Ex Parte Yagi et alDownload PDFBoard of Patent Appeals and InterferencesApr 16, 201010942107 (B.P.A.I. Apr. 16, 2010) Copy Citation 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 Claim 5 is illustrative: 1 The appeal of claims 1, 2, 8, 10-13, and 21 has been withdrawn by Appellants and the claims have been canceled. Appeal 2010-000081 Application 10/942,107 2 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 Appeal 2010-000081 Application 10/942,107 3 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 Appeal 2010-000081 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. Appeal 2010-000081 Application 10/942,107 5 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 cam SUGHRUE – 265550 2100 PENNSYLVANIA AVE., NW WASHINGTON, DC 20037-3213 Copy with citationCopy as parenthetical citation