Ex Parte Manning

Board of Patent Appeals and Interferences

Jun 5, 2009

10277254 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte ERIC KEITH MANNING 8
____________________ 9
10
Appeal 2009-001074 11
Application 10/277,254 12
Technology Center 3600 13
____________________ 14
15
Decided:1 June 8, 2009 16
____________________ 17
18
Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1074
Application 10/277,254

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a rejection of 2
claims 22-24. Claims 25-28 have been withdrawn from consideration. We 3
have jurisdiction under 35 U.S.C. § 6(b) (2002). 4
5
SUMMARY OF DECISION 6
We AFFIRM-IN-PART. 7
8
THE INVENTION 9
The Appellant’s claimed invention is directed to a belt tensioner 10
assembly for an internal combustion engine that engages a belt on both sides 11
of a driving/driven member (Spec. 3:2-8). Claim 222, reproduced below, is 12
representative of the subject matter on appeal. 13
22. A belt tensioning arrangement in an internal combustion 14
engine, said arrangement comprising: 15
a crank shaft having a first pulley; 16
a starter/alternator accessory device having a second 17
pulley, said starter/alternator has a starting mode and a 18
generating mode inducing a torque to said belt in opposite 19
directions through said second pulley between said starting and 20
generating modes and includes an idle mode where said second 21
pulley rotates in a substantially free spinning state; 22
a belt at least partially wrapped around each said first and 23
second pulleys to establish a driving connection there between; 24
and 25

2 The Claims Appendix section (Br. 8-10) of the Appeal Brief does not
contain a correct copy of Appellant’s claims on appeal, e.g., claim 23, line 4
contains the words “coplanar with” when the finally rejected claim 23, line 4
contains the words “pivotally mounted in.” The claims involved in this
appeal are found in a communication filed January 10, 2006.
Appeal 2009-1074
Application 10/277,254

3
a tensioning device having at least two tension members 1
engaging said belt on opposite sides of said second pulley of 2
said starter/alternator along a travel path of said belt, said at 3
least two tension members being movably mounted relative to 4
said internal combustion engine and having a biasing member 5
disposed to bias each of said tension members towards said 6
belt, wherein, said movably mounted tension members and said 7
biasing member together form a free floating tension assembly 8
to maintain a minimum tension in said belt irrespective of said 9
modes of operation of said starter/alternator to prevent said belt 10
from slipping. 11
12
THE REJECTIONS 13
The Examiner relies upon the following as evidence of 14
unpatentability: 15
Giese (as translated) P4243451.3 Jun. 23, 1994 16
Bogl (as translated) DE 198 49 659 A1 May 4, 2000 17
(hereinafter Bogl ’659) 18
Bogl (US equivalent) US 6,511,393 B1 Jan. 28, 2003 19
(hereinafter Bogl (US equivalent)) 20
21
Merriam-Webster’s Collegiate Dictionary (10th ed.) for the ordinary 22
meaning of the word “parallel.” 23
24
The following rejections by the Examiner are before us for review: 25
1. Claims 23 and 24 are rejected under 35 U.S.C. § 112, second 26
paragraph, as being indefinite for failing to particularly point out and 27
distinctly claim the subject matter which applicant regards as the 28
invention. 29
2. Claims 22-24 are rejected under 35 U.S.C. § 102(b) as being as being 30
anticipated by Bogl ’659. 31
3. Claims 22-24 are rejected under 35 U.S.C. § 103(a) as being 32
unpatentable over Bogl ’659 in view of Giese. 33
Appeal 2009-1074
Application 10/277,254

