Ex Parte Eschenburg

Board of Patent Appeals and Interferences

Feb 22, 2010

10725885 (B.P.A.I. Feb. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARVINMERITOR TECHNOLOGY, LLC
____________________

Appeal 2009-004745
Application 10/725,885
Technology Center 3600
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Decided: February 22, 2010
____________________

Before JAMESON LEE, RICHARD TORCZON, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, ArvinMeritor
Technology, LLC (“ArvinMeritor”), under 35 U.S.C. § 134(a) from a final
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rejection of claims 1-11 and 22-29. We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

References Relied on by the Examiner
Ries 4,468,981 Sep. 4, 1984
Shiba et al. (“Shiba”) 5,311,740 May 17, 1994
Aikawa et al. (“Aikawa”) US 6,770,005 B2 Aug. 3, 2004

The Rejections on Appeal
The Examiner rejected claims 1-3, 6, 9-11, 22-24, and 27-29 under 35
U.S.C. § 102(b) as anticipated by Ries.
The Examiner rejected claims 1-6, 9-11, 22, and 24-28 under 35
U.S.C. § 102(b) as anticipated by Aikawa.
The Examiner rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Ries and Shiba.

The Invention
The invention relates to an axle assembly including an oil pump to
lubricate components of the assembly. (Spec. 2: ¶ 7.)
Claim 1 is reproduced below (App. Br. 9 Claims App’x.):
1. An axle assembly comprising:

an axle housing;

a pump housing attachable to cover an opening within said axle
housing;

a pump mounted within said pump housing, wherein said pump
housing includes a cavity defining a supply passage for
communicating lubricant from a sump within said axle housing to said
pump; and
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an input shaft supported by said pump housing and driving said
pump.
B. ISSUES
1. Has ArvinMeritor shown that the Examiner was incorrect in
finding that Ries discloses a pump with a pump housing that includes a
cavity defining a supply passage for communicating lubricant to the pump
from a sump?
2. Has ArvinMeritor shown that the Examiner was incorrect in
finding that Ries discloses that its pump includes a bearing member that is
supported within a pump housing?
3. Has ArvinMeritor shown that the Examiner was incorrect in
finding that Aikawa’s differential carrier is a pump housing?
4. Has ArvinMeritor shown that the Examiner was incorrect in
finding that Aikawa discloses a pump housing that covers the opening of an
axle housing?
5. Has ArvinMeritor shown that the Examiner was incorrect in
finding that Aikawa’s differential carrier includes a cavity defining a supply
passage for lubricant?
6. Has ArvinMeritor shown that the Examiner was incorrect in
finding that ArvinMeritor’s differential carrier includes an elongated section
that includes an inlet and a cavity?
C. FINDINGS OF FACT
1. Ries discloses an axle and pump assembly with pump 110 that
includes outer pump housing 112 and inner pump housing 114. (Ries 4:48-
50).
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2. In Ries, element 144 is disclosed as an inlet port that is drilled
into outer pump housing 112. (Id. at 5:24-28.)
3. Ries’ Figure 5 is reproduced below and illustrates the
configuration of the inlet port:

The figure above depicts a sectional view of a portion of Ries’
axle and pump assembly.

4. Figure 5 illustrates inlet port 144, shown with dotted lines, as a
passage that extends within pump outer housing 112.
5. Ries describes that a sump located in an axle housing bowl 12
(not shown in the figure reproduced above) is connected to inlet port 144 via
suction line 150 (not shown) that is attached to fitting 151 (unnumbered on
right side of the figure) of the inlet port and operates to supply lubricating oil
from the sump to pump cavity 125. (Id. at 5:29-39.)
6. Ries discloses element 30 as a differential carrier which is
secured to axle housing 11. (Ries 2:42-47.)
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7. Ries’ Figure 2 is reproduced below:

The figure above depicts a sectional view of Ries’ axle and
pump assembly.

8. As described in Ries and shown in Figure 2, axle housing 11 is
defined by an axle housing bowl 12, which is separated from bearing block
115 by the length of differential carrier 30. (Id. at 2:30-36; Fig. 2.)
9. Aikawa discloses a power transmission system for use in an
automobile. (Aikawa 1:7-12)

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10. Aikawa’s Figure 1 is reproduced below:

The figure above depicts an embodiment of a power
transmission system for a vehicle.

