11032790 (B.P.A.I. Nov. 24, 2009)

Ex Parte Sowul et al

Board of Patent Appeals and InterferencesNov 24, 2009

11032790 (B.P.A.I. Nov. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte HENRYK SOWUL, ANATOLY FILANOVSKY, MICHAEL B. SOLT, FREDRICK R. POSKIE and JAMES W. HAYNES ____________ Appeal 2008-004646 Application 11/032,790 Technology Center 3600 ____________ Decided: November 24, 2009 ____________ Before JENNIFER D. BAHR, LINDA E. HORNER, and JOHN C. KERINS, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2008-004646 Application 11/032,790 2 STATEMENT OF THE CASE Henryk Sowul et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 2 and 4. Claim 3, the only other claim pending in this application, is objected to as being dependent on a rejected base claim. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF DECISION We REVERSE. THE INVENTION Appellants’ invention is directed to a planet carrier assembly having a housing that retains pinion gears on pinion pins, and a locator ring that engages slots on the pinion pins to prevent the pinion pins from moving axially in the housing and from rotating relative to the housing. (Spec. 2, para. [0007]). Independent claim 1 is reproduced below, and is representative of the overall claimed subject matter: 1. A planet carrier assembly comprising; a housing member; a plurality of pinion pins disposed in said housing member and rotatably supporting pinion gear members; said housing member having formed thereon a housing slot and a cavity; a locator ring mounted on said housing in a position to engage pinion slots formed in each of said pinion pins, said locator ring including an inner rim having tab members formed thereon for Appeal 2008-004646 Application 11/032,790 3 engaging said housing slot and said locator ring including protuberances formed thereon for engaging said cavity. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Leggat US 4,901,601 Feb. 20, 1990 Tanikawa US 6,918,853 B2 Jul. 19, 2005 The Examiner has rejected: (i) claims 1, 2 and 4 under 35 U.S.C. § 102(b) as being anticipated by Leggat; and (ii) claim 1 under 35 U.S.C. § 102(b) as being anticipated by Tanikawa. ISSUES The Examiner found that the Leggat patent identically discloses the invention set forth in claims 1, 2 and 4. Appellants contend that the Leggat patent does not disclose tab members on a locator ring for engaging a housing slot. The issue presented with respect to the rejections based on Leggat is whether Appellants have carried the burden of demonstrating that the Examiner erred in finding that Leggat discloses this claim element. The Examiner found that the Tanikawa patent identically discloses the subject matter of claim 1. Appellants contend that Tanikawa does not disclose the claimed protuberances formed on a locator ring. The issue presented with respect to the rejection based on Tanikawa is whether Appellants have carried their burden of establishing that the Examiner erred in finding that Tanikawa discloses the claimed protuberances. Appeal 2008-004646 Application 11/032,790 4 FINDINGS OF FACT The following enumerated findings of fact (FF) 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). FF 1. The ordinary and customary meaning of the term “engage”, in a mechanical sense, is “[t]o interlock or cause to interlock; mesh”. THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2009). FF 2. The ordinary and customary meaning of the term “protuberance”, is “something, such as a bulge, knob, or swelling, that protrudes”. THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2009). PRINCIPLES OF LAW Anticipation under 35 U.S.C. § 102 requires that “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., Inc. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). In interpreting claim language, we apply the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2008-004646 Application 11/032,790 5 ANALYSIS Claims 1, 2 and 4--Anticipation by Leggat The Examiner found that, in the Leggat assembly, the regions extending between notches or recesses 64 (termed “edge ‘A’” by Appellants, as per the annotated drawing appearing at page 6 of the Appeal Brief) on the inner part of the locator ring 52 are responsive to the claimed tab members, and that an aperture disposed in side plate 36, not illustrated but described as retaining a roll pin 58 therein (Leggat, col. 3, ll. 50-52 and 57-62), constitutes a housing slot, as claimed. (Answer 4-5). Appellants argue, inter alia, that even if the inter-notch regions are properly construed as being tab members and the aperture in the side plate is properly construed as being a housing slot, the tab members do not engage the housing slot. (Reply Br. 4). The Examiner, in response to Appellants’ initial