Ex Parte Mizutani et alDownload PDFPatent Trial and Appeal BoardJun 22, 201712344388 (P.T.A.B. Jun. 22, 2017) Copy Citation 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. 12/344,388 12/26/2008 Masami MIZUTANI YAM-112 6094 23995 7590 Rabin & Berdo, PC 1101 14TH STREET, NW SUITE 500 WASHINGTON, DC 20005 06/26/2017 EXAMINER COOLMAN, VAUGHN ART UNIT PAPER NUMBER 3618 NOTIFICATION DATE DELIVERY MODE 06/26/2017 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): firm @ rabinberdo .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAMI MIZUTANI and TOSHIO IIZUKA Appeal 2016-003452 Application 12/344,388 Technology Center 3600 Before CARL W. WHITEHEAD JR., MICHAEL M. BARRY, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-003452 Application 12/344,388 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—9 and 11—20, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The application is directed to “a vehicle, such as a straddle-type vehicle” that “can include an air cleaner coupled to an engine, and a catalyst for purifying exhaust gas discharged from the engine.” (Spec. 1.) Claim 1, reproduced below, exemplifies the subject matter on appeal: 1. A straddle-type vehicle comprising: an engine; a vehicle body frame supporting the engine; a swing arm swingably supported by the vehicle body frame, and having a rear part supporting a rear wheel; a shock absorber having a lower part supported by the swing arm, and an upper part supported by the vehicle body frame and provided in front of the lower part; an air cleaner connected to the engine; and an expansion chamber including a catalyst for purifying exhaust gas discharged from the engine, wherein the swing arm and the shock absorber are disposed to a rear of the engine, the air cleaner is disposed to a rear of the shock absorber, at least a part of the air cleaner is provided above the swing arm, and the expansion chamber is provided below the 1 Appellants identify Yamaha Hatsudoki Kabushiki Kaisha as the real party in interest. (See App. Br. 3.) 2 Appeal 2016-003452 Application 12/344,388 shock absorber and at least a part of the expansion chamber is provided below the swing arm, and wherein the swing arm includes a right arm, a left arm, and a bridge connecting the right arm and the left arm, and a lower end of the shock absorber is coupled directly to a bracket mounted to a surface of the bridge of the swing arm. THE REFERENCES The prior art relied upon by the Examiner appeal is: Hoshi Ishii et al. Iwanaga Taniguchi et al. US 4,402,379 US 2002/0007977 Al US 2006/0266572 Al US 7,540,347 B2 in rejecting the claims on Sept. 6, 1983 Jan. 24, 2002 Nov. 30, 2006 June 2, 2009 THE REJECTIONS 1. Claims 1—9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Taniguchi and Hoshi. (See Final Act. 2—5.) 2. Claims 11—15 and 17—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Taniguchi, Hoshi, and Iwanaga. (See Final Act. 5-7.) 3. Claims 11, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Taniguchi, Hoshi, and Ishii. (See Final Act. 7—8.) 3 Appeal 2016-003452 Application 12/344,388 ANALYSIS The Examiner found that Taniguchi discloses all of the limitations of claim 1, except that “Taniguchi fails to disclose the air cleaner being disposed to a rear of the shock absorber.” (Final Act. 2—3.) The Examiner further found, however, that “Hoshi teaches a motorcycle including an air cleaner (30, 33) disposed to a rear of a shock absorber (22)” and that it would have been obvious to modify the vehicle of Taniguchi with the air cleaner of Hoshi “in order to provide the advantage of ‘supplying sufficient clean air to the engine ... by effectively utilizing the relatively large space between the engine and the rear wheel, particularly, the space around the shock absorber.’” (Final Act. 3—4, quoting Hoshi 2:8—13.) Appellants assert that Hoshi’s “air chamber assembly 30 can be interpreted to function as a portion of the air cleaner 33” such that “the air cleaner 33 and air chamber assembly 30 should be interpreted to form one air cleaner.” (App. Br. 7.) Based on that “interpretation,” they conclude that “if Taniguchi and Hoshi were combined, some portions of the air cleaner (i.e. the air cleaner 33 and air chamber assembly 30) would be located forward, and other portions rearward, of the suspension of Taniguchi.” {Id., emphasis omitted.) Thus, they argue, “the proposed modification fails to meet at least the claim element ‘the air cleaner is disposed to a rear of the shock absorber,’ and the effects of the arrangement of claim 1 (e.g. preventing heat from the engine from