Ex Parte O

Board of Patent Appeals and Interferences

Aug 23, 2010

10952887 (B.P.A.I. Aug. 23, 2010)

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.
10/952,887 09/30/2004 Stephen John O'Hara 08350.3310 2713
58982 7590 08/23/2010
CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON, DC 20001-4413
EXAMINER
TRIEU, THAI BA
ART UNIT PAPER NUMBER
3748
MAIL DATE DELIVERY MODE
08/23/2010 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 CATERPILLAR INC.
____________________

Appeal 2009-002667
Application 10/952,887
Technology Center 3700
____________________

Before SALLY GARDNER LANE, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Caterpillar
Inc. (“Caterpillar”), under 35 U.S.C. § 134(a) from a final rejection of claims
1, 3-15, 17-29, and 31-40. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.

References Relied on by the Examiner
Hollien 2,934,113 Apr. 26, 1960
Canfield 4,005,915 Feb. 1, 1977
Ito et al. (“Ito”) 5,073,085 Dec. 17, 1991
Yashiki et al. (“Yashiki”) 5,545,268 Aug. 13, 1996
Kim et al. (“Kim”) US 6,755,022 B2 Jun. 29, 2004

Abkowitz et al. (“Abkowitz”) US 2004/0105999 A1 Jun. 3 2004
Hokkirigawa et al. (“Hokkirigawa”) US 2004/0258334 A1 Dec. 23, 2004

Kobayashi et al. (“Kobayashi”) EP 0816 007 A2 Jan. 7, 1998
Iizuka et al. (“Iizuka”)2 JP 04-081593 A Mar. 16, 1992
Matsumoto et al. (“Matsumoto”)3 JP 2001-234918 A Aug. 31, 2001

2 References in this opinion to page and line numbers for Iizuka are to
the English translation of that document that is of record and dated April
2005.

3 References in this opinion to page and line numbers for Matsumoto
are to the English translation of that document that is of record and dated
December 2006.

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The Rejections on Appeal4
The Examiner rejected claims 1, 3-5, 15, and 17-19 under 35 U.S.C.
§ 103(a) as unpatentable over Kobayashi, Iizuka, and Matsumoto.
The Examiner rejected claims 6 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto and Abkowitz or Yashiki.
The Examiner rejected claims 4, 6, 18, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Kobayashi, Iizuka, Matsumoto and Abkowitz
or Yashiki.
The Examiner rejected claims 7-9, 13, 14, 21-23, 27, and 28 under 35
U.S.C. § 103(a) as unpatentable over Kobayashi, Iizuka, Matsumoto, and
Hokkirigawa.
The Examiner rejected claims 10 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto, Hokkirigawa, and
Hollien.
The Examiner rejected claims 11 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto, Hokkirigawa, and
Canfield.

4 The Examiner rejected each of claims 1, 3-15, and 17-28 based in part
on Kobayashi “in view of” Matsumoto. The Examiner also alternatively
rejected each of those claims in part over Matsumoto “in view of”
Kobayashi. (Ans. 12-17.) The order that the references appear in the
phrasing of a rejection is of no moment. See In re Bush, 296 F.2d 491, 496
(CCPA 1961) (“[W]here a rejection is predicated on two references each
containing pertinent disclosure which has been pointed out to the applicant,
we deem it to be of no significance, but merely a matter of exposition, that
the rejection is stated to be on A in view of B instead of on B in view of A,
or to term one reference primary and the other secondary.”) In this opinion,
duplicative claim rejections involving only a change in the order that the
references appear are treated together.
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The Examiner rejected claims 12 and 26 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto, Hokkirigawa, and Ito.
The Examiner rejected claims 29, 31, and 33 under 35 U.S.C. § 103(a)
as unpatentable over Kim, Iizuka, and Matsumoto.
The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Iizuka, Matsumoto, and Abkowitz or Yashiki.
The Examiner rejected claims 34, 35, 39, and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Kim, Iizuka, Matsumoto, and Hokkirigawa.
The Examiner rejected claim 36 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Iizuka, Matsumoto, Hokkirigawa, and Hollien.
The Examiner rejected claim 37 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Iizuka, Matsumoto, Hokkirigawa, and Canfield.
The Examiner rejected claim 38 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Iizuka, Matsumoto, Hokkirigawa, and Ito.

