Ex Parte Turner

Board of Patent Appeals and Interferences

Mar 29, 2002

09251602 (B.P.A.I. Mar. 29, 2002)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID TURNER
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Appeal No. 2001-0724
Application No. 09/251,602
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HEARD: March 21, 2002
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Before HAIRSTON, LEVY, and BLANKENSHIP, Administrative Patent Judges.
BLANKENSHIP, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final
rejection of claims 1-9.
We affirm-in-part.
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Application No. 09/251,602
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BACKGROUND
The invention is directed to an integral throttle body and torque motor.
Representative claim 1 is reproduced below.
1. A motorized throttle valve assembly comprising:
(a) a throttle body defining an engine air inlet passage therethrough;
(b) shaft means extending transversely through said inlet passage and
journalled for rotational movement on said body, said shaft means including
driving portions thereof extending externally of said throttle body;
(c) a valve member disposed in said inlet passage and rotationally
moveable with said shaft means;
(d) a rotor including material having a relatively high magnetic
permeability disposed on said shaft means in driving arrangement with said shaft
means, and including a plurality of magnetized pole segments thereon;
(e) a motor housing having a stator of relatively high magnetic
permeability therein, said stator having a coil of conductive material wound
thereon and defining a pair of axial pole segments;
(f) a mounting member having said motor housing attached thereto
retaining said rotor therein with said shaft means received through said motor
housing, said rotor pole segments each defining an axial air gap with said stator
pole segments wherein said motor housing, said rotor, said stator with said coil,
said shaft means and said mounting member are formed in a sub-assembly and
pre-calibrated;
(g) means for attaching said sub-assembly to said throttle body; and,
(h) connector terminal means connected to said coils and adapted for
electrical connection thereto externally.
The examiner relies on the following references:
Kawahira 4,650,156 Mar. 17, 1987
Shiraki et al. (Shiraki) 4,651,041 Mar. 17, 1987
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Miller et al. (Miller) 4,947,893 Aug. 14, 1990
Hawsey et al. (Hawsey) 4,996,457 Feb. 26, 1991
Claims 1, 2, 4, 8, and 9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Shiraki and Miller.
Claims 3, 5, and 7 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Shiraki, Miller, and Kawahira.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Shiraki, Miller, and Hawsey.
Claims 10-17 have been withdrawn from consideration.
We refer to the Final Rejection (mailed Nov. 4, 1999) and the Examiner's Answer
(mailed Jun. 14, 2000) for a statement of the examiner's position and to the Brief (filed
May 2, 2000) for appellant’s position with respect to the claims which stand rejected.
OPINION
In response to the section 103 rejection of claims 1, 2, 4, 8, and 9 as being
unpatentable over Shiraki and Miller, appellant asserts (Brief at 3) that the examiner
proposes to combine the teachings of “non-relevant art with those of relevant art.” We
understand appellant’s position to be that Miller is not analogous prior art. Whether a
reference in the prior art is "analogous" is a fact question. In re Clay, 966 F.2d 656,
658, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992). Appellant’s argument thus contests the
underlying, implicit finding that Miller is analogous art.
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Application No. 09/251,602
1 Appellant recognizes Shiraki as being in appellant’s field of endeavor (Brief at 3). A showing that
Miller is within Shiraki’s field of endeavor would, by implication, serve as a showing that Miller is within
appellant’s field of endeavor.
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Two criteria have evolved for determining whether prior art is analogous: (1)
whether the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the particular problem with which
the inventor is involved. Id. at 658-59, 23 USPQ2d at 1060.
The examiner responds (Answer at 7) that Miller is within the same field of
endeavor as Shiraki, as both references are classified in class 251, entitled “Valves and
Valve Actuation.”1 Classification carries some weight in determining whether a
reference is analogous art; however, similarities and differences in structure and
function of the inventions carry far greater weight. See In re Deminski, 796 F.2d 436,
442 n.3, 230 USPQ 313, 315 n.3 (Fed. Cir. 1986); In re Ellis, 476 F.2d 1370, 1372, 177
USPQ 526, 527 (CCPA 1973).
Here, Shiraki and Miller are similar in structure and function because, as the title
of the classification indicates, both inventions are directed to valves for controlling the
flow of fluid in a system, and mechanisms for actuating the valves. We therefore agree
with the examiner that the references satisfy the first criterion for analogous art because
they are within the field of the inventor's endeavor. We also agree with the examiner
that, even with the assumption that Miller is not within the inventor’s field of endeavor,
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Miller is reasonably pertinent to the particular problem with which the inventor is
involved.
We are informed by appellant’s specification (page 2, ll. 14-29) that known
engine throttle torque motor arrangements required difficult and complex operations to
install and calibrate, and further that appellant wished to develop a torque motor that
was easy to assemble, install, and calibrate. Miller discloses (particularly at col. 2, ll.
34-36 and col. 3, ll. 20-22) that using precalibrated sub-assemblies eases assembly of
a valve and valve actuator. We therefore find that Miller also meets the second
criterion for analogous prior art.
Appellant also alleges that “[i]t is error on the part of the Examiner to propose
such a combination because it requires total reworking of not only the structure, but the
function of the teachings of the reference.” (Brief at 3.) “Claim 1 clearly recites that the
torque motor subassembly has the shaft extending outwardly therefrom prior to
assembly onto the throttle body.” (Id.) However, we do not find such requirement in
apparatus claim 1; appellant’s argument thus appears to be not commensurate in
scope with the claims which define the invention.
Claim 1 recites, “wherein said motor housing, said rotor, said stator with said coil,
said shaft means and said mounting member are formed in a sub-assembly and pre-
calibrated.” The functional clause is not specific with respect to any arrangement of the
structures so as to modify the structures previously set forth in the claim. Moreover,
process steps per se cannot serve to limit the product claims. See In re Stephens, 345
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F.2d 1020, 1023, 145 USPQ 656, 658 (CCPA 1965) (“We think it well settled that the
presence of process limitations in product claims, which product does not otherwise
patentably distinguish over the prior art, cannot impart patentability to that product.”).
The relevant inquiry is how the process recitations might define structure. See, e.g., In
re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1969) (recitation of
“interbonded one to another by interfusion between the surfaces of the perlite particles”
construed as structural limitation in product claim); In re Dike, 394 F.2d 584, 589, 157
USPQ 581, 585 (CCPA 1968) (no error in USPTO board holding that term “blow-
molded” in claims drawn to integral plastic container and handle failed to distinguish
over prior art, because term related to process of making the article, and was not
definitive as to the structure of the article).
Appellant has not pointed out any structure that may be defined by the implicit
process limitations of forming the motor housing, rotor, stator with coil, shaft means,
and mounting member in a sub-assembly and pre-calibrating the structures. We
therefore find the argument that Shiraki as modified by the teachings of Miller would
require a “total reworking” of Shiraki to be unpersuasive.
Appellant having not presented separate arguments for patentability with respect
to the dependent claims, we sustain the rejection of claims 1, 2, 4, 8, and 9 as being
unpatentable over Shiraki and Miller. See 37 CFR § 1.192(c)(7).
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We turn to the rejection of claims 3, 5, and 7 under section 103 as being
unpatentable over Shiraki, Miller, and Kawahira. We do not sustain the rejection of
these claims, for the reasons advanced by appellant on pages 4 and 5 of the Brief.
Even if Kawahira is taken to disclose “a hollow (28) [Fig. 1] in the throttle body
(18) with the motor housing member (42) received in the hollow and the mounting
member (48) serving as a closure for the hollow” (Answer at 6), the structures of instant
claim 3 cannot be read in isolation, but as further limiting the structures of claim 1. In
particular, the rejection of claim 1 reads the combination of structures set forth as
including “throttle body” 1, “motor housing” 16, and “mounting member” 11, as shown in
Figure 1 of Shiraki. In view of the references applied, we do not find suggestion for the
subject matter as a whole for instant claim 3.
Similarly, with respect to claim 5, the rejection points out “mounting member” 48
having “electrical terminals” 50 in the Kawahira reference. However, Shiraki discloses a
“mounting member” 11, as contemplated by the rejection of claim 1. We agree with
appellant that the references as applied would not have suggested the subject matter of
claim 5.
Instant claim 7 requires that the motor housing is snap-locked onto the mounting
member. The “snap-locked” arrangement of appellant’s invention is described at page
4, lines 18 through 22 of the specification, and illustrated as slots 38 and tabs 40 in
instant Figure 3. We agree with appellant that the combination of references, including
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the disclosure of bracket 42 being “force-fitted” into wall 62 of Kawahira (col. 7, ll. 38-
44; Fig. 3), would not have suggested all the requirements of instant claim 7.
Appellant has not responded to the rejection of claim 6 under section 103 as
being unpatentable over Shiraki, Miller, and Hawsey. The rejection relies on Hawsey
(e.g., col. 4, ll. 11-17) for the teaching of the annular member being formed substantially
of an alloy of iron, neodymium, and boron. Appellant having not shown error in the
rejection, we sustain the section 103 rejection of claim 6.
In summary, we have sustained the section 103 rejection of claims 1, 2, 4, 6, 8,
and 9, but have not sustained the rejection of claims 3, 5, and 7.
CONCLUSION
The rejection of claims 1, 2, 4, 6, 8, and 9 under 35 U.S.C. § 103 is affirmed, but
the rejection of claims 3, 5, and 7 under 35 U.S.C. § 103 is reversed. The examiner’s
decision in rejecting claims 1-9 is thus affirmed-in-part.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
Appeal No. 2001-0724
Application No. 09/251,602
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