Ex Parte Shui

Board of Patent Appeals and Interferences

Mar 11, 2010

11163956 (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FANG SHUI
____________

Appeal 2009-004937
Application 11/163,956
Technology Center 3700
____________

Decided: March 11, 2010
____________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Fang Shui (Appellant) seek our review under 35 U.S.C. § 134 (2006)
of the Examiner’s decision rejecting claims 1-11. We have jurisdiction
under 35 U.S.C. § 6(b) (2006).

Appeal 2009-004937
Application 11/163,956

2
SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention is a system for operating poppet-type
cylinder valves of a reciprocating internal combustion engine to selectively
control the duration and phasing of the valve opening events. Spec. 1, para.
1. Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A poppet valve operating system for an internal
combustion engine, comprising:
a camshaft;
a variable valve lift control system driven by said
camshaft and having an angular control input;
a camshaft phaser driving said camshaft and having an
angular control input; and
a controller for providing angular position control for
said variable valve lift control system and for said camshaft
phaser.
THE EVIDENCE
The Examiner relies upon the following evidence:
Okuda
Shimizu
Shui (Shui ‘326)
Shui (Shui ‘035)
US 6,129,061
US 6,425,357 B2
US 6,722,326 B1
US 6,932,035 B1
Oct. 10, 2000
Jul. 30, 2002
Apr. 20, 2004
Aug. 23, 2005
THE REJECTIONS
Appellant seeks review of the following rejections by the Examiner:
1. Rejection of claims 1-3 under 35 U.S.C. § 102(b) as anticipated by
Shimizu.
Appeal 2009-004937
Application 11/163,956

3
2. Rejection of claims 1-3 under 35 U.S.C. § 103(a) as unpatentable over
Shimizu.
3. Rejection of claims 1, 2, and 4-11 under 35 U.S.C. § 103(a) as
unpatentable over Okuda and Shui ‘035.
4. Rejection of claims 1, 2, and 4-11 under 35 U.S.C. § 103(a) as
unpatentable over Okuda and Shui ‘326.
ISSUES
The Examiner determined that claims 1-3 are anticipated by Shimizu,
or alternatively, are unpatentable under 35 U.S.C. § 103(a) in view of
Shimizu. Ans. 3-4. Appellant argues that Shimizu does not meet every
limitation of the claims 1-3 as addressed in the Analysis section, infra. App.
Br. 6-7.
In the rejection of claims 1, 2, and 4-11 as unpatentable over Okuda
and either Shui ‘035 or Shui ‘326, the Examiner found that Okuda discloses
a system and a method for controlling the timing of a poppet valve of an
internal combustion engine, but fails to disclose a variable valve lift control
system driven by a camshaft and having an angular control input. Ans. 4-6.
The Examiner found that Shui ‘035 and Shui ‘326 each disclose a variable
valve lift control system driven by a camshaft and having an angular control
input. Ans. 5, 6. The Examiner concluded claims 1, 2, and 4-11 are
unpatentable over Okuda and either Shui ‘035 or Shui ‘326 because it would
have been obvious to use the variable valve lift control system of Shui ‘035
or Shui ‘326 in the device and method of Okuda in order to provide an
improved, more flexible and controllable poppet valve operating system for
an engine. Ans. 5, 6, 8.
Appeal 2009-004937
Application 11/163,956

4
Appellant contends that none of the references disclose use of a single
controller for providing angular position control for both a variable valve lift
control system and a camshaft phaser. App. Br. 9.
The issues before us are:
Does Shimizu disclose each of the limitations of claims 1-3
challenged by Appellant?
Is the proposed modification to add the system for controlling valve
lift of either Shui ‘035 or Shui ‘326 to the system for controlling valve
timing of Okuda based upon a sufficient reason with a rational underpinning
to explain why one having ordinary skill in the art would have made such a
modification?
FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellant’s Specification does not provide a lexicographic definition
of the term “angular control input,” as used in the claims. Spec.
passim.
2. Shimizu discloses a variable valve drive mechanism for an internal
combustion engine that varies both the valve lift and valve timing,
and is controlled by electronic control unit (ECU) 60. Shimizu,
col. 1, ll. 15-16; col. 6, ll. 23-24; col. 7, ll. 17-26; fig. 1.
3. Shimizu discloses the valve lift portion of the variable valve drive
mechanism is comprised of: four intermediate drive mechanisms
120, control shaft 132, and lift-varying actuator 100 (mounted at one
Appeal 2009-004937
Application 11/163,956

5
end of the cylinder head 8). Shimizu, col. 7, ll. 35-38; col. 10, ll. 27-
30; figs. 1, 4.
4. Shimizu discloses each intermediate drive mechanism 120 has an
input portion 122 driven by intake cam 45a, and an output portion
(rocking cams 124, 126) that drives intake valves 12a and 12b.
Shimizu, col. 22, ll. 6-10; figs. 2, 4, 5. Input portion 122 is
contained in housing 122a having internal helical splines 122b, and
rocking cams 124, 126 are contained in housings 124a, 126a having
helical splines 124b, 126b. Shimizu, col. 7, ll. 51-52, 60-63; col. 8,
ll. 9-12, 24-27; figs. 7, 9, 11. Housings 122a, 124a, and 126a house
slider gear 128 having helical splines 128a, 128c, and 128e that
mesh with helical splines 122b, 124b, and 126b, respectively.
Shimizu, col. 8, ll. 41-52; col. 10, ll. 6-12; figs. 13, 14A-C, 21.
5. Shimizu discloses control shaft 132 is axially slideable within
support pipe 130, and intermediate drive mechanism 120 is rockably
supported on support pipe 130. Shimizu, col. 9, ll. 17-19; col. 22, l.
11-12; figs. 4, 5, 22.
6. Shimizu discloses lift-varying actuator 100 adjusts control shaft 132
in the axial direction, causing the helical splines of slide gear 128 to
engage the corresponding splines of the housings (128a 128c, and
128e) so that input portion 122 changes phase (angle) relative to
rocking cams 124, 126, thereby adjusting the valve lift. Shimizu,
col. 9, ll. 51-62; col. 10, ll. 49-50; col. 12, ll. 54-62; col. 22, ll. 22-
30; figs. 4, 21, 22, 23. ECU 60 controls intake valve lift in
accordance with the operating state of engine 2 by controlling lift-
varying actuator 100 via first oil control valve 98 connected to drive
Appeal 2009-004937
Application 11/163,956

6
circuit 96 of ECU 60 at output port 72. Shimizu, col. 6, ll. 23-28;
col. 7, ll. 17-20; fig. 1.
7. Shimizu discloses that rotational phase difference varying actuator
104 is capable of varying the rotational phase difference between the
intake camshaft 45 and the crankshaft 142. Shimizu, col. 16, ll. 1-8;
figs. 29, 30 Actuator 104 includes an internal rotor 234 that rotates
together with the intake camshaft 45. Shimizu, col. 16, ll. 21-22;
figs. 29, 30. Actuator 104 also includes a timing sprocket 224a
positioned on the distal end portion of intake camshaft 45 so that
timing sprocket 224a is rotatable relative to the intake camshaft 45.
Shimizu, col. 16, ll. 25-27; fig. 29. When ECU 60 commands drive
circuit 96 not to energize second oil control valve 102, actuator 104
rotates intake camshaft 45 and internal rotor 234 relative to timing
sprocket 224a in a direction opposite the rotating direction, retarding
timing. Shimizu, col. 7, ll. 21-24; col. 19, ll. 4-5, 13-17; fig. 1.
When ECU 60 commands drive circuit 96 to energize second oil
control valve 102, actuator 104 rotates intake camshaft 45 and
internal rotor 234 relative to timing sprocket 224a in a direction the
same as the rotating direction, advancing timing. Shimizu, col. 7, ll.
21-24; col. 19, ll. 18-19, 27-31; fig. 1.
8. Shimizu discloses that both first oil control valve 98 and second oil
control valve 102 are supplied with hydraulic fluid from oil pan 144
by pump P. Shimizu, col. 11, ll. 2-6; col. 19, ll. 1-3; figs. 22, 29.
9. Appellant’s Specification does not provide a lexicographic definition
of the term “motor,” as used in the claims. Spec. passim.
Appeal 2009-004937
Application 11/163,956

