Ex Parte Dirker

Board of Patent Appeals and Interferences

Jun 5, 2009

10916416 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte MARTIN WAYNE DIRKER 8
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Appeal 2009-001073 11
Application 10/916,416 12
Technology Center 3700 13
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Decided:1 June 8, 2009 16
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Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
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SILVERBERG, Administrative Patent Judge. 22
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DECISION ON APPEAL25

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/916,416

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a rejection of 2
claims 1-22, 27-40 and 45-51, which are all of the pending claims. Claims 3
23-26, 41-44 and 52-552 have been canceled. We have jurisdiction under 35 4
U.S.C. § 6(b) (2002). 5
6
SUMMARY OF DECISION 7
We AFFIRM. 8
9
THE INVENTION 10
The Appellant’s claimed invention is directed to an exhaust manifold 11
for a power system (Spec. para. [02]. Claim 1, reproduced below, is 12
representative of the subject matter on appeal. 13
1. An exhaust manifold for a power system, comprising: 14
a first pipe section having at least one inlet configured to 15
fluidly connect the first pipe section to the power system; 16
a second pipe section disposed adjacent the first pipe 17
section and having at least one inlet configured to fluidly 18
connect the second pipe section to the power system, at least 19
one of the first pipe section and the second pipe section having 20
a serpentine shape with at least two adjacent arcuate portions; 21
at least one outlet in fluid communication with the first 22
pipe section and the second pipe section; and 23
at least one bridge member rigidly connecting the first 24
pipe section to the second pipe section. 25
26
THE REJECTIONS 27

2 The Grounds of Rejection section of the Examiner’s Answer (Ans. 9-10)
contains a rejection of claims 52-55. In an Advisory Action mailed August
2, 2007, an Amendment After Final filed July 17, 2007, canceling claims 52-
55, was entered. Accordingly, claims 52-55 are not involved in this appeal.
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Application 10/916,416

