Ex Parte 6,663,347 et alDownload PDFPatent Trial and Appeal BoardOct 15, 201495000431 (P.T.A.B. Oct. 15, 2014) Copy Citation 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. 95/000,431 01/29/2009 6,663,347 038569/340597 5913 26239 7590 10/15/2014 FISH & RICHARDSON P.C. P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER TILL, TERRENCE R ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 10/15/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE PATENT TRIAL AND APPEAL BOARD ____________ HONEYWELL INTERNATIONAL, INC. Requester1 v. BORGWARNER, INC. Patent Owner and Appellant ____________ Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 Technology Center 3900 ____________ Before CHUNG K. PAK, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. GUEST, Administrative Patent Judge. DECISION ON REHEARING In the Decision on Appeal dated November 4, 2013 (“Decision”), we affirmed the following Examiner’s rejections: 1. Claims 1, 3-5 and 7 under 35 U.S.C. § 102(b) as anticipated by Hofmeister (RAN 3-4);2 1 Honeywell International, Inc. (Requester) did not participate in this rehearing. See Requester’s Notice of Withdrawal from the Proceeding, filed August 11, 2011. Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 2 2. Claims 1 and 3-7 under 35 U.S.C. § 103(a) as unpatentable over Hofmeister in view of Solar (RAN 5-6);3 3. Claim 2 under 35 U.S.C. § 103(a) as unpatentable based on the rejections to claim 1 above further in view of Hyll (RAN 6-7 and 8-9);4 4. Claims 3 and 7 under 35 U.S.C. § 103(a) as unpatentable based on the rejections to claim 1 above further in view of Fabiani (RAN 7- 8 and 9-10).5 Patent Owner requests rehearing of this decision under 37 C.F.R. § 41.79. Request for Rehearing (“Request”) dated December 4, 2013. Initially, Patent Owner contends the Board misapprehended or overlooked that Hofmeister requires a “twist, as well as multiple curves with different trajectories,” which is argued to fall outside the scope of the claims of the ’347 Patent. Request 1-2. Although the Decision did not discuss Patent Owner’s argument expressly, Patent Owner’s argument was considered and found unpersuasive as further explained below. 2 EP 0 728 545 A2, published August 28, 1996, and naming Heinz Hofmeister et al. as inventors (hereinafter “Hofmeister”). All reference to Hofmeister is to the English language translation of record. 3 Alvin N. Hammer, Evaluation of Cast Titanium Alloy Compressor Components, Volume 1, published by U.S. Department of Commerce, National Technical Information Service on behalf of Solar Turbines International (November 1981) (hereinafter “Solar”). 4 US 4,706,928, issued November 17, 1987, to John Hyll. 5 DE 1806757, published May 21, 1970, and naming Nicola Fabiani as the sole inventor. All reference to Fabiani is to the English language translation of record. Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 3 Patent Owner cites two sections of Hofmeister as describing that a twist is “absolutely necessary.” Request 1-2. We disagree with Patent Owner’s interpretation of these descriptions in Hofmeister as including any additional retraction motion of the die inserts other than the motion of the S- shaped path discussed in detail in the Decision. The relevant sections of Hofmeister are reproduced below. Thus, besides the conventional linear motion of the mold segments there is the possibility for each segment of the mold according to the invention to also undergo a relative motion about its vertical axis. In practical terms, a rotational motion is thus superimposed on the translational motion of the segments, which is absolutely necessary in order to withdraw the blade interspace mold segments from the mold without damaging the blade contour. Hofmeister, col. 4, ll. 18-26. Because of the design of the blade interspace mold segments 5, it is necessary to superimpose multiple trajectory curves with respect to the lead cam 10 ultimately provided according to the invention. Although guiding corresponding to the blade root line 27 would be sufficient to move the segment bases 14 designed according to the invention away from and toward one another, for the blade contour mold parts 15 integrally molded onto the segment bases it is absolutely necessary to also twist the segments 5 to enable them to be withdrawn in a horizontal motion from the blade interspaces, which have a complex design. Hofmeister, col. 10, ll. 39-51. An S-shaped curved path is a “multiple trajectory curve” in that the path does change trajectory at the inflection points described in Hofmeister. Hofmeister teaches that the demolding path is “specified by the course of the lead cam 10.” Hofmeister col. 10, ll. 26-28. Thus, we understand the Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 4 motion to follow the S-shaped curved path 10a and 10b of the lead cam 10, as illustrated in Figures 2 and 3. The “rotational motion” of the mold segments discussed in Hofmeister is described as “relative motion about its vertical axis,” which would be a rotational movement that allows for the S- shaped path as opposed to the “translational motion” which would be the radial motion of the segments. We also find this “relative motion about its vertical axis” to be the same motion as the “twist” described in the second passage reproduced from Hofmeister column 10 above. Thus, the motion described in Hofmeister is consistent with the motion along an S-shaped path discussed in the Decision. Since our Decision fully explains our position regarding the S-shaped retraction path described in Hofmeister (see Decision 7-12), which accounts for the twisting motion argued by Patent Owner, we find it unnecessary to alter our discussion in the Decision