Ex Parte Hansen

Patent Trial and Appeal Board

Jun 23, 2017

12958794 (P.T.A.B. Jun. 23, 2017)

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.
12/958,794 12/02/2010 Ove Thorboel Hansen 6495-0441 3801
35301 7590 06/27/2017
MCCORMICK, PAULDING & HUBER LLP
CITY PLACE II
185 ASYLUM STREET
HARTFORD, CT 06103
EXAMINER
QUANDT, MICHAEL M
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
patentdocket @ ip-lawyers .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OVE THORBOEL HANSEN
Appeal 2016-001102
Application 12/958,794
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ove Thorboel Hansen (Appellant) appeals under 35 U.S.C. § 134
from the rejection of claims 1—10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
Appeal 2016-001102
Application 12/958,794
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
1. A hydraulic piston machine comprising:
at least one cylinder in which a piston is arranged to reciprocate;
the piston comprising:
an annular wall defining a hollow and one open end; and
a filling member of a plastic material configured to be
inserted into the hollow;
wherein the filling member has at least a radial projection
and the annular wall has at least a radial depression in the inside
facing the hollow, the radial projection being larger than the
radial depression in a radial direction when the filling member is
not inserted into the hollow;
wherein the depression has a restraint adjacent to the open
end of the hollow;
wherein the projection and the depression are configured
to engage each other;
wherein the projection is configured to compress in the
radial direction when the filling member is inserted in the hollow
of the piston and the projection contacts the annular wall; and
wherein the projection is configured to expand in the radial
direction into the depression when the filling member is inserted
into hollow of the piston and the projection overlaps the
depression.
The prior art relied upon by the Examiner in rejecting the claims on
matter:
REFERENCES
appeal is:
Hein US 3,707,113
US 5,490,446
US 5,072,655
US 5,490,446
Dec. 26, 1972
Oct. 28, 1975
Dec.17, 1991
Feb. 13, 1996
Bristow
Adler
Engel
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Appeal 2016-001102
Application 12/958,794
REJECTIONS
I. Claims 1, 2, 4, and 8—10 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Hein.
II. Claims 1—3, 9, and 10 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Engel.
III. Claims 1, 2, 4—6, and 9 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Bristow.
IV. Claims 1—4, 6, 7, 9, and 10 stand rejected under 35
U.S.C. § 102(b) as anticipated by Adler.
DISCUSSION
Rejection I
Claim 1 recites “the radial projection being larger than the radial
depression in a radial direction when the filling member is not inserted into
the hollow.” Appeal Br. 26 (emphasis added). Because the radial projection
is larger than the radial depression, when the filling member is inserted into
the hollow of the piston, the radial projection “cannot expand to its original
radial size.” See Spec. 133.
The Examiner finds that Hein discloses all of the limitations of claim
1 except for “the radial projection being larger than the radial depression in a
radial direction when the filling member is not inserted into the hollow,”
“wherein the projection is configured to compress in the radial direction
when the filling member is inserted in the hollow of the piston and the
projection contacts the annular wall,” and “wherein the projection is
configured to expand in the radial direction into the depression when the
filling member is inserted into hollow of the piston and the projection
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Appeal 2016-001102
Application 12/958,794
overlaps the depression.” Final Act. 3^4. According to the Examiner, these
limitations are not given patentable weight because the limitation “the radial
projection being larger than the radial depression in a radial direction when
the filling member is not inserted into the hollow,” refers to “an unfinished
form or an intermediary step[] thereof,” and that “even though product-by­
process claims are limited by and defined by the process, determination of
patentability is based on the product itself.” Id. (citing In re Thorpe). The
Examiner reasons that “[t]he specification reveals the ‘the filling member is
then held by means of a form fit in the piston, both in the axial direction and
the radial direction’ ([033], emphasis examiner’s). The prior art is also
form-fitting, as the claimed finished product is.” Id.', see also Ans. 13—14.
Appellant contends that the recitation of “the radial projection being
larger than the radial depression in a radial direction when the filling
member is not inserted into the hollow” of claim 1 “defines the structure of
the filling member with respect to the annular depression of the annular wall
of the piston.” Appeal Br. 11. According to Appellant, “claim 1 recites the
structural features that make the components of the piston suitable to be
form fitted, rather than simply reciting a piston made by form fitting its
components.” Reply Br. 2, 3. Appellant argues that “the Examiner’s
interpretation of the claims as product-by-process claims is incorrect, as it
completely ignores the structural features of the piston and the filling
member recited in the claims.” Appeal Br. 11; see also Reply Br. 2^4.
Appellant is correct. We find the Examiner’s interpretation of claim 1
as a product-by-process claim to be misguided. To fit into the product-by
process category, a claim must define a product in terms of the process used
to manufacture that product. In re Brown, 459 F.2d 531, 535 (CCPA 1972)
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Appeal 2016-001102
Application 12/958,794
(product claimed by listing process steps used to obtain same is product-by­
process claim). Such is not the case in claim 1, which is directed to a
hydraulic piston machine including a piston having an annular wall and a
filling member, “wherein the filling member has at least a radial projection
and the annular wall has at least a radial depression in the inside facing the
hollow, the radial projection being larger than the radial depression in a
radial direction when the filling member is not inserted into the hollow.”
See Appeal Br. 26 (emphasis added).
More specifically, regarding the claimed hydraulic piston machine,
the Examiner’s claim interpretation leads to an improper conclusion
concerning the required structural features of that hydraulic piston machine.
The claimed hydraulic piston machine does not simply allow the filling
member to be “held by means of a form fit in the piston, both in the axial
direction and the radial direction,” as the Examiner asserts. See Ans. 13
(quoting Spec. 133). Rather, the radial projection must be “larger than the
radial depression in a radial direction when the filling member is not inserted
into the hollow.” This structural feature does not merely relate to “an
unfinished form” (see Ans. 13) or “intermediate steps in a method of
manufacture” as the Examiner asserts (see id. at 14), because, as the
Specification discloses, when the filling member is inserted into the hollow
of the piston, the radial projection “cannot expand to its original radial size.”
See Spec. 133. Further, as Appellant points out, “the excess material [of the
filling member] in the radial direction will then expand in the axial direction
of the depression [of the annular wall].” Appeal Br. 7, 11; see also Spec.
133.
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Appeal 2016-001102
Application 12/958,794
The Examiner misconstrues the claims as product-by-process claims,
and then relies upon this improper claim construction to ignore the structural
limitation of “the radial projection being larger than the radial depression in
a radial direction when the filling member is not inserted into the hollow.”
The Examiner does not assert that Hein discloses this limitation (see Final
Act. 3—6) and, thus, the Examiner has not established that all of the claim
limitations are found in the prior art.
For these reasons, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 2, 3, 9, and 10 which depend therefrom, as anticipated
by Hein.
Rejections II—IV
Rejections II—IV rely on the same erroneous interpretation of claim 1
as Rejection I. See Final Act. 6—13.
The Examiner does not assert that Engel, Bristow, or Adler discloses
“the radial projection being larger than the radial depression in a radial
direction when the filling member is not inserted into the hollow,” (see id.)
and, thus, the Examiner has not established that all of the claim limitations
are found in the prior art.
Accordingly, we do not sustain Rejections II—IV for the reasons
discussed supra.
DECISION
The Examiner’s rejections of claims 1—10 are REVERSED.
REVERSED
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