Ex Parte Becker et al

Patent Trial and Appeal Board

Jun 30, 2014

12466443 (P.T.A.B. Jun. 30, 2014)

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.
12/466,443 05/15/2009 Lee J. Becker 81192799 5889
28866 7590 06/30/2014
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
COUGHLIN, ANDREW J
ART UNIT PAPER NUMBER
2889
MAIL DATE DELIVERY MODE
06/30/2014 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 PATENT TRIAL
AND APPEAL BOARD

____________

Ex parte LEE J. BECKER, CHARLES M. ROBECK, MARK K. QUINN,
ERIC G. ROBERTSON, JOHN W. FALLU,
MARK R. DOBSON, and JASON K. MAZUR
__________

Appeal 2012-009204
Application 12/466,4431
Technology Center 2800
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
DONNA M. PRAISS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-3, 6-10, 13, and 15-18. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).

1 According to Appellants, the real party in interest is Ford Motor Company.
(App. Br. 1).
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We AFFIRM-IN-PART.
Appellants’ invention is directed to a nozzle for boosting pump inlet
pressure using excess recirculation oil flow in an automatic transmission
(Spec. 1: 7-9).
Claims 1, 5, and 15 are illustrative:
1. A pump assembly comprising:
a housing including a conical inner surface and an excess flow
passage;
a spout directing a fluid stream into the housing;
an insert secured to the housing, including a cylindrical outer surface
and an end surface forming an edge at said outer surface, the edge spaced
from said inner surface and producing therebetween an [sic] nozzle directing
a first fluid stream from the excess flow passage toward said fluid stream.

5. The pump assembly of claim 1, wherein the insert is secured to the
housing by bonding.

15. A pump assembly comprising:
a housing including a conical inner surface and an excess flow
passage;
an insert secured to the housing, including a cylindrical outer surface
and an end surface forming an edge at said outer surface, the edge spaced
from said inner surface and producing therebetween an [sic] nozzle directing
a fluid stream from the excess flow passage toward a pump.

Appellants appeal the following rejections:
1. Claims 1-3, 6, 7, and 15-17 are rejected under 35 U.S.C. § 102(b), as
being unpatentable over Schultz et al. (US 2006/0018767 A1,
published Jan. 26, 2006).
2. Claims 8-10, 13, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schultz in view of Braun et al. (US
2007/0217922 A1, published Sept. 20, 2007).
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REJECTION (1)
Appellants argue each of the claims separately (App. Br. 5-14).
Claims 1 and 15
ISSUE
Did the Examiner reversibly err in finding that Schultz discloses “an insert
secured to the housing, including a cylindrical outer surface and an end
surface forming an edge at said outer surface” as recited in claims 1 and 15?
We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
Appellants argue that Schultz fails to teach an “end surface” forming
an edge at the cylindrical outer surface (App. Br. 6-7; 10-13). Appellants
contend that Schultz’s exterior surface 58 is not the end surface, but rather
the small horizontal portion at the very end of the filter nozzle 100 adjacent
exterior surface 58 as shown in Schultz’s Figure 2 is the end surface (Reply
Br. 2, 5-6; App. Br. 7, 12). Based upon this interpretation, Appellants argue
that the end surface and the cylindrical outer surface 30 do not meet to form
an edge at the cylindrical outer surface. (Reply Br. 2, 5-6; App. Br. 7, 12.)
Appellants contend that the Examiner’s finding that an edge is formed
between the end surface 58 and the cylindrical outer surface 30 is mistaken
because the edge would be spaced away from the end of the filter nozzle 100
(App. Br. 7, 12). Appellants contend that a person of ordinary skill in the art
would have interpreted “end surface” as a surface located at the end of an
insert (Reply Br. 2, 6).
We begin our analysis by construing the claim term “end surface.”
The Specification does not provide a formal definition of “end surface.” We
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find that Appellants describe a preferred embodiment where the end surface
86 is “preferably” flat and formed with a circular cross section (Spec. 4: 26-
29). Appellants do not limit how far the surface may extend from an end of
the nozzle and still be considered an “end surface.” In other words, in
Appellants non-preferred embodiments where the end surface 86 is not flat,
such as when it is angled or beveled, for example, the end surface may
extend a distance along the length of the nozzle.
In light of the silence of the Specification on the particulars of the end
surface, the broadest reasonable interpretation of end surface is a surface
located at an end of an object, which may include any particular shape and
may extend a distance along the length of the object.
In light of this claim construction, we find that the Examiner’s
annotation of the Examiner’s rendition of a close-up of the end of the filter
nozzle 100 in Schultz’s Figure 2 shows that an edge may be formed between
Schultz’s outlet recess 30 (i.e., cylindrical outer surface) and the exterior
surface 58 (i.e., end surface) (Ans. 12). The edge is formed so that between
the edge and the conical inner surface of the housing a nozzle passage 64 is
formed. We note that the nozzle passage 64 is between the edge and the
conical shaped interior surface 60.
Appellants further argue that Schultz discloses a filter housing 24 with
an outlet 28 corresponding to the claimed spout, but Schultz does not
disclose an insert (Reply Br. 2, 6; App. Br. 7, 12). However, we agree with
the Examiner that Schultz’s filter nozzle 100 constitutes an insert because it
is inserted into the pump housing 12 (Ans. 10-11). Appellants do not
contest this finding of the Examiner (Reply Br. generally).

