Ex Parte Mari et al

Patent Trial and Appeal Board

Jul 15, 2013

11605022 (P.T.A.B. Jul. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JORGE MARI and ROBERT ROESNER
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Appeal 2011-006118
Application 11/605,022
Technology Center 3600
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Before JAMES P. CALVE, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-19, 21-27 and 29-51 as unpatentable under 35 U.S.C.
§ 103(a) over Kumar (US 6,612,246 B2, iss. Sep. 2, 2003) and Branyon (US
6,952,923 B2, iss. Oct. 11, 2005) and Donnelly (US 7,565,867 B2, iss. Jul.
28, 2009). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellants’ invention relates to hybrid railroad locomotives. Spec. 1,
para. [0001]-[0003]. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A hybrid locomotive, comprising:
at least one traction motor coupled to at least one of a
plurality of axles and configured to drive at least one axle;
a gaseous fuel burning main engine comprising a spark
ignition engine;
a power converter coupled to the main engine and to the
at least one traction motor and configured to supply electrical
energy to the at least one traction motor;
at least one secondary energy storage unit coupled to the
power converter and configured to store and supply electrical
energy; and
a fuel storage unit coupled to the main engine and
configured to supply a gaseous fuel to the main engine.

OPINION
Claims 1-19, 21-27 and 29-51
Claim 1
Appellants argue claims 1-19, 21-27 and 29-51 as a main group under
a single heading. App. Br. 8-19. Appellants also argue that at least one
limitation from each independent claim (claims 1, 21, 30, 38, and 48) is
missing from the Examiner’s primary reference, Kumar. App. Br. 13. We
select claim 1 as representative of the main group. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). We will address each of the remaining
independent claims separately.
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The Examiner finds that Kumar discloses a hybrid locomotive with a
plurality of traction motors and a secondary energy storage unit. Ans. 3-4.
The Examiner acknowledges that Kumar’s main engine is diesel powered
and not a spark ignited gas engine. Ans. 4. The Examiner relies on Branyon
as disclosing a spark ignited engine. Id. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to have used a spark ignition engine, like that of Branyon, in
a system like that of Kumar. Ans. 5. According to the Examiner, combining
Kumar and Branyon would achieve the expected result of increasing fuel
efficiency and reducing harmful environmental emissions. Ans. 4-5. The
Examiner finds that a person of ordinary skill in the art would recognize a
gas spark ignition engine as a functional equivalent to a diesel engine as a
power source for a vehicle. Ans. 5.
Appellants traverse the Examiner’s rejection by arguing that Kumar
does not teach a gas, spark ignited engine. App. Br. 13. This argument is
unpersuasive as non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the
Examiner relies on Branyon as disclosing a gas, spark ignited engine.
Ans. 4.
Appellants next argue that a gas spark ignited engine, such as
Branyon, is not a functional equivalent to a diesel engine as a power supply
for a vehicle. App. Br. 14. Appellants argue that gas spark ignited engines
cannot be used in standard locomotive regime without redesign. App. Br.
15. Appellants further argue that Branyon’s engine is limited to a maximum
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power output of about 35 kW, which Appellants contrast with the power
output requirements of the spark ignition engine of the instant invention
which ranges from about 100 to 2500 kW. App. Br. 16-17. Appellants
conclude that Branyon’s power output limitations render it non-analogous to
locomotive applications. App. Br. 17.
The Examiner responds that the proposed combination is not intended
to be a literal combination of Branyon’s engine with Kumar’s locomotive.
Ans. 6. Rather, the Examiner reasons that if a gas, spark ignited engine, like
that of Branyon, is used in a locomotive, it would be upgraded to provide the
proper amount of propulsion. Id. In that regard, the Examiner draws an
analogy between automobiles, which are known to alternatively use either
diesel or spark ignited engines, and train locomotives. Ans. 6-7.
We first address Appellants’ non-analogous art argument. A
reference qualifies as prior art for an obviousness determination when it is
analogous to the claimed invention. Innovention Toys, LLC. v. MGA
Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011).
Two separate tests define the scope of analogous art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Bigio, 381 F.3d 1320, 1325 (Fed.Cir. 2004). The “field of endeavor”
test asks if the structure and function of the prior art is such that it would be
considered by a person of ordinary skill in the art because of similarity to the
structure and function of the claimed invention as disclosed in the
application. Id. at 1325-26. “A reference is reasonably pertinent . . . if it is
one which, because of the matter with which it deals, logically would have
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commended itself to an inventor's attention in considering his problem.” In
re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference disclosure has
the same purpose as the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an obviousness
rejection.” Id. Whether a prior art reference is “analogous” is a question of
fact. Id. at 658. Branyon discloses an internal combustion engine that is
capable of use for propulsion of a wheeled vehicle. Appellants’ argument
that Branyon does not show an adequate power output for a locomotive
(App. Br. 16-17) does not persuade us that it is non-analogous.
We next address Appellants’ contention that Branyon’s engine is not a
functional equivalent to a diesel engine as a power supply for a vehicle and
that gaseous fuel burning engines cannot be used in a standard locomotive
regime without redesign. Appellants’ argument is based on the power
output of Branyon. In other words, Branyon is too small to power a train.
This argument is unpersuasive. The Examiner states, and we agree, that a
person of ordinary skill would be able to upgrade the size and output of a
Branyon engine to propel a locomotive. 1 See In re Jacoby, 309 F.2d 513,
516 (CCPA 1962) (An artisan must be presumed to know something about
the art apart from what the references disclose); KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton.”). This finding by the Examiner is
unchallenged by Appellants. Furthermore, Appellants’ own specification
admits that the hybrid propulsion system of the instant invention requires
little or no redesign of the internal combustion engine. Spec. 4-5, para.

