Parker-Hannifin Corporation

Patent Trials and Appeals BoardJun 25, 2021

2020006032 (P.T.A.B. Jun. 25, 2021)

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. 15/481,581 04/07/2017 Jason Scot Richardson PA11P0101USA 7053 49458 7590 06/25/2021 DON W. BULSON (PARK) RENNER, OTTO, BOISSELLE & SKLAR, LLP 1621 EUCLID AVENUE / 19TH FLOOR CLEVELAND, OH 44115 EXAMINER LEE, GEOFFREY S ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 06/25/2021 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): ipdocket@rennerotto.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JASON SCOT RICHARDSON and THOMAS KEVIN CASTLE Appeal 2020-006032 Application 15/481,581 Technology Center 3700 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and JEREMY M. PLENZLER, Administrative Patent Judges. BAHR, 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 1–3, 6–9, 11–15, 17, 19, 23, 25, 26, and 29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Parker-Hannifin Corporation. Appeal Br. 2. Appeal 2020-006032 Application 15/481,581 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed to “hydraulic pumps and motors, and more particularly to shaft guards in hydrostatic transmissions.” Spec. 1:4–5. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A shaft guard for use with a hydraulic pump having an input shaft in a hydrostatic transmission, the shaft guard comprising: a rotatable hub having a central body portion and an axially extending peripheral surface; a plurality of blades that extend radially outward from the peripheral surface; an attachment aperture defined by the central body portion; a radial surface defined by the central body portion that radially extends between the attachment aperture and the peripheral surface; and an integral flange that is continuously formed with the rotatable hub and axially extends from the radial surface of the central body portion past the peripheral surface, wherein the integral flange is radially spaced from the input shaft to define a guard space having an area that is less than an area defined by the peripheral surface, wherein the rotatable hub, the plurality of blades, and the integral flange are formed as a single continuous part. REJECTIONS Claims 1–3, 6, and 7 stand rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Ota.2 Claims 8, 9, 11–15, 17, 23, 25, and 29 stand rejected under 35 U.S.C. § 103 as being unpatentable over Iida3 and Ota. 2 US 8,342,808 B2, issued Jan. 1, 2013. 3 US 8,112,991 B1, issued Feb. 14, 2012. Appeal 2020-006032 Application 15/481,581 3 Claims 19 and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Iida, Ota, and Oberg.4 OPINION Anticipation by Ota Claims 1, 3, and 7 The Examiner finds that Ota anticipates the subject matter of claim 1. Ans. 3–4. In doing so, the Examiner reads the claimed “hub” on structure in Ota including a central body portion, comprised of Ota’s boss portion 2 and base portions 3a of blades 3, and an axially extending peripheral surface (cylindrical ring member 20). Id. According to the Examiner, the claimed “radial surface” defined by the central body portion reads on bottom wall 2b of Ota’s boss portion 2 and base portions 3a of blades 3. Id. at 4. The Examiner reads the claimed “plurality of blades” on blade tip portions 3b that extend radially outward from cylindrical ring member 20. Id. The Examiner reads the claimed “integral flange” on Ota’s circumferential wall 2a. Id. We understand the Examiner to be referring to the portion of Ota’s circumferential wall 2a extending to the left of blade base portions 3a in Figure 2 as corresponding to the “integral flange,” with the remainder of circumferential wall 2a connecting bottom wall 2b and blade base portions 3a being part of the “radial surface.” Appellant takes issue with the Examiner considering Ota’s blade base portions 3a to be part of the claimed “hub” and reading the claimed “blades” on blade tip portions 3b. Appeal Br. 13. According to Appellant, a skilled 4 Oberg, E. J., Horton, F. D., & Ryfell, H. H. (26th ed. 2000) Machinery’s Handbook 1165–1668, 2246–2255, Industrial Press, Inc. Appeal 2020-006032 Application 15/481,581 4 artisan would not interpret the term “blades” in a manner that omits “the main portion of the blade, and more specifically, the part of the blade that is attached to the rotatable hub.” Id. In response, the Examiner submits that Ota’s boss portion 2 and blade base portions 3a meet the structural requirements of components of the hub recited in claim 1, despite the different labels given to these elements by Ota. Ans. 12. For the reasons that follow, Appellant’s arguments do not apprise us of a structural distinction between the claimed subject matter and the structure of Ota relied on by the Examiner as corresponding to the recited claim elements. Anticipation “is not an ‘ipsissimis verbis’ test.” In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990) (citing Akzo N.V. v. U.S. Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). “An anticipatory reference . . . need not duplicate word for word what is in the claims.” Standard Havens Prods. Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). The mere fact that Ota does not label the structure relied on by the Examiner as corresponding to the claimed elements of the “hub” using the terminology of the claims is immaterial if Ota’s structure satisfies the structural claim limitations. Appellant submits that, in accordance with its plain meaning, “a hub is a central part of an assembly, such as the boss portion 2 in Ota,” and that “a person having ordinary skill in the art of cooling fans would understand that a fan typically has a central rotatable body and fan blades that extend from the body.” Appeal Br. 13. Thus, Appellant argues that Ota’s “boss portion 2, without the blades 3, should be interpreted as constituting the claimed rotatable hub.” Id. However, although it appears reasonable for one to consider Ota’s boss portion 2 to be a “hub,” Appellant does not Appeal 2020-006032 Application 15/481,581 5 persuasively explain why Ota’s boss portion 2, radially extending blade base portions 3a, and ring member 20 may not also reasonably be considered collectively as comprising a hub. The collective structure comprised of boss portion 2, blade base portions 3a, and ring member 20 is a central part of the fan assembly, and blade tips 3b extend radially outward from this structure as called for in the claim. Appellant argues that “Ota intends for the entire body of the blades 3 to constitute a ‘blade’ arranged on the outer surface of the boss portion 2” and that this interpretation is consistent with Appellant’s Specification and drawings, which describe and show blades having a similar shape and arrangement to those of Ota’s blades 3. Reply Br. 3. Be that as it may, claim 1 does not specify the shape or dimensions of the blades and, thus, does not distinguish them from Ota’s blade tips 3b. Ota’s use of different terminology to label the components does not undermine the Examiner’s finding of anticipation. Appellant points out that Ota’s blade tip portions 3b alone have a radial length that is less than half of the radial length of the entire blade 3 and are not analogous in shape to blades 48 disclosed in the present application. Reply Br. 4–5. Further, Appellant contends that using only Ota’s blade tip portions 3b as fan blades, without blade base portions 3a, would negatively impact the cooling efficiency of Ota’s fan. Id. at 5. This line of argument is not persuasive because: (1) Appellant’s claims do not recite the shape or radial length of the blades and (2) the Examiner’s anticipation rejection does not propose using Ota’s blade tip portions without the base portions of the blades. Appeal 2020-006032 Application 15/481,581 6 Appellant contends that Ota’s ring member 20 “is clearly not an axially extending peripheral surface of the boss portion 2.” Appeal Br. 14. This argument is not pertinent to the rejection, in which the Examiner reads the claimed “hub” not on boss portion 2 alone, but, rather, on portions of boss portion 2, blade base portions 3a, and ring member 20 collectively. See Ans. 3–4. Appellant also argues that Ota’s bottom wall 2b and blade base portions 3a constitute two separate radial surfaces that are interconnected “via an axial and non-radial surface, i.e.