Ex Parte ISHIGURO

Patent Trial and Appeal Board

Dec 31, 2018

13910354 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/910,354 06/05/2013
23117 7590 01/03/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Hiroya ISHIGURO
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.
GPK-2635-1301 8493
EXAMINER
AMICK, JACOB M
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROY A ISHIGURO 1
Appeal2018-005372
Application 13/910,354
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1--4, 6, 8, and 9. Claims 5 and 7 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Denso Corporation ("Appellant") is the applicant as provided under 37
C.F .R. § 1.46 and is identified as the real party in interest. Appeal Brief 3
("Appeal Br."), filed Nov. 6, 2017.
Appeal2018-005372
Application 13/910,354
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a spark plug used [in] an
internal combustion engine[,] such as an engine on a vehicle, and, an
ignition system having the spark plug." Spec. 1: 11-13, Figs. 1-3. Claims 1
and 3 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A spark plug for an internal combustion engine, extending
in an axial direction, having a base end and a head end in the
axial direction, and comprising:
a cylindrical housing;
a cylindrical insulator held inside of the housing, and
projected further toward a base end side than the housing is, the
insulator including an insertion portion arranged closer to the
base end side than the housing is, the insertion portion being
inserted into a cylindrical plug cap, the cylindrical plug cap being
made of an elastic material and having a fixed inner diameter in
a state before the insulator is inserted into the plug cap;
a center electrode held inside of the insulator, and
projected further toward a head end side than the insulator is;
a ground electrode forming a spark discharge gap between
the center electrode and the ground electrode; and
a terminal element held inside of the insulator, projected
further toward the base end side than the insulator is, and
electrically connected to the center electrode;
wherein the insertion portion of the insulator comprises:
a non-fit portion formed at the base end of the insulator,
an outer diameter of the non-fit portion being equal to or less than
an inner diameter of the plug cap, the non-fit portion being not
fit to the inner periphery surface of the plug cap in a state where
the insertion portion is inserted into the plug cap, the non-fit
portion having a first portion and a second portion, the outer
diameter of the first portion being substantially constant in the
axial direction, the second portion being arranged closer to the
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Application 13/910,354
base end side than the first portion, the outer diameter of the
second portion being gradually reduced toward the base end side;
and
a fit portion formed at the head end side of the non-fit
portion and adjacent to the non-fit portion in the axial direction,
the fit portion being press fitted in the inner periphery surface of
the plug cap, the outer diameter of the fit portion being greater
than that of the non-fit portion and greater than the inner diameter
of the plug cap.
THE REJECTIONS
I. Claims 1, 2, and 6 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Maekawa (US 5,632,636, issued May 27, 1997).
II. Claims 3, 4, 8, and 9 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Moga (US 2003/0037745 Al, published Feb. 27, 2003)
and Maekawa.
ANALYSIS
Rejection I -Anticipation by Maekawa
Claims 1, 2, and 6
Appellant does not offer arguments in favor of claims 2 and 6 separate
from those presented for independent claim 1. See Appeal Br. 9-19. We
select claim 1 as the representative claim, and claims 2 and 6 stand or fall
with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Maekawa discloses a spark plug having all
the limitations of claim 1. Final Act. 3-6 (citing Maekawa, 2:18-24; 4:9,
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Application 13/910,354
12, 43-56, Figs. 2, 3). 2 In support, the Examiner provides the following
annotated Figure 2 of Maekawa:
Id. at 9. Referring to the annotated Figure 2, the Examiner finds that
Maekawa discloses:
a cylindrical insulator ( see annotated Fig[.] 2 [above]) held inside
of [a] housing, and projected further toward a base end side than
the housing is, the insulator including an insertion portion (see
annotated Fig[.] 2 [above]) arranged closer to the base end side
than the housing is, the insertion portion being inserted into a
cylindrical plug cap (29), the cylindrical plug cap being made of
an elastic material (Col[.] 4, line 9) and having a fixed inner
diameter in a state before the insulator is inserted into the plug
cap (for example, when disassembled as generally shown by the
embodiment of Fig[.] 3).
Id. at 4.
