Ex Parte Sarder et al

Patent Trial and Appeal Board

Sep 18, 2018

14265805 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/265,805 04/30/2014 Mark J. Sarder
26629 7590 09/20/2018
ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (ZPS)
136 S WISCONSIN ST
PORT WASHINGTON, WI 53074
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.
CET1090.018 4340
EXAMINER
AMICK, JACOB M
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
info@zpspatents.com
sml@zpspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK J. SARDER, JAMES J. DEHN, and
HIROAKI SAT0 1
Appeal2017-005882
Application 14/265,805
Technology Center 3700
Before JENNIFER D. BAHR, SUSAN L. C. MITCHELL, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-23. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Champion Engine Technology, LLC (Appellant) is the Applicant, as
provided in 37 C.F.R. § 1.46, and is identified as the real party in interest.
Appeal Br. 2.
Appeal2017-005882
Application 14/265,805
THE CLAIMED SUBJECT MATTER
Claims 1, 11, and 17 are independent. Appeal Br. 26-29 (Claims
App.). Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An engine assembly comprising:
an internal combustion engine;
an oil cooler connected to the engine to receive heated oil
and discharge cooled oil; and
an engine cover mounted to the internal combustion
engine and having an opening to receive the oil cooler therein.
Id. at 26.
REJECTIONS
I. Claims 1-10 stand rejected under 35 U.S.C. § I02(a)(l) as
anticipated by Mamada et al. (US 2010/0283278 Al, pub. Nov. 11,
2010, hereinafter "Mamada").
II. Claims 11-15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Mamada.
III. Claims 16-23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Mamada and Hufendiek et al. (US 5,477,817,
iss. Dec. 26, 1995, hereinafter "Hufendiek").
DISCUSSION
Rejection I
Claim 1 recites, in pertinent part, "an engine cover mounted to the
internal combustion engine and having an opening to receive the oil cooler
therein." Appeal Br. 26 (Claims App.). This clause includes two features of
the engine cover. First, the engine cover is mounted to the internal
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Application 14/265,805
combustion engine, and, second, the engine cover has an opening in which
to receive the oil cooler. As discussed more fully below, Appellant argues
that Mamada's engine cover does not satisfy either of these required
limitations. See id. at 7-10.
The Examiner finds that Mamada's engine "cover 13 is assembled
into a common unit with the engine," and, thus, "it is considered to be
'mounted to' the engine as generally claimed." Final Act. 6. According to
the Examiner, "[ w ]hile the engine cover may not bolt directly to the engine
block, the engine cover and engine are still connected together via a
common frame, meeting the limitation of 'an engine cover mounted to the
internal combustion engine[,'] as generally claimed." Ans. 18 (underlining
omitted).
Appellant asserts, correctly, that Mamada's engine cover 13 is
mounted to frame 5 (by means of front end portion 13 A 1 of top plate 13 A of
engine cover 13 being mounted in support member 14 located on revolving
frame 5), not to engine 8. Appeal Br. 9-10 (citing Mamada ,r 79).
Mamada's engine 8 and counterweight 7 are mounted at rear sides of right
and left vertical plates 5B and 5C of revolving frame 5. Mamada ,r 68.
Thus, Mamada's engine 8 and engine cover 13 may be characterized as both
being mounted to frame 5. However, the fact that engine 8 and engine
cover 13 are mounted to a common element (i.e., frame 5)2 does not mean
that cover 13 is mounted to engine 8, either directly or indirectly. Thus,
Appellant's argument that Mamada's engine cover is not mounted to the
engine, as required in claim 1, apprises us of error in the rejection of claim 1.
2 Engine cover 13 is mounted to frame 5 indirectly via support member 14.
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With respect to the limitation in claim 1 that the engine cover has "an
opening to receive the oil cooler therein," the Examiner finds that Mamada's
engine cover is shaped to surround and enclose oil cooler 23 ( along with
other components) and posits that "everything enclosed within the cover is
received ... within an opening ( or orifice) formed in the cover (i.e.[,] the
interior space of the cover)." Ans. 18 (underlining omitted). This position is
untenable. Appellant argues, and we agree, that "[t]he Examiner's
interpretation of the claimed 'opening' of claim 1 as 'the interior space of
the cover' is inconsistent with the ordinary and customary meaning of the
term opening - both as it is described in the Specification and drawings and
as it is commonly defined." Appeal Br. 9 ( citing a dictionary definition of
"opening" as "a void in solid matter; a gap, hole, or aperture").
As Appellant points out, Appellant's Specification and drawings
disclose "'orifice 48' formed in air board 46 of fan cover 30 (formed
integrally with fan cover 30 or attached thereto) that is configured to receive
oil cooler 22." Id. ( citing Spec. ,r 27; Fig. 5); see also Spec. ,r,r 6, 31
( disclosing an engine cover "having an opening to receive the oil cooler
therein"). It is clear from these disclosures that the claim term "opening" is
used as a synonym to "orifice" and connotes a gap, hole, aperture, or void in
the solid matter comprising the engine cover. An interior space or volume
partially defined or covered by an engine cover is not such an opening of the
cover. Indeed, the term "cover" connotes structure that covers something
else ( either a volume or other structure), and "engine cover" connotes
structure that covers, or partially encloses, an engine. By reading the
claimed "opening" of the "cover" on the interior space covered or enclosed
by the cover, the Examiner applies a claim construction that renders the
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phrase "having an opening" superfluous and, thus, is improper. See Stumbo
v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
( denouncing claim constructions which render phrases in claims
superfluous). For this additional reason, the Examiner's rejection of claim 1
1s m error.
For the above reasons, we do not sustain the rejection of claim 1, or
claims 2-10, which depend from claim 1, as anticipated by Mamada.
