Ex Parte Saitou et al

Patent Trial and Appeal Board

Nov 27, 2012

11034022 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BUNICHI SAITOU and SEIICHIRO ISHIKAWA
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Appeal 2010-000591
Application 11/034,022
Technology Center 3700
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Before JOHN C. KERINS, WILLIAM V. SAINDON and
NEIL T. POWELL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

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Application 11/034,022

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STATEMENT OF THE CASE
Bunichi Saitou and Seiichiro Ishikawa (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3-5, 7-
11, 13-15, and 17-20. We have jurisdiction under 35 U.S.C. § 6(b).

THE INVENTION
The Appellants’ invention is directed to a rotating fluid machine.
Independent claim 1 is illustrative:
1. A rotating fluid machine comprising:

a casing;

a rotor rotatably supported by the casing;

a group of axial piston cylinders annularly
disposed in the rotor to surround an axis of the
rotor;

a swash plate, rotatably supported on an axis
inclined with respect to the axis of the rotor; and

a rotary valve for controlling supply and
discharge of a working medium to and from an
operating chamber formed between a piston and a
cylinder of the axial piston cylinder group, the
rotary valve comprising (1) a fixed side valve plate
and a movable side valve plate; (2) a passage
located in the fixed side valve plate for supply of
the working medium; (3) a passage in
communication with the operating chamber
located in the movable side valve plate for
receiving the working medium;

a spherical projecting portion formed at a tip
end of the piston abutting against a spherical
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recessed portion annularly disposed in the swash
plate to surround the axis of the swash plate;

the rotor being rotationally driven by a
reaction force which the spherical projecting
portion of the piston receives from the spherical
recessed portion of the swash plate, the piston
advancing by pressure of the working medium
supplied to the operating chamber;

wherein when the passage in the removable
side valve plate comes into communication with
the passage in the fixed side valve plate by relative
rotation of the movable side valve plate with
respect to the fixed side valve plate, the piston is
forcefully pushed out and a contact point at which
the spherical projecting portion of the piston
presses the spherical recessed portion of the swash
plate is located on a cross line on which a plane
including a center of curvature of the spherical
recessed portion and the axis of the swash plate
intersects the spherical recessed portion.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 3-5, 7-11, 13-15, and 17-20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement;
(ii) claims 9 and 19 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter regarded as the invention1; and

1 A rejection of claims 8 and 18 based on indefiniteness was withdrawn by
the Examiner. Ans. 3.
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(iii) claims 1, 3-5, 7-11, 13-15, and 17-20 under 35 U.S.C. § 102(b) as
being anticipated by Makino (US 6,959,638 B2, issued Nov. 1, 2005).

ANALYSIS
Enablement--Claims 1, 3-5, 7-11, 13-15, and 17-20
The Examiner takes the position that the Specification fails to enable
the claim limitation directed to “a contact point at which the spherical
projecting portion of the piston presses the spherical recessed portion of the
swash plate is located on a cross line . . . ,” “when the passage in the
removable side valve plate comes into communication with the passage in
the fixed side valve plate” recited in claims 1 and 11. Ans. 3-4. The
Examiner maintains that an “imbalance of circumferential forces would
cause the swash plate to be moved from the position shown [in Fig. 6] to a
position further forward in a clockwise direction,” resulting in the contact
point CP being “further forward” and not along the cross line CL. Ans. 4.
While the Examiner further discusses the forces on the swash plate, the
Examiner does not sufficiently demonstrate why the swash plate 31 would
move “forward in a clockwise direction” relative to the pistons, resulting in
the contact point CP being “further forward” and not along the cross line
CL.
We have additionally carefully considered the remainder of the
analysis presented by the Examiner, but are not persuaded that the Examiner
has adequately explained why there is reasonable doubt as to the truth or
accuracy of the Appellants’ disclosure. In re Marzocchi, 439 F.2d 220, 224
(CCPA 1971) (“it is incumbent upon the Patent Office … to explain why it
doubts the truth or accuracy of any statement in a supporting disclosure and
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to back up assertions of its own with acceptable evidence or reasoning which
is inconsistent with the contested statement”). Accordingly, we cannot
sustain the rejection of claims 1, 3-5, 7-11, 13-15, and 17-20 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
rejection.
Indefiniteness/New Ground of Rejection--Claims 9 and 19
The Examiner rejects claims 9 and 19 under 35 U.S.C. § 112, second
paragraph, because the claims “do not further limit claims 1 and 11.” Ans.
5. The Appellants counter that claims 9 and 19 do further limit claims 1 and
11 because the phrase “at the time of the start of an intake stroke of a piston”
is not contained in each base claim.
Base claims 1 and 11 set forth that “when the passage in the
removable side valve plate comes into communication with the passage in
the fixed side valve plate by relative rotation of the movable side valve plate
with respect to the fixed side valve plate, the piston is forcefully pushed out
and a contact point… is located on a cross line…” Cl. 1, ll. 19-23; Cl. 11, ll.
18-22. Each of claims 9 and 19 purports to provide a further limitation with
respect to the ‘time’ when “the contact point is located on the cross line” to
be “at the time of start of an intake stroke of the piston.” Cl. 9, ll. 1-2; Cl.
19, ll. 1-2.
“[A] claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the subject matter
claimed.” 35 U.S.C. § 112, fourth paragraph; see also MPEP 608.01(n)(II).
In the instant case, as set forth by claims 1 and 11, at the time contact point
CP aligns with cross line CL, the piston is forcefully pushed out. Cl. 1, l. 21;
Cl. 11, l. 20. This pushing of the piston outwardly, when the valve plates
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come into communication, as required in claims 1 and 11, is also, by
definition, the start of the intake stroke.2 As such, claims 9 and 19 do not
further limit independent claims 1 and 11, and are not in compliance with 35
U.S.C. § 112, fourth paragraph.
We note that the Examiner did not cite the proper portion of the
statute on which the rejection should have been based. We therefore affirm
the rejection, but, pursuant to our authority under 37 C.F.R. § 41.50(b), we
designate the affirmance as a new ground of rejection. The affirmed
rejection of claims 9 and 19 is under 35 U.S.C. § 112, fourth paragraph, as
failing to further limit the claims from which they depend.

