Ex Parte Reinhart et al

Patent Trial and Appeal Board

May 22, 2013

11422702 (P.T.A.B. May. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PAUL REINHART, RAYMOND PUHL,
and JOHN PIEPRZAK
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Appeal 2011-003745
Application 11/422,702
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/422,702

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Appellants’ claimed invention relates to “a camshaft mounted within
the cylinder head of an internal combustion engine and having oil fed to the
various camshaft bearing surfaces.” Spec. para. [0001]. Claims 1 and 11 are
the independent claims on appeal. Claim 1, reproduced below with
emphasis added, is illustrative of the claimed subject matter:
1. A camshaft system for an internal
combustion engine, comprising:
a plurality of camshaft support bulkheads;
a bulkhead thrust surface formed upon an
outer surface of at least one of said support
bulkheads;
a camshaft rotatably mounted upon said
support bulkheads, with said camshaft having at
least one camshaft thrust surface abutting said
bulkhead thrust surface; and
at least one surface-piercing, radially
extending lubricant distribution channel formed in
said bulkhead thrust surface.

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The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 1-6 and 9-12 under 35 U.S.C. § 102(b) as anticipated by
Nakatani (US 4,957,079; iss. Sep. 18, 1990).1
II. Claims 1-12 under 35 U.S.C. § 102(b) as anticipated by Fujita (JP
62008424) 2, or in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Fujita.
III. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over Nakatani and
Fujita.

OPINION
The dispute with regard to these rejections relates to the scope of the
claimed channel. We construe claim 1, and then look to the prior art. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (the first
step in an anticipation analysis is a proper construction of the claims, and the
second step is to compare the properly-construed claim to the prior art).

1 Our opinion consolidates what was presented as two rejections by the
Examiner. See Ans. 3-5.
2 All references are to the English translation, PTO 10-5673, translated by
Schreiber Translations, Inc., Sep. 2010. A copy of this translation was
provided with the Examiner’s Answer. See Ans. 3; see also App. Br. 6
(noting that the Examiner had not yet supplied a translation). Therefore,
Appellants had the benefit of the translation prior to submittal of their Reply
Brief. The publication date listed in the English translation is “19870191,”
which does not appear to be a valid date.
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Claim Construction
Independent claim 1 is directed to a camshaft system that includes a
channel. Specifically, at least one “surface-piercing, radially extending
lubricant distribution channel” formed in the bulkhead thrust surface.3
According to Appellants, the Specification provides a lexicographical
definition that “surface-piercing” means “an open-top channel,” and
therefore, a surface piercing channel as claimed is open to the surface along
its radial length. App. Br. 5 (citing Spec. para. [0013] and the drawings);
Reply Br. 1. The Examiner interprets that the Specification is not
sufficiently clear to establish departure from the common usage of the term
“surface-piercing.” Ans. 8. Rather, according to the Examiner, claim 1
simply calls for the channel to be open to a surface. Ans. 8-9. For the
reasons that follow, we agree with Appellants’ claim construction.
Looking first to the claims, claim 1 recites a “channel,” while claim 2,
which depends from claim 1, recites a “passage.” This distinction suggests
that a channel as claimed differs from a passage.4 Contra. Ans. 8-9; see
Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed.Cir.1991)
(differences among claims can also be a useful guide in understanding the
meaning of particular claim terms); see also Phillips v. AWH Corp., 415 F3d
1303, 1314 (C.A.Fed 2005) (quoting Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582 (C.A.Fed. 1996) (“the claims themselves provide

