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.
11/150,864 06/10/2005 Joseph H. Alexander GP-306554-NAPD-LCH 3442
81466 7590 07/26/2012
MacMillan, Sobanski & Todd, LLC
One Maritime Plaza
720 Water Street
5th Floor
Toledo, OH 43604
EXAMINER
KERSHTEYN, IGOR
ART UNIT PAPER NUMBER
3745
MAIL DATE DELIVERY MODE
07/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOSEPH H. ALEXANDER,
JEFFREY R. TATROW, and PAUL R. MUELLER
____________
Appeal 2010-003388
Application 11/150,864
Technology Center 3700
____________
Before STEFAN STAICOVICI, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.
SPAHN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph H. Alexander et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 1, 2, 4-11, and 13-20.
Appellants cancelled claims 3 and 12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2010-003388
Application 11/150,864
2
The Claimed Subject Matter
The claimed subject matter relates to a vehicle having an engine-
mounted fan shroud. Spec. 1, para. [0001]. Claims 1, 10 and 19 are
independent, and claim 1 reproduced below, with emphasis added, is
illustrative of the subject matter on appeal.
1. An engine mounted fan shroud for use in a
vehicle comprising:
a shroud body, adapted to be supported by a
vehicle engine, including an outer ring made of a
first material having a first stiffness; and
a bodyside seal extending from and being
integral with the outer ring, with the bodyside seal
being made of a second material having a second
stiffness that is less than the first stiffness.
The Rejections
The following Examiner’s rejections are before us for review.
(1). Claims 1, 2, 7, 9-11, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yamaguchi (US 4,774,911, issued Oct. 4,
1988).
(2). Claims 1, 2, 5-7, 9-11, 14-17, 19, and 20 are rejected under 35
U.S.C. § 103(a) as unpatentable over Knopf (US 4,514,140, issued Apr. 30,
1985).
(3). Claims 4 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Knopf and Wakley (US 5,498,130, issued Mar. 12, 1996).
(4). Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Knopf and Barney (US 6,036,444, issued Mar. 14, 2000).
(5). Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Knopf and Walton (US 3,144,859, issued Aug. 18, 1964).
Appeal 2010-003388
Application 11/150,864
3
OPINION
Rejection (1) – Obviousness based on Yamaguchi
The Examiner finds that Yamaguchi substantially discloses the subject
matter of independent claims 1 and 10, except that Yamaguchi fails to
disclose “a bodyside seal being integral with the outer ring.” Ans. 3. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art “to make a bodyside seal integral with the outer ring because
making parts integral normally require[s] only ordinary skill in the art and
hence[, is] considered [a] routine expedient.” Ans. 4.
Appellants assert that the Specification specifically defines the word
integral, as follows:
[t]he term “integral” as used herein means a part
with portions thereof chemically fused together for
a permanent attachment that forms a single,
monolithic piece – not two separate pieces that are
later mated or secured together with adhesive, or
fasteners or some other means of mechanical
attachment of separate pieces.
App. Br. 4 (citing to Spec. 5, para. [0017]). In view of the express definition
of the word integral in the Specification, Appellants contend that
“Yamaguchi does not teach that a bodyside seal (having a second stiffness
less than a first stiffness) is ‘integral’ with an outer ring (having the first
stiffness material) of a shroud body.” App. Br. 5. Appellants also contend
that the Examiner’s “general statement that something ‘normally’ requires
only ordinary skill in the art does not indicate at all when ‘making parts
integral’ is and when it is not obvious – especially when, in the past making
parts integral has been found sometimes to be obvious and sometimes to be
unobvious,” and thus, the Examiner’s “statement, without more, is merely
Appeal 2010-003388
Application 11/150,864
4
conclusory and does not indicate at all how the claim in the present case is
obvious over the cited reference.” Id.
We are persuaded by Appellants contentions. Yamaguchi discloses
“[a] cooling fan shroud [1] mounted on an engine vehicle comprises an
engine mounting [13], a radiator mounting [15] and a flexible member [14]
made of rubber bellows and connecting the engine mounting [13] and the
radiator mounting [15].” Yamaguchi, Abstract, col. 3, ll. 33-36, and Fig. 1.
Yamaguchi does not explicitly discuss how the end of the flexible member
or rubber bellows 14 (bodyside seal) are attached or connected to the end of
the engine mounting 13 (outer ring). There is no indication that the end of
the flexible member or rubber bellows 14 (bodyside seal) is chemically
fused to the end of the engine mounting 13 (outer ring) to form a single,
monolithic piece. We note that where an explicit definition is provided by
the Appellants for a term, the definition will control interpretation of the
term as it is used in the claim. See Toro Co. v. White Consolidated
Industries Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999). Here, the
Specification specifically defines the word “integral” to include chemical
fusion for permanent attachment forming a single, monolithic piece. Spec.
5, para. [0017]. Thus, although Yamaguchi’s Figure 1 appears to depict that
the end of the flexible member or rubber bellows 14 (bodyside seal) is
somehow attached or connected to the end of the engine mounting 13 (outer
ring) in order to meet the ordinary and customary definition of the word
integral,1 there is no disclosure that this attachment or connection is a
1 The ordinary and customary meaning of the word integral is “formed as a
unit with another part
.” MERRIAM WEBSTER’S
COLLEGIATE® DICTIONARY, TENTH EDITION 1997.
