Ex Parte Castan et al

Patent Trial and Appeal Board

Sep 13, 2017

13291466 (P.T.A.B. Sep. 13, 2017)

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.
13/291,466 11/08/2011 Joel Castan H0030288 5837
93136 7590 09/15/2017
HONEYWETI ,/PANGRT E
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
EXAMINER
YOUNGER, SEAN JERRARD
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
09/15/2017 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):
patentservices-us @ honey well, com
brian@ppbdlaw.com
sherry, vallabh @honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL CASTAN, DOMINIQUE ARMAND,
GERARD DIEUDONNE, OLIVIER MILLOTTE, and
LIONEL TOUSSAINT
Appeal 2016-005914
Application 13/291,4661
Technology Center 3700
Before ROBERT E. NAPPI, JOSEPH P. LENTIVECH, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—17, which constitute all of the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Honeywell International Inc.as the real party in
interest. App. Br. 2.
Appeal 2016-005914
Application 13/291,466
THE INVENTION
The disclosed and claimed invention is directed “to turbomachinery
for internal combustion engines and, in particular, to compressor wheel
shafts that include a recessed portion.” Spec. 11.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A turbocharger assembly comprising:
a housing that comprises a bore;
a bearing disposed in the bore of the housing;
a compressor wheel that comprises a base surface, a nose
surface, a z-plane disposed between the base surface and the nose
surface and a bore extending from the base surface to the nose
surface;
a shaft rotatably supported by the bearing in the bore of
the housing wherein the shaft comprises
a first pilot surface disposed in the bore of the
compressor wheel at a position between the z-plane and
the nose surface,
a second pilot surface disposed in the bore of the
compressor wheel at a position between the z-plane and
the base surface,
a shoulder,
a first recessed surface having a constant diameter
over at least a portion of an axial length thereof, the first
recessed surface disposed between the first pilot surface
and the second pilot surface, and
a second recessed surface having a constant
diameter over at least a portion of an axial length thereof,
the second recessed surface disposed between the second
pilot surface and the shoulder;
a thrust collar disposed about the shaft between the bearing
and the base surface of the compressor wheel and between the
shoulder and the base surface of the compressor wheel wherein
the thrust collar comprises a thrust collar bore that includes a first
portion at first diameter and a second portion at second diameter
wherein the first diameter is less than the second diameter and
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greater than the constant diameter of the second recessed surface
of the shaft; and
a nut adjustably disposed on the shaft adjacent to the nose
surface of the compressor wheel wherein adjustment of the nut
tensions the shaft to apply a compressive load between the base
surface and the nose surface of the compressor wheel wherein
the compressive load is applied by the nut and the shoulder of the
shaft, wherein the first recessed surface is disposed between the
base surface and the nose surface of the compressor wheel and
wherein the second recessed surface is disposed at least partially
within the first portion of the thrust collar bore.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Maclnnes US 3,043,636 July 10, 1962
Svihla US 6,364,634 B1 Apr. 2,2002
Mukherjee US 6,481,970 B2 Nov. 19,2002
REJECTIONS
Claims 1—7 and 9-14 stand rejected under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Svihla. Final Act. 3—6.
Claim 8 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Svihla in view of Maclnnes. Final Act. 6—7.
Claims 15—17 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Svihla in view of Mukherjee. Final Act. 7—8.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
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considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding claims 1—17.
Claims 1—5, 7 and 9—14
Appellants argue the Examiner erred in finding Svihla discloses a
shaft that satisfies all of the limitations recited in claim 1. See App. Br. 7—
11; Reply Br. 3—5, 7. Specifically, Appellants argue that “[njeither the
single long fastener rod nor the connecting shaft of the ‘novel connecting
means’ of Svihla” satisfy all of the limitation of the shaft recited in claim 1.
App. Br. 10. Appellants further argue that it is improper for the Examiner to
rely on two different elements to show the limitations of the shaft:
Yet further, the Examiner appears to consider features of
the single long fastener rod and features of the connecting shaft
of the ‘novel connecting means’ of Svihla et al. in various
different manners to support the rejection of claim 1. Such an
approach leads to inconsistencies. For example, how can, on one
hand, the connecting shaft 52 be the shaft of claim 1 and, on the
other hand, the single long fastener rod 62 be the shaft of claim
1? As these are two different components with two different
functions, it is inappropriate for the Examiner to rely on the
connecting shaft 52 for evidence of the shoulder of the shaft of
claim 1 and then to rely on the single long fastener rod 62 for
evidence of ‘the second recessed surface is disposed at least
partially within the first portion of the thrust collar bore’ of claim
1.
Id.
The Examiner finds that the combination of elements 52 and 62 of
Svihla discloses all of the limitations of the shaft recited in claim 1. Final
Act. 2—5; Ans. 2—3. Specifically, the Examiner finds that:
elements 52 and 62 of Svilha et al. were read on the claimed shaft
in the rejection. Although they are separate parts, together the
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shaft (52) and stud (62) synergize to form such a ‘rotating group’
where a turbine wheel (18) and a compressor wheel (20) are
connected to one another by the cited elements (52, 62) which
are rotatably supported, along with the turbine wheel and
compressor wheel, within the bearing (48, 50) in the bore of the
housing.
Ans. 3.
We are not persuaded by Appellants’ argument that the Examiner
erred. Although the Examiner relied on the combination of elements 52 and
62 to teach all the limitations of shaft recited in claim 1, Appellants’
