Ex Parte Tewani et al

Board of Patent Appeals and Interferences

Jun 22, 2004

09997745 (B.P.A.I. Jun. 22, 2004)

1 In rendering this decision, we have considered Appellants’ arguments presented in the
Brief filed April 01, 2003 and the Reply Brief filed July 14, 2003.
The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SANJIV G. TEWANI, MARK W. LONG
MARK O. BODIE and JAMES P. HAMBERG
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Appeal No. 2004-1266
Application No. 09/997, 745
____________
ON BRIEF
____________
Before WALTZ, DELMENDO and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal the decision of the Primary Examiner finally rejecting claims
1 to 14, all of the pending claims. We have jurisdiction under 35 U.S.C. § 134.1
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Application No. 09/997, 745
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BACKGROUND
Appellants’ invention relates to powertrain mounts for motor vehicles. The claimed
invention includes a floating orifice track. (Brief, p. 2). Claims 1, 5 and 9, which are
representative of the claimed invention, appear below:
1. A powertrain mount comprising:
an orifice plate defining an orifice track having a first cross-sectional area; and
a slug slidably disposed in the orifice track, the slug having a bore with a
second cross-sectional area less than the first cross-sectional area.
5. A powertrain mount comprising:
a base plate;
a molded member connected to the base plate;
an orifice plate connected to one of the base plate or the molded member, the
orifice plate defining an orifice track having a first cross-sectional area; and
a slug slidably disposed in the orifice track, the slug having a bore with a
second cross-sectional area less than the first cross-sectional area.
9. A mount for a powertrain component of a motor vehicle, the mount
comprising:
a base plate;
a molded member connected to the base plate;
an orifice plate connected to one of the base plate or the molded member, the
orifice plate defining an orifice track having a first cross-sectional area; and
a slug slidably disposed in the orifice track, the slug having a bore with a
second cross-sectional area less than the first cross-sectional area.
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Application No. 09/997, 745
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CITED PRIOR ART
As evidence of unpatentability, the Examiner relies on the following prior art:
Lee et al. (Lee) 6,056,279 May 02, 2000
THE REJECTION
The Examiner entered the following rejections:
The Examiner rejected claims 1 to 13 under 35 U.S.C. § 102(b) as anticipated by Lee;
and claim 14 under 35 U.S.C. § 103(a) as obvious over Lee.
We reverse the aforementioned rejections. We need to address only the independent
claims, i.e., claims 1, 5 and 9.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
Appellants concerning the above-noted rejections, we refer to the Answer, Brief and Reply
Brief for the full exposition thereof.
OPINION
The review of the grounds of rejection of the appealed claims necessarily entails the
interpretation of the scope of the appealed claims. See In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997). In the present case, the independent claims 1, 5
and 9 all include the element “orifice track”. The specification describe the orifice track as
follows:
Appeal No. 2004-1266
Application No. 09/997, 745
2 In order for a claimed invention to be anticipated under 35 U.S.C. § 102, all of the
elements of the claim must be found in one reference. See Scripps Clinic & Research Found. v.
Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
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The orifice track has a relatively small, restricted flow passage extending
around the perimeter of the orifice plate. Each end of the track has an opening,
with one opening communicating with the primary chamber and the other with
the secondary chamber. The orifice track provides the hydraulic mount
assembly with another passive tuning component.
[Specification, page 2]
The Examiner in rejecting the subject matter of claims 1, 5 and 9 did not properly
consider the powertrain mount containing an orifice track as described in the claims. The
Examiner has not identified a portion of the Lee reference which specifies an orifice track
that has a flow passage that extends around the perimeter of the orifice plate.2
Lee describes a hydraulic pumping mount that comprises a partition wall (23) that
separates the cavity (30) into a pair of working chambers. (Col. 3, ll. 11-12). Lee also
discloses that the partition wall (23) has an opening (36) that engages the tube (34) that
extends through the working chambers. (Col. 3, ll. 15-17). However, the Examiner in the
Answer, page 3, states “Lee et al. discloses a mount comprising an orifice plate (23) defining
an orifice track (interpreted by the examiner as the orifice through which slug 34 extends)
having a first cross-sectional area and a slug (34) slidably disposed in the orifice track, the
slug having a bore with a second cross-sectional area less than the first cross sectional area.
(Figures 1 and 2)”. The element identified by the Examiner as the “orifice through which
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slug 34 extends” does not define an orifice track that has a flow passage that extends around
the perimeter of the orifice plate as required by the claimed invention. The identified
element is an opening in the partition wall and does not extend around the perimeter of the
partition wall.
Thus, we reverse the rejection of claims 1 to 13 under 35 U.S.C. § 102(b) as
anticipated by Lee; and claim 14 under 35 U.S.C. § 103(a) as obvious over Lee.
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CONCLUSION
For the foregoing reasons we reverse all of the rejections presented in this appeal.
REVERSED
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ROMULO H. DELMENDO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
JTS/gjh
Appeal No. 2004-1266
Application No. 09/997, 745
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