VOLVO TRUCK CORPORATION et al.

Patent Trials and Appeals BoardMar 24, 2021

2020005588 (P.T.A.B. Mar. 24, 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. 15/512,560 03/19/2017 Richard Kellogg Morton 000009-760US 2918 51707 7590 03/24/2021 WRB-IP LLP 801 N. Pitt Street Suite 123 ALEXANDRIA, VA 22314 EXAMINER FREAY, CHARLES GRANT ART UNIT PAPER NUMBER 3746 NOTIFICATION DATE DELIVERY MODE 03/24/2021 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): HARRY@WRB-IP.COM USPTO@dockettrak.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD KELLOGG MORTON ____________ Appeal 2020-005588 Application 15/512,560 Technology Center 3700 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and MICHAEL L. HOELTER, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Sept. 12, 2018, hereinafter “Final Act.”) rejecting claims 1–20. Appellant’s representative presented oral arguments on March 15, 2021. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Volvo Truck Corporation is identified as the real party in interest in Appellant’s Appeal Brief (filed Jan. 31, 2019, hereinafter “Appeal Br.”). Appeal Br. 1. Appeal 2020-005588 Application 15/512,560 2 SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). INVENTION Appellant’s invention relates to a reciprocating machine having “groove patterns provided in cylinder walls” for collecting oil. Spec. 1, ll. 12–13, Spec. 2, ll. 2–5. Claims 1, 16, and 20 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A reciprocating machine, comprising: a cylinder comprising an internal cylinder wall; a sump for collecting oil; a pump for pumping oil from the sump to the cylinder; a piston movable in the cylinder between a top position and a bottom position, the piston comprising an upper ring pack and a lower ring pack disposed around a circumference of the piston and spaced from each other by a first distance; and a circumferential collector groove in the cylinder wall in a position that is above the lower ring pack when the piston is in the top position and that is below the upper ring pack[,] when the piston is in the bottom position, the collector groove including at least one hole connected to a conduit connected to the sump configured for returning oil from the collector groove to the sump. Appeal 2020-005588 Application 15/512,560 3 REJECTIONS I. The Examiner rejects claims 1, 2, 4–8, 10, and 20 under 35 U.S.C. § 103 as being unpatentable over Bochnak2 and Bugatti.3 II. The Examiner rejects claim 3 under 35 U.S.C. § 103 as being unpatentable over Bochnak, Bugatti, and Suketa.4 III. The Examiner rejects claim 9 under 35 U.S.C. § 103 as being unpatentable over Bochnak, Bugatti, and Kojima.5 IV. The Examiner rejects claims 11–16 and 18–20 under 35 U.S.C. § 103 as being unpatentable over Bochnak, Bugatti, and Sanders.6,7 V. The Examiner rejects claim 17 under 35 U.S.C. § 103 as being unpatentable over Bochnak, Bugatti, Sanders, and Kojima. VI. The Examiner rejects claims 10, 18, and 20 under 35 U.S.C. § 103 as being unpatentable over Bochnak, Bugatti, Sanders, and Kiekhaefer.8 2 Bochnak, US 3,972,396, issued Aug. 3, 1976. 3 Bugatti, DE 644,044, issued Apr. 22, 1937 (as translated). We view the omission of Bugatti in the heading of the rejection as a typographical error because Bugatti is discussed in the body of the rejection. See Final Act. 3–4. 4 Suketa, JP 2002-267016 A, published Sept. 18, 2009 (as translated). 5 Kojima et al., US 6,220,214 B1, issued Apr. 24, 2001. 6 Sanders, US 2,292,662, issued Aug. 11, 1942. 7 In the Answer, claim 20 is omitted from this rejection. See Examiner’s Answer (dated July 1, 2020, hereinafter “Ans.”) 8, 10, 13. However, as the Examiner has not withdrawn the rejection of claim 20 over the combined teachings of Bochnak, Bugatti, and Sanders, we consider claim 20 as part of this rejection and of the instant appeal. 8 Kiekhaefer, US 3,851,631, issued Dec. 3, 1974. Appeal 2020-005588 Application 15/512,560 4 ANALYSIS Rejection I Each of independent claims 1 and 20 recites, inter alia, “a piston movable in the cylinder between a top position and a bottom position.” See Corrected Appeal Brief (filed Apr. 15, 2020, hereinafter “Corrected Appeal Br.”) 5, 9 (Claims App.). The Examiner finds Bochnak discloses most of the limitations of independent claims 1 and 20 including, inter alia, piston 30, 24, ring packs 40, 42, and collector groove 44. Final Act. 4 (citing Bochnak Fig. 2); Ans. 13. The Examiner further finds that “Bochnak does not disclose that the ring packs [40, 42] are spaced on the piston [30, 24] and that the collector groove remains between the ring packs during reciprocation.” Final Act. 4; Ans. 13. Thus, the Examiner turns to Bugatti, which “discloses a reciprocating piston having ring packs 10 spaced thereon so that a groove [8] is maintained between