11. Aikawa discloses that element 13 is a differential carrier part of
casing 9, which, when connected to gear casing part 11 via upper and lower
bolts (unnumbered), defines an interior space in which pump 93 resides. (Id.
at 10: 32-36; Fig. 1.)
12. In Aikawa, each of gear casing part 11 and differential carrier
part 13 include an opening that leads to an interior open space for
accommodating portions of its power transmission system. (Aikawa 10:32-
36.)
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13. Aikawa states that (Id. at 13:38-44):
The trochoid gear pump 93 is driven for rotation by the inner
shaft 39 via a hollow connection shaft 111, to pump up oil from
the oil sump of the casing 9, and to supply pumped oil through
axial and radial oil paths formed in the connection shaft 111
and the inner shaft 39 to the main clutch 79, pilot clutch 81, ball
cam 83, thrust bearing 99, and the like, making sufficient
lubrication and cooling thereto.

14. Aikawa’s figures show its differential carrier part 13 only in
cross-section.
D. PRINCIPLES OF LAW
Anticipation is established when a single prior art reference discloses
all elements of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).

E. ANALYSIS
The rejections based on Ries
The Examiner rejected claims 1-3, 6, 9-11, 22-24, and 27-29 as
anticipated by Ries and claims 7 and 8 as unpatentable over Ries and Shiba.
Claims 1 and 24 are independent. Claims 2, 3, 6-11, 22, and 23 are
dependent on, and argued collectively with, claim 1. Claim 29 is dependent
on, and argued collectively with, claim 24. Claims 27 and 28 are each
separately argued.
Claims 1-3, 6-11, 22, and 23
We focus on the limitations that are in dispute. Claim 1 requires a
pumping housing that “includes a cavity defining a supply passage for
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communicating lubricant from a sump within said axle housing to said
pump[.]” (App. Br. 9 Claims App’x.) The Examiner found the above-
quoted limitation described in Ries. ArvinMeritor challenges that finding.
The Examiner pointed to Ries’ element 144 as forming the required
cavity defining a lubricant supply passage. (Ans. 5:20-6:6.) Ries discloses
an axle and pump assembly with pump 110 that includes outer pump
housing 112 and inner pump housing 114. (Ries 4:48-50). Element 144 is
disclosed as an inlet port that is drilled into outer pump housing 112. (Id. at
5:24-28.)
Ries’ Figure 5 is reproduced below and illustrates the configuration of
the inlet port:

The figure above depicts a sectional view of a portion of Ries’
axle and pump assembly.

As shown in the above figure, inlet port 144, illustrated with dotted
lines, is a passage that extends within pump outer housing 112. Ries
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describes that a sump located in an axle housing bowl 12 (not shown in the
figure reproduced above) is connected to inlet port 144 via suction line 150
(not shown) that is attached to fitting 151 (unnumbered on right side of the
figure) of the inlet port and operates to supply lubricating oil from the sump
to pump cavity 125. (Id. at 5:29-39.) In light of those teachings, the
Examiner found that Ries discloses a pump housing that includes a cavity
defining a supply passage as required by the claims.
ArvinMeritor contests the Examiner’s finding, arguing that in Ries, oil
supplied from its sump must pass through pressurized supply lines 150 and
156 to reach its pump. According to ArvinMeritor, those lines are external
to the pump housing and are thus not a supply passage within the pump
housing as required by claim 1. (App. Br. 5:1-8; Reply Br. 1:8-14.)
ArvinMeritor’s argument is unpersuasive. The Examiner did not rely
on either line 150 or 156 in accounting for the feature of “a cavity defining a
supply passage.” Rather, the Examiner pointed to the cavity and supply
passage formed by Ries’ inlet port 144 as meeting that feature. Evidently,
ArvinMeritor’s view is that its claim 1 requires that the entirety of the oil
supply conduits between the sump and the pump must be located within the
pump housing. The claim, however, does not include such a limitation. As
stated in claim 1, the pump housing need only include “a cavity defining a
supply passage” (emphasis added) for directing lubricating oil from the
sump to the pump. In Ries, inlet port 144 is a passage through which the oil
flows from the sump within its axle housing to pump cavity 125. Even if
other components which also direct the oil are external to Ries’ pump
housing, that does not preclude inlet port 144 from itself being “a cavity
defining a supply passage.”
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ArvinMeritor has not persuaded us of any deficiencies in the
Examiner’s rejection of claim 1 as anticipated by Ries. Accordingly, we
sustain the rejection of claim 1 as anticipated by Ries. Claims 2, 3, 6-11, 22,
and 23 were argued collectively with claim 1. We also sustain the rejection
of claims 2, 3, 6, 9-11, 22 and 23 as anticipated by Ries and the rejection of
claims 7 and 8 as unpatentable over Ries and Shiba.
Claims 24 and 27-29
Claim 24 is independent and reproduced below (App. Br. 10 Claims
App’x.):
24. An axle assembly comprising:

an axle housing including an opening for an input shaft;

a pump housing attached to the axle housing over said opening;

a pump mounted within said pump housing and driven by said
input shaft; and

a bearing member supported within said pump housing separate
from said axle housing for supporting rotation of said input shaft.

