Ex Parte Lombard et al

Patent Trial and Appeal Board

May 15, 2013

10546384 (P.T.A.B. May. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ALAIN LOMBARD, DENIS TISSERANT,
and STEPHANE D'HAUENENS
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Appeal 2011-002992
Application 10/546,384
Technology Center 3700
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Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
3-11. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The Invention
Appellants’ claimed invention relates to “a turbine having a variable
throat for use in a turbocharger.” Spec. 1:1-3. Claims 10 and 7 are the
independent claims on appeal. Claim 10, reproduced below, with emphasis
added, is illustrative:
10. A turbine for a turbocharger, comprising:
a turbine housing;
a turbine wheel within the housing the
turbine wheel defining an axial direction, and the
turbine wheel having a plurality of turbine blades,
wherein the housing forms a passage guiding fluid
flow to an inlet of the turbine wheel;
an annular member surrounding the turbine
wheel, the annular member being movable in the
axial direction of the turbine wheel to vary an inlet
area of the inlet of the turbine wheel; and
a nozzle disposed within the passage, the
nozzle including a plurality of vanes;
wherein:
the annular member moves between a
position close to the vanes and a position distant
from the vanes.

The Rejections and Evidence Relied Upon
The following rejections are before us on appeal:
I. Claims 10 and 11 under 35 U.S.C. § 102(b) as anticipated by Dale
(US 5,441,383; iss. Aug. 15, 1995); and
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II. Claims 3-9 under 35 U.S.C. § 103(a) as unpatentable over Dale and
Daimler-Benz (DE 3908285 C1; pub. Jun. 7, 1990).

OPINION
I. Claims 10 and 11 as anticipated by Dale
The dispute with regard to this rejection relates to the scope of claim
10. Claim 10 is directed to a turbine for a turbocharger that includes an
annular member that moves between “a position close to the vanes” of the
nozzle and “a position distant from the vanes” of the nozzle.
The Examiner found that Dale’s annular member (axially movable
sleeve 70) moves between a position close to the vanes (axially extending
input nozzle vanes 77) of the nozzle (nozzle 16) and a position distant from
the vanes (vanes 77) of the nozzle (nozzle 16). Ans. 4; see also Dale, col. 2,
ll. 48-52; col. 5, ll. 9-15; fig. 1. Appellants contend that because Dale’s
vanes (vanes 77) completely traverse the nozzle (nozzle 16), as the annular
member (sleeve 70) moves axially, the gap between the annular member
(sleeve 70) and the vanes (vanes 77) remains the same. App. Br. 10-12.
The Examiner responds that Dale’s annular member (sleeve 70) is
capable of the claimed positions because axial movement of Dale’s annular
member (sleeve 70) repositions its center of mass with respect to the center
of mass of the vanes (vanes 77). Ans. 8-9 (providing a figure illustrating
relative movement of centers of mass). Appellants respond that a person of
ordinary skill in the art would understand that the claimed close and distant
positions of the annular member with respect to the vanes refer to the space
or gap between them and not the distance between their respective centers of
mass. Reply Br. 3.
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We agree with the Examiner that the distant position as claimed does
not incorporate the limitation that the vanes are substantially bypassed so
that the nozzle operates without the influence of the vanes. See Ans. 7; see
also App. Br. 10 (presenting argument that may suggest this limitation is
incorporated in claim 10). However, even knowing this limitation is not
incorporated, our inquiry remains whether the close and distant positions
claimed are made in reference to the respective centers of gravity or the gap
between the elements.
The Examiner’s interpretation that the close and distant positions are
made in reference to respective centers of gravity is not well supported. The
Examiner does not provide a definition that such is the ordinary meaning of
these terms, does not identify a difference in function caused by relative
movement of the respective centers of gravity, and does not discuss how
such interpretation is consistent with the Specification. Although claims
terms are to be given their broadest reasonable construction, such
construction cannot be divorced from the Specification. See e.g., In re NTP,
654 F.3d 1279, 1288 (Fed. Cir. 2011).
The Specification does not contain a lexicographical definition of the
claim terms “position close” or “position distant.”
The Specification explains that in order to enlarge or reduce the throat
area 8, annular member 7 moves axially to, or away from, the vanes 9,
varying the space between annular member 7 and vanes 9. Spec. 3:17-21;
3:27 to 4:6; 4:7-16; figs. 1 (“far away from”), 2 (“closer”).1 Therefore, the
Specification is consistent with Appellants’ assertion that the claimed