the ring packs.” Final Act. 4; Ans. 13. Thus, the Examiner concludes that it would have been obvious to a skilled artisan “to move the cylinder mounted ring packs [40, 42] to the piston [30, 24 of Bochnak] and space them as taught by Bugatti as a well-known alternative for creating a seal between the relatively reciprocating cylinder and piston” and because “[s]uch an arrangement would also allow for the simpler replacement and maintenance of the seals by removing the piston from the plunger.” Final Act. 4; Ans. 13. In other words, in the Examiner’s rejection, as per Bugatti’s arrangement of groove 8 between ring packs 10, Bochnak’s ring packs 40, 42 are moved to piston rods 24 such that collector groove 44 remains between the ring packs 40, 42 during reciprocation of piston 30, 24. Appeal 2020-005588 Application 15/512,560 5 Appellant argues that the Examiner’s construction of the term “piston” to include Bochnak’s piston rods 24 in addition to piston 30 “is broader than what a person skilled in the art would consider to constitute a piston.” Appeal Br. 6. In particular, Appellant contends that Bochnak’s “piston rods 24 are not pistons.” Id. According to Appellant, “[t]he ordinary definition of a '’piston’ is ‘a sliding piece moved by or moving against fluid pressure which usually consists of a short cylindrical body fitting within a cylindrical chamber or vessel along which it moves back and forth’.” Id (citing https://www.merriam-webster.com/dictionary/piston). Appellant further asserts that consistent with the dictionary definition of the term “piston,” Bochnak “identifies the piston by reference number 30, and identifies the piston rods by reference number 24.” Id.; see also Bochnak col. 2, ll. 40–42. In response, the Examiner takes the position that Appellant’s reading of the phrase “usually consists of a short cylindrical body” from the dictionary definition of the term “piston” results in incorporating the feature of “a short cylindrical body” into the definition of “piston.” Ans. 16. According to the Examiner, “the claims set forth no such structural limitation that would limit the piston to being a short cylindrical body.” Id. “[C]laims under examination before the PTO are given their broadest reasonable interpretation consistent with the specification.” In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (emphasis added). Furthermore, “[p]rior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (quoting Appeal 2020-005588 Application 15/512,560 6 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996)). “Accordingly, the PTO’s interpretation of claim terms should not be so broad that it conflicts with the meaning given to identical terms in other patents from analogous art.” Id. (emphasis added). Here, in light of the ordinary and customary meaning of the term “piston” noted above, we agree with Appellant that “the fact that a structure is ‘usually’ a short cylindrical body . . . [is not what] makes it a piston (obviously, not all short cylindrical bodies are pistons).” Reply Brief (filed July 24, 2020, hereinafter “Reply Br.”) 2. Rather, “it is the character of the structure as ‘a sliding piece moved by or moving against fluid pressure’.” Id. Such a construction of the term “piston” is consistent with the description in both Appellant’s Specification, which describes “piston 27 [a]s movable in the cylinder 23” by a “working fluid,” and in Bochnak, which discloses piston 30 as reciprocating in cylinder 20 by a build up of fluid pressure in one of chambers 32, 34. See Spec. 1, ll. 15–16, 4, ll. 6, 10– 11, Figs. 1A, 1B; Bochnak col. 2, ll. 37–44, col. 3, ll. 37–39, Figs. 1, 2. In contrast, neither Appellant’s piston rod 35 nor Bochnak’s piston rods 24 are “moved by or moving against fluid pressure;” each merely transmits the motion of pistons 27 and 30, respectively.9 See Appellant’s Drawings, Figs. 1A, 1B; Bochnak Figs. 1, 2. As such, for the foregoing reasons, given the descriptions in Appellant’s Specification and Bochnak, and the customary dictionary 9 An ordinary and customary meaning of the term “piston rod” is “[a] connecting rod that transmits power to or is powered by a piston.” See The Free Dictionary, https://www.thefreedictionary.com/piston+rod (last visited March 18, 2020). Appeal 2020-005588 Application 15/512,560 7 definition of the term “piston,” we do not agree with the Examiner’s position “that the sliding cylindrical piston rod [24] of Bochnak, which reciprocates and slides within a clearly shown cylinder [20] would readily be recognized as [a] piston given the broadest reasonable interpretation of this limitation.” Ans. 17. Rather, we agree with Appellant that “[t]he piston rods 24 of Bochnak are not a ‘piston’ under any broadest reasonable interpretation of the word.” Reply Br. 2. Therefore, the