The Examiner found that Ries meets all the above-quoted limitations
and anticipates claim 24. Specifically, the Examiner found that Ries’
element 115 is part of a pump housing that supports bearing members 38 and
39 separately from axle housing 11. (Ans. 6:10-12.)
ArvinMeritor contests the Examiner’s findings, arguing that two
features of its claim 24 are missing from Ries. ArvinMeritor first contends
that Ries’ element 115 is a bearing block that is located beyond the pump
housing formed by housing members 112 and 114 and is thus not “within”
the pump housing as required by the claim. (Reply Br. 2:2-16.)
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ArvinMeritor also contends that bearing block 115, which supports bearings
38 and 39, is within “axle housing 30” such that the bearings are not
supported separate from the axle housing. (Id.)
While ArvinMeritor describes Ries’ element 30 as an “axle housing,”
the reference itself discloses element 30 as a differential carrier which is in
turn secured to axle housing 11. (Ries 2:42-47.)
Ries’ Figure 2 is reproduced below:

The figure above depicts a sectional view of Ries’ axle and
pump assembly.

As described in Ries and shown in Figure 2, reproduced above, axle
housing 11 is defined by an axle housing bowl 12, which is separated from
bearing block 115 by the length of differential carrier 30. (Id. at 2:30-36;
Fig. 2.) Thus, the bearings 38 and 39 that are supported within bearing
block 115 are supported separately from axle housing 11. We therefore do
not agree with ArvinMeritor that Ries lacks a bearing member that is
supported separately from its axle housing.
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Claim 24, however, also requires that the bearing member resides
“within” the pump housing. Although the Examiner uses the term “pump
housing” when referencing Ries’ bearing block 115, Ries itself does not use
that term when describing element 115. Ries discloses that the housing for
its pump 110 is formed by “outer housing member 112” and “inner housing
member 114.” (Ries 4:48-50.) The terms “outer” and “inner” convey that
members 112 and 114 are the boundaries for the pump housing. As shown
in Ries’ Figure 5, bearing block 115 is located beyond the boundaries
established by the inner and outer housing members. In that configuration,
the bearing block is not reasonably considered as being “within” Ries’ pump
housing.
Accordingly, we do not sustain the rejection of claim 24 as anticipated
by Ries. Claims 27-29 are dependent, either directly or indirectly, on claim
24. We also do not sustain the anticipation rejection of claims 27-29 based
on Ries.
The rejection based on Aikawa
The Examiner rejection claims 1-6, 9-11, 22, and 24-28 as anticipated
by Aikawa. ArvinMeritor argues dependent claims 2-6, 9-11, and 22
collectively with independent claim 1. Dependent claim 29 is argued
collectively with independent claim 24. Claims 27 and 28 are each
separately argued.
Claims 1-6, 9-11, and 22
ArvinMeritor first contends that the Examiner’s anticipation rejection
of claim 1 based on Aikawa is deficient because Aikawa allegedly lacks a
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pump housing. The Examiner pointed to Aikawa’s element 13 as being a
pump housing because it contains pump 93. (Ans. 4:3-5.)
Aikawa’s Figure 1 is reproduced below:

The figure above depicts an embodiment of a power
transmission system for a vehicle.

