Ex Parte Maccarrone

Patent Trial and Appeal Board

Oct 25, 2017

13305866 (P.T.A.B. Oct. 25, 2017)

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.
13/305,866 11/29/2011 Giuseppe MACCARRONE 060.0716US 8731
71599 7590 10/27/2017
T .KTlInhal (GMF.'l EXAMINER
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
AMICK, JACOB M
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
docketing@lkglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIUSEPPE MACCARRONE
Appeal 2016-002747
Application 13/305,866
Technology Center 3700
Before CHARLES N. GREENHUT, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Giuseppe Maccarrone (“Appellant”)1 seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Final Office Action
dated January 16, 2015 (“Final Act.”), rejecting claims 1, 3—10, and 12—15
under 35 U.S.C. § 102(b) as anticipated by Shulver (US 2010/0028171 Al,
published Feb. 4, 2010). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies GM Global Technology Operations LLC as the
real party in interest. Appeal Br. 1.
Appeal 2016-002747
Application 13/305,866
BACKGROUND
The disclosed subject matter “generally relates to a lubrication circuit
layout of an internal combustion engine of a motor vehicle, [e]specially a
Diesel engine.” Spec. 12. Claims 1, 5, and 8 are independent. Claim 1 is
reproduced below:
1. An engine-case component of an engine case
of an internal combustion engine, comprising:
a first oil channel configured to connect an oil
outlet of a variable displacement oil pump with the
primary control chamber;
a second oil channel configured to
independently connect with a secondary control
chamber of the variable displacement oil pump; and
a seat realized in the engine case component
and in operative communication with the first oil
channel and the second oil channel that is
configured to accommodate an electrically driven
control valve to selectively open and close the
operative communication between the first oil
channel and the second oil channel, wherein the seat
comprises an inlet that faces outside when the
engine case is completely assembled.
DISCUSSION
A. Claims 1, 3, 4, 8—10 and 12—15
Each of independent claims 1 and 8 recites an “engine-case
component.” Appeal Br. 8, 10 (Claims App.). In the Office Action, the
Examiner identified “pump 104” and “valve assembly 203/204” in Figure 5
of Shulver as the “engine-case component.” Final Act. 4, 7.2
2 For claim 1, the Examiner also identified “associated elements” as
part of the “engine-case component.” Final Act. 4.
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Appeal 2016-002747
Application 13/305,866
Appellant argues that “Shulver fails to disclose, teach, or suggest. . .
an engine-case component.” Appeal Br. 4. Appellant states that paragraphs
36 to 41 of the Specification “describe an exemplary embodiment of the
engine-case component as being a bedplate 23” and also states that
paragraph 30 describes bedplate 23 as “a machined metal casting which is
attached at the bottom of the cylinder block 22, defining an intermediate
portion of the crankcase (which is a housing of the crankshaft and rods
connecting the crankshaft to reciprocating pistons).” Id. Appellant “fail[s]
to find mention of or any suggestion of such a case or housing or any case-
type component in Shulver.” Id. at 4—5.
In response, the Examiner states that “the ‘component’ of Fig 5
(generally comprising pump 104, valve assembly 203/204, and associated
elements) serves to deliver lubricating oil to an engine (48) having an oil
gallery.” Ans. 8 (citing Shulver 129). The Examiner also states, “[a]s the
‘component’ is part of an engine system having some external boundaries
(considered to be a ‘case’), the ‘component’ is considered to be an ‘engine-
case component of an engine case’ as generally claimed).” Id.', see also
Final Act. 4 (stating same regarding claim 1).
During examination, claims are given their broadest reasonable
interpretation consistent with the specification, reading the claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990). Here, the Examiner
has applied an unreasonably broad construction of “engine-case
component.”
We recognize that generic definitions of a “case” include “the outer
protective covering of a natural or manufactured object” and “[a] container.”
3
Appeal 2016-002747
Application 13/305,866
New Oxford American Dictionary 269 (Angus Stevenson & Christine A.
Lindberg eds., 3rd ed. 2010); The American Heritage® Dictionary of the
English Language (2016) (via Credo Reference),
http:// search, credoreference. com/ content/entry/hmdictenglang/case_2/0
(Definition 1) (last visited Oct. 10, 2017). These definitions (as well as the