[,] the circumferential wall 2a.” Appeal Br. 15. Appellant’s argument is not persuasive. Ota’s bottom wall 2b, a portion of circumferential wall 2a, and blade base portions 3a form one continuous surface that extends radially from a central aperture to ring member 20. See Ans. 12 (emphasizing that the surface formed by these elements is continuous). Claim 1 does not specify that the radial surface is planar, nor does it exclude axially extending portions from the claimed “radial surface.” Appellant submits that “blades extending from the rotatable hub cannot define the radial surface of the rotatable hub.” Appeal Br. 15. This argument is unavailing because the Examiner’s rejection reads the claimed “hub” not on boss portion 2, but on portions of boss portion 2, blade base portions 3a, and ring member 20 collectively. Thus, as characterized in the rejection, blade base portions 3a are considered part of the claimed “radial surface” defined by the “central body portion” of the claimed “hub” and do not extend from the structure corresponding to the hub as Appellant’s argument implies. Appeal 2020-006032 Application 15/481,581 7 Appellant argues that Ota’s boss portion 2 lacks an integral flange that extends past the peripheral surface and defines a guard area that is less than an area defined by the peripheral surface, as recited in claim 1. Appeal Br. 16. This argument is premised on the position that circumferential wall 2a corresponds to the claimed “peripheral surface” and, thus, is not responsive to the rejection, which, as pointed out above, reads the claimed “peripheral surface” on Ota’s ring member 20. See Ans. 4. Appellant contends that the area defined by Ota’s circumferential wall 2a is not a guard space for the input shaft as recited in claim 1. Appeal Br. 17. In particular, Appellant submits that Ota’s circumferential wall merely serves as an attachment surface for blades 3 and is not described as surrounding or protecting shaft 12. Id. Appellant asserts that circumferential wall 2a is spaced too remotely from shaft 12 and motor 11 to prevent debris from reaching shaft 12. Id. These arguments are not persuasive because they are not commensurate with the scope of claim 1, which does not specify such a function for the integral flange or the guard space. It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). As the Examiner points out, Ota’s circumferential wall 2a surrounds shaft 12 and, thus, inherently, is capable of accomplishing a guard function as broadly claimed. Ans. 14. As the Examiner also points out, claim 1 does not recite any particular spacing or relative positioning between the shaft and the integral flange and, thus, does not structurally distinguish the claimed integral flange from Ota’s circumferential wall 2a. Id. at 15. Appeal 2020-006032 Application 15/481,581 8 Appellant further argues that “circumferential wall 2a cannot both define the rotatable hub and the integral flange as recited in independent claim 1.” Appeal Br. 18. This argument is not persuasive. As discussed above, we understand the Examiner to be referring to the portion of Ota’s circumferential wall 2a extending to the left of blade base portions 3a in Figure 2 as corresponding to the “integral flange.” As required in claim 1, this portion of circumferential wall 2a “is continuously formed with the rotatable hub and axially extends from the radial surface” (i.e., Ota’s bottom wall 2b, the remainder of circumferential wall 2a, and blade base portions 3a, which together form one continuous surface that extends radially from a central aperture to ring member 20). For the above reasons, Appellant does not apprise us of error in the rejection of claim 1. Accordingly, we sustain the rejection of claim 1, and of claims 3 and 7, for which Appellant does not present any separate arguments, as anticipated by Ota. Claims 2 and 6 Appellant presents separate arguments for claims 2 and 6. Appeal Br. 22–23. For the reasons set forth below, we determine that claims 2 and 6 are indefinite. Thus, we cannot sustain the rejection of claims 2 and 6 under 35 U.S.C. § 102(a)(1) because to do so would require speculation as to the scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. Appeal 2020-006032 Application 15/481,581 9 Obviousness—Iida in view of Ota; Iida in view of Ota and Oberg Claims 8, 9, 11–15, 17, 19, 23, 25, 26, and 29 For the reason set forth below, we determine that claims 8, 9, 11–15, 17, 19, 23, 25, 26, and 29 are indefinite. Thus, we cannot sustain the rejection of these claims under 35 U.S.C. § 103 because to do so would require speculation as to the scope of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejection. Indefiniteness—New Grounds of Rejection A claim is properly rejected as indefinite under 35 U.S.C. § 112 second paragraph 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, 1314 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward, Appeal 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). Independent