Ex Parte Yagi et al

Board of Patent Appeals and Interferences

Apr 16, 2010

10942107 (B.P.A.I. Apr. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIROSHI YAGI
and
RYOJI UTO
____________

Appeal 2010-000081
Application 10/942,107
Technology Center 1700
____________

Decided: April 16, 2010
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 3-7, 9, 14-19, and
23.1 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6. Claim
5 is illustrative:

1 The appeal of claims 1, 2, 8, 10-13, and 21 has been withdrawn by
Appellants and the claims have been canceled.
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Application 10/942,107

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5. A strainer for an oil supply mouth comprising:

a network part for filtering impurities;

a frame body for supporting the network part, that is formed to be
substantially in a cup shape, and includes an opening at a upper part thereof,
the frame body including a plurality of frames for maintaining rigidity of the
frame body;

a guide hole formed in a vertical direction through the frame body
along a side wall of the body;

a float for an oil level gauge which is inserted movably in the vertical
direction within the guide hole;

wherein the network part is supported by the frames and covers the
frames;

wherein, at a top portion of the strainer, the side wall of the body is an
outer wall;

wherein the guide hole remains along the side wall at the top portion
of the strainer; and

wherein the frame forming the side wall comprises a hollow portion
that forms the guide hole and passes through the frame.

The Examiner relies upon the following references in the rejection of
the appealed claims:
Gorans 3,630,083 Dec. 28, 1971
Attinello 4,901,776 Feb. 20, 1990
Koji JP 08-155222 Jun. 18, 1996

Appellants' claimed invention is directed to a strainer comprising a
network part for filtering impurities and a frame body for supporting the
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Application 10/942,107

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network part. The frame body is in substantially cup shape and includes an
opening at its upper part as well as a plurality of frames for maintaining
rigidity of the body. A sidewall of the frame comprises a hollow portion that
forms a guide hole that receives a float for an oil level gauge that is
moveably inserted in the guide hole. Stated otherwise, the side wall of the
frame has a vertical hole therein for receiving a float for an oil level gauge.
Appealed claims 3-7, 9, 14, 15, 18, and 23 stand rejected under
35 U.S.C. § 112, second paragraph. Claims 3, 5, 7, 9, 16, 19, and 23 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Koji. Claims 4, 6,
14, 15, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Koji in view of Gorans. Claim 17 stands rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Koji in view of Attinello.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we are in agreement with
Appellants that the Examiner's rejections are not sustainable.
We consider first the Examiner's rejection under § 112, second
paragraph. According to the Examiner, there is insufficient antecedent basis
in claim 5 for the language "the frame forming the side wall" at line 14. The
Examiner further states that "[c]laim 5 also appears to recite that the frame
forming the side wall passes through the frame" (Ans. 4, first para.).
However, while we appreciate that claim 5 is somewhat unartfully crafted,
we have no doubt that one of ordinary skill in the art, upon reading the claim
language in light of the present specification, would readily understand that
the frame body has a side wall comprising a hollow portion that forms a
guide hole into which a float for an oil level gauge is inserted. While we
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Application 10/942,107

4
appreciate that the last clause of claim 5 can be technically read as the frame
that forms the side wall passes through the frame, such a reading would be
nonsensical. It is by now axiomatic that claim language is not to be read in a
vacuum but in light of the supporting specification as it would reasonably be
read by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 1548
(Fed. Cir. 1983); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Also,
claims are not to be read in manner that renders them inoperative. In re
Kamal, 398 F.2d 867, 872 (CCPA 1968); In re Sarett, 327 F.2d 1005, 1019
(CCPA 1964).
We now turn to the Examiner's § 102 rejection of Koji. The appealed
claims define a strainer as comprising a frame body having a side wall
comprising a hollow portion into which a float is inserted. We cannot
subscribe to the Examiner's position that portions (10) and (11) of Koji's
strainer form a side wall having guide holes therein. While the Examiner
cites Figures 2, 4, and 5 of Koji to support his position, we fully concur with
Appellants that the figures of Koji do not depict portions (10) and (11) as
side wall portions "but are in fact upper and lower mounting plates attached
to the top and bottom of the strainer body 9" (App. Br 12, last para.). As
accurately pointed out by the Appellants, "the holes through which the rod is
inserted are described as being formed in extensions (10a and 11a), which
extend outward from the plates 10 and 11, away from the strainer body 9"
(id.). In our view, features 10a and 11a, which are described by Koji as
extension sections from tie-down plates 10 and 11, cannot be reasonably
considered as portions of a side wall. Manifestly, they are portions of plates
10 and 11.
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Application 10/942,107

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The Examiner's additional citation of Gorans and Attinello to support
separate § 103 rejections does not remedy the deficiencies of Koji discussed
above.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner's rejections.
REVERSED

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