Ex Parte 6,663,347 et al

Patent Trial and Appeal Board

Oct 15, 2014

95000431 (P.T.A.B. Oct. 15, 2014)

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.
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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.
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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
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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
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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.
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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.
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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
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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.
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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
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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).
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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)(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