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The Examiner relies upon the following as evidence of 1
unpatentability: 2
Sigfridsson WO 02/088527 Nov. 7, 2002 3
4
The following rejections by the Examiner are before us for review: 5
1. Claims 1-6, 10-16, 19, 20, 27-34, 37, 38, 45-47 and 49-51 are rejected 6
under 35 U.S.C. § 102(b) as being as being anticipated by Sigfridsson. 7
2. Claims 7-9, 17, 18, 21, 22, 35, 36, 39, 40 and 48 are rejected under 35 8
U.S.C. § 103(a) as being unpatentable over Sigfridsson. 9
10
ISSUE 11
The issue before us is whether the Appellant has shown that the 12
Examiner erred in rejecting claims 1-22, 27-40 and 45-51 over Sigfridsson. 13
The issue turns on whether Sigfridsson discloses the particular shape (e.g., 14
serpentine with two adjacent arcuate portions or S-shaped) of at least one of 15
a first pipe section and a second pipe section as called for in claims 1, 27, 16
46, 49 and 50. 17
18
FINDINGS OF FACT 19
We find that the following enumerated findings are supported by at 20
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 21
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 22
proceedings before the Office). 23
1. The Appellant’s Specification discloses that the first and second 24
pipe sections may have serpentine trajectories to facilitate fluid 25
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flow and to allow flexure in multiple directions during thermal 1
expansion (Spec. para. [14]). 2
2. The Appellant’s Specification further discloses that the first and 3
second pipe sections may have a trajectory other than serpentine 4
(Spec. para. [14]). 5
3. Sigfridsson discloses an exhaust manifold 1 connected between an 6
engine M and turbocharger T; the exhaust manifold 1 including 7
two pipe elements 2, 3; each of the pipe elements having three 8
inlets 4 and one outlet 5 (fig. 1); each inlet and outlet being 9
surrounded by a flange 6, 7, 8; wherein flanges 7, 8 of the outlets 10
and one inlet form an angle bracket 9 (p. 5, ll. 12-14) (figs. 1 and 11
5). 12
4. Sigfridsson still further discloses that both pipe ends 12, 22 that 13
connect pipe element 2 to the flanges 7, 8, respectively, are curved 14
(figs. 1-3). 15
5. The ordinary meaning of the word “serpentine” includes “having a 16
compound curve whose central curve is convex.” Merriam-17
Webster’s Collegiate Dictionary (10th ed. 1999). 18
6. The ordinary meaning of the word “convex” includes “curved or 19
rounded like the exterior of a sphere or a circle.” Merriam-20
Webster’s Collegiate Dictionary (10th ed. 1999). 21
7. The ordinary meaning of the word “transverse” includes “set 22
crosswise.” Merriam-Webster’s Collegiate Dictionary (10th ed. 23
1999). 24
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8. The ordinary meaning of the word “crosswise” includes 1
“crossing.” Merriam-Webster’s Collegiate Dictionary (10th ed. 2
1999). 3
4
PRINCIPLES OF LAW 5
Appellant has the burden on appeal to the Board to demonstrate error 6
in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d 1606, 7
1614 (BPAI 2008) [burden on appeal] (on appeal, applicant must show 8
examiner erred); Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex 9
parte Catan, 83 USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 10
USPQ2d 1509, 1519 (BPAI 2007). See also In re Kahn, 441 F.3d 977, 985-11
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a 12
rejection [under § 103] by showing insufficient evidence of prima facie 13
obviousness or by rebutting the prima facie case with evidence of secondary 14
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 15
(Fed. Cir. 1998)). 16
“Anticipation is established only when a single prior art reference 17
discloses, expressly or under the principles of inherency, each and every 18
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys., 19
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, “[t]here must be 20
no difference between the claimed invention and the reference disclosure, as 21
viewed by a person of ordinary skill in the field of the invention.” Scripps 22
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. 23
Cir. 1991). It is not necessary that the reference teach what the subject 24
application teaches, but only that the claim read on something disclosed in 25
the reference, i.e., that all of the limitations in the claim be found in or fully 26
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met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 1
(Fed. Cir. 1983). 2
“Section 103 forbids issuance of a patent when ‘the differences 3
between the subject matter sought to be patented and the prior art are such 4
that the subject matter as a whole would have been obvious at the time the 5
invention was made to a person having ordinary skill in the art to which said 6
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 7
(2007). The question of obviousness is resolved on the basis of underlying 8
factual determinations including (1) the scope and content of the prior art, 9
(2) any differences between the claimed subject matter and the prior art, (3) 10
the level of skill in the art, and (4) where in evidence, so-called secondary 11
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 12
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 13
might be reordered in any particular case, the [Graham] factors continue to 14
define the inquiry that controls.”). 15
When construing claim terminology in the United States Patent and 16
Trademark Office, claims are to be given their broadest reasonable 17
interpretation consistent with the specification, reading claim language in 18
light of the specification as it would be interpreted by one of ordinary skill in 19
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 20
2004). 21
22
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ANALYSIS 1
Rejection of claims 1-6, 10-16, 19, 20, 27-34, 37, 38, 45-47 and 49-51 2
under 35 U.S.C. 102(b) as being as being anticipated by Sigfridsson 3
4
Appellant contends that Sigfridsson does not disclose or suggest an 5
exhaust manifold for a power system including “at least one of the first pipe 6
section and the second pipe section having a serpentine shape with at least 7
