Ex Parte Urushihata

Patent Trial and Appeal Board

Mar 15, 2018

13210771 (P.T.A.B. Mar. 15, 2018)

United States Patent and Trademark Office
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.
13/210,771 08/16/2011 Haruyuki URUSHIHATA GPK-2018-2749 2796
23117 7590 03/19/2018
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
NGUYEN, HOANG M
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARUYUKIURUSHIHATA
Appeal 2016-001633
Application 13/210,7711
Technology Center 3700
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Haruyuki Urushihata (Appellant) seeks review under 35 U.S.C.
§ 134(a) of the Examiner’s decision, as set forth in the Non-Final Office
Action dated October 24, 2014 (“Non-Final Act.”), rejecting claims 1—8 and
10-12 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellant identifies Denso Corporation as the real party in interest. Appeal
Br. 3.
Appeal 2016-001633
Application 13/210,771
BACKGROUND
The disclosed subject matter “relates to a variable valve timing control
apparatus for an internal combustion engine.” Spec. 1,11. 10-11. Claim 1,
the sole independent claim, is reproduced below.
1. A variable valve timing control apparatus comprising:
a variable valve timing device that controls valve timing
by changing a rotation phase of a camshaft with respect to a
crankshaft in an engine, the rotation phase of the camshaft with
respect to the crankshaft being defined as a VCT phase;
a lock pin to lock the VCT phase at a middle lock phase
positioned at a middle in a controllable range of the VCT phase;
an oil pressure control valve to control pressure of oil
supplied to an advance chamber that drives the VCT phase into
an advance side, a retard chamber that drives the VCT phase into
a retard side, and a lock chamber that drives the lock pin;
an oil pump to supply oil to the oil pressure control valve;
and
an oil securing portion to execute an oil securing control,
wherein
the variable valve timing device is configured to make the
advance chamber and the retard chamber to communicate with
each other by controlling the oil pressure control valve in a
manner that the VCT phase is locked at the middle lock phase by
projecting the lock pin,
the oil pressure control valve supplies oil to one of the
advance chamber and the retard chamber that communicate with
each other when the oil pressure control valve has an oil filling
mode in which both of the advance chamber and the retard
chamber are filled with oil,
the oil securing portion executes the oil securing control
in which the oil pump is controlled to have an oil flow rate that
is equal to or larger than a predetermined value when the oil
pressure control valve has the oil filling mode,
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Application 13/210,771
the oil securing portion determines whether or not to
execute the oil securing control based on at least one of a rotation
speed of the engine and a temperature of the oil, and
the oil pump is driven by only the engine.
Appeal Br. 16—17 (Claims App.).
DISCUSSION
The Examiner rejected claims 1—8 and 10-12 under 35U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
based on a finding that the specification did not support the final limitation
of claim 1—“the oil pump is driven by only the engine.” Non-Final Act. 2.
According to the Examiner, the limitation “is a negative limitation and the
specification does not explicitly disclose that the oil pump is only driven by
the engine.” Id. The Examiner found that “Appellant clearly shows support
for driving the pump with the engine, however the original disclosure makes
no mention of driving the pump exclusively by the engine nor does the
disclosure explain a benefit or reason for improvement over the prior art in
the disclosure for only driving the pump with the engine.” Ans. 5—6. The
Examiner also found that Appellant’s amendment adding the limitation
should not be permitted to distinguish over prior art disclosing an oil pump
driven by an electric motor and an engine, rather than solely by an engine.
Id. at 4—5.
Appellant argues that the “description of only using the engine to
drive the oil pump is repeated throughout the specification.” Appeal Br. 7.
Appellant also argues that “the oil pump is driven only by the engine” is a
positive limitation rather than a negative limitation because the limitation
positively requires an engine-driven oil pump, rather than stating what does
not drive the oil pump. Id. at 11—13. Finally, Appellant contends that the
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Application 13/210,771
limitation does not exclude subject matter, and use of “the term ‘only’ is
similar to changing the open-ended ‘comprising’ to closed-ended ‘consisting
of,”’ a format that often does not violate the written description requirement.
Id. at 13—14.
We determine that Appellant’s position is the better one in the context
of this particular specification. As an initial matter, the Examiner does not
support the position that “the oil pump is driven by only the engine”
amounts to a negative limitation. See Non-Final Act. 2. As Appellant points
out, limiting the structure that drives the oil pump to a particular structure
(the engine) and no other is not the same as using the claim language to
exclude certain structures. See Appeal Br. 12—13. Moreover, even if the
Examiner correctly identified the limitation as a negative limitation, that
does not require a finding that the limitation lacks adequate written support.
As the Examiner acknowledged, “a lack of literal basis in the specification
for a negative limitation may not be sufficient to establish a prima facie
case for lack of descriptive support.” Non-Final Act. 3 (quoting MPEP
§ 2173.05(i)).
The correct inquiry, as framed by the Examiner and Appellant, is
whether the limitation “the oil pump is driven by only the engine” was
described in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor had possession of the claimed
invention. Non-Final Act. 2; Appeal Br. 11 (“[T]he fundamental factual
inquiry is whether the specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
possession of the invention as now claimed.” (quoting MPEP § 2163.02)).
The specification need not use the same words of the claim in order to
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Application 13/210,771
comply with the written description requirement. See Appeal Br. 11
(quoting MPEP § 2163.02). Importantly, the Examiner does not dispute that
the specification discloses driving the oil pump with the engine and does not
disclose any other structure that drives the oil pump. See Ans. 5 (“Appellant
clearly shows support for driving the pump with the engine.”); see also
Spec. 6:31 (“An oil pump 28 of FIG. 2, is driven by the engine 11.”).
The Examiner has not supported adequately the finding that
Appellant’s specification fails to show possession of the invention including
using the engine, and only the engine, to drive the oil pump. Appellant’s
specification discloses use of the engine, and only the engine, to drive the oil
pump. See Spec. 6:31, 8:28—29, 10:4—6; 12:29-30. Appellant was not
required to state that “only” the engine drives the oil pump in order to
support the claim if limiting the structure to “only” the engine does not
involve a break from the norm that one of ordinary skill in the art would
view as outside the scope of the disclosed invention. The Examiner’s
findings do not support the position that one of skill in the art would view
driving an oil pump with an engine, without additional means to drive the oil
pump, as outside the scope of what Appellant invented.
In the Answer, the Examiner found that Appellant’s addition of the
“only” language should not be permitted to distinguish certain prior art
disclosing both an engine and electric motor driving an oil pump. See Ans.
4—5. We do not consider a hypothetical rejection under 35 U.S.C. § 103 to
which the Examiner refers because this appeal only involves the rejection
under 35 U.S.C. § 112, first paragraph. Accordingly, our disposition of this
issue should not be read as an endorsement of Appellant’s attempt to
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Application 13/210,771
distinguish any prior art or to address the merits of any hypothetical § 103
rejection in any way.
DECISION
We reverse the decision to reject claims 1—8 and 10—12 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
REVERSED
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