adversely affecting the intake) cannot be obtained.” (Id. at 9.) We do not agree with Appellants’ analysis because we do not agree that Hoshi’s “air cleaner 33” and “chamber assembly 30” together correspond to the claimed “air cleaner.” Instead, the more natural, and 4 Appeal 2016-003452 Application 12/344,388 broadest reasonable, interpretation is to correlate the claimed “air cleaner” with Hoshi’s “air cleaner 33,” which is “disposed to a rear of the shock absorber,” as claimed. As the Examiner correctly observes, “the only portion of the device shown in FIG 2 of Hoshi that ‘cleans air’ is the rearmost portion 33, especially the filter 39” and “[a]ny portion forward of filter 39 simply delivers the already clean air to intake ducts 31.” (Ans. 9.) Appellants further argue that “the modifications proposed by the Examiner, that is, extending Taniguchi’s intake pipe to a position to the rear of the shock absorber, change Taniguchi’s structure radically and in a way that renders Taniguchi’s structure unsatisfactory for its intended purpose or changes its principle of operation.” (App. Br. 8.) On this record at least, we do not agree that moving the air cleaner from one side of the shock absorber to the other would render Taniguchi “unsatisfactory for its intended purpose”—it would still function as a motorcycle. (See Ans. 9—10.) Nor do we agree that this modification would work an impermissible change in operation, as the engine would still receive air. Appellants’ assertions about undesirable intake pipe length and heat are not supported by evidence and, even if they were, they would be just one factor to be balanced against others, including Hoshi’s disclosed benefits of “maneuverability and stability.” (See Final Act. 3—4, citing Hoshi 2:8—13.) Appellants additionally argue that “the Examiner improperly ‘use[d] hindsight reconstruction to pick and choose among isolated disclosures’ in an effort to meet the claim elements Tower end of the shock absorber is coupled directly to a bracket mounted to a surface of the bridge of the swing arm.’” (App. Br. 9.) In particular, Appellants argue that an aspect of the Examiner’s rationale (“utilizing the relatively large space between the 5 Appeal 2016-003452 Application 12/344,388 engine and the rear wheel, particularly, the space around the shock absorber” is faulty because that language is drawn from Hoshi, not Taniguchi. (See App. Br. at 10.) We are not persuaded of error. As the Examiner observes, “it can be seen clearly from FIG 1 of Taniguchi that there is a relatively large space in the same position as that of Hoshi, specifically under and between the left and right seat frames 9, which is analogous to the same space on Hoshi.” (Ans. 10.) We agree that, in view of Hoshi’s teaching that the air cleaner may advantageously be located it that space, it would have been obvious to modify Taniguchi to include that feature in order to obtain the same benefits. In reply, Appellants offer new technical arguments, denoted (1) and (2), intended to show why one of skill in the art would not have made the Examiners’ combination. (See Reply Br. 2—5.) These arguments were waived by their omission from the Appeal Brief and subsequent failure to show good cause for their belated presentation.2 But even if we were to consider them, they would not show error. Regarding (1), it would not follow from the fact that Hoshi does not have sufficient space in front of the shock for an air cleaner that one would not modify Taniguchi to place the air cleaner behind the shock, where that location is said to provide specific advantages. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“If a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the 2 See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”); 37 C.F.R. §§ 41.37(c)(l)(iv) & 41.41(b)(2). 6 Appeal 2016-003452 Application 12/344,388 same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Regarding (2), even assuming relocation of the air cleaner to a position behind the shock would have had a material impact on the center of mass (a proposition that lacks evidentiary support), that would again be just a factor that one of skill in the art would have considered; it does not show inoperability, unsuitability, or constitute teaching away. Because we find Appellants’ arguments insufficient to show Examiner error, we sustain the Section 103(a) rejections of claims 1—9 and 11—20. DECISION The rejections of claims 1—9 and 11—20 are 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)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation