Ex Parte SATO et al

Patent Trial and Appeal Board

Feb 28, 2014

11419191 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/419,191 05/18/2006 Osamu SATO OP2006-009 8910
7590 02/28/2014
Michael L. Crapenhoft
c/o Hiroe and Associates
4-3, Usa 3-chome
Gifu-City, 500-8368
JAPAN
EXAMINER
KASTURE, DNYANESH G
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
02/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OSAMU SATO and YOSHITAKE SAKAI
____________

Appeal 2012-003546
Application 11/419,191
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Osamu Sato and Yoshitake Sakai (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1, 2, 5-18, and 20,
which are all of the pending claims. App. Br. 6. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to a hydraulic pump with a
housing that includes a body-side housing and a lid-side housing that can
move away from each other upon excess pressure above a predetermined
threshold pressure. See, e.g., Spec., paras. [0021]-[0023]. Claims 1, 9, and
15 are independent. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A self relieving hydraulic pump used in a hydraulic pump
unit with a construction such that at least a hydraulic pump and
a hydraulic oil tank are integrated and a housing of said
hydraulic pump is contained in the hydraulic oil tank, said
housing comprising:
a body-side housing having a first contact surface, said
first contact surface being integral with said body-side housing;
a lid-side housing having a second contact surface, said
second contact surface being integral with said lid-side housing,
wherein said first contact surface and said second contact
surface are substantially perpendicular to a rotary shaft of the
hydraulic pump, and wherein said first contact surface and said
second contact surface are brought into oil-tight contact by a
predetermined pressure corresponding to an allowable pump
hydraulic pressure, and wherein said oil-tight contact is a metal
to metal contact, and wherein said oil-tight contact substantially
prevents the leakage and/or flow of a hydraulic fluid to an
exterior of the housing, and wherein said body-side housing and
said lid-side housing move away from each other when the
pump hydraulic pressure, during pump operation, exceeds the
allowable pump hydraulic pressure, and wherein such
movement intentionally causes hydraulic fluid to flow between
said body-side housing and said lid-side housing and into the
hydraulic oil tank, and wherein said flow lowers the pump
hydraulic pressure.

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Sadler US 2,765,745 Oct. 9, 1956
McLean US 3,041,979 Jul. 3, 1962
Shivak US 3,747,963 Jul. 24, 1973
Shann US 5,599,059 Feb. 4, 1997
Appellants’ Admitted Prior Art (AAPA) as shown in figures 5a-5d of
the Drawings.

REJECTIONS
The following rejections are before us for review:
I. Claim 20 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. Claims 1, 5, 6, 9, 11, 12, 15, 17, 18, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over AAPA, McLean,
and Sadler, and as evidenced by Shivak.
III. Claims 2, 7, 8, 10, 13, 14, and 16 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over AAPA, McLean,
Sadler, and Shann, and as evidenced by Shivak.

ANALYSIS
Rejection I
Claim 20 as indefinite
The Examiner found that claim 20 is indefinite for depending from
canceled claim 19. App. Br. 33-34; Ans. 7. Appellants argue that an After-
Final Amendment filed May 11, 2011 (After-Final Amendment) proposed,
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inter alia, revising the dependency of claim 20 to depend from claim 17.
App. Br. 34; see also After-Final Amendment 8. However, in an Advisory
Action mailed May 19, 2011 (Advisory Action), the Examiner declined to
enter Appellants’ After-Final Amendment. Ans. 3; see also Advisory
Action 2-3.
The decision of an Examiner to decline to enter an Amendment, in
whole or in part, is a petitionable matter, not an appealable matter, and is not
within the jurisdiction of the Board.1 See Manual of Patent Examining
Procedure (MPEP) §§ 1002.02(c)(3); 1201. We must review the claims as
pending in the record before us. Accordingly, because Appellants to not
present any substantive arguments with respect to the rejection of claim 20
under 35 U.S.C. § 112, second paragraph, as being indefinite, we summarily
sustain the rejection of claim 20.

