Bayerische Motoren Werke Aktiengesellschaft

Patent Trials and Appeals Board

Apr 23, 2020

14863737 - (D) (P.T.A.B. Apr. 23, 2020)

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.
14/863,737 09/24/2015 Reinhard MAREK 080437.68047US 3407
23911 7590 04/23/2020
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
NGUYEN, NGOC T
ART UNIT PAPER NUMBER
3799
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte REINHARD MAREK, STEFAN STOECKL, and
TIM ANGERER
____________

Appeal 2018-007577
Application 14/863,737
Technology Center 3700
____________

Before JOHN C. KERINS, JILL D. HILL, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–13, and 15–21 in this
application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
A hearing was held on April 7, 2020. See Transcript (entered Apr. 20,
2020) (“Tr.”).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Bayerische Motoren Werke
Aktiengesellschaft as the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1, 3, and 21 are independent. Claim 1 is illustrative, and it
recites:
1. A method for testing leak-tightness of an internal
combustion engine before initial commencement of operation,
the internal combustion engine being equipped with an
exhaust-gas turbocharger, the method comprising the acts of:
sealing off an exhaust tract of the internal combustion
engine at a location upstream of the exhaust-gas turbocharger;
placing a seal inside a housing of the exhaust-gas
turbocharger at an actuation device of a shut-off device of the
exhaust-gas turbocharger such that no air can escape from the
housing into surroundings of the actuation device;
generating a positive pressure in the exhaust-gas
turbocharger; and
comparing an occurring pressure loss or leakage volume
flow with a predefined pressure loss or leakage volume flow,
wherein
the seal is configured to: i) remain in place during the
testing leak-tightness of the internal combustion engine
before initial commencement of operation of the internal
combustion engine, and ii) be burned-off during the
operation of the internal combustion engine.
Appeal Br. 20 (Claims App.).
REJECTIONS ON APPEAL
Claim 20 is rejected under 35 U.S.C. § 112(a) as lacking written
description in Appellant’s Specification.
Claims 1–6, 8–13, and 15–20 are rejected under 35 U.S.C. § 112(b) as
indefinite.2

2 There is some confusion in the Final Office Action (at 6–8) concerning
which claims are rejected as indefinite. We believe our listing is correct.
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Claims 1–6, 8–11, 13, 15–18, 20, and 21 are rejected under 35 U.S.C.
§ 103 as unpatentable over Igarashi (US 2012/0328416 A1, pub. Dec. 27,
2012) and Palaniyappan (US 2014/0174077 A1, pub. June 26, 2014).3
OPINION
A. Lack of Written Description (Claim 20)
Claim 20 recites a seal that is “configured to be burned-off due to high
temperatures of the exhaust-gas.” Appeal Br. 23 (Claims App.). The
Examiner determines there is a lack of written description support for this
limitation in Appellant’s Specification. Final Act. 5–6, 18–19. The
Examiner acknowledges paragraph 35 of the Specification, but determines it
does not demonstrate possession of the claimed invention because “[i]t is
unclear why” the seal should be burned-off, and it is “unclear how the
seal(s) would be burned off without affecting other components of the
turbocharger.” Id. (emphases added) (citing Spec. ¶¶ 4, 35).
We agree with Appellant’s argument that paragraph 35 of the
Specification is sufficient to satisfy the written description requirement as to
claim 20. Appeal Br. 4–5. Paragraph 35 provides: “The seals 12 and 12a
may be designed so as to be burned off during the operation of the
exhaust-gas turbocharger owing to the high temperatures prevailing there.”
Spec. ¶ 35. The Specification thereby demonstrates possession of the
claimed invention as of the application’s filing date. See Ariad Pharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (test
for sufficiency of a written description is whether an application’s disclosure
“reasonably conveys to those skilled in the art that the inventor had

3 The Examiner has withdrawn this rejection as to claims 12 and 19. Ans. 2.
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possession of the claimed subject matter”). The Examiner’s analyses in
support of the written description rejection are directed to potential
indefiniteness and potential lack of enablement. See Final Act. 5–6, 18–19;
Ans. 2–4. Indefiniteness and enablement are separate issues from written
description, requiring different analyses. See, e.g., Ariad, 598 F.3d at
1342–54. We, therefore, do not sustain the rejection of claim 20 as lacking
written description.