The Invention
The invention relates to turbochargers including components
fabricated from titanium. (Spec. 1:¶ 01.)
Claim 1 is reproduced below (Claims App’x. 1):
1. A turbocharger comprising:
a turbine that includes titanium aluminide;
a shaft that includes at least one of a titanium alloy and
commercially pure titanium; and
a single weld joint connecting said turbine to said shaft.
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B. ISSUES
1. Has Caterpillar shown that the Examiner incorrectly determined
that combined teachings of Kobayashi, Iizuka, and Matsumoto account for a
turbocharger having a titanium aluminide turbine, a titanium shaft, and a
single weld joint connecting the turbine and shaft?
2. Has Caterpillar shown that the Examiner incorrectly determined
that the teachings of Kobayashi, Iizuka, Matsumoto, and Hokkirigawa
account for a sleeve that surrounds a portion of the shaft?
3. Has Caterpillar shown that the Examiner incorrectly determined
that combined teachings of Kim, Iizuka, and Matsumoto account for a
turbocharger having a titanium aluminide turbine, a titanium shaft, and a
single weld joint connecting the turbine and shaft?
4. Has Caterpillar shown that the Examiner incorrectly determined
that the teachings of Kim, Iizuka, Matsumoto, and Hokkirigawa account for
a sleeve that surrounds a portion of the shaft?
C. PRINCIPLES OF LAW
A reference does not teach away if it merely expresses a general
preference for an alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the invention claims. Depuy Spine,
Inc. v. Medtronic Sofamor Danek, 567 F.3d 1314. 1327 (Fed. Cir. 2009)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)).
A reference is analogous art if it is either in the field of the applicant’s
endeavor or is reasonably pertinent to the particular problem with which the
inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
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The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
D. FACTS and ANALYSIS
The Examiner rejected claims 1, 3-15, and 17-28 based in-part on
Kobayashi, Iizuka, and Matsumoto. The Examiner rejected claims 29 and
31-40 based in-part on Kim, Iizuka, and Matsumoto.
Claims 1, 3-15 and 17-28
Caterpillar argues the claims in the following claim groupings: (1)
claims 1, 3-5, 15, and 17-19; (2) claims 6 and 20; (3) claims 7-9, 13, 14, 21-
23, 27, and 28; (4) claims 10 and 24; (5) claims 11 and 25; and (6) claims 12
and 26.
Claims 1, 3-5, 15, and 17-19
The Examiner rejected claims 1, 3-5, 15, and 17-19 over Kobayashi,
Iizuka, and Matsumoto. Caterpillar argues the claims collectively. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 calls for a turbocharger having the following three elements:
a turbine that includes titanium aluminide;

a shaft that includes at least one of a titanium alloy and
commercially pure titanium; and

a single weld joining connecting said turbine to said shaft.

