Woodward, Inc.

Patent Trials and Appeals Board

Oct 4, 2021

2021002080 (P.T.A.B. Oct. 4, 2021)

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.
16/036,344 07/16/2018 Joseph H. Kim 35958-0006003 6218
26231 7590 10/04/2021
FISH & RICHARDSON P.C. (DA)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LAZO, THOMAS E
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
10/04/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH H. KIM, ROBERT P. O’HARA,
SHAHBAZ H. HYDARI, and PAWEL A. SOBOLEWSKI
____________

Appeal 2021-002080
Application 16/036,344
Technology Center 3700
____________

Before JOHN C. KERINS, SUSAN L. C. MITCHELL, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 34–46, 49, 50, 52–64, and 66, which
are all the presently rejected claims.2 Appeal Br. 1. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Woodward, Inc. Appeal Br. 1.
2 See infra note 3 (discussing the status of claims 47, 48, 51, and 65).
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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates to an actuator device and
more particularly to a rotary piston type actuator device wherein the pistons
of the rotor are moved by fluid under pressure.” Spec. ¶ 1. Claims 34
and 52 are independent. Claim 34, reproduced below with emphasis added,
is illustrative of the subject matter on appeal.
34. A rotary actuator comprising:
a first housing defining a first arcuate chamber
comprising a closed end, a first fluid port in fluid
communication with the arcuate chamber, and an open end;
a rotor assembly rotatably journaled in said first housing
and comprising a rotary output shaft and a first rotor arm
extending radially outward from the rotary output shaft; and
an arcuate-shaped first piston disposed in said first
housing for reciprocal movement in the first arcuate chamber
through the open end, wherein a first seal, the first arcuate
chamber, the closed end, and the first piston define a first
pressure chamber, and a first portion of the first piston contacts
the first rotor arm.

EVIDENCE
The Examiner relies on the following evidence in rejecting the claims
on appeal:
Garceau US 5,235,900 Aug. 17, 1993
Ito ’729 US 2013/0104729 A1 May 2, 2013
Ito ’513 US 2013/0133513 A1 May 30, 2013

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Application 16/036,344

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REJECTIONS
The following rejections are before us for review:3
I. Claims 34–36, 38–41, 43–46, 49, 50, 52–54, 56–60, 62–64, and
66 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Ito ’513. Final Act. 3–4.
II. Claims 37 and 55 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ito ’513 and Ito ’729. Id. at 5.
III. Claims 42 and 61 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ito ’513 and Garceau. Id. at 5–6.

ANALYSIS
Rejection I – Anticipation by Ito ’513
Appellant presents argument against the rejection of independent
claims 34 and 52 together, and does not set forth any additional arguments
for the other claims subject to Rejection I. See Appeal Br. 3–7; Reply
Br. 2–3. We select claim 34 as representative of the issue that Appellant
presents in this appeal, with claims 33–36, 38–41, 43–46, 49, 50, 52–54,
56–60, 62–64, and 66 standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Independent claim 34 recites a rotary actuator including a first
housing defining a first arcuate chamber having “a closed end,” a first fluid

