Ex Parte Mizutani et al

Patent Trial and Appeal Board

Jun 22, 2017

12344388 (P.T.A.B. Jun. 22, 2017)

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.)
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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.)
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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
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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
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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).
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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
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