Ex Parte Cornelio

Patent Trial and Appeal Board

Sep 27, 2018

13756839 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/756,839 02/01/2013 Anand Cornelio
93136 7590 10/01/2018
HONEYWELL/PANGRLE
Patent Services
115 Tabor Road
P.O. Box 377
MORRIS PLAINS, NJ 07950
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H0013959DIV 8939
EXAMINER
ADJAGBE, MAXIME M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
patentservices-us@honeywell.com
brian@ppbdlaw.com
sherry. vallabh@honeywell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANAND CORNELIO
Appeal2017-009571
Application 13/756,839
Technology Center 3700
Before LINDA E. HORNER, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-009571
Application 13/756,839
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision, as set forth in the Final Office Action dated June 17,
2016 ("Final Act."), rejecting claims 1-5 and 19-25. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to a clamp for clamping a bearing cartridge
and shaft subassembly of a turbocharger. Claims 1 and 22 are the
independent claims on appeal. Claim 1, reproduced below with disputed
limitations italicized for emphasis, is illustrative of the claimed subject
matter:
1. A clamp for clamping a bearing cartridge and shaft
subassembly of a turbocharger, the clamp comprising:
an upper portion;
a lower portion wherein the upper portion and the lower
portion form a bore having a bore diameter sized to clamp a
bearing cartridge; and
a fluid passage defined in part by the upper portion, the
lower portion or the upper portion and the lower portion wherein
the fluid passage comprises an opening to the bore.
Honeywell International Inc. ("Appellant") is the applicant pursuant
to 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal
Brief, dated January 2, 2017 ("Appeal Br."), at 2.
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Application 13/756,839
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Frister
Woollenweber
us 4,253,031
US 2004/0200215 Al
REJECTIONS
The Examiner made the following rejections:
Feb.24, 1981
Oct. 14, 2004
1. Claim 20 stands rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite.
2. Claims 1-5 and 19-25 stand rejected under 35 U.S.C. § I02(b) as
being anticipated by Woollenweber.
2. Claims 1 and 19 stand rejected under 35 U.S.C. § I02(b) as being
anticipated by Frister.
Appellant seeks our review of these rejections.
DISCUSSION
Rejection 1: Claim 20 as Being Indefinite
Claim 1 recites "a bore diameter sized to clamp a bearing cartridge."
Claim 20, which depends from claim 1, also recites "a bearing cartridge."
The Examiner states that claim 20 is indefinite because it is unclear
whether claim 20 is referring to the bearing cartridge recited in claim 1.
Final Act. 3. In response to the Examiner's rejection, Appellant states "a
bearing cartridge is not claimed in claim 1 nor in claim 20." Appeal Br. 6;
see Reply Brief, dated July 5, 2017 ("Reply Br."), at 10.
We agree with the Examiner that it is unclear whether claim 20 refers
to the same bearing cartridge recited in claim 1 or a different bearing
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Application 13/756,839
cartridge. Because both interpretations are plausible, the claim is indefinite.
Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008) (precedential) ("if
a claim is amenable to two or more plausible claim constructions, the
US PTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.") (cited
with approval in Ex parte McAward, 2017 WL 3947829 (PTAB Aug. 23,
2017) (precedential), at *2, n.3). Thus, the rejection of claim 20 is sustained.
Claim 1
Rejection 2: Claims 1-5 and 19-25
as Anticipated By Woollenweber
The Examiner finds that W oollenweber discloses all of the limitations
recited in claim 1. Final Act. 4--5. The Examiner's annotated Figure 1 of
W oollenweber is presented below:
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Application 13/756,839
Id. at 7. The Examiner's annotated Figure 1 is "a cross-sectional view taken
along a plane through the axis of rotation of a turbocharger." Woollenweber
,r 21. The Examiner annotated Figure 1 to illustrate the upper portion and
lower portion of the recited clamp. Final Act. 3. For ease of reference, we
have colored the upper portion (green), lower portion (blue), and bearing
cartridge 31 (red).
Appellant asserts that the Examiner's rejection is erroneous for
several reasons. First, Appellant asserts that the Examiner misconstrues the
definition of clamp and housing as used in the Specification, and
Woollenweber's housing 14 is not the upper and lower portions of a clamp
as recited in claim 1. Appeal Br. 7.
We must first construe the meaning of "clamp" as recited in claim 1.
Appellant does not identify any portion of the Specification that explicitly
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defines the term "clamp" used in the claims, but asserts that, according to
one dictionary, the "plain meaning" of "clamp" is "a device that holds or
presses parts tightly together" and "to fasten with or as if with a clamp
". Appeal Br. 12 (citing Merriam-Webster
Online Dictionary, http://www.merriamwebster.com/dictionary/clamp ).
Appellant asserts that this plain meaning is consistent with the usage in the
Specification. Appeal Br. 12. In response to Appellant's proposed
construction, the Examiner states that "clamp is defined by Oxford
Dictionary as: A brace, clasp, or band, usually of iron or other rigid
material, used for giving strength and support to flexible or movable objects,
or for fastening two or more things securely together." Answer, dated May
5, 2017 ("Ans."), at 3.
The Specification does not explicitly define "clamp," but the
Specification does describe the operation of a clamp:
a rotating assembly may cooperate with a clamp to clamp the
bearing cartridge of the rotating assembly. Such a clamp may
allow for a damper clearance or it may fix the outer race of the
bearing cartridge. A clamp may include an anti-rotation
mechanism to limit rotation of an outer race of a bearing
cartridge. Such a mechanism may allow for some minimal
rotation or may fix the bearing cartridge in a manner that
essentially prevents rotation of the outer race.
Spec. ,r 36 (emphasis added). Thus, we understand that a clamp is a device
that holds or supports an object such as the bearing cartridge. The clamp
may optionally, but not necessarily, limit rotation of the object.
Appellant also argues that certain portions of the Specification show
that a clamp is different from a housing. Appeal Br. 7-8. As discussed
below, Appellant points us to paragraphs in the Specification that discuss
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Application 13/756,839
housings, but Appellant does not direct our attention to paragraphs in the
Specification that discuss or describe a clamp. According to Appellant, the
Specification explains that the bearing cartridge is allowed to move radially
in a center bore of the housing, and a bore of a housing is not a clamp for
clamping a bearing cartridge. Reply Br. 2; see Appeal Br. 7-8. Referring to
paragraph 23 of the Specification, Appellant states that "[ o ]ne reason for the
clamp is because the housing of Fig. 3 is of a turbocharger and it is cast as
an integral component with a through bore."
Fig. 3 shows the prior art assembly 200 of Fig. 2 and a more
detailed view of the ball bearing cartridge 230. In the assembly
200, the bearing cartridge must be inserted from the compressor
end of the housing 210 while the shaft 220 must be inserted from
the turbine end of the housing 210. Consequently, the bearing
cartridge 230 and the shaft 220 cannot be assembled and
balanced and then inserted together as a unit into the housing
210. In other words, while the cartridge 230 and the shaft 220
can be assembled and balanced, the components must be
separated prior to insertion of the bearing cartridge 230 and the
shaft into the housing 210.
Appeal Br. 7 (quoting Spec. ,r 23). Referring to paragraph 51 of the
Specification, Appellant states that "housing 510 of Fig. 5 is not a clamp."
Fig. 5 shows an exemplary assembly 500 that allows for insertion
of a bearing cartridge 230 from a turbine end of a center housing
510. As mentioned, in the assembly 200 of Figs. 2 and 3 the
bearing cartridge 230 must be inserted from the compressor end
of the housing 210 while the shaft 220 must be inserted from the
turbine end of the housing 210. Consequently, the bearing
cartridge 230 and the shaft 220 cannot be assembled and
balanced and then inserted together as a unit into the housing
210. In contrast, in the assembly 500, the center housing 510
includes an enlarged turbine side opening that allows insertion of
a SW A/BB (i.e., the bearing cartridge 230 and a shaft 520) into
the through bore of the center housing 510. Accordingly, fl:
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SW A/BB subassembly can be balanced and then inserted
directly into a center housing without removal of the SW A from
the BB.
Id. at 7-8 (quoting Spec. ,r 51). Appellant's reliance on these portions of the
Specification describing how the bearing cartridge is assembled, however, is
unpersuasive because they do not inform the meaning of a clamp, and the
claims do not recite a "housing" or how the bearing cartridge is assembled.
In addition, the language of claim 1 is very broad. Claim 1 is not
limited to the specific embodiments described in the Specification, and
limitations not appearing in the claims cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating
limitations not appearing in the claims cannot be relied upon for
patentability). We decline to import limitations of any particular
embodiment from the Specification into the claim. See SuperGuide Corp. v.
DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("[A] particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.").
Appellant also argues that the Examiner's findings regarding
Woollenweber are contrary to an earlier Restriction Requirement because
the claims are "drawn to a clamp" whereas Woollenweber discloses a
"turbocharger center housing that is a cast, unitary component." Appeal Br.
9-10; see Reply Br. 10-11. Appellant's argument is not persuasive because
it does not inform the meaning of "clamp."
After considering the usage of the term "clamp" in the Specification,
in the claims, and in the definitions presented by Appellant and the
Examiner, we agree with Appellant that the term "clamp" recited in claim 1
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would be understood by one having ordinary skill in the art to mean "a
device that holds or supports an object (e.g., a bearing cartridge)."
In light of this definition, we agree with the Examiner that
Woollenweber's housing 14 "constitutes a clamp since it holds the bearing
cartridge [31] as shown in Figures 1 and 2." Ans. 2. As illustrated in Figure
1, for example, Woollenweber's "bearing carrier 31 is supported within the
bearing housing 14 by a plurality of elastic supports 35 ... that engage the
outer surface 31 a of the elongated bearing carrier and inner walls 14a, 14b of
the bearing housing 14." Woollenweber ,r 28. Like the description in
paragraph 36 of the Specification, Woollenweber's housing 14 fixes the
outer surface of the bearing cartridge 31 in a manner that essentially
prevents rotation of the outer race.
Second, Appellant asserts that Woollenweber refers to stationary
housing 11 as a "housing," not a "clamp", and the "Examiner's findings with
respect to Woollenweber are speculative and based on hindsight
reconstruction because Woollenweber's stationary housing 11 is not a clamp
under any reasonable construction of that term given (a) the file history, (b)
the plain meaning, and (c) the specification of the instant application."
Appeal Br. 14. We understand that the Examiner's annotated figure refers to
Woollenweber's "bearing housing" 14 as the recited "clamp."
Woollenweber's use of different terminology for the clamp does not
persuade us of error in the Examiner's finding that Woollenweber's housing
14 is the claimed clamp because it "holds and supports" bearing cartridge
31. Ans. 2; In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (explaining there
is no ipsisimis verbis test for determining whether a reference discloses a
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claim element, i.e., identity of terminology is not required). Thus,
Appellant's argument is not persuasive.
Third, Appellant asserts that Woollenweber's housing "is one unitary
cast housing and not a clamp with separate upper and lower portions."
Appeal Br. 15 ( emphasis added). We agree with the Examiner that claim 1
does not recite that the upper and lower portions must be separate portions.
Ans. 4. A unitary body may have upper and lower portions. We decline to
import limitations of any particular embodiment from the Specification into
the claim. SuperGuide, 358 F.3d at 875.
For the reasons above, the rejection of claim 1 is sustained.
Claims 2-5 and 19-21
Claims 2-5 and 19-21 depend from claim 1. Appellant states that
"[d]ependent claims 2-5 and 19-21 are not anticipated by Woollenweber for
at least the same reasons as claim 1." Appeal Br. 15. As discussed above,
we sustain the Examiner's rejection of claim 1. Because Appellant does not
allege any other patentable distinctions for claims 2-5 and 19-21, we
likewise sustain the Examiner's rejection of these claims.
Claims 22-25
With respect to independent claim 22, "Appellant reiterates the
evidence and C.F .R. citation as set forth above as to claim 1 and submits that
claim 22 is not anticipated by Woollenweber." Appeal Br. 16. As discussed
above, we sustain the Examiner's rejection of claim 1.
In the Reply Brief, Appellant asserts that "Woollenweber does not
provide evidence sufficient to support a finding of fact as to recited [main]
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bore that has 'a bore diameter sized to clamp a bearing cartridge."' Reply
Br. 7. Because W oollenweber' s main bore "holds and supports" the bearing
clamp in place within the bore, it "clamps" the bearing cartridge as recited in
claim 22.