Anticipation--Claims 1, 3-5, 7-11, 13-15, and 17-20--Makino
The Appellants argue claims 1, 3-5, 7-11, 13-15, and 17-20 as a
group. We will take claim 1 as representative. See 37 C.F.R. §
41.37(c)(1)(vii).
The Examiner found that Makino discloses all structural limitations
set forth in claim 1. The Appellants argue that the limitation setting forth
that “when the passage in the removable [sic, movable] side valve plate
comes into communication with the passage in the fixed side valve plate . . .
the piston is forcefully pushed out and a contact point… is located on a cross
line . . .” is not disclosed in Makino. App. Br. 24; Cl. 1, ll. 21-23. The
Examiner, in reply, maintains that this limitation is inherently disclosed by
Makino. Ans. 14. The Appellants take the position that the Examiner is

2 We note that if contact point CP aligned with the cross line CL at a
different ‘time,’ claims 9 and 19 would not be consistent with independent
claims 1 and 11.

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relying on speculation, and that inherent disclosure requires that the
limitation “must necessarily be disclosed” by the reference. App. Br. 24-25;
Reply Br. 7.
Contrary to the Appellants’ contention that the Examiner has
improperly attempted to shift the burden as to anticipation by Makino,
where, as here, the Examiner has correctly made findings that the Makino
patent discloses all of the claimed structural elements, the Examiner
rightfully had reason to believe that the functional limitations asserted to be
critical for establishing novelty were inherent in the Makino device.
As such, it was incumbent upon the Appellants to point to evidence,
and not just attorney argument, establishing that the subject matter shown to
be in the prior art does not possess the functional characteristics relied on for
patentability. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where claimed
and prior art products are identical or substantially identical, PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of the claimed product); see also In re
Swinehart, 439 F.2d 210 (CCPA 1971). This, the Appellants have not done.
The Appellants’ Specification does not point to any particular structural
characteristics of the claimed device establishing how the functional
limitations recited by the claims are accomplished by the claimed structure,
but would not be attained by the Makino structure.
Accordingly, we are not apprised of error in the Examiner’s position.
The rejection of claim 1, as well as that of claims 3-5, 7-11, 13-15, and 17-
20, as anticipated by Makino, is sustained.

CONCLUSIONS
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The Examiner erred in rejecting the claims under 35 U.S.C. § 112,
first paragraph, as failing to meet the enablement requirement.
The Examiner erroneously cited to the second paragraph of 35 U.S.C.
§112 in rejecting claims 9 and 19 as indefinite because they do not further
limit the claims from which they depend. The Examiner’s rationale
evidences that the claims are properly rejected under the fourth paragraph of
35 U.S.C. § 112.
The Examiner did not err in finding that the subject matter of claims
1, 3-5, 7-11, 13-15, and 17-20 is anticipated by Makino.

DECISION
The rejection of claims 1, 3-5, 7-11, 13-15, and 17-20 under the first
paragraph of 35 U.S.C. § 112 is reversed.
The rejection of claims 9 and 19 under 35 U.S.C. § 112 is affirmed as
a rejection under the fourth paragraph of that statute, and the affirmance is
designated as a new ground of rejection.
The rejection of claims 1, 3-5, 7-11, 13-15, and 17-20 as being
anticipated by Makino is affirmed.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
“Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board.”
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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Section 41.50(b) also provides that Appellants, 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 . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED; § 41.50(b)

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