Ex Parte Nakamura et al

Patent Trial and Appeal Board

Mar 19, 2018

13023911 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/023,911 02/09/2011 Takayuki NAKAMURA
22428 7590 03/21/2018
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
088473-0327 9608
EXAMINER
RIEGELMAN, MICHAEL A
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKA YUKI NAKAMURA, HIDEKAZU YAGI, and
KAZUTAKA IMAI
Appeal2016-004269
Application 13/023,911
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
SEAN P. O'HANLON, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Takayuki Nakamura et al. (Appellants) 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-6.2 We heard oral
argument on March 6, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies Jatco Ltd. and Nissan Motor Co., Ltd., as the
real parties in interest. Appeal Br. 2.
2 Claims 7 and 8 are withdrawn from consideration. Appeal Br. 2.
Appeal2016-004269
Application 13/023,911
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter.
1. A continuously variable chain-belt transmission housed in
a transmission casing formed by a transmission case and a side
cover, compnsmg:
a pair of conical disk pairs, each pair of which is rotatably
supported by disk supporting portions provided in the
transmission case and the side cover;
a chain wound around the pair of conical disk pairs;
a chain guide attached to the chain to restrain movement
of the chain and having an annular guide portion that encloses an
entire circumference, in cross section, of the chain; and
a chain guide supporting portion supporting the chain
guide between the transmission case and the side cover and
having:
(a) a fixing side chain guide supporting portion
fixed to the transmission case; and
(b) a connecting side chain guide supporting portion
connecting to the fixing side chain guide supporting
portion,
wherein the chain guide supporting portion is configured
to be split in half.
Appeal Br. 20 (Claims App.).
REJECTIONS
I. Claims 1-6 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. Claims 1-5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ibaraki (JP 2005-282695, published Oct. 13, 2005) and
Wigsten (US 6,955,621 B2, issued Oct. 18, 2005).
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Application 13/023,911
III. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Ibaraki, Wigsten, and Shimaguchi (US 5,033,989, issued July 23,
1991 ).
ANALYSIS
Rejection I
The Examiner determines that the claim term "supporting portion" is
vague and indefinite. Final Act. 2. The Examiner questions whether this
limitation indicates a separate component, or whether a single component
can have several portions. Id.
Claim 1 recites the term "supporting portion" or "supporting portions"
in multiple limitations, including "disk supporting portions," "a chain guide
supporting portion," "a fixing side chain guide supporting portion," and "a
connecting side chain guide supporting portion." Appellants contend that
the claim language itself indicates that a "supporting portion" can have
portions. Appeal Br. 7. For example, claim 1 recites "a chain guide
supporting portion" "having" "a fixing side chain guide supporting portion"
and "a connecting side chain guide supporting portion." Appellants also
point out that the disclosure describes and illustrates disk supporting
portions 2a, 2b, 3a, 3b, a chain guide supporting portion 30, 40, a fixing side
chain guide supporting portion 3 1, 41, and a connecting side chain guide
supporting portion 32, 42. Id. (citing Spec., Figs. 1, 7A, 7C, 8A, 8B).
The Examiner also questions whether a "supporting portion" provides
support. Final Act. 2. This question is also answered by the language of
claim 1. As noted by Appellants, claim 1 recites that the "chain guide
supporting portion support[s] the chain guide." Appeal Br. 7. Claim 1 also
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Application 13/023,911
recites that each pair of conical disk pairs is "rotatably supported by disk
supporting portions." Accordingly, the language of claim 1 indicates that a
"supporting portion" provides support.
The Examiner also determines that the limitation of "a connecting side
chain guide supporting portion connecting to the fixing side chain guide
supporting portion" is vague and indefinite. Final Act. 2. The Examiner
questions whether the "connecting side chain guide supporting portion" and
the "fixing side chain guide supporting portion" are "regions of the same
component." Id. According to the Examiner, use of the term "portion"
suggests that these two portions are two regions of the "chain guide
supporting portion" and "not separate components." Ans. 2.
However, claim 1 requires "a connecting side chain guide supporting
portion connecting to the fixing side chain guide supporting portion"
(emphasis added). Appellants point out that Figures 7 A and 7C show an
exemplary connecting side chain guide supporting portion 32 which
connects to fixing side chain guide supporting portion 31, and Figures 8A
and 8C illustrate another exemplary connecting side chain guide supporting
portion 42 which connects to fixing side chain guide supporting portion 41.
Appeal Br. 8. Appellants assert that the recitation of these elements as being
connected to each other shows that the elements are separable. Id.
We agree with Appellants that the recitation of the term "connecting
to" in claim 1 and the description of the connecting side chain guide
supporting portion 32, 42 "connecting to" the fixing side chain guide
supporting portion 31, 41, as shown in the referenced figures, supports that
the recited portions are separate elements of the claimed chain guide
supporting portion.
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Application 13/023,911
Regarding the limitation of "the chain guide supporting portion is
configured to be split in half' in claim 1, the Examiner determines that
"configured to be split in half' is vague and indefinite. Final Act. 3. The
Examiner questions what structure is claimed, how a portion can be split in
half, and whether the two portions being split in half using a saw would
satisfy the limitation. Id.
Appellants contend that a "chain guide supporting portion" that is
"configured to be split in half' is amply described in the Specification.
Appeal Br. 9. Appellants explain that Figures 7A and 7C depict a first chain
guide supporting portion 30 "split into" fixing side chain guide supporting
portion 31 and connecting side chain guide supporting portion 32, and,
similarly, Figures 8A and 8B depict a second chain guide supporting portion
40 split into fixing side chain guide supporting portion 41 and connecting
side chain guide supporting portion 42. Id. It is Appellants' position that
these figures, together with description in the Specification, provides ample
guidance to the skilled artisan to understand the claimed features. Id.; see
Spec. iii! 33-42, 48.
The Examiner responds, "irrelevant of what is shown in the figures
(What matters is what is being claimed, not what is shown in the figures),"
the question of whether the connecting side chain guide supporting portion
and the fixing side chain guide supporting portions are two regions of one
component or two separate components renders this limitation vague and
indefinite. Ans. 3. According to the Examiner, that each of these "features"
(i.e., a fixing side chain guide supporting portion and a connecting side chain
guide supporting portion) are referred to as "portions" suggests that the
features "are not necessarily separate components (i.e. - two object[ s]
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Application 13/023,911
connected by a connecting portion)." Id. at 3--4. The Examiner questions
how "a fixing side chain guide supporting portion" is "separable from" "a
connecting side chain guide supporting portion." Id. at 4.
Appellants' contentions are more persuasive. We determine the scope
of claims "not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction 'in light of the specification as
it would be interpreted by one of ordinary skill in the art."' Phillips v. A WH
Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (citing In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). "[T]he PTO must give
claims their broadest reasonable construction consistent with the
specification." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). We agree with Appellants that neither the drawings nor the
description are "'irrelevant"' in construing the disputed limitation. Reply
Br. 2-3. To the extent the Examiner disregarded Appellants' drawings or
description in rejecting the claims, this is error.
Appellants Specification describes that "the chain guide supporting
portion can be split in half or separated into two portions." Spec. ,-i 21. We
understand this description to mean that the chain guide supporting portion
is constructed to be "separated into two portions." This understanding is
consistent with the recitation in claim 1 of "a connecting side chain guide
supporting portion connecting to the fixing side chain guide supporting
portion" (emphasis added). That is, these two portions can be connected to
each other and, when so connected, can be separated from each other. In
other words, these portions are "separable from" each other as supported by
the Specification and drawings.
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Accordingly, we agree with Appellants that each limitation in claim 1
found vague and indefinite by the Examiner is sufficiently clear when read
in light of the Specification. Accordingly, we do not sustain the rejection of
claim 1, or of claims 2-6 depending from claim 1.
Rejection II
Regarding claim 1, the Examiner finds that Ibaraki discloses, inter
alia, chain guide supporting portion 8 supporting chain guide 40 between
transmission case 5a and side cover 5b. Final Act. 4. The Examiner finds
that chain guide supporting portion 8 has a fixing side chain guide
supporting portion fixed to transmission case 5a, and a connecting side chain
guide supporting portion connecting to the fixing side chain guide
supporting portion. Id. In support, the Examiner provides an annotated
version of Figure 3 of Ibaraki. Id. at 3. The Examiner finds that "Ibaraki
therefore discloses the claimed invention where (8) is a single element with
two sides - and is not separable." Id. at 4.
The Examiner finds that Wigsten teaches a chain guide supporting
portion that is configured to be split in half, "two pieces (sides 36 and 74)."
Id. at 5 (reproducing Fig. 6 of Wigsten). The Examiner reasons that the
chain guide supporting portion is configured to be split in half because
"components 36 and 74 are separate and separable." Ans. 6. The Examiner
concludes that it would have been obvious to modify Ibaraki in view of
Wigsten "to provide a separable chain guide supporting portion in order [to]
facilitate relative rotation of the two sides and [be] able to assemble the
support in place." Final Act. 5. The Examiner explains that the
modification would replace Ibaraki's element 8 with the connector pin 36
and sleeve 7 4 of Wigsten. Ans. 6.
