NISSAN MOTOR CO., LTD.

Patent Trials and Appeals Board

Oct 20, 2020

14433388 - (D) (P.T.A.B. Oct. 20, 2020)

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.
14/433,388 04/03/2015 Arata Taguchi 210861-0028-00-
US-521702
1835
55694 7590 10/20/2020
FAEGRE DRINKER BIDDLE & REATH LLP (DC)
1500 K STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005-1209
EXAMINER
KESSLER, MICHAEL A
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARATA TAGUCHI
Appeal 2020-005079
Application 14/433,388
Technology Center 3700
Before JOHN C. KERINS, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5–7, 11, and 12. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION in
accordance with 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Nissan Motor Co.,
Ltd. Appeal Br. 3.
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Application 14/433,388

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CLAIMED SUBJECT MATTER
The claims are directed to an engine oil pan. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An oil pan for an internal combustion engine of a vehicle
and for storing an engine oil thereof, comprising:
an upper oil pan fixed to an engine body, the upper oil pan
being formed of a metallic material;
a lower oil pan formed of a synthetic resin material, the
lower oil pan having a major part and a peripheral part
surrounding the major part, the peripheral part being sealingly
fixed on a lower side of the upper oil pan;
a strength member that is a beam fixed to the upper oil pan,
the beam being formed integral with the upper oil pan and
extending in a direction along a longitudinal axis of the vehicle;
and
a rib extending in the direction along the longitudinal axis
of the vehicle, the rib being provided in an interior of the lower
oil pan and beneath the beam to have a gap between opposite
surfaces of the rib and the beam so that the rib is brought into
contact with the beam to close the gap when external force which
deforms the major part of the lower oil pan in the direction along
the longitudinal axis of the vehicle acts on the major part of the
lower oil pan, thereby preventing the major part of the lower oil
pan from further deforming in the direction along the
longitudinal axis of the vehicle,
wherein the beam is shaped such that its bottom edge
protrudes downwardly while the rib is shaped such that its top
edge is so downwardly cut away as to accept the protruding
shape of the beam,
wherein the beam is a sole structure of the upper oil pan to
prevent the further deformation of the major part of the lower oil
pan.
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Application 14/433,388

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nagano US 7,748,500 B2 July 6, 2010
Enokida US 2010/0162988 A1 July 1, 2010
Tashiro JP H0575456 Oct. 15, 1993
REJECTION
Claims 1, 5–7, 11, and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Enokida, Tashiro, and Nagano.
OPINION
New Grounds of Rejection–Written Description and Indefiniteness
Claim 1 requires a “beam being formed integral with the upper oil pan
and extending in a direction along a longitudinal axis of the vehicle.”2 The
“upper oil pan” is fixed to a “lower oil pan having a major part and a
peripheral part surrounding the major part.” The claim further specifies that
“the beam is a sole structure of the upper oil pan to prevent the further
deformation of the major part of the lower oil pan.”3
“The test for the sufficiency of the written description ‘is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.’” Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d
671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)).

2 This limitation was not present in the original claims, and was added by
amendment on October 4, 2017 (the “2017 Amendment”).
3 This limitation was not present in the original claims, and was added by
amendment on October 1, 2018 (the “2018 Amendment”).
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Application 14/433,388

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When addressing the Examiner’s findings related to the “longitudinal
axis of the vehicle,” “Appellant submits that a person having ordinary skill
in the art would not analogize a longitudinal axis of the vehicle to the ‘front
to rear direction’ of the vehicle or to a ‘longitudinal direction’ of the vehicle
more generally.” Appeal Br. 7. Appellant contends that “a person having
ordinary skill in the art would understand the ‘longitudinal axis of the
vehicle’ to be a single specific axis running the length of the vehicle through
the vehicle’s center of gravity.” Id.
Notably, the Specification does not mention a single specific axis
running the length of the vehicle through the vehicle’s center of gravity. In
fact, the Specification does not even mention a longitudinal axis of a vehicle.
We cannot even find the term “longitudinal” or “axis” in the Specification.
Instead, the Specification repeatedly references “front-rear direction of the
vehicle.” See Spec. ¶¶ 1, 4–7, 11, 13–18, 20–21, 24, 27, 36, 38, 41–42;
Figs. 1–3, 6–9, 12 (illustrating front-rear direction “LO”). Appellant
references paragraph 20 of its Specification as support for the beam
extending along a longitudinal axis of the vehicle. Appeal Br. 4. That
portion of the Specification explains that “[m]etallic upper oil pan 13 is
formed integral with two beams 25 as strength members extending in the
front-rear direction of the vehicle or in the direction ‘LO’, so as to
correspond to two deformation-preventing ribs 24 that lower oil pan 14 has.”
Based on Appellant’s own contentions, we know that this front-rear
direction of a vehicle is not meant to disclose a longitudinal axis of that
vehicle because “a person having ordinary skill in the art would not
analogize a longitudinal axis of the vehicle to the ‘front to rear direction’ of
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Application 14/433,388