on rehearing. As discussed in detail in the Decision and in further detail below, we decline to read into the claim term “pulled” and the phrase “retracted along a radial or curved path” any particular curvature by which the die inserts must be removed because no particular curved path is recited in the claims. Decision 9. Patent Owner has defined the pulling or retraction only with respect to the extraction path. The claims do not further limit the motion of the die inserts beyond the extraction path. Claims 1, 5, and 7 use open transitional phrases (“including” in claim 1 and “comprising” in claims 5 and 7), which allow for additional motion of the die insert as it moves along a radial or a curved path, subject to the recited requirement in the claims that the blades or dies are not deformed upon retraction. ‘“Comprising’ is a term Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 5 of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.” Genentech Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997). Patent Owner further argues that the Board’s interpretation of the phrase “substantially straight,” as allowing for some curvature to the leading edge of the blade provided that the leading edge does not interfere with pullability of the die inserts, is “a clear misapprehension of Hofmeister.” Request 3. According to Patent Owner, “Hofmeister does not disclose [a pullable die insert].” Id. In support of the proposition that Hofmeister does not disclose pullable inserts, Patent Owner points to col. 5, ll. 35-48 of Hofmeister. Id. However, as discussed in the Decision (see Decision 10), this section describes a preferred compressor impellor design 20 that has geometric requirements including “the curvature of the channel in the circumferential direction” (i.e., backsweep, not leading edge of the blade), such that it is no longer possible to merely pull out blades segments. Hofmeister, col. 5, ll. 35-48. The very next sentence states “[a]t this point the invention employs the mold illustrated in Figures 1[-]3 [as opposed to a conventional mold design] for manufacturing the described centrifugal compressor impellor 20.” Hofmeister, col. 5, ll. 48-51. In other words, as with the mold of the present invention, the mold described in Figures 1-3 allows for pulling the blade interspace segments 5 as described in the remainder of the Hofmeister disclosure to form the compressor impellor design 20. See also Decision 10. Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 6 Thus, we cannot agree with Patent Owner that Hofmeister discloses a mold design with die inserts that are not pullable or a compressor impellor that cannot be made with such a mold design, as the entire description in the Hofmeister disclosure is directed to the easy retraction of die inserts (segments 5) along an S-shaped curved path. See Decision 10 (quoting Hofmeister col. 4, ll. 3-9 and col. 11, ll. 3-8). Hofmeister’s description is not inconsistent with the claim interpretation of the term “substantially straight” because the leading edge does not interfere with the pullability or retraction of the die inserts along an S-shaped path when using the mold design of Figures 1-3. Patent Owner further argues that the Decision overlooked the expert testimony of Dr. Baines submitted April 13, 2010. On appeal, Patent Owner directed us to only one portion of Dr. Baines’ testimony, namely ¶ 21. See PO App. Br. 18.6 Dr. Baines states that “[t]he extraction of the mold segments is even more complex, however, than appears from the shape of the lead cam 10. The interplay between the spacing of the two pins 11, 12 and the complex multiple curves of the lead cam 10 adds an additional degree of movement to the path of the mold segments.” Baines Decl., ¶ 21 (citing Hofmeister, col. 4, ll. 13-18). Dr. Baines testimony is consistent with the Patent Owner’s argument regarding the teachings of Hofmeister, which we determined above was not persuasive. Dr. Baines’s testimony provides no further explanation for his understanding of how Hofmeister works beyond Patent Owner’s arguments 6 Although Patent Owner quoted a portion of the Baines Declaration, Patent Owner did not indicate in the Evidence Appendix (PO App. Br. 37) that it was relying on any evidence of record on Appeal. Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 7 addressed above. Hofmeister teaches that “[t]he demolding motion which the mold segment 5 undergoes according to the invention is specified by the course of the lead cam 10” (Hofmeister, col. 10, ll. 26-28), suggesting the S-shaped path discussed above. Further, as discussed above, the broadest reasonable interpretation of the claim language, including in the open transitional phrases used therein, encompasses additional movement provided the die follows a curved extraction path. Patent Owner further argues that the Board’s claim interpretation of the term “pulled” and the phrase “retracted along a radial or curved path” is incorrect because it is “not limiting, and thus superfluous.” Request 4. According to Patent Owner, the universe of applicable extraction paths for removing die inserts during compressor wheel manufacture is limited to lateral movement of the die inserts. Other paths are inapplicable to the extraction of die inserts during compressor wheel manufacture (e.g., Response by Patent Owner, filed August 24,2011, pp. 12-13; noting that non-linear radial paths are non-existent, and that vertical paths are inapplicable to compressor wheel manufacture due to the forward rake of the blades). For example, side-to-side movement of a die insert (e.g., with sharp breaks or angularity) is also inapplicable during compressor wheel manufacture. That is, the blade geometry constrains side-to-side movement, such that “extraction” does not result from such movement. Id. at 4-5. Patent Owner’s argument is not persuasive because the arguments that other paths do not exist or are inapplicable are contrary to the teachings of Hofmeister, which expressly describes an S-shaped path, a non-linear radial path that includes some degree of rotational motion about a vertical axis, as discussed above. Nonetheless, the claims read on such an extraction path Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 8 because the phrase “a curved path” is not further limited, either by the language of the claims or the specification, and the breadth of the claim allows for additional movement. Patent Owner further argues that the Board’s claim interpretation is unreasonably broad and does not reflect “implicit definitions” in the Specification. Request 6-7. In particular, Patent Owner argues that the term “curve” or “curvature” is implicitly defined as a “simple curve” or a “compound curve.” Further, the Patent Owner argues that the Board misapprehended that the ’347 patent characterizes the options of a “simple curve” or “compound curve” as being merely exemplary. Request 9. Patent Owner asserts that a “simple curve” or “compound curve” are “instead described as requirements of the invention set forth therein.” Id. 9-10 (citing Hofmeister, col. 7, ll. 2-3, col. 8, ll. 7-10, and col. 9, ll. 1-7). During reexamination, “claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). While claims are sometimes construed more narrowly during patent infringement litigation to do justice and equity between the parties, adopting the broadest reasonable interpretation while the claims are undergoing reexamination is not unfair to the applicant as the claims can be amended and so interpreting the claims “serves the public interest by reducing the possibility that claims, finally allowed, will be given broader scope than is justified,” In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 9 Cir.1984); see also In re Prater, 415 F.2d 1393, 1395-96 (CCPA 1969). We are, therefore, cautioned against importing extraneous limitations into the claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims from the specification.”). The Decision specifically describes why we do not consider the terms “curve” or “curvature” to be limited to a simple curve or compound curve, and we disagree with Patent Owner that the ’347 patent provides an implicit definition. In particular, we determined that movement in this simple manner is described as an “aspect [that was] taken into consideration” in making the die inserts retractable. See Decision 8-9 (citing ’347 patent, col. 6, 1. 57-col. 7, 1. 3 and col. 7, ll. 49-57). Additionally, the ’347 patent describes extraction along a straight or simple curve in terms of providing a preferred “rake and/or backsweep of the blades.” ’347 patent, col. 8, ll. 7-10. The claims of the ’347 patent recite “backswept blades” of the compressor wheel but with no particular structure required. Since we do not limit the compressor wheel to having any particular rake or backsweep, it would be unreasonable to limit the extraction curvature accordingly. Finally, the ’347 patent illustrates in the particular embodiments of Figures 7, 8, 9, and 10 a linear radial extraction and a simple curve extraction. The illustration of these two pulling paths does not implicitly define the term “curve” or “curvature” as argued by Patent Owner. “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005). In this regard, during prosecution of this reexamination Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 10 proceeding, Patent Owner chose not to amend the claims in order to limit the die insert extraction path to a particular curve or curvature or only a single curvature. See 37 C.F.R. § 1.941. Patent Owner argues that the Board erred in relying on general purpose definitions of the term “curve” instead of a definition provided from a Mechanical Engineering handbook suggesting that “a change in concavity occurs at an inflection point, indicating a separate and distinct curve.” Request 8.7 Even considering that an S-shaped curve is the composite of two curves, we discuss in our Decision why we do not find multiple trajectory curves precluded from the “a curved path” language of the claims. See e.g., Decision 11-12. The Decision further takes notice that sine and cosine are commonly recognized as “curves” despite their inflection points. Decision 11. Sine curves and cosine curves would be familiar to the person of ordinary skill in the art characterized by Patent Owner. See Request 7. The subject Request has been granted to the extent that the Decision has been reconsidered, but is denied with respect to making any changes therein. 7 We rely on dictionary definitions not as evidence, but as general guidance as to the meaning of a claim term. “Evidence means something (including testimony, documents and tangible objects) that tends to prove or disprove the existence of an alleged fact, except that for the purpose of this subpart Evidence does not include dictionaries, which may be cited before the Board.” 37 C.F.R. § 41.30 (Aug. 6, 2012); see also 76 FR 72272-3 (Nov. 22, 2011). Appeal 2013-007701 Reexamination Control 95/000,431 Patent 6,663,347 B2 11 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). Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. DENIED PATENT OWNER: Fish & Richardson, P.C. P.O. Box 1022 Minneapolis, MN 55440-1022 THIRD-PARTY REQUESTER: Donald M. Hill, Jr. Alston & Bird, LLP Bank of America Plaza 101 South Tryon Street Suite 4000 Charlotte, NC 28280-4000 Copy with citationCopy as parenthetical citation