Ex Parte Shintani et alDownload PDFPatent Trial and Appeal BoardOct 2, 201412143057 (P.T.A.B. Oct. 2, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TADASHI SHINTANI and HIROYUKI ANDO ____________________ Appeal 2012-006747 Application 12/143,057 Technology Center 3600 ____________________ Before SALLY G. LANE, DEBORAH KATZ, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 file this appeal under 35 U.S.C. § 134 from a rejection of claims 3 and 5–11. We have jurisdiction under 35 U.S.C. § 6(b). We affirm in part. 1 The real party in interest is identified as Tsubakimoto Chain Co. App. Br. 2. App App guid prov show crank Spec contr eal 2012-0 lication 12 The clai e can be u ide tension s an engin Figure 1 In Figur shaft spro . ¶ 28. Fig ol tension 06747 /143,057 ms are dire sed with an to the tim e timing t depicts an e 1, an end cket S1 to ure 1 show on chain Claimed cted to a c internal c ing chain ransmissio engine tim less chain a pair of s pivoted C) on the l 2 Subject M hain guid ombustion . Spec. 1. n and is re ing trans C transmi engine cam guide 100 eft side of atter e for use in engine to Figure 1 o produced mission w ts rotation shaft spro (which c chain C, a an engin guide and f the Spec below. ith two ch from engi ckets S2 a an be adju nd on the e. A chain /or ification ain guides ne nd S3. sted to right side . Appeal 2012-006747 Application 12/143,057 3 of chain C is fixed guide 100 (which is fixed relative to the engine block). Id. ¶¶ 3, 28. Both chain guides include “a shoe having a front surface in sliding contact with the chain and a base plate engaged with the back of the shoe for supporting the shoe.” Id. ¶ 29. The claims on appeal are directed to the presence, location of, and nature of grooves in the base plate. According to the Specification, with one of more of these grooves in the base plate, “superior endurance can be achieved, and deformation and breakage of the base plate are prevented even when large pressing loads are applied to the chain guide by a transmission chain in a high temperature engine environment.” Id. ¶ 10. Rejections The Examiner maintains the following rejections of claims 3, 5–8, and 9–11 in the Answer:2 (1) Claims 3 and 5–8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sato (US 5,318,482, issued June 7, 1994) and Dembosky (US 5,813,935, issued Sept. 29, 1998); (2) Claims 9–11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sato, Dembosky, and Schnupp (US 6,519,992 B1, issued Feb. 18, 2003). Grouping of Claims Claims 3, 5, and 9 are independent claims. Appellants argue each of these claims separately, and also make a separate argument for claim 8, 2 Claims 1, 2, and 4 were cancelled. App. Br. 7. Appeal 2012-006747 Application 12/143,057 4 which depends from claim 5. See App. Br. 1214. Claims 3, 5, 8, and 9 are reproduced below, with relevant differences emphasized. 3. A chain guide for use in an engine, the chain guide comprising: an elongated shoe having a convex, curved, front surface for sliding contact with a transmission chain traveling along the direction of elongation of the shoe and a concave back surface opposite from said front surface; and an elongated metal base plate, having opposite front and back surfaces, the front surface of the base plate having a convex curvature along the direction of elongation of the base plate and being engaged with the back surface of the shoe, whereby the base plate supports the shoe along substantially the entire length of the shoe, and the back surface of the base plate having a concave curvature along the direction of elongation of the base plate; wherein the elongated base plate has at least one narrow reinforcing groove formed in one of its front and back surfaces, each said narrow reinforcing groove extending longitudinally along said one of said front and back surfaces and having the same curvature as that of the surface in which it is formed; wherein each said narrow reinforcing groove is formed by pressing a surface pressing tool having a ridge conforming to the shape of said groove against said one of said front and back surfaces, whereby the metal of said base plate is plasticly deformed; and wherein said at least one narrow reinforcing groove is formed in the back surface of the base plate. 