Aikawa discloses that element 13 is a differential carrier part of casing
9, which, when connected to gear casing part 11 via upper and lower bolts
(unnumbered), defines an interior space in which pump 93 resides. (Aikawa
10: 32-36; Fig. 1.)
ArvinMeritor submits that while pump 93 is contained within a space
bounded by differential carrier part 13, that space also includes other
components such as “at least three shafts, meshing gears and a clutch 81.”
(App. Br. 6:15-17.) ArvinMeritor concludes that the presence of those
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additional components means that a person of ordinary skill in the art would
not regard carrier part 13 as a pump housing. (Id. at 6:17-18.)
ArvinMeritor’s argument is unpersuasive. The portion of a casing,
such as Aikawa’s carrier part 13, that houses a pump is reasonably viewed as
a housing for the pump. Contrary to ArvinMeritor’s contention, simply
because the housing also contains other components does not mean that the
housing is precluded from being a pump housing.
Moreover, ArvinMeritor does not point to any objective evidence,
such as affidavit evidence or expert testimony, substantiating its assertion
that one of ordinary skill in the art would not consider Aikawa’s differential
carrier part 13 as a pump housing. The assertion is merely argument of
counsel, which cannot take the place of evidence lacking in the record.
Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
ArvinMeritor also contends that the feature in claim 1 of a pump
housing that is attachable to cover an opening within the axle housing is
missing from Aikawa. In particular, according to ArvinMeritor, differential
carrier part 13 cannot be read as covering an opening of the axle housing
formed by gear casing part 11 because the carrier part “defines a substantial
portion of the shape and boundaries of the internal open space” within
casing 9. (App. Br. 6:20-21; Reply Br. 3:19-20.) ArvinMeritor contends
that that reading is beyond what one skilled in the art would recognize its
claim limitations as covering. (App. Br. 6:22-23; Reply Br. 3:23-24.)
ArvinMeritor’s argument lacks merit. In Aikawa, each of gear casing
part 11 and differential carrier part 13 includes an opening that leads to an
interior open space for accommodating portions of the power transmission
system. (Aikawa 10:32-36; Fig. 1.) When those parts are joined to one
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another, the opening of one part is covered by the other part in forming the
enclosed casing 9. ArvinMeritor does not meaningfully explain why it
believes that carrier part 13 cannot be viewed as covering the opening in
gear casing 11 simply because the carrier part is also configured to have an
open space that is enclosed. That the carrier part 13 also contains an open
space that is covered has no bearing on its function of covering the opening
of gear casing 11.
Moreover, ArvinMeritor again relies simply on attorney argument to
characterize the structure of Aikawa as being beyond the scope of
ArvinMeritor claims as they would be understood by one of ordinary skill in
the art. That argument, however, is unsubstantiated by any objective
evidence. The unsupported argument of ArvinMeritor’s counsel as to what
structures one of ordinary skill would understand as falling outside the scope
of the claims is inadequate to demonstrate deficiencies in the Examiner’s
rejection.
Lastly, ArvinMeritor contends that Aikawa does not disclose the
claim feature of “a pump housing having a cavity defining a supply passage
for communicating lubricant from a sump within the axle housing to said
pump.” According to ArvinMeritor, Aikawa’s differential carrier part 13
has no need for a cavity defining a supply passage because Aikawa’s pump
is disposed within an interior space of the carrier part and is in direct
communication with the sump. (App. Br. 6:25-4:2.)
In accounting for the cavity and supply passage, the Examiner cited to
column 13, lines 38-44 of Aikawa. (Ans. 4:11-13.) That cited portion reads:
The trochoid gear pump 93 is driven for rotation by the inner shaft 39
via a hollow connection shaft 111, to pump up oil from the oil sump
of the casing 9, and to supply pumped oil through axial and radial oil
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paths formed in the connection shaft 111 and the inner shaft 39 to the
main clutch 79, pilot clutch 81, ball cam 83, thrust bearing 99, and the
like, making sufficient lubrication and cooling thereto.

Thus, lubricating oil is guided from an oil sump located within casing
9 to pump 93 and enters the pump via “axial and radial oil paths” formed in
connection shaft 111. As shown in Aikawa’s Figure 1, connection shaft 111
is located within differential carrier part 13, i.e., the pump housing.
Aikawa’s “axial and radial oil paths” which are in connection shaft 111 are
therefore also included within the pump housing. Those paths operate as
passages that direct oil from the sump in casing 9 to the interior of pump 93.
ArvinMeritor does not address the portion of Aikawa that was highlighted
by the Examiner or explain why it is insufficient to account for the claim
feature of a pump housing that must simply “include[] a cavity defining a
supply passage for communicating lubricant…” On this record, we are not
persuaded of any reversible error in the Examiner’s rejection of
ArvinMeritor’s claim 1 based on Aikawa.
Accordingly, we sustain the rejection of claims 1-6, 9-11, and 22 as
anticipated by Aikawa.
Claims 24 and 29
Claim 24 requires a pump housing attached to the axle housing over
an opening of the axle housing. The Examiner found that that feature is met
by Aikawa’s differential carrier part 13 as it forms a pump housing which
attaches to an axle housing formed by gear casing part 11 and covers the
opening of that axle housing.
The above-noted feature of claim 24 corresponds to the similar feature
of claim 1. ArvinMeritor makes the same argument for claim 24 that it did
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for claim 1, namely that differential carrier part 13 does not cover an
“opening” of gear casing part 11 because the carrier part itself includes a
hollow portion that defines a portion of the interior space of casing 9 when
the carrier part and the gear casing part are joined. (Reply Br. 4:6-9.) For
the same reasons given above in connection with claim 1, we reject
ArvinMeritor’s argument with respect to claim 24.
We sustain the rejection of claim 24 as anticipated by Aikawa. As
claim 29 is argued collectively with claim 24, we also sustain the rejection
of that claim based on Aikawa.
Claim 27
Claim 27 is dependent on claim 24 and adds the limitation (App. Br.
11 Claims App’x.):

wherein said pump housing includes an inlet in communication
with a sump within said axle housing and a cavity defining a supply
passage within said pump housing from said inlet to said pump.