The Examiner found that Kobayashi discloses a turbocharger having a
turbine made of titanium aluminide, a shaft 1, and a weld joint 4 connecting
the shaft and turbine. (Ans. 4:2-6.) The Examiner further found that
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Kobayashi does not disclose that its shaft is made of either a titanium alloy
or commercially pure titanium and that weld joint 4 is specifically a single
weld joint. (Id. at 4:7-9.) To make up for the deficiency the Examiner turned
to Iizuka and Matsumoto. The Examiner found that Iizuka teaches the use
of a rotary shaft made of a titanium alloy and Matsumoto teaches the use of
a single weld joint to connect a shaft and turbine. (Id. at 4:10-14.) The
Examiner reasoned that it would have been obvious to combine the
teachings of those references with Kobayashi to obtain the invention set
forth in Caterpillar’s claims.
In challenging the Examiner’s rejection, Caterpillar first contends that
Kobayashi “teaches away” from any modification based on the teachings of
Iizuka and Matsumoto. (App. Br. 12:8-9.) According to Caterpillar,
Kobayashi discloses a steel shaft rather than a titanium shaft that is welded
to its titanium aluminide turbine. Caterpillar argues that because Kobayashi
uses a steel shaft, the reference “teaches away” from the use of a titanium
shaft.
Caterpillar’s argument is not persuasive. A reference does not teach
away if it merely expresses a general preference for an alternative invention
but does not “criticize, discredit, or otherwise discourage” investigation into
the invention claims. Depuy Spine, Inc., 567 F.3d at 1327 (quoting In re
Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)). Here, Kobayashi’s invention
uses steel as the material for its shaft but does not criticize or discredit the
use of some other material. That Kobayashi’s invention may prefer steel for
its shaft is not a teaching away from the use of other materials for the shaft.
Caterpillar also argues that Kobayashi “teaches away” from the use of
turbines that are directly welded to shafts. (Id. at 15:20-21.)
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Caterpillar’s claim 1 does not call for “directly” welding anything but
does recite “a single weld joint connecting said turbine to said shaft.” In the
context of Caterpillar’s specification, more than one weld is present when an
interlayer material is arranged between the turbine and shaft and is welded to
each of those components, thus forming two welds. (Spec. 2: ¶ 04.)
Kobayashi discloses a technique of friction welding a shaft and a turbine.
(Kobayashi Abstract.) Kobayashi describes that welding a steel shaft to a
titanium aluminide turbine may cause cracking of the turbine due to
difference in the thermal expansion coefficiency of those materials. (Id. at
1:42-2:12.) Kobayashi proposes, as one solution to that cracking problem,
“banking” a heat resistant alloy, such as a titanium alloy, on the end of the
shaft that is welded to the turbine. (Id. at 3:4-8; 32-36.) Even if “banking”
the alloy on to the end of the shaft means the alloy is also welded to the
shaft, Kobayashi’s favoring of one welding practice does not discourage or
discredit other welding practices in connecting the shaft and turbine.
Kobayashi’s focus on one technique for connecting its turbine and shaft is
not a teaching away from using other techniques for joining those
components. We reject Caterpillar’s teaching away arguments.
Caterpillar also asserts that “Iizuka is not within the scope and content
of the prior art” and is thus allegedly non-analogous art. (App. Br. 15:15.)
Caterpillar’s reasoning for that assertion is that Iizuka is directed to a rotary
vacuum pump rather than a turbocharger as in the claims and that “such
rotary vacuum pumps will not produce the same functional demands as
turbochargers.” (Id. at 15:16-19.)
Caterpillar’s reasoning is misplaced. It is not necessary that Iizuka’s
vacuum pump must function the same as a turbocharger to qualify Iizuka as
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analogous art and thus be available as prior art in rejecting Caterpillar’s
claims. Rather, a reference is analogous art if it is either in the field of the
applicant’s endeavor or is reasonably pertinent to the particular problem
with which the inventor was concerned. In re Kahn, 441 F.3d at 987. The
problem with which Caterpillar’s inventors were generally concerned is in
forming the components of turbochargers from materials that reduce its
weight (Spec. 1-2: ¶¶ 01-05) and also provide desirable characteristics, such
as improved corrosion resistance (id. at 4-5: ¶ 20). Caterpillar’s solution for
the problem is to fabricate the turbine and rotary shaft components of its
turbocharger out of titanium. (Id. at 2: ¶ 06.)
Iizuka discloses a rotating vacuum pump that includes, among other
things, a rotating shaft 3. (Iizuka 8:6-8.) Iizuka describes that the main parts
of its pump, including the rotating shaft, are formed of pure titanium or a
titanium alloy, which is a material recognized to provide “excellent
corrosion resistance.” (Id. at 4:13-19.) Caterpillar does not set forth any
reasoning as to why a person of ordinary skill in the art would not have
readily viewed Iizuka’s teachings as reasonably pertinent to the problems
faced by Caterpillar’s inventors. In particular, Iizuka’s teaching of using
titanium, a material recognized as demonstrating excellent corrosion
resistance, as the material for a rotary shaft. We are not persuaded by
Caterpillar’s argument that Iizuka is non-analogous art. In light of the
teachings of Iizuka, a person of ordinary skill in the art would have readily
appreciated that titanium is a known material available for fabricating a
rotating shaft.
Caterpillar also argues that even if the teachings of Kobayashi, Iizuka
and Matsumoto are combined, they do not account for the requirement that
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the turbine and shaft are joined by a “single weld joint.” The Examiner
found that Kobayashi does not disclose a single weld joint that connects its
turbocharger and shaft. To account for that requirement, the Examiner
turned to Matsumoto for its teaching that a turbine shaft and turbine wheel
may be joined by welding. (Ans. 4:12-14.) In particular, Matsumoto states
(Matsumoto 38: ¶ 57):
Hereby, turbine shaft 130 and turbine wheel 110 are joined by
electron beam welding. However, they can be joined by soldering or
friction welding and the like.

