Ex Parte Reinhart et al

Board of Patent Appeals and Interferences

Jun 9, 2009

11422644 (B.P.A.I. Jun. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PAUL REINHART, GEORGE L. RENO and JUDY JIN
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Appeal 2009-001686
Application 11/422,644
Technology Center 3700
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Decided:1 June 9, 2009
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1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, JOHN C. KERINS and
STEFAN STAICOVICI, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001686
Application 11/422,644

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-14. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). The claims
are directed to a shaft mounting device for an internal combustion engine.
Claim 1 is illustrative of the claimed subject matter and is reproduced below:

1. A shaft mounting device for an internal combustion engine,
comprising:
a bearing body having a mounting base for engaging an
engine structure;
a semi-circular bore formed in said bearing body, with
said semi-circular bore extending upwardly from said mounting
base;
a lubricant inlet port extending upwardly from said
mounting base, and communicating with a lubricant distribution
channel extending about the circumference of said semi-circular
bore; and
an integral, formed-in-place flow regulator located in
said lubricant distribution channel downstream from said
lubricant inlet port.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Cadle 5,501,529 Mar. 26, 1996
Oda 6,035,923 Mar. 14, 2000
Benini US 2002/0191875 A1 Dec. 19, 2002
Appellants’ Admitted Prior Art (“APA”) Figure 5

Claims 1-3, 5, 7, 8 and 10 stand rejected under 35 U.S.C. §102(b) as
being anticipated by APA. Ans. 3.
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Claims 4, 9 and 11 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over APA in view of Benini. Ans. 6.
Claims 4, 6, 9 and 11-13 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over APA in view of Cadle. Ans. 6.
Claim 14 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over APA in view of Oda. Ans. 7.

ISSUE
Claims 1-3, 5, 7, 8 and 10 are argued as a group. App. Br. 5. We
select claim 1 as the representative claim, and claims 2, 3, 5, 7, 8 and 10 will
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Appellants contend
that the claim terms “integral” and “formed-in-place” patentably distinguish
the flow regulator of claim 1 from the APA restrictor 110 depicted in Figure
5 of the Specification. The Examiner disagrees. Ans. 4, 8. While the
rejection of claims 4, 9 and 11 as being unpatentable over APA in view of
Benini; the rejection of claims 4, 6, 9 and 11-13 as being unpatentable over
APA in view of Cadle; and the rejection of claim 14 as being unpatentable
over APA in view of Oda, are each argued under a separate heading,
Appellants do not present any substantive arguments that pertain specifically
to those claims, but instead rely upon the same argument as is presented
relative to claims 1-3, 5, 7, 8 and 10. App. Br. 6-7. In light of these
contentions, the sole issue presented is:
Have Appellants established that the Examiner erred in making the
above rejections because the terms “integral” and “formed-in-place”
patentably distinguish the claimed flow regulator from the APA restrictor
110?
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Application 11/422,644

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FINDINGS OF FACT
1. The Specification discloses that a known method for determining how
much lubricant is supplied to engine bearings is by controlling the
amount of oil flowing through a channel 104 in a bearing cap 100 by
placing a flow restrictor 110, which includes an axially drilled passage
112, and a radially drilled passage 114. Spec. para. [0003].
2. The Specification discloses that it is known to manufacture a bearing cap
with a restrictor by starting with a part having an unmachined lubricant
passage. A milling process removes material to define the channel,
including the restrictor. Spec. para. [0005]. We find such a restrictor to be
integral and formed-in-place.
3. The Specification provides that the integral restrictor is less costly than
prior art restrictors, because the hydraulic obstruction may be formed
during the casting portion of a manufacturing process for the shaft
mounting device. Spec. para. [0013].
4. The Specification provides that because the entirety of the shaft mounting
device 22, including the hydraulic obstruction 66, as well as lubricant
distribution channel 62, are formed in place during casting or sintering of
the device 22, the risks and expense of machining are eliminated. Spec.
para. [0022].

