United States Court of Customs and Patent Appeals, August 2, 1962

[Reversed.]

Appeal from Patent Office, Serial No. 431,868

Frank J. Soucek and T. L. Chisholm, for appellant.

Clarence W. Moore (George C. Roeming, of counsel) for the Commissioner of Patents.

[Oral argument January 8, 1962, by Mr. Chisholm and Mr. Roeming]

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK.1

SMITH, Judge, delivered the opinion of the court:

Applicant has appealed from a decision of the Board of Appeals, adhered to on reconsideration, which affirmed the examiner's final rejection of claims 110 through 113, inclusive, of appellant's application for patent Serial No. 431,868, filed May 24, 1954, for a "Multiple Stage Torque Converter Drive".

The examiner rejected the appealed claims solely on the ground that they are not supported by the disclosure. The sole issue to be decided in this appeal is whether the board was correct in affirming this rejection. Appellant, at oral argument, withdrew claim 112 from this appeal. Claim 110 was treated by the board as representative of the remaining claims 111 and 113 on appeal. Therefore, our decision as to whether claim 110 is supported by the disclosure is dispositive of that question for all claims on appeal.

Appellant's application discloses a complex hydraulic transmission for motor vehicles. A complete description of appellant's invention is unnecessary since the issue on appeal directly concerns only a part of appellant's invention. The particular part involved is a power-operated clutch or an equivalent friction device which is engaged by hydraulic pressure and has a timing device which controls the rate of flow of the hydraulic fluid to cause the force engaging the clutch to rapidly move the clutch to the position of initial engagement, and then slowly increase the engagement force until the clutch is completely engaged. Such a rapid initial movement is desirable in order to reduce the time necessary for initial clutch engagement, and thereafter to build up a gradual increase in pressure to gently and smoothly complete engagement. A portion of figure 12 from the specification is reproduced below and shows the only portions of the mechanism with which we are here concerned.

1 United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'Connell, pursuant to provisions of Section 294 (d), Title 28, United States Code.

Claim 110, which as previously stated, is representative of all appealed claims, is as follows:

110. A device for the automatic control of friction means, comprising in combination [1] a power driven actuator operative to produce an actuating force for the engagement of said friction means, an adjustable power control member for controlling said actuator, a source of power providing an actuating force, connecting means connecting said power driven actuator with said source through said power control member including [2] means for reducing said actuating force supplied by said source, a time-controlled element movable under the influence of a force and adapted during movement thereof to control the rate of engagement of said friction means by said power-driven actuator, [3] means for reducing the strength of said last-mentioned force during the largest part of movement of said time controlled element, and means operatively connecting said time controlled element with said power control member and said first-mentioned reducing means, to provide timed adjustment of said actuator to first move said friction means into slight engagement, to thereupon build up friction at a slow rate to a value at which said friction means ceases slipping, and to subsequently increase said friction well beyond said value. [Emphasis added.] It is the position of the board and solicitor that the first two emphasized portions of the claims cannot be supported by appellant's specification because the only structure in appellant's invention which can be a "reducing means" is the valve comprised of port 206, the upper land of piston 200 and member 203, shown above. Since this valve must be the element defined in the third emphasized portion of the claim, and since the first emphasized element, the power-driven actuator, is piston 44 and cavity 49, the second emphasized element finds no support in the specification.

Appellant's interpretation of the claim, presented before the board and before this court, is as follows: Element [3] of the claim is the valve 200, 203, 206 as interpreted by the board above. Element [1],

the "power-driven actuator", is piston 44 alone, and element [2], the "means for reducing said actuating force", is "expanding cavity 49" The board's objection to appellant's interpretation was stated in its initial opinion as follows:

we do not agree with the appellant that the piston 44 by itself constitutes the power-driven actuator recited in the claim. Necessarily the actuator includes the piston and the cylinder in which it is located. We do not agree with the appellant that the means for reducing the actuating force supplied by the source, which is recited in the claims, is the expanding cavity 49 in the present case because this cavity is an inseparable part of the cylinder and piston constituting the power-driven actuator and may not, therefore, be properly included as a separate and independent element from the power-driven actuator. To do so would be misleading and indefinite. *

The solicitor argues that the "actuator" cannot be the piston 44 alone, but must include both the piston 44 and its cylinder (or expanding cavity 49), since a piston alone cannot produce an actuating force and that the "means for reducing said actuating force" (element [2] of claim 110), must include the piston 44 and its cylinder 49 since the means to reduce the force must include both the cylinder and the piston 44 which define the limits of the expansion area. Therefore, the solicitor argues, there is no support in the specification for elements [1] and [2] of the claims since it requires the double inclusion of both piston 44 and cylinder 49 in order to read the claims on the disclosure. As authority for the position that the claims are not supported because of the double inclusion of elements 44 and 49, the solicitor cites Holdsworth v. Goldsmith, 29 CCPA 1047, 129 F. 2d 571, 54 USPQ 90; Kreidel v. Parker, 25 CCPA 1242, 97 F. 2d 171, 37 USPQ 815 and Frank v. Hollerith, 34 CCPA 863, 159 F. 2d 774, 72 USPQ 497.

