Ex Parte Johnson

Board of Patent Appeals and Interferences

Feb 25, 2009

10331828 (B.P.A.I. Feb. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Sauer-Danfoss Inc.
____________

Appeal 2008-1625
Application 10/331,828
Technology Center 3600
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Decided1: February 25, 2009
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Before RICHARD E. SCHAFER, JAMESON LEE, and RICHARD
TORCZON Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL 1
A. STATEMENT OF THE CASE 2
This is a decision on appeal by the real party in interest, Sauer-3
Danfoss Inc. (“Sauer-Danfoss”) under 35 U.S.C. § 134(a) from a final 4
rejection of claims 1, 3, 4, and 6-12. We have jurisdiction under 35 U.S.C. 5
§ 6(b). 6

1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R.
§ 1.304, begins to run from the decided date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-1625
Application 10/331,828

2
The Rejection on Appeal 1
The Examiner rejected claims 1, 3, 4, and 6-12, under the principle of 2
interference estoppel. 3
The Invention 4
The claimed invention is directed to an axle assembly. Independent 5
claim 1 is reproduced below: 6
1. An axle assembly, comprising a housing for an internally 7
disposed hydrostatic transmission, a hydrostatic transmission 8
separate from the housing and mounted within the housing, axle 9
shaft rotatably supported in the housing and having horizontal 10
axes, the hydrostatic transmission including a center section 11
separate from the housing and having fluid conducting conduits 12
interconnecting hydrostatic rotatable cylinder blocks, a drive 13
shaft extending from one of the cylinder blocks and being 14
operatively connected to the axle shafts, the invention 15
comprising, 16
17
check valves associated with the fluid conducting 18
conduits and including check valve balls to affect fluid flow 19
through the conduits; and 20
21
wherein an operative means is associated with the check 22
valves to selectively raise the balls in a vertical direction. 23
24
B. ISSUES 25
Has Sauer-Danfoss shown that the Examiner has not set forth a 26
sufficient basis to reject claims 1, 3, 4, and 6-12 as unpatentable based on the 27
principle of interference estoppel? 28
C. FINDINGS OF FACT 29
1. Sauer-Danfoss was the losing real party in interest in 30
Interference No. 104,311 and Interference No. 104,313, judgments of which 31
were entered on October 16, 2002. 32
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Application 10/331,828

3
2. In Interference No. 104,311, Sauer-Danfoss was involved on 1
the basis of its Patent No. 5,513,717, and in Interference No. 104,313, Sauer-2
Danfoss was involved on the basis of its Patent No. 5,577,572. 3
3. In both Interference No. 104,311 and Interference No. 104,313, 4
the opposing party was Kanzaki Kokyukoki Mfg. Co. Ltd. (“Kanzaki”). 5
4. The application now on appeal was filed on December 30, 6
2002, and it is in a chain of continuation applications leading back to the 7
application which issued as Patent No. 5,513,717, and also the application 8
which issued as Patent No. 5,577,572. 9
5. The application now on appeal had previously been before the 10
Board in another appeal, i.e., Appeal No. 2004-2156, judgment of which was 11
rendered on November 23, 2004. 12
6. Unpatentability over the lost counts in Interference Nos. 13
104,311 and 104,313 was an issue on appeal in Appeal No. 2004-2156, and 14
a rejection made on that basis was reversed. 15
7. Subsequent to the Board’s decision in Appeal No. 2004-2156, 16
the Examiner rejected claims 1, 3, 4, and 6-12 as being unpatentable on the 17
principle of interference estoppel. (Answer 3:16-17). 18
8. According to the Examiner, Sauer-Danfoss’ seeking the claims 19
now on appeal constitutes action inconsistent with its “failure to properly 20
move” in Interference No. 104,311 and Interference No. 104,313. 21
9. Sauer-Danfoss does not dispute that the claims on appeal read 22
on the specifications of Patent Nos. 5,513,717 and 5,577,572. 23
10. Patent No. 5,513,717 contained only a single claim, and that 24
claim corresponded to the count in Interference No. 104,311, with respect to 25
which judgment was entered against Sauer-Danfoss in that interference. 26
Appeal 2008-1625
Application 10/331,828

4
11. Patent No. 5,577,572 contained only a single claim, and that 1
claim corresponded to the count in Interference No. 104,313, with respect to 2
which judgment was entered against Sauer-Danfoss in that interference. 3
D. PRINCIPLES OF LAW 4
The doctrine of interference estoppel is directed to finality of an 5
interference proceeding, with respect to all issues which might have been 6
presented in the interference. 37 CFR § 41.127(a) (2004); 37 CFR 7
§ 1.658(c) (1995); In re Kroekel, 803 F.2d 705, 709 (Fed. Cir. 1986). 8
Depending on the facts, the issue of interference estoppel may involve 9
different circumstances. One of those circumstances is the failure of the 10
applicant to file a motion in the previous interference to pursue that subject 11
matter now sought to be patented subsequent to termination of the 12
interference. 37 CFR § 41.127(a); Woods v. Tsuchiya, 754 F.2d 1571, 1579 13
(Fed. Cir. 1985). 14
E. ANALYSIS 15
In this case, the Examiner determined that Sauer-Danfoss failed to 16
move, when it could have moved, in prior Interference No. 104,311 17
involving Patent No. 5,513,717 of Sauer-Danfoss, and in Interference No. 18
104,313 involving Patent No. 5,577,572 of Sauer-Danfoss, to have priority 19
of invention adjudicated between Sauer-Danfoss and Kanzaki with respect to 20
the subject matter now claimed. Specifically, the Examiner stated (Answer 21
3:21 through 4:3): 22
As stated in 37 CFR 1.658(c), a losing party who could 23
have properly moved under 37 CFR 1.633 or 1.634, but failed 24
to do so, is estopped from taking subsequent action in the 25
USPTO which is inconsistent with the party’s failure to 26
properly move. 27
28
Appeal 2008-1625
Application 10/331,828