3 Independent claim 11 contains the same channel limitation.
4 In parity with the claim language, the Specification likewise distinguishes a
passage from a channel, stating that a lubricant “passage” (e.g. camshaft
lubricant supply passage 22) supplies the camshaft bearing with lubricant
and the surface-piercing, radially extending lubrication distribution
“channel” (e.g. channel 38) supplies lubricant to the bulkhead thrust surface.
See Spec. paras. [0004], [0012], [0013].
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substantial guidance as to the meaning of particular claim terms”).
Therefore, the Examiner’s interpretation that a channel is a passage is
incorrect because it is not consistent with the Specification. See In re Am.
Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
We agree with Appellants that an ordinary meaning of the claim term
“channel” is an open-top channel, meaning open to the surface along its
longitudinal axis.5 This meaning is consistent with the Specification, which
depicts channels 38 as open to the surface (bulkhead thrust surface 34a)
along their radially extending length (longitudinal axis). See Spec. figs 1, 2
(channels 38). This suggests a channel as claimed is open to the surface
along its radially extending length. See Phillips v. AWH Corp., 415 F.3d
1303, 1313 (Fed. Cir. 2005) (en banc) (The words of a claim are generally
given their ordinary and customary meaning as understood by a person of
ordinary skill in the art when read in the context of the specification and
prosecution history).
Further considering the Specification, the portion cited by Appellants
follows:
Camshaft support bulkhead 30 also has at least one, and in the
example illustrated in Figure 2, at least two, surface-piercing,
radially extending lubricant distribution channels 38. A single
channel 38 is also shown in Figure 1. Channels 38 are said to
be surface-piercing because each channel has a semicircular
sectional configuration opening onto the surface of one of
bulkheads 30. Channels 38 extend radially only as far as the
maximum diameter of camshaft thrust surfaces 18.

Spec. para. [0013] (emphasis added).

5 Channel: “a long gutter, groove, or furrow as a street or road gutter.”
Webster’s New Universal Unabridged Dictionary (Deluxe 2d ed. 1983)
(“channel,” n., definition 3a).
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Reciting that the channels, “are said to be surface-piercing because…”
clearly indicates to a person of ordinary skill in the art that a meaning of the
term “surface-piercing” is to follow. See, e.g., CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002) (“[A] claim term will
not receive its ordinary meaning if the patentee acted as his own
lexicographer and clearly set forth a definition of the disputed claim term in
… the specification….”).
The Specification also states that camshaft support bulkheads 30 have
at least one bulkhead thrust surface 34a, and channels 38 are depicted as
semicircular in cross section taken perpendicular to the radially extending
length of the channel. Spec. para. [0012]; figs. 1, 2. Therefore, in context,
the Specification describes that channels 38 are said to be surface piercing
because, when viewed in cross section, they are open to bulkhead thrust
surface 34a.
Therefore, “surface-piercing,” as claimed, means that when viewed in
cross section, channels 38 are open to the bulkhead thrust surface 34a of
camshaft support bulkheads 30. Because channel 38 is open to bulkhead
thrust surface 34a when viewed in cross section, channel 38 is open to
bulkhead thrust surface 34a along its radial length. Knowing the scope of
this limitation, we turn to the prior art.

I. Claims 1-6 and 9-12 as anticipated by Nakatani
We agree with Appellants that because Nakatani’s oil passages 27, 29
are not open to the surface along their radial length, they do not correspond
to a surface-piercing, radially extending lubricant distribution channels as
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claimed. See App. Br. 5-6. Consequently, we do not sustain the rejection of
independent claims 1 and 11 and their respective dependent claims 2-6, 9,
10, and 12.

II. Claims 1-12 as anticipated by, unpatentable over Fujita
The Examiner found that Fujita’s oil path 50 corresponds to a surface-
piercing, radially extending lubricant distribution channel as claimed. Ans.
5-7. This finding is based upon the same erroneous claim construction
utilized for the first rejection as discussed, supra. Because Fujita’s oil path
50 is a passage and is not open to the surface along its radial length, we
agree with Appellants that this rejection is similarly in error. See App. Br. 6-
7; Reply Br. 1; Fujita, figs. 1, 5. Accordingly, we do not sustain this
rejection.

III. Claim 8 as unpatentable over Nakatani and Fujita6
The Examiner finds that Nakatani’s oil passages 27 and 29 correspond
to a surface-piercing, radially extending lubricant distribution channel as
claimed, except that they are not semicircular in cross section. Ans. 7. The
Examiner concludes that it would have been obvious to modify Nakatani’s
oil passages 27 and 29 to be semicircular in cross section, as taught by
Fujita’s lubrication passages 73A and 73B. Ans. 7-8. When Nakatani’s oil
passages 27 and 29 are modified as proposed to have a semicircular cross
section, they still will not be open to the surface along their radially

6 Claim 8 depends from independent claim 1, and therefore includes the
claimed channel.
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extending length, and therefore do not correspond to channels as claimed.
See App. Br. 7; Reply Br. 1. Accordingly, we do not sustain this rejection.

DECISION
We reverse the Examiner’s decision to reject claims 1-12.

REVERSED

Klh