Rejection II
Claim 11 recites "[a] method of securing an oil cooler in an internal
combustion engine assembly" comprising, in pertinent part, a step of
"affixing the oil cooler to the engine cover." Appeal Br. 27-28 (Claims
App.).
The Examiner finds that Mamada discloses an assembly comprising,
inter alia, an engine, an engine cover, and an oil cooler, and determines that,
in order to have such an assembly, "steps of providing the elements and
assembling them must be performed." Final Act. 10. According to the
Examiner:
In other words, if not inherent to the assembly having been
formed, it would at least have been obvious ... to assemble the
assembly of Mamada via the general steps of providing the
elements and attaching them to one another, as some such steps
would be required and as the steps (providing, positioning,
securing, etc.) as recited in the claim would universally apply to
constructing almost any assembly.
Id. The Examiner explains that "all the components of Mamada are
connected together," and points especially to Figure 5, which depicts "cooler
23 [being] bolted to cover 13 via frame 21 and other components." Id. at 4.
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According to the Examiner, "cooler 23 is still 'affixed' to cover element 13
even if it is so via a support frame." Id. The Examiner further considers
Mamada's frame 21 "to be part of the 'engine' cover along with element 13
as both elements serve to enclose and enshroud the engine and its associated
components." Id.
Appellant argues that "Mamada fails to teach or suggest affixing the
oil cooler 23 to the engine cover 13, as called for in claim 11." Appeal
Br. 18. Appellant asserts that Mamada's oil cooler 23 is mounted to support
frame 21, which, in tum, is mounted on heat exchanger supporting base 5H
of revolving frame 5. Id. (citing Mamada ,r,r 87, 90).
Engine cover 13, constituted largely by top plate 13A and rear plate
13B, is mounted so as to be openable and closeable, with front end portion
13Al of top plate 13A being mounted in support member 14 located on
revolving frame 5. Mamada ,r,r 77, 79. Mamada's oil cooler 23 is mounted,
via support frame 21, on supporting base 5H of revolving frame 5, as
Appellant asserts. Id. ,r,r 87, 90. In other words, oil cooler 23 is mounted,
via support frame 21, on frame 5, and engine cover 13 is also mounted, via
support member 14, on frame 5. However, although both oil cooler 23 and
engine cover 13 are mounted, indirectly, on frame 5, oil cooler 23 is not
affixed to engine cover 13 and, notably, would not move with engine
cover 13 when engine cover 13 rotates in the upward and downward
directions, as illustrated in Figure 1. Consequently, Mamada does not
disclose inherently, or in any way suggest, a step of affixing oil cooler 23 to
engine cover 13, as required by the claim.
The Examiner's position that support frame 21 forms part of the
"engine cover" is untenable. Support frame 21 encloses intercooler 24,
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radiator 22, and oil cooler 23 to form heat exchanger 20, but does not house,
cover, or enclose engine 8. See id. ,r,r 86, 90-91; Figs. 2, 4. Thus, affixing
oil cooler 23 to support frame 21 does not constitute "affixing the oil cooler
to the engine cover," as recited in claim 11. Appeal Br. 27-28 (Claims
App.).
For the above reasons, the Examiner does not establish that Mamada
renders obvious the subject matter of claim 11, including, in particular, the
step of "affixing the oil cooler to the engine cover." Accordingly, we do not
sustain the rejection of claim 11, or claims 12-15, which depend from
claim 11, as unpatentable over Mamada.
Re} ection III
Claim 16 depends from claim 11, and further recites a step of "fluidly
connecting the oil cooler to the internal combustion engine." Appeal Br. 28
(Claims App.). The Examiner relies on Hufendiek for this aspect of the
claimed invention, but not for any teachings directed to affixing the oil
cooler to the engine cover. Final Act. 15. For all other aspects of claim 16,
the Examiner relies on the same findings and reasoning applied in the
rejection of claim 11. See id. at 14. Thus, the aforementioned deficiency in
the rejection of claim 11 also pervades the rejection of claim 16, which we
also do not sustain.
Claim 17 recites, in pertinent part, an "engine cover having an orifice
therein" and an oil cooler "mounted in the orifice of the engine cover."
Appeal Br. 28-29 (Claims App.). For the reasons discussed above, similar
to the claim limitation "engine cover ... having an opening" in claim 1, we
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construe "orifice of the engine cover" as connoting a gap, hole, aperture, or
void in the solid matter comprising the engine cover.
The Examiner considers Mamada's support frame 21 to be part of the
engine cover, and considers the space between walls 2 lA and 2 lB of
Mamada's support frame 21, in which oil cooler 23 is mounted, to be an
"orifice" in support frame 21 ( and, thus, an "orifice" in the "engine cover").
Final Act. 16. This position is untenable for two reasons. First, as discussed
above, Mamada's support frame 21 does not enclose or cover engine 8 and,
thus, is not part of the "engine cover." Second, as also discussed above, the
space between walls 21 A and 21 B of support frame 21 is not an "orifice" in
support frame 21 (i.e., a gap, hole, aperture, or void in the solid matter
thereof), nor is the space enclosed by cover 13 an "orifice" in cover 13.
The Examiner relies on Hufendiek for its teachings pertinent to the
limitation in claim 17 that the oil cooler is "connected to an oiling system of
the internal combustion engine" (Appeal Br. 28-29 (Claims App.), but not
for any teaching that would make up for the aforementioned deficiencies in
the Examiner's findings vis-a-vis the oil cooler being mounted in an orifice
of the engine cover. See Final Act. 16-17.
Accordingly, we do not sustain the rejection of claim 17, or claims
18-23, which depend from claim 1 7, as unpatentable over Mamada and
Hufendiek.
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Application 14/265,805
DECISION
The Examiner's decision rejecting claims 1-23 is reversed.
REVERSED
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