B. Indefiniteness (Claims 1–6, 8–13, and 15–20)
Claims 1 and 5 and Their Dependent Claims: Actuation Device
Independent claim 1 recites placing a seal “at an actuation device of a
shut-off device.” Appeal Br. 20 (Claims App.) (emphasis added). Claim 5
depends from independent claim 3 and, similarly to claim 1, recites a
“shut-off device comprises an actuation device.” Id. at 21 (emphasis added).
The Examiner determines the “actuation device” and the “shut-off
device” recited in claims 1 and 5 are both means-plus-function limitations,
construed pursuant to 35 U.S.C. § 112(f). Final Act. 2–4. The Examiner
further determines the structure disclosed in Appellant’s Specification as
corresponding to the “shut-off device” is a wastegate. Id. at 3–4 (citing
Spec. ¶ 12). Appellant does not challenge these claim constructions on
appeal, so we apply them here. See 37 C.F.R. § 41.37(c)(1)(iv) (“any
arguments or authorities not included in the appeal brief will be refused
consideration by the Board for purposes of the present appeal”).
Next, the Examiner determines the “actuation device” in claims 1
and 5 is indefinite, because Appellant’s Specification “fails to disclose the
corresponding structure, material, or acts for the claimed function” of
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actuating the shut-off device. Final Act. 7–8, 17. The claims depending
from claim 1 or claim 5 are rejected on the same basis. Id. at 7.
Appellant argues the claims are not indefinite in view of Appellant’s
Specification, paragraph 8, which describes an “actuation device.” Appeal
Br. 10. Appellant does not identify, however, what structure(s) are disclosed
in the Specification as corresponding to the claimed function of actuating the
shut-off device. Id.; see also id. at 2 (stating only that the Specification
discloses “an actuation device of a shut-off device (e.g., 3 Figure 1)”).
The Examiner answers that Appellant’s Specification, paragraph 8,
“does not define the structure of the limitation ‘actuation device’ for
performing the recited function of actuation or actuating,” and instead
“merely discloses that the actuation device is used to actuate a shut-off
element of a wastegate.” Ans. 6–7.
Appellant replies that the Specification “expressly disclose[s] that ‘the
shut-off device (wastegate) has an “actuation device” or actuation
mechanism.’” Reply Br. 7 (quoting Spec. ¶ 11). Appellant also contends
the Specification “expressly disclose[s] an actuator 9.” Id. (citing Spec.
¶ 28). Appellant does not, however, identify actuator 9 as the claimed
“actuation device,” or as performing the function of actuating the shut-off
device.
We agree with the Examiner’s conclusion that claims 1 and 5 are each
indefinite because Appellant’s Specification fails to clearly link or associate
disclosed structure(s) with the claimed function of actuating the shut-off
device. “If one employs means-plus-function language in a claim, one must
set forth in the specification an adequate disclosure showing what is meant
by that language.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir.
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1994) (en banc) (emphasis added). Thus: “If an applicant fails to set forth an
adequate disclosure, the applicant has in effect failed to particularly point
out and distinctly claim the invention as required by” 35 U.S.C. §112(b). Id.
“[I]n return for generic claiming ability, the applicant must indicate in the
specification what structure constitutes the means,” because if the
specification is not clear in this regard, “the patentee has not paid the price
[demanded by 35 U.S.C. § 112(f)] but is rather attempting to claim in
functional terms unbounded by any reference to structure in the
specification.” Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948
(Fed. Cir. 2007) (quoting, in part, Medical Instrumentation & Diagnostics
Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003)). In short: “The
duty of a patentee to clearly link or associate structure with the claimed
function is the quid pro quo for allowing the patentee to express the claim in
terms of function under” 35 U.S.C. § 112(f). Medical Instrumentation,
344 F.3d at 1211.
In this case, the claims’ indefiniteness begins with the claims
themselves. Claim 1 recites “an actuation device of a shut-off device.”