4
1
ISSUES 2
The issues before us are whether the Appellant has shown that the 3
Examiner erred in rejecting claims 23 and 24 as being indefinite, claims 22-4
24 over Bogl ’659, and claims 22-24 over Bogl ’659 in view of Giese. 5
These issues turn on whether: (1) the Examiner erred in concluding that 6
claims 23 and 24 fail to particularly point out and distinctly claim the 7
Appellant’s invention (Reply Br. 2-3 and Br. 5); (2) Bogl ’659 discloses a 8
biasing member or a free floating tension assembly as called for in claim 22 9
(Br. 5-6); (3) in Bogl ’659, the tension-dampener unit 6, 9 includes a spring 10
as called for in claim 24 (Br. 6); and (4) the Examiner has failed to articulate 11
a reason with rational underpinning to combine the teachings of Bogl ’659 12
and Giese. 13
14
FINDINGS OF FACT 15
We find that the following enumerated findings are supported by at 16
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 17
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 18
proceedings before the Office). 19
1. The Appellant’s Specification discloses that “the specific structure 20
of the spring 11 is not essential to the present invention and may be 21
in the form of many spring devices” (Spec. 14:20-22). 22
2. The Appellant’s Specification further discloses that the present 23
invention is not limited to a specific type of spring and that “[a]ny 24
biasing member that ensures that the rollers are biased towards 25
Appeal 2009-1074
Application 10/277,254

5
engagement with the belt 3 may be employed” (Spec. 14:22-Spec. 1
15:2). 2
3. Bogl ’659 discloses an automotive engine 1 having a belt 2, the 3
belt having two sections 2a, 2b, the belt being maintained under 4
pressure by a tensioner and damper 6, an element 9 integrally 5
connected to the tensioner and damper 6, the tensioner and 6
dampener 6 acts on two sets of levers 8, 11, wherein different 7
tensioning forces are applied to the first 2a and the second 2b 8
sections of the belt 2 (translation, p. 2, novelty section and figs. 1-9
3). 10
4. Bogl (US equivalent) discloses a belt drive of an internal 11
combustion engine 1, the belt drive includes a belt 2, a crankshaft 12
belt pulley 3, a starter generator unit pulley 5, a tensioning device 13
6, a tension- damper unit 9, the belt having a first strand 2a and a 14
second strand 2b, a first and a second pivoting levers 8, 11, a first 15
tension roller 7 mounted on the first pivoting lever 8 and a second 16
tension roller 10 mounted on the second pivoting lever 10 (col. 4, 17
ll. 30-60 and col. 5, l. 55-col. 6, l. 6), wherein when the starter-18
generator unit operates as a starter the first strand 2a is a tight 19
strand and second strand 2b is a slack strand (col. 5, ll. 1-10 and 20
fig. 1), and when the starter-generator unit operates as a generator 21
the first strand 2a is a slack strand and second strand 2b is a tight 22
strand (col. 4, ll. 11-21 and fig. 2). 23
5. Bogl (US equivalent) further discloses that the tension-damper unit 24
9 is float mounted between the first pivoting lever 8 and the second 25
pivoting lever 11 (col. 4, ll. 52-55). 26
Appeal 2009-1074
Application 10/277,254

6
6. Bogl (US equivalent) still further discloses that the tensioner-1
damper unit 9 urges the tension rollers against the strands (col. 3, 2
ll. 55-57 and col. 4, ll. 61-62). 3
7. Bogl (US equivalent) discloses that conventional tensioner-damper 4
units comprising a tensioner and damper combined into a 5
tensioner-damper unit in a single assembly include a spring system 6
(col. 1, ll. 50-54), and still further discloses that the tensioner-7
damper unit 9 is formed by a hydraulic belt tensioner (cl. 2). Bogl 8
(US equivalent) otherwise provides no details of the components 9
of the tensioner-dampener unit 9. 10
8. Giese discloses a tension device for a traction means 44 having 11
two arms 38, 39, the arms 38, 39 having axles 40, 41 at one end 12
and rollers 45 at a second end, wherein the arms are held against 13
the traction means 44 by a helical spring 43 (p. 16, ll. 6-15 and fig. 14
6). 15
9. Giese further discloses that the traction means includes belts (p. 1, 16
l. 3), and that one tension arm is pressed against a slack span when 17
the other tension arm is pressed against a tight span by means of at 18
least one spring element (p. 1, ll. 3-9), wherein a span is a part of 19
the traction means that lies between two corner pulleys (p. 1, ll. 13-20
14). 21
10. The Examiner contends and Appellant does not dispute that Bogl 22
’659 inherently discloses an idle mode as called for in claim 22 23
(Ans. 4). 24
11. The ordinary meaning of the word “parallel” includes “Of, relating 25
to, or designating two or more planes that do not intersect.” The 26
Appeal 2009-1074
Application 10/277,254