two adjacent arcuate portions” as called for in claim 1 (Reply Br. 3 and Br. 8
10-13) or “at least one of the first pipe section and the second pipe section 9
having at least a substantially S-shaped profile” as called for in claims 27 10
and 46 (Reply Br. 3 and Br. 14-16). The ordinary meaning of the word 11
“serpentine” includes “having a compound curve whose central curve is 12
convex” (Fact 5) and the ordinary meaning of the word “convex” includes 13
“curved or rounded like the exterior of a sphere or a circle” (Fact 6). 14
Merriam-Webster’s Collegiate Dictionary (10th ed. 1999). Therefore, in 15
order for an element to have a serpentine shape it must have a compound 16
curve, wherein the central curve is rounded like the exterior of a circle. 17
Sigfridsson discloses an exhaust manifold 1 connected between an engine M 18
and turbocharger T; the exhaust manifold 1 including two pipe elements 2, 19
3; each of the pipe elements having three inlets 4 and one outlet 5 (fig. 1); 20
each inlet and outlet being surrounded by a flange 6, 7, 8; wherein flanges 7, 21
8 of the outlets and one inlet form an angle bracket 9 (p. 5, ll. 12-14) (figs. 1 22
and 5) (Fact 3). Sigfridsson still further discloses that both pipe ends 12, 22 23
that connect pipe element 2 to the flanges 7, 8, respectively, are curved (figs. 24
1-3) (Fact 4). Further, the Examiner’s analysis (Ans. 12) makes reference to 25
modified reproductions of enlarged center portions of Sigfridsson’s figures 1 26
and 2 including a shaded portion showing the pipe ends 12, 22 as being 27
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curved. We find that in Sigfridsson, the pipe ends 12, 22 that are connected 1
to the flanges 7, 8, respectively, with the pipe element 2 being located 2
therebetween has both a serpentine shape and a substantially S-shaped 3
profile. We agree with the Examiner’s analysis (Ans. 10-12) and conclude 4
that Sigfridsson discloses “at least one of the first pipe section and the 5
second pipe section having a serpentine shape with at least two adjacent 6
arcuate portions” as called for in claim 1 and “at least one of the first pipe 7
section and the second pipe section having at least a substantially S-shaped 8
profile” as called for in claims 27 and 46; and claims 2-6, 10-16, 19, 20, 28-9
34, 37, 38, 45, 47 and 51 depending respectively therefrom. 10
Regarding claims 49 and 50: Appellant contends that Sigfridsson 11
does not disclose that the “serpentine shape is formed along an axis that is 12
substantially transverse to an axis of the at least one inlet of the at least one 13
pipe section having the serpentine shape” as called for in claim 49, and does 14
not disclose that “the substantially S-shaped profile is formed along an axis 15
that is substantially transverse to an axis of the at least one inlet of the at 16
least one pipe section having the substantially S-shaped profile” as called for 17
in claim 50. The ordinary meaning of the word “transverse” includes “set 18
crosswise” (Fact 7) and the ordinary meaning of the word “crosswise” 19
includes “crossing” (Fact 8). Therefore, in order for a first axis to be 20
transverse to a second axis the first axis must cross the second axis. We 21
previously found regarding Appellant’s claims 1 and 27 that in Sigfridsson, 22
the shape of the pipe ends 12, 22 that connect pipe element 2 to the flanges 23
7, 8, respectively, along with pipe element 2 has both a serpentine shape and 24
a substantially S-shaped profile. We find that in Sigfridsson, the axis of the 25
pipe ends 12, 22 that connect pipe element 2 to the flanges 7, 8, respectively, 26
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along with pipe element 2 is offset relative to the axis of its inlet 4. 1
Therefore, we find that since the two axes in Sigfridsson are offset, the two 2
axes cross. Accordingly, we find that the two axes in Sigfridsson are 3
transverse. Therefore, we conclude that Sigfridsson discloses that the 4
“serpentine shape is formed along an axis that is substantially transverse to 5
an axis of the at least one inlet of the at least one pipe section having the 6
serpentine shape” as called for in claim 49, and that “the substantially S-7
shaped profile is formed along an axis that is substantially transverse to an 8
axis of the at least one inlet of the at least one pipe section having the 9
substantially S-shaped profile” as called for in claim 50. Therefore, we 10
conclude that the Examiner did not err in rejecting claims 1-6, 10-16, 19, 20, 11
27-34, 37, 38, 45-47 and 49-51 over Sigfridsson. We affirm the rejection of 12
claims 1-6, 10-16, 19, 20, 27-34, 37, 38, 45-47 and 49-51 under 35 U.S.C. § 13
102. 14
15
Rejection of claims 7-9, 17, 18, 21, 22, 35, 36, 39, 40 and 48 under 35 16
U.S.C. § 103(a) as being unpatentable over Sigfridsson 17
18
Appellant’s contentions (Br. 19-22) regarding the rejection of claims 19
7-9, 17, 18, 35 and 36 as being unpatentable over Sigfridsson is not 20
persuasive for the reasons set forth above in our discussion of the rejection 21
of claims 1 and 27 as being anticipated by Sigfridsson. Therefore, we affirm 22
the rejection of claims 7-9, 17, 18, 21, 22, 35, 36, 39, 40 and 48 under 35 23
U.S.C. § 103 thereof. 24
25
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CONCLUSIONS OF LAW 1
We conclude that the Appellant has not shown that the Examiner 2
erred in rejecting claims 1-6, 10-16, 19, 20, 27-34, 37, 38, 45-47 and 49-51 3
under 35 U.S.C. § 102(b) as being anticipated by Sigfridsson, and claims 7-4
9, 17, 18, 21, 22, 35, 36, 39, 40 and 48 under 35 U.S.C. § 103(a) as being 5
unpatentable over Sigfridsson. 6
7
DECISION 8
The decision of the Examiner to reject claims 1-22, 27-40 and 45-51 9
over Sigfridsson is affirmed. 10
No time period for taking any subsequent action in connection with 11
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 12
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AFFIRMED 14
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LV 23
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CATERPILLAR/FINNEGAN, HENDERSON, L.L.P. 25
901 NEW YORK AVENUE, NW 26
WASHINGTON, DC 20001-4413 27