Ex Parte Moen

Patent Trial and Appeal Board

Jun 22, 2017

14263244 (P.T.A.B. Jun. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/263,244 04/28/2014 Richard A. Moen 50707 4769
112678 7590 06/26/2017
CNH Industrial America LLC & Taylor IP
Intellectual Property Law Department
700 State Street
Racine, WI 53404
EXAMINER
PHAN, HAU VAN
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
napatent @ cnhind. com
vannette.azarian @ cnhind.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD A. MOEN1
Appeal 2016-003400
Application 14/263,2442
Technology Center 3600
Before ALLEN R. MacDONALD, AARON W. MOORE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL3
1 According to Appellant (CNH Industrial America LLC), it is the real party
in interest. See App. Br. 4.
2 This application claims benefit of U.S. Provisional Patent Application
61/818,367 filed May 1, 2013. Spec. 11.
3 The Supplemental Appeal Brief filed October 6, 2015 is referred to herein
as the “Appeal Brief.”
Appeal 2016-003400
Application 14/263,244
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—19. App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A vehicle, comprising:
a chassis; and
an internal combustion (IC) engine carried by said chassis, said
IC engine including an exhaust system with a protected component
and an exhaust pipe fluidly connected with the protected component,
the exhaust pipe including an inside diameter with a lower surface and
a water dam fixedly connected with a predefined portion of the lower
surface, whereby water is inhibited from flowing through the exhaust
pipe and into the protected component.
Rejection on Appeal4
The Examiner rejected claims 1—19 under 35 U.S.C. § 102(b) as being
anticipated by Kruger et al. (US 5,170,020; issued December 8, 1992).5
4 Appellant acknowledges “[n]o 35 U.S.C. § 103(a) rejection was made by
the Examiner in the March 19, 2015, final office action” (App. Br. 14).
However, Appellant presents arguments directed to a hypothetical § 103(a)
rejection. We decline to address this hypothetical appeal of a hypothetical
rejection.
5 Separate patentability is not argued for claims 2—19. Except for our
ultimate decision, these claims are not discussed further herein.
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Appeal 2016-003400
Application 14/263,244
Appellant’s Contentions with item 20 (or 120) as the water dam
1. Appellant contends that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 102(b) because:
[T]he blocking means or plate 20 positioned at the upper end
portion 22 of the inner pipe 16 of Kruger et al. cannot anticipate
the “exhaust pipe including an inside diameter with a lower
surface and a water dam fixedly connected with a predefined
portion of the lower surface” of claims 1 and 10 of the present
application, as the blocking means or plate 20 of Kruger et al.
does not contact the inside diameter of the exhaust pipe at all.
App. Br. 13 (emphasis added).
2. Further, Appellant contends that the Examiner erred in rejecting
claim 1 because:
Merriam Webster defines “lower” as “relatively low in
position.” Merriam-Webster’s Collegiate Dictionary 738 (11th
ed. 2003). Merriam Webster defines “upper” as “higher in
physical position.” Id[.] at 1375. Therefore, a blocking plate [20]
attached at an upper end of an inner pipe cannot, by definition,
anticipate a blocking plate fixedly connected with a predefined
portion of a lower surface of an outer pipe.
Reply Br. 2 (emphasis omitted).
3. Further, Appellant contends that the Examiner erred in rejecting
claim 1 because:
Item number 48 appears in each of [Appellant’s] Figs. 3, 4, and
6 variously along the length of the lower portion of the generally
horizontal exhaust pipe 44. It is described as the part of the
exhaust pipe where water is inhibited from flowing by the water
dam 50, which is also located along the length of the lower
portion 48 of the exhaust pipe 44.
App. Br. 13 (brackets added).
Neither the inside diameter of outer exhaust pipe 24, nor the
inside diameter of inner pipe 16 of Kruger et al has any lower
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Appeal 2016-003400
Application 14/263,244
surface, as it is described and shown as “vertically disposed.”
(Col. 2, In 38-39).
App. Br. 12.
[Kruger’s] exhaust pipe has no lower surface as the meaning of
lower surface is defined in the present application.
App. Br. 13 (brackets added).
[Kruger’s] outer exhaust pipe has no lower surface by virtue of
being vertically disposed.
Reply Br. 2 (brackets added).
Appellant’s Contentions with item 34 as the water dam
4. Appellant also contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 102(b) because:
Neither does the uncited shoulder member 34 of Kruger et
al anticipate the “water dam fixedly connected with a predefined
portion of the lower surface” of the claims of the present
application, as again the exhaust pipe has no lower surface as
the meaning of lower surface is defined in the present
application.
App. Br. 13 (emphasis added).
[A]s [34] contacts the inside diameter of the exhaust pipe all of
the way around the inside of the pipe . . . [i]t is therefore not
“fixedly connected with a predefined portion of the lower
surface.”
App. Br. 13-14.
Issue on Appeal
Did the Examiner err in rejecting claim 1 as anticipated because
Kruger fails to describe the limitations required by this claim?
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Appeal 2016-003400
Application 14/263,244
ANALYSIS
As our analysis below differs from the Examiner’s, we designate our
analysis as a new ground of rejection of claims 1—19 under 35 U.S.C.
§ 102(b).
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred in
concluding that the claimed invention is anticipated by Kruger. We disagree
with Appellant’s conclusions. We concur with the ultimate conclusion
reached by the Examiner. We highlight the following points.
Contentions with item 20 (or 120) as the water dam
As to Appellant’s above contentions 1 and 2, we agree. Contrary to
the Examiner’s response, we do not find “connected” to be so broad as to
include “indirectly” connected (Ans. 7). Rather, reading the claim in light of
the Specification, we agree with Appellant that the full term “fixedly
connected” requires a direct connection (Reply Br. 3). Also contrary to the
Examiner’s response, we do not find “lower” to be so broad as to be
“anywhere along the pipe” (Ans. 6). Rather we agree with Appellant’s
cited definition that “lower” is a term of relative position (Reply Br. 2).
As to Appellant’s above contention 3, we disagree. As discussed
above, we agree with Appellant’s argument as to the relative position
meaning of the term “lower.” However, we see no reasonable basis for
Appellant’s further argument that Kruger’s vertically disposed outer and
inner exhaust pipes each lacks a “lower surface.” Rather, Kruger’s Figure 3
shows that there are lower and upper relative relationships with respect to
points on the surfaces of the pipes 16 and 24. For example, Kruger’s plate
20 would be recognized by an artisan as being attached to an upper surface
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Appeal 2016-003400
Application 14/263,244
of pipe 16 relative to opening 18, and orifice 40 would be recognized as
being through a lower surface of pipe 24 relative to opening 18.
We conclude Appellant is attempting to impose onto claim 1 a shape
limitation of Appellant’s disclosed embodiment of lower portion 48. We
decline to read into the claim the shape described in Appellant’s
Specification. To the extent possible, claim terms are given their ordinary
and customary meaning, as they would be understood by one of ordinary
skill in the art in question at the time of the invention. Phillips v. A WH
Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (enbanc).
Construing the claims in light of the specification does not,
however, imply that limitations discussed in the specification
may be read into the claims. It is therefore important not to
confuse exemplars or preferred embodiments in the specification
that serve to teach and enable the invention with limitations that
define the outer boundaries of claim scope. [Phillips, 415 F.3d]
at 1323.
Internet, Inc. v. MerialLtd., 617 F.3d 1282, 1287 (Fed. Cir. 2010). “[T]he
PTO gives a . . . claim term its broadest reasonable interpretation” during
patent prosecution. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)
(citation omitted).
Absent claim language carrying a narrow meaning, the PTO
should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the
broader definition. See, e.g., Liebel-Flarsheim Co. v. Medrad,
Inc., 358 F.3d 898, 906-09 (Fed.Cir.2004) (explaining
requirement for an express disclaimer in either the specification
or prosecution history).
Id. at 1325 (emphasis added).
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Application 14/263,244
As to Appellant’s above contention 4, we disagree. We begin by
noting that Appellant does not dispute the Examiner’s finding (Final Act. 2):
Kruger et al. in figures 1-4, disclose a vehicle, comprising
a chassis and an internal combustion (IC) engine (12) carried by
the chassis. The IC engine includes an exhaust system with a
protected component and an exhaust pipe (15) having an inner
pipe (16) fluidly connected with the protected component.
Contrary to Appellant’s argument, the uncited (by Examiner) shoulder
member 34 of Kruger does anticipate the “water dam fixedly connected with
a predefined portion of the lower surface” of claims of the present
application. Kruger’s member 34 would be recognized by an artisan as
being attached to a lower surface of pipe 24 relative to opening 18.
As to the remaining exhaust pipe limitations, Appellant does not
dispute that member 34 is a water dam as required by claim 1 (“34 . . .
defines a chamber 36 . . . [and] water . . . will collect in the chamber 36.”
Kruger 3:55—59) (emphasis omitted). Also, Appellant does not dispute that
member 34 is fixedly connected as required by claim 1 (“34 is . . . welded or
otherwise fixed in place.” Kruger 4:3—4) (emphasis omitted).
We conclude Kruger anticipates Appellant’s claim 1.
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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Application 14/263,244
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. . . .
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—19 as being
anticipated under 35 U.S.C. § 102(b).
(2) Claims 1—19 are not patentable.
DECISION
The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 1—19 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
37 C.F.R, § 41,501b)
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