Claim 5 recites a “shut-off device comprises an actuation device.” Thus,
both claims require the actuation device to be part of the shut-off device, and
also to actuate the shut-off device. This begs the question: How can a device
shut itself off? Given this lack of clarity in the claim language, it falls to
Appellant’s Specification to be clear in linking or associating specific
structure(s) with performing the claimed function of actuating a shut-off
device.
The Specification indicates flap 4, which opens and shuts an exhaust
gas bypass passage, is actuated by a collection of several components. Spec.
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Figs. 1–2. Actuation starts with actuator 9, which may be “an electric
positioning motor.” Id. at Fig. 1, ¶ 28. Actuator 9 reciprocates positioning
member 10 in longitudinal direction 11. Id. This, in turn, moves linkage 8,
which rotates lever 7 around the axis of pivot spindle 13. Id. at Figs. 1–2,
¶ 28. Lever 7 is connected to one end of pivot spindle 13 (outside of
housing 2), such that rotation of lever 7 also rotates pivot spindle 13. Id.
The other end of pivot spindle 13 (inside of housing 2) is connected to flap
holder 5, which holds flap 4. Id.
Appellant’s Specification, however, fails to provide the requisite link
identifying which of those structure(s) correspond(s) to the claimed
“actuation device,” and which of those structure(s) correspond(s) to the rest
of the claimed “shut-off device” that is actuated by the actuation device. In
opposing the indefiniteness rejection, Appellant cites the Specification at
paragraphs 8, 11, and 28. Those paragraphs discuss an “actuation device,”
but they do not provide a clear link identifying which specific structure(s) in
Appellant’s Specification correspond to the actuation function.
This lack of clarity is compounded by the Specification’s description
of the shut-off device, which is claimed to be actuated by the actuation
device. The Specification indicates “the shut-off device (wastegate) has a
shut-off element (wastegate valve or wastegate flap) which can be actuated
by means of an actuation element of the actuation device.” Spec. ¶ 12.
Further, Figure 1 of the Specification illustrates wastegate valve 3, including
flap 4. Id. ¶ 26. These shut-off device disclosures, like the actuation device
disclosures discussed above, do not provide a clear link identifying which
specific structures in Appellant’s Specification correspond to the shut-off
device that is actuated by the actuation device.
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This is not an idle question, because it drives claim construction under
35 U.S.C. § 112(f), which limits means-plus-function limitations to the
disclosed corresponding structures and equivalents thereof. Thus, we sustain
the rejection of claims 1 and 5, and claims 2, 6, 8–13, and 15–20 depending
therefrom, as indefinite due to the “actuation device” recited in claims 1
and 5.
Claim 3 and its Dependent Claims: Sealing Device Placed In Housing and
Burned-Off during Operation of Turbocharger
Independent claim 3 recites, in part:
3. An exhaust-gas turbocharger . . . wherein a sealing device
is placed inside the housing when the housing is charged with
compressed air, wherein
the sealing device is configured to: i) remain in place during
testing a leak-tightness of the exhaust-gas turbocharger before
initial commencement of operation of the exhaust-gas
turbocharger, and ii) be burned-off during the operation of the
exhaust-gas turbocharger.
Appeal Br. 20–21 (Claims App.) (emphases added).
The Examiner concludes the foregoing limitations of claim 3 are
indefinite, because it is unclear how the sealing device can be both placed
inside the housing when the housing is charged with compressed air, which
includes operation of the turbocharger because the engine exhaust gas that
powers the turbocharger includes compressed air, and (b) be burned-off
during operation of the turbocharger. Final Act. 6–7. The claims depending
from claim 3 are rejected on the same basis. Id. at 7.
Appellant argues the rejection is based on an incorrect claim
construction. Appeal Br. 8–9. According to Appellant, claim 3 requires that
the seal must “remain in place” only during leak-tightness testing
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(configuration (i)), and then the seal is burned off by the heat of the exhaust
gas during operation of the engine and turbocharger (configuration (ii)). Id.
(citing Spec. ¶ 35). When so construed, Appellant asserts claim 3 is not
indefinite. Id.