7
10. The word “motor” is commonly understood to mean “something,
such as a machine or an engine, that produces or imparts motion.”
The American Heritage Dictionary (2d College ed. 1982) (“motor,”
noun, definition 1).
ANALYSIS
Rejection of claims 1-3 under 35 U.S.C. § 102(b) as anticipated by Shimizu,
and alternatively under 35 U.S.C. § 103(a) as unpatentable over Shimizu
Claim 1 is directed to a poppet valve operating system for an internal
combustion engine, comprised of: a camshaft, a variable valve lift control
system, a camshaft phaser, and a controller. The camshaft phaser has an
“angular control input.”
Appellant’s Specification does not define “angular control input”
(Fact 1). We understand “angular control input” to refer to an input that
provides angular control. We can find nothing in Appellant’s Specification,
and Appellant has not pointed to anything in the Specification, that requires
the input to move in an angular direction or be angular itself in some aspect.
Thus, the broadest reasonable interpretation of the claim is that “angular
control” modifies “input” so that the input must provide angular control.
Appellant contends that Shimizu’s actuator 104, which is a spool
valve, is not an angular control input as recited in claim 1. App. Br. 6. This
contention fails to explain how Shimizu’s actuator 104 differs from the
angular control input of claim 1. Assuming arguendo, that Shimizu’s
actuator 104 is a spool valve, anticipation does not require that Shimizu’s
spool valve be referred to in the language of the claim (i.e. an angular
control input); rather, what is required is that Shimizu discloses an angular
control input arranged as required by the claim. See In re Bond, 910 F.2d
Appeal 2009-004937
Application 11/163,956

8
831, 832 (Fed. Cir. 1990) (“The elements must be arranged as required by
the claim, but this is not an ipsissimis verbis test”).
Shimizu discloses an angular control input arranged as required by the
claim. Shimizu discloses a variable valve drive mechanism for an internal
combustion engine having an electronic control unit (ECU) 60 that controls
both valve lift and valve phase (timing) (Fact 2). ECU 60 can command
actuator 104 to rotate intake camshaft 45 and internal rotor 234 relative to
timing sprocket 224a in a direction opposite the rotating direction, retarding
timing, and can command actuator 104 to rotate intake camshaft 45 and
internal rotor 234 relative to timing sprocket 224a in a direction the same as
the rotating direction, advancing timing (Fact 7). We agree with the
Examiner that Shimizu’s actuator 104 includes an angular control input as
recited in claim 1 because actuator 104 provides an input (internal rotor 234
and timing sprocket 224a) facilitating angular control of the camshaft.
Appellant also contends Shimizu does not disclose “anything
regarding the controlling of a camshaft phaser and a variable lift control
system by means of angular position control.” App. Br. 6-7. We disagree.
Shimizu discloses ECU 60 controls both valve lift and valve timing
(Fact 2). More specifically, ECU 60 provides angular position control for
the lift control system by controlling lift-varying actuator 100, which adjusts
control shaft 132 in the axial direction, causing the helical splines of slide
gear 128 to engage the corresponding splines of the housings (128a 128c,
and 128e) so that input portion 122 changes phase (angle) relative to rocking
cams 124, 126, thereby adjusting the valve lift (Fact 6). Further, ECU 60
provides angular position control for valve timing via actuator 104 by
rotating internal rotator 234 in the same or opposite direction to timing
Appeal 2009-004937
Application 11/163,956

9
sprocket 224s, thereby adjusting the timing (Fact 7). Thus, contrary to
Appellant’s assertion, ECU 60 provides angular position control for both the
variable valve lift control system and the camshaft phaser as recited in claim
1.
Appellant’s arguments here fail to demonstrate error by the Examiner
in the rejection of claims 1-3. We now address Appellant’s additional
arguments for patentability of claims 2 and 3.1
Claim 2
Claim 2 depends from claim 1 and adds the limitation that the
controller, which provides angular position control for both the variable
valve lift control system and the camshaft phaser, is further comprised of a
motor operatively connected with an angular control shaft, and a servo
system extending between the variable valve lift control system and the
angular control input of the camshaft phaser.
Appellant contends that Shimizu does not disclose an angular control
shaft because Shimizu’s control shaft 132 is linear in nature and is linearly
positioned by actuator 100. App. Br. 6. Appellant’s argument is somewhat
puzzling in that any shaft, to include Appellant’s own angular control shaft
58 (Spec. 4, paras. 15, 16; fig. 1), is linear in nature from the perspective of
its longitudinal axis. Further, Appellant’s argument seems to be premised on
the claim construction that claim 2 requires the control shaft to be actuated
in a non-linear manner. While claim 2 recites an “angular control shaft,”
claim 2 does not recite that the angular control provided by the shaft must be

1 Appellant’s contentions that Shimizu does not disclose a remote control
function based on a transfer relationship (App. Br. 6) does not apply to
claims 1-3 as a remote control function is not recited in these claims.