7
American Heritage® Dictionary of the English Language (4th ed. 1
2000). 2
12. The ordinary meaning of the word “bias” includes “To influence in 3
a particular, typically unfair direction.” The American Heritage® 4
Dictionary of the English Language (4th ed. 2000). 5
6
PRINCIPLES OF LAW 7
Appellant has the burden on appeal to the Board to demonstrate error 8
in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d 1606, 9
1614 (BPAI 2008) [burden on appeal] (on appeal, applicant must show 10
examiner erred); Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex 11
parte Catan, 83 USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 12
USPQ2d 1509, 1519 (BPAI 2007). See also In re Kahn, 441 F.3d 977, 985-13
86 (Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a 14
rejection [under § 103] by showing insufficient evidence of prima facie 15
obviousness or by rebutting the prima facie case with evidence of secondary 16
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 17
(Fed. Cir. 1998)). 18
The test for definiteness under 35 U.S.C. § 112, second paragraph, is 19
whether “those skilled in the art would understand what is claimed when the 20
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety 21
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations 22
omitted). 23
Definiteness problems often arise when words of 24
degree are used in a claim. That some claim 25
language may not be precise, however, does not 26
automatically render a claim invalid. When a word 27
of degree is used the [factfinder] must determine 28
Appeal 2009-1074
Application 10/277,254

8
whether the patent's specification provides some 1
standard for measuring that degree. The 2
[factfinder] must decide, that is, whether one of 3
ordinary skill in the art would understand what is 4
claimed when the claim is read in light of the 5
specification. 6
Seattle Box Co. v. Indust. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. 7
Cir. 1984) (affirming the trial court’s determination that an expert would 8
know the limitations of the claims because the specification clearly sets forth 9
a standard for measuring the degree used in the claim language). Even if a 10
person of ordinary skill would need to experiment so as to determine the 11
limits of a patent's claims, the claims would not be invalid under section 12
112. See, e.g., W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 13
1557 (Fed. Cir. 1983). 14
“Anticipation is established only when a single prior art reference 15
discloses, expressly or under the principles of inherency, each and every 16
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys., 17
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, “[t]here must be 18
no difference between the claimed invention and the reference disclosure, as 19
viewed by a person of ordinary skill in the field of the invention.” Scripps 20
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. 21
Cir. 1991). It is not necessary that the reference teach what the subject 22
application teaches, but only that the claim read on something disclosed in 23
the reference, i.e., that all of the limitations in the claim be found in or fully 24
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 25
(Fed. Cir. 1983). 26
“Section 103 forbids issuance of a patent when ‘the differences 27
between the subject matter sought to be patented and the prior art are such 28
Appeal 2009-1074
Application 10/277,254

9
that the subject matter as a whole would have been obvious at the time the 1
invention was made to a person having ordinary skill in the art to which said 2
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 3
(2007). The question of obviousness is resolved on the basis of underlying 4
factual determinations including (1) the scope and content of the prior art, 5
(2) any differences between the claimed subject matter and the prior art, (3) 6
the level of skill in the art, and (4) where in evidence, so-called secondary 7
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 8
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 9
might be reordered in any particular case, the [Graham] factors continue to 10
define the inquiry that controls.”). 11
In KSR, the Supreme Court stated that “when a patent claims a 12
structure already known in the prior art that is altered by the mere 13
substitution of one element for another known in the field, the combination 14
must do more than yield a predictable result.” Id. at 416 (citing United 15
States v. Adams, 383 U.S. 39, 50-51 (1966)). 16
In KSR, the Supreme Court held that “if a technique has been used to 17
improve one device, and a person of ordinary skill in the art would recognize 18
that it would improve similar devices in the same way, using the technique is 19
obvious unless its actual application is beyond his or her skill.” Id. at 417. 20
In KSR, the Supreme Court stated that “[o]ften, it will be necessary for 21
a court to look to interrelated teachings of multiple patents; the effects of 22
demands known to the design community or present in the marketplace; and 23
the background knowledge possessed by a person having ordinary skill in 24
the art, all in order to determine whether there was an apparent reason to 25
combine the known elements in the fashion claimed by the patent at issue.” 26
Appeal 2009-1074
Application 10/277,254

10
Id. at 418. The Court noted that “[t]o facilitate review, this analysis should 1
be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) 2
(“[R]ejections on obviousness grounds cannot be sustained by mere 3
conclusory statements; instead, there must be some articulated reasoning 4
with some rational underpinning to support the legal conclusion of 5
obviousness”)). However, “the analysis need not seek out precise teachings 6
directed to the specific subject matter of the challenged claim, for a court 7
can take account of the inferences and creative steps that a person of 8
ordinary skill in the art would employ.” Id. 9
When construing claim terminology in the United States Patent and 10
Trademark Office, claims are to be given their broadest reasonable 11
interpretation consistent with the specification, reading claim language in 12
light of the specification as it would be interpreted by one of ordinary skill in 13
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 14
2004). 15
16
ANALYSIS 17
Rejection of claims 23 and 24 under 35 U.S.C. § 112 as being indefinite 18
19
The Examiner contends that claims 23 and 24 are indefinite since it is 20
unclear how the two pulleys are located in different planes (Ans. 3). 21
However, as we read claim 23, it is the claimed pivot arm that is in a plane 22
of rotation parallel to the second pulley. The claim does not specify that a 23
pulley or roller, such as 7a or 7b, is necessarily in a different plane than the 24
second pulley. It is our conclusion of law that claims 23 and 24 are not 25
indefinite under the purview of § 112, second paragraph. 26
27
Appeal 2009-1074
Application 10/277,254

11
Rejection of claims 22-24 under 35 U.S.C. § 102(b) as being anticipated by 1
Bogl ’659 2
3
Regarding claim 22: Appellant contends that Bogl ’659 does not 4
disclose a biasing member or a free floating tension assembly as called for in 5
claim 22 (Br. 5-6). A member that influences another member in a 6
particular direction is a biasing member (Fact 12). Claim 22, lines 17-19 (p. 7
2-3 of this Decision on Appeal) calls for a biasing member to bias each of 8
the tension members toward the belt. The Appellant’s Specification 9
discloses that “[a]ny biasing member that ensures that the rollers are biased 10
towards engagement with the belt 3 may be employed” (Fact 2). 11
Bogl ’659 discloses an automotive engine 1 having a belt 2, the belt 12
having two sections 2a, 2b, the belt being maintained under pressure by a 13
tensioner and damper 6, an element 9 integrally connected to the tensioner 14
and damper 6, the tensioner and dampener 6 acts on two sets of levers 8, 11, 15
wherein different tensioning forces are applied to the first 2a and the second 16
2b sections of the belt 2 (translation, p. 2, novelty section and figs. 1-3) (Fact 17
3). Bogl (US equivalent) discloses that element 9 is a tensioner-damper unit 18
9 that urges the tension rollers against the strands (Fact 6). 19
We find that in Bogl ‘659, element 9 is a tensioner-damper unit that 20
urges tension rollers 7, 10 against the first and second sections of the belt 2a, 21
2b. We find that in Bogl ‘659, since tension-damper unit 9 urges tension 22
rollers 7, 10 against the first and second sections of the belt 2a, 2b, 23
tensioner-damper unit 9 is a biasing member. Therefore, we conclude that in 24
Bogl ‘659, the tensioner-damper unit 9 is a biasing member as called for in 25
claim 22. Bogl (US equivalent) further discloses that the tension-damper 26
unit 9 is float mounted between the first pivoting lever 8 and the second 27
Appeal 2009-1074
Application 10/277,254

12
pivoting lever 11 (Fact 5). We agree with the Examiner’s analysis (Ans. 6) 1
and find that in Bogl ‘659, the tension-damper unit 9 is float mounted 2
between the pivoting levers 8, 11. Therefore, we conclude that in Bogl ‘659, 3
the tensioner-damper unit 9 is free floating tension assembly as called for in 4
claim 22. Therefore, we conclude that Appellant has not demonstrated that 5
the Examiner erred in rejecting claims 22 and 23 over Bogl ’659. 6
Accordingly, we affirm the rejection of claims 22 and 23 under 35 U.S.C. § 7
102. 8
Regarding claim 24: Appellant further contends that in Bogl ’659, the 9
tension-dampener unit 6, 9 does not include a spring as called for in claim 24 10
(Br. 6). Claim 24 calls for the bias member being a spring. We find that 11
Bogl (US equivalent) discloses that conventional tensioner-damper units 12
comprising a tensioner and damper combined into a tensioner-damper unit in 13
a single assembly include a spring system (Fact 7). Therefore, we find that 14
Bogl (US equivalent) discloses a tensioner-damper unit 9 including a spring. 15
Therefore, we conclude that in Bogl ’659, the tension-dampener unit 9 16
includes a spring as called for in claim 24. We conclude that Appellant not 17
has demonstrated that the Examiner erred in rejecting claim 24 over Bogl 18
’659. Accordingly, we affirm the rejection of claim 24 under 35 U.S.C. § 19
102. 20
21
Rejection of claims 22-24 under 35 U.S.C. § 103(a) as being unpatentable 22
over Bogl ’659 in view of Giese 23
24
Appellant contends that the Examiner has failed to articulate a reason 25
with rational underpinning to combine the teachings of Bogl ’659 and Giese. 26
Bogl (US equivalent) discloses that conventional tensioner-damper units 27
Appeal 2009-1074
Application 10/277,254

13
comprising a tensioner and damper combined into a tensioner-damper unit in 1
a single assembly include a spring system, and still further discloses that the 2
tensioner-damper unit 9 is formed by a hydraulic belt tensioner, wherein no 3
other details of the components of the tensioner-dampener unit 9 are 4
provided (Fact 7). Giese discloses a biasing member including a spring 43 5
urging rollers 45 on arms 38, 39 against a belt 44 (Facts 8-9 and figure 6). 6
We conclude that it would have been obvious to a person having ordinary 7
skill in the art at the time the invention was made to combine the teachings 8
of Bogl ’659 and Giese by providing a spring (biasing member) 43 as taught 9
by Giese in the tensioner-damper unit 9 of Bogl ‘659 as the biasing member. 10
In KSR, the Supreme Court stated that “when a patent claims a structure 11
already known in the prior art that is altered by the mere substitution of one 12
element for another known in the field, the combination must do more than 13
yield a predictable result.” See KSR, 550 U.S. at 416. In KSR, the Supreme 14
Court held that “if a technique has been used to improve one device, and a 15
person of ordinary skill in the art would recognize that it would improve 16
similar devices in the same way, using the technique is obvious unless its 17
actual application is beyond his or her skill.” Id. at 417. The modification 18
proposed by the Examiner is nothing more than the simple substitution of 19
one known element (biasing member) for another to perform the same 20
function, or the mere application of a known technique to a piece of prior art 21
ready for the improvement. See id. Therefore, we conclude that Appellant 22
has not demonstrated that the Examiner erred in rejecting claims 22-24 over 23
Bogl ’659 in view of Giese. Accordingly, we affirm the rejection of claims 24
22-24 under 35 U.S.C. § 103. 25
26
Appeal 2009-1074
Application 10/277,254

14
CONCLUSIONS OF LAW 1
We conclude that Appellant has not shown that the Examiner erred in 2
rejecting claims 22 and 23 under 35 U.S.C. § 102(b) as being anticipated by 3
Bogl ’659, and claims 22-24 under 35 U.S.C. § 103(a) as being unpatentable 4
over Bogl ’659 in view of Giese. We conclude that Appellant has shown 5
that the Examiner erred in rejecting claims 23 and 24 under 35 U.S.C. § 6
1112 as being indefinite, and claim 24 under 35 U.S.C. § 102(b) as being 7
anticipated by Bogl ’659. 8
9
DECISION 10
The decision of the Examiner to reject claims 22 and 23 over Bogl 11
’659, and claims 22-24 over Bogl ’659 in view of Giese is affirmed. The 12
decision of the Examiner to reject claims 23 and 24 under 35 U.S.C. § 112, 13
and claim 24 over Bogl ’659 is reversed. 14
No time period for taking any subsequent action in connection with 15
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 16
17
AFFIRMED-IN-PART 18
19
20
21
22
23
24
25
26
Appeal 2009-1074
Application 10/277,254

15
1
2
3
4
5
6
7
8
LV 9
10
Liniak, Berenato & White 11
Ste. 240 12
6550 Rock Spring Drive 13
Bethesda, MD 20817 14