Caterpillar first contends that Matsumoto does not disclose using a
single weld joint to connect its turbine and turbine shaft. (App. Br. 14:5-7.)
Caterpillar’s contention is unpersuasive. Matsumoto describes that
the component of a turbine shaft and the component of a turbine wheel are
joined by welding techniques that include electron beam welding and
friction welding. Caterpillar does not meaningfully explain why the act of
welding a turbine shaft and a turbine wheel that is described in Matsumoto
does not constitute the formation of a single weld joint. In the context of
Caterpillar’s specification, a single weld joint is formed when one
component is welded to another, such as by an electron beam or a frictional
welding process. (Spec. 3: ¶ 16.) That is what Matsumoto discloses –
electron beam or friction welding its turbine shaft to its turbine wheel.
There is no indication that more than one weld joint is required by
Matsumoto’s disclosure. To the extent that Matsumoto’s disclosure of
“soldering” may not describe a single weld joint, or even any type of weld
joint, that is of no moment. Matsumoto simply discloses that soldering is an
additional technique for joining the components, that is an alternative to the
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welding technique described. We are not persuaded that Matsumoto’s
disclosure of electron beam welding or friction welding its turbine shaft to
its turbine does not constitute disclosure of forming a single weld joint
connecting those components.
Caterpillar also argues that even if Matsumoto does disclose a single
weld joint, it does not disclose that the weld joint is applied to components
made of titanium. (App. Br. 14:14-18.) According to Caterpillar, “[a] single
weld, as the Examiner alleges is disclosed by Matsumoto, cannot simply be
substituted from one device composed of one set of materials, to another
device with entirely different materials.” (Id. at 14:18-20.)
We do not agree with Caterpillar. The ordinary meaning of “weld” is
“to unite (metallic parts) by heating and allowing the metals to flow together
or by hammering of compressing with or without previous heating.”
Merriam Webster’s Collegiate Dictionary 1342 (10th ed. 1996). Thus,
welding involves joining metals to one another. Matsumoto discloses
welding metallic parts to one another, specifically a turbine shaft to a
turbine. Matsumoto’s disclosed welding technique is not limited to any
particular type of metal. Caterpillar does not explain why that welding
technique is not readily understood as applying to other known metals, such
as titanium.
The test for obviousness is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d at 425. Kobayashi discloses a titanium aluminide turbine
and a shaft. Iizuka discloses that shafts are known as being formed from
titanium. Matsumoto discloses that turbine shafts and turbines are welded to
one another. In light of the teachings of the references, a person of ordinary
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skill in the art would have known to weld a titanium aluminide turbine to a
titanium shaft as is required by Caterpillar’s claims.
We have considered all of Caterpillar’s pertinent arguments submitted
in its Appeal Brief and Reply Brief and find them unpersuasive. For the
foregoing reasons, we sustain the rejection of claims 1, 3-5, 15, and 17-19
over Kobayashi, Iizuka, and Matsumoto.
The Examiner alternatively rejected claims 4 and 18 as unpatentable
over Kobayashi, Iizuka, Matsumoto, and Abkowitz and Yashiki. (Ans. 14:1-
5.) For the reasons given above, we conclude that Caterpillar has not shown
that Kobayashi, Iizuka, and Matsumoto do not account for all the
requirements of claims 4 and 18. The additional teachings of Abkowitz and
Yashiki do not alter that conclusion. We also sustain the rejection of claims
4 and 18 as unpatentable over Kobayashi, Iizuka, Matsumoto, and Abkowitz
and Yashiki.
Claims 6 and 20
Claims 6 and 20 are dependent on claims 1 and 15, respectively. The
Examiner rejected those dependent claims based on Kobayashi, Iizuka,
Matsumoto, and Abkowitz or Yashiki. With respect to claims 6 and 20,
Caterpillar relies on the same arguments submitted in connection with
claims 1 and 15 concerning alleged defects in the rejection involving
Kobayashi, Iizuka, and Matsumoto. Caterpillar also urges that Abkowitz
and Yashiki do not correct those alleged defects. For the same reasons given
above, we reject Caterpillar’s arguments applied to claims 6 and 20.
We sustain the rejection of claims 6 and 20 over Kobayashi, Iizuka,
Matsumoto, and Abkowitz or Yashiki.
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Claims 7-9, 13, 14, 21-23, 27, and 28
The Examiner rejected claims 7-9, 13, 14, 21-23, 27, and 28 as
unpatentable over Kobayashi, Iizuka, Matsumoto, and Hokkirigawa.
Caterpillar argues claims 7-9, 13, 14, 21-23, 27, and 28 collectively. We
select claim 7 as representative. Claim 7 is dependent on claim 1 and adds
the feature of “a sleeve that surrounds at least a portion of said shaft.”
(Claims App’x 1.)
The Examiner determined that the combined teachings of Kobayashi,
Iizuka, and Matsumoto lack a teaching of the above-quoted sleeve. In
accounting for that feature, the Examiner relied on Hokkirigawa. The
Examiner found that Hokkirigawa discloses a sleeve bearing incorporating a
sleeve 2 surrounding a rotating shaft 1. (Ans. 6:1-4.) The Examiner stated
that a person of ordinary skill in the art would have incorporated a sleeve,
such as that of Hokkirigawa, onto the rotating shaft taught by Kobayashi,
Iizuka, and Matsumoto to improve the wear resistance of the shaft. (Id. at
6:5-7.)
In challenging the Examiner’s rejection, Caterpillar argues that
Hokkirigawa’s sleeve bearing is unrelated to the turbocharger art and that a
person of ordinary skill in the art would not look to incorporate a sleeve
from such a sleeve bearing onto the shaft of a turbocharger. (App. Br. 17:5-
13.)
Hokkirigawa discloses a sleeve bearing that is used for underwater
applications such as a cooling water pump for engines. (Hokkirigawa 1: ¶
0003.) Hokkirigawa describes that in comparison to conventional sleeve
bearings, its inventive sleeve bearing provides the bearing with “improved
wear characteristics” due to the particular materials used to construct the
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bearing. (Id. at 1: ¶ 0005.) Thus, any improved wear characteristics of
Hokkirigawa’s bearing is due to the material that makes up the sleeve
bearing and are only improved when that bearing is compared to other
bearings which already include sleeves. Hokkirigawa does not make any
comparison between a bearing with a sleeve and a bearing without a sleeve.
Hokkirigawa’s teachings do not substantiate the Examiner’s rationale that it
is the sleeve that somehow operates to improve wear resistance of the
bearing.
The Examiner does not adequately explain why a person of ordinary
skill in the art would have sought to incorporate the sleeve component of
Hokkirigawa’s sleeve bearing onto a turbine shaft of a turbocharger. We
note that Hokkirigawa’s sleeve bearing is specifically intended for use on
structures located underwater. There is, however, no indication that any of
the turbochargers in the applied prior art are used underwater. On this
record, the Examiner does not advance any meaningful rationale as to why a
person of ordinary skill in the art would have recognized that features of a
sleeve bearing designed for underwater use would be applicable or relevant
in the turbocharger art.
For the foregoing reasons, we do not sustain the rejection of claim 7
over Kobayashi, Iizuka, Matsumoto, and Hokkirigawa. Claims 8, 9, and 13
are dependent on and include all the limitations of claim 7. We also do not
sustain the rejection of those dependent claims.
Claims 21-23, 27, and 28 depend on independent claim 15 which is
drawn to a method of producing a turbocharger including a turbine and an
attached shaft. Each of those dependent claims includes the feature of
covering the shaft with a sleeve. Because the record before us does not
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reflect a sufficient rationale to incorporate a sleeve on to the shaft of a
turbocharger, we also do not sustain the rejection of claims 21-23, 27, and
28 over Kobayashi, Iizuka, Matsumoto, and Hokkirigawa.
Claim 14 is dependent on claim 1 and adds the feature that the “shaft
includes one or more bearing surface sections.” Claim 14 does not require a
“sleeve.” In the context of Caterpillar’s specification, a “bearing surface
section” describes a feature of the shaft that is structured for receiving
bearing components and may form part of a sleeve. In accounting for claim
14, the Examiner pointed to Hokkirigawa as teaching a sleeve having
bearing surface sections. As discussed above, the Examiner has not set forth
a sufficient rationale to combine Hokkirigawa’s sleeve with the shaft of a
turbocharger. We therefore do not sustain the rejection of claim 14 over
Kobayashi, Iizuka, Matsumoto, and Hokkirigawa.
Claims 10-12 and 24-26
Claims 10-12 are dependent on, and include all the limitations of,
claim 7. Claims 24-26 are dependent on, and include all the limitations of,
claim 21. The Examiner rejected claims 10-12 and 24-26 over Kobayashi,
Iizuka, Matsumoto, Hokkirigawa, and one of Hollien, Canfield, and Ito.
As discussed above, the Examiner has not adequately accounted for
the sleeve feature of claims 7 and 21 in the teachings of Kobayashi, Iizuka,
Matsumoto, and Hokkirigawa. The Examiner relied on Hollien, Canfield,
and Ito only to account for features added by claims 10-12 and 24-26 and
not to make up the above-noted deficiencies in connection with claims 7 and
21. We also do not sustain the rejections of claims 10-12 and 24-26.
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Claims 29 and 31-40
Claims 29 and 31-40 are argued in the following claim groupings: (1)
claims 29, 31, and 33; (2) claims 32; (3) claims 34, 35, 39, and 40; (4) claim
36; (5) claim 37; and (6) claim 38.
Claims 29, 31, and 33
The Examiner rejected claims 29, 31, and 33 based on Kim, Iizuka,
and Matsumoto. Claims 31 and 33 are argued collectively with claim 29.
Claim 29 is an independent claim and is directed to a machine including a
power source, an exhaust system, and a turbocharger having the same
features that are set forth in claim 1.
The Examiner relied on Kim as teaching a machine with a power
source, an exhaust system, and a turbocharger. With respect to the
turbocharger, the Examiner determined that Kim provides essentially the
same teachings as Kobayashi, namely, that the turbocharger includes a
titanium aluminide turbine connected to a shaft. The Examiner also
determined that Kim has the same deficiencies of Kobayashi in not
disclosing that the shaft is made of titanium or the presence of a single weld
joint connecting the turbine and shaft. As he did in the rejections based on
Kobayashi, the Examiner turned to Iizuka and Matsumoto to fill in the gaps.
Caterpillar’s arguments applied to the rejection of claim 29 over Kim,
Iizuka, and Matsumoto are essentially the same as those presented in
connection with the rejection of claim 1 over Kobayashi, Iizuka, and
Matsumoto. For the same reasons given above, Caterpillar’s arguments are
unpersuasive. We sustain the rejection of claims 29, 31, and 33 over Kim,
Iizuka, and Matsumoto.
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Claim 32
Claim 32 is dependent on claim 29. Claim 32 was rejected over Kim,
Iizuka, Matsumoto, and either Abkowitz or Yashiki. Caterpillar contends
that for the same reasons it presented for claim 29, claim 32 is also not
rendered obvious by the teachings of Kim, Iizuka, and Matsumoto.
Caterpillar also contends that the deficiencies of those references are not
made up by either Abkowitz or Yashiki.
For the same reasons given above with respect to claim 29, we reject
Caterpillar’s arguments that claim 32 is not met by the prior art. We sustain
the rejection of claim 32 over Kim, Iizuka, Matsumoto, and either Abkowitz
or Yashiki.
Claims 34, 35, 39, and 40
Claim 34 is dependent on claim 29 and adds the feature of “a sleeve
that surrounds at least a portion of said shaft.” (Claims App’x. 4.) Claims 35
and 39 are dependent on and include all the limitations of claim 34. Claim
40 is dependent on claim 29 and adds the feature that the “shaft includes one
or more bearing surface sections.” (Id.)
The Examiner rejected claims 34, 35, 39, and 40 over Kim, Iizuka,
Matsumoto, and Hokkirigawa. The Examiner determined that Kim, Iizuka,
and Matsumoto do not account for the sleeve or bearing surface sections of
