Ex Parte VAN DER MEI et al

Patent Trial and Appeal Board

Nov 30, 2018

14647942 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/647,942
81598 7590
Mark Ussai
SKF USA Inc.
890 Forty Foot Road
PO Box 352
Lansdale, PA 19446
FILING DATE FIRST NAMED INVENTOR
05/28/2015 Nijs VAN DER MEI
12/04/2018
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2012P00316WOUS 9791
EXAMINER
DIAZ, THOMAS C
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
ipr@skf.com
mark.ussai@skf.com
bryan. peckj ian @skf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIJS VAN DER MEI and BENOIT HAUVESPRE 1
Appeal2018-002668
Application 14/647,942
Technology Center 3600
Before MICHELLE R. OSINSKI, JILL D. HILL, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
OSINSKI, 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, 13, 15, 16, 21, 22, and 24. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 AKTIEBOLAGET SKF ("Appellant") is the Applicant as provided in 37
C.F .R. § 1.46 and is identified as the real party in interest. Appeal Br. 1.
2 Claims 4--9, 12, 14, 19, 20, and 25 are cancelled, and claims 10, 11, 14,
1 7, 18, and 23 are withdrawn. Amendment in Response to Final Office
Action Mailed April 27, 2017, 2--4 (June 27, 2017).
Appeal 2018-002668
Application 14/647,942
THE CLAIMED SUBJECT MATTER
Claims 1, 15, and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. A cam follower including a plunger configured to execute a
reciprocating movement in an exterior body, the plunger
including:
a plunger body having a cylindrical exterior surface;
an anti-rotation device extending radially beyond the
cylindrical exterior surface of the plunger body and configured
to engage a matching structure in the exterior body;
1',,_.., ~, ...._, ...
a roller providing the contact with a earn;
a sleeve rotatably supporting the roller in the plunger
body;and
at least one lateral bore included in the plunger body,
wherein the sleeve is inserted in the bore,
wherein the anti-rotation device is one end of the sleeve
extending radially beyond the cylindrical exterior surface of the
plunger body, and
wherein the sleeve is free-floating in the plunger body.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hofmann
Philo
Ambrock
Silva
us 3,668,945
us 5,775,275
DE 102 008 002 378 Al
DE 102 010 027 608 Al
THE REJECTIONS
June 13, 1972
July 7, 1998
Dec. 17, 2009
Jan. 19,2012
I. Claims 1-3, 13, 15, 16, 21, 22, and 24 stand rejected under
35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 2--4.
II. Claims 1, 15, and 16 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Philo. Id. at 4--5.
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III. Claims 2 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Philo and Hofmann. Id. at 5---6.
IV. Claims 3 and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Philo and Ambrock. Id. at 6.
V. Claims 13 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Philo and Silva. Id. at 6-7.
OPINION
Rejection I
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014 ). "[A] claim is indefinite when it contains words or
phrases whose meaning is unclear." Id. at 1322 (citing MPEP § 2173.05(e)
(9th ed. 2018)). 3
The Examiner determines first that the claims are indefinite because
the claimed anti-rotation device is recited as being "configured to engage a
matching structure in the exterior body" (Appeal Br. 9-10 (Claims App.)),
but Appellant also takes the position that the exterior body and matching
structure therein are not being positively recited. Final Act. 2. The
Examiner questions whether "any sleeve end [ would] have the
3 The Supreme Court has also instructed that "a patent is invalid for
indefiniteness if its claims, read in light of the specification delineating the
patent, and the prosecution history, fail to inform, with reasonable certainty,
those skilled in the art about the scope of the invention." Nautilus, Inc. v.
Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). We determine the
outcome would be the same in this case under either the Packard or Nautilus
standard.
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Application 14/647,942
corresponding structure simply because it could conceivably be engaged
with some matching structure in an exterior body." Id. at 3. The Examiner
maintains that it is unclear "[ w ]hat exact particular structure of the anti-
rotation device is being claimed or implied by said functional recitation."
Id. Appellant responds that the claims are "clear and definite without the
need to positively claim an additional structure ... with which the cam
follower will be used" (Appeal Br. 3), and that the claims "define[] the
physical structure of the anti-rotation device" (Reply Br. 1).
We disagree with the Examiner that the claim language is indefinite.
Although we appreciate the Examiner's position that the limitation is so
broad that it could mean that the anti-rotation device ( comprised of one end
of the sleeve extending radially beyond the cylindrical exterior surface of the
plunger body) could be of potentially any size or shape so as to engage with
any hypothetical matching structure in any hypothetical exterior body, a
claim is not indefinite merely because it is broad. See In re Johnson, 558
F.2d 1008, 1016 n.17 (CCPA 1977); In re Miller, 441 F.2d 689, 693 (CCPA
1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970).
The Examiner determines secondly that the claims are indefinite
because the sleeve is recited as being "'free-floating' in the plunger body,"
but the use of the plunger body within an exterior body will axially fix the
sleeve, and also, if the sleeve is in contact with the plunger body ( as shown
in the Figures of the Specification), there is frictional engagement which
"create[ s] ... a situation where the sleeve would be fixed in said plunger
body due to static friction up to a certain force threshold." Final Act. 3. The
