Ex Parte Otani

Patent Trial and Appeal Board

Aug 16, 2017

13550959 (P.T.A.B. Aug. 16, 2017)

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.
13/550,959 07/17/2012 Takumitsu OTANI 154036 1353
25944 7590
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
SETLIFF, MATTHIEU F
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/18/2017 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKUMITSU OTANI
Appeal 2015-006332
Application 13/550,959
Technology Center 3600
Before ANNETTE R. REIMERS, ARTHUR M. PESLAK, and
ANTHONY KNIGHT, Administrative Patent Judges.
PESLAK, 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, 3 and 4.1 2 An oral hearing in accordance with
37 C.F.R. § 41.47 was held on August 9, 2017. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Claim 5 is cancelled. Appeal Br. 4.
2 Appellant submits the real party in interest is JTEKT Corporation. Appeal
Br. 3.
Appeal 2015-006332
Application 13/550,959
THE CLAIMED SUBJECT MATTER
Appellant’s “invention relates to a shaft coupling structure and a
steering system that has the shaft coupling structure.” Spec. 12. Claim 1,
the only independent claim, is reproduced below with italics added.
1. A shaft coupling structure that includes a shaft member that is
rotatably accommodated in a housing with one end of the shaft member
protruding from an opening portion of the housing, and a tubular member
that is coupled to the one end of the shaft member so as to be non-rotatable
relative to the one end of the shaft member, wherein
the tubular member has a slit that axially extends from an open end
portion of the tubular member;
a guide cover is fitted around the shaft member so as to be rotatable
together with the shaft member;
the guide cover is formed of a guide portion that protrudes radially
outward from the shaft member and that is engageable with the slit of the
tubular member
wherein the guide portion is a single, plate-shaped portion, and
a cover portion that covers the opening portion of the housing and that
is fitted around the shaft member;
the guide portion and the cover portion are formed integrally with
each other, and
a step portion formed on an upper face of the guide cover and, in use,
the step portion is in direct contact with the open end portion of the tubular
member so as to be fitted to the tubular member.
REJECTION3 * 5
Claims 1, 3, and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over JP02-082673 (published June 26, 1990)(“JP82673”) and
Yamaguchi (US 7,445,242 B2, issued Nov. 4, 2008).
3 The Examiner rejected claim 5 under 35 U.S.C. § 112, first paragraph and
35 U.S.C. § 103(a). Final Act. 3, 6. Appellant subsequently cancelled claim
5 thereby obviating these rejections. Appeal Br. 4.
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Application 13/550,959
DISCUSSION
Appellant argues claims 1, 3, and 4 as a group. Appeal Br. 4—9. We
select claim 1 as representative and claims 3 and 4 stand or fall with claim 1.
37 C.F.R. §41.37 (c)(iv).
The Examiner finds that JP82673 discloses the shaft coupling
structure as recited in claim 1 including a guide portion 26 and cover portion
(15,21) formed integrally with each other but does not expressly disclose
“the guide cover, in use, having the step portion being in direct contact with
the open end portion of the tubular member.” Final Act. 4—5. The Examiner
finds that Yamaguchi discloses “a similar shaft coupling structure having a
similar guide cover (58) with a portion (upper face of 58a) formed on an
upper face of the guide cover being in contact with the open end portion . . .
of the tubular member (56).” Id. at 5. The Examiner concludes it would
have been obvious to modify the shaft coupling structure with Yamaguchi to
have “the upper face of the guide cover in direct contact with the open end
portion of the tubular member [to] prevent undesirable axial movement,
disassembly, and/or displacement of the guide cover.” Id.
Appellant contends that JP82673 does not disclose the limitation of “a
guide portion that protrudes radially outward from the shaft member.”
Appeal Br. 5. In support of this contention, Appellant argues that JP82673’s
“guide portion 26 has a relationship with the joint yoke 24, and specifically
engages with it. . . but has no relationship with the input shaft, as it does not
even engage with it given its positioning.” Id. at 6 (citing JP82673, Fig. 1).
Appellant’s second contention is that the recited cover portion and guide
portion do not read on JP82673’s guide portion 26 and cover portion (15 and
21). Id. at 7. In support of this contention, Appellant argues that item 21 in
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Application 13/550,959
JP82673 is a guide tip that “merely engages with sealing cap 15 . . . and
performs no covering of the opening portion of the housing.” Id.; see also
Reply Br. 3. Appellant then argues that because only sealing cap 15
provides a covering function, then guide tip 21 is not part of the covering
portion and consequently, “sealing cap 15 is not integral in any way with the
alleged guide portion 26.” Id. at 8. Appellant alternatively argues that even
if guide cap 15 and guide tip 21 together comprise the cover portion,
JP82673 discloses that sealing cap 15 and guide tip 21 are made of different
materials and could not be considered integral with guide portion 26. Id. at
8-9.
The Examiner responds that guide portion 26 in JP82673 protrudes
radially outward from the shaft member (10, 11, 12) “because it is
