Ex parte KUKLO

Board of Patent Appeals and Interferences

Oct 14, 1998

08316685 (B.P.A.I. Oct. 14, 1998)

Application for patent filed September 30, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS C. KUKLO
____________
Appeal No. 97-1840
Application No. 08/316,6851
____________
ON BRIEF
____________
Before STAAB, NASE, and CRAWFORD, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 20, which are all of the claims
pending in this application.
Appeal No. 97-1840
Application No. 08/316,685
We AFFIRM-IN-PART.
Appeal No. 97-1840 Page 3
Application No. 08/316,685
BACKGROUND
The appellant's invention relates to a concentric ring
rotor. An understanding of the invention can be derived from
a reading of exemplary claim 1, which appears in the appendix
to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Pichl et al. (Pichl) 4,241,620 Dec. 30,
1980
Withers 4,962,677 Oct. 16,
1990
Andrä 5,024,120 June 18,
1991
Claims 1 through 20 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claims 1 through 4, 9 through 11, 13 through 16 and 19
stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Andrä.
Appeal No. 97-1840 Page 4
Application No. 08/316,685
Claims 5 through 8, 12 and 17 stand rejected under 35
U.S.C. § 103 as being unpatentable over Andrä in view of
Withers.
Claims 18 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Andrä in view of Pichl.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 12, mailed November 7, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 9, filed June 24, 1996) and reply brief
(Paper No. 13, filed November 27, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
Appeal No. 97-1840 Page 5
Application No. 08/316,685
examiner. As a consequence of our review, we make the
determinations which follow.
Initially we note that the appellant's disagreement with
the changes to the specification relates to a petitionable
matter and not to an appealable matter. See Manual of Patent
Examining Procedure (MPEP) §§ 1002 and 1201. Accordingly, we
can not resolve the issue raised by the appellant on page 6 of
the brief and page 3 of the reply brief. Nevertheless, we
wish to note that the appellant's proposed changes to Figures
1 and 2 appear to be consistent with the originally filed
specification while the examiner's changes to page 6, line 16
to page 7, line 4, introduce an inconsistency into the
specification since the examiner failed to make similar
changes to lines 5-18 of page 7.
The indefiniteness issue
We will not sustain the examiner's rejection of claims 1
through 20 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and
Appeal No. 97-1840 Page 6
Application No. 08/316,685
distinctly claim the subject matter which the appellant
regards as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims
to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re
Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977).
In making this determination, the definiteness of the language
employed in the claims must be analyzed, not in a vacuum, but
always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted
by one possessing the ordinary level of skill in the pertinent
art. Id.
The examiner's focus during examination of claims for
compliance with the requirement for definiteness of 35 U.S.C.
§ 112, second paragraph, is whether the claims meet the
threshold requirements of clarity and precision, not whether
more suitable language or modes of expression are available.
Some latitude in the manner of expression and the aptness of
terms is permitted even though the claim language is not as
Appeal No. 97-1840 Page 7
Application No. 08/316,685
precise as the examiner might desire. If the scope of the
invention sought to be patented cannot be determined from the
language of the claims with a reasonable degree of certainty,
a rejection of the claims under 35 U.S.C. § 112, second
paragraph, is appropriate.
Thus, the failure to provide explicit antecedent basis
for terms does not always render a claim indefinite. As
stated above, if the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is
not indefinite. See Ex parte Porter, 25 USPQ2d 1144, 1145
(Bd. Pat. App. & Inter. 1992).
With this as background, we have reviewed the specific
objections under 35 U.S.C. § 112, second paragraph, made by
the examiner of the claims on appeal (answer, pp. 4-6).
However, after reviewing the specific objections, we find
ourselves in agreement with the position of the appellant
(brief, pp. 7-8) that the scope of the claims under appeal can
be determined from the language of the claims with a
reasonable degree of certainty. In addition, it is our
Appeal No. 97-1840 Page 8
Application No. 08/316,685
opinion that with respect to claim 12 that one possessing the
ordinary level of skill in this art would understand the
"inner concentric ring" recited in line 2 to mean the
"innermost ring" of the "concentric rings." Thus, a rejection
of the claims under 35 U.S.C. § 112, second paragraph, is
inappropriate and accordingly, the decision of the examiner to
reject claims 1 through 20 under 35 U.S.C. § 112, second
paragraph, is reversed.
The anticipation issue
We sustain the examiner's rejection of claims 1 through
4, 9 through 11, 13 through 16 and 19 under 35 U.S.C. §
102(b).
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
Appeal No. 97-1840 Page 9
Application No. 08/316,685
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
Claim 1
Claim 1 recites a concentric ring rotor assembly having
at least one expandable separator/torque coupler operatively
connected between at least two adjacent axially spaced
concentric rings of the rotor assembly.
Claim 1 is anticipated by Andrä. Andrä discloses a
torsional vibration damper. As shown in Figure 2, the
torsional vibration damper comprises a central hub ring 1,
which forms means for connecting the damper to the shaft which
in use is connected to a part to be damped such as a shaft
(not shown)
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Application No. 08/316,685
extending through aperture 1a, and an inertial ring 2
rotatable relative to central hub ring 1 about longitudinal
axis of rotation x-x. The central hub ring 1 and inertial
ring 2 are connected to each other via a damping element
arranged in the radial space between the hub ring 1 and
inertial ring 2. The damping element comprises an outer ring
3, flange ring 5 and an inner ring 4. The outer ring 3 is
bonded to substantially axially opposed, adhesive surfaces 6,
7 of the inertial ring 2 and the flange ring 5, respectively.
The inner ring 4 is bonded to substantially radially opposed,
adhesive surfaces 8, 9, respectively, of the hub ring 1 and
the flange ring 5.
It is our opinion that claim 1 "reads on" Andrä as
follows: in a concentric ring rotor assembly (Andrä's
torsional vibration damper is a rotor assembly having
concentric rings (e.g., hub ring 1 and inertial ring 2)), the
improvement comprising: at least one expandable
separator/torque coupler (Andrä's damping element (i.e., outer
ring 3, flange ring 5 and inner ring 4)) operatively connected
between at least two adjacent axially spaced concentric rings
Appeal No. 97-1840 Page 11
Application No. 08/316,685
The phrase "axially spaced" was introduced by the2
appellant in the amendment filed on November 20, 1995 (Paper
No. 4).
(Andrä's hub ring 1 and inertial ring 2) of the rotor
assembly.
The argument presented by the appellant (brief, pp. 8-10)
is unpersuasive for the following reasons.
First, the appellant argues that the concentric rings of
Andrä are radially spaced, not axially spaced as claimed and
disclosed. We do not agree. As shown in the appellant's2
Figures 1 and 2, the three concentric rings 10, 11, 12 rotate
about the axis/centerline 13 with each ring spaced at a
different radial distance from the axis/centerline 13. In
addition, the appellant describes (specification, pp. 6-7) the
lower end 23 of each separator 19, 20 as extending radially
outwardly and that the separators 19, 20 provide for radial
expansion of the rings. In similar fashion, Andrä has hub
ring 1 and inertial ring 2 which rotate about the axis x-x
with the inertial ring 2 and hub ring 1 spaced at different
Appeal No. 97-1840 Page 12
Application No. 08/316,685
radial distances from the axis x-x. In view of these facts,
we conclude that Andrä's hub ring 1 and inertial ring 2 are
axially spaced in the same manner that the appellant's rings
10, 11, 12 are axially spaced.
Second, the appellant argues that Andrä's device is not a
concentric ring rotor as known in the art. We do not agree.
As clearly shown in Figure 2 of Andrä, the hub ring 1 and
inertial ring 2 define concentric rings and since Andrä's
torsional vibration damper is a rotating part of a mechanical
device it constitutes a rotor.
Third, the appellant argues that there is no teaching in
Andrä of at least one expandable separator which functions as
a torque converter as defined in claim 1. We do not agree.
In our view, the claimed expandable separator/torque coupler
"reads on" Andrä's damping element (i.e., outer ring 3, flange
ring 5 and inner ring 4) arranged in the radial space between
the hub ring 1 and the inertial ring 2. In that regard, the
damping element (1) transmits torque between the hub ring 1
and the inertial ring 2, (2) separates the hub ring 1 and the
Appeal No. 97-1840 Page 13
Application No. 08/316,685
inertial ring 2 , and (3) is expandable due to the elastomeric
nature of the outer ring 3 and inner ring 4 (see claims 9 and
10 of Andrä).
For the reasons set forth above, the decision of the
examiner to reject claim 1 under 35 U.S.C. § 102(b) is
affirmed.
