Ex Parte Klotz

Patent Trial and Appeal Board

Sep 27, 2012

11372570 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAMES R. KLOTZ
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Appeal 2010-009344
Application 11/372,570
Technology Center 3700
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Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009344
Application 11/372,570

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STATEMENT OF THE CASE
James Klotz (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 1-4, 7-13, 16-
18 and 20 as unpatentable over Moretz (US 6,257,189 B1, issued Jul. 10,
2001) and either Sperling (US 5,546,899, issued Aug. 20, 1996) or
Albertson (US 6,978,752 B2, issued Dec. 27, 2005). Claims 5, 6, 14, 15 and
19 have been cancelled. We have jurisdiction over this appeal under 35
U.S.C. § 6(b). We REVERSE.

THE INVENTION
Appellant’s invention relates to valve lifter retainers, particularly for
use on “V” style engines. Spec. para. [0001] and figs. 1 and 3.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A lifter retainer, comprising:
a central body portion,
a left bank of lifter retaining arms attached to said
central body portion, and
a right bank of lifter retaining arms attached to said
central body portion,
wherein each retaining arm includes a spanning
portion and a key engaging portion, and each key
engaging portion of each retaining arm is adapted
to engage with a sufficient running clearance a
keyed surface of a respectively associated lifter.

OPINION
Each of independent claims 1 and 9 requires a lifter retainer having
lifter retainer arms, wherein each key engaging portion of each retainer arm
is “adapted to engage with a sufficient running clearance” a keyed portion of
a respective lifter. App. Br., Claims Appendix. Similarly, each of
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independent claims 12 and 18 require a lifter alignment system including a
retainer, wherein “each key segment [of the retainer] is adapted to engage
with a sufficient running clearance a keyed surface of a respectively
associated lifter.” Id.
The Examiner found that Moretz discloses all the limitations of
independent claims 1, 9, 12 and 18 except for “a sufficient running clearance
between engaging components.” Ans. 3-4. The Examiner further found that
Sperling discloses “a guide or retainer 34 with sufficient clearance to permit
full range of motion of the roller lifter 36.” (Ans. 4. (citing Sperling, col. 6,
ll. 3-7 and ll. 21-24)). Similarly, the Examiner found Albertson also
discloses “a lifter guide 30 having valve lifters engaging clearance edges 44,
46 of guide openings 36.” (Id. (citing Albertson, col. 3, ll. 50-54 and col. 4,
ll. 60-65)). The Examiner takes the position that Moretz “accomplishes the
same function [as the subject invention], but maintains a contact between the
valve lifters and the guide, without providing a specific clearance among
those aforementioned components.” Ans. 5. The Examiner further takes the
position that Sperling and Albertson each “demonstrate[] that a clearance
can easily be provided between a lifter and a lifter guide for a smooth lifter
operation, with additional advantages of reducing wear and easier alignment
between adjacent relative moving components.” Id. As such, the Examiner
concludes that it would have been obvious to a person having ordinary skill
in the art at the time the invention was made to modify Moretz’s lifter
retainer by providing sufficient clearance between the lifter and the lifter
retainer, as taught by either Sperling or Albertson, “since the use thereof
would provide a more flexible lifter operation, and less wear between the
relatively moving components.” Id.
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Appellant argues, “Moretz[’s] valve guide would simply not work if a
clearance were to be provided between the key engaging portion and the
keyed surface of the lifters.” Reply Br. 4. Specifically, according to
Appellant,
any clearance between the fingers and the lifters
would permit the lifters to rotate and defeat the
entire purpose of the valve guide. For instance, if a
clearance between the lifters and valve guide were
to be provided, the Moretz lifters would rotate
before contacting the valve guide. Once the lifters
contacted the valve guide, the valve guide would
deform permitting the lifters to rotate even further
and possibly completely out of alignment.

Reply Br. 4-5.
As such, Appellant takes the position that “[t]his is the very reason that
Moretz teaches constant contact and pressure between the valve guide and
the fingers. The preloading and pre-deflection of the Moretz fingers
prevents excessive and potential complete rotation of the lifters.” Reply Br.
5. We agree.
In this case, we find that Moretz discloses a valve lifter guide 10
including lifter retaining arms/retainer 20 attached to a central body portion
12, wherein each retaining arm/retainer 20 includes a spanning portion 22
and a key engaging portion 24, and wherein the convex surface 26 of the key
engaging portion 24 engages the flat orientation surface 36 of the valve lifter
32. See Moretz, figs. 1 and 5. In addition, Moretz specifically discloses that
an object of the invention is “to provide an anti-rotation valve lifter guide
using a plurality of resilient fingers for engaging the valve lifter and
preventing rotation thereof, the resiliency of the fingers insuring an effective
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engagement between the guide and the valve lifters.” See Moretz, col. 1, ll.
63-67. Emphasis added. Moretz further specifically discloses
The outer end of each of the guide fingers is
formed with a linear surface for engaging a flat
valve lifter orientation surface. It is this linear
engagement of the outer end of a finger with a
valve lifter flat surface which prevents rotation of
the valve lifter about its axis.

Moretz, col. 2, ll. 51-55. Emphasis added.

Because the convex surfaces 26 of the
fingers engage the flat orientation surfaces 36 of
the valve lifters in a linear manner throughout the
width of the fingers, the engagement of the fingers
and valve lifters at line of contact 42 prevents
rotation of the valve lifters about their longitudinal
axes.

Moretz, col. 4, ll. 48-52. Emphasis added. See also, Moretz,
fig. 5.
As such, we find that modifying the lifter guide 10 of Moretz to
include a clearance between the lifter 32 and the lifter retainer 20, as
proposed by the Examiner (see Ans. 5), would permit the lifter to rotate. In
other words, modifying the lifter guide 10 of Moretz to include a clearance
between the convex surface 26 of the fingers 20 and the flat orientation
surface 36 of the valve lifter 32 would defeat the purpose of the linear
engagement between the outer end 26 of a finger 20 and the flat surface 36
of a valve lifter 32, as specifically disclosed in Moretz (i.e., to “prevent[]
rotation of the valve lifter about its axis.”). See Moretz, col 2, ll. 51-55.
Where the proposed modification would render the prior art invention being
modified unsatisfactory for its intended purpose, the proposed modification
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would not have been obvious. See Tec Air, Inc. v. Denso Mfg. Michigan,
Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984). Hence, the modification proposed by the Examiner would
not have been obvious to a person of ordinary skill in the art.
Accordingly, the rejection of independent claims 1, 9, 12 and 18 and
their respective dependent claims 2-4, 7, 8, 10, 11, 13, 16, 17 and 20 as
unpatentable over Moretz and either Sperling or Albertson cannot be
sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).

DECISION
The decision of the Examiner is reversed as to claims 1-4, 7-13, 16-18
and 20.

REVERSED

mls