Appeal 2010-003388
Application 11/150,864
5
chemical fusion for a permanent attachment forming a single, monolithic
piece in order to meet the Specification’s explicit definition.
Recognizing Yamaguchi’s deficiency, the Examiner then proposes to
modify Yamaguchi “to make a bodyside seal integral with the outer ring.”
See Ans. 4. However, since Yamaguchi’s Figure 1 appears to depict that
one end of the flexible member or rubber bellows 14 (bodyside seal) is
attached or connected to an end of the engine mounting 13 (outer ring), there
does not appear to be any reason why one of ordinary skill in the art would
modify Yamaguchi’s flexible member or rubber bellows 14 (bodyside seal)
and engine mounting 13 (outer ring) to be chemically fused together to form
a single, monolithic piece. Indeed, the Examiner does not point to anything
that would teach one of ordinary skill in the art to chemically fuse the
flexible member or rubber bellows 14 (bodyside seal) and the engine
mounting 13 (outer ring) into a single, monolithic piece in order to meet the
claim term integral as interpreted in light of the Specification.
However, in response to Appellants’ argument, the Examiner refers to
In re Larson, 340 F.2d 965, 968 (CCPA 1965) presumably serving as a legal
precedent as a source of supporting rationale for the proposition that making
formerly separate parts integral is a common practice which the court has
held normally requires only ordinary skill in the art and hence, is considered
a routine expedient “if the facts in a prior legal decision are sufficiently
similar to those in the application under examination”2. See Ans. 8. We are
not persuaded by the Examiner’s reliance on Larson because we note that
when determining whether a claim is obvious, an Examiner must make “a
2 See Manual of Patent Examining Procedure (MPEP) §§ 2144.04 and
2144.04(V)(B).
Appeal 2010-003388
Application 11/150,864
6
searching comparison of the claimed invention - including all its limitations
- with the teachings of the prior art.” See In re Ochiai, 71 F.3d 1565, 1572
(Fed. Cir. 1995). Reliance solely on a per se rule of obviousness is improper
( Id.) because “[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).
Moreover, the Examiner reliance on Larson is misplaced because the
Examiner's analysis substitutes a per se rule of obviousness, namely, that
making formerly separate parts integral as a general proposition is not a
patentable distinction, for an apparent reason to modify Yamaguchi
underpinned by a careful consideration of the facts. As the Examiner has
provided no comparison between the facts of Larson and the facts of the
underlying application to explain how the holding of Larson applies to the
claims on appeal, we are not persuaded that the Examiner's proposed reason
why making Yamaguchi’s flexible member or rubber bellows 14 (bodyside
seal) and engine mounting 13 (outer ring) integral by chemically fusing
together those parts to form a single, monolithic piece is not a patentable
distinction.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 10, and claims 2, 7, 9, 11, 16, and 17 dependent
thereon, under 35 U.S.C. § 103(a) as unpatentable over Yamaguchi.
Rejection (2) – Obviousness based on Knopf
The Examiner finds that Knopf discloses the subject matter of
independent claim 1, 10, and 19 substantially as claimed, except that Knopf
Appeal 2010-003388
Application 11/150,864
7
fails to disclose “a bodyside seal being integral with the outer ring.” Ans. 4.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art “to make a bodyside seal integral with the outer ring because
making parts integral normally require[s] only ordinary skill in the art and
hence[, is] considered [a] routine expedient.” Ans. 5.
Appellants presents similar contentions with respect to the Examiner’s
obviousness rejection based on Knopf as those discussed supra with respect
to Yamaguchi. See App. Br. 6.
Knopf discloses axial fan 1 including an impeller 2 with fan blades 4
and an air duct housing 3. Knopf, col. 2, ll. 50-52 and Fig. 1. The air duct
housing 3 is rigidly connected to a cooling radiator 8 on one side and on the
other side terminates in a fan guard 10 which is fastened to the front part of
the air duct housing 3 by means of a flexible rubber collar 12. Knopf, col. 2,
ll. 55-62 and Fig. 1.
In view of the above-discussed disclosure of Knopf and for the same
reasons as discussed supra with respect to Yamaguchi, we find that the
Examiner has substituted a per se rule of obviousness for an apparent reason
to modify Knopf underpinned by a careful consideration of the facts. As
such, we are not persuaded that one of ordinary skill in the art would modify
Knopf to make the flexible rubber collar 12 (bodyside seal) and the end of
the fan guard 10 (outer ring) integral by chemically fusing to form a single,
monolithic piece.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 10, and 19, and claims 2, 5-7, 9, 11, 14-17, and 20
dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Knopf.
Appeal 2010-003388
Application 11/150,864
8
Rejection (3)-(5) – Obviousness based on
Knopf and Wakley, Knopf and Barney, and Knopf and Walton, respectively
None of Wakley, Barney and Walton cures the deficiency of Knopf as
discussed supra. Accordingly, we do not sustain the Examiner’s rejections
of: claims 4 and 13 under 35 U.S.C. § 103(a) as unpatentable over Knopf
and Wakley, claim 8 under 35 U.S.C. § 103(a) as unpatentable over Knopf
and Barney, and claim 18 under 35 U.S.C. § 103(a) as unpatentable over
Knopf and Walton.
DECISION
We reverse the Examiner’s decision to reject claims 1, 2, 4-11, and
13-20.
REVERSED
Klh
