unpersuasive. At least under the facts of this case, no confusion can be created at the time of filing of the Reply on a matter with respect to which no confusion existed, ab initio, at the time of filing of the Appeal Brief. The proposed amendments had not been entered. 3 B. Rejection of Claims 1-10 Under 35 U.S.C. § 112(b) (post AIA) or 35 U.S.C. § 112, Second Paragraph (pre-AIA) as Indefinite Our review of the Appeal Brief indicates that Appellants have not appealed this ground of rejection. Thus, the rejection is not before us for review. If the rejection is before us for review, however, we would sustain the rejection, proforma, because Appellants advanced no argument as to why the rejection of claims 1-10 as indefinite is erroneous. 3 Even assuming that the proposed amendments had been entered, that would not change the outcome of this appeal on the substantive merit of any claim, because Appellants' arguments do not hinge on any difference between the finally rejected claims and the proposed amendments subsequent to the Final Rejection. 7 Appeal2014-001560 Application 12/806,675 C. Rejection of Claims 1-10 Under 35 U.S.C. § 103(a) as Unpatentable Over Zimmer and Jensen 1. Claims 1 and 10 In the Final Office Action, the Examiner determined: Regarding claim 1, Zimmer discloses a piston seal element (60) (see FIGS. 4--8; i-f 0029) including a deformation area (A) (see Annotated FIG. 7, below) delimited, in a longitudinal direction (B) of the seal element, by two frontal face areas (C, D), and having a sleeve surface area (E) provided with at least one channel ( 65) extending between the two frontal face areas (see FIG. 6), the seal element having adjacent a front end face (D) thereof an engagement area (F), and an inner shoulder (G) formed at its end opposite the front end face forming a support area (see FIG. 7), and a central deformation area (A) with an inner surface (H) which, when subjected to internal pressure, causes the central deformation area to arch radially outwardly (see i-f 0042). Zimmer does not disclose that said at least one channel extends, at least in sections thereof, screw thread-like around the seal element. Jensen teaches a piston seal element (132) (see FIGS. 12, 13) comprising at least one channel (151 ), said at least one channel extends, at least in sections thereof, screw thread-like around the seal element (see FIG. 12). 8 Appeal2014-001560 Application 12/806,675 It would have been obvious to form the grooves of Zimmer in screw thread-like manner around the seal element to increase the damping force pressures (see Jensen, col. 7, lines 48-51). Final Act. 4--5. With regard to claim 10, the Examiner provided similar findings and relied upon the same rationale to combine the teachings of Zimmer and Jenson to support it conclusion of obviousness. Id. at 6-7. Thus, according to the Examiner, Zimmer discloses all limitations of claims 1 and 10, except for the limitation of having at least one channel ( 65) extending, at least in sections thereof, screw thread-like around the seal element. The Examiner explained how this missing limitation is disclosed by Jensen and why it would have been obvious to one with ordinary skill in the art to incorporate that teaching of Jensen into the structure disclosed by Zimmer, i.e., to increase damping force pressures as is described in Jensen. Final Rej. 4--7. In the Examiner's Answer, citing again to column 7, lines 48-51, of Jensen, which was cited in support of the Final Rejection, the Examiner stated: "Jensen teaches that the grooves are functional to control the damping force, and therefore, it would have been obvious to combine the screw thread-like grooves of Jensen with the device in Zimmer to provide the appropriate damping force." Ans. 3. Appellants point out that in Jensen, the screw-like channels are lubricant supply channels and that their purpose is to supply lubricant to the contact surfaces between the seal member and the cylinder wall. App. Br. 7. On that basis, Appellants argue: "[t]he concept with which the present invention is concerned has nothing to do with lubrication of frictional damping surfaces." Id. Specifically, Appellants state: "[t]he purpose of the piston seal element grooves according to the invention is to make it operate 9 Appeal2014-001560 Application 12/806,675 with reduced temperature sensitivity. This has nothing to do with lubrication." Id. Appellants' arguments as noted above are misplaced. A claimed invention may be obvious for reasons the inventor did not contemplate. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en bane) (overruling-in-part In re Wright, 848 F.2d 1216 (Fed. Cir. 1988)). In other words, the reasons on the basis of which the teachings of two references are combined need not be the same as the problem the inventor of the subject application was attempting to solve. Thus, in this case, the reasons for which the Examiner combined the teachings of Zimmer and Jensen need not have anything to do with reducing the temperature sensitivity of the performance of the sealing element. As noted above, the Examiner determined that Jensen discloses the use of at least one channel in a screw thread-like manner to increase damping force pressures, and that it would have been obvious to combine the screw thread-like grooves of Jensen with the structure disclosed in Zimmer to increase the damping force pressures. Final Rej. 5, 7. Appellants have not, in its Appeal Brief, presented argument with regard to the Examiner's determinations in that regard. Appellants' argument focusing on reducing operational sensitivity of the sealing element to temperature is misplaced, because the Examiner did not determine that it would have been obvious to one with ordinary skill in the art to apply Jensen's channel or groove in Zimmer to reduce the temperature sensitivity of the operation of the sealing element. The Examiner also is correct in stating that "nothing in the claims are directed toward the temperature dependency of the device." Ans. 4. 10 Appeal2014-001560 Application 12/806,675 In its Appeal Brief, Appellants argue: "[no Jo fluid is supplied in Jensen to the interior of the seal member to arch the seal member into frictional engagement with the cylinder wall - as it is proposed by the present invention." App. Br. 7. This argument is misplaced, because Appellants have not shown the existence of any limitation in either claim 1 or claim 10 that requires supplying fluid to the interior of the seal member to arch the seal member into frictional engagement with the cylinder wall. In its Reply Brief, Appellants raise four new arguments. First, Appellants focus on what Jensen does to reduce temperature sensitivity of the operation of Jensen's sealing element, and argues that is not what Appellants' claimed invention proposes to do. Reply Br. 2-3. Second, Appellants argue that there are differences in the disclosures of Zimmer and Jensen that urge against the combinability of their respective teachings with each other. Id. at 4. Third, Appellants take issue with the language "damping force pressure" in Jensen, and argues that, because force is measured in Newtons (N) and because pressure is force per surface unit, there is no such thing as "force pressure." Id. In support of that new argument, Appellants further note that, other than in the portion cited by Examiner, Jensen refers to force as force and pressure as pressure. Id. Fourth, Appellants argue for patentability based on an ability of channels 65 in the claimed invention to affect the dynamic behavior of the piston seal element 51 "during pressure changes in the displacement chamber." Id. at 5. The applicable rule governing arguments in a reply brief is 37 C.F.R. § 41.41(b)(2), which states: Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer, including any designated new ground of 11 Appeal2014-001560 Application 12/806,675 rejection, will not be considered by the Board for purposes of the present appeal, unless good cause is shown. Note also 37 C.F.R. § 41.37(c)(l)(iv), which states, in pertinent part: "Except as provided for in§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal. "4 Each of the four new arguments noted above could have, and should have, been raised in the Appeal Brief, but was not. Appellants have not explained why there is good cause for these new arguments to be considered by us. The record is without the Examiner's position with regard to these new arguments. It is too late, at the stage of filing a Reply Brief, for Appellants to reorient or redirect its arguments so as to start its appeal anew. Accordingly, we decline to consider these new arguments in the Reply Brief. For the foregoing reasons, we sustain the Examiner's rejection of claims 1and10, under 35 U.S.C. § 103(a), as unpatentable over Zimmer and Jensen. 2. Claims 2-9 Each of claims 2-9 depends, directly or indirectly, from claim 1. No arguments for claims 2-9, separate from those Appellants advanced for claim 1, have been presented. Appellants state that claims 2-9 "stand and fall with claim 1." App. Br. 4. The arguments Appellants presented for claim 1 have been addressed and found unpersuasive above. In that regard, we note that 37 C.F.R. § 41.37(c)(l)(iv) provides: "[w]hen multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup 4 37 C.F.R. § 41.47 pertains to oral hearing and 37 C.F.R. § 41.52 pertains to a request for rehearing. Neither is applicable here. 12 Appeal2014-001560 Application 12/806,675 and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone." We sustain the Examiner's rejection of claims 2-9, under 35 U.S.C. § 103(a), as unpatentable over Zimmer and Jensen, on the basis of our discussion of the Examiner's rejection of claim 1 above. CONCLUSION Appellants have not shown error in the Examiner's reasoning in combining the teachings of Zimmer and Jensen to arrive at the subject matter of finally rejected claims 1-10. DECISION The rejection of claims 1-10 under 35 U.S.C. § 103(a) as obvious over Zimmer and Jensen is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation