Ex parte ITO et al.

Board of Patent Appeals and Interferences

Jun 23, 1998

07987186 (B.P.A.I. Jun. 23, 1998)

Application for patent filed December 8, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASAYA ITO,
SEIJI MORI
and
TAKAYA YOSHIKAWA
_____________
Appeal No. 96-1651
Application 07/987,1861
______________
HEARD: June 11, 1998
_______________
Before CALVERT, COHEN and ABRAMS, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 96-1651
Application 07/987,186
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims
13, 18, 20, and 23 through 29. Claims 14 through 17, 19, 21,
and 22 stand withdrawn from consideration by the examiner pur-
suant to 37 CFR § 1.142(b). These claims constitute all of the
claims remaining in the application.
Appellants’ invention pertains to a ceramic-metal
composite rotor. An understanding of the invention can be
derived from a reading of exemplary claim 13, a copy of which
appears in “APPENDIX A” to the main brief (Paper No. 18).
As evidence, the references listed below have been
applied:
Ito et al. (Ito) 5,073,085 Dec. 17, 1991
Oda et al. (Oda) 250,118 Dec. 23, 1987
(published European Patent Application)
The following rejections of the examiner are before us
for review.
Appeal No. 96-1651
Application 07/987,186
This rejection, stated in the alternative under 35 U.S.C.2
§§ 102(e) and 103, simply combines the separately recited
rejections under 35 U.S.C. § 102(e) and 35 U.S.C. § 103 set forth
in the final rejection (Paper No. 13; pages 5 through 7).
We are informed by Paper Nos. 24, 25, and 26 as to an 3
appeal in application Serial No. 08/192,270, a division of the
present application on appeal.
3
Claims 13, 18, 20, and 23 through 29 stand rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite.
Claims 13, 20, 23, 26, 27, and 29, as best understood,
stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Oda.
Claims 13, 18, 20, and 23 through 29, as best
understood, stand rejected under 35 U.S.C. § 102(e) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103 as
being unpatentable over Ito.2
The full text of the examiner's rejections and response
to the argument presented by appellants appears in the main,
supplemental, and second supplemental answers (Paper Nos. 19, 24,
and 26), while the complete statement of appellants’ argument3
Appeal No. 96-1651
Application 07/987,186
The issue regarding withdrawn claims 14 through 16, and 194
(main brief, pages 5 and 6) is appropriately resolved by way of
petition, not appeal.
The claims on appeal, drawn to a ceramic-metal composite5
rotor, are claims of elected Group II (Paper No. 4), pursuant to
a restriction requirement (Paper No. 3). These claims have also
been indicated to be for the elected species of Figures 1A and 1B
(Paper No. 7), in accordance with an election of species
requirement (Paper No. 6).
In our evaluation of the applied teachings, we have6
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
4
can be found in the main, reply, and supplemental reply briefs
(Paper Nos. 18, 21, and 25).4
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellants’ specification and claims, the applied teachings,5 6
and the respective viewpoints of appellants and the examiner.
As a consequence of our review, we make the determinations
which follow.
Appeal No. 96-1651
Application 07/987,186
5
The indefiniteness issue
We reverse the examiner’s rejection under 35 U.S.C.
§ 112, second paragraph.
The examiner is uncertain as to whether a product
per se or a process of making a product is being claimed, and
specifically refers to clauses (D) and (E) of claim 13 (Paper
No. 13, paragraph 4).
Paragraphs (D) and (E) of claim 13 are sixth paragraph
(35 U.S.C. § 112) means plus function recitations. Thus, these
recitations are construed to cover the corresponding structure
described in the specification and equivalents thereof. Read in
light of the underlying disclosure (specification, page 3), we
understand these recitations as follows.
With respect to the “metallurgical joining means” of
paragraph (D), it is clear to us that this recitation denotes a
joining structure effected by metallurgical (chemical)
interaction between the claimed intermediate member and stub
shaft of the ceramic wheel. The specification informs us (page
Appeal No. 96-1651
Application 07/987,186
We simply note at this point that the language of the7
dependent claims is likewise viewed as definite. For example,
the recitation that the metallurgical joining means comprises
joining by heating while interposing an intermediate layer
consisting of a sheet of Ni (claim 18) and the recitation that
mechanical joining means comprises press fitting (claim 20) are
6
3) that this joining structure can be effected by brazing,
diffusion joining or welding, joining by the use of oxide,
friction welding, hot pressing, and hot isostatic pressing.
Relative to the “mechanical joining means” of paragraph
(E), we understand this recitation as denoting a joining
structure effected by mechanical interaction between the claimed
intermediate member and the socket portion of the metallic shaft.
The specification (page 3) instructs us that this joining
structure can be effected by press fitting, shrink fitting and
fastening with bolts or screws.
Based upon the above claim analysis, we understand
independent claim 13 (with clauses (D) and (E) therein) to be
clearly drawn to a product, i.e., a ceramic-metal composite
rotor. Claim 13, in particular, is therefore definite in meaning
under 35 U.S.C. § 112, second paragraph.7
Appeal No. 96-1651
Application 07/987,186
understood as imposing further structural limitations, i.e., a
heated intermediate layer joining structure of Ni (claim 18) and
a press fit joining structure (claim 20). See In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
7
With the above in mind, we now turn to the examiner’s
prior art rejections.
The anticipation rejection based upon Oda
We reverse this rejection of appellants’ claims under
35 U.S.C. § 102(b).
As earlier pointed out, independent claim 13 is
addressed to a ceramic-metal composite rotor.
The examiner indicates that the rejection is based upon
Figure 6 of Oda, not Figure 5 as referred to by appellants (main
answer, page 12).
Simply stated, claim 13 is not anticipated by the
showing in Figure 6 of Oda. This figure relates to an engine
piston configuration, not a rotor, as claimed. Further, two
mechanical joining structures are relied upon in the piston of
Figure 5, not the specific metallurgical joining means and the
distinct mechanical joining means of claim 13. As to the ceramic
Appeal No. 96-1651
Application 07/987,186
8
turbocharger rotor of Figure 5 of Oda, claim 13 is not
anticipated thereby since, contrary to the language of claim 13,
this figure shows a metallurgical joining means between the
inter-mediate member and the metallic shaft and a mechanical
joining means between the ceramic wheel and the intermediate
member.
The rejection based upon Ito
We reverse the rejection of claims 13, 18, 20, and 23
through 29 under 35 U.S.C. § 102(e) as being anticipated by or,
in the alternative, under 35 U.S.C. § 103 as being unpatentable
over Ito.
As to the anticipation issue, we find that the Ito
patent, addressed to a ceramic turbocharger rotor, relies
exclusively upon soldering or brazing (metallurgical joining
means) for assembling the rotor parts together. Thus, Ito lacks,
at the least, mechanical joining means for joining an
intermediate member to a socket portion of a metallic shaft, as
required by independent claim 13. Ito is, therefore, not an
anticipatory reference within the meaning of 35 U.S.C. § 102(e).
Further, in the matter of the obviousness issue, it is clear to
Appeal No. 96-1651
Application 07/987,186
9
us that the Ito teaching of exclusive reliance upon soldering or
brazing would not have been suggestive of any mechanical joining
means, as claimed. Accordingly, the claimed invention would not
have been rendered obvious under 35 U.S.C. § 103 by the teaching
of Ito.
In summary, this panel of the board has:
reversed the rejection of claims 13, 18, 20, and 23
through 29 under 35 U.S.C. § 112, second paragraph, as being
indefinite;
reversed the rejection of claims 13, 20, 23, 26, 27,
and 29 under 35 U.S.C. § 102(b) as being anticipated by Oda; and
reversed the rejection of claims 13, 18, 20, and 23
through 29 under 35 U.S.C. § 102(e) as being anticipated by or,
in the alternative, under 35 U.S.C. § 103 as being unpatentable
over Ito.
The decision of the examiner is reversed.
REVERSED
Appeal No. 96-1651
Application 07/987,186
10
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 96-1651
Application 07/987,186
11
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