Ex Parte McCrindle

Patent Trial and Appeal Board

Jan 31, 2019

14396177 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/396,177 10/22/2014 Christopher McCrindle
152048 7590 02/04/2019
Delphi Technologies IP Limited
5825 Innovation Drive
Delphi Technologies Legal Staff - MIC 480-415-154
Troy, MI 48098
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.
DP-319661 1013
EXAMINER
HANSEN, KENNETH J
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
j oshua. m.haines@delphi.com
us.patent@delphi.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER MCCRINDLE
Appeal2018-005978 1
Application 14/396, 1772
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-14, which are all the pending claims in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our Decision references Appellant's Appeal Brief ("Br.," filed Nov. 30,
2017), the Examiner's Answer ("Ans.," mailed Mar. 19, 2018), and the Final
Office Action ("Final Act.," mailed June 2, 2017).
2 Appellant identifies "Delphi International Operations Luxembourg,
S.A.R.L." as the real party in interest. Br. 3.
Appeal2018-005978
Application 14/396, 177
STATEMENT OF THE CASE
Claimed Subject Matter
Appellant's "invention relates to a method and apparatus for
selectively providing a fluid communication path that allows lubricant to
flow to a desired location in between two moving parts." Spec. ,r 1.
Claims 1, 8, and 9 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal. Claim 1
recites:
1. An apparatus, comprising:
an elongate plunger element comprising a first end
reg10n;
an intermediate element comprising a contact region
arranged to selectively abut with and thereby urge a further end
region of the plunger element; characterized in that the
apparatus further comprises
a resilient spring seat member enabled to flex and
arranged at said further end region that biases the further end
region away from the intermediate element during a portion of a
cycle of motion of the plunger element to thereby provide a
fluid communication path between an abutment surface of said
further end region and said contact region.
(Br. 17, Claims Appendix).
Rejections
Claims 1-10 and 12-14 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Aoki (US 7,513,756 B2, iss. Apr. 7, 2009).
Claim 11 stands rejected under 35 U.S.C. § 102 (b) as anticipated by
or, in the alternative, under 35 U.S.C. § 103(a) as obvious over Aoki and
Ricco (US 5,979,297, iss. Nov. 9, 1999).
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Application 14/396, 177
ANALYSIS
Independent claims 1, 8, and 9, and dependent claims 2-7, 10, and 12-14
Independent claim 1 requires, in part,
a resilient spring seat member enabled to flex and arranged at
said further end region that biases the further end region away
from the intermediate element during a portion of a cycle of
motion of the plunger element to thereby provide a fluid
communication path between an abutment surface of said
further end region and said contact region.
Br. 17, Claims Appendix.
The Examiner finds Aoki' s spring sheet 10 corresponds to the claimed
spring seat member. Final Act. 3 ( citing Aoki Fig. 2). The Examiner
maintains that "Aoki's resilient seat member inherently provides biasing or
flexure at the end regions of the plunger BOTH toward and away from the
intermediate element during a portion of a cycle of motion of the plunger."
Ans. 13; id. at 14 ("Spring sheet elements naturally provide biasing both
upwardly and downwardly depending upon installation and deflection
amount as is common engineering knowledge as evidenced by Hooke's Law,
for example."). In support of inherency, the Examiner relies on the
following paragraph in Aoki, which states:
This is because that such a configuration of the opening 15
allows the spring sheet and the plunger to easily catch one
another while easily centering them together without using any
specific additional fixing device. Therefore, in the fuel supply
pump, even at the time of dr[iv Jing the plunger at high speed,
the displacement between the tappet structure body and the
plunger can be lowered.
Id. (quoting Aoki 8: 13-20). The Examiner concludes that "[a] clearance
formed by the displacement between the body and the plunger discussed
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Appeal2018-005978
Application 14/396, 177
above inherently forms a fluid communication path since it is surrounded by
fluid lubricant, fuel in this instance." Id. at 16.
Appellant disagrees and argues that the relied-upon paragraph in Aoki
"is cornpleting the thoughts of the previous two paragraphs which describe
the assembly of plunger 56 to spring sheet 10." Br. 11.
Id.
As described in lines 2-12 of column 8, the opening portion 15
of spring sheet 10 includes a comparatively large insert hole
15b in which the tip of plunger 56 can be laterally inserted by
sliding. The opening 15 also includes a comparatively small
central hole 15a for catching the tip portion of plunger 56. In
other words, the width of insert hole 15b is larger than the
diameter of the central hole 15a. As explained in lines 13-35 of
column 8, this relationship between insert hole 15b and central
hole 15a allows spring sheet 10 and plunger 56 to easily catch
one another while easily centering them together, i.e. laterally
or left to right as viewed in Fig. 2, without using any specific
additional fixing device. Therefore, in the fuel supply pump,
even at the time of [ driving] the plunger at high speed the
displacement between the tappet structure body and the plunger
can be lowered. Since the sentence immediately preceding the
"Therefore" sentence deals with lateral placement, i.e.
centering, it follows that the "Therefore" sentence is a
conclusion of centering and that the "displacement" recited is
lateral displacement rather than displacement which would
form a gap as asserted by the Office Action.
The Examiner responds:
And, while Appellant asserts that Aoki refers to lateral
displacement and not an up and down displacement as indicated
by the Examiner, this is conclusory in nature because lateral
displacement is not expressly disclosed by Aoki. In contrast to
this assertion, Aoki's plunger 54 is constrained to move only
upwardly and downwardly by virtue of its placement in plunger
barrel 53 (FIG. 2, col. 5, lines 57-59). The tappet structure
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Appeal2018-005978
Application 14/396, 177
body 6, 28, 29 forming the claimed intermediate element is also
constrained in the pump housing 52. With these facts in mind,
lateral motion of Aoki's intermediate element or plunger would
be precluded or, in the least, substantially minimized. With this
in mind, the Examiner's interpretation of the displacement being
up and down and not lateral is reasonable in this regard.
Ans. 17-18.
We are persuaded by Appellant's argument.
A prior art reference may anticipate when the claim limitations not
expressly found in that reference are nonetheless inherent in it, but "[t]o
establish inherency, the extrinsic evidence 'must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill."'
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting Continental
Can Co. v. Monsanto Co. USA, 948 F.2d 1264, 1268 (Fed. Cir. 1991)).
The difficulty with the Examiner's finding of inherency is that it relies
on possibilities and does not make clear that the missing claimed feature,
which is central to Appellant's invention, is necessarily present in Aoki.
The Examiner has not sufficiently refuted Appellant's arguments with
technical reasoning. For instance, the Examiner simply dismisses
Appellant's argument by characterizing it as "conclusory in nature because
lateral displacement is not expressly disclosed by Aoki." Further, the
Examiner assumes Aoki' s displacement between the tappet structure body
and the plunger results in a clearance or gap, such that it provides a fluid
communication path as required by the claim. But as Appellant points out,
"plunger 54 may be displaced laterally relative to intermediate element parts
6, 28, 29 without providing a clearance or gap therebetween." Br. 12.
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Application 14/396, 177
Appellant "emphasizes that Aoki et al. in fact never discusses 'clearance'
and that 'clearance' is not the same as 'displacement"' (id. at 13), but the
Examiner does not adequately explain why the displacement between Aoki' s
tappet structure body and plunger necessarily results in a clearance that
forms a fluid communication path, as required by claim 1. Insofar as there is
even a possibility that a clearance may be formed to provide a fluid
communication path, "[i]nherency ... may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient." Continental Can Co.,
948 F.2d at 1269 (quoting In re Oelrich, 666 F.2d 578,581 (CCPA 1981)).
For the foregoing reasons, a prima facie case of anticipation with
regard to independent claim 1 has not been made out in the first instance by
a preponderance of the evidence, and, accordingly, the anticipation rejection
of independent claim 1, and claims 2-7 dependent thereon, is not sustained.
Independent claim 8 includes an apparatus as set forth in claim 1, and
the rejection of record relies on the same deficient findings set forth in the
rejection of claim 1 discussed above. See Final Act. 7. Because we
determined that the rejection of claim 1 is improper, we do not sustain the
anticipation rejection of claim 8.
The rejection of independent claim 9, including dependent claims 10
and 12-14, is not sustained because that rejection also relies on the same
deficient findings discussed with respect to claim 1. See id. at 8 ("In this
regard, under the principles of inherency, if a prior art device, in its normal
and usual operation, would necessarily perform the method claimed, then the
method claimed will be considered to be anticipated by the prior art
device.").
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Application 14/396, 177
Dependent claim 11
The anticipation rejection of dependent claim 11, which depends from
claim 9, is not sustained for the same reasons discussed above as to claim 9.
The Examiner's alternative rejection of dependent claim 11 as obvious over
Aoki and Ricco is not sustained for the same reasons, because the
Examiner's reliance on Ricco does not cure the deficiency discussed above
with respect to claim 9. See id. at 10-11. Moreover, the Examiner's
alternative rejection does not include a finding that it would have been
obvious for one of ordinary skill in the art to modify Aoki' s device to
achieve the "fluid communication path" required by independent claim 1.
DECISION
The Examiner's decision to reject claims 1-14 is REVERSED.
REVERSED
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