3 We note that a rejection of claims 34–66 on the ground of
nonstatutory obviousness-type double patenting has been withdrawn by the
Examiner, in light of the filing of a terminal disclaimer, and thus, is not
before us for review as part of the instant appeal. Ans. 3; see Final Act. 6–8.
After the Examiner’s withdrawal of the double patenting rejection, it appears
that claims 47, 48, 51, and 65 are not presently subject to any rejection.
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port, and “an open end,” with a rotor assembly journaled in the first housing,
and an arcuate-shaped first piston disposed in the first housing “for
reciprocal movement in the first arcuate chamber through the open end.”
Appeal Br. 10, Claims App. (emphasis added). It is the recitation of this
“open end” of the first arcuate chamber that forms the basis of the dispute in
this appeal.
The Examiner finds that Ito ’513 discloses all of the elements as
recited in the claim. Final Act. 3–4. Of particular relevance to the disputed
issue before us, the Examiner finds that Ito ’513’s rotary actuator includes a
first housing defining a first arcuate chamber having “an open end” as
claimed. Id. at 3; see also id. at 2 (explaining that the “open end” of
Ito ’513, although not numbered, “is in the same place as the claimed
invention’s open end”); Ans. 3–5 (reiterating the same and including an
annotated reproduction of Ito ’513’s Figure 2 depicting the “open end” of
the arcuate chamber).
Appellant argues that Ito ’513 is deficient in that it lacks sufficient
disclosure of an “open end” as claimed. Appeal Br. 3–7; see Reply Br. 2–3.
This argument hinges on Appellant’s contention that the claimed “open
end,” in order to be considered “open,” must be “not enclosed, as it is open
to ambient (e.g., atmospheric) pressure.” Appeal Br. 3; see also id. at 3–4
(drawing an asserted distinction between open end 330 depicted in Figure 3,
where arcuate chamber 310 is shown without any enclosing outer housing,
and corresponding end 426 depicted in Figure 4, where arcuate chamber 422
is shown surrounded by outer housing 450).
Appellant’s contention is unavailing for multiple reasons. First, as the
Examiner correctly notes, any requirement for the “open end” to be open to
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ambient pressure is simply not recited in the claim. Ans.5; see Appeal
Br. 10, Claims App. Second, Appellant’s urging for the implication of such
a requirement based on the asserted distinction between Figures 3 and 4 is
belied by Appellant’s disclosure of the Figure 4 embodiment, where arcuate
chamber 422 (which Appellant states is not open to ambient pressure) is
described as having “open end” 426 through which piston 414 reciprocates.
Spec. ¶¶ 53–56.
Thus, on the record before us, we discern no error in the Examiner’s
interpretation of the claimed “open end” of the arcuate chamber as simply
being opposite the closed end, and being the end of the arcuate chamber
through which the piston reciprocates, as recited in the claim. In light of this
interpretation, we agree with the Examiner that the identified “open end” of
Ito ’513 (see Ans. 3–4) corresponds to the “open end” as claimed.
Accordingly, we sustain the rejection of independent claim 34, and
claims 33–36, 38–41, 43–46, 49, 50, 52–54, 56–60, 62–64, and 66 falling
therewith, under 35 U.S.C. § 102(e).

Rejections II and III – Obviousness over Ito ’513 and Ito ’729 or Garceau
With respect to the rejections of claims 37, 42, 55, and 61, which
depend directly or indirectly from one of independent claims 34 and 52,
Appellant does not set forth any additional substantive arguments separate
from those discussed above with respect to Rejection I, noting only that the
additions of Ito ’729 and Garceau “do not cure” the asserted deficiency of
Ito ’513. Appeal Br. 7–8. For the same reasons that Appellant’s argument
does not apprise us of error in Rejection I, we are likewise not apprised of
error in Rejections II and III.
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Accordingly, we sustain the rejections of claims 37, 42, 55, and 61
under 35 U.S.C. § 103(a).

DECISION
We AFFIRM the Examiner’s decision rejecting claims 34–36, 38–41,
43–46, 49, 50, 52–54, 56–60, 62–64, and 66 under 35 U.S.C. § 102(e) as
anticipated by Ito ’513.
We AFFIRM the Examiner’s decision rejecting claims 37 and 55
under 35 U.S.C. § 103(a) as being unpatentable over Ito ’513 and Ito ’729.
We AFFIRM the Examiner’s decision rejecting claims 42 and 61
under 35 U.S.C. § 103(a) as being unpatentable over Ito ’513 and Garceau.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

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CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
34–36,
38–41,
43–46, 49,
50, 52–54,
56–60,
62–64, 66
102(e) Ito ’513
34–36,
38–41,
43–46,
49, 50,
52–54,
56–60,
62–64, 66

37, 55 103(a) Ito ’513, Ito ’729 37, 55
42, 61 103(a) Ito ’513, Garceau 42, 61
Overall
Outcome

34–46,
49, 50,
52–64, 66

AFFIRMED