BORGWARNER INC.

Patent Trials and Appeals Board

Dec 23, 2020

2020002901 (P.T.A.B. Dec. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/046,079 02/17/2016 Greg Williams 50092/DKT15314 6332
57726 7590 12/23/2020
von Briesen & Roper, s.c.
ONE NORTH FRANKLIN STREET
SUITE 2350
CHICAGO, IL 60606
EXAMINER
HAGHIGHIAN, BEHNOUSH
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
12/23/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
bmatthias@vonbriesen.com
ynunez@vonbriesen.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREG WILLIAMS, ELIAS MORGAN, and
DONALD KENNEDY

Appeal 2020-002901
Application 15/046,079
Technology Center 3700
____________

Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, BorgWarner Inc.,1 appeals under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting claims 1–15. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 2.
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Application 15/046,079

2
STATEMENT OF THE CASE
The Specification
The Specification “relates generally to turbochargers, and more
particularly to vane levers for such turbochargers.” Spec. ¶1.
The Claims
Claims 1–15 are rejected. Final Act. 1. No other claims are pending.
Id.; Appeal Br. 14–17. Claims 1, 7, and 12 are independent. Appeal Br. 14–
17. Claim 1 is illustrative and reproduced below.
1. A guide apparatus for a turbocharger, the guide
apparatus comprising:
an upper vane ring;
a lower vane ring offset axially from the upper vane ring;
a plurality of vanes disposed between and pivotally
coupled to the upper vane ring and the lower vane ring;
an adjustment ring including a plurality of apertures, the
adjustment ring in mechanical association with the plurality of
vanes; and
a plurality of vane levers coupled to the plurality of vanes,
the plurality of vane levers received correspondingly by the
plurality of apertures, each vane lever of the plurality of vane
levers including a protuberance facing the adjustment ring, the
protuberance capable of limiting axial movement of the
adjustment ring.
Appeal Br. 14.
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Application 15/046,079

3
The Examiner’s Rejection
The Examiner, pursuant to 35 U.S.C. § 102(a)(1) and (a)(2), rejected
all pending claims as anticipated by US 8,376,696 B2, issued Feb. 19, 2013
to Suzuki (“Suzuki”). Final Act. 4.
DISCUSSION
Appellant argues the rejection of all claims. Appeal Br. 6–13.2 We
choose claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Suzuki discloses:
a variable-capacity exhaust turbocharger equipped with a
variable-nozzle mechanism which is used for an exhaust
turbocharger of an internal-combustion engine and includes a
plurality of nozzle vanes rotatably supported to a nozzle mount,
a rotational-driven annular drive ring, and a lever plate of which
one end engages with the drive ring and another end is fixed to
each nozzle vane, where each blade angle of the plurality of
nozzle vanes is changed in such a manner that the lever plate is
swung by a rotation of the drive ring.
Suzuki 1:8–17. The Examiner found that Suzuki discloses every limitation
of claim 1. Final Act. 4 (citing Suzuki 8:23–29 and Fig. 6). Figure 6 of
Suzuki as annotated by the Examiner is reproduced below.

2 Appellant did not file a reply brief.
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Application 15/046,079

4

Ans. 5 (reproducing Suzuki Fig. 5 with annotations); see also Final Act. 5
(same). Figure 6 of Suzuki, reproduced above with the Examiner’s
annotations, shows a sectional view of a portion of an exhaust turbocharger
equipped with a variable-nozzle mechanism. Suzuki 5:21–34. As shown,
the turbocharger includes lever plate 1, nozzle vane 2, driver ring 3, nozzle
mount 4, nozzle plate 6. The Examiner found that these features meet,
respectively, the “vane lever,” “vane,” “adjustment ring,” “upper vane ring,”
and “lower vane ring,” as recited in claim 1. Final Act. 4; see also id. at 5
(Examiner’s annotated Suzuki Figure 6). The Examiner additionally found
that the asserted “vane lever” (i.e., lever plate 1) includes “a protuberance
facing the adjustment ring, the protuberance capable of limiting axial
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5
movement of the adjustment ring,” as recited in claim 1. Id. at 4–5. The
asserted Suzuki protuberance is labeled as such by the Examiner above.
Appellant disputes the Examiner’s findings only with respect to the
“protuberance.” Appeal Br. 6–13. Appellant proposes that “[p]rotuberance,
as commonly understood and defined, implies a portion of something that
bulges out, is protuberant, or projects from its surroundings.” Appeal Br. 9.
Appellant, however, does not proceed to explain how the asserted structure
of Suzuki allegedly fails to meet Appellant’s own proposed construction. Id.
Instead, Appellant merely contrasts one of its embodiments with Suzuki,
arguing:
As pictured in the application’s FIG. 6 . . . the protuberance 52
bulges out and extends from the base 49. This is distinguished
from the aspect identified as the ‘protuberance’ by the Examiner.
Appeal Br. 9. This is legally deficient. The “determination of anticipation
. . . involves two steps. First is construing the claim . . . followed by . . . a
comparison of the construed claim to the prior art.” Key Pharms. v. Hercon
Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998).
In the Answer, the Examiner does not contest Appellant’s proposed
construction of “protuberance.” Instead, the Examiner states that Suzuki
“clearly shows a bulged out protuberance as shown, quite clear and visible,
in the annotated Fig. 6, with an arrow pointing right into it.” Ans. 4; see
also Ans. 5 (reproducing Examiner’s annotated Suzuki Figure 6). We agree
with the Examiner.
Appellant also asserts that the asserted Suzuki protuberance is not
“capable of limiting axial movement of the adjustment ring,” as recited in
claim 1. Appeal Br. 8. In that regard, Appellant argues “[n]o portion of
Suzuki suggests or mentions any portion of its lever plate (1) limiting axial
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Application 15/046,079

6
movement of the adjustment ring.” Id. This argument does not apprise us of
Examiner error. Claim 1 does not require actually limiting axial movement
of the adjustment ring; it merely recites the “capability” of doing so. Suzuki
Figure 6 clearly shows such a capability, which the Examiner noted in his
Answer, stating:
To the right of the marked “protuberance” is another element
marked as “adjustment ring” right next to it. If this adjustment
ring were to move axially to the left, it would hit the
“protuberance”, hence the protuberance is contactable with, and
capable of limiting the axial movement of, the adjustment ring.
Ans. 5 (referring to annotated Suzuki Fig. 6).3 Appellant did not file a reply
brief.

3 Because Appellant argues claims 1, 7, and 14 under the same heading,
these claims are argued together as a group. Appeal Br. 6–10; see 37 C.F.R.
§ 41.37(c)(1)(iv) (requiring “any claim(s) argued separately or as a subgroup
shall be argued under a separate subheading that identifies the claim(s) by
number”). Nonetheless, Appellant additionally argues that the asserted
Suzuki protuberance is not “contactable with the adjustment ring to limit
axial movement thereof,” as recited in claim 7. See Appeal Br. 8. In that
regard, Appellant argues that Suzuki discloses that the structure enumerated
by reference numeral “2a” contacts the adjustment ring, and that “it is
unclear how the contact point (2a) limits the axial movement of the
adjustment ring.” Id. However, Appellant’s argument does not apprise us of
error because it is directed to the portion of Suzuki’s lever plate enumerated
by reference numeral “2a” instead of the portion relied upon by the
Examiner as corresponding to the recited “protuberance.” See Ans. 5 (“To
the right of the marked ‘protuberance’ is another element marked as
‘adjustment ring’ right next to it. If this adjustment ring were to move
axially to the left, it would hit the ‘protuberance’, hence the protuberance is
contactable with, and capable of limiting the axial movement of, the
adjustment ring.”).
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Application 15/046,079

7
None of Appellant’s arguments apprises us of error in the Examiner’s
rejection of claim 1. Accordingly, we affirm that rejection, as well as that of
claims 2–15, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv).

SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15 102 Suzuki 1–15

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).

AFFIRMED