Appeal 2009-004937
Application 11/163,956

10
accomplished in a non-linear manner. Rather, the “angular control shaft” of
claim 2 is understood to mean a shaft that provides angular control. As
explained supra, Shimizu’s control shaft 132 provides angular control via
engagement of the helical splines of slide gear 128 and the corresponding
splines of the housings (128a 128c, and 128e) (Fact 6). Appellant’s
argument is premised on a limitation not present in the claim. We are
unpersuaded by Appellant’s contention that Shimizu does not disclose an
angular control shaft as recited in claim 2.
Appellant contends that Shimizu does not disclose a servo system as
recited in claim 2, but rather discloses that drive circuit 96 of ECU 60
commands first oil control valve 98 to activate lift-varying actuator 100 to
push or pull control shaft 132 in order to change an operating parameter of
the engine 2. App. Br. 6. The Examiner found Shimizu discloses a servo
system extending between the variable valve lift control system and the
camshaft phaser, with both portions serviced by pump P and supplied with
hydraulic fluid by oil pan 144. Ans. 3-4.
We agree with the Examiner’s finding (Facts 3-8), and Appellant’s
argument does not convince us otherwise. Appellant’s argument fails to
address the finding by the Examiner in that it ignores the half of the servo
system attached to phaser 104 (i.e. second oil control valve 102 supplied by
hydraulic fluid from oil pan 144 by pump P) and thus fails to demonstrate
error in the rejection.
Claim 3
Claim 3 depends from claim 2, adding the limitation that the motor
comprises a hydraulic motor. Appellant’s Specification does not define the
term “motor,” and the term is commonly understood to mean “something,
Appeal 2009-004937
Application 11/163,956

11
such as a machine or an engine, that produces or imparts motion” (Facts 9,
10). Giving claim 3 the broadest reasonable interpretation, claim 3 requires
the motor to produce or impart motion hydraulically.
The Examiner found (Ans. 3), and we agree, that Shimizu’s lift-
varying actuator 100 imparts motion to control shaft 132 hydraulically (Fact
6).
Appellant’s arguments have failed to demonstrate error in the
rejection of claims 1-3 as anticipated by Shimizu. For that reason, we also
affirm the rejection of claims 1-3 under 35 U.S.C. § 103(a) as unpatentable
over Shimizu. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and
In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A disclosure that
anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under
35 U.S.C. § 103, for anticipation is the epitome of obviousness).
Rejection of claims 1, 2, and 4-11 under 35 U.S.C. § 103(a) as unpatentable
over Okuda and Shui ‘035, and alternatively over Okuda and Shui ‘326
Independent claims 1, 9, and 10 each contain the limitation that the
controller provides angular position control for both the variable valve lift
control system and the camshaft phaser.2
The Examiner concluded it would have been obvious to combine
Okuda’s system for controlling valve timing with the system for controlling
valve lift disclosed by either Shui ‘035 or Shui ‘326. Ans. 4-6, 8. However,
this rationale only explains why both systems would be used, but provides
no reason with a rational underpinning as to why one having ordinary skill in

2 Claim 9 recites the controller provides angular position control to the
planet carrier of the camshaft phaser. Claim 10 recites that the controller
provides angular position control of the angular input control carrier of the
camshaft phaser.
Appeal 2009-004937
Application 11/163,956

12
the art would have modified Okuda’s controller to provide position control
for both systems. As Appellant correctly points out, none of these
references disclose use of a single controller for providing angular position
control for both a variable valve lift control system and a camshaft phaser.
App. Br. 9. Thus, absent hindsight, we see no reason, and the Examiner has
not provided an adequate articulation of a reason, why a person of ordinary
skill in the art would have been led to modify Okuda’s controller to provide
angular position control for both systems. In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”).
We cannot sustain this rejection of independent claims 1, 9, and 10.
We also reverse the rejection of claims 2, 4-8, and 11 by virtue of their
dependence from claims 1 and 10.
CONCLUSIONS
Shimizu discloses each of the limitations of claims 1-3 challenged by
Appellant.
The proposed modification to add the system for controlling valve lift
of either Shui ‘035 or Shui ‘326 to the system for controlling valve timing of
Okuda is not based upon a sufficient reason with a rational underpinning to
explain why one having ordinary skill in the art would have made such a
modification.
Appeal 2009-004937
Application 11/163,956

13
DECISION
We AFFIRM the Examiner’s decision to reject claims 1-3 under
35 U.S.C. § 102(b) as anticipated by Shimizu, and under 35 U.S.C. § 103(a)
as unpatentable over Shimizu.
We REVERSE the Examiner’s decision to reject claims 1, 2, and 4-11
as unpatentable over Okuda and either Shui ‘035 or Shui ‘326.
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-IN-PART

Vsh

JEROME R. DROUILLARD
10213 TIMS LAKE BLVD.
GRASS LAKE MI 49240