Claims 2 and 3
With respect to dependent claims 2 and 3, the appellant
argues (brief, p. 10) that Andrä lacks (1) the multiple axial
spaced concentric rings with separators therebetween as
recited in claim 2, and (2) an expandable separator extending
from the top of one of the rings to the bottom of the adjacent
ring as recited in claim 3.
We find these arguments to be unpersuasive for the
following reasons.
First, claim 2 is readable on a device having only two
rings and one separator therebetween. As such claim 2 reads
Appeal No. 97-1840 Page 14
Application No. 08/316,685
on Andrä in the same manner as set forth above with respect to
parent claim 1. Additionally, we agree with the examiner that
it is appropriate to consider Andrä's flange ring 5, hub ring
1 and inertia ring 2 as multiple axially spaced concentric
rings with separators (i.e., outer ring 3 and inner ring 4)
therebetween.
Second, claim 3 reads on Andrä's damping element (i.e.,
outer ring 3, flange ring 5 and inner ring 4) since it extends
from the top of the hub ring 1 to the bottom of the inertial
ring 2. This is shown when viewing Andrä's Figure 2 and
rotating the figure 90°.
For the reasons set forth above, the decision of the
examiner to reject claims 2 and 3 under 35 U.S.C. § 102(b) is
affirmed.
Claims 4, 9 through 11, 13 through 16 and 19
Claims 4, 9 through 11, 13 through 16 and 19 have not
been separately argued by the appellant. Accordingly, these
claims will be treated as falling with claim 1. See In re
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Application No. 08/316,685
Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991); In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987); and In re Wood, 582 F.2d 638, 642, 199 USPQ
137, 140 (CCPA 1978). Thus, it follows that the decision of
the examiner to reject claims 4, 9 through 11, 13 through 16
and 19 under
35 U.S.C. § 102(b) is also affirmed.
The obviousness issues
We sustain the examiner's rejection of claims 18 and 20
under 35 U.S.C. § 103 but not the rejection of claims 5
through 8, 12 and 17.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
Appeal No. 97-1840 Page 16
Application No. 08/316,685
Claims 18 and 20
The appellant has not contested the examiner's
modification of Andrä by the teachings of Pichl (answer, pp.
8-9). The appellant's only argument (brief, p. 12) with
regard to this rejection is that neither reference teaches
adjacent axially spaced concentric rings. This argument is
unpersuasive with respect to Andrä for the reasons set forth
above with respect to claim 1. Accordingly, the decision of
the examiner to reject claims 18 and 20 under 35 U.S.C. § 103
is affirmed.
Claims 5 through 8, 12 and 17
Claims 5 through 8, 12 and 17 recite a cut-away (claims
5-8), a cut-away section (claim 12), or a cut-away inner end
(claim 17).
The appellant argues (brief, pp. 10-12) that there is no
suggestion in the references themselves for the examiner's
modification of Andrä by the teachings of Withers (answer, pp.
7-8). We agree. Obviousness is tested by "what the combined
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Application No. 08/316,685
teachings of the references would have suggested to those of
ordinary skill in the art." In re Keller, supra. But it
"cannot be established by combining the teachings of the prior
art to produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do
so." Id. Here, the prior art contains none. Instead, it
appears to us that the examiner relied on impermissible
hindsight in reaching her obviousness determination. Since
the cut-away limitation as recited in claims 5 through 8, 12
and 17 is not taught or suggested by the applied prior art,
the decision of the examiner to reject claims 5 through 8, 12
and 17 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 20 under 35 U.S.C. § 112, second paragraph,
is reversed; the decision of the examiner to reject claims 1
through 4, 9 through 11, 13 through 16 and 19 under 35 U.S.C.
§ 102(b) is affirmed; the decision of the examiner to reject
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Application No. 08/316,685
claims 5 through 8, 12 and 17 under 35 U.S.C. § 103 is
reversed; and the decision of the examiner to reject claims 18
and 20 under
35 U.S.C. § 103 is affirmed.
Appeal No. 97-1840 Page 19
Application No. 08/316,685
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-1840 Page 20
Application No. 08/316,685
HENRY P. SARTORIO
DEPUTY LABORATORY COUNSEL FOR PATENTS
LAWRENCE LIVERMORE NATIONAL LABORATORY
P. O. BOX 808 - L-703
LIVERMORE, CA 94551
APPEAL NO. 97-1840 - JUDGE NASE
APPLICATION NO. 08/316,685
APJ NASE
APJ STAAB
APJ CRAWFORD
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: October 1, 1998
FINAL TYPED: