Ex Parte Ochiai et al

Board of Patent Appeals and Interferences

Jun 12, 2012

11130189 (B.P.A.I. Jun. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIHIRO OCHIAI and ATSUSHI OZAWA
____________

Appeal 2010-000856
Application 11/130,189
Technology Center 3600
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Before STEFAN STAICOVICI, GAY ANN SPAHN, and
LYNNE H. BROWNE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000856
Application 11/130,189

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STATEMENT OF THE CASE
Yoshihiro Ochiai and Atsushi Ozawa (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 4, 6, 8, 12,
14, 16, and 18. Claims 3, 5, 7, 9, 11, 13, 15, and 17 have been withdrawn
and claims 2 and 10 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a power transmission device that
“transmits power from a drive source of a vehicle to a compressor used in a
vehicle air conditioning device.” Spec. 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A power transmission device of a compressor, comprising:
a drive rotor having a body portion to which external power is
transmitted, a support portion rotatably supported at one axial end of
the compressor, and a connecting portion for connecting one axial end
of the body portion and one axial end of the support portion;
a driven rotor for transmitting a torque of the drive rotor to a
rotation axis of the compressor;
a one-way clutch provided between the body portion and the
support portion of the drive rotor for transmitting torque in one
direction only of the drive rotor to the driven rotor; and
a connection member for connecting a member of an inner
peripheral side of said one-way clutch and the driven rotor, wherein
said one-way clutch is placed between an inner peripheral surface of
the body portion of the drive rotor and an outer peripheral surface of
the driven rotor.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
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Application 11/130,189

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Monahan US 6,071,206 Jun. 6, 2000
Adaniya US 6,619,929 B2 Sep. 16, 2003
Ohishi US 6,889,807 B2 May 10, 2005

The following rejections are before us for review:
The Examiner rejected claims 1, 4, 6, 12, 14, 16, and 18 under 35
U.S.C. § 102(b) as anticipated by Adaniya.
The Examiner rejected claims 1, 4, 6, 12, 16, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Monahan and Adaniya.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Adaniya and Ohishi.
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Monahan, Adaniya, and Ohishi.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The anticipation rejection based upon Adaniya
Each of independent claims 1 and 18 requires (1) a driven rotor for
transmitting a “torque of the drive rotor to a rotation axis of the compressor”
and (2) a one-way clutch positioned “between an inner peripheral surface of
the body portion of the drive rotor and an outer peripheral surface of the
driven rotor.” Br., Claims Appendix.
The Examiner found that Adaniya teaches a drive rotor 35 (pulley) 1,
39 (transmitting body) having a body portion 353, a driven rotor 18 (rotating

1 Parenthetical nomenclature to Adaniya.
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shaft) or 19 (rotor), a one-way clutch 42, and a connection member 38 (first
power transmitting body). Ans. 3-4 and 10. See also, Adaniya, fig. 1.
Appellants first argue that if Adaniya’s rotor 19 corresponds to
Appellants’ claimed driven rotor, “Adaniya’s one-way clutch 42 is not
positioned between Adaniya’s body 353 and Adaniya’s rotor 19 in any
direction.” Br. 11. We agree with Appellants that Figure 1 of Adaniya
shows one-way clutch 42 to the left of both body portion 353 and rotor 19.
Br. 11. Hence, in a first instance, we find that Adaniya’s rotor 19 cannot
correspond to Appellants’ claimed driven rotor.
The Examiner responds that, “the drive rotor can be either 18 or 19”
and, as shown in Figure 1 of Adaniya, “one way clutch 4[2] is clearly placed
between body 353 and rotor 18.” Ans. 12. The Examiner further notes that
because drive shaft 18 of Adaniya is driven by rotor 35, “element 18 is
clearly a ‘driven rotor’ as broadly recited.” Ans. 11. Moreover, the
Examiner notes that the recitation “for transmitting a torque of the drive
rotor to a rotation axis of the compressor,” as per claim 1, is an intended use
recitation. Ans. 3.
Although we appreciate that claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function (see
In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997)), nonetheless, a
functional limitation must be evaluated and considered, just like any other
limitation of the claim, for what it fairly conveys to a person of ordinary skill
in the pertinent art in the context in which it is used. In this case, the
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Application 11/130,189

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recitations “for transmitting2 a torque of the drive rotor to a rotation axis of
the compressor,” as per claim 1, and “that transmits the torque of the drive
rotor to a rotation axis of the compressor,” as per claim 18, mean that the
claimed driven rotor must be capable of transmitting a torque from one place
to another, namely, from the drive rotor to the rotation axis of the
compressor. However, as noted by Appellants, because drive shaft 18 “is
the rotational axis of Adaniya’s compressor,” Adaniya’s drive shaft 18
cannot correspond to Appellants’ claimed driven rotor because it “would be
transmitting torque of the drive rotor to itself.” Br. 10-11. Hence, in other
words, Adaniya’s drive shaft 18 is not capable of transmitting (sending,
conveying) a torque from one place to another, that is, from drive rotor 35 to
a rotation axis of a compressor. As such, we agree with Appellants that
because drive shaft 18 constitutes the rotational axis of Adaniya’s
compressor, drive shaft 18 cannot also constitute the driven rotor, as called
for by independent claims 1 and 18. See Br. 10.
In conclusion, for the foregoing reasons, we cannot sustain the
rejection of independent claims 1 and 18, and dependent claims 4, 6, 12, 14,
and 16, under 35 U.S.C. § 102(b) as anticipated by Adaniya.

The obviousness rejection over Adaniya and Ohishi
With respect to the rejection of claim 8, the addition of Ohishi does
not remedy the deficiencies of Adaniya as described above. Accordingly,

2 An ordinary and customary meaning of the term “transmit” is “to send
or convey from one person or place to another.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY (10th Ed. 1997).

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the rejection of claim 8 over the combined teachings of Adaniya and Ohishi
likewise cannot be sustained.

The obviousness rejection over Monahan and Adaniya
As noted above, each of independent claims 1 and 18 requires a one-
way clutch positioned “between an inner peripheral surface of the body
portion of the drive rotor and an outer peripheral surface of the driven rotor.”
Br., Claims Appendix.
The Examiner found that Monahan discloses a drive rotor 116ʹ
(sheave) 3,4, a driven rotor 118′ (breaking ring), a one-way clutch 160 (needle
roller clutch bearing), and a connection member 122′ (sleeve). Ans. 6-7.
See also, Monahan, fig. 2.
Appellants argue that Monahan’s one-way clutch 160 “is not placed
between an inner peripheral surface of the radially outermost portion of
Monahan’s sheave 116[ʹ] … and an outer peripheral surface of Monahan’s
breaking ring 118′.” Br. 13. According to Appellants, in contrast to
independent claims 1 and 18, which require that a one-way clutch be
positioned between a drive rotor and a driven rotor, Monahan’s one-way
clutch 160 is placed between drive rotor 116ʹ (sheave) and connection
member 122ʹ (sleeve). Id.

3 Parenthetical nomenclature to Monahan.
4 Pointing to Figure 2, Monhan’s Specification describes sheave 116,
braking ring 118, and sleeve 122. Monahan, col. 6, ll. 41, 51, 62, and 64.
However, Figure 2 shows elements 116ʹ, 118′, and 122ʹ. For the purpose of
this appeal, we interpret element 116ʹ to be the same as sheave 116, element
118′ to be same as breaking ring 118, and element 122ʹ to be the same as
sleeve 122.
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Although we appreciate Appellants’ position that Monahan’s one-way
clutch 160 is placed between drive rotor 116ʹ (sheave) and connection
member 122ʹ (sleeve), nonetheless, we agree with the Examiner that
Monahan’s one-way clutch 160 is also positioned between drive rotor 116ʹ
(sheave) and driven rotor 118′ (breaking ring), as called for by independent
claims 1 and 18. Ans. 13. See also, Monahan, fig. 2. Independent claims 1
and 18 do not require that a one-way clutch be positioned directly between a
drive rotor and a driven rotor. As stated by our reviewing court in In re
Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is
the claim.” It is well established that limitations not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982). Moreover, Appellants’ Specification likewise does not
describe the position of one-way clutch 30 as being directly between drive
rotor 21 (pulley) and driven rotor 50 (torque plate), but rather shows an
intermediate connection ring 40. See Appellants’ Drawings, fig. 1.
Lastly, we note that Appellants do not argue the Examiner’s proposed
combination of the teachings of Monahan and Adaniya. Thus, for the
foregoing reasons, we shall sustain the rejection of independent claims 1 and
18 under 35 U.S.C. § 103(a) as unpatentable over Monahan and Adaniya.
With respect to the rejection of claims 4, 6, 12, and 16, Appellants do
not set forth any other substantive arguments separate from the arguments
presented with respect to the rejection of independent claims 1 and 18. Br.
13. Accordingly, we shall also sustain the rejection of claims 4, 6, 12, and
16 over the combined teachings of Monahan and Adaniya.

The obviousness rejection over Monahan, Adaniya, and Ohishi
Appeal 2010-000856
Application 11/130,189

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With respect to the rejection of claim 8, Appellants rely on the same
arguments made with respect to the rejection of independent claim 1. Br.
13-14. Accordingly, for the reasons set forth supra, the rejection of claim 8
over the combined teachings of Monahan, Adaniya, and Ohishi is likewise
sustained.

SUMMARY
The decision of the Examiner is affirmed as to claims 1, 4, 6, 8, 12,
16, and 18 and reversed as to claim 14.
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)(iv).

AFFIRMED-IN-PART

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