The Examiner found that the above-quoted limitation is disclosed by
Aikawa in column 13, lines 38-44. As discussed above in the context of
claim 1, the portion of Aikawa cited by the Examiner describes that oil is
directed from a sump within casing 9 to the interior of pump 93 through
axial and radial oil paths formed within connection shaft 111.
ArvinMeritor generally asserts that Aikawa’s disclosure does not
account for the features of claim 27. (App. Br. 7:15-18; Reply Br. 4:18-25.)
However, as it did with claim 1, ArvinMeritor does not address the portion
of Aikawa cited by the Examiner or explain why that portion’s description
of delivering oil from a sump within casing 9 to the interior of pump 93
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through axial and radial pathways does not account for the features of claim
27. Accordingly, we are not persuaded of any reversible error in the
Examiner’s rejection of claim 27 based on Aikawa.
We sustain the rejection of claim 27 as anticipated by Aikawa.
Claim 28
Claim 28 is dependent on claim 27 and adds the limitation “wherein
said pump housing includes an elongated section including said inlet and
said cavity.” (App. Br. 11 Claims App’x.)
The Examiner found the above-quoted feature described by Aikawa,
stating (Ans. 8:22-9:3):
[I]t is the Examiner’s view that Aikawa et al. shows the elongated
section (13) including the inlet and the cavity. Although Aikawa et al.
does not show exact configuration as the appellant’s present
invention, the pump housing section (13) meets the definition of being
“elongated”.

ArvinMeritor contends that Aikawa does not disclose any feature that
can reasonably be considered as meeting the added feature of claim 28.
(App. Br. 7:20-23; Reply Br. 5:2-7.)
Here, the dispute centers on conflicting statements between the
Examiner and ArvinMeritor. On one hand, the Examiner simply states that
some portion of Aikawa’s differential carrier part 13 is elongated and
includes the required inlet and cavity. ArvinMeritor, on the other hand,
states otherwise. Although the Examiner urges that some general definition
of “elongated” supports his position, no definition is provided. The term
“elongate” means “1: stretched out 2: slender.” Merriam Webster’s
Collegiate Dictionary 375 (10th ed. 1996). Thus, an elongated section is one
that is viewed as stretched out or slender. Aikawa’s figures show its
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differential carrier part 13 only in cross-section. It is not apparent from
those figures what the actual shape of the carrier part is.
The Examiner bears the initial burden of establishing that a claim is
prima facie anticipated. The Examiner’s general statement, unsupported by
the factual record, that the entirety of Aikawa’s differential carrier part 13 is
somehow considered “elongated” is insufficient to meet that burden. On this
record, we do not sustain the Examiner’s rejection of claim 28 as anticipated
by Aikawa.
F. CONCLUSION
1. ArvinMeritor has not shown that the Examiner was incorrect in
finding that Ries discloses a pump with a pump housing that includes a
cavity defining a supply passage for communicating lubricant to the pump
from a sump.
2. ArvinMeritor has shown that the Examiner was incorrect in
finding that Ries discloses that its pump includes a bearing member that is
supported within a pump housing.
3. ArvinMeritor has not shown that the Examiner was incorrect in
finding that Aikawa’s differential carrier is a pump housing.
4. ArvinMeritor has not shown that the Examiner was incorrect in
finding that Aikawa discloses a pump housing that covers the opening of an
axle housing.
5. ArvinMeritor has not shown that the Examiner was incorrect in
finding that Aikawa’s differential carrier includes a cavity defining a supply
passage for lubricant.
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6. ArvinMeritor has shown that the Examiner was incorrect in
finding that ArvinMeritor’s differential carrier includes an elongated section
that includes an inlet and a cavity.
G. ORDER
The rejection of claims 1-3, 6, 9-11, 22, and 23 under 35 U.S.C.
§ 102(b) as anticipated by Ries is affirmed.
The rejection of claims 24 and 27-29 under 35 U.S.C. § 102(b) as
anticipated by Ries is reversed.
The rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as
unpatentable over Ries and Shiba is affirmed.
The rejection of claims 1-6, 9-11, 22, and 24-27 under 35 U.S.C.
§ 102(b) as anticipated by Aikawa is affirmed.
The rejection of claim 28 under 35 U.S.C. § 102(b) as anticipated by
Aikawa is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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