Rejection II
Claims 1, 5, 6, 9, 11, 12, 15, 17, 18, and 20 as unpatentable
over AAPA, McLean, and Sadler, and as evidenced by Shivak
Claim 1
The Examiner found that AAPA discloses all of the limitations of
independent claim 1, with the exceptions of wherein respective contact
surfaces of the body-side housing and the lid-side housing are brought into

1 We note that Appellants also argue that an objection to the
Specification as failing to provide proper antecedent basis for the claimed
subject matter is in error, based on non-entry of the After-Final Amendment
as discussed supra. App. Br. 34-35; see also Ans. 5-7. An objection is a
petitionable matter, not an appealable matter, and is not within the
jurisdiction of the Board. See MPEP §§ 1002.02(c)(3); 1201; see also In re
Mindick, 371 F.2d 892, 894 (CCPA 1967). As such, the objection to the
Specification is not part of the instant appeal.
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oil-tight contact by a predetermined pressure corresponding to an allowable
pump hydraulic pressure, and wherein the body-side housing and the lid-side
housing move away from each other when the pump hydraulic pressure
exceeds the allowable pump hydraulic pressure, which allows hydraulic
fluid to flow between the housings and into the hydraulic tank, thereby
lowering the pump hydraulic pressure. Ans. 8-9. In particular, the
Examiner determined that AAPA discloses that respective contact surfaces
of the body-side housing and the lid-side housing are brought into oil-tight
contact that is a metal to metal contact. Ans. 5-8; see also fig. 5d.
Furthermore, the Examiner determined that AAPA discloses that hydraulic
fluid would flow between the housing and into the hydraulic tank, should the
housings move away from each other to form a leak, which would thereby
lower the pump hydraulic pressure. Ans. 8.
The Examiner also found that McLean teaches the structure of a pump
with a body-side housing and a lid-side housing, each with a contact surface,
where the “bias of springs (42) maintains contact between the first and
second contact surfaces.” Ans. 9. The Examiner concluded that it would
have been obvious to a person having ordinary skill in the art at the time of
the invention to modify the lid-side housing of AAPA by providing springs
as taught by McLean around the bolts of AAPA to bias the body-side
housing against the lid-side housing “as an alternative” to relying on static
bolting, for the purpose of providing the ability for the pump to be
“completely drained quickly and easily” (e.g., to have hydraulic fluid flow
between the housings). Ans. 9 (citing McLean, col. 1, ll. 56-57). The
Examiner also concluded that it would be routine for one of ordinary skill in
the art to design a spring with an appropriate spring constant that would bias
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the lid-side housing to a closed position (e.g., in sealing contact with the
body-side housing). Ans. 11.
Additionally, the Examiner further found that Sadler explicitly teaches
a pump with a body-side housing and a lid-side housing spring-biased
against each other in a closed position, where “if the pressure within
chamber 11 increases to a predetermined [threshold] value, end cap 21 will
be moved axially outwardly,” and where the “initial tension or bias of
springs (34) determines the amount of [threshold] pressure which may be
built up within chamber 11 before axial outward movement of end cap 21
and the resulting pressure release.” Ans. 11-12 (citing Sadler, col. 2, ll. 32-
35, 38-41); see also Sadler, fig. 1. The Examiner concluded that it would
have been obvious to a person having ordinary skill in the art at the time of
the invention to design the springs of the combination of AAPA and
McLean based on an appropriate spring constant that predetermines an
allowable threshold pressure, which may build up within the pump chamber
and beyond which the lid-side housing moves to an open position to allow
hydraulic fluid to flow between the housings, for the purpose of limiting the
pump pressure buildup to a predetermined threshold value to protect the
pump from damage. Ans. 12.
Describing the various aspects of each reference applied by the
Examiner, Appellants argue that the applied art, namely (1) AAPA and (2)
McLean and Sadler, represent separate technologies of (1) static bolting and
(2) spring-loaded bolting, respectively. App. Br. 22-25. According to
Appellants, neither of these technologies suggests intentionally allowing
fluid to flow between the body-side housing and the lid-side housing to the
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outside of the pressure retaining housing while the housing is under pressure
or in operation. Id.
We are not persuaded by Appellants’ arguments because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the rejection is based on the combined teachings of AAPA, McLean,
and Sadler, as discussed supra.
Regarding the arguments directed to separate technologies, we note
that “[w]hen a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007). Here, the proper inquiry is whether the
Examiner has articulated adequate reasoning based on a rational
underpinning to explain why a person of ordinary skill in the art would have