1 It appears that the description that annular member 7 is far away from
vanes 9 in Figure 1 and closer in Figure 2 is reversed.
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positions are made in reference to the gap (space) between the components.
See App. Br. 12; Reply Br. 3 (providing a common meaning of distant).
The Specification explains that the distant position (larger throat area)
of the annular member is utilized at high rotational speeds and reduces
engine backpressure, while the close position (smaller throat area) achieves a
large boost in the low rotational speed range. Spec. 4:7-23; figs. 1, 2. This
disclosure is consistent with Appellants’ contention that a person of ordinary
skill in the art would recognize that altering the gap between the annular
member and the vanes alters the function of the device. Reply Br. 3.
Therefore, claim 10 calls for an annular member capable of a position
close to and a position distant from the vanes where such positions are made
in reference to the gap between the annular member and the vanes.
Given, as discussed supra, that axial movement of Dale’s annular
member (sleeve 70) does not alter the gap between the annular member and
the vanes (vanes 77), we agree with Appellants that Dale does not disclose
an annular member capable of close and distant positions as claimed.
Consequently, we do not sustain the rejection of claim 10 and its dependent
claim 11. See App. Br. 10.

II. Claims 3-9 as unpatentable over Dale and Daimler-Benz
The dispute with regard to this rejection relates to the limitation of
independent claim 7 that the first turbine blades extend axially across the
throat area.
Appellants contend that “across” is ordinarily understood to mean “on
or to the other side of.” For that reason, a person of ordinary skill in the art
would interpret that the plurality of first blades of claim 7 must extend
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radially into the throat area in order to extend axially from one side of the
throat area to the other side of the throat area. App. Br. 13-14; Reply Br. 4-
5. Appellants assert that first blades (6) of Daimler-Benz do not extend
radially into the throat area, and therefore cannot extend axially across the
throat area as claimed.
The Examiner interprets that the radial dimensions of the first turbine
blade are not claimed, and even if they were claimed, first turbine blades (6)
of Diamler-Benz radially extend to the throat area and therefore extend
axially across the throat area. Ans. 10-12.
We agree with Appellants that the Examiner seems to read claim 7 as
if it calls for the plurality of first turbine blades to extend axially to the same
extent as the throat area. Reply Br. 4. This interpretation effectively reads
the word “across” out of the claim.
We agree with Appellants’ interpretation that “across” ordinarily
means “on or to the other side of.” We discern nothing inconsistent with this
interpretation in the Specification. However, our interpretation of claim 7
differs slightly from Appellants’ interpretation in that we read claim 7 to call
for the plurality of first blades to extend radially to, rather than into, the
throat area. We interpret claim 7 this way for consistency with Appellants’
disclosure because Appellant’s turbine blade extends axially adjacent to,
rather than into, the throat area 8. See Spec. 3:10-11 (defining the throat
area as the smallest cross section of fluid flow); fig. 2.
Therefore, claim 7 calls for the plurality of first turbine blades to
extend axially from one side of the throat area to the other side of the throat
area at a point that is adjacent to or within the throat area.
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First turbine blade (6) of Diamler-Benz angles so that it extends
radially to the throat area (4) at a single point along the axial direction. See
Ans. 10 (Examiner’s annotated version of Diamler-Benz, Figure 1, with
arrow at the point of intersection of first blade (6) and the throat area as
indicated by a dashed line). A single point does not extend axially as called
for in independent claim 7.
Consequently, we reverse the rejection of claim 7 and its dependent
claims 3-6, 8, and 9.

DECISION
We reverse the Examiner’s decisions to reject claims 3-11.

REVERSED

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