Ex Parte Hase

Patent Trial and Appeal Board

Jan 30, 2017

12989750 (P.T.A.B. Jan. 30, 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.
12/989,750 10/26/2010 Hirofumi Hase 1163-0838PUS1 1826
127226 7590 02/01/2017
Birch, Stewart, Kolasch & Birch, LLP
P.O. Box 747
Falls Church, VA 22040-0747
EXAMINER
ESHETE, ZELALEM
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
mailroom @ bskb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROFUMI HASE
Appeal 2015-002751
Application 12/989,750
Technology Center 3700
Before JOHN C. KERINS, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hirofiimi Hase (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1, 6, 7, and 9—11.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER A NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant submits the real party in interest is Mitsubishi Electric
Corporation. Appeal Br. 1.
Appeal 2015-002751
Application 12/989,750
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A solenoid valve for variable valve timing control devices
which adjusts an amount of a working fluid fed or discarded to
or from a variable valve timing control device equipped with a
pushing member for pushing a rotor toward a direction of an
advance angle, said solenoid valve comprising:
a valve housing of cylindrical shape which includes a
plurality of ports for supplying and discarding said working fluid
to and from said variable valve timing control device;
a spool moving within said valve housing in a direction of
an axis thereof to adjust the fed or discarded amount of said
working fluid flowing via said ports according to an amount of
said movement, the spool including a plurality of lands each of
which has a large-diameter portion, and recessed portions each
of which has a small-diameter portion for connecting said
plurality of lands with one another; and
a solenoid unit for driving said spool,
wherein a groove portion for adjusting the amount of the
working fluid which is close to an intermediate current value is
formed in an edge portion of said plurality of lands so that the
groove portion is formed discontinuously along a direction of a
circumference of the land.
REJECTION
Claims 1, 6, 7, and 9-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ken (US 6,006,708, issued Dec. 28, 1999) and Buttner
(US 2004/0069359 Al, published Apr. 15, 2004).
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Appeal 2015-002751
Application 12/989,750
DISCUSSION
New Ground of Rejection —Indefiniteness
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1, 6, 7, and 9-11 under 35 U.S.C. § 112, second paragraph, as indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellant regards as the invention.
“As the statutory language of ‘particularity]’ and ‘distinctness]’
indicates, claims are required to be cast in clear —as opposed to ambiguous,
vague, indefinite — terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014). “It is the applicants’ burden to precisely define the invention, not the
PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Independent claims 1 and 11 each contain the following limitation:
a groove portion for adjusting the amount of the working fluid which
is close to an intermediate current value is formed in an edge portion
of said plurality of lands so that the groove portion is formed
discontinuously along a direction of a circumference of the land.
Appeal Br. 8, 10 (Claims App.) (emphasis added).
Appellant refers to Figures 2 and 3 of the application for description
of the recited “groove portion.” Appeal Br. 2 (referring to notch portions
60a, 60b, and 60c). Notch portions 60a, 60b, and 60c are described as
“formed at equal intervals in the circumference” of edge portions of second
land portion 41b and third land portion 41c. Spec, ^flf 19, 21. The
Specification indicates that the control current value to solenoid valve 30
controls the axial position of spool 41 to open and close advance angle side
oil passage 31 and retard angle side oil passage 32. See id. ^fl[ 24, 26, Figs.
3a, 3c. Figure 5 illustrates the “relationship between the control current
value to the solenoid valve 30, and the oil flow rate in the solenoid valve.”
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Appeal 2015-002751
Application 12/989,750
Id. 124. The Specification, referring to Appellant’s Figure 5, describes “a
case in which an intermediate current value shown by the center line Y
becomes the control current value.” Id. 128. The intermediate current value
positions spool 41 in the intermediate holding position illustrated in
Appellant’s Figure 3b. Id. 129. Notch portions 60a, 60b, and 60c allow
flow to be maintained in the intermediate holding position shown as point R
in Figure 5. Id. The Specification also describes that “when the solenoid
valve 30 is controlled by using the solenoid valve control current having a
value close to the intermediate current value, the oil flows via notch portions
60 can increase the amount of oil flow to the advance angle side and retard
angle side oil passages 31 and 32.” Id. 131 (emphasis added).
The limitation in claims 1 and 11, “which is close to an intermediate
current value,” is unclear for the following reasons. The Specification
indicates that when a control current value is close to the intermediate
current value, oil flowing through notch portions 60a, 60b, and 60c can
increase the rate of oil flowing to the advance angle side and retard side oil
passages and allows oil to flow at point R in Figure 5. Appellant’s Figure 5
indicates that oil flows over a range of current values not merely at a value
close to the intermediate current value. The Specification describes notch
portions 60a, 60b, and 60c formed at intervals in the circumference of edge
portions of land portions 41b and 41c but does not describe how a current
close to an intermediate current value relates to or affects the structure or
function of notch portions 60a, 60b, and 60c. Claims 1 and 11 do not recite
that working fluid flows through the “grooved portion” at a value close to
the intermediate current value or increases working fluid flow to the advance
angle side oil passage or retard angle side oil passage when solenoid valve
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Appeal 2015-002751
Application 12/989,750
control current has “a value close to the intermediate current value.” In light
of the Specification and the claim language, we determine it is unclear how
the limitation “which is close to an intermediate current value” limits the
“groove portion” either structurally or functionally. Therefore, we enter a
new ground of rejection against independent claims 1 and 11, as well as
claims 6, 7, 9, and 10 which depend from claim 1, under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Claims 1, 6, 7, and 9—11 — 35 U.S.C § 103(a)
We do not sustain the rejection of claims 1, 6, 7, and 9—11 under 35
U.S.C. § 103(a) as being unpatentable over Ken in view of Buttner because
this rejection is necessarily based on speculative assumptions as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA
1962). Our decision regarding this rejection is based solely on the
indefmiteness of the claim limitation “which is close to an intermediate
current value” as discussed above. We emphasize that our decision does not
mean the claims are patentable. Rather, we leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
DECISION
The Examiner’s decision rejecting claims 1, 6, 7, and 9-11 under 35
U.S.C. § 103(a) is reversed.
We enter a new ground of rejection against claims 1, 6, 7, and 9—11
under 35 U.S.C. § 112, second paragraph.
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Appeal 2015-002751
Application 12/989,750
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, Appellant, within
two months from the date of the decision, must exercise one of the
following two options with respect to the new ground[s] 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 examiner, in which
event the prosecution will be remanded to the
examiner. The new ground[s] of rejection [are]
binding upon the Examiner unless an amendment or
new Evidence not previously of Record is made
which, in the opinion of the examiner, overcomes the
new ground[s] of rejection designated in this
decision. Should the examiner 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 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 § 1214.01.
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Appeal 2015-002751
Application 12/989,750
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)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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