5. A chain guide for use in an engine, the chain guide comprising: an elongated shoe having a convex, curved, front surface for sliding contact with a transmission chain traveling along the direction of elongation of the shoe and a concave back surface opposite from said front surface; and Appeal 2012-006747 Application 12/143,057 5 an elongated metal base plate, having opposite front and back surfaces, the front surface of the base plate having a convex curvature along the direction of elongation of the base plate and being engaged with the back surface of the shoe, whereby the base plate supports the shoe along substantially the entire length of the shoe, and the back surface of the base plate having a concave curvature along the direction of elongation of the base plate; wherein the elongated base plate has at least one narrow reinforcing groove formed in one of its front and back surfaces, each said narrow reinforcing groove extending longitudinally along said one of said front and back surfaces and having the same curvature as that of the surface in which it is formed; wherein each said narrow reinforcing groove is formed by pressing a surface pressing tool having a ridge conforming to the shape of said groove against said one of said front and back surfaces, whereby the metal of said base plate is plasticly deformed; and wherein said shoe has parallel longitudinally extending guide walls, spaced laterally from each other and extending in the direction in which the front surface of the shoe faces, for limiting lateral movement of a chain traveling in sliding contact with said front surface of the shoe, and in which multiple, parallel, narrow, reinforcing grooves are formed in said one of said front and back surfaces of the base plate, said grooves being laterally spaced from one another and located inboard with respect to said longitudinally extending guide walls of the shoe, whereby the grooves are positioned opposite to portions of said front surface of the shoe on which link plates of a roller chain or rollerless bushing chain travel. 8. A chain guide according to claim 5, in which said narrow reinforcing grooves are formed in the back surface of the base plate. 9. A method for making a chain guide for use in an engine, the chain guide comprising: Appeal 2012-006747 Application 12/143,057 6 an elongated shoe having a convex, curved, front surface for sliding contact with a transmission chain traveling along the direction of elongation of the shoe and a concave back surface opposite from said front surface; and an elongated metal base plate, having opposite front and back surfaces, the front surface of the base plate having a convex curvature along the direction of elongation of the base plate and being engaged with the back surface of the shoe, whereby the base plate supports the shoe along substantially the entire length of the shoe, and the back surface of the base plate having a concave curvature along the direction of elongation of the base plate; wherein the elongated metal base plate has at least one narrow reinforcing groove formed in one of its front and back surfaces, each said narrow reinforcing groove extending longitudinally along said one of said front and back surfaces, and having the same curvature as that of the surface in which it is formed; the method comprising the steps of: forming said at least one narrow reinforcing groove by pressing a surface pressing tool having a ridge conforming to the shape of said groove against said one of the front and back surfaces of said elongated metal base plate, thereby effecting plastic deformation of the base plate metal and relieving strain therein; and attaching a shoe to the base plate. ANALYSIS Claim 3 Claim 3 requires “at least one narrow reinforcing groove . . . formed in the back surface of the base plate.” The claim was dependent on claim 1 but was rewritten into independent form in an amendment after final rejection that also cancelled claim 1. See App. Br. 7; Ans. 3. The Examiner’s Answer states that claims 3 and 5–8 are rejected as unpatentable Appeal 2012-006747 Application 12/143,057 7 over Sato and Dembosky. In the Answer, the Examiner further clarifies that “[t]he Dembosky reference was only used to teach that it is known for an element to have a plurality of grooves.” Ans. 6. We note that the elongated base of claim 3 has “at least one narrow reinforcing groove” so does not necessarily have a plurality of grooves. In reply, Appellants argue that “the Examiner has now in effect taken the position that Sato anticipates claim 3.” Reply Br. 2. Appellants also consider whether the space between the side walls of the back of the base shown in Figure 3 of Sato meets the “groove” limitation of claim 3, and conclude that it does not based on the product-by-process language of claim 3 reciting “wherein each said narrow reinforcing groove is formed by pressing a surface pressing tool having a ridge conforming to the shape of said groove against said one of said front and back surfaces, whereby the metal of said base plate is plasticly deformed.” Id. at 2–3. We disagree with Appellants that the Examiner’s rejection of claim 3 is based on anticipation over Sato. In both the Final Rejection3 and in the grounds of rejection presented in the Answer, the Examiner identifies two limitations of claim 3 found not to be disclosed by Sato: (1) the groove having the same curvature as the surface in which it is formed, and (2) the groove or grooves being on the back surface of the base plate. See Final Rej. 4, 5; Ans. 5. As to the curvature limitation, the Examiner finds that “the groove of [Sato] is substantially the same as that of the curvature of the base plate,” and that “it would have been an obvious matter of design choice to design the groove of [Sato] to be the same as the back . . . surface of the base plate because one of ordinary skill would have been expected to determine 3 Dated May 4, 2011. Appeal 2012-006747 Application 12/143,057 8 the optimum design for a particular use.” Final Rej. 4; Ans. 5. With respect to the identified groove of Sato being on the front of the base plate instead of the back, the Examiner concludes that: [I]t would have been an obvious matter of design choice, as determined through routine experimentation and optimization, to design the base plate of [Sato] in view of [Dembosky] as specified in Claims 3 and 8 because one of ordinary skill would have been expected to have routinely experimented to determine the optimum design for a particular use. Final Rej. 5; Ans. 5–6. Appellants do not challenge these findings or the reasoning supporting the conclusion of obviousness in light of them. We agree with the Examiner’s findings and the conclusion that one skilled in the art, as a person of ordinary creativity, would have had reason to modify the Sato groove to arrive at the chain guide of claim 3. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“As our precedents make clear, however, the [obviousness analysis] need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). In the Appeal Brief, Appellants challenge the rejection of claims 3 and 5–8 only by attacking the Examiner’s reasoning with respect to the Dembosky reference, specifically whether Dembosky teaches forming a plurality of grooves in a base plate. See App. Br. 12. We are not persuaded by this argument because the Examiner found that providing a groove on the back surface would have been an obvious design choice (Ans. 5.), independent of Dembosky. The arguments presented in Appellants’ Reply Brief as to the product-by-process limitation in claim 3 were not presented in the Appeal Brief, even though similar arguments were made in support of Appeal 2012-006747 Application 12/143,057 9 method claims 9–11. See App. Br. 12–14. Absent a showing of good cause, we are not required to consider such belated arguments. See Ex parte Borden, 93 USPQ2d 1473, 1473 (BPAI 2010) (informative) (concluding that, absent a showing of good cause, the Board is not required to consider “arguments that could have been presented in the Principal Brief on Appeal, but were not”).4 Here, Appellants do not show good cause for presenting the product- by-process arguments for the first time in the Reply Brief, and we find that the circumstances in this case weigh against consideration of such arguments. Appellants do not argue that good cause exists. See Reply Br. 1–3. Appellants suggest that the Examiner’s Answer rejects claim 3 based on “the space between the side walls of Sato’s base, seen in Sato’s Figure 3,” and argue that “in view of the [E]xaminer’s change of position, it becomes necessary to consider whether or not that space constitutes a groove meeting the limitations of claim 3.” Reply Br. 2. We do not find in the Examiner’s Answer any reference to Figure 3 of Sato or to the space between the walls on the back of the base plate shown in Sato, and Appellants do not cite any portion of the Answer that refers to Figure 3 or that feature of Sato. As discussed above, the Examiner explains why one of ordinary skill in the art would have modified Sato to put the groove on the back of the base plate. Appellants have not persuaded us that the Examiner’s position changed in regard to the modification and thus have not shown good cause for presentation of new arguments in the Reply.5 4 Also available at http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd08004312.pdf. 5 Appellants also previously made similar arguments with respect to claim 1 (on which claims 3 and 5 depended at that time) and chose not to renew such Appeal 2012-006747 Application 12/143,057 10 We note that even if Appellants’ arguments were considered, Appellants carry the burden of showing that the product made by the recited process is not taught or suggested by the prior art. “[T]he Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than would be the case when a product is claimed in the more conventional fashion.” In re Fessmann, 489 F.2d 742, 744 (CCPA 1974). The Examiner’s rejection shows that the same or similar product in the prior art was obvious, and Appellants’ cursory arguments as to potential structural differences due to the process steps appear to do little to address the obviousness of those differences. For the foregoing reasons, we affirm the rejection of claim 3. Claims 5–8 Independent claim 5 requires that “multiple, parallel, narrow, reinforcing grooves are formed in said one of said front and back surfaces of the base plate.” Appellants argue that the Examiner’s rejection of claim 5 confuses the shoe with the base plate. App. Br. 12. We agree that the Examiner’s rejection is inapposite. The rejection concludes that it would have been obvious to provide grooves on the shoe of Sato, but the claim requires multiple grooves on the base plate. In response to Appellants’ arguments, the Examiner notes that attacking references individually is insufficient to show non-obviousness, states that Dembosky arguments in the Appeal Brief, further showing a deliberate choice not to present such arguments for consideration on appeal. See Amendment After Final 14 (dated June 21, 2011). Appeal 2012-006747 Application 12/143,057 11 “was only used to teach that it is known for an element to have a plurality of grooves,” and states that Sato teaches every element “except for a plurality of grooves.” Ans. 6 (emphasis omitted). These statements do not align with the rejection as applied, and do not remedy the defects in the rejection. The Examiner’s statements that Sato teaches all elements “except for grooves on the elongated shoe” (Ans. 5) indicates that the Examiner considers claim 5 to require grooves on the shoe. The conclusion of obviousness also appears to be based on the desirability of providing “grooves on the shoe of Sato” (Ans. 5), which is inconsistent with any suggestion that the grooves on the shoe of Dembosky would have been applied by one of ordinary skill in the art on the base plate of Sato. The Examiner also does not provide any rationale for modifying Sato to include multiple grooves on the base plate in view of Dembosky’s teaching of multiple grooves on the shoe. The rationale provided by the Examiner instead relates to the rationale for providing grooves on the shoe. The Examiner reasons that “[i]t would have been obvious to one of ordinary skill in the art to provide grooves on the shoe of [Sato], as taught by [Dembosky], for the purpose of allowing the slideway to conform to the curvature in the length of the carrier.” Ans. 5. The “slideway” of Dembosky corresponds to the shoe in claim 5, and the “carrier” corresponds to the base plate. Dembosky teaches that the slideway or shoe is “formed of a plastic or nylon material,” and that the chain slides along its top surface. Dembosky col. 2, ll. 62–63; col. 3, ll. 8–9. “The carrier portion 3 can be formed of aluminum, steel or injection molded nylon.” Id. col. 2, ll. 63–64. App App porti extru surfa chain base eal 2012-0 lication 12 The curv on 5 can b Figure 4 Figure 4 ded slidew ce 30 of s slides alo plate) is p 06747 /143,057 ature of th e seen in F of Dembo of Dembo ay lining lideway lin ng this su ositioned t e carrier p igure 4 of sky show sky “is a s body and ing body rface. Id. o the left o 12 ortion 3 a Dembosk s a side vie ide view o a carrier.” portion 5 i col. 3, ll. 8 f the slide nd slidewa y, which i w of a gui f a guide Id. col. 2 s on the ri –9. The c way (or sh y lining b s reproduc de rail. rail . . . inc , ll. 51–53 ght side, a arrier port oe) in Fig ody ed below. luding an . The top nd the ion 3 (or ure 4. App App base base are a slide cross conf mate flexi ratio Sato mod claim the p eal 2012-0 lication 12 Figure 2 plate acco Figure 2 Figure 2 plate that lso formed portion.” -sectional orm to the Because rial and is ble to conf nale provi does not e ified Sato For thes s 6–8. A atentabilit 06747 /143,057 of Dembo rding to o show a cr of Dembo interlock. along the Id. col. 3, area, whic curvature the base p intended t orm to the ded by the xplain wh to provide e reasons, ccordingly y of claim sky depic ne embodi oss-section sky depic Figure 2 s slide port ll. 49–51. h permits in the leng late (carri o support curvature Examiner y one of o for multip we reverse , we need 8 that wer 13 ts a cross-s ment. Fig al view o ts a cross-s hows that ion 5, and “Grooves the straigh th of the c er) in Dem the shoe (s of the bas for provid rdinary sk le grooves the reject not consid e presente ectional v ure 2 is re f a shoe an ectional v two small extend alo 35 and 36 t extruded arrier.” Id bosky is m lideway), e plate wh ing groov ill in the ar on the ba ion of clai er the sep d with cla iew of the produced b d base pla iew of a sh “grooves ng the len provide a slideway . col. 3, ll ade of a r which is m en interlo es on the s t would h ck of the b m 5 and d arate argum im 3. shoe and elow. te. oe and 35 and 36 gth of the reduced to . 51–53. igid ore cked, the hoe of ave ase plate. ependent ents for App App meta the a get a unid a for impo 32 an 28–3 inden struc eal 2012-0 lication 12 Appellan l forming rt to form satisfacto entified rib ming pres ssible.” I Figure 7 d an elon 5. On the tation on ture in the 06747 /143,057 ts argue th press wou the recess ry result.” that can b s for the fa d. Figure of Sato de gated alum far right s at least on lower hal Cla at the erro ld not be u 40 of Sato App. Br. e seen in brication o 7 of Sato i picts a ch inum arm ide of the e side of a f of the arm 14 ims 9–11 r in the re sed by a p , because 13. Appe Figure 7 o f Sato’s a s reproduc ain guide c 31. See S arm betwe rm 31 app . See Fig jection of erson havi that person llants asse f Sato wou rm imprac ed below. omprising ato col. 3, en indicat ears to for . 7; see al claim 9 “i ng ordinar would no rt that the ld “make tical if not an elonga ll. 21–23; ors 40 and m a small so App. B s that a y skill in t expect to the use of ted shoe col. 4, ll. 47, an rib-like r. 13. Appeal 2012-006747 Application 12/143,057 15 Appellants provide no persuasive explanation as to how the rib shown in Figure 7 of Sato might interfere with press forming a groove on the top or bottom surface of arm 31. Appellants state that “[a]t least a person having ordinary skill in the art of fabricating aluminum parts would almost certainly view Sato’s rib as presenting a serious obstacle to successful press-forming, and would consider casting to be the appropriate process for producing Sato’s arm.” App Br. 13. The statements in the brief however, do not amount to evidence of how one skilled in the art would view the Sato invention and fail to show error in the Examiner’s reasoning that one of ordinary skill in the art would press form the groove in view of Schnupp’s teaching of “the desirability of using a press in order to obtain a desired shape” (Ans. 6). Attorney argument cannot take the place of evidence lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Appellants also argue that “the secondary objective of Sato’s recess, reduction of weight, would not supply a reason to depart from casting in favor of press-forming” because “[p]ress-forming the recess would redistribute the metal without reducing the overall weight of the arm.” App. Br. 13. As Appellants recognize, the recess in Sato has multiple benefits. As shown in Figure 7 of Sato, “convex portion 46” on the shoe of Sato engages the walls of recess 40 to keep the base plate and shoe properly aligned. Sato col. 4 ll. 30–32. The recess also provides a mounting hole for pad 33. Id. col. 4 ll. 12–15. Although press forming may not provide weight reduction, one of ordinary skill in the art would still have motivation to form the arm according to the common fabrication process described in Schnupp to obtain the other benefits of the recess taught by Sato. Appeal 2012-006747 Application 12/143,057 16 In the absence of other persuasive evidence or argument, we decline to disturb the Examiner’s conclusion that it would have been obvious to use a press to form the recess in Sato. Accordingly, we affirm the rejection of claim 9. Dependent claims 10 and 11 are not argued separately from claim 9. The rejection of claims 10 and 11 is thus affirmed. See 37 C.F.R. § 41.37(c)(1)(vii) (2011) (“Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which the appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.”). DECISION Upon consideration of the record as a whole in light of Appellants’ contentions and the preponderance of relevant evidence, we affirm the Examiner’s decision to reject claims 3 and 9–11. We reverse the Examiner’s decision to reject claims 5–8. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED-IN-PART llw Copy with citationCopy as parenthetical citation