Before deciding the question of whether the claims are in fact supported by the specification or whether a supporting disclosure is barred because of double inclusion, it is noted that the claims on appeal were

2 The examiner and board apparently did not question whether an "expanding cavity" actually would reduce the hydraulic pressure supplied by the source (a pump). As stated in appellant's brief:

"The force on the piston 44 is reduced when oil flows into the expanding cavity 49 regardless of all other considerations. Neither the Examiner nor the Board has ever questioned the fact that the pressure in the cavity 49 is reduced below the maximum pressure of the pump when the oil is first directed to the cavity. On the contrary the Examiner has expressly admitted it in the following language "the pressure of the fluid is determined by the expansion of the clutch and accumulator cavities" * * *. This express

agreement of the Examiner and the tacit agreement of the Board are in accord with well known, generally understood, fundamental principles of hydraulic engineering, namely that when liquid under pressure flows into an expanding cavity the pressure in the cavity is reduced below the pressure available at the source as long as the cavity is expanding. ****

a The solicitor's brief states that element 49 must be the cylinder surrounding the expanding cavity, since a "cavity is not a structure, but a space demarked by a structure". Element 49 is hereinafter referred to as "cylinder 49".

copied by appellant from a patent to Forster,* presumably for purposes of interference. The solicitor, throughout his brief, in urging acceptance of the board's interpretation of the claims, has referred to the disclosure of Forster to show that Forster's invention shows distinctly separate structures for each of the emphasized elements of the copied claims. However, at oral argument, the solicitor stated that the claims are not ambiguous. Therefore, the fact that the appealed claims originated in the Forster patent is immaterial. If an ambiguity exists in the language of a claim (or a count in an interference proceeding), it should be interpreted in the light of the specification from which it originated. In re Hollman, 41 CCPA 937, 213 F. 2d 323, 102 USPQ 87; Frank v. Hollerith, supra. If the claim or count contains no ambiguity, it should be given the broadest construction the language thereof will reasonably bear without resort to the specification from whence it originated. Long v. Young, 34 CCPA 871, 159 F. 2d 766, 72 USPQ 491; Daley & Talarico v. Wiltshire, 49 CCPA 719, 293 F. 2d 677, 130 USPQ 398. See also Ex parte Hein (PO Bd. App.), 114 USPQ 175.

The language of the appealed claims under consideration, emphasized in claim 110, supra, is as follows:

[1] a power-driven actuator operative to produce an actuating force for the engagement of said friction means,

[2] means for reducing said actuating force supplied by said source, [3] means for reducing the strength of said last-mentioned force. We do not think these terms are ambiguous so as to require reference to the Forster disclosure. Although the words "actuator" and and "means" are broad in that they may include a number of various different structures which serve the same function, they are not ambiguous. Therefore, the question to be decided is whether appellant's disclosure supports the emphasized language of the claims, supra, giving this language the broadest construction reasonable. We think that this question should be answered affirmatively.

The function of appellant's cylinder and piston can best be understood by reference to the schematic diagrams reproduced below.

In the above diagrams, the piston and the clutch mechanism are shown schematically performing the two separate functions of the piston. In position (a), shown in the first diagram, the clutch mechanism is disengaged. When the "adjustable power control member" is shifted to start clutch engagement, the expanding cavity begins to fill with hydraulic fluid as indicated by the arrow and the piston moves toward position (b). As stated in appellant's brief:

Whenever oil pressure is initially supplied by the shift control valve 230 * to the clutch, oil under pressure initially flows into a cavity 49 which expands rapidly to take up slack and to move the clutch plates * into slight or slipping engagement. The engagement is slight because the oil is flowing into an expanding cavity, therefore the pressure in the cavity is reduced below the pressure which the pump can supply, and this produces a reduced force which engages the clutch * * * permitting slip. Such initial slip is inherently necessary in connecting without shock two parts rotating at different speeds (one of which may be zero). added.]

[Emphasis

Until the piston reaches position (b) in the second diagram, it does not act as part of a "power actuator" to actuate the clutch plates. In its initial position and throughout its movement until it engages the clutch plates, the piston moves in the cylinder and with the inner walls of the cylinder forms an "expanding cavity" which is effective as the claimed "means for reducing the actuating force". When the piston reaches position (b), its further movement is retarded by the clutch mechanism and it now acts as a "power-driven actuator" which applies an increasing force upon the clutch plates after initial engagement. The piston at this time ceases to act effectively as an expanding means for reducing pressure because the actual distance traveled beyond the point of initial engagement of the clutch plates is very small, since the clutch plates are in contact at position (b), and additional force on the piston only increases the frictional resistance to relative rotation and does not appreciably increase the volumetric capacity of the now expanded cavity. As stated in appellant's brief:

** Somewhere during the increase of clutch or brake pressure, the friction force in the clutch exactly equals the opposing force of the resistance of the vehicle, and at this point the clutch stops slipping. Thereafter, the friction is increased well beyond the value of the friction at the moment the clutch stops slipping because the system (like every system of this character) is necessarily designed to provide a maximum friction well beyond the greatest possible slipping friction.

In the above analysis, cylinder 49 acts both as a housing for the piston in position (a) to form the "means for reducing said actuating