those claims and turned to Hokkirigawa to remedy the deficiency. The
Examiner’s rationale for relying on the teachings of Hokkirigawa in
rejecting claims 34, 35, 39, and 40 is the same as that given for claims 7-9,
13, 14, 21-23, 27, and 28. (Ans. 10:14-16.)
For the same reasons given above in connection with claims
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7-9, 13, 14, 21-23, 27, and 28, we are not persuaded that the Examiner has
sufficiently accounted for either the “sleeve” feature of claims 34, 35, and 39
or the “bearing surface sections” feature of claim 40. We do not sustain the
rejection of claims 34, 35, 39, and 40 over Kim, Iizuka, Matsumoto, and
Hokkirigawa.
Claims 36-38
Claims 36-38 are dependent on, and include all the limitations of,
claim 34. The Examiner rejected claims 36-38 based on Kim, Iizuka,
Matsumoto, Hokkirigawa, and one of Hollien, Canfield, and Ito.
The Examiner has not adequately accounted for the sleeve feature of
claims 34 in the teachings of Kim, Iizuka, Matsumoto, and Hokkirigawa.
The Examiner relied on Hollien, Canfield, and Ito only to account for
features added by claims 36-38 and not to make up the above-noted
deficiencies in connection with claim 34. We also do not sustain the
rejections of claims 36-38.
E. CONCLUSION
1. Caterpillar has not shown that the Examiner incorrectly
determined that combined teachings of Kobayashi, Iizuka, and Matsumoto
account for a turbocharger having a titanium aluminide turbine, a titanium
shaft, and a single weld joint connecting the turbine and shaft.
2. Caterpillar has shown that the Examiner incorrectly determined
that the teachings of Kobayashi, Iizuka, Matsumoto, and Hokkirigawa
account for a sleeve that surrounds a portion of the shaft.
3. Caterpillar has not shown that the Examiner incorrectly
determined that combined teachings of Kim, Iizuka, and Matsumoto account
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for a turbocharger having a titanium aluminide turbine, a titanium shaft, and
a single weld joint connecting the turbine and shaft.
4. Caterpillar has shown that the Examiner incorrectly determined
that the teachings of Kim, Iizuka, Matsumoto, and Hokkirigawa account for
a sleeve that surrounds a portion of the shaft.
F. ORDER
The rejection of claims 1, 3-5, 15, and 17-19 under 35 U.S.C. § 103(a)
as unpatentable over Kobayashi, Iizuka, and Matsumoto is affirmed.
The rejection of claims 6 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto and Abkowitz or Yashiki
is affirmed.
The rejection of claims 4, 6, 18, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto and Abkowitz or Yashiki
is affirmed.
The rejection of claims 7-9, 13, 14, 21-23, 27, and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Kobayashi, Iizuka, Matsumoto, and
Hokkirigawa is reversed.
The Examiner rejected claims 10 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto, Hokkirigawa, and Hollien
is reversed.
The Examiner rejected claims 11 and 25 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto, Hokkirigawa, and
Canfield is reversed.
The Examiner rejected claims 12 and 26 under 35 U.S.C. § 103(a) as
unpatentable over Kobayashi, Iizuka, Matsumoto, Hokkirigawa, and Ito is
reversed.
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The Examiner rejected claims 29, 31, and 33 under 35 U.S.C. § 103(a)
as unpatentable over Kim, Iizuka, and Matsumoto is affirmed.
The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Iizuka, Matsumoto, and Abkowitz or Yashiki is
affirmed.
The Examiner rejected claims 34, 35, 39, and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Kim, Iizuka, Matsumoto, and Hokkirigawa is
reversed.
The Examiner rejected claim 36 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Iizuka, Matsumoto, Hokkirigawa, and Hollien is
reversed.
The Examiner rejected claim 37 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Iizuka, Matsumoto, Hokkirigawa, and Canfield is
reversed.
The Examiner rejected claim 38 under 35 U.S.C. § 103(a) as
unpatentable over Kim, Iizuka, Matsumoto, Hokkirigawa, and Ito is
reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

AFFIRMED-IN-PART

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CATERPILLAR/FINNEGAN, HENDERSON, L.L.P.
901 New York Avenue, NW
WASHINGTON DC 20001-4413