5
The subject matter of claims 1, 3-4, 6-12 of the present 1
application read on disclosures common to each of Louis et al. 2
5,513,717 [owned by Sauer-Danfoss], Johnson 5,577,572 3
[owned by Sauer-Danfoss] involved in Interference Nos. 4
104,311 and 104,313, and because priority with respect to such 5
subject matter could have been determined in one or the other 6
of those interferences and because appellant was a losing party. 7
8
The Examiner further stated (Answer 5:13-19): 9
Both Johnson ‘572 and Louis ‘717 were losing parties in an 10
interference and disclose all of the limitations recited in rejected 11
claims 1, 3-4, 6-12. Appellant has not disputed these facts. In 12
both interferences, the losing parties could have properly 13
moved, but failed to move . . . as to the claimed subject matter. 14
15
The Examiner has not identified, much less explained, what motion or 16
motions Sauer-Danfoss should have filed in either Interference No. 104,311 17
or No. 104,313 in connection with the subject matter of the claims now on 18
appeal. 19
Because Sauer-Danfoss was involved in both interferences on the 20
basis of an issued patent, it could not have moved to add any claim to its 21
already issued patents except by filing a reissue application. Because its 22
involved patent in both interferences had only a single claim that 23
corresponded to the sole count in the associated interference, Sauer-Danfoss 24
had “no claim” in either case which it could have moved to designate as 25
corresponding to a proposed additional count. Because the application on 26
appeal was filed after entry of judgment in both interferences, Sauer-Danfoss 27
also could not have moved to add the application now on appeal to either 28
interference prior to entry of judgment. 29
Appeal 2008-1625
Application 10/331,828

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In order to have a determination of priority, both parties in 1
Interference Nos. 104,311 and 104,313 would have had to have claims 2
drawn to the same patentable subject matter. In that regard, the Examiner 3
also has not made the requisite conclusions on whether Kanzaki’s involved 4
application in those interferences already contained claims drawn to the 5
same patentable subject matter as the claims now on appeal or includes a 6
specification which supports such claims. 7
At one point during the prosecution of Sauer-Danfoss’ application on 8
appeal, the Examiner concluded that claims 1-15 read on the disclosure of 9
Kanzaki’s Application 08/818,964. (Non-Final Action dated November 29, 10
2005, p.3, ¶ 3) However, Sauer-Danfoss challenged that assertion and the 11
Examiner evidently withdrew that determination. In the Final Office Action 12
dated March 10, 2006, the Examiner no longer asserted that the rejected 13
claims read on the disclosure of Kanzaki’s Application 08/818,964. Instead, 14
the Examiner determined only that the rejected claims read on the disclosure 15
of Sauer-Danfoss’ own Patent Nos. 5,513,717 and 5,577,572. (Final Office 16
Action dated March 10, 2006, p.2, ¶ 2). On this record, the Examiner has 17
not established that the specification of Kanzaki’s Application 08/818,964 18
supports a claim drawn to the same subject matter as the claims on appeal. 19
Another form of interference estoppel applies to subject matter not 20
patentably distinct from the lost count in a prior interference. In re Deckler, 21
977 F.2d 1449, 1452 (Fed. Cir. 1992); Woods v. Tsuchiya, 754 F.2d at 1579. 22
However, that is not the basis for estoppel as articulated by the Examiner in 23
this appeal. That was an issue in the prior appeal involving this application, 24
in Appeal No. 2004-2156. 25
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Application 10/331,828

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For the foregoing reasons, the rejection of claims 1, 3, 4, and 6-12 as 1
unpatentable based on the principle of interference estoppel as articulated by 2
the Examiner cannot be sustained. 3
F. CONCLUSION 4
Sauer-Danfoss has shown that the Examiner failed to articulate a 5
sufficient basis to reject claims 1, 3, 4, and 6-12 as unpatentable based on the 6
principle of interference estoppel. 7
G. ORDER 8
The rejection of claims 1, 3, 4, and 6-12 as unpatentable under the 9
principle of interference estoppel is reversed. 10
11
REVERSED 12
13
14
MAT 15
16
17
Attorney for Sauer-Danfoss Inc. 18
19
Timothy J. Zarley 20
Zarley Law Firm, P.L.C. 21
Capital Square 22
400 Locust Street, Suite 200 23
Des Moines, IA 50309-2350 24