Ex Parte Shinbori et al

Patent Trial and Appeal Board

May 11, 2017

12262839 (P.T.A.B. May. 11, 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.
12/262,839 10/31/2008 Isamu SHINBORI 082490 6978
38834 7590 05/15/2017
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON, DC 20036
EXAMINER
POPOVICS, ROBERT J
ART UNIT PAPER NUMBER
1776
NOTIFICATION DATE DELIVERY MODE
05/15/2017 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):
patentmail @ whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ISAMU SHINBORI, YOSHIMICHI TSUBATA, and SUSUMU TAKEI1
(Real Party in Interest: Honda Motor Co., Ltd.)
Appeal 2016-004104
Application 12/262,839
Technology Center 1700
Before PETER F. KRATZ, LINDA M. GAUDETTE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL2
1 Yasuyuki Takei, legal representative of Susumu Takei (deceased), is also listed as
an Applicant.
2 This Decision includes citations to the following documents: Specification filed
Oct. 31, 2008 (“Spec.”); Drawings filed October 31, 2008; Non-Final Office
Action mailed Mar. 13, 2015 (“Non-Final”); Appeal Brief filed July 9, 2015
(“Br.”); and Examiner’s Answer mailed Dec. 4, 2015 (“Ans.”).
Appeal 2016-004104
Application 12/262,839
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
twice rejecting claim 7. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The “invention relates to an oil strainer for filtering an oil in a transmission
case” of a vehicle. Spec. 1. Figure 3 is reproduced below.
■
Figure 3 shows a perspective view of the lower case 12 of an oil strainer in
accordance with the invention. Spec. 12. The oil strainer is produced by welding
flange 16, located along the outer periphery of lower case 12, to corresponding
flange 10 on upper case 6 (shown in Figs. 1 and 2). Id. at 11. Fower case 12
includes oil suction port 14 and cover member 22 by which oil is conducted to
filter member 20 (shown in Figs. 1 and 2). Id. at 12. Preferred shape and
dimensions of cover member 22 are described with reference to original Figures 5
and 7, reproduced below {id. at 14):
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Application 12/262,839
FIG.5
Forward Vehicle Running Direction
>vv
■5^s' <>:
Kv,
’’ 'v--14a
Figure 5 shows the relation between end position 14a of oil suction port 14,
oil suction port cover member 22, and oil surface 28 at the time of maximum
vehicle acceleration. Spec. 9. As illustrated in Figure 5, the maximum inclination
angle a of oil surface 28 can be expressed as a = tan"'(-Gmax/g), where Gmax is
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Application 12/262,839
maximum vehicle acceleration/deceleration and g is gravitational acceleration. Id.
at 15. Figure 7 shows the relation between end position 14a of oil suction port 14
and both oil surface 28 at the time of maximum vehicle acceleration and oil surface
32 at the time of maximum deceleration. Id. at 10. As illustrated in Figure 7,
both the end position 14a of the oil suction port 14 in the direction in
which the oil is conducted by the oil suction port cover member 22
and the total amount of oil in the transmission are determined so that
the end position 14a of the oil suction port 14 is located substantially
at the intersection between the oil surface 28 at the time of the
maximum vehicle acceleration and the oil surface 32 at the time of the
maximum vehicle deceleration.
Spec. 15. According to the Specification, “[t]his makes it possible to lower, as
much as possible, the height of the oil surface, and to reduce the total amount of oil
in the transmission.” Id. at 18. “[Ljength 1 of the oil suction port cover member 22
. . . is so set that the tip position 22d of the oil suction port cover member 22 is
immersed in the oil at the time of the maximum vehicle deceleration.” Id. at 16.
Claim 7 reads as follows:
7. A vehicle, comprising:
a transmission having a transmission case, and
an oil strainer for said transmission, said oil strainer including
a resin-made upper case which is provided with a
communication port for communication to a pump in a side
surface of an upper part thereof and which has an upper flange
at an outer periphery thereof;
a resin-made lower case which is provided with an oil
suction port in a lower surface thereof and which has a lower
flange joined to said upper flange of said upper case;
a filter member which is disposed in a space formed by
joining said upper and lower cases and which filters an oil
flowing from said oil suction port to said communication port;
and
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Appeal 2016-004104
Application 12/262,839
an oil suction port cover member which covers at least an
inside upper surface of said oil suction port and which forms a
passage for conducting said oil to said filter member,
wherein said oil suction port cover member covers a left
side, a right side and a rear side of said oil suction port, in a
forward vehicle running direction, such that an opening is
present on the front side of the oil suction port, in the forward
vehicle running direction,
wherein, as viewed from a left side or a right side which is
perpendicular to the forward vehicle running direction, an end
position of said oil suction port is located substantially at the
intersection between (a) a first line, which has an inclination angle
relative to the direction of gravity represented by tan"'(-Gmax/g) and
(b) a second line, which has an inclination angle relative to the
direction of gravity represented by tan"'(Gmax/g),
wherein g is gravitational acceleration, Gmax is the maximum
vehicle acceleration when g is perpendicular to the forward vehicle
running direction, and -Gmax is the maximum vehicle deceleration
when g is perpendicular to the forward vehicle running direction,
wherein a tip position of said oil suction port cover member is
forward of the second line, in the forward vehicle running direction,
wherein the lower surface of said oil strainer is parallel to a
bottom surface of said transmission case,
wherein said first line passes through a position on said
transmission case which is disposed directly below said tip position of
said oil suction port cover member, and
wherein said second line passes through a portion of said oil
suction port cover member.
Br. 28 (Claims App’x).
Claim 7 stands rejected under:
1. 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (Non-Final 3);
2. 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement (Non-Final 4—12);
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Application 12/262,839
3. 35 U.S.C. § 112, second paragraph, as indefinite (Non-Final 12); and
4. 35 U.S.C. § 103(a) as unpatentable over Morikawa et al, (WO
2005/014141 Al, pub. Feb. 17, 2005 (English Abstract, “Morikawa”)), Agner (US
6,190,546 Bl, iss. Feb. 20, 2001), and Applicants’ Admitted Prior Art (Spec. 3—4,
bridging paragraph3 (“AAPA”)) (Non-Final 14—17).
Rejections under 35 U.S.C. § 112, first paragraph, written description and
enablement requirements
Claim 7 recites:
wherein, as viewed from a left side or a right side which is
perpendicular to the forward vehicle running direction, an end
position of said oil suction port is located substantially at the
intersection between (a) a first line, which has an inclination angle
relative to the direction of gravity represented by tan"'(-Gmax/g) and
(b) a second line, which has an inclination angle relative to the
direction of gravity represented by tan"'(Gmax/g). [(Emphasis
added.)]
The Examiner contends the Specification fails to contain written descriptive
support for “a first line” and “a second line” (claim 7), noting that these terms did
not appear in the originally filed Specification. Non-Final 3.
Appellants concede the original Specification uses the terminology “oil
surfaces” rather than lines, but maintain the subject matter recited in claim 7 is still
fully supported. Br. 10. Appellants argue claim 7 does not merely recite “lines,”
but also specifies the inclination angles thereof relative to the direction of gravity
and maximum acceleration/deceleration of the vehicle. Id. at 8. Appellants argue
the first and second lines are clearly described in original Figures 5 and 6,
respectively, which depict the positions of the lines (reference numerals 28, 32)
3 This paragraph corresponds to paragraph 8 of the published application (US
2009/0127174 Al, pub. May 21, 2009), which is cited by the Examiner.
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Application 12/262,839
with respect to tip position 22d of oil suction port cover member 22 and illustrate
that their maximum angles of inclination (a) are determined by tan"'(-Gmax/g) and
tan '/Gmax/g), respectively. Id. at 6—7.
The Examiner, in response, contends a, as illustrated in Figures 5 and 6, is a
description of the maximum inclination angle of oil surfaces (or lines) 28, 32, but
is not, absent reference to the total amount of oil in the transmission, a description
of the location of those surfaces (or lines). Ans. 18. The Examiner argues that the
only description in the originally filed Specification of how to determine the
locations of oil surfaces (or lines) 28, 32, requires knowledge of the total amount
of oil in the transmission. See Ans. 17—19 (quoting original claim 3: “wherein
both an end position of said oil suction port. . . and the total amount of said oil in
said transmission are so determined that said end position of said oil suction port
is located substantially at the intersection between an oil surface at the time of a
maximum vehicle acceleration and an oil surface at the time of a maximum vehicle
deceleration”) (emphasis added).