The Examiner answers that the term “charged,” in the claim phrase
“when the housing is charged with compressed air,” “convey[s] the action of
increasing the air intake pressure of an internal combustion engine via a
turbocharger or supercharger.” Ans. 5. Therefore, the Examiner interprets
claim 3 to require “the sealing device being placed inside the housing when
the exhaust-gas turbocharger is in operation,” receiving exhaust gas from an
engine. Id. The Examiner concludes “it is unclear how the recited seal
would be able to stay in place” when the turbocharger housing is charged by
the compressed air in the exhaust gas of an operating engine, “while being
burned-off during operation of the same exhaust-gas turbocharger.” Id.
(emphases added).
In reply, Appellant maintains that the Examiner’s claim construction
is in error. Reply Br. 4–6.
We agree with Appellant. Claim 3 requires the sealing device to
“remain in place” only as part of configuration (i), which concerns
leak-tightness testing. Claim 3 requires the sealing device to be “placed
inside the [turbocharger] housing,” but does not require the sealing device to
“remain” inside the housing, as part of configuration (ii), which concerns
operation of the turbocharger as it receives exhaust gas from an operating
engine. This construction is consistent with Appellant’s Specification. See
Spec. ¶¶ 2–4, 18–19, 35. Thus, we disagree with the Examiner’s conclusion
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that there is an internal inconsistency within claim 3, and we do not sustain
the rejection of claim 3 and its dependent claims as indefinite on this basis.
Claim 3 and its Dependent Claims: Sealing Device
Independent claim 3 recites “a sealing device.” Appeal Br. 20–21
(Claims App.). The Examiner determines this is a means-plus-function
limitation, to be construed pursuant to 35 U.S.C. § 112(f). Final Act. 2–4.
Appellant does not challenge this claim construction on appeal, so we apply
it here. See 37 C.F.R. § 41.37(c)(1)(iv).
Next, the Examiner determines the “sealing device” is indefinite,
because Appellant’s Specification “fails to disclose the corresponding
structure, material, or acts for the claimed function” of sealing. Final
Act. 7–8, 17. The claims depending from claim 3 are rejected on the same
basis. Id. at 7.
Appellant argues the claims are not indefinite in view of Appellant’s
Specification, paragraph 31, which describes various “sealing” structures.
Appeal Br. 10; see also id. at 3 (stating the Specification discloses “a sealing
device (e.g., 12, 12a Figures 1 and 2)”); Reply Br. 7 (discussing O-rings 12
and 12a in Appellant’s Specification) (citing Spec. ¶ 34).
The Examiner answers that Appellant’s Specification, paragraph 31,
“provides examples of a ‘seal’ whereas the claim limitation in question
recites a ‘sealing device.’” Ans. 7–8. The Examiner further determines
“[n]either the claims nor the Specification makes any correlation between
the described seal and the recited sealing device.” Id. at 8.
We do not agree with the Examiner’s conclusion that Appellant’s
Specification fails to clearly link or associate disclosed structure(s) to the
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claimed function of sealing. We find, instead, that Appellant’s Specification
clearly links the claimed sealing function with several different structures,
namely: a foil, an O-ring, and an elastomer disk. Spec. ¶¶ 11, 31. Thus, we
do not sustain the rejection of claim 3 and its dependent claims as indefinite
due to the “sealing device” recited in claim 3.
Claim 4
Claim 4 recites: “The exhaust-gas turbocharger according to claim 3,
wherein the exhaust-gas turbocharger is air-tight when the housing is
charged with compressed air.” Appeal Br. 21 (Claims App.). The Examiner
determines this claim limitation is indefinite. Final Act. 7, 18. The
Examiner particularly concludes “it is unclear how the exhaust-gas
turbocharger would be able to be air-tight when compressed air is being sent
to its housing or the housing of one of its constituents.” Id. at 7. “In other
words, when compressed air is able to enter the turbocharger, it is not
air-tight.” Id. at 7.
Appellant argues the rejection is based on an incorrect claim
construction. Appeal Br. 9–10. According to Appellant, the Examiner errs
in construing “air-tight” to mean “not allowing air to enter,” because a
person of ordinary skill in the art would understand “air-tight” to mean “not
allowing air to escape.” Id. (emphases added). Appellant contends the
Examiner’s claim interpretation is not consistent with Appellant’s
Specification, but Appellant does not cite any disclosure(s) from the
Specification to support this contention. Id.