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the vehicle or to a ‘longitudinal direction’ of the vehicle more generally.”
Appeal Br. 7.
Accordingly, the application as originally filed fails to provide written
description support for a “beam being formed integral with the upper oil pan
and extending in a direction along a longitudinal axis of the vehicle.”
The additional recitation in claim 1 that “the beam is a sole structure
of the upper oil pan to prevent the further deformation of the major part of
the lower oil pan” is also problematic. Appellant cites paragraphs 20 and 24
of its Specification as providing support for this limitation. Appeal Br. 5.
Paragraph 20 says nothing about any deformation prevented by beams 25.
Paragraph 24 explains that
[t]he present embodiment is arranged such that, at the time of
lower oil pan 14 getting deformed, deformation-preventing ribs
24 of lower oil pan 14 are brought into contact with beams 25
provided to upper oil pan 13 to serve as strength members. With
this arrangement, lower oil pan 14 is prevented from a further
deformation in the front-rear direction of the vehicle (or in the
direction 30 ‘LO’). As a result, it becomes possible to effectively
suppress an excessive deformation of lower oil pan 14 while
forming lower oil pan 14 from a lightweight inexpensive
synthetic resin material.
Paragraph 24 of the Specification discusses an interaction between beams 25
and ribs 24 that inhibits deformation of lower oil pan 14. Based on that
discussion, however, there is no reason to believe that beams 25 are the sole
structure of upper oil pan 13 that prevents further deformation of the major
part of lower oil pan 14.
Moreover, it is unclear what delineates the “major part” of lower oil
pan 14 from the remainder of lower oil pan 14. Based on our review of the
Specification, we fail to see any distinction between different regions of
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Application 14/433,388

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lower oil pan 14. Even if lower oil pan 14 would be understood by one of
skill in the art as having a “peripheral part” and a “major part,” there is no
disclosure as to a sole source of deformation prevention associated with a
particular one of those portions.
Additionally, we note that the claim recites that “the beam is a sole
structure of the upper oil pan to prevent the further deformation.” Emphasis
added. Appellant, however, identifies an embodiment having two beams as
supporting this limitation. See Appeal Br. 5 (citing Spec. ¶ 24). This is also
clear from the arguments submitted with the claim amendment adding “the
beam is a sole structure of the upper oil pan to prevent the further
deformation” limitation. 2018 Amendment 7–8.
Accordingly, the application as originally filed also fails to provide
written description support for “the beam [being] a sole structure of the
upper oil pan to prevent the further deformation of the major part of the
lower oil pan.”
The limitations discussed above also present issues concerning
indefiniteness of the claim. A claim is properly rejected as indefinite if, after
applying the broadest reasonable interpretation in light of the Specification,
the metes and bounds of a claim are not clear because the claim contains
words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307,
1310 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, Appeal No.
2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017)
(precedential) (adopting the approach for assessing indefiniteness approved
by the Federal Circuit in Packard).
The limitations noted above introduce an unacceptable level of
ambiguity into the claims. Although claim 1 is directed to an oil pan, it
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Application 14/433,388