2 Final Office Action ("Final Act."), dated Apr. 3, 2017.
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Application 13/910,354
The Examiner also provides the following annotated partial and
exploded Figure 2 of Maekawa:
Final Act. 3. Referring to the annotated partial and exploded Figure 2, the
Examiner finds that Maekawa discloses:
a non-fit portion (see annotated Fig[.] 2 [above]) formed at the
base end of the insulator, an outer diameter (taken at the first
portion "slice", see the blown-up image above) of the non-fit
portion being equal to or less than an inner diameter of the plug
cap (29), the non-fit portion being not fit to the inner periphery
surface of the plug cap in a state where the insertion portion is
inserted into the plug cap (i.e. the non-fit portion is not in direct
contact with element 29 when assembled as seen in Fig[.] 2), the
non-fit portion having a first portion ( the slice shown in the
blown-up image above between the "top most" flat land and the
boundary drawn in the image) and a second portion (the
remaining material of the "non-fit portion" above the drawn
boundary, see the blown-up image above) above the first portion,
the outer diameter of the first portion being substantially constant
in the axial direction (being a thin cross-sectional slice, the
diameter while tapering in slightly, is not considered to represent
a substantial change in diameter), the second portion being
arranged closer to the base end side (i.e.[,] "higher") than the first
portion, the outer diameter of the second portion being gradually
reduced toward the base end side (i.e.[,] it decreases as it goes
"up").
Id. at 4--5. The Examiner further finds that Maekawa discloses:
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Application 13/910,354
a fit portion ( see annotated Fig[.] 2 [above]) formed at the head
end side (i.e. the "bottom" side) of the non-fit portion and
adjacent to the non-fit portion in the axial direction, the fit
portion being press fitted (inserted into) in the inner periphery
surface of the plug cap (29, see Fig[.] 2), the outer diameter of
the fit portion being greater than that of the non-fit portion
( defined as being taken at the slice, see the blown-up image
above), and greater than the inner diameter of the plug cap ( as
discussed in the [Specification], the parts have to be forced
together (Col[.] 2, lines 18-24) and the plug engages with
"engagement portion 29a" (Col[.] 4, line 12)).
Final Act. 5---6.
Appellant contends that Maekawa does not "teach[] or suggest[] the
claimed configurations, which include" the three claimed limitations: (1) "a
cylindrical insulator held inside of the housing, ... the cylindrical plug cap
being made of an elastic material and having a fixed inner diameter in a state
before the insulator is inserted into the plug cap"; (2) "a non-fit portion
formed at the base end of the insulator, an outer diameter of the non-fit
portion being equal to or less than an inner diameter of the plug cap, ... the
outer diameter of the second portion being gradually reduced toward the
base end side"; and (3) "a fit portion formed at the head end side of the non-
fit portion and adjacent to the non-fit portion in the axial direction, ... the
outer diameter of the fit portion being greater than that of the non-fit portion
and greater than the inner diameter of the plug cap." See Appeal Br. 10-11;
see also Reply Br. 1-8. 3 More particularly, Appellant contends that:
( 1) Maekawa "does not state that its figures are drawn to scale" and
"[ t ]herefore, the figures may not be used to discern the recited
3 Reply Brief ("Reply Br."), filed Apr. 30, 2018.
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Application 13/910,354
relative sizes and associated configurations" (Appeal Br. 14 ( citing
Hockerson-Halberstadt, Inc. v. Avia Group Int'!, 222 F.3d 951,
956 (Fed. Cir. 2000));
(2) Maekawa "does not disclose a cylindrical plug cap having a fixed
inner diameter in a state before the insulator is inserted into the
plug cap," "[r]ather, Maekawa's Figure 2 shows that the 'plug cap'
29 has two inner diameters, that is, one for the electrically
conductive portion 3a of the spark plug 3 and the other for the
other part of the insertion portion," and thus, Maekawa "do[es] not
teach or suggest the claimed configuration, which recites that the
insertion portion of the insulator is inserted into a cylindrical plug
cap" (Appeal Br. 14--15; emphasis omitted);
(3) "the spark plug in Maekawa does not have the first portion, and
there is no reason that a person having ordinary skill in the art
would have modified Maekawa to include a first portion" and "[i]n
the present invention, the electrical insulation distance can be
secured by the first portion, and this benefit is not taught or
suggested in Maekawa" (id. at 16);
(4) "[t]he claims recite a configuration in which the outer diameter of
the non-fit portion is equal to or less smaller than the inner
diameter of the plug cap," "[t ]he claims further recite that the outer
diameter of the fit portion is greater than that of the non-fit portion
and greater than the inner diameter of the plug cap," "[t]herefore,
in a state where the insertion portion of the insulator is inserted
into the cylindrical plug cap, only the fit portion is press fit in the
inner periphery surface of the plug cap," and "[t]his is not the
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configuration of Maekawa's Figure 2" (Appeal Br. 16 (emphasis
omitted); see also id. at 17-19).