Examiner’s construction as “external boundaries” (Final Act. 4; Ans. 8)),
however, are inconsistent with the use of the term “engine-case” in the
Specification here. See In re Smith Int’l, Inc., No. 2016-2303, 2017 WL
4247407, at *5 (Fed. Cir. Sept. 26, 2017) (stating that the “broadest
reasonable interpretation in light of the specification ... is an interpretation
that corresponds with what and how the inventor describes his invention in
the specification, i.e., an interpretation that is ‘consistent with the
specification’” (quoting In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997)).
Here, the Specification identifies the “bedplate, a cylinder block [and]
crankcase” as examples of engine-case components (Spec. 110), and states
that “[t]he internal combustion engine 10 comprises an engine-case, globally
indicated as 20, which is realized as an assembly of various engine-case
components, including a cylinder head 21, a cylinder block 22, a bedplate 23
and an oil sump 24” (Spec. 129 (emphasis added) (discussing Fig. 1)).
These examples demonstrate that the Examiner’s construction of an “engine
case” as the “external boundaries” of an “engine system” is not consistent
with the Specification. See Ans. 8 (“As the ‘component’ is part of an engine
system having some external boundaries (considered to be a ‘case’), the
‘component’ is considered to be an ‘engine-case component of an engine
case’ as generally claimed.”).
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Appeal 2016-002747
Application 13/305,866
In light of the Specification, we construe “engine case” as an
assembly of the structural components housing the power-generating
components of an engine. See Spec. 129. We thus agree with Appellant
that, in light of the Specification, “engine-case component” means a
component forming at least part of an engine case, rather than (as implicitly
construed by the Examiner) a component within an engine case or system.
See Reply Br. 1. Because the structures identified by the Examiner—“pump
104, valve assembly 203/204, and associated elements” in Fig. 5 of Shulver
(Final Act. 4)—do not satisfy the claim language at issue under a proper
construction of “engine-case component,” we do not sustain the rejection of
claims 1 and 8, nor the rejection of claims 3, 4, 9, 10, and 12—15, which
depend from either claim 1 or claim 8.
B. Claims 5—7
Independent claim 5 recites “[a] variable displacement oil pump for an
internal combustion engine, comprising” certain aspects. Appeal Br. 9
(Claims App.).3 In the Final Office Action, the Examiner stated the
following regarding the last two clauses of claim 5:
• a primary oil channel (opening leading into chamber 120)
extending from the primary control chamber (120) to a first oil
channel (the channel downstream of the opening into chamber
120) of an engine-case component; and
• a secondary oil channel (opening leading into chamber
116) extending from the secondary control chamber (116) to a
second oil channel (the channel downstream of the opening into
chamber 116) of the engine-case component.
Final Act. 6—7.
3 Appellant refers to claim 5 as a dependent claim. See Appeal Br. 6.
Claim 5, however, is independent. See id. at 9 (Claims App.).
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Appeal 2016-002747
Application 13/305,866
Appellant quotes the last two clauses of claim 5 and argues that
“Shulver fails to disclose an engine-case component.” Appeal Br. 6.
The Examiner responds that “that the ‘component’ of Fig 5 (generally
comprising pump 104, valve assembly 203/204, and associated elements) is
an ‘engine-case’ component as generally claimed.” Ans. 10. According to
the Examiner, “pump element 104 comprises multiple oil channels:
specifically, the inlet lines opening into chambers 116 and 120 of the engine-
case component element 104.” Id.
In the context of claim 5, the last two clauses require the two recited
“oil channels]” of the “oil pump” to extend to the two recited “oil
channels]” of an “engine-case component.” As the “engine-case
component” recited in claim 5, the Examiner again relies on “pump 104,
valve assembly 203/204, and associated elements” (Ans. 10), as in the
rejection of claim 1 (see Final Act. 4; Ans. 8). For the same reasons
discussed above regarding claim 1, these structures do not satisfy the claim
language at issue under a proper construction of “engine-case component.”
Thus, we do not sustain the rejection of claim 5, nor the rejection of claims 6
and 7, which depend from claim 5.
DECISION
We reverse the decision to reject claims 1, 3—10, and 12—15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED
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