Ex Parte Plasse

Board of Patent Appeals and Interferences

Mar 18, 2008

10012980 (B.P.A.I. Mar. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERNEST W. PLASSE
____________

Appeal 2007-2614
Application 10/012,980
Technology Center 3600
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Decided: March 18, 2008
____________

Before TERRY J. OWENS, JENNIFER D. BAHR, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
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This appeal arises from the Examiner’s Final Rejection, mailed
November 10, 2003. The Appellant filed an Appeal Brief in support of the
appeal on June 14, 2006. An Examiner’s Answer to the Appeal Brief was
mailed on July, 17, 2006.

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims a thrust bearing which is said to respond to the need
“…for a one-piece, combination thrust shaft flange and thrust plate design
which would eliminate the difficulties and drawbacks associated…” with
prior art thrust bearing structures (Specification 3:1-4).
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A rotating combination thrust plate and thrust shaft flange
(10) comprising:
a generally cylindrical body portion (22) having a rotating base
surface (24) and a lateral surface (23);
a frustoconical body portion (29); and
a bore (12) extending through said cylindrical body portion (22)
and said frustoconical body portion (29), wherein said bore (12) has a
first bore section (14) and a second bore section (16), said second bore
section (16) being adjacent said rotating base surface (24) and having
a smaller diameter then said first bore section (14), and said first and
second bore sections (14 and 16) meeting at a junction (18) defining a
lip (21).
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Appellant’s Admitted Prior Art (APA) Figure 1

The following rejections are before us for review.
1. Claims 1, 2, 4-8, 10-14, and 16-20 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Appellant's Admitted Prior Art (APA) in
Figure 1.
2. Claims 3, 9, and 15 stand rejected under 35 U. S. C. § 103(a) over
Appellant's APA in Figure 1.
ISSUE
The anticipation issue before us is whether Appellant has shown that
the Examiner erred in rejecting claims 1, 2, 4-8, 10-14, and 16-20 under 35
U.S.C. § 102(b) as anticipated by APA Figure 1. This anticipation issue
turns on whether APA Figure 1 expressly or inherently discloses a single
component with both a generally cylindrical body portion and a
frustoconical body portion.
The obviousness issue is whether Appellant has sustained its burden
of showing that the Examiner erred in rejecting claims 3, 9, and 15 on appeal
as being unpatentable under 35 U.S.C. § 103(a) over APA Figure 1 based on
design choice.
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FINDINGS OF FACT

1. The Examiner noted that

Prior art figure 1 shows a rotating combination
thrust plate and thrust shaft flange 34,36 the
rotating combination comprising: a generally
cylindrical body portion 34 having a rotating base
surface shown directly adjacent to element 26 and
a lateral surface shown in the area of the lead line
associated with element 34, a frustoconical body
portion shown immediately above and to the right
of the lead line associated with element number
36, and a bore extending through the cylindrical
and frustoconical body portions, wherein the bore
has a first bore section shown in the area of the
lead line associated with element number 42 and a
second bore section shown to the left of the first
bore section, the second bore section being
adjacent the rotating base surface and having a
smaller diameter than the first bore section as
shown, and the first and second bore sections
meeting at a junction defining a lip shown in the
area of the lead line associated with element
number 42.
(Answer 3.)

2. We find that the Appellant’s Admitted Prior Art (APA) Figure 1
(as annotated infra (FF 3)) discloses a component 36 having a generally
cylindrical body portion (22) having a rotating base surface (24) and a lateral
surface (23); a frustoconical body portion (29); and a bore (12) extending
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through the cylindrical body portion (22) and the frustoconical body portion
(29), wherein the bore (12) has a first bore section (14) and a second bore
section (16), the second bore section (16) being adjacent the rotating base
surface (24) and having a smaller diameter then the first bore section (14),
and the first and second bore sections (14 and 16) meeting at a junction (18)
defining a lip (21) wherein the phantom line SL (added in this Decision)
delineates between the cylindrical body portion (22) and frustoconical
portion (29).

3. Appellant’s Admitted Prior Art Figure 1 is reproduced below and
is annotated to show the thrust flange 36 annotated to include the various
reference numbers discussed supra (FF 2).

Appellant’s Admitted Prior Art Figure 1 is shown above depicting the
elements of claim 1 on the thrust flange 36.
4. The Specification designates the rotating flange plate combination
as a single element identified in Figure 2 as element 10 and describes the
element 10 as replacing the prior art two piece conventional rotating thrust
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plate (36) and thrust flange (34) shown in FIG. 1 (Specification 5:2-6) in
response to the need “…for a one-piece, combination thrust shaft flange and
thrust plate design which would eliminate the difficulties and drawbacks
associated…” with prior art thrust bearing structures (Specification 3:1-4).

PRINCIPLES OF LAW
We begin with the language of the claims. The general rule is that
terms in the claim are to be given their ordinary and accustomed meaning.
Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985, 989 (Fed. Cir.
1999). In the United States Patent and Trademark Office (USPTO), claims
are construed giving their broadest reasonable interpretation.
[T]he Board is required to use a different standard for construing
claims than that used by district courts. We have held that it is error
for the Board to “appl[y] the mode of claim interpretation that is used
by courts in litigation, when interpreting the claims of issued patents
in connection with determinations of infringement and validity.” In
re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); accord In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997) (“It would be inconsistent with the
role assigned to the PTO in issuing a patent to require it to interpret
claims in the same manner as judges who, post-issuance, operate
under the assumption the patent is valid.”). Instead, as we explained
above, the PTO is obligated to give claims their broadest reasonable
interpretation during examination.

In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).
Although a patent applicant is entitled to be his or her own
lexicographer of patent claim terms, in ex parte prosecution it must be
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within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant
must do so by placing such definitions in the specification with sufficient
clarity to provide a person of ordinary skill in the art with clear and precise
notice of the meaning that is to be construed. See also In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the
specific terms used to describe the invention, this must be done with
reasonable clarity, deliberateness, and precision; where an inventor chooses
to give terms uncommon meanings, the inventor must set out any
uncommon definition in some manner within the patent disclosure so as to
give one of ordinary skill in the art notice of the change).
If “the preamble merely state[s] a purpose or intended use and the
remainder of the claim completely defines the invention independent of the
preamble,” it does not constitute a limitation. Lipscomb’s Walker on
Patents, 3rd Ed., Vol. 3, § 11.11 at 361 (citing Marston v. J.C. Penney Co.,
353 F.2d 976, 986 (4th Cir. 1965)); see also, Rowe v. Dror, 112 F.3d 473,
478 (Fed. Cir. 1997); Corning Glass Works v. Sumitomo Elec. U.S.A., Inc.,
868 F.2d 1251, 1257 (Fed. Cir. 1989) (An element initially recited in the
preamble, is thereafter fully incorporated into the body of the claim so as to
breathe life and breath into it by setting forth the complete combination).
Anticipation
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir.
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1987). “When a claim covers several structures or compositions, either
generically or as alternatives, the claim is deemed anticipated if any of the
structures or compositions within the scope of the claim is known in the
prior art.” Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). “The
identical invention must be shown in as complete detail as is contained in the
. . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir.
1989). The elements must be arranged as required by the claim, but this is
not an ipsissimis verbis test, i.e., identity of terminology is not required.
In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990).
Obviousness
A claimed invention is unpatentable if the differences between it and
the prior art are “such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103(a) (2000); KSR Int’l v. Teleflex Inc., 127 S.Ct.
1727 (2007); Graham v. John Deere Co., 383 U.S. 1, 13-14 (1966).
In Graham, the Court held that that the obviousness analysis is
bottomed on several basic factual inquiries: “[(1)] the scope and content of
the prior art are to be determined; [(2)] differences between the prior art and
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill
in the pertinent art resolved.” 383 U.S. at 17.ee also KSR Int’l v. Teleflex
Inc., 127 S.Ct. at 1734. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, at 1739.
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ANALYSIS
The rejection under 35 USC § 102(b)
Appellant argues claims 1, 2, 4-8, 10-14, and 16-20 as a group.
We select claim 1 as the representative claim for this group, and the
remaining independent claims 5 and 12 stand or fall with claim 1. 37 C.F.R.
§ 1.37(c)(1)(vii) (2007).
For the reasons that follow, we sustain the Examiner’s rejection of
claims 1, 2, 4-8, 10-14, and 16-20.
The Examiner rejected claims 1, 2, 4-8, 10-14, and 16-20 under 35
U.S.C. § 102(b) as anticipated by Applicant's Admitted Prior Art Figure 1.
In so doing, the Examiner interpreted the term “rotating combination” of
claim 1 to mean two separate elements which rotate as a combination,
namely, the rotating thrust plate 34 and the rotating flange 36 illustrated in
Prior Art Figure 1 (FF 1). The Examiner reasoned that “...the claim
language [only] broadly requires a ‘combination thrust plate and thrust shaft
flange’ and does not specifically recite that that [sic] the thrust plate and the
thrust flange form a ‘single component’ as argued.” (Answer 5-6.)
Appellant however argues this interpretation is improper because
“[t]he invention claims a single rotating thrust plate comprised of several
distinct portions or parts, which together create a self-supporting thrust
bearing assembly that is adequate for use in extruders.” (Appeal Br. 6.)
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We agree with the Appellant that claim 1 requires that the
combination thrust plate and thrust shaft flange be a single component
because the Specification makes this clear (FF 4). However, we find that
even when claim 1 is construed to require the “combination thrust plate and
thrust shaft flange” to be a single element, the structure of the thrust shaft
flange 36 shown in Appellant’s Admitted Prior Art (APA) Figure 1
nevertheless includes all the limitations of claim 1 (FF 2,3).
We start with the preamble of claim 1. Although the preamble
initially calls the article a “combination thrust plate and thrust shaft flange”,
these terms are not again recited or referenced in the remainder of claim 1.
Since, the body of claim 1 completely defines the invention independent of
the preamble, the term “combination thrust plate and the thrust shaft flange”
is thus interpreted merely as Appellant’s own lexicography for the name of
the article being claimed. See Marston at 986.
With that said, we read the thrust shaft flange 36 shown in APA
Figure 1 as a single component having two portions, namely, a generally
cylindrical body portion (22) and a frustoconical body portion (29)
delineated by our separation phantom line SL set at the intersection of the
cylindrical wall of portion 22 and the frustoconical taper of portion 29
(FF 2 3). Further, as found supra (FF 2), all remaining structure required by
claim 1 is present in the APA thrust shaft flange 36.
Appellant’s argument likewise fails to demonstrate error in the
rejection of claims 2, 4, 6-8, 10, 11, 13, 14, 16-20 which Appellant has not
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argued separately from claims 1, 5 and 12. As such, we sustain the rejection
of claims 1, 2, 4-8, 10-14, and 16-20 under 35 U.S.C. § 102(b) as anticipated
by APA Figure 1.
The rejection under 35 USC § 103(a)
We also sustain the rejection of claims 3, 9, and 15 as being
unpatentable under 35 U.S.C. § 103(a) over APA Figure 1.
Appellant challenges this rejection by: 1) restating the argument that
claims 1, 2, 4-8, 10-14, and 16-20 are not anticipated, and thus claims 3, 9,
and 15, which depend thereon, cannot be obvious under 35 U.S.C. § 103(a);
and 2) arguing that “…there is no suggestion in the prior art of combining
the thrust bearing assembly and an ancillary rotating thrust plate of Figure 1
to create a single, self-supporting thrust bearing for extrusion application”
and “therefore, the angle at which the frustoconical surface extends from the
lateral surface in the new, self-supporting thrust bearing of the present
invention, is not an obvious modification of the prior art.” (Appeal Br. 7.)
Appellant’s arguments fail because: 1) as found supra (FF 2, 3), APA
Figure 1 discloses all the structure recited in claim 1 and thus anticipates it;
and 2) Appellant’s second argument is misplaced because the only
modification advanced by the Examiner under 35 U.S.C. § 103(a) is “…to
have modified Prior art figure 1 by having the frustoconical surface extend
at an angle of about 230 degrees from the lateral surface…” (Final Rej. 4),
and not to combine two members to create a one-piece thrust bearing as
argued by Appellant. It is not apparent, and Appellant has not cogently
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explained, why the design considerations for the angle of the frustoconical
surface of a combined one-piece thrust bearing assembly and ancillary
rotating thrust plate would be any different from those for the angle of the
frustoconical surface of a rotating thrust flange that is distinct from the thrust
plate assembly. We thus sustain the rejection of dependent claims 3, 9 and
15.
CONCLUSIONS OF LAW
We conclude:
(1) We sustain the rejection of claims 1, 2, 4-8, 10-14, and 16- 20 as
being unpatentable under 35 U.S.C. § 102(b) over APA Figure 1.
(2) We sustain the rejection of claims 3, 9, and 15 as being
unpatentable under 35 U.S.C. § 103(a) over APA Figure 1.
DECISION
The decision of the Examiner to reject claims 1, 2, 4-8, 10-14, and
16-20 as being unpatentable under 35 U.S.C. § 102(b) over APA Figure 1 is
affirmed.
The decision of the Examiner to reject claims 3, 9, and 15 as being
unpatentable under 35 U.S.C. § 103(a) over APA Figure 1 is affirmed.
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The decision of the Examiner to reject claims 1-20 is affirmed but,
because our rationale is substantially different from that used by the
Examiner, we denominate this as new grounds of rejection under 37 C.F.R.
§ 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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 CFR § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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 . . . .
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)(iv) (2007).
AFFIRMED; 37 C.F.R. § 41.50(b)
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