In answer, the Examiner maintains claim 4 is indefinite, because it
recites charging the housing with compressed air which requires a pathway
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for air to enter the housing, which is inconsistent with the housing being
“air-tight.” Ans. 6.
In reply, Appellant continues to assert the Examiner misunderstands
the scope of the term “air-tight” in claim 4, which Appellant contends means
“not allowing air to escape or pass through.” Reply Br. 6–7.
During the hearing, Appellant’s counsel argued one might determine
the air-tightness of a turbocharger by supplying pressurized air to the
turbocharger via a one-way air valve, which would allow air to enter the
housing but not exit the housing. Tr. 10:19–13:24 (treating the caption page
as page 1). This position was asserted for the first time during the hearing,
and Appellant’s counsel did not cite any disclosures in Appellant’s
Specification to support the argument. We have been unable to find such
support.
We instead agree with the Examiner’s conclusion that claim 4 is
indefinite in reciting that the turbocharger is air-tight when the turbocharger
housing is charged with compressed air. Claim 4 depends from claim 3,
which requires the turbocharger housing to have “an exhaust-gas inlet and an
exhaust-gas outlet.” Appeal Br. 20–21 (Claims App.). Appellant’s
Specification explains that the inlet and the outlet allow exhaust gas to pass
through the turbocharger and thereby drive rotation of a turbine wheel,
during normal engine operation. Spec. ¶¶ 2, 9, 25. In other words, during
normal engine operation, exhaust gas must pass through (that is, enter and
then exit) the turbocharger, so the turbocharger is not “air-tight” during
normal engine operation.
The only description we can find in Appellant’s Specification relating
to air tightness is where the Specification discloses that the interface
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between a wastegate actuation device and the turbocharger housing should
be “sealed off in air-tight fashion at least during the leak-tightness test,” so
“no air can escape from the housing of the exhaust-gas turbocharger via the
actuation device.” Spec. ¶ 8 (emphases added); id. ¶ 35. In this way, the
leak-tightness of the “oil space” and the “water space” of the engine may be
tested for air leaks, without having to account for the “disruptive effect”
caused by air leaking out of the turbocharger via the actuation device
interface with the turbocharger housing. Id. ¶¶ 3–4. This testing process,
however, requires compressed air to pass through (that is, enter and then
exit) the turbocharger via the inlet and the outlet, so that the oil space and
the water space of the engine may be tested for leaks. Id. ¶¶ 3–4, 6, 8, 10.
In short, as described in the Specification, the turbocharger is not “air-tight”
even during leak-tightness testing of the engine.
Thus, according to Appellant’s Specification, it is intended for
exhaust gas (during normal engine operation) or compressed air (during
leak-tightness testing) to pass through the turbocharger by entering via an
inlet and exiting via an outlet. In other words, the turbocharger must not be
air-tight, if it is to operate and be tested as described in the Specification.
We therefore determine the scope of claim 4 is unclear in requiring the
turbocharger to be air-tight, and we sustain the rejection of claim 4 as
indefinite. See In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (stating
“the statutory language of ‘particular[ity]’ and ‘distinct[ness]’” in 35 U.S.C.
§ 112 ¶ 2 requires a claim “to be cast in clear—as opposed to ambiguous,
vague, indefinite—terms”).
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C. Obviousness over Igarashi and Palaniyappan
(Claims 1–6, 8–11, 13, 15–18, 20, and 21)
Each of the three independent claims on appeal recites a seal or a
sealing device that is configured to “be burned-off during the operation of”
the engine or the turbocharger. Appeal Br. 20 (claim 1), 20–21 (claim 3), 24
(claim 21) (Claims App.).
