Ex Parte Busato et al

Patent Trial and Appeal Board

Jul 12, 2018

14215740 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/215,740 03/17/2014 Murray F. Busato
67424 7590 07/12/2018
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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.
DKT14055
(0016.0001.001)
5711
EXAMINER
LEO, LEONARD R
ART UNIT PAPER NUMBER
3744
MAIL DATE DELIVERY MODE
07/12/2018 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
ExparteMURRAYF. BUSATO, KETAN ADHVARYU,
and PETE WEISSINGER
Appeal2017-006638 1
Application 14/215, 7 402
Technology Center 3700
Before KENNETH G. SCHOPPER, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-27, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Aug. 8,
2016), the Reply Brief ("Reply Br.," filed Mar. 13, 2017), the Examiner's
Answer ("Ans.," mailed Jan. 11, 2017), and the Final Office Action ("Final
Act.," mailed Feb. 3, 2016).
2 According to Appellants, the real party in interest is BorgWarner, Inc.
Appeal Br. 3.
Appeal2017-006638
Application 14/215, 7 40
BACKGROUND
According to Appellants, "[t]he field to which the disclosure generally
relates to includes retention device[ s ]" that "may be used in a variety of
applications." Spec. ,r,r 1, 2.
CLAIMS
Claims 1, 10, 20, 21, and 23 are the independent claims on appeal.
Claim 1 is illustrative of the appealed claims and recites:
1. A product comprising at least one retention device
compnsmg;
a first member formed as an arch,
a second member extending from a first end of the first
member and defining a first contact point,
a third member extending from a second end of the first
member and defining a second contact point,
at least one spring member extending from at least one of
the first, second, or third members and defining a third contact
point, and
wherein when the first and second contact points are in
contact with a substantially rigid surface of an exhaust gas
recirculation tube, and a force is applied to the third contact
point, a force is transmitted to the substantially rigid surface at
one or both of the first or second contact points, and
wherein the first member will substantially remain in the
form of the arch and does not contact the substantially rigid
surface when the force is applied to the third contact point.
Appeal Br. 23.
REJECTIONS
1. The Examiner rejects claims 21, 26, and 27 under 35 U.S.C. § 112(b) as
indefinite.
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Application 14/215, 7 40
2. The Examiner rejects claims 1, 2, 10, 11, 18, 19, and 23-27 3 under
35 U.S.C. § I03(a) as unpatentable over Grande Fernandez4 in view of
Kaufman. 5
3. The Examiner rejects claims 3 and 12 under 35 U.S.C. § I03(a) as
unpatentable over Grande Fernandez in view of Kaufman and Earwig. 6
4. The Examiner rejects claims 4--9 and 13-17 under 35 U.S.C. § I03(a) as
unpatentable over Grande Fernandez in view of Kaufman, Earwig, and
Chung. 7
5. The Examiner rejects claims 20-22 under 35 U.S.C. § I03(a) as
unpatentable over Grande Fernandez in view of Kaufman and Capelle. 8
DISCUSSION
Indefiniteness
The Examiner finds each of claims 21, 26, and 27 indefinite based on
the claim term "less impeded movement." Final Act. 2. Specifically, for
each claim, the Examiner finds:
the term "less impeded movement" is a relative term which
renders the claim indefinite. The term "less impeded
movement" is not defined by the claim, the specification does
not provide a standard for ascertaining the requisite degree, and
one of ordinary skill in the art would not be reasonably apprised
of the scope of the invention.
3 Although the heading for this rejection does not include claims 26 and 27,
the body of the rejection makes clear that the Examiner intended to include
those claims in this rejection. See Final Act. 3, 7.
4 Grande Fernandez et al., WO 2012/152860 Al, pub. Nov. 15, 2012.
("Grande Fernandez")
5 Kaufman et al., US 2,809,004, iss. Oct. 8, 1957. ("Kaufman")
6 Earwig et al., US 2010/0276131 Al, pub. Nov. 4, 2010. ("Earwig")
7 Chung, US 5,931,514, iss. Aug. 3, 1999.
8 Capelle et al., US 8,387,684 E2, iss. Mar. 5, 2013. ("Capelle")
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Appeal2017-006638
Application 14/215, 7 40
Id.
The test for definiteness under 35 U.S.C. § 112, ,r 2, is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the [S]pecification." Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Here, we
agree with Appellants that one of ordinary skill in the art would understand
the scope of the language at issue when the claim is read in light of the
Specification. As noted by Appellants, "[t]he [S]pecification clearly
identifies that it is the arch and the resulting minimal contact with rigid
surface 47 that results in the less impeded movement." Appeal Br. 11.
( citing Spec. ,r 41 ). The Specification recites:
Referring to Figure 7, retention device 33 may function
in the following manner. When the first contact point 39 and
second contact point 43 are in contact with a substantially rigid
surface 47 and a force, represented as arrow 48, is applied to
third contact point 45, spring member 34 may deflect in
direction 49 and transmit a force to the substantially rigid
surface at first contact point 39 and second contact point 43.
While force 48 is applied, first arch member 35 will remain
substantially in the form of the arch and only the first contact
point 39 and second contact point 43 will substantially contact
rigid surface 4 7. The arch form of first arch member 3 5 and the
minimum contact with rigid surface 4 7 may allow a less
impeded movement of the retention device 33 along
substantially rigid surface 4 7. The deflection of spring member
34, in direction 49, is shown as dashed line form 34A, in figure
7.
Spec. ,r 41. The Specification reiterates this disclosure with respect to the
embodiment depicted in Figure 14. See Spec. ,r 46. The Examiner does not
point us to any portion of the Specification that would lend itself to a
different interpretation of the claim. As such, the Specification would
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Appeal2017-006638
Application 14/215, 7 40
provide a person of ordinary skill in the art with a clear understanding of the
scope of the claim language at issue. Indeed, the Examiner appears to agree
that the Specification provides such clarity. See Ans. 11 ("The Examiner
understands the recitation 'less impeded' based on [ A Jppellants' remarks
and the Specification.") Further, to the extent the Examiner finds that this
claim limitation is a relative term, we find that the portions of the
Specification cited above do, in fact, provide a standard by which the
requisite degree of less impeded movement may be ascertained.
Based on the foregoing, we are persuaded of reversible error in the
rejection under 35 U.S.C. § 112, second paragraph. Accordingly, we do not
sustain the rejection of claims 21, 26, and 27 on this ground.
Obviousness
Each of the independent claims on appeal requires a retention device
with a first member formed as an arch. See Appeal Br. 23, 25-26, 28-31.
With respect to each of these claims, the Examiner finds that Grande
Fernandez teaches a retention device having a first member, and the
Examiner acknowledges that Grande Fernandez does not teach that the first
member is formed as an arch. See Final Act. 3-9. With respect to this
requirement, the Examiner relies on Kaufman. See, e.g., id. at 4.
Specifically, the Examiner finds and concludes:
Kaufman et al (Figures 1-2) discloses retention device 28
comprising a first member 11, a second member 20 (i.e. left
side) extending from a first end of the first member 11 and
defining a first contact point 14, a third member 20 (i.e. right
side) extending from a second end of the first member 11 and
defining a second contact point 16, at least one spring member
7 extending from the third member and defining a third contact
point 2, the first and second contact points 14, 16 are in contact
with a substantially rigid surface 10, wherein the first member
5
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Application 14/215, 7 40
Id.
11 is formed as an arch providing a spring bias ( column 2, lines
44-46) for the purpose of preventing shifting or rolling of the
device 28 in relation to the substantially rigid surface 10
( column 2, lines 56-58).
It would have been obvious at the time the invention was
made to a person having ordinary skill in the art to employ in
Grande Fernandez et al the first member formed as an arch for
the purpose of preventing shifting or rolling of the device in
relation to the substantially rigid surface as recognized by
Kaufman et al.
The Examiner can satisfy the burden of establishing that every
limitation of a claim would have been obvious by showing "some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007).
Here, we are persuaded by Appellants' argument that the Examiner has not
provided an adequate rationale for making the proposed combination of
Grande Fernandez and Kaufman such that the claim would have been
obvious to a person of ordinary skill in the art. In particular, given the
structure disclosed by Grande Fernandez, we agree with Appellants that
there is no indication that one of ordinary skill in the art would have seen a
benefit to adding an arched first member to Grande Fernandez's retention
device for the reasons relied upon by the Examiner.
Grande Fernandez discloses a retention device, which, as identified by
the Examiner, includes first, second, and third members as well as a spring
member. See Final Act. 3 ( citing Grande Fernandez Figs. 2a, 2b ). Grande
Fernandez discloses that second and third members (1.4 and 1.5,
respectively) are configured to engage a protrusion on three sides of a tube
bundle (main face 2.2 and adjacent side faces 2.3) that is created by a linking
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Appeal2017-006638
Application 14/215, 7 40
part 2.1. See Grande Fernandez 11, claim 1; Fig. 1. Grande Fernandez
explains that member 1.4 is an anchor adapted to receive the protrusion 2.1
and that member 1.5 is a skid that reduces the transverse clearance of the
protrusion inside the anchor. Id. at 11, claim 1; 12, claim 6. Because
Grande Fernandez's retention device includes an anchor and skid as
described, we agree with Appellants that one of ordinary skill in the art
would not have recognized a further need to prevent shifting of the retention
member. Thus, insofar as the Examiner relies on the prevention of shifting
as a reason that one of ordinary skill in the art would have modified Grande
Fernandez based on Kaufman, we agree that such reasoning lacks the
requisite rational underpinning to support the Examiner's conclusion.
Further, Grande Fernandez discloses that the retention device is
configured to be anchored to the protrusion on three sides of a tube bundle.
Given that configuration, we fail see, and the Examiner does not adequately
explain, how any rolling of the device would be possible with the retention
device in place. Thus, we also agree with Appellants that one of ordinary
skill in the art would not have recognized a further need to prevent rolling of
the retention member in the configuration provided by Grande Fernandez.
Because the Examiner relies on the prevention of rolling as a separate reason
that one of ordinary skill in the art would have made the proposed
combination, we also agree with Appellants that such reasoning lacks the
requisite rational underpinning to support the Examiner's conclusion.
Based on the foregoing, and because the Examiner does not rely on
the other art of record in a way that would cure the deficiency noted above,
we are persuaded of reversible error with respect to the rejection of each of
the independent claims. Accordingly, we do not sustain the rejections of
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Application 14/215, 7 40
claims 1, 10, 20, 21, and 23. For the same reasons, we also do not sustain
the rejections of dependent claims 2-9, 11-19, 22, and 24--27.
CONCLUSION
We REVERSE the rejections of claims 1-27.
REVERSED
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