Ex Parte Kunz et al

Patent Trials and Appeals Board

Jan 10, 2019

14236478 - (D) (P.T.A.B. Jan. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/236,478 04/25/2014
535 7590 01/14/2019
KFROSS PC
311 E York St
Savannah, GA 31401-3814
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael Kunz
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30671 3558
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
01/14/2019 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):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KUNZ,
BERND MANN,
MARKUS MELZER, and
JUERGEN MEUSEL 1
Appeal2018-004672
Application 14/236,478
Technology Center 3600
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
JEREMY M. PLENZLER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final Rejection of claims 12, 13, and 15-18. App. Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained below,
we REVERSE the Examiner's rejections.
1 "As evidenced by [an] assignment ... the real party in interest here is
Thyssenkrupp Presta Teccenter AG of Germany." App. Br. 1. Accordingly,
for purposes of this appeal, we understand Thyssenkrupp Presta Teccenter
AG is the Appellant.
Appeal2018-004672
Application 14/236,478
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a camshaft, in particular for a
motor vehicle engine." Spec. 1:9--10. Apparatus claim 12 is the sole
independent claim; is illustrative of the claims on appeal; and, is reproduced
below.
12. A camshaft for a motor vehicle engine, the camshaft
compnsmg:
a tubular outer shaft extending along an axis;
an inner shaft extending coaxially in the outer shaft,
having opposite ends and a diameter reduction forming an
axially directed shoulder, and rotatable about the axis relative to
the outer shaft;
a first cam rotationally fixed on the outer shaft;
a second cam rotatable on the outer shaft and fixed to the
inner shaft;
a support element on one of the ends of the inner shaft
and projecting radially past the outer shaft, with an outer
surface of the outer shaft forming with an inwardly directed
surface of the support element a sliding-contact bearing for the
inner shaft; 2 and
a fixing rim formed on the support element, braced
axially against the shoulder of the inner shaft, and recessed and
fixedintheinnershaft.
REFERENCES RELIED ON BY THE EXAMINER
Amborn et al.
Murata
us 5,664,463
JP 2010-196488 A
Sept. 9, 1997
Sept. 9, 2010
2 In Appellant's Reply Brief, Appellant states "that there is a typographical
error in the last line of the next-to-last paragraph of claim 12." Reply Br. 1.
Appellant states "that 'inner' should read 'outer"' and that this "is clear from
the context of the case." Reply Br. 1. In short, Appellant is seeking to
amend claim 12 in the Reply Brief. This is not the proper procedure to
follow when seeking to amend a claim, and especially one that seeks to have
a recitation to an "inner shaft" be instead understood to mean "outer shaft."
2
Appeal2018-004672
Application 14/236,478
THE REJECTIONS ON APPEAL
Claims 12, 13, and 15-17 are rejected under 35 U.S.C. § 102(b) as
anticipated by a first interpretation of Murata.
Claims 12, 13, and 15-17 are rejected under 35 U.S.C. § 102(b) as
anticipated by a second interpretation of Murata.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
each of the first and second interpretations of Murata, and further in view of
Amborn.
ANALYSIS
The rejection of claims 12, 13, and 15-17
as anticipated by a first interpretation of Murata
In accordance with the first interpretation of Murata, the Examiner
states that Murata's "element (71) is interpreted as part of the support
element" ( which the Examiner correlates to items 70 and 71 ). Final Act. 2-
3. The Examiner also finds that item 71 from Murata corresponds to the
recited "fixing rim formed on the support element." Final Act. 3. The
relevant portion of Murata is replicated below:
2
'2122'
)
70
70a
~ V-72
3
Appeal2018-004672
Application 14/236,478
The above is an end portion of Figure 3 of Murata illustrating outer
shaft 21, inner shaft 22, support element 70, and mounting screw 71.
Sole independent claim 12 includes the limitation of an inner shaft
"having opposite ends and a diameter reduction forming an axially directed
shoulder" ( emphasis added). The Examiner correlates the
"groove/hole/recess that receives 71" in the end of inner shaft 22 as the
recited "diameter reduction" of that shaft. Final Act. 2; see also Ans. 6.
Appellant disagrees stating, "since the inner shaft 22 of Murata is of uniform
cross-sectional size along its entire length, with no diameter reduction
forming a shoulder," Murata does not disclose this structure. App. Br. 6; see
also Reply Br. 2-3.
The Examiner is identifying a bore made into the end of shaft 22 that
receives screw 71 therein as corresponding to a "reduction" of this inner
shaft 22. 3 We do not agree with the Examiner that the bore in the end of
inner shaft 22 that receives screw 71 can be properly correlated to the recited
"diameter reduction" of the inner shaft. Claim 12 recites that the "diameter
reduction form[ s] an axially directed shoulder" with "a fixing rim formed on
the support element, braced axially against the shoulder." First, we note that
fastener 71 is not a "rim." Second, the bore is not a diameter reduction, as
we have no reason to believe the diameter of that bore varies. A diameter
reduction, as recited in the claim and consistent with Appellant's
Specification (Spec. 8-9; Fig. IA), is a change in diameter along a given
surface of the shaft (i.e., that surface has regions defining at least two
3 The Examiner states, "Merriam-Webster's Dictionary defines 'reduction'
as 'the action of making a specified thing smaller or less in amount."' Ans.
5.
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Appeal2018-004672
Application 14/236,478
different diameters). Third, to the extent that the bore receiving fastener 71
properly corresponds to the "shoulder" recited in the claim, we have no
reason to believe that the end of fastener 71 is "braced axially against th[ at]
shoulder." The Examiner has failed to identify structure in Murata sufficient
to meet the structure of "an inner shaft ... having ... a diameter reduction
forming an axially directed shoulder" with "a fixing rim formed on the
support element, braced axially against the shoulder" required by claim 12.
Thus, the Examiner has not established by a preponderance of the
evidence that the "first interpretation" of Murata anticipates claim 12, or
dependent claims 13, and 15-1 7.
The rejection of claims 12, 13, and 15-17
as anticipated by a second interpretation of Murata
In accordance with the second interpretation of Murata, the Examiner
states that Murata's "element (71) is interpreted as part of the inner shaft"
(which the Examiner now correlates to items 22 and 71). Final Act. 4--5.
The Examiner annotates a portion of Murata's Figure 3 (replicated below)
illustrating where the recited "diameter reduction" DR can be found. See
Final Act. 5---6.
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Appeal2018-004672
Application 14/236,478
The above is an end portion of Figure 3 of Murata annotated by the
Examiner to identify fixing rim FR, diameter reduction DR, and shoulder
SH. See Final Act. 5---6.
Appellant repeats the above argument regarding Murata's lack of a
"diameter reduction." App. Br. 6. The Examiner states, "the 'diameter
reduction' of the second interpretation of Murata is the radially outermost
diameter of element (71 ), which is smaller than, or reduced relative to, the
radially outermost diameter of element (22)." Ans. 7. Appellant replies,
"[t]he examiner's position that the screw is part of the inner shaft and forms
a diameter reduction has no basic in logic" and that "[ a ]dmittedly the
diameter of the screw 71/32 is smaller than that of the shaft 22, but this in no
way constitutes a diameter reduction" of the shaft. Reply Br. 2.
Appellant's Specification makes a distinction between an inner shaft
and a support element, and discloses the ability to use fasteners or the like to
mount the element to the shaft. See e.g., Spec. 2:8-11; 2:18-19; 3:14--20.
From this description, one skilled in the art would understand Murata's inner
shaft to consist of only that, i.e., a shaft, and not a mounting screw used to
secure a support element to the shaft, as the Examiner is proposing. See
Final Act. 4. The Examiner provides no basis for interpreting the recited
"inner shaft" as correlating to both Murata's shaft and a mounting screw.
Accordingly, as above, we do not agree with the Examiner that claims 12,
13, and 15-17 are anticipated by the Examiner's "second interpretation" of
Murata.
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Appeal2018-004672
Application 14/236,478
The rejection of claim 18 as unpatentable over each of the first and second
interpretations of Murata, and further in view of Amborn
Claim 18 includes an additional limitation directed to "longitudinal
slots." The Examiner relies on the teachings of Amborn for this additional
limitation. Final Act. 8. The Examiner does not rely on Amborn to cure the
defect of either interpretation of Murata as discussed above. Accordingly,
we reverse the Examiner's rejection of claim 18 as being obvious over
Murata and Amborn.
DECISION
The Examiner's art rejections of claims 12, 13, and 15-18 are
reversed.
REVERSED
7