claim 8 recites a shaft guard assembly comprising a shaft guard having a central body portion with an attachment aperture defined therein, a radial surface, and an axially extending peripheral surface; a Appeal 2020-006032 Application 15/481,581 10 plurality of blades extending radially outward from the peripheral surface; and an input shaft. Claims App. (emphasis added). Claim 8 also recites that “the attachment aperture is configured to attach the hub to the input shaft.” Id. (emphasis added). The reference to “the hub” lacks antecedent basis in claim 8 and renders the scope of the claim unclear. Claims 2 and 9 recite that “the hub is cylindrical.” Claims App. The purportedly “cylindrical” hub disclosed and claimed includes central body portion 44 defining radial surface 59, which appears to be circular or disc- shaped, and axially extending peripheral surface 46, which is cylindrical. See Figs. 2, 3; Spec. 5. In other words, although a portion (peripheral surface 46) of Appellant’s hub 42 is cylindrical, the hub also includes a central body portion defining a radial surface that is not cylindrical. In fact, in contesting the prior art rejection of claims 2 and 9, Appellant contends that the structure (Ota’s boss 2, blade base portions 3a, and ring member 20) on which the Examiner reads the claimed “hub” is not cylindrical because Ota’s fan blades 3 “are flat and substantially planar members that are not cylindrical.” Appeal Br. 23. When read in light of the underlying disclosure in the present application, especially in light of Appellant’s argument regarding Ota’s fan blades 3, it is unclear what is meant by the limitation in claims 2 and 9 that “the hub is cylindrical.” Claims 6 and 13 recite that “the radial surface is a web that has at least one protrusion attached between the radial surface and the peripheral surface.” Claims App. This recitation is internally inconsistent in that, on the one hand, it defines the radial surface as a web having a protrusion (i.e., that the protrusion is part of, or a feature of, the radial surface) and, on the other hand, it sets forth that the protrusion is a component attached between Appeal 2020-006032 Application 15/481,581 11 the radial surface and the peripheral surface (i.e., that the protrusion is distinct from the radial surface rather than a feature of the radial surface). Further, the meaning of the term “web” as used in the Specification and claims 6 and 13 is unclear. One common meaning of the term “web” is a sheet, and another common meaning of the term “web” is a network of radially extending elements and circumferentially extending elements forming a mesh structure, like a spider web. Figure 3 appears to depict radial surface 59 as a solid annular, disc-shaped structure, consistent with an interpretation of “web” as a sheet. However, it is not clear whether the “web” mentioned on page 5 of the Specification and recited in claims 6 and 13 is a reference to the embodiment of radial surface illustrated in Figure 3 or to an unillustrated embodiment. For the above reasons, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 2, 6, 8, 9, 11–15, 17, 19, 23, 25, 26, and 29 under 35 U.S.C. § 112(b) as indefinite.5 CONCLUSION The Examiner’s rejections are AFFIRMED as to claims 1, 3, 7, 8, 11, 12, 14, 23, 26, and 29 and REVERSED as to claims 2, 6, 9, 13, 15, 17, 19, and 25. We enter NEW GROUNDS OF REJECTION of claims 2, 6, 8, 9, 11–15, 17, 19, 23, 25, 26, and 29. More specifically, 5 The rejection of dependent claims 11, 12, 14, 15, 17, 19, 23, 25, 26, and 29 under 35 U.S.C. § 112(b) is based solely upon the lack of antecedent for “the hub” in claim 8. Appeal 2020-006032 Application 15/481,581 12 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–3, 6, 7 102(a)(1) Ota 1, 3, 7 2, 6 8, 9, 11–15, 17, 23, 25, 29 103 Iida, Ota 8, 9, 11– 15, 17, 23, 25, 29 19, 26 103 Iida, Ota, Oberg 19, 26 2, 6, 8, 9, 11–15, 17, 19, 23, 25, 26, 29 112(b) Indefiniteness 2, 6, 8, 9, 11– 15, 17, 19, 23, 25, 26, 29 Overall Outcome 1, 3, 7 2, 6, 8, 9, 11–15, 17, 19, 23, 25, 26, 29 2, 6, 8, 9, 11– 15, 17, 19, 23, 25, 26, 29 FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground 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 Appeal 2020-006032 Application 15/481,581 13 to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. TIME FOR RESPONSE 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). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)