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Appellants contest the Examiner's finding that Ibaraki's bar 8
corresponds to the chain guide supporting portion having the two portions
recited in claim 1. Appeal Br. 11. Appellants contend that the alleged fixing
side chain guide supporting portion and connecting side chain guide
supporting portion in Ibaraki are both ends of alleged chain guide supporting
portion 8, "which is a single unitary component- a bar." Id. Referencing
the Examiner's annotated Figure 3 of Ibaraki, Appellants note that the
connecting side chain guide supporting portion is one end of bar 8, which
Appellants contend is not "connecting to" the alleged fixing side chain guide
supporting portion, but rather, extends across from one side of transmission
case 5 to another side. Id. at 11-12.
Appellants note Wigsten discloses a rotary actuating tensioner that has
fixed pins 36, 38 with a sleeve or bushing 74. Id. at 12 (citing Wigsten, Fig.
6). As described in Wigsten, "[p ]rotruding upward from rotary body 32 are
connector pins 36 and 38. In the preferred embodiment, these pins 36 and
38 are jacketed with bushings or sleeves 74 made of a wearable or self-
lubricating material, such as plastic." Wigsten, col. 8, 11. 57-61, Figs. 1, 6.
Appellants contest the Examiner's findings with regard to Wigsten.
Appeal Br. 12. Appellants contend that Wigsten does not teach or suggest
that fixed pin 3 6 and sleeve 7 4 form a chain guide supporting portion
"configured to be split in half." Id. at 13. Appellants contend that fixed pin
3 6 and sleeve 7 4 are unrelated to a fixing side chain guide supporting
portion or a connecting side chain guide supporting portion as Appellants
disclose, and a skilled artisan would not have looked to Wigsten's tensioner
to supply "'a chain guide supporting portion [that] is configured to be split
in half."' Id.
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Application 13/023,911
Appellants also contend that the Examiner provides no explanation
why, or how, a pin/sleeve teaching of Wigsten would be applied to Ibaraki,
and how bar 8 of Ibaraki would be modified based on Wigsten to reach the
structure of claim 1. Id. at 13-14. Appellants contend that the Examiner
does not explain how pin 36 and sleeve 74 in Wigsten could be integrated
into Ibaraki to facilitate "relative rotation of the two sides." Id. at 15.
Appellants assert that to the extent "Ibaraki's unitary bar 8 is 'a single
element with two sides,"' as found by the Examiner, bar 8 does not have two
components in relative rotation. Id.
Appellants' contentions are persuasive. The Examiner acknowledges
that Ibaraki's "chain guide supporting portion" 8 "is a single element with
two sides - and is not separable." Final Act. 4. Yet, the Examiner also finds
that single element 8 has both a connecting side chain guide supporting
portion and a fixing side chain guide supporting portion, as claimed, where
"[t]hese two portions are connected in the middle, and they may be broken
apart and split." Ans. 5.
The Examiner does not direct us to any disclosure in Ibaraki that
supports the finding that the two "portions" of element 8 are "connected in
the middle" or at any other location. Even if element 8 "may be broken
apart and split," which we consider unreasonable as this would appear to
destroy element 8, we disagree that this establishes that element 8
corresponds to a "chain guide supporting [that] is configured to be split in
half," as claimed. As discussed above, we construe the phrase "configured
to be split in half' to mean that the chain guide supporting portion is
constructed to be "separated into two portions," which is consistent with the
recitation of "a connecting side chain guide supporting portion connecting to
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Application 13/023,911
the fixing side chain guide supporting portion." This connecting and
subsequent separating of the two connected portions from each other does
not require breaking the chain guide supporting portion apart to do so.
Moreover, the Examiner does not provide an adequate reason to break
element 8 of Ibaraki into two separate pieces or "portions." Importantly, the
Examiner does not identify where Ibaraki discloses that element 8 has
components in relative rotation. Accordingly, we agree with Appellants that
the Examiner does not explain adequately how pin 36 and sleeve 74 of
Wigsten' s rotary actuating tensioner could be integrated into Ibaraki by
replacing element 8 to facilitate "relative rotation of the two sides" (Appeal
Br. 15), or why one of ordinary skill in the art would have modified Ibaraki
in this particular manner. Thus, the Examiner has not articulated an
adequate reason with a rational underpinning for modifying Ibaraki in view
of Wigsten to result in the claimed transmission.
Accordingly, we do not sustain the rejection of claim 1, or of claims
2-5 depending from claim 1, as unpatentable over Ibaraki and Wigsten.
Rejection III
The Examiner's application of Shimaguchi to reject claim 6 does not
cure the deficiencies of the rejection of claim 1 from which claim 6
ultimately depends. Final Act. 6-8. Accordingly, we do not sustain the
rejection of claim 6 as unpatentable over Ibaraki, Wigsten, and Shimaguchi.
DECISION
The Examiner's decision to reject claims 1-6 is reversed.
REVERSED
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