Appellant also states that "[ d]ependent claims 23-25 are not
anticipated by Woollenweber for at least the same reasons as claim 22." Id.
Because Appellant does not allege any other patentable distinctions for
claims 23-25, we likewise sustain the Examiner's rejection of these claims.
Claim 1
Re} ection 3: Claims 1 and 19
as Anticipated By Frister
The Examiner finds that Frister discloses all of the limitations of
independent claim 1 and its dependent claim 19. To support these findings,
the Examiner refers generally to Figures 1-3 of Frister and specifically to
annotated Figure 2 illustrated below:
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Final Act. 7-8. Figure 2 of Frister, as annotated by the Examiner, illustrates
the Examiner's findings regarding the location of the upper and lower
portions of the clamp and bearing cartridge.
When addressing the Examiner's rejection in the Appeal Brief,
Appellant asserts that the Examiner's anticipation rejection is erroneous
because Figures 1-3 depict three different embodiments and "the
Examiner's finding of anticipation is 'reached by combining separate,
distinct embodiments within a single reference."' Appeal Br. 17. Appellant
also asserts that "housing portions 12, 13 [in Figure 1 of Frister] do not
clamp the bearings 4, 5 for the shaft 6." Id.
In response to Appellant's arguments, the Examiner explains that the
rejection relies the embodiment in Figure 2, not Figure 1, of Frister. Ans. 3,
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4--5. Because Appellant's arguments do not address the rejection as
articulated by the Examiner, Appellant does not identify error by the
Examiner.
When addressing the Examiner's rejection in the Reply Brief,
Appellant asserts the rejection is erroneous because "the journal bearings 4
and 5 are not bearing cartridges (i.e., Frister lacks evidence sufficient to
support a finding of fact as to a bearing cartridge)." Reply Br. 8.
Appellant's conclusory attorney argument is not persuasive because it does
explain the purported difference between a journal bearing and bearing
cartridge. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding
that lawyer arguments and conclusory statements which are unsupported by
factual evidence are entitled to little probative value); In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's arguments in a brief cannot take
the place of evidence."). The Specification does not explicitly define a
"bearing cartridge" but does disclose, for example, that the "center housing
210 supports a bearing cartridge 230 that receives the shaft 220 and allows
for rotation of the shaft 220 about the z-axis." Spec. ,r 18. In light of the
usage of bearing cartridge in the Specification, we understand that a
"bearing cartridge" is a bearing and its related cartridge/components that
receive and hold a shaft while allowing for rotation of the shaft. Thus, the
Examiner correctly finds that Frister's bearings 4, 5, which rotatably support
shaft 6, correspond to the recited "bearing cartridge." See Final Act. 7-8;
Frister 3:3-10, Fig. 2.
Second, Appellant asserts that the rejection is erroneous because "one
would not clamp the journal bearings 4 and 5 in the center housing of Fig. 2
of Frister." Reply Br. 8. According to Appellant's unsupported attorney
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argument, "two pairs of piston rings," not the upper and lower portion of the
clamp, hold bearings 4, 5. Id. Appellant's conclusory and unsupported
attorney argument is not persuasive. De Blauwe, 736 F.2d at 705; Pearson,
494 F.2d at 1405. Because the upper and lower portions of Frister's housing
"hold and support" bearings 4, 5, we agree with the Examiner that Frister's
housing is a clamp as recited in claim 1. Final Act. 6, 8 ( annotated Fig. 2 of
Frister); Ans. 3--4.
Thus, the rejection of claim 1 is sustained.
Claim 19
With respect to claim 19 which depends from claim 1, Appellant
states that "[ d]ependent claim 19 is not anticipated by Frister for at least the
same reasons as claim 1." Appeal Br. 19. As discussed above, we sustain
the Examiner's rejection of claim 1. Because Appellant does not allege any
other patentable distinctions for claim 19, we likewise sustain the
Examiner's rejection of this claim.
DECISION
For the above reasons, the Examiner's rejections of claims 1-5 and
19-25 are AFFIRMED.
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)(l )(iv).
AFFIRMED
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