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defines structural features of that oil pan relative to “a longitudinal axis of a
vehicle,” which, according to Appellant, depends on the center of gravity of
a particular vehicle. See Appeal Br. 7 (“[A] person having ordinary skill in
the art would understand the ‘longitudinal axis of the vehicle’ to be a single
specific axis running the length of the vehicle through the vehicle’s center of
gravity.”). Appellant provides no guidance as to how this affects the
structure of the oil pan. Based on Appellant’s own Specification, it appears
that in one instance, the oil pan could meet the limitation noted above, while
in another instance, the identical oil pan would not meet the recitation noted
above. See, e.g., Spec. ¶ 42 (“In the above embodiments the present
invention is applied to an internal combustion engine of a vertically
installable type; however, it is also possible to apply the present invention to
an internal combustion engine of a horizontally installable type where the
direction of a crank shaft is in parallel with the vehicle width direction, for
example. In this case also, beams and deformation-preventing ribs are
formed along the front-rear direction of the vehicle as in the case of the
above-mentioned embodiments.”). Simply looking at the oil pan, even after
installed on a given engine, it may be impossible to determine whether or
not that oil pan meets the claim because that oil pan may be used for what
the Specification refers to as “a vertically installable type” engine or a
“horizontally installable type” engine.
Moreover, it is unclear how “a direction along a longitudinal axis of a
vehicle,” as recited in the claim, differs from a front-rear direction of that
vehicle. As noted above, according to Appellant, we must know something
about the center of gravity of the vehicle having an engine with the recited
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oil pan in order to understand the “direction along a longitudinal axis of a
vehicle.” This adds an even greater level of ambiguity into the claim.
The recitation that “the beam is a sole structure of the upper oil pan to
prevent the further deformation of the major part of the lower oil pan”
provides a further basis for determining that claim 1 is indefinite. The claim
provides no indication as to what forms the “major part of the lower oil
pan.” As noted above, the Specification also fails to provide any guidance
as to the structure defining the “major part of the lower oil pan.” Moreover,
the deformation being defined “in the direction along the longitudinal axis of
the vehicle” also adds ambiguity for the reasons discussed above relative to
the “longitudinal axis.” Appellant’s contentions, as well as dependent
claim 5, further muddle the understanding of the “the beam [being] a sole
structure of the upper oil pan to prevent the further deformation of the major
part of the lower oil pan.” Appellant contends that multiple beams are “the
beam” recited in claim 1. Claim 5, which depends from claim 1, recites that
there are “two pairs of the beams and the ribs.” Claim 1, on the other hand,
appears to indicate that a single beam is the “sole structure . . . to prevent the
further deformation.”
Based on the lack of support for the claim limitations noted above,
and the confusion created by that claim language, we exercise our authority
under 37 C.F.R. § 41.50(b) and enter a new ground of rejection of claims 1,
5–7, 11, and 12 under 35 U.S.C. § 112(a) as failing to comply with the
written description requirement, as well as under 35 U.S.C. § 112(b) as
indefinite.
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Application 14/433,388

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Obviousness Rejection
Although we determine the claims to be indefinite, we are able to
reach the Examiner’s rejection of those claims as obvious. The Examiner’s
rejection includes a fatal erroneous finding. The Examiner finds that
Ekonida’s “beams M4 and S2 as seen in figure 1 extend in a direction along
the longitudinal axis of the vehicle” because “[t]he change in position from
one end point of beams S2 and M4 to opposing end point of each respective
beam S2 or M4 each comprise a X vector or width component and a Y
vector or longitudinal component.” Ans. 13.
The claim requires that “the beam . . . extend[s] in a direction along a
longitudinal axis of the vehicle.” Extending at a non-zero angle relative to
the longitudinal axis is not “extending in a direction along a longitudinal
axis,” as required by the claim. As noted above, the Examiner
acknowledges that Enokida’s beams S2 and M4 extend at a non-zero angle
relative to what the Examiner finds corresponds to the recited “longitudinal
axis.” See Ans. 14 (discussing the “X vector” component and the “Y vector”
component shown in Enokida’s Figure 1). Accordingly, we do not sustain
the Examiner’s decision to reject claims 1, 5–7, 11, and 12.
CONCLUSION
The Examiner’s obviousness rejection is reversed. We enter new
grounds of rejection based on lack of written description and indefiniteness.
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Application 14/433,388

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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1, 5–7,
11, 12
103 Enokida, Tashiro,
Nagano
1, 5–7,
11, 12

1, 5–7,
11, 12
112(a) Lack of Written
Description
1, 5–7,
11, 12
1, 5–7,
11, 12
112(b) Indefiniteness 1, 5–7,
11, 12
Overall
Outcome
1, 5–7,
11, 12
1, 5–7,
11, 12

TIME PERIOD FOR RESPONSE
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of 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.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
Appeal 2020-005079
Application 14/433,388

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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).
REVERSED; 37 C.F.R. § 41.50(b)