positioned radially outside of the shaft member” as shown in Figure 1 of
JP82673. Ans. 3. The Examiner also notes that claim 1 does not require
“that the guide portion engages the shaft member.” Id. With respect to
Appellant’s argument concerning the cover portion, the Examiner responds
that, in the rejection, the cover portion is a combination of elements 15 and
21, element 21 provides “a covering of the opening portion of the housing,
albeit with a portion of 15 contained there between,” and claim 1 “does not
preclude the cover portion being formed from multi-constituent
components.” Id. at 4. With respect to Appellant’s argument concerning
whether the guide portion and cover portion in JP82673 are formed
integrally with each other, the Examiner responds that
the term ‘integral’ is a relatively broad term inclusive of means for
maintaining parts in a fixed relationship as a single unit, is not
necessarily restricted to a unitary one-piece structure, and does not
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Application 13/550,959
require that [the] components be structurally integral but rather
components only need to be integral in a functional sense.
Id.
We first construe the term “protrudes radially” in claim 1. We give
claim terms their broadest reasonable interpretation consistent with the
Specification as it would be interpreted by one of ordinary skill in the art.
See In re Suitco Surface, Inc., 603 F.3d 1255, 1259—60 (Fed. Cir. 2010); In
re Morris, 111 F.3d 1048, 1054—55 (Fed. Cir. 1997). Although the claims
are interpreted in light of the Specification, limitations from the
Specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).
Appellant’s Specification provides that “guide portion 31 protrudes
outward in the radial direction of the input shaft 13, extends in the axial
direction of the input shaft 13, and contacts the outer periphery of the input
shaft 13.” Spec. 122. The Specification, thus, distinguishes between the
guide portion protruding in the radial direction and contacting the outer
periphery of the shaft. Appellant’s proposed construction of protruding
radially in claim 1 conflates contacting the shaft with protruding radially.
We, therefore, determine that one of ordinary skill in the art after reviewing
the Specification would reasonably understand that the term “protrudes
radially” as used in claim 1 means the guide portion protrudes outward in the
radial direction of the shaft but does not require that the guide portion be in
contact with the shaft.
Figure 1 of JP82673 discloses guide portion 26 protrudes outward in
the radial direction of the shaft. Based on our construction of “protrudes
radially,” the Examiner’s finding that the limitation in claim 1 that the guide
portion “protrudes radially outward from the shaft member” reads on guide
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Application 13/550,959
portion 26 is supported by a preponderance of the evidence. Even if we
were to construe “protrudes radially” as requiring contact with the shaft as
asserted by Appellant, Appellant’s argument that guide portion 26 in
JP82673 does not contact the shaft is based on speculation, not evidence,
about how the parts shown in exploded view in Figure 1 of JP82673 will
interact when assembled.
We also agree with the Examiner that the “cover portion” recited in
claim 1 reads on the combination of elements 15 and 21 in JP82673 for the
following reasons. First, Appellant does not dispute that element 15
provides a covering function required of the covering portion recited in
claim 1. See Appeal Br. 7—8; Reply Br. 2—3. Second, Figure 1 of JP82673
discloses that element 21 fits over element 15. JP82673, Fig. 1. Thus,
element 21 also covers, at least indirectly, “the opening portion of the
housing” and “is fitted around the shaft member” as recited in claim 1.
Appellant’s contention is not persuasive because claim 1 does not preclude a
multi-component cover portion nor does it require that each part of the cover
portion directly cover the opening portion.
We are also not persuaded by Appellant’s contention that JP82673
does not disclose “the guide portion and the cover portion are formed
integrally with each other.” The Federal Circuit has explained that
“integral” can be interpreted “to cover more than a unitary construction . . .
[ajbsent an express definition in their specification” In re Morris, 111 F.3d
1048, 1055—56 (Fed. Cir. 1997)(citations omitted). The Specification
provides “the guide cover 30 has a cover portion 32 and a plate-like guide
portion 31 that are formed integrally with each other.” Spec. 121; see also
id. 125. Appellant does not direct us to any definition in the Specification
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limiting the phrase “formed integrally with each other” to a unitary
construction of the guide portion and the cover portion. Therefore, we
determine that the Examiner’s finding that JP82673 discloses “the guide
portion (26) and the cover portion (combination of 15, 21) are formed
integrally with each other (all integral when assembled)” is supported by a
preponderance of the evidence. Final Act. 5.
As Appellant does not apprise us of error, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a). Claims 3 and 4 fall with claim 1.
DECISION
The Examiner’s decision rejecting claims 1, 3, and 4 is affirmed.
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)(l)(iv).
AFFIRMED
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