As an initial matter, although it is true that drawings are not presumed
to be drawn to scale, this "[does] not mean that things patent drawings show
clearly are to be disregarded." In re Mraz, 455 F.2d 1069, 1072 (CCPA
1972) ( emphasis in original). Here, the Examiner does not rely on Figure 2
of Maekawa for a specific dimension for each component, but rather to
compare one component to another. As to Appellant's above arguments, the
Examiner points out that:
(1) "[ w ]hile Maekawa may not use the specific language ('fit portion'
and 'non-fit portion'), Maekawa clearly shows in Fig[.] 2 wherein
a portion of the insulating body of Maekawa 'fits' with plug 29
(where contacting surface of aperture 29a) and a portion 'above'
29a where it does not fit with (does not contact) element 29" (Ans.
10); 4
(2)"the annotated blowup ofMaekawa's Figure 2, shown above, is
sufficient to show that the 'Second Portion' of the 'Non-Fit
Portion' has a smaller diameter than the 'Top Most' Flat Land of
the 'Fit Portion' located below it" (id. at 11 );
(3) "Maekawa having multiple fixed inner diameters does not preclude
Maekawa from having 'a fixed inner diameter' in a state before the
insulator is inserted into the plug cap (in other words the diameter
of aperture 29a)" (id. at 12); and
4 Examiner's Answer ("Ans."), dated Mar. 8, 2018.
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( 4) Figure 2 "[shows] the insulator portion of spark plug 3 inserted in
aperture 29a of the cap" (Ans. 12).
The Examiner further points out that Maekawa discloses "the spark
plug 3 is fitted into the plug engaging aperture 29a of the plug side elastic
member 29 with at [sic] a given tightness." Id. at 10-11 ( quoting Maekawa
5:1-3); see also id. at 13-15. In addition, inner cylindrical portion 29a
shown in Figure 2 of Maekawa is of cantilevered construction which allows
for an expansion of plug engaging aperture 29a. See Maekawa, Fig. 2.
Thus, given that "spark plug 3 is fitted into the plug engaging aperture 29a
of the plug side elastic member 29 with[] a given tightness" (see supra), a
preponderance of the evidence supports the Examiner's finding that the
outer diameter of an inserted portion of spark plug 3 is larger than an inner
diameter of plug-side elastic member 29. Ans. 10-11; see also id. at 13-15,
Maekawa, Fig. 2.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as anticipated by
Maekawa. Accordingly, we sustain the Examiner's rejection of claim 1. We
further sustain the rejection of claims 2 and 6, which fall with claim 1.
Rejection II- Obviousness over Moga and Maekawa
Claims 3, 4, 8, and 9
Appellant does not offer arguments in favor of dependent claims 4, 8,
and 9 separate from those presented for independent claim 3. See Appeal
Br. 9-19. We select claim 3 as the representative claim, and claims 4, 8, and
9 stand or fall with claim 3.
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Appellant relies on the same arguments presented above for claim 1.
See Appeal Br. 9--19; see also Reply Br. 1-8. As we find no deficiencies in
the Examiner's rejection of claim 1 for the reasons discussed above, we
likewise sustain the Examiner's rejection of independent claim 3 as
unpatentable over Moga and Maekawa. We further sustain the rejection of
claims 4, 8, and 9, which fall with claim 3.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 2, and 6
as anticipated by Maekawa.
We AFFIRM the decision of the Examiner to reject claims 3, 4, 8, and
9 as unpatentable over Moga and Maekawa.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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