Ex Parte Zimmer et al

Patent Trial and Appeal Board

Jul 26, 2016

12806675 (P.T.A.B. Jul. 26, 2016)

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:
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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.
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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
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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.
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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).
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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.
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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).
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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
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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.
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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
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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.
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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
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