Ex Parte Pingen et al

Patent Trial and Appeal Board

Oct 17, 2017

13451401 (P.T.A.B. Oct. 17, 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.
13/451,401 04/19/2012 Bert Pingen 83235241 6100
36865 7590 10/18/2017
MCCOY RUSSELL LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
EXAMINER
AMICK, JACOB M
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
10/18/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte BERT PINGEN, HANS GUENTER QUIX,
MICHAEL TOBERGTE, KAY HOHENBOEKEN, and JAN MEHRING
Appeal 2016-001153
Application 13/451,401
Technology Center 3700
Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—13 and 15—21. We have jurisdiction under
35 U.S.C. § 6(b). The Appellants’ representative appeared for oral hearing
in this appeal on October 10, 2017. We REVERSE.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Mar. 23, 2015), Reply Brief (“Reply Br.,” filed Oct. 28,
2015), and Specification (“Spec.,” filed Apr. 19, 2012), and to the
Examiner’s Answer (“Ans.,” mailed Aug. 28, 2015) and Final Office Action
(“Final Act.,” mailed Oct. 22, 2014).
2 According to the Appellants, the real party in interest is Ford Global
Technologies, LLC. Appeal Br. 3.
Appeal 2016-001153
Application 13/451,401
STATEMENT OF THE CASE
The Appellants’ invention relates to “a method for operation of a
lubrication circuit in an internal combustion engine.” Spec. 2,11. 10—11.
Claims 1, 9, and 20 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below:
1. A method for operating a lubrication circuit,
comprising:
during a first operating condition, operating a
hydrodynamic retarder including two rotationally symmetrical
and opposing vane wheels to mechanically increase a turbulence
of oil in the lubrication circuit, the hydrodynamic retarder
positioned upstream of cylinder block lubricant-receiving
components and downstream of an oil pump in a supply line, the
circuit, including the pump, hydrodynamic retarder, and
components positioned in an internal combustion engine.
Appeal Br. 22 (Claims App.).
REJECTIONS ON APPEAL
Claims 1—3, 5—7, 9-13, 15—19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Christiansen (GB 750,037, iss. June 6,
1956) and Lo (US 2005/0235760 Al, pub. Oct. 27, 2005). Final Act. 2.
Claims 4 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christiansen, Lo,3 and Ruf (US 4,114,571, iss. Sept. 19,
1978). Id. at 10.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Christiansen and Ruf. Id.
3 Although the Examiner states the claims are rejected as unpatentable over
Christiansen and Ruf (Final Act. 10), claims 4 and 8 depend from claim 1
and are thus understood as unpatentable over Christiansen, Lo, and Ruf.
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Appeal 2016-001153
Application 13/451,401
ANALYSIS
The Appellants contend that the Examiner’s rejections of the
independent claims 1, 9, and 20 are in error because the prior art does not
teach that the elements, i.e., the pump, hydrodynamic retarder, and
component(s), are positioned in the engine, as required by the claims. See
Appeal Br. 9-12, 16, 19. We agree.
The Examiner relies on Christiansen for this limitation and finds, in
relevant part, that Christiansen teaches “the circuit, including an oil pump,
hydrodynamic retarder, and lubricant-receiving components positioned in an
internal combustion engine,” as recited in claim 1 and similarly recited in
claims 9 and 20. Final Act. 3; see also id. at 6, 12. Specifically, the
Examiner finds that “[a]ll the components of Christiansen are part of and
operate together to form an engine. All said components of [sic] are
considered to be ‘positioned in’ the internal combustion engine of
Christiansen, as generally claimed.” Id. As such, the Examiner considers
that being within the same engine system corresponds to being “in an
internal combustion engine,” as claimed. Id.', see also Ans. 15—16.
However, we find persuasive the Appellants’ argument that
Christiansen’s engine system is not equivalent to the claimed internal
combustion engine within which the components are positioned. See Appeal
Br. 10—12. The Specification provides for “an oil circuit 1 in an internal
combustion engine 50.” Spec. 3,11. 14—15. Circuit 1 comprises head oil
circuit la, block oil circuit lb, and oil sump lc. Id. at 3,11. 17—19. Figure 1
depicts engine 50 as a box within which are the connected circuits la and lc,
hydrodynamic retarder 12, cylinder block lubricant-receiving components 5,
oil pump 2, and supply line 4. Thus, we agree with the Appellants that the
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Appeal 2016-001153
Application 13/451,401
Specification and the “explicit wording” of the claim require that the
components be “entirely therewithin” the internal combustion engine, and
not simply within the system. Appeal Br. 10.
Christiansen discloses “a main internal combustion engine 1 to the
casing of which is connected an oil-conveying conduit 2.” Christiansen 1,
11. 70-73. Conduit 2 comprises valve 3, which is opened and connected to
conduit 4 and device 5, i.e., a pump, dynamometer, or brake, which is driven
by an auxiliary motor, separate from the main engine. See id. at 1,11. 73—82,
Fig. 1. As such, we find persuasive the Appellants’ argument that
Christiansen does not teach that the claimed components are positioned
within the combustion engine. See Appeal Br. 11.
Therefore, we are persuaded that the Examiner erred in the rejections
of independent claims 1, 9, and 20 under 35 U.S.C. § 103, and we do not
sustain the rejections. For the same reasons, we also do not sustain the
Examiner’s rejections of dependent claims 2—8, 10—13, 15—19, and 21, for
which the Examiner relies on the same erroneous finding regarding
Christiansen.
DECISION
The Examiner’s rejections of claims 1—13 and 15—21 under
35 U.S.C. § 103(a) are REVERSED.
REVERSED
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