arguments only point out how each element individually, does not meet all
the limitations of the shaft recited in claim l.2 * * 5Because Appellants’ do not
persuasively address the basis of the Examiner’s rejection, we are not
persuaded by those arguments that the Examiner erred.
Appellants also argue that the Examiner erred by combining separate
and distinct embodiments within a single reference. App. Br. 10—11
(citations omitted); Reply Br. 2 (citations omitted). However, Appellants’
argument is not applicable to the Examiner’s findings in this case. Both
elements 52 and 62 are part of the same embodiment. See Savihla Fig. 2
(showing both elements 52 and 62 in a single drawing). Accordingly, the
Examiner did not rely on different embodiments. Instead, the Examiner
relied on a combination of two elements of the same embodiment.
Appellants also argue the Examiner’s finding is erroneous because it
changes the function of the shaft 52. Reply Br. 8. In support, Appellants
2 The Examiner’ reliance on a combination of parts to meet a single claim
limitation is proper in an anticipation rejection as “the reference need not
satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed.
Cir. 2009) (internal quotation marks omitted).
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cite cases relating to claims governed by pre-AIA 35 U.S.C. § 112, | 6 and
an analysis of unpatentability based on obviousness. As claim 1 does not
include any claim limitations governed by section 112, paragraph 6 and the
rejection of claim 1 is based on anticipation, not obviousness, we are not
persuaded by Appellants’ argument that the Examiner erred.
Finally, in the Reply Brief. Appellants argue the Examiner erred in
finding Svihla discloses the bearing and thrust collar recited in claim 1.
Reply Br. 7. However, because Appellants did not raise that argument in the
opening brief and good cause has not been shown why it should be
considered, we will not consider this argument. 37 C.F.R. § 41.41(b)(2); Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“[T]he
reply brief [is not] an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner’s rejections, but
were not.”).
Therefore, we sustain the Examiner’s rejection of claim 1, along with
the rejection of claims 2—5, 7, and 9-14, which are not argued separately
(see App. Br. 12).
Claim 6
Appellants argue the Examiner erred in finding Svihla discloses the
additional limitation recited in claim 6. See App. Br. 11—12. Specifically,
similar to the arguments above for claim 1, Appellants argue neither element
52 nor element 62 individually have all of the limitations of the shaft recited
in claims 1 and 6. For the same reasons discussed above, we are not
persuaded by that argument that the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 6.
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Claim 8
With respect to dependent claim 8, Appellants contend that because
the additional reference used in the rejection of that claim (Maclnnes) does
not cure the shortcomings of Svihla applied against claim 1, the Examiner
failed to make a prima facie case of obviousness for claim 8. App. Br. 12.
Because we determine that the rejection of claim 1 is not erroneous for the
reasons discussed above, we are not persuaded by that argument.
Appellants further aver that the proposed modifications to Svihla
“would also likely change the principle of operation of the assembly of
Svihla.” App. Br. 13 (emphasis added). Therefore, according to Appellants,
“the teachings of the references are not sufficient to render the claims prima
facie obvious.” Id. (quoting MPEP § 2143.01).
We are not persuaded that Appellants have established that the
proposed change would result in such a change in the principle of operation
of the prior art as to make the claimed invention nonobvious. If a proposed
modification would render the prior art invention being modified
unsatisfactory for its intended purpose, then there is no suggestion or
motivation to make the proposed modification. In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984). For example, our reviewing Court held that an
invention was not obvious where the prior taught the device required rigidity
for operation whereas the claimed invention required resiliency. In re Ratti,
270 F.2d 810, 813 (CCPA 1959). However, as our reviewing court has
explained, the proposition set forth in Ratti is inapplicable where the
modified apparatus will operate “on the same principles as before.” See
Mouttet, 686 F.3d at 1332 (citing In re Umbarger, 407 F.2d 425, 430—31
(CCPA 1969)).
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Appellants do not state that there will be a change in the principle of
operation, just that such a change is likely. See App. Br. 12. Likely implies
that although there may be a change in the principle of operation, there also
might not be one. That is, according to Appellants’ argument, the modified
prior art may operate on the same principles as before. On this record, we
are not persuaded that the Examiner erred.
Moreover, even if a likely change in the principle of operation was
sufficient to defeat a prima facie case of obviousness, Appellants provide no
evidence in support of their argument. Id. “Attorney’s argument in a brief
cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).3 Bare attorney argument is insufficient to show the Examiner
erred.
Accordingly, we sustain the Examiner’s rejection of claim 8.
Claims 15—17
With respect to dependent claims 15—17, Appellants contend that
because the additional reference used in the rejection of those claims
(Mukherjee) does not cure the shortcomings of Svihla applied against claim
1, the Examiner failed to make a prima facie case of obviousness for claims
15—17. App. Br. 14—15. Because we determine that the rejection of claim 1
is not erroneous for the reasons discussed above, we are not persuaded by
that argument.
Accordingly, we sustain the Examiner’s rejection of claims 15—17.
3 Additionally, Appellants’ argument is also insufficient because it only
discusses Svihla element 52 and not the function of the combination of
elements 52 and 62 relied on by the Examiner.
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DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1—17.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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