arguments, effectively concedes that the tab members of Leggat do not engage the aperture or housing slot directly. (Answer 5). Rather, the Examiner points out that the aperture receives roll pin 58 therein, and that the roll pin is received in notches 64 between the tab members, and thus the tab members engage the aperture (housing slot) through the roll pin. (Id.). Appellants contend that the Examiner’s interpretation of “engage” is inconsistent with the ordinary and customary meaning of the term “engage”, and is inconsistent with the manner in which Appellants use the term in the Specification. (Reply Br. 5). Appellants point to dictionary definitions which evidence that “engage” is understood to mean “to interlock with; mesh” or “to cause [mechanical parts] to mesh”, and that the term connotes “working contact”. (Id.)(See also FF 1). Appellants further point out that Appeal 2008-004646 Application 11/032,790 6 the embodiments disclosed in their application do not contemplate an indirect engagement of the tab members and the housing slot via an intermediary member, and that they employ the term in a manner consistent with the ordinary and customary meaning. While the Examiner and we are charged with giving claim terms their broadest reasonable meaning consistent with the Specification, here, we are persuaded that the term “engage” is being interpreted unreasonably broadly in view of the usage of the term in the Specification and its ordinary and customary meaning. The Leggat device, in which a roll pin is fitted into an aperture/housing slot and engages a recess between tab members, cannot reasonably be construed as disclosing the claimed tab members for engaging, or interlocking or meshing with, the aperture/housing slot. Appellants have demonstrated that the rejection of claim 1 as anticipated by Leggat, and of claims 2 and 4 which depend directly or indirectly from claim 1, is in error. Claim 1--Anticipation by Tanikawa The Examiner found that the Tanikawa patent discloses a locator ring 160 including protuberances in the form of an unlabeled outer portion of the ring that projects into cavity 150e of housing 150 to engage that cavity. (Answer 4). The Examiner acknowledges that the outer rim portion asserted to constitute the claimed protuberances is smooth and annular, nonetheless the Examiner maintains that that portion protrudes radially outwardly and engages the groove or cavity. (Answer 7). Appellants contend that the Examiner has attributed an unreasonably broad meaning to the term “protuberance” in finding that a smooth, annular outer portion of a ring can be regarded as a protuberance as claimed. (Reply Appeal 2008-004646 Application 11/032,790 7 Br. 7-8). Appellants cite to a dictionary definition of “protuberance” as “[s]omething, such as a bulge, knob or swelling that protrudes” (Appeal Br. 10), and “protuberant”, as “thrusting out from a surrounding or adjacent surface”. (Reply Br. 8) (See also FF2). Appellants contend that a smooth annular outer portion of a ring is not akin to a bulge or a knob, and does not thrust outwardly relative to any surrounding or adjacent surface. (Reply Br. 8). Appellants note that the broad meaning attributed to the term “protuberance” by the Examiner would result in the outer peripheral part of any circular ring being a protuberance with respect to the ring itself. (Reply Br. 8). We agree with Appellants that to consider an outer portion of the locator ring of Tanikawa, which is admitted to have a smooth, annular outer contour, as being a protuberance on the locator ring, is giving an unreasonably broad and erroneous meaning to the term “protuberance”. In effect, this meaning would have us drawing an imaginary or hypothetical circular line of demarcation around the locator ring in Tanikawa, in between its inner and outer edges, with the radially inward portion constituting the ring itself and the radially outward smooth, annular portion constituting a protuberance or protuberances on the ring. Tanikawa in no way teaches or suggests such a construction, and neither Appellants’ Specification, nor the common and ordinary meaning of the term, support such an interpretation. Appellants have demonstrated that the rejection of claim 1 as anticipated by Tanikawa is in error. Appeal 2008-004646 Application 11/032,790 8 CONCLUSIONS Appellants have established that the Examiner erred in rejecting claims 1, 2 and 4 under 35 U.S.C. § 102(b) as anticipated by Leggat, and erred in rejecting claim 1 under 35 U.S.C. § 102(b) as anticipated by Tanikawa. DECISION The decision of the Examiner to reject claims 1, 2 and 4 is reversed. REVERSED mls LESLIE C. HODGES GENERAL MOTORS CORPORATION LEGAL STAFF, MAIL CODE 482-C23-B21 P.O. BOX 300 DETROIT, MICHIGAN 48265-3000