Ex Parte Morton et al

Patent Trials and Appeals Board

May 21, 2019

14277103 - (D) (P.T.A.B. May. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/277,103 05/14/2014
67318 7590
LeClairRyan (Ford Global)
2318 Mill Road
Suite 1100
Alexandria, VA 22314
05/23/2019
FIRST NAMED INVENTOR
Scott Morton
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.
83434601/48259 .34 70 2740
EXAMINER
KIM, JAMES JAY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
05/23/2019 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):
phoebe.jones@leclairryan.com
marcia. taylor@leclairryan.com
uspatentsalexandria@leclairryan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT MOR TON and
CLAUDE WESTON BAILEY III 1
Appeal2017-009372
Application 14/277, 103
Technology Center 3700
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O'HANLON, 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 1, 2, 6, 7, 10, 13-15, 18, and 20-30.
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we find error in the Examiner's
rejections of these claims under 35 U.S.C. § 103. Accordingly, we
1 "The real party in interest is Ford Global Technologies, LLC (Assignee)."
Br. 1. We proceed on the basis that, for the purposes of this appeal, Ford
Global Technologies, LLC is the "Appellant."
Appeal2017-009372
Application 14/277, 103
REVERSE the Examiner's rejections of claims 1, 2, 6, 7, 10, 13-15, 18, and
20-30.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to [an] engine
assembly with passageway for reducing oil leakage." Spec. ,r 1. Apparatus
claims 1 and 20, and method claim 13, are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. An engine assembly comprising:
at least one cylinder head including a first surface; and
at least one camshaft cover including a second surface,
the first and second surfaces together defining an oil drain
passageway positioned next to a first seal for reducing oil
leakage, the oil drain passageway being at least partially
positioned on an interface contacting both the first and second
surfaces.
REFERENCES RELIED ON BY THE EXAMINER
Johnson
0 hmi et al.
Eickert
us 3,352,564
us 4,584,975
US 6,491,014 Bl
Nov. 14, 1967
Apr. 29, 1986
Dec. 10, 2002
THE REJECTIONS ON APPEAL
Claims 1, 2, 6, 7, 10, 13, 14, 18, 20-23, and 28-30 are rejected under
35 U.S.C. § 103 as unpatentable over Eickert and Johnson.
Claims 24--27 are rejected under 35 U.S.C. § 103 as unpatentable over
Eickert, Johnson, and Ohmi.
ANALYSIS
Each independent claim on appeal includes a reference to a cylinder
head having "a first surface," a camshaft cover having "a second surface,"
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Appeal2017-009372
Application 14/277, 103
and wherein the first and second surfaces are arranged so that "the first and
second surfaces together defining an oil drain passageway." The Examiner
relies on Eickert for teaching such surfaces (specifically identifying
"camshaft cover ( 5)"), and a "passageway" as recited, but acknowledges that
"Eickert does not teach an oil drain passageway." Final Act. 2-3 ( emphasis
added). The Examiner relies on Johnson for teaching "an oil drain
passageway (26) for the purpose of draining oil." Final Act. 3. Thereafter,
the Examiner provides a reason to combine Eickert and Johnson. See Final
Act. 3.
Appellant contends that Eickert fails to teach the limitation directed to
the "cylinder head including a first surface." Br. 4. Instead, Appellant
understands from the Office Action "that in Eickert the first surface is
located on the ring adaptor 6" and not the cylinder head as recited. Br. 4.
Thus, Appellant contends, the limitations of independent claims 1, 13, and
20 are not met.
Appellant's understanding of the Examiner's rejection has merit. This
is because the Examiner specifically correlates Eickert's item 5 to the recited
"camshaft cover [] having a second surface" but does not specifically
identify Eickert's "cylinder head including a first surface," such that "the
first and second surfaces together defining" a passageway. See Final Act. 2-
3. However, the identity of the corresponding "first surface" can be
ascertained from a review of Eickert and, more specifically, by identifying
what cover 5 engages with. Upon such a review, it is readily apparent that
Eickert's cover 5 interacts with adapter ring 6, not block 2. See Eickert
4:45--49; Figs. 1, 2. As shown and described, adapter ring 6 is interposed
between Eickert's cover 5 and block 2. Thus, because cover 5 interfaces
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Appeal2017-009372
Application 14/277, 103
with adapter ring 6, we concur with Appellant's understanding that, in
Eickert, the first surface "is located on the ring adapter 6" and not on the
cylinder head as required.
The Examiner attempts to address this discrepancy stating, Eickert
"discloses a cylinder head and a camshaft cover wherein the cylinder head
and camshaft cover mate together." Ans. 2. However, as expressed above,
Eickert's cover 5 mates with adapter ring 6, not with a cylinder head. See
supra. In fact, Eickert expressly states that adapter ring 6 "is sized to fit on
top of an engine block," i.e., intermediate block 2 and cover 5. Eickert
4:48--49. Further, ignoring Eickert's adapter ring 6, the Examiner states that
it is known to use cylinder heads and camshaft covers "wherein the cam
shaft covers and the cylinder heads are mated together at their respective
surfaces." Ans. 2. Nevertheless, this arrangement is not the case in Eickert
and the Examiner does not explain how such statement would apply to
Eickert in light of Eickert's intermediate adapter ring 6. Thus, we are not
persuaded the Examiner has provided articulated reasoning with rational
underpinning to support the conclusion that Eickert and Johnson, combined,
would have rendered obvious independent claims 1, 13, and 20, as well as
dependent claims 2, 6, 7, 10, 14, 18, 21-23, and 28-30.
Appellant also challenges the Examiner's finding that Eickert
discloses a "passageway" as claimed. See Br. 6-7; Final Act. 3. The
Examiner states, "the definition of passage is recited as 'the act or process of
moving through, under, over, or past something on the way from one place
to another.' (Courtesy of google.com)." Final Act. 8. Appellant addresses
Eickert stating "if the term 'passage' was to be defined as stated in the Final
Office Action, the curved cavity in which Eickert's 0-ring 19 [is placed]
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Appeal2017-009372
Application 14/277, 103
cannot be a passage ... much less an oil drain passageway as recited." Br.
7. This is "because there does not appear to involve movement of anything
from one place to another within that curved cavity in which the 0-ring 19
resides." Br. 7.
In Eickert, 0-ring 19 is captured between cover 5 and adapter ring 6.
See Eickert 4:45--46; Fig. 3. This 0-ring fits within seal groove 26 formed
in adapter ring 6. See Eickert 5:9-11; Fig. 6. Hence, as understood,
Eickert's seal groove 26 in adapter ring 6 correlates to the "passageway"
identified by the Examiner. Final Act. 3. However, Eickert's seal groove 26
is simply that, a groove to accept an 0-ring therein for sealing purposes.
There is no indication in Eickert that seal groove 26 forms or acts as a
"passage" as this term has been defined by the Examiner. See Final Act. 8.
This is because there is no indication of any movement occurring in seal
groove 26 of anything "from one place to another." For this reason, we
again are not persuaded the Examiner has provided articulated reasoning
with rational underpinning to support the conclusion of obviousness.
Further, we note that, for purposes of discussion, Eickert's ring 6
(with seal groove 26) extends horizontally or parallel with the mating cover
surface. In contrast, Johnson's "oil drain passageway (26)" (Final Act. 3)
extends vertically or perpendicular to the mating cover surface. See Johnson
Figs. 1, 2, 5; see also id. at 3: 15-18 ("drain holes 26 which provide for the
passage of oil from openings in the cylinder head to passages in the cylinder
block for return to the engine oil sump"). In view of this difference in
geometry, orientation, and purpose, the Examiner does not explain how
Johnson's teachings could be combined with Eickert's teachings in any
meaningful manner. Nor is it evident that it would have been obvious to
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Application 14/277, 103
combine Eickert and Johnson "to have an oil drain passage for the purpose
of draining oil" in view of such disparate teachings. Final Act. 3.
In summation, we do not sustain the Examiner's rejection of claims 1,
2, 6, 7, 10, 13, 14, 18, 20-23, and 28-30 as unpatentable over Eickert and
Johnson.
The rejection of claims 24-27
as unpatentable over Eickert, Johnson, and Ohmi
Claims 24--27 depend from either independent claim 1 or independent
claim 20. The Examiner relies on the additional reference to Ohmi for
teaching the additional recitation to "a storage container (28)." Final Act. 6.
The Examiner does not rely on Ohmi for curing the defect of the
combination of Eickert and Johnson discussed above. Accordingly, we do
not sustain the Examiner's rejection of claims 24--27 as being obvious over
Eickert, Johnson, and Ohmi.
DECISION
The Examiner's rejections of claims 1, 2, 6, 7, 10, 13-15, 18, and 20-
3 0 are reversed.
REVERSED
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