1 In addition, Donnelly discloses that a plurality of smaller, spark
ignited engines can be used to power a hybrid locomotive. Col. 7, ll. 26-28.
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[0018]. Indeed, Appellants’ Specification contains no detailed disclosure of
the redesign of an internal combustion engine that is required to render it
suitable for use in a hybrid propulsion system for a train. Moreover, claim 1
does not recite a particular power output for the gaseous fuel burning engine.
Appellants next argue that Kumar uses energy capture as a means for
storing braking energy, not to boost tractive effort. App. Br. 17-18. Kumar
discloses energy capture and storage 204 where the stored energy is re-
directed to the traction motors 108 through the inverters 106. See Kumar,
Fig. 4, Col , l. 30 – Col. 10, l. 14. Claim 1 merely requires a secondary
energy storage unit coupled to the power converter and configured to store
and supply electrical energy. Clms. App’x. The Examiner’s finding that
this limitation is met by Kumar is supported by a preponderance of the
evidence.
We are not apprised of error and, accordingly, sustain the Examiner’s
unpatentability rejection of claim 1.
Claim 21
Claim 21 is substantially similar in scope to claim 1, except that it
contains a limitation directed to: “a plurality of gaseous fuel driven engines
comprising internal combustion engines.” Clms. App’x. The Examiner
relies on Donnelly as disclosing a plurality of smaller engines in lieu of a
single main engine. Ans. 5. The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time of the
invention to add a plurality of secondary engines, as in Donnelley, to a
system like that of Kumar and Branyon. Id. According to the Examiner,
this would merely entail an obvious multiplication of parts. Id.
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Appellants argue that Kumar fails to disclose a plurality of gas
engines. App. Br. 13. This argument fails to apprise us of error, as the
Examiner relied on Branyon as disclosing a gas engine and further relied on
Donnelly as disclosing a plurality of engines in lieu of a single, main engine.
Ans. 4-5.2 Appellants’ argument is an individual attack on a single reference
in a multiple reference combination rejection. Merck, supra; Keller, supra.
(non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references). We sustain the rejection of claim 21.
Claim 30
Claim 30 is substantially similar in scope to claims 1 and 21, except
that it contains a limitation directed to: “a gaseous fuel burning lean mixture
internal combustion engine.” Clms. App’x. The Examiner relies on
Branyon as disclosing a spark ignition engine that can operate with a lean
fuel mixture.. Ans. 4-5. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of the invention to
use a spark ignition engine, like that of Branyon, in a system like that of
Kumar, with the expected result of providing a cleaner burning engine.
Ans. 5.
Appellants argue that Kumar fails to disclose a lean mixture engine.
App. Br. 13. This argument fails to apprise us of error as the Examiner
relied on Branyon as disclosing a lean mixture engine. Ans. 4-5.
Appellants’ argument is an individual attack on a single reference in a

2 Donnelly discloses the use of spark ignition engines in a hybrid
locomotive that uses multiple, small engines. Col. 7, ll. 23-30.
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multiple reference combination rejection. Merck, supra; Keller, supra. We
sustain the rejection of claim 30.
Claim 38
Claim 38 is substantially similar in scope to claims 1, 21 and 30,
except that it is a method claim and contains a step limitation directed to:
“supplying a gaseous fuel to a main engine comprising a spark ignition
engine.” Clms. App’x. The Examiner finds that the combination of Kumar
and Branyon discloses all of the features of the locomotive system,3 and that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention that the same apparatus would be operated in the same
manner. Ans. 5.
Appellants’ argument traversing the rejection is essentially the same
argument that we considered and rejected with respect to claim 1. App.
Br. 13. We sustain the rejection of claim 38 for essentially the same reasons
discussed supra that we sustained the rejection of claim 1.
Claim 48
Claim 48 is substantially similar in scope to claims 1, 21, 30 and 38,
and contains a step limitation directed to: “supplying a plurality of gaseous
fuel driven engines comprising internal combustion engines.” Clms. App’x.
The Examiner finds that the combination of Kumar, Branyon and Donnelly
disclose all of the features of the locomotive system, including a plurality of
smaller engines in lieu of a single main engine. Ans. 5. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the

3 Donnelly also discloses the use of spark ignition engines. Col. 7, l.
28.
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art at the time of the invention that the same apparatus would be operated in
the same manner. Id.
Appellants’ argument traversing the rejection is essentially the same
argument that we considered with respect to claim 21. App. Br. 13. We
sustain the rejection of claim 48 for essentially the same reason that we
sustained the rejection of claim 21.
Dependent Claims 2-19, 22-27, 29, 31-37, 39-47 and 49-51.
Appellants do not argue for the separate patentability of the dependent
claims apart from the arguments advanced with respect to the independent
claims discussed above. The dependent claims fall with the independent
claims. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). We sustain the rejections
of claims 2-19, 22-27, 29, 31-37, 39-47 and 49-51.
DECISION
The decision of the Examiner to reject claims 1-19, 21-27 and 29-51
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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