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Claims 2 and 16
Appellants argue that Schultz describes nothing regarding the
relationship of outlet recess 30 (i.e., cylindrical outer surface) and the
interior surface 60 (i.e., conical interior surface) (App. Br. 8, 13).
Appellants concede that over a small portion of the outlet recess 30 on the
left-hand side of Schultz’s Figure 2, the distance between outlet recess 30
and interior surface 60 decreases in the direction of the pump outlet as
depicted by the Examiner on page 14 of the Answer, but Appellants contend
that it is unknown how the cross-sectional area will vary over that distance.
Id. Appellants contend that the right-hand side of Schultz’s Figure 2 does
not show any decrease in distance between outlet recess 30 and interior
surface 60. Id.
The Examiner responds that over the portion conceded to by
Appellants as showing a decrease in distance between the outlet recess 30
and interior surface 60, the cross section area must decrease as it is
proportional to the distance (Ans. 14, 20-21). Appellants do not contest this
finding of the Examiner (Reply Br. 3).
Rather, Appellants contend that the cross-sectional area increases as
distance from the pump inlet decreases as shown by the right-hand side of
Schultz’s Figure 2 (Reply Br. 3). However, claims 2 and 16 do not require
that the entire cross-sectional area of the space between the conical surface
and the cylindrical outer surface have a cross sectional area that decreases as
distance from the pump inlet decreases. As we interpret the plain language
of the claims, as long as the there is some portion of the cross sectional area
that decreases as distance from the pump inlet decreases, the claim is
satisfied. As conceded by Appellants, the subject matter of claims 2 and 16
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is satisfied albeit for a short distance as shown on the left-hand side of
Schultz’s Figure 2. That teaching in our view is sufficient to anticipate the
subject matter of claims 2 and 16.

Claim 3
Appellants argue that the Examiner is merely guessing that the insert
is secured to the housing by a press fit (App. Br. 9; Reply Br. 3).
The Examiner finds that “press fit” is a broad term that only requires
two parts be pushed together with some sort of friction between them which
acts toward holding the fit together (Ans. 15). The Examiner finds that
Schultz’s Figure 2 shows that the insert (i.e., nozzle filter 100) is in contact
with the housing in a manner which results in some sort of frictional fit and
thus satisfies the claim requirement (Ans. 15).
The preponderance of the evidence favors Appellants’ argument of
novelty. The Examiner has not adequately explained why Schultz’s Figure 2
depicts a press fit arrangement. All that Figure 2 depicts is the nozzle filter
attached to the pump housing, but is not clear whether the structure of the
nozzle filter is made to be press-fitted. Rather, Schultz teaches preferably to
use a twist-lock feature in the apparatus (para. [0016]). The Examiner
makes no findings regarding whether the twist-lock feature may be
considered a press fit.
On this record, we find that the Examiner has not established that the
subject matter of claim 3 is anticipated by Schultz.

