Ex Parte Telep et alDownload PDFPatent Trial and Appeal BoardJan 29, 201814563067 (P.T.A.B. Jan. 29, 2018) Copy Citation 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. 14/563,067 12/08/2014 ROBERT J. TELEP DKT13192B 1051 (0016.0004.002) 67424 7590 BrooksGroup 48685 Hayes Shelby Township, MI 48315 EXAMINER JELLETT, MATTHEW WILLIAM ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 01/30/2018 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 ROBERT J. TELEP and MURRAY F. BUSATO Appeal 2017-003293 Application 14/563,0671 Technology Center 3700 Before EDWARD A. BROWN, JAMES P. CALVE, and FREDERICK C. LANEY, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert J. Telep and Murray F. Busato (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—13. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. INVENTION 1 According to Appellants, as of September 28, 2016, the real part in interest is BorgWamer Incorporated. Appeal Br. 3. Appeal 2017-003293 Application 14/563,067 Appellants’ invention relates to an actuator and valve arrangement. Spec. p. 25 (Abstract). Illustrative claim 1 is an independent claim and reads as follows with added emphasis to highlight the language central to Appellants’ dispute: 1. A product comprising: at least one housing, a valve stem having a longitudinal axis and supported in the housing for providing for axial movement, a cam-gear supported in the housing and having a central axis of rotation, and including a cam portion integrated therewith and formed about the central axis of rotation, the cam-gear having a plurality of teeth; an electric motor having a motor shaft, and a pinion gear having a plurality of gear teeth, the pinion gear connected to the motor shaft to be rotated thereby, the pinion gear being connected to the cam gear to rotate the cam gear; wherein, when the cam-gear and cam portion are rotated, the cam portion operably transmits a force to the valve stem causing the valve stem to move axially and; wherein the central axis of rotation of the cam portion is offset by a distance from the longitudinal central axis of the valve stem and so that the force transmitted by the cam portion to valve stem is essentially along the longitudinal central axis of the valve stem. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1—3, 5, and 9 under 35 U.S.C. § 102(a) as anticipated by Makino (US 4,690,119, iss. Sept. 1, 1987). II. The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as unpatentable over Makino. 2 Appeal 2017-003293 Application 14/563,067 III. The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as unpatentable over Makino and Lebkuchner (US 6,095,485, iss. Aug. 1,2000). IV. The Examiner rejected claims 1—5, 8, and 11—13 under 35 U.S.C. § 103(a) as unpatentable over Bircann (US 7,461,642 B2, iss. Dec. 9, 2008) and Makino. V. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over Bircann, Makino, and Baumann (US 4,729,544, iss. Mar. 8, 1988). ANALYSIS Rejection I Appellants challenge whether the Examiner has shown by a preponderance of the evidence that Makino discloses a cam portion integrated with a cam-gear that has a common central axis of rotation, which is offset by a distance from the longitudinal central axis of the valve stem “so that the force transmitted by the cam portion to valve stem is essentially along the longitudinal central axis of the valve stem,” as claims 1 and 5 require. Appeal Br. 6—7. To support prior knowledge of this limitation, the Examiner relies solely on an annotated version of Figure 2 in Makino, which is reproduced below. Final Act. 5—6; Ans. 16—17. 3 Appeal 2017-003293 Application 14/563,067 Figure 2 above illustrates a right side elevation of the EGR valve that Makino discloses with a part broken away. Makino col. 2,11. 38-41, Fig. 2. The Examiner finds the device in Figure 2 shows “force from the camming surface of 6a transmits a vertical force vector that is centered along the valve stem shaft.” Ans. 17. The Examiner reasons this force is caused by the “cam surface” 6a acting against flange 3b, which extends away from the outer diameter of the valve stem 3, to drive the valve into the open position. Id. Appellants assert the Examiner’s representation of the force vector direction is incorrect, but do not otherwise dispute how the Examiner characterizes the operation of the Makino device. Appeal Br. 7. The force 4 Appeal 2017-003293 Application 14/563,067 vector, according to Appellants, would actually be “skewed with respect to the longitudinal axis of the stem of the valve” and not essentially along the longitudinal central axis of the valve stem. Reply Br. 4; see Appeal Br. 7. Resolution of this dispute centers on the interpretation of “essentially along the longitudinal central axis.” The Specification, at paragraph 49, describes an embodiment of the invention as having a “point of contact between the cam portion 245 and bearing 229 [which] is shown as point 257 in figure 12.” It describes this “point of contact” as “essentially on the longitudinal central axis 255 of valve stem 206.” See Spec. para. 49, Fig. 12. This configuration “will cause the force, transmitted by the cam portion 245 to bearing 229, to be applied essentially along the longitudinal central axis 255 of valve stem 206.” Id. The Specification explains a force applied along the longitudinal central axis “may minimize radial forces on the valve stem that may cause friction and reduce the axial force applied to valve stem 206.” Id. (emphasis added). Consistent with how Appellants describe a device embodying the claimed invention, the plain meaning of “along” is “in a line matching the length or direction of... ; also: at a point or points on.” See Mask Definition, Merriam-Webster.com, http://www.merriam- webster.com/dictionary/along (last visited on Jan. 24, 2018). With the context of the claims and Specification informing our understanding of the broadest reasonable interpretation of the phrase “essentially along the longitudinal central axis,” which describes the location and direction the cam portion applies a force, we interpret this phrase as requiring the cam portion to have a point of contact with the valve stem assembly that is essentially at the central portion of the valve stem, such that, 5 Appeal 2017-003293 Application 14/563,067 when a force is applied, it travels through the central portion of the valve stem. While “essentially” broadens the scope of the location by some extent, it cannot reasonably broaden the scope to include a location that necessarily applies a radial force on the valve stem. Applying this interpretation, because the lever element 6a acting against flange 3b in the device illustrated in Figure 2 of Makino applies a force at a point of contact that is located on the flange 3b at the outermost diameter of the valve stem, the force is not essentially along the longitudinal central axis of the valve stem. The Makino device, moreover, depicts lever element 6a as located at a point that would cause radial forces on the valve stem, which are the kind of forces the claimed location is intended to avoid. Because lever element 6a pivots about shaft 7 via lever 6 (Makino, 2:56—64), lever element 6a moves along an arcuate path that is not essentially along the longitudinal central axis of valve stem 3 in Figure 2. Asa result, the Examiner’s reliance on Figure 2 does not support, by a preponderance of the evidence, Makino’s disclosure of a cam portion integrated with a cam-gear, which share a common central axis of rotation that is offset by a distance from the longitudinal central axis of the valve stem “so that the force transmitted by the cam portion to valve stem is essentially along the longitudinal central axis of the valve stem,” as claims 1 and 5 require. Therefore, we do not sustain the Examiner’s rejection of claims 1—3 and 5. Rejections II and III Because claims 9 and 10 depend from claim 1, the rejection of these claims are necessarily dependent on the Examiner finding Makino 6 Appeal 2017-003293 Application 14/563,067 anticipates claim 1. See Final Act. 8—10. As a result, the Examiner’s rejection of claims 9 and 10 is deficient for the same reasons discussed above (see supra Rejection I) for claim 1. Therefore, we do not sustain the rejection of claims 9 and 10. Rejections IV and V Rejecting claims 1—8 and 11—13, the Examiner relies on a finding that Bircann discloses a cam-gear including a cam portion integrated therewith. Final Act. 10—18. Appellants assert this finding lacks sufficient evidentiary support because Bircann simply discloses a “cam plate,” and not a cam-gear. Appeal Br. 9. We agree. In Figures 1 and 2 of Bircann, the Examiner identifies element 42 as showing a cam-gear. Final Act. 10. Bircann, as Appellants argue, describes element 42 as a “cam plate.” Bircann col. 2,11. 49—52. In addition, Bircann teaches driving element 42 directly by electric motor 54 via shaft 44. Id. col. 2,11. 49—59. The Examiner determines cam plate 42 is a cam-gear because the broadest reasonable interpretation of “cam-gear” includes any cam structure that is “leveraged via a gear transmission for rotation about the central axis thereof.” Final Act. 10. The Examiner concludes, “[cam-gear] was taken to mean a [cam] part connected in some fashion to a gear (i.e., the transmission of Bircann) so as to provide a camming action.” Ans. 20 (emphasis added). Therefore, the Examiner reasons that the cam plate 42 in Bircann is a cam-gear because it is “a part of the force transmission from the gears in the transmission of Bircann to the camming action on the roller transmitted to the stem.” Id. at 19. 7 Appeal 2017-003293 Application 14/563,067 Within the context of the claims and Specification, we agree with the Examiner that “cam-gear” connotes “a ‘part’ having [a] cam portion and [a] gear portion arranged thereon to provide dual camming and gearing action.” Ans. 19. However, the Examiner’s further determination that the cam and gear portion need only be “connected in some fashion,” so as to broaden the scope of “gear-cam” to include any arrangement wherein a cam and a gear are associated to allow for the transmission of a force from a gear to a cam at some point along its path, propounds an unreasonably broad interpretation. Id. at 19—20. Under this interpretation, the Examiner finds a gear, which is part a motor transmission, together with a structurally separate and distinct cam plate, which is located at the end of the motor’s driveshaft, form a “gear-cam” because the driveshaft imparts a rotational force onto the cam. See Final Act. 10; Ans. 19—20. The Examiner’s interpretation is improper because neither the claims nor the Specification supports such a tenuous and indirect connection between the cam and gear. In the context of the claims, the “cam-gear” and “motor” are identified consistently as structurally separate and distinct parts. See Appeal Br. 12—16 (Claims App.). Additionally, the claimed cam-gear is limited to having “a cam portion integrated therewith,” which indicates the gear and cam are configured to form a unit. Id. Although “integrated therewith” broadens the allowable configurations that may form a “gear- cam,” it does not eliminate the necessity for the parts to be configured to form a unit. The Specification is consistent with this understanding. See Spec, paras. 22, 40, Figs. 3B, 8B (elements 238, 245). 8 Appeal 2017-003293 Application 14/563,067 Therefore, because the Examiner relied upon an improper interpretation of “cam-gear,” element 42 fails to support, by a preponderance of the evidence, a finding Bircann discloses a cam-gear. Bircann’s cam 42 does not include a gear/teeth integrated therewith. Even if Makino teaches a cam-gear as toothed portion 8a integral with a cam portion (lever 6 and end 6a) as the Examiner finds (Final Act. 11), combining this feature with Bircann as the Examiner proposes would not result in the force from the cam portion being transmitted “essentially along/along (claim 5) the longitudinal central axis of the valve stem” as recited in independent claims 1, 4, and 5 for the reasons discussed above for the first rejection. See Appeal Br. 9. Therefore, we do not sustain the Examiner’s rejection of claims 1—8 and 11— 13. DECISION We reverse the rejections of claims 1—13. REVERSED 9 Copy with citationCopy as parenthetical citation