The Examiner cites Igarashi as disclosing seal 105, and determines
“Igarashi is silent regarding the seal being configured” to be burned-off as
claimed. Final Act. 9–10. The Examiner concludes it would have been
obvious that “usage of the seal of Igarashi in high-temperature operating
conditions over time would cause the seal to burn as such is known in the
prior art.” Id. at 10 (emphasis added) (citing Palaniyappan ¶ 47). The
Answer explains that the rejection does “not use the teachings of
Palaniyappan to modify the seal of Igarashi.” Ans. 9. Instead, the rejection
cites Palaniyappan as “evidence to demonstrate that it is known in the prior
art of exhaust-gas turbochargers that during engine operation components of
the turbocharger would deteriorate due to high temperatures and friction,
among other factors,” “contribut[ing] to wear of components of an
exhaust-gas turbocharger including sealing elements.” Id. (emphases
added).
We agree with Appellant’s argument that the Examiner errs in relying
on Palaniyappan to establish that Igarashi’s seal 150 will burn-off during
operation of Igarashi’s engine or turbocharger. See Appeal Br. 11–12; Reply
Br. 7–9. The cited disclosure in Palaniyappan provides:
As an example, during operational use, one or more
clearances between various components (e.g., plug, arm, shaft,
bore, bushing, etc.) may change. Forces that can cause such
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change include aerodynamic excitation, high temperatures,
temperature cycling (e.g., temperatures <-20 degrees C. to >1000
degrees C.), chemical attack, friction, deterioration of materials,
etc. For at least the foregoing reasons, it may be difficult to
maintain effective sealing of a wastegate opening over the
lifetime of an exhaust turbine assembly. As to temperature,
problems at high temperatures generally include wear and loss of
function and consequently leakage, lack of controllability or a
combination of leakage and uncontrollability.
Palaniyappan ¶ 47. At best, this disclosure indicates Igarashi’s seal 150 will
deteriorate or become worn over time, thereby changing the clearance
between seal 150 and its surrounding structures and making it difficult to
maintain effective sealing. This disclosure does not indicate that the
deterioration or wear corresponds to a burn-off of seal 150, which is
expressly recited in each independent claim. For example, the described
“high temperatures” can cause deterioration or wear of the seal in many
different ways (e.g., melting, breaking, etc.), only one of which is
burning-off of the seal.
Further, even if we were to find a disclosure in Palaniyappan’s
paragraph 47 that Palaniyappan’s seal is burned-off during turbocharger
operation, the Examiner has not established a rational relationship between
Palaniyappan’s turbocharger seal and Igarashi’s turbocharger seal that would
necessarily indicate the latter would be burned-off as well. In this regard,
the obviousness rejection relies on Palaniyappan as evidence seeking to
establish that Igarashi’s seal will inherently burn-off, not as a basis for
modifying Igarashi’s seal to burn-off. See Final Act. 10; Ans. 9. An
inherent disclosure, however, is established only if the subject matter is
“necessarily present” in the reference; “probabilities or possibilities” are not
sufficient. In re Montgomery, 677 F.3d 1375, 1379–80 (Fed. Cir. 2012).
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The Examiner’s additional consideration of the dependent claims does
not cure the foregoing deficiencies of Igarashi and Palaniyappan in relation
to the independent claims. See Final Act. 10–11, 12–16. Thus, we do not
sustain the rejection of claims 1–6, 8–11, 13, 15–18, 20, and 21 as having
been obvious over Igarashi and Palaniyappan.
CONCLUSION
In summary, we reverse the written description rejection (claim 20),
we affirm the indefiniteness rejections as to “actuation device” (claims 1
and 5, and their dependent claims) and providing an air-tight turbocharger
(claim 4), we reverse the indefiniteness rejections as to internal
inconsistency and “sealing device” (claim 3 and its dependent claims), and
we reverse the obviousness rejection (claims 1–6, 8–11, 13, 15–18, 20,
and 21), as summarized in the following table:
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
20 112(a) Written Description 20
3–6, 8–13,
15–20
112(b) Indefiniteness 4 3, 5, 6, 8–13,
15–20
1–6, 8–13,
15–20
112(f)/
112(b)
112(f) Indefiniteness 1, 2, 5, 6,
8–13, 15–20
3, 4
1–6, 8–11,
13, 15–18,
20, 21
103 Igarashi, Palaniyappan 1–6, 8–11,
13, 15–18,
20, 21
Overall
Outcome
1, 2, 4–6,
8–13, 15–20
3, 21
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART