Ex Parte Nishiyama et al

Board of Patent Appeals and Interferences

Nov 30, 2011

11242893 (B.P.A.I. Nov. 30, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/242,893 10/05/2005 Hiroyuki Nishiyama 088473-0213 9096
22428 7590 12/01/2011
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
12/01/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROYUKI NISHIYAMA,
YOUJI HIRAOKA, and SHINGO HIROTSU
____________

Appeal 2011-001892
Application 11/242,893
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-001892
Application 11/242,893

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
refusal to allow claims 1 through 9 and 11, all of the claims pending in the
above-identified application. 1 An oral hearing was held on November 9,
2011. We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “an oil strainer for an
automatic transmission” (Spec. 1, para. 0001). According to paragraph 0005
of the Specification:
The inventors of the present invention have found that
there is a relationship between a volume of the air accumulated
in a space below a filter within an oil strainer and a hydraulic
pressure rise time during which a hydraulic pressure is varied
from a minimum value, for instance, 0, at which an operation of
the oil pump starts with engine startup, to a desired value. On
the basis of this finding, the present invention has been made.
That is, it has been found that the above-described problem of
the conventional art can be solved by reducing a volume of the
space below the filter within the oil strainer with maintaining a
performance of the oil strainer.

Details of the appealed subject matter are recited in representative
claim 1 reproduced from the Claims Appendix to the Appeal Brief as shown
below:
1. An oil strainer for an automatic transmission,
comprising:
a body including a lower wall, an upper wall and an
inside space defined between the lower and upper walls;

1 See Appeal Brief (“App. Br.”) filed July 23, 2010, 1; Reply Brief (“Reply
Br.”) filed October 22, 2010, 1; and Examiner’s Answer (“Ans.”) filed
August 26, 2010, 2.

Appeal 2011-001892
Application 11/242,893

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a filter substantially horizontally disposed within the
body so as to divide the inside space of the body into a lower
space section defined between the lower wall and the filter and
an upper space section defined between the upper wall and the
filter;
an outlet port provided on the upper wall of the body and
communicated with the upper space section; and
an inlet port provided on the lower wall of the body and
communicated with the lower space section, the inlet port
having an upper opening that is exposed to the lower space
section,
wherein the lower wall includes a first area in which an
inlet port periphery defining the upper opening of the inlet port
is disposed, and a second area separate from the first area in
which the second area is disposed below the outlet port in a
vertical direction of the oil strainer,
wherein the first area containing the inlet port periphery
is disposed to be opposed to the filter in a vertical direction of
the oil strainer, and
wherein a first spaced vertical distance extends between
the filter and the first area of the lower wall, a second spaced
vertical distance extends between the filter and the second area
of the lower wall, and the first vertical distance is smaller than
the second vertical distance, and
wherein an entire portion of the second area disposed
directly below the outlet port in the vertical direction of the oil
strainer is spaced from the filter at least by the second vertical
distance.
Appeal 2011-001892
Application 11/242,893

4
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at page 3 of the
Answer:
Werner Des. 420,682 Feb. 15, 2000
Stamey, Jr. et al. (Stamey) 2003/0094405 A1 May 22, 2003

Appellants seek review of the Examiner’s rejection of claims 1
through 9 and 11 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Werner and Stamey (See App. Br. 5, Reply Br. 1,
and Ans. 3 and 4)
ISSUE AND CONCLUSION
The dispositive question is: Has the Examiner reversibly erred in
determining that the collective teachings of Werner and Stamey would have
suggested each and every claim feature recited in claim 1 within the
meaning of 35 U.S.C. § 103(a). On this record, we answer this question in
the affirmative.
RELEVANT FACTUAL FINDINGS, PRINCIPLES OF LAW, AND,
ANALYSIS
Werner’s Figures 1, 2, and 8 illustrate a transmission filter assembly
design comprising a body having a lower wall, an upper wall, and an inside
space defined between the lower and upper walls, a first port provided on the
lower wall of the body, a second port provided near or possibly on the upper
wall of the body, and a filter shown at the opening of the first port, but not
shown at the opening of the second port. As correctly argued by Appellants
at pages 6 through 9 of the Appeal Brief, Werner’s Figures 1, 2, and 8
indicate that the filter is not “substantially horizontally disposed within the
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Application 11/242,893

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body so as to divide the inside space of the body into a lower space section
defined between the lower wall and the filter and an upper space section
defined between the upper wall and the filter” and “a first spaced vertical
distance extends between the filter and the first area of the lower wall, a
second spaced vertical distance extends between the filter and the second
area of the lower wall, and the first vertical distance is smaller than the
second vertical distance,” with the “entire portion of the second area
disposed directly below the outlet port in the vertical direction of the oil
strainer” as recited in claim 1. (See also Spec. 5-6, para. 0017 and Fig. 1.)
Werner’s Figures 3, 4, 5, 7, and 8 indicate that their second area, the
entire area directly below their second port (the claimed outlet port), is
partially inclined such that their first vertical distance is not smaller than
their second vertical distance, even when the filter is disposed substantially
horizontally in the manner taught by Stamey as proposed by the Examiner at
pages 7 and 11-16 of the Answer. Moreover, the Examiner has not shown,
much less adequately explained, how Stamey’s teaching relating to
configuring a filter assembly for the mounting purpose would have led one
of ordinary skill in the art to modify the particular transmission filter
assembly design desired by Werner to a new design that would meet the
claimed first and second vertical distance requirement. (See Ans. 6-7 and
16-18.)
It follows that the combination proposed by the Examiner would not
result in the claimed invention within the meaning of 35 U.S.C. § 103. See,
e.g., Uniroyal, Inc., v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052 (Fed. Cir.
1988) (Even when the applied prior art references were combined as
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proposed, no obviousness can be established if the claimed subject matter
would not result from the proposed combination.)

ORDER
In view of the foregoing, it is
ORDERED that the decision of the Examiner to reject claims 1
through 9 and 11 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Werner and Stamey is REVERSED.

REVERSED

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