been led to combine the teachings of AAPA with McLean and Sadler. See
id. at 418 (stating that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness” (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006))).
In this case, the Examiner has provided an articulated reason with
rational underpinning for the combination used in the rejection, namely
providing springs as taught by McLean around the bolts of AAPA to bias the
body-side housing against the lid-side housing as an alternative to static
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bolting, for the purpose of providing the ability for the pump to be drained,
and designing the springs of the combination of AAPA and McLean based
on an appropriate spring constant that predetermines an allowable threshold
pressure (which may build up within the pump chamber and beyond which
the lid-side housing moves to an open position to allow hydraulic fluid to
flow between the housings), as taught by Sadler, for the purpose of limiting
the pump pressure buildup to a predetermined threshold value to protect the
pump from damage, as discussed supra.
We note that “when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” KSR, 550 U.S. at 416. Furthermore, the reason to modify a
reference may often prompt a person of ordinary skill in the art to do what
the inventor has done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggest the combination to
achieve the same advantage or result discovered by an applicant. See, e.g.,
In re Kahn, 441 F.3d at 987.
Given the combination used in the rejection, as discussed supra, the
Examiner has provided a sound basis for finding that the spring-loaded
bolting of McLean and Sadler would have been a suitable alternative for the
static bolting of AAPA. Moreover, Appellants have not provided any
persuasive factual evidence or technical reasoning that the spring-loaded
bolting of McLean and Sadler would be inoperative as an alternative for the
static bolting of AAPA. As explained by the Examiner, the sealing between
the contact surfaces of the body-side housing and the lid-side housing,
respectively, is independent of the manner in which a holding force is
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applied to the lid-side housing (either static bolting or spring-loaded
bolting). Ans. 18. Furthermore, the Examiner found that McLean teaches
intentionally allowing fluid to flow between the body-side housing and the
lid-side housing to the outside of the pressure retaining housing for
providing the ability for the pump to be drained, which would function while
the housing is under pressure or in operation in the combination of AAPA,
McLean, and Sadler.
Appellants also argue that there is no suggestion, motivation, or
obvious rationale to try combining a movable lid and spring-loaded bolting
without the use of a separate seal. App. Br. 25. We are not persuaded by
Appellants’ arguments directed to asserted deficiencies in a combination due
to the incorporation of a separate seal because the Examiner did not
incorporate a separate seal (as disclosed in McLean) into the combination
used in the rejection. Ans. 8-10; 17. Moreover, we note that obviousness
does not require that all of the features of a secondary reference be bodily
incorporated into the primary reference. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
With respect to Appellants’ arguments regarding incorporation of a
separate seal, we are not persuaded of error because these remarks are not
commensurate in scope with the rejection presented. Ans. 9-10. Here, the
Examiner is not proposing to include the separate seal of McLean into the
structure of AAPA, as Appellants argue, but rather is proposing to substitute
only the spring-loaded bolting of McLean (with a spring constant designed
to correlate with a predetermined pump pressure as taught by Sadler), as
discussed in detail supra. Ans. 17. The Examiner established that because
AAPA already provides metal to metal contact in a sealing manner, it would
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be logical for one of ordinary skill in the art to exclude the separate seal of
McLean and rely instead on the direct metal to metal contact of AAPA to
provide an adequate seal. Ans. 10; 17.
Appellants have not provided any persuasive factual evidence or
technical reasoning that a separate seal would be necessary in the
combination used in the rejection, only that embodiments of McLean and
Sadler include a seal. Regarding the contact surfaces being brought into
metal to metal, oil-tight contact without a separate seal, the Examiner
explained that the sealing between the contact surfaces is independent of the
manner in which a holding force is applied (either via static bolting as in
AAPA, or via spring-loaded bolting as in the combination used in the
rejection). Ans. 18.
Thus, based on the reasons explained supra, we are not persuaded of
error in the Examiner’s provision of an articulated reason with rational
underpinning for the combination used in the rejection (without the separate
seal of McLean).
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over AAPA, McLean, and
Sadler, and as evidenced by Shivak.

Claims 5, 6, 9, 11, 12, 15, 17, 18, and 20
With respect to the rejection of claims 5, 6, 9, 11, 12, 15, 17, 18, and
20, Appellants have not set forth any other substantive arguments separate
from the arguments discussed supra. Accordingly, for the same reasons, we
likewise sustain the rejection of claims 5, 6, 9, 11, 12, 15, 17, 18, and 20
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under 35 U.S.C. § 103(a) as unpatentable over AAPA, McLean, and Sadler,
and as evidenced by Shivak.

Rejection III
Claims 2, 7, 8, 10, 13, 14, and 16 as unpatentable
over AAPA, McLean, Sadler, and Shann, and as evidenced by Shivak
Claims 2, 10, and 16
The Examiner found that the combination of AAPA, McLean, and
Sadler, as applied to independent claims 1, 9, and 15 (discussed supra),
discloses all of the limitations of dependent claims 2, 10, and 16, with the
exception of a spacer. Ans. 13-14. The Examiner also found that Shann
teaches a spring-loaded bolting assembly that includes a bolt “encircled by a
concentric spacer sleeve 50.” Ans. 14; see also Shann, col. 3, ll. 16-18;
fig. 3. The Examiner concluded that it would have been obvious to a person
having ordinary skill in the art at the time of the invention to use a spacer
around the bolt as taught by Shann in the combination of AAPA, McLean,
and Sadler, “for the purpose of ‘maintaining a predetermined dimension.’”
Ans. 14 (citing Shann, col. 3, l. 24).
Appellants argue that the claimed spacer extends only to the first
contact surface and “does not extend into the body side mounting hole,” as
allegedly disclosed in Shann. App. Br. 32. We are not persuaded by
Appellants’ argument because, as the Examiner found, Shann’s spacer
sleeve 50 passes through element 24 but does not pass through element 60.
Ans. 21; see also Shann, fig. 3. The Examiner reasoned that, since the
spring 58 biases element 24, a person having ordinary skill in the art would
incorporate the spacer sleeve into the combination of AAPA, McLean, and
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Sadler so that it does not penetrate element 60, thereby extending only to the
first contact surface. Ans. 21.
Appellants further argue that a person of ordinary skill in the art
would not have used Shann’s spacer sleeve, which is for a sunroof module
designed for absorbing impact energy, in the pump housing of AAPA,
McLean, and Sadler. App. Br. 32-33. We are not persuaded by Appellants’
argument because Appellants have not explained why any differences in
technologies are of such a nature as to have dissuaded a person of ordinary
skill in the art at the time of Appellants’ invention from utilizing Shann’s
spacer sleeve in combination with the pump housing of AAPA, McLean, and
Sadler “for the purpose of ‘maintaining a predetermined dimension,’” as
reasoned by the Examiner. As such, we are not persuaded of error in the
Examiner’s articulated reasoning, or that such reasoning lacks a rational
underpinning, for combining the spacer sleeve of Shann with the pump
housing of AAPA, McLean, and Sadler.
With respect to Appellants’ remarks regarding reliance on the
arguments made previously with respect to Rejection II, these arguments are
not persuasive for the same reasons explained supra in the context of
Rejection II.
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 2, 10, and 16 under 35 U.S.C. § 103(a) as unpatentable over AAPA,
McLean, Sadler, and Shann, and as evidenced by Shivak.

Claims 7, 8, 13, and 14
Appellants rely solely on the arguments made previously with respect
to Rejection II. App. Br. 33. Thus, for the same reasons explained supra in
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the context of Rejection II, Appellants’ arguments are not persuasive; hence,
we sustain the rejection of claims 7, 8, 13, and 14 under 35 U.S.C. § 103(a)
as unpatentable over AAPA, McLean, Sadler, and Shann, and as evidenced
by Shivak.

DECISION
We AFFIRM the Examiner’s decision rejecting claim 20 under
35 U.S.C. § 112, second paragraph, as being indefinite.
We AFFIRM the Examiner’s decision rejecting claims 1, 5, 6, 9, 11,
12, 15, 17, 18, and 20 under 35 U.S.C. § 103(a) as being unpatentable over
AAPA, McLean, and Sadler, and as evidenced by Shivak.
We AFFIRM the Examiner’s decision rejecting claims 2, 7, 8, 10, 13,
14, and 16 under 35 U.S.C. § 103(a) as being unpatentable over AAPA,
McLean, Sadler, and Shann, and as evidenced by Shivak.
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).

AFFIRMED

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