PRINCIPLES OF LAW
By filing an application containing figures labeled prior art, and
statements explanatory thereof, an Applicant concedes what is to be
considered as prior art in determining the patentability of the claimed
invention. See Application of Nomiya 509 F.2d 566, 571. (C.C.P.A. 1975).
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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. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987).
Where no explicit definition for a term is given in the specification,
the term should be given its ordinary meaning and broadest reasonable
interpretation. E-Pass Technologies, Inc. v. 3Com Corporation, 343 F.3d
1364, 1368 (Fed. Cir. 2003). The ordinary and customary meaning of a
claim term is the meaning that the term would have to a person of ordinary
skill in the art in question at the time of the invention. Phillips v. AWH
Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005) (en banc). An applicant is
entitled to be his or her own lexicographer and may rebut the presumption
that claim terms are to be given their ordinary and customary meaning by
clearly setting forth a definition of the term that is different from its ordinary
and customary meaning(s). See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
The predecessor to our reviewing court has on several prior occasions
interpreted the term “integral” to cover more than a unitary construction.
See, e.g., In re Kohno, 391 F.2d 959, 960 n.4 (CCPA 1968), In re Dike, 394
F.2d 584, 589, (CCPA 1968), In re Larson, 340 F.2d 965, 967-968 (CCPA
1965), and In re Clark, 214 F.2d 148, 150 (CCPA 1954). The Court of
Appeals for the Federal Circuit has also endorsed that interpretation. See,
e.g., Advanced Cardiovascular Sys. v. Scimed Life Sys., 887 F.2d 1070, 1074
(Fed.Cir.1989) (nothing of record limited “integral” to mean “of one-piece”
construction).

Appeal 2009-001686
Application 11/422,644

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ANALYSIS
Regarding claim 1, requiring the flow regulator to be “integral” and
“formed-in-place” does not necessarily exclude the APA restrictor. The
Specification indicates that the APA restrictor controls the amount of oil
flowing through the channel in a bearing cap (Fact 1) and that the restrictor
is formed along with the channel by a milling process (Fact 2). Since the
APA restrictor resides within the channel and is defined by the same
operation as the channel, it is reasonable to construe the APA restrictor as
“integral” with the channel. Furthermore, contrary to Appellants’ assertion
that the restrictor is machined before being inserted into the bearing cap
(App. Br. 5), the Specification indicates that the APA restrictor is formed in
its final location in the lubrication channel (Fact 2). Thus the APA restrictor
is also “formed-in-place” as required by claim 1.
While the Specification provides that the restrictor may be formed
during casting or sintering (Facts 3 and 4) the Specification does not
explicitly define the terms “integral” or “formed-in-place” to require
manufacture by such processes as Appellants argue (App. Br. 6). Where
Appellants have chosen to employ language broader than is used in the
Specification to define elements of the claims it would be improper to
import limitations from the Specification into the claims. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)
(“Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For example,
a particular embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the embodiment.”)
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Since the Examiner apparently relied solely on figure 5 of the
Specification to support the rejection of claim 1, our additional reliance on
the procedure described in paragraph [0005] changes the thrust of the
rejection. Pursuant to our authority under 37 C.F.R. § 41.50(b), we
denominate the rejection of claim 1 under 35 U.S.C. §102(b) as being
anticipated by APA, figure 5 and paragraph [0005], as a new grounds of
rejection. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976).

CONCLUSION OF LAW
On the record before us, Appellants have not established that the
terms “integral” and “formed-in-place” patentably distinguish the claimed
flow regulator from the APA restrictor.

DECISION
The Examiner’s rejections of claims 1-14 are affirmed. Pursuant to
our authority under 37 C.F.R. § 41.50(b), we denominate the rejection of
claim 1 under 35 U.S.C. §102(b) as being anticipated by APA as new
grounds of rejection.

FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED; 37 C.F.R. § 41.50(b)

Vsh
Appeal 2009-001686
Application 11/422,644

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