DOC Code: AP.PRE.REQ
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`PRE-APPEAL BRIEF REQUEST FOR REVIEW
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`MAT—10583US
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`l hereby certify that this correspondence is being deposited with the
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`in an envelope addressed to “Mail Stop AF, Commissioner for
`Patents, P.O. Box 1450, Alexandria, VA 22313—1450" [37 CFR 1.8(a)]
`on
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`Application Number
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`Filed
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`'
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`13/813199
`First Named inventor
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`January 30’ 2013
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`Signature
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`Typed or printed
`name
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`Taichi KADONO et al.
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`Examiner
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`Nathan C. Zollinger
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`Applicant requests review of the final rejection in the above-identified application. No amendments are being filed
`with this request.
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`This request is being filed with a notice of appeal.
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`The review is requested for the reason(s) stated on the attached sheet(s).
`Note: No more than five (5) pages may be provided.
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`
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`I am the
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`applicant/inventor.
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`Signature
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`assignee of record of the entire interest.
`See 37 CFR 3.71. Statement under 37 CFR 3.73(b) is enclosed.
`(Form PTO/SB/96)
`
`Jac
`
`es
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`-
`' EIKOWICZ
`Typed or printed name
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`attorney or agent of record. 41,738
`Registration number
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`.
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`610-407-0700
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`Telephone number
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`attorney or agent acting under 37 CFR 1.34.
`
`June 11, 2015
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`Registration number if acting under 37 CFR 1.34 ___._______.____
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`Date
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`NOTE: Signatures of all the inventors or assignees of record of the entire interest or their representative(s) are required.
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`

`

`Application No.: 13/813,199
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`MAT-10583US
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`Summary of Arguments
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`Claims 1 and 2 are presently pending. All pending claims stand rejected based on
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`the combination of Sumino ‘989 and Nakamura. Appellants herein request review and
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`reversal of the rejection of claims 1 and 2 set forth in the Office Action dated March 26,
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`2015.
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`As an overview, claim 1 recites a blower having a grooved boss portion in which
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`“side walls of the groove...have straight portions formed to confront each other in parallel to
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`a longitudinal direction of the shaft and extending toward the opening from a start point
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`corresponding to a central axis of the roll pin." Claim 1 also specifies that “a distance
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`between the confronting straight portions is equal to a diameter of the roll pin."
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`The Examiner asserts that FIG. 3 of Sumino ‘989 shows the claimed sideWalls.
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`However, the Examiner is incorrect, because Sumino 989 does not show sidewalls that
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`confront each other in parallel to a longitudinal direction of the shaft. Sumino ‘989 also
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`does not clearly show where the sidewalls start, or how far apart the sidewalls are.
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`The Examiner also asserts that FIG. 5 of Nakamura shows features of the claimed
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`sidewalls. However, the Examiner is incorrect, because FIG. 5 of Nakamura does not clearly
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`show where the sidewalls start, or how far apart the sidewalls are.
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`In fact, Nakamura
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`contradicts the claimed features, by disclosing sidewalls that are farther apart than the
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`diameter of a roll pin.
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`In short, it is the Examiner’s position that “[t]here is no need for explicit" disclosure
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`in the references, because the claimed features are “self evident" from the drawings. See
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`Advisory Action dated June 2, 2015. The Examiner’s position is not supported by the
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`references, and does not meet the requirements of prima facie obviousness.
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`The above summary sets forth Appellants’ reasons for reversing the rejection set
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`forth in the Office Action. Appellants’ detailed arguments are set forth below.
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`Page 1 of 5
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`

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`Application No.: 13/813,199
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`MAT-10583US
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`Claim Re'ections Under 35 U.S.C.
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`103
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`Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Sumino
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`(JP 2010-163989) in view of Nakamura (JP 2009-250114). Claim 2 stands rejected under
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`35 U.S.C. § 103(a) as being unpatentable over Sumino‘989 and Nakamura in view of
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`Sumino (JP 2008-240605). Appellants submit that these rejections should be reversed for
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`the reasons set forth below.
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`Appellants’
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`invention, as recited by claim 1,
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`includes features which are not
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`disclosed, taught, or suggested by the applied references, namely:
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`...a groove having an opening and a bottom part engaged with
`the roll pin, side walls of the groove are slanted to widen from
`the bottom part to the opening, the side walls have straight
`portions
`formed to confront each other
`in parallel
`to a
`longitudinal direction of the shaft and extending toward the
`opening from a start point corresponding to a central axis of
`the roll pin, and a distance between the confronting straight
`portions is equal to a diameter of the roll pin.
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`The sidewalls of the groove include straight portions that confront one another in parallel to
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`the longitudinal direction of
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`the shaft.
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`The straight portions have a
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`start point
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`corresponding to the central axis of the roll pin received within the opening. The distance
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`between the confronting straight portions is equal
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`to a diameter of the roll pin. These
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`features are shown in the application at FIG. 3.
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`The Examiner asserts that FIG. 3 of Sumino ‘989 discloses the straight portions of
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`claim 1. Appellants disagree for three reasons.
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`First, FIG. 3 of Sumino ‘989 does not show sidewalls having straight portions that
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`confront one another in parallel
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`to the longitudinal direction of the shaft.
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`The walls
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`identified on page 3 of the Office Action slant outward relative to one another, and thus,
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`cannot be parallel
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`to the longitudinal direction of the shaft.
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`Sumino‘989 is therefore
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`different from claim 1, which requires sidewalls that confront one another in parallel to the
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`longitudinal direction of the shaft.
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`Second, FIG. 3 of Sumino‘989 does not clearly show a distance between the
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`sidewalls. Sumino ‘989 provides no express disclosure or teaching regarding the spacing
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`Page 2 of 5
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`

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`Application No.: 13/813,199
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`‘ MAT-10583US
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`between straight portions of the sidewalls. Nor can it be presumed that the spacing
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`between the sidewalls (which is constantly changing due to their outward slant) is ever
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`equal to the diameter of the roll pin.
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`In fact, from FIG. 3 of Sumino ‘989,
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`it appears that
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`the sidewalls are spaced by a distance that is substantially larger than the roll pin 15.
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`Sumino‘989 is therefore different from claim 1, which requires the distance between the
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`straight portions of the sidewalls to be equal to a diameter of the roll pin.
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`Third, FIG. 3 of Sumino ‘989 does not clearly show the start point of the sidewalls.
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`Sumino ‘989 provides no express disclosure or teaching regarding starting a straight portion
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`of the sidewalls at a central axis of the roll pin when it is received in the groove.
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`In fact,
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`from FIG. 3 of Sumino ‘989, it appears that the sidewalls extending from the bottom of the
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`groove, which would be below the central axis of the roll pin. Sumino‘989 is therefore
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`different from claim 1, which requires a groove having straight portions with a start point
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`corresponding to a central axis of the roll pin.
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`On this third point, the Advisory Action asserts that the “‘start point’ has no explicit
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`special meaning." The term “start point,” however, needs no “explicit, special meaning.”
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`The term’s plain meaning to one of ordinary skill
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`in the art is sufficient.
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`In claim 1, the
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`“start point” refers to a point at which the straight portions of the sidewall start. The
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`interpretation is apparent when read in light of the specification, particularly the description
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`of FIG. 3.
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`The Advisory Action goes on to allege that “[i]nterpreted broadly” Sumino‘989
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`discloses this feature. However, the Examiner offers no interpretation of this term at all,
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`instead ignoring it entirely. When the term is given a proper construction, and patentable
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`weight,
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`it
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`is apparent that Sumino‘989 does not show sidewalls having straight portions
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`that start at a point that corresponds to the central axis of the roll pin. The Examiner’s
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`rejection of this feature would read the “start point” limitation out of the claim entirely.
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`The Examiner asserts that FIG. 5 of Nakamura makes up for the deficiencies of
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`Sumino ‘989. Appellants disagree for two reasons.
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`First, FIG. 5 of Nakamura does not clearly show the start point of the sidewalls of
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`groove 107.
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`In fact, FIG. 5 of Nakamura does not show the start point of groove 107 at all,
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`let alone the sidewalls thereof. Like Sumino ‘989, Nakamura provides no express disclosure
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`Page 3 of 5
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`Application No.: 13/813,199
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`MAT-10583US
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`or teaching regarding starting the sidewalls of groove 107 at a central axis of the roll pin
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`when it
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`is received in the groove. Nakamura is therefore different from claim 1, which
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`requires a groove having straight portions with a start point corresponding to a central axis
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`of the roll pin.
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`Second, FIG. 5 of Nakamura does not clearly show a distance between the sidewalls
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`of groove 107. Nakamura provides no express disclosure or teaching regarding the spacing
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`between the sidewalls of groove 107. However, Nakamura does provide a disclosure
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`regarding the spacing between the sidewalls of the groove in another embodiment.
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`In this
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`other embodiment, shown in FIG. 1 of Nakamura, Nakamura discloses that the inside
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`dimensions of groove 7 are larger than the associated roll pin 4. See 1] 33. Thus, the only
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`express disclosure provided by Nakamura regarding the distance between sidewalls of a
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`groove is different from the features of claim 1. Nakamura is therefore different from
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`claim 1, which requires the distance between the straight portions of the sidewalls to be
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`equal to a diameter of the roll pin.
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`On this second point, the Advisory Action asserts that the “Examiner views Figure 5
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`in Nakamura in much the same way one would see a key adjacent a keyhole” such that “the
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`width of the key equals the slot for the key; otherwise, the turning effectiveness would be
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`greatly compromised.” Appellants disagree for three more reasons.
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`First, the Examiner’s “view” of FIG. 5 of Nakamura is not derived from the actual
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`disclosure of Nakamura.
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`To the contrary,
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`it conflicts with the express disclosure of
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`Nakamura, which teaches forming the sidewalls of a groove larger than the diameter of an
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`associated roll pin.
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`Second, the only support the Examiner offers for this argument is a single, unscaled
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`figure in Nakamura.
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`It is well established, however, that the proportions of features in a
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`drawing are not evidence of actual proportions when drawings are not indicated as being
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`drawn to scale. See M.P.E.P. § 2125. Thus, even if FIG. 5 of Nakamura showed that the
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`spacing between sidewalls of groove 107 was equal to the diameter of the roll pin 106,
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`it
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`would be entitled to no weight, particular inasmuch as it contradicts the express disclosure
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`of Nakamura.
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`Page 4 of 5
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`Application No.: 13/813,199
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`MAT—10583US
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`Third,
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`the Examiner’s argument constitutes impermissible hindsight. Without
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`support in the reference, the Examiner asserts that it would be obvious to form groove 107
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`to have the features of claim 1 because “otherwise, the turning effectiveness would be
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`greatly compromised.” The prior art provides no support for this alleged motivation.
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`In
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`fact,
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`inasmuch as Nakamura discloses a preferred embodiment that
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`includes a larger
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`spacing than recited in claim 1, Nakamura contradicts the alleged motivation identified by
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`the Examiner.
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`For the above reasons, Appellants submit that Sumino ‘989 in view of Nakamura fails
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`to disclose, teach, or suggest the feature of “a groove having an opening and a bottom part
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`engaged with the roll pin, side walls of the groove are slanted to widen from the bottom
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`part to the opening, the side walls have straight portions formed to confront each other in
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`parallel to a longitudinal direction of the shaft and extending toward the opening from a
`
`start point corresponding to a central axis of the roll pin, and a distance between the
`
`confronting straight portions is equal to a diameter of the roll pin,” as recited in claim 1.
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`Therefore, in view of the above, Appellants request that the‘rejection of claim 1 be
`reversed.
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`Claim 2 includes all of the features of claim 1, from which it depends. Appellants
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`submit that Sumino ‘605 fails to make up for the deficiencies of Sumino ‘989 and Nakamura
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`with respect to claim 1. Sumino ‘605 fails to disclose, teach, or suggest a boss portion
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`having a groove including the features recited in claim 1. Accordingly, claim 2 is allowable
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`for at least the reasons discussed above with respect to claim 1.
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`In conclusion, for at least the reasons set forth above, Appellants request review and
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`reversal of the rejections set forth in the Office Action dated March 26, 2015.
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`Page 5 of 5
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