Examiner takes the position that "without actually claiming the particular
structure or structural relationship between the elements[,] one is left to
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Application 14/647,942
interpret these limitations given the broadest and most reasonable
interpretation which ... means if there is some condition in the prior art
which allows for said functionality, the prior art would read on the claim."
Id.
Appellant responds that "mounting the cam follower adjacent to an
exterior body may limit the axial movement of the sleeve, but nothing in the
record suggests it will axially fix the sleeve." Appeal Br. 3--4. Appellant
also responds that being free-floating, or not axially fixed, is not limited only
to structures that are not in contact with each other. Id. at 4. Appellant
argues that otherwise "any two objects in contact with each other are 'fixed'
to each other" "merely because static friction must be overcome to move
them relative to one another," but this is unreasonable. Id. Appellant
maintains that the broadest reasonable interpretation of "fixed" is "its
ordinary meaning, namely, 'securely placed or fastened."' Id. ( citing The
Merriam-Webster Collegiate Dictionary, www.merriam-webster.com). We
agree with Appellant that a sleeve that "is free-floating in the plunger body,"
as claimed, extends to "a sleeve that is not fixed axially" (Spec. ,r 10),
meaning that the sleeve is not fixed, "[ f]irmly in position; stationary" (The
American Heritage Dictionary of the English Language (5th ed. 2018)) in
the axial direction relative to the plunger body. The Examiner does not
explain sufficiently why the identified claim language, when read in light of
the Specification and given its broadest reasonable interpretation, would be
unclear to one of ordinary skill in the art.
Accordingly, we do not sustain the rejection of claims 1-3, 13, 15, 16,
21, 22, and 24 under 35 U.S.C. § 112, second paragraph, as indefinite.
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Re} ection II
The Examiner finds that Philo discloses all of the limitations of
independent claims 1, 15, and 16, including in relevant part, that "the sleeve
is free-floating or not axially fixed in or relative to the plunger body." Final
Act. 5. More particularly, the Examiner takes the position that the "sleeve
would be free-floating or not axially fixed under at least some conditions, for
example[,] during installation of said sleeve or under enough force to break
the interference fit." Id. Appellant counters that it is unreasonable to
"interpret Philo's shaft, which is explicitly stated to be 'fixed,' to be 'free-
floating' or 'not axially fixed' merely because it could be broken if enough
force is applied." Appeal Br. 6 (citing Philo 2:40-43 (stating "[t]he outer
ends 66 of the shafts 62 are fixed in position within the openings 64 using an
interference fit between the shaft and the opening or through the use of
another suitable method such as staking or pinning")).
To construe the limitation of a sleeve that is free-floating, or not
axially fixed in or relative to the plunger body, as extending to a "fixed"
sleeve merely because the "fixed" sleeve (i) could be subjected to extreme
amounts of force outside of normal operating conditions so as to "break" the
interference fit or (ii) undergoes an installation process prior to achieving the
interference fit, would effectively render the claim limitation superfluous,
and thus would be improper. See Stumbo v. Eastman Outdoors, Inc., 508
F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions which
render phrases in claims superfluous). That is, under the Examiner's
interpretation, the claim limitations are construed so broadly that every
sleeve would be free-floating, or not axially fixed, simply by virtue of the
sleeve having to undergo an installation process or being capable of being
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broken if enough force is applied, whereas Appellant takes the position that
this would be unreasonable. The terms "free-floating" ( claim 1) or "not
axially fixed" ( claim 15) or "free-floatingly mounted" ( claim 16) must be
construed in a way that gives the terms effect. The Examiner's position fails
to give the terms any effect because every sleeve would meet the limitations.
Therefore, the Examiner's position fails to give proper weight to the
limitations of claims 1, 15, and 16.
For the foregoing reasons, we find that the Examiner erred in finding
that Philo anticipates claims 1, 15, and 16. We do not sustain the rejection
of claims 1, 15, and 16 under 35 U.S.C. § 102(b) as anticipated by Philo.
Rejections 111-V
The rejections of claims 2, 3, 13, 21, 22, and 24 rely on the
Examiner's erroneous findings as to Philo. Final Act. 5-7. The Examiner
does not explain how Hofmann, Ambrock, or Silva might cure this
underlying deficiency. Accordingly, we do not sustain, under 35 U.S.C.
§ 103(a), the rejections of: claims 2 and 21 as unpatentable over Philo and
Hofmann; claims 3 and 22 as unpatentable over Philo and Ambrock; and
claims 13 and 24 as unpatentable over Philo and Silva.
DECISION
The Examiner's decision to reject claims 1-3, 13, 15, 16, 21, 22, and
24 under 35 U.S.C. § 112, second paragraph, as indefinite is reversed.
The Examiner's decision to reject claims 1, 15, and 16 under
35 U.S.C. § 102(b) as anticipated by Philo is reversed.
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The Examiner's decision to reject claims 2 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Philo and Hofmann is reversed.
The Examiner's decision to reject claims 3 and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Philo and Ambrock is reversed.
The Examiner's decision to reject claims 13 and 24 under 35 U.S.C.
§ 103(a) as unpatentable over Philo and Silva is reversed.
REVERSED
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