Examiner’s construction of the term “piston” to encompass Bochnak’s piston rods 24 is unreasonably broad, and, thus, is in error. The Examiner does not employ the disclosure of Bugatti in any manner to remedy the deficiency of Bochnak discussed supra. See Final Act. 4. Lastly, we note that even assuming arguendo that Bochnak’s piston 30 corresponds to the claimed “piston,” nonetheless, Appellant is correct that “[t]he piston 30 of Bochnak does not have an upper ring pack and lower ring pack disposed around a circumference of the piston and spaced from each other by a first distance,” as recited by independent claim 1. See Appeal Br. 6. The Examiner does not employ Bugatti to modify Bochnak to include such a feature. See Final Act. 4. Accordingly, for the foregoing reasons, because the Examiner’s conclusion of obviousness regarding the subject matter of independent claims 1 and 20 is based upon an unreasonable claim construction, we do not sustain the rejection of independent claims 1 and 20, along with dependent claims 2, 4–8, and 10 under 35 U.S.C. § 103 as unpatentable over Bochnak and Bugatti. Appeal 2020-005588 Application 15/512,560 8 Rejections II–VI The Examiner relies on the same unreasonably broad construction of the term “piston” described above in Rejection I. See Final Act. 5–11; see also Ans. 4, 10, 13 (“a piston 30, 24”). The Examiner’s use of the disclosures of Suketa, Kojima, Sanders, and Kiekhaefer does not remedy the deficiencies of the Bochnak and Bugatti combination discussed supra. See Final Act. 5–11; Ans. 6–15. Therefore, for the same reasons discussed above, we also do not sustain Rejections II–VI. NEW GROUND OF REJECTION Claim 20 is rejected under 35 U.S.C. § 102(a)(1) as anticipated by Bochnak.10 Bochnak discloses a reciprocating fluid machine including cylinder 20 having an internal wall, sump 74 for collecting oil, pump P for pumping oil from sump 74 to cylinder 20, piston 30, circumferential collector groove 44 having at least one hole connected to conduit 82, which connects to sump 74 to return oil from collector groove 44 to sump 74. See Bochnak Fig. 2. Bochnak further discloses that piston 30 reciprocates in cylinder 20 by fluid pressure as it builds up in one of chambers 32, 34. See Bochnak col. 3, ll. 37–39, Fig. 2. In other words, Bochnak discloses that piston 30 is movable between a “top position,” i.e., chamber 32 (left side of cylinder 20), and a “bottom position,” i.e., 10 Like claim 1, claim 20 recites a circumferential collector groove, but, unlike claim 1, does not recite upper and lower ring packs on either side of the collector groove. Instead, as noted, claim 20 recites “a piston movable in the cylinder between a top position and a bottom position.” Appeal 2020-005588 Application 15/512,560 9 chamber 34 (right side of cylinder 20). See id., Fig. 2. For example, in Bochnak’s Figure 1, the “top position” corresponds to the side of cylinder 20 where it connects to blade 14 via pin 28, whereas the “bottom position” corresponds to the side where cylinder 20 connects to hub 12 via pin 22. The limitation “the cylinder is oriented so that the top position is disposed vertically below the bottom position” is an intended use limitation because it does no more than define a context in which the claimed reciprocating fluid machine operates. Thus, when using Bochnak’s reciprocating fluid machine in a helicopter (see Bochnak Abstract), the limitation is satisfied during normal operations, such as, when the helicopter moves forward, moves backwards or makes side turns. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 2, 4–8, 10, 20 103 Bochnak, Bugatti 1, 2, 4–8, 10, 20 3 103 Bochnak, Bugatti, Suketa 3 9 103 Bochnak, Bugatti, Kojima 9 11–16, 18–20 103 Bochnak, Bugatti, Sanders 11–16, 18–20 17 103 Bochnak, Bugatti, 17 Appeal 2020-005588 Application 15/512,560 10 Sanders, Kojima 10, 18, 20 103 Bochnak, Bugatti, Sanders, Kiekhaefer 10, 18, 20 20 102(a)(1) Bochnak 20 Overall Outcome 1–20 20 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.” Section 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 to the claims so rejected, or both, and have the matter reconsidered by the [E]xaminer, in which event the prosecution will be remanded to the [E]xaminer. The new ground of rejection is binding upon the [E]xaminer unless an amendment or new Evidence not previously of Record is made which, in the opinion of the [E]xaminer, overcomes the new ground of rejection designated in the decision. Should the [E]xaminer 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 Appeal 2020-005588 Application 15/512,560 11 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. MPEP § 1214.01 (9th Ed., Rev. 10.2019, June 2020). 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). REVERSED; 37 C.F.R. § 41.50(b)