Ex Parte Trease

Board of Patent Appeals and Interferences

Feb 28, 2007

10440124 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN M. TREASE
____________

Appeal 2006-3055
Application 10/440,124
Technology Center 3700
____________

Decided: February 28, 2007
____________

Before TERRY J. OWENS, ROBERT E. NAPPI and LINDA E. HORNER,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final rejection of claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and REMAND the application to the Examiner pursuant to
37 C.F.R. § 41.50(a)(1) for further consideration of the claims.
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Application 10/440,124

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THE INVENTION
The Appellant’s claims relate to an engine having a retaining plate that
engages a camshaft and retains the camshaft in position. Claims 1, 5, and 7,
reproduced below, are representative of the subject matter on appeal.
1. An engine comprising:
an engine block having at least one cylinder, a crankcase
and a cam chest, the crankcase separated from the cam
chest by a divider wall,
at least one camshaft extending from the divider wall into
the cam chest, and
a retaining plate secured to said divider wall and
retaining said at least one camshaft to maintain the at
least one camshaft in position.

5. An engine comprising:
an engine block having a first and second cylinder and a
cam chest,
a front camshaft and rear camshaft extending through the
cam chest for actuating cylinder valves, and
a retaining plate in said cam chest, said retaining plate
having a pair of notches, said notches formed in the edge
of the retaining plate and engaging said camshafts.

7. An engine comprising:
an engine block having at least one cylinder, a crankcase
and a cam chest, the crankcase separated from the cam
chest by a divider wall,
at least one camshaft extending through the divider wall
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into the cam chest, the at least one camshaft having a first
end and a second end, and
a retaining plate having at least one notch, said at least
one notch engaging the at least one camshaft between the
first and second ends.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Frank US 2,887,900 May 26, 1959
Yordi US 3,051,149 Aug. 28, 1962
The following rejections are before us for review.
1. Claims 1, 3, and 7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Frank.
2. Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frank.
3. Claims 2, 4, 6, 9, and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Frank and Yordi.
We refer to the following evidence in our remand of the application to the
Examiner for further consideration:
Lambert US 5,230,321 Jul. 27, 1993
Smith US 6,305,242 B1 Oct. 23, 2001

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ISSUES
The Appellant contends that Frank does not anticipate claims 1, 3, and 7 and
does not render obvious claims 2, 4-6, and 8-10, when taken alone or in
combination with Yordi, because neither Frank nor Yordi discloses, teaches, or
suggests a retaining plate that maintains the camshaft in position or a retaining
plate that has a notch that engages the camshaft (Br. 3-4). The Examiner contends
Frank discloses a retaining plate that retains a camshaft to maintain it in position,
and the retaining plate has at least one notch engaging the camshaft between the
first and second ends (Answer 3). The issues before us are: (1) whether the
Appellant has shown that the Examiner erred in finding that Frank anticipates
claims 1, 3, and 7; and (2) whether the Appellant has shown that the Examiner
erred in finding that Frank, alone or in combination with Yordi, renders obvious
claims 2, 4-6, and 8-10.