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Claims 6 and 17
Appellants contend that Schultz fails to teach that the end surface
intersects the cylindrical outer surface of an insert and forms a circular outer
edge (App. Br. 9-10, 14). Appellants contend that if the outlet recess 30
(i.e., cylindrical outer surface) intersects with exterior surface 58 (i.e., end
surface), the edge formed would be an interior corner at the upper end of the
outlet recess 30 (App. Br. 9, 14). Appellants make similar arguments as
were made regarding claim 1 with regard to why exterior surface 58 should
not be considered an end surface (App. Br. 9-10 and 14).
The Examiner responds that Schultz describes the nozzle as being
annular and that the edge formed at the intersection of the outer cylindrical
surface 30 and exterior surface 58 would be on the outer surface (Ans. 16,
21).
The preponderance of the evidence favors the Examiner’s finding of
anticipation. For reasons explained with regard to the rejection of claim 1,
we agree with the Examiner that the intersection of exterior surface 58 and
outlet recess 30 constitutes an edge. The Examiner’s finding that the nozzle
structure is annular and the edge is located on the outer surface so that it may
be considered a circular outer edge have not been specifically challenged by
Appellants. The arguments on pages 4 and 7 of the Reply Brief merely
rehash previously considered and unpersuasive arguments regarding what
constitutes an “end surface” in Schultz.
On this record, we affirm the Examiner’s § 102 rejection of claims 1,
2, 6, 7, and 15-17 over Schultz. We reverse the Examiner’s § 102 rejection
of claim 3 over Schultz.

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REJECTION (2): 35 U.S.C. § 103
Independent Claim 8 and dependent claim 18
Appellants argue that the Examiner engaged in hindsight to combine
the teachings in Braun to use nubs to position a nozzle with Schultz’s nozzle
(App. Br. 17, 20, Reply Br. 9). Appellants contend that Schultz’s nozzle
filter 100 is positioned correctly without nubs and the use of nubs would be
redundant such that there would have been no reason to modify Schultz with
Braun’s teachings. Id.
Contrary to Appellants’ arguments, the Examiner made specific
findings that Braun teaches using nubs to provide a stable communication
between the first partial section which contains the nozzle and the mixing
conduit as well as to provide good flow guidance in paragraph 10 of the
publication (Ans. 8, 10, 25, 29). The modification proposed by the
Examiner is based upon the explicit teachings of the reference, not hindsight.
Appellants’ arguments have not shown error in the Examiner’s stated reason
for the modification.
Appellants advance the same arguments against Schultz as were made
regarding claim 1 (App. Br. 14-17). These arguments are unpersuasive for
the same reasons discussed supra.
Appellants make the same arguments with regard to claims 9, 10, and
13 as were made regarding claims 2, 3, and 6 supra with respect to Schultz’s
disclosure. We are unpersuaded regarding the arguments of claims 9 and 13
for the same reasons we were unpersuaded regarding the teachings of
Schultz with regard to claims 2 and 6.
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We are persuaded regarding the press-fit limitation of claim 10 for the
same reason the Examiner failed to establish Schultz teaches such a press-fit
feature or explain why such press fit structure would have been obvious.
On this record, we affirm the Examiner’s § 103 rejection of claims 8,
9, 13, and 18 over Schultz in view of Braun. We reverse the Examiner’s
§ 103 rejection of claim 10 over Schultz in view of Braun.
DECISION
The Examiner’s decision is affirmed-in-part.

ORDER
AFFIRMED-IN-PART

cdc