The test for sufficiency of a written description is “whether the disclosure
clearly ‘allow[s] persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.’” AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d
1355, 1562—63 (Fed. Cir. 1991)). The drawings alone may provide “written
description” of the invention as required by the first paragraph of § 112. See Vas-
Cath, 935 F.2d at 1565.
Claim 7 recites that the end position of the oil suction port is located at the
intersection of two lines having particular angles of inclination related to the
direction of gravity and maximum acceleration/deceleration of a vehicle. The
original Specification and Drawings, however, do not describe how to locate first
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Application 12/262,839
and second lines having the claimed angles of inclination with respect to an end
position of an oil suction port for any embodiment other than one in which the first
and second lines correspond to oil surfaces, and those surfaces are a function of the
total quantity of oil in the vehicle transmission. See, e.g., original claim 3 supra',
Spec. 15 (“both the end position 14a of the oil suction port 14 . . . and the total
amount of oil in the transmission are determined so that the end position 14a .. . is
located substantially at the intersection between the oil surface[a] 28 [and 32]”); id.
at 18 (“[t]his makes it possible to lower, as much as possible, the height of the oil
surface, and to reduce the total amount of oil in the transmission”); Figs. 1, 2, and
5—7. Appellants argue the first and second lines are based on inherent properties of
the vehicle. Br. 20. Appellants have explained how the inclination angles of the
lines are a property of maximum acceleration/deceleration of a vehicle, but have
not explained how the location of the intersection of the lines relative to the oil
suction port is a function of any property of the vehicle other than the quantity of
oil in the transmission. See, e.g., id. at 20-21.
The Examiner also contends claim 7 fails to meet the enablement
requirement of 35 U.S.C. § 112, first paragraph, because the Specification fails to
provide sufficient direction as to how determine “an end position of said oil suction
port” and “a tip position of said oil suction port cover member” (claim 7). Non-
Final 7, 9.
Appellants argue that the invention, as claimed, requires only a
determination of gravity and maximum vehicle acceleration/deceleration in order
to design an oil strainer having an end position and a tip position at the recited
locations. Appeal Br. 13. Appellants contend these values can be obtained easily
by an ordinary artisan having at least a basic understanding of geometry and
trigonometry. Id. at 13—14.
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Application 12/262,839
“[T]o be enabling, the specification of a patent must teach those skilled in
the art how to make and use the full scope of the claimed invention without ‘undue
experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). In
determining whether undue experimentation would have been required to make
and use an invention, we consider the following factors:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state of the
prior art, (6) the relative skill of those in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
We have fully considered Appellants’ arguments but are not persuaded of
error in the Examiner’s conclusion that claim 7 is not enabled. As explained by the
Examiner, the location of “an end position of said oil suction port” is a function of
the intersection of the first and second lines, and, as discussed above, the manner in
which the location of such lines is determined is not described in sufficient detail
in the Specification to enable one of skill in the art to make the oil suction port
without undue experimentation. See Ans. 10. Like the end position of the oil
suction port, the tip position of the oil suction port cover member is described in
the Specification as being a function of the amount of oil in the transmission. See
Spec. 16 (“[T]he tip position 22d of the oil suction port cover member 22 is so set
as to be immersed in the oil at the time of the maximum vehicle deceleration. In
other words, the length 1 of the oil suction port cover member 22 shown in FIGS. 5
to 7 is so set that the tip position 22d of the oil suction port cover member 22 is
immersed in the oil at the time of the maximum vehicle deceleration” (emphasis
added).). Appellants have not explained persuasively how one of ordinary skill in
the art would have been able to make the oil suction port cover member without
undue experimentation where the quantity of oil in the transmission is unknown.
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Application 12/262,839
We do not agree with Appellants’ contention that the Examiner, in
determining that undue experimentation would have been required to make the
invention of claim 7, failed to properly consider the Wands factors. See Appeal Br.
12. To the contrary, pages 4—12 of the Non-Final Office Action evidence that the
Examiner fully considered the Wands factors in determining claim 7 is not enabled.
Appellants have not explained persuasively why the Examiner erred in concluding
undue experimentation would have been required to determine the location of the
lines and, therefore, the location of the end position of the oil suction port and tip
position of the oil suction port cover member, which are a function thereof. See In
re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982) (explaining that once the
Examiner advances acceptable reasoning inconsistent with enablement, the burden
shifts to Appellants to show that one of ordinary skill in the art could have
practiced the claimed invention without undue experimentation). For example,
Appellants argue the Examiner’s discussion of the properties of the oil are not
relevant because they are not claimed. Appeal Br. 13—14. Wands factors (2) and
(3), however, require consideration of the direction, guidance, and working
examples in the Specification. See Wands, 858 F.2d at 737. Thus, in determining
whether undue experimentation would have been required, the Examiner properly
took into account the fact that the only description in the Specification relating to
the first and second lines is one in which the lines correspond to oil surfaces, and
that the Specification indicates the location of an oil surface would vary depending
on a multitude of factors. See Non-Final 10.
In sum, for the reasons stated above and in the Non-Final Office Action and
the Answer, we are not persuaded of error in the Examiner’s rejections of claim 7
under 35U.S.C. § 112, first paragraph, as failing to comply with the written
description and enablement requirements.
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Application 12/262,839
Rejection under 35 U.S.C. § 112, second paragraph
The Examiner contends claim 7 fails to meet the requirements of 35 U.S.C.
§ 112, second paragraph, because it “omit[s] essential structural cooperative
relationships of elements, [and] such omission amount[s] to a gap between the
necessary structural connections.” Non-Final 12. The Examiner contends, more
specifically, that the term “Tines’ has no basis in the originally filed
Specification . . ., is functionally defined in part by acceleration or deceleration,
. . . [which depends] on the fluid being treated . . ., [and] it is unclear how
Applicants intend the functional conditional recitation, ‘in the forward running
direction,’ to limit the structure of the claim.” Id. The Examiner thus concludes
“it is impossible to determine the location of the claimed ‘tip position.’” Id.
Appellants have persuasively argued that the Examiner has not met the
burden to show indefmiteness. See Appeal Br. 16—18. The Examiner’s rejection is
based on a contention that claim 7 does not recite all structural elements and
dimensional parameters needed to manufacture the claimed transmission and oil
strainer. See Ans. 21—22. Recitation of a complete device, however, is not
required to satisfy 35 U.S.C. § 112, second paragraph. See In re Hyatt, 708 F.2d
712, 715 (Fed. Cir. 1983) (“[I]f the ‘enabling’ disclosure of a specification is not
commensurate in scope with the subject matter encompassed by a claim, that fact
does not render the claim imprecise or indefinite or otherwise not in compliance
with the second paragraph of § 112.” (quoting In re Borkowski, 422 F.2d 904, 909
(CCPA 1970)); In re Miller, 441 F.2d 689, 693 (CCPA 1971) (“[B]readth is not to
be equated with indefmiteness.”). Rather, “[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1310, 1314
(Fed. Cir. 2014).
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Application 12/262,839
The Examiner has not explained sufficiently why the meaning of any
language in claim 7 is unclear. Accordingly, we do not sustain this ground of
rejection.
Rejection under 35 U.S.C. § 103(a) as unpatentable over
Morikawa, Agner, and the AAPA
The Examiner relies on Morikawa for a teaching of the invention as claimed
with the exception of an “oil suction port cover member” (claim 7), and limitations
related thereto. Non-Final 14—15. The Examiner contends one of ordinary skill in
the art would have added this feature to Morikawa based on Agner’s disclosure of
shield 45a that prevents air from entering a filter assembly. Id. at 17. The
Examiner adds intersecting lines to Agner Figure 2b, contending these lines
“substantially delineate liquid levels that would correspond to the liquid levels
disclosed in [Appellants’] application . . . .” Id. at 26.
Appellants have argued persuasively that the Examiner’s annotations to
Agner Figure 2b are arbitrary and are not based on a teaching or suggestion in the
prior art of lines having inclination angles based on maximum
acceleration/deceleration of a vehicle as required by claim 7. See Br. 23—26; Ans.
23 (failing to identify a teaching or suggestion of the inclination angles of the first
and second lines recited in claim 7).
Accordingly, we do not sustain the rejection of claim 7 under 35 U.S.C. §
103(a).
To summarize, we sustain the rejections of claim 7 under 35 U.S.C. § 112,
first paragraph, written description and enablement requirements, but reverse the
rejections under 35 U.S.C. § 112, second paragraph, and 35 U.S.C. § 103(a).
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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)(l)(iv).
AFFIRMED
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