FINDINGS OF FACT
A preponderance of the evidence establishes the following facts:
The engine of claim 1 includes a retaining plate “retaining said at least one
camshaft to maintain the at least one camshaft in position.”
This recitation requires the retaining plate to prevent the camshaft from any
movement along its longitudinal axis into or out of the cam chest.
The engine of claim 5 includes a retaining plate having a pair of notches
“formed in the edge of the retaining plate and engaging said camshafts.”
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The engine of claim 7 includes a retaining plate having at least one notch
“engaging the at least one camshaft between the first and second ends.”
The specification does not provide any definition for “notch.”
A common meaning of “notch” is “a V-shaped indentation or hollow (as in a
surface or edge).” Webster’s Third International Dictionary (unabridged) 1543
G. & C. Merriam Co., 1971 (excerpt attached).
We find that one having ordinary skill in the art at the time of the invention
would have understood “notch,” in view of the specification, to have meant an
indentation on the edge of the retaining plate.
Frank discloses an engine 10 having a camshaft member 22 and a camshaft
thrust plate 62 (Frank, Figure 1, col. 1, ll. 66-69 and col. 2, l. 27).
The only description provided by Frank of the camshaft thrust plate 62 is as
follows: “The camshaft thrust plate 62 is also formed to include passages 63 and
engine wall 52 is cut back as at 64 to insure the accessibility of lubricant in the
vicinity of the eccentric 36, bushing 44 and control arm 30.” (Frank, col. 2, ll. 27-
31).
The only depiction of the camshaft thrust plate 62 is in Figure 1 of Frank.
Figure 1 shows that camshaft 22 has a wider diameter to the right side and a
narrower diameter to the left side of camshaft thrust plate 62. As such, camshaft
thrust plate 62 is disposed in engine 10 so that it prevents camshaft 22 from
moving in the left direction but it does not prevent camshaft 22 from moving in the
right direction (Frank, Figure 1).
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Frank does not describe or show how the thrust plate 62 fits about and
engages camshaft 22. Frank shows only a partial cross sectional view of the
engine 10 in Figure 1 and an end view in Figure 2 (Frank, col. 1, ll. 59-65).
It is not clear from Frank’s drawings and disclosure whether thrust plate 62
has an aperture, notch, or other configuration for engaging the camshaft 22.
Yordi discloses camshaft housing 10 for housing a camshaft 12 and a thrust
plate 19 (Yordi, col. 1, ll. 35-37 and col. 2, l. 1).
The only description provided by Yordi of the thrust plate 19 is as follows:
“A thrust plate 19, fastened through bolts 40 to the motor block 18, a portion of
which is shown, is used to keep the camshaft in position and also to hold the disk
15 firmly against the end bearing 41.” (Yordi, col. 2, ll. 1-4).
Figure 1 of Yordi shows that camshaft 12 has a narrower diameter to the
right side and a wider diameter to the left side of thrust plate 19. Thrust plate 19 is
disposed in housing 10 so that it prevents camshaft 12 from moving in the right
direction but does not prevent camshaft 12 from moving in the left direction
(Yordi, Figure 1).
Yordi does not describe or show how the thrust plate 19 fits about and
engages camshaft 12. Yordi shows only a partial cross sectional view of the
housing 10 in Figure 1 and a transverse sectional view in Figure 2 (Yordi, col. 1, ll.
29-33).
It appears from Yordi’s drawings that thrust plate 19 has an aperture through
which the camshaft 12 extends.
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Yordi does not disclose a thrust plate 19 with at least one notch engaging the
camshaft 12.

ANALYSIS
Claim 1 is not anticipated by Frank because Frank does not disclose a
retaining plate that maintains the camshaft in position. Rather, the thrust plate of
Frank would not prevent the camshaft from moving out of the engine block. As
such, the thrust plate of Frank does not function as a retaining plate because it does
not maintain the camshaft in position. As such, we find that claim 1, and its
dependent claim 3, are not anticipated by Frank.
Claim 7 is also not anticipated by Frank because Frank does not disclose a
retaining plate with at least one notch engaging the camshaft. Although the thrust
plate of Frank engages the camshaft between its first and second ends, Frank does
not disclose how the thrust plate fits about the camshaft. As such, it would be
speculative to find that Frank discloses a plate having a notch. Accordingly, we
find that claim 7 is not anticipated by Frank.
Claims 5 and 8 are not rendered obvious by Frank because these claims
require that the retaining plate have a pair of notches. Based on our finding that
Frank’s thrust plate does not have a single notch, we find no teaching, suggestion,
or motivation that would have led one having ordinary skill in the art to have made
a thrust plate with two notches. As such, claims 5 and 8 are not obvious in view of
Frank.
Claims 2, 4, 6, 9, and 10 are not rendered obvious by Frank and Yordi
because Yordi does not cure the deficiencies of Frank. Claims 2 and 4 depend
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from claim 1. Yordi does not disclose a retaining plate that maintains a camshaft
in position. Similar to our reasoning for Frank, Yordi likewise has a thrust plate
that prevents movement of the camshaft only in one direction. In this case, Yordi’s
thrust plate would not prevent the camshaft from moving into the camshaft
housing. As such, the thrust plate of Yordi does not function as a retaining plate,
as recited in claim 1, because it does not maintain the camshaft in position. As
such, we find that dependent claims 2 and 4 are not obvious in view of Frank and
Yordi.
Claim 6 depends from claim 5, and claims 9 and 10 depend from claim 7.
Yordi does not cure the deficiencies of Frank because Yordi does not disclose a
retaining plate having at least one notch engaging the camshaft. Rather, it appears
from Yordi’s drawings that its thrust plate has an aperture through which the
camshaft extends. As such, we find that dependent claims 6, 9, and 10 are not
obvious in view of Frank and Yordi.

CONCLUSIONS OF LAW
We conclude that the Examiner erred in finding claims 1, 3, and 7
anticipated by Frank and erred in finding claims 2, 4-6, and 8-10 obvious in view
of Frank, taken alone or in combination with Yordi.

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REMAND
We find it necessary to remand this application to the Examiner for
consideration of the following issues:
1) During any further prosecution of the application, the Examiner
should consider whether a rejection of claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by Lambert is appropriate.
2) During any further prosecution of the application, the Examiner
should consider whether a rejection of claims 5 and 7 under 35
U.S.C. § 103(a) as being unpatentable over Lambert and Smith
is appropriate.1
Since we are primarily a Board of review, we address only independent
claims 1, 5, and 7. We leave it to the Examiner to further consider the patentability
of the dependent claims in light of the prior art discussed infra and any other
pertinent prior art.
Lambert discloses an engine comprising an engine block 10 having at least
one cylinder 14, a crankcase and a cam chest (see Figure 2B), the crankcase
separated from the cam chest by a divider wall (portion of wall 10 shown in Figure
2B between camshaft 72 and crankshaft 18) (Lambert, col. 7, ll. 35-46). Lambert
shows in Figure 2B that the camshaft 72 extends from the divider wall 10 into the
cam chest. Lambert further shows a retaining plate 108 secured to the divider 10
by a bolt (Lambert, col. 8, ll. 34-36). Lambert discloses that the retaining plate 108

1 The Examiner referred to Lambert and Smith on page 7 of the Answer as
evidence of prior art thrust plates but did not rely on them as part of a rejection of
the claims.
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engages a groove 112 on the camshaft 72 thereby retaining the camshaft and
maintaining it in position (Lambert, col. 8, ll. 36-37).
Smith discloses a camshaft 10 that is retained in the engine block by means
of a retaining plate (thrust plate 28), which is secured to the engine block by bolts
30 (Smith, col. 2, ll. 35-36). As shown in Figure 1 of Smith, the retaining plate 28
has an indentation cut out of the plate in the form of a notch. The notch appears to
engage a groove machined on camshaft 10, when the retaining plate and camshaft
are assembled.
The retaining plates of Lambert and Smith are both provided to maintain a
camshaft in position within an engine block. The Examiner should determine
whether it would have been obvious to one having ordinary skill in the art at the
time the invention was made to have modified the retaining plate of Lambert with
the notch of Smith to engage the camshaft. The Examiner should also determine
whether it would have been obvious to one having ordinary skill in the art at the
time the invention was made to have modified the engine of Lambert to have two
camshafts and to have further modified the retaining plate of Lambert, as modified
by the notches of Smith, to have two corresponding notches.
We remand this application to the Examiner pursuant to 37 C.F.R.
§ 41.50(a)(1) for further consideration. Accordingly, 37 C.F.R. § 41.50(a)(2)
applies if a supplemental Examiner’s Answer is written in response to this remand
by the Board. Whenever a decision of the Board includes a remand, that decision
shall not be considered final for judicial review. When appropriate, upon
conclusion of proceedings on remand before the examiner, the Board may enter an
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order otherwise making its decision final for judicial review. See 37 C.F.R.
§ 41.50(e).

DECISION
The decision of the Examiner to reject claims 1-10 is reversed and the
application is remanded to the Examiner for further consideration of the claims.

REVERSED AND REMANDED

)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal 2006-3055
Application 10/440,124

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CHRISTOPHER J. McDONALD, ESQ.
HOFFMAN, WASSON & GITLER, PC
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