Ex Parte Claywell et al

Patent Trial and Appeal Board

Jun 12, 2018

14015456 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/015,456 08/30/2013
74175 7590 06/14/2018
Harness Dickey & Pierce, P.L.C. (GM)
P.O. Box 828
Bloomfield Hills, MI 48303
FIRST NAMED INVENTOR
MarkR. CLAYWELL
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P023519-PTUS-RRM 1654
EXAMINER
KIM, JAMES JAY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
06/14/2018 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):
gm-inbox@hdp.com
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK R. CLAYWELL and BRYAN K. PRYOR
Appeal2017-007416
Application 14/015,456
Technology Center 3700
Before BENJAMIN D. M. WOOD, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
CLAIMED SUBJECT MATTER
Claims 1, 11, and 13 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An oil drain back system for an internal combustion
engme compnsmg:
Appeal2017-007416
Application 14/015,456
a drain line extending between an upper region and a lower
region of an engine, the drain line having a preferred direction of
drain flow from the upper region to the lower region;
a breather line extending between the lower region and the
upper region, the breather line having a preferred direction of
breather flow from the lower region to the upper region; and
a preferential flow passageway associated with at least one
of the drain line and the breather line, the preferential flow
passageway having a flow diode disposed therein and oriented to
direct fluid flow in the preferred direction of the at least one of
the drain line and the breather line;
wherein a pressure differential across the flow diode for
flow in preferred direction is less than the pressure differential
across the flow diode for flow in a direction opposite the
preferred direction.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sullivan
Hirano
Dyson
US 7,905,319 B2
US 8,511,291 B2
US 9,169,855 Bl
REJECTIONS
Mar. 15, 2011
Aug.20,2013
Oct. 27, 2015
I. Claims 1-6 and 8-20 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Hirano and Dyson.
II. Claim 7 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Hirano, Dyson, and Sullivan. 1
1 The statement of this rejection in the Final Action does not include Dyson.
Final Act. 6. However, it states that claim 7 is rejected "over Hirano as
applied to claim 4 above." Id. As claim 4 stands rejected as unpatentable
over Hirano and Dyson, we understand claim 7 to stand rejected as
unpatentable over Hirano, Dyson, and Sullivan. See id.
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Application 14/015,456
DISCUSSION
Rejection I: Obviousness of Claims 1-6 and 8-20
Based on Hirano and Dyson
Appellants argue claims 1---6 and 8-20 together. See Appeal Br. 6-9.
We select independent claim 1 as the illustrative claim and claims 2-6 and
8-20 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Hirano discloses all of the limitations of
claim 1 except for a flow diode. See Final Act. 3. The Examiner further
finds that "Dyson discloses a flow diode for the purpose of permitting fluid
flow in a first direction while preventing fluid flow in the opposite direction
without the use of mechanical closures or moving parts (Abstract)." Id. at 4.
Based on these findings, the Examiner reasons that it would have been
obvious "to have a flow diode in the preferential flow passageways of both
the breather passage and the drain line for the purpose of directing the flow
of the fluid in the preferred direction, wherein the flow diode is an
aerodynamic check valve without mechanical parts." Id. (citing Dyson
1: 14--42). The Examiner finds that "[t ]he pressure differential across the
flow diode will be biased in the preferred direction, wherein the pressure in
the opposite direction will be greater than the preferred direction which in
tum provides the one way flow (higher pressure will be directed towards
lower pressure)." Id. In addition, the Examiner finds that "[h ]aving check
valves in passages is known in the art for the purpose of preventing
backwards flow." Id. Based on these additional finds, the Examiner further
reasons that it would have been obvious "to have a plurality of drain and
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Application 14/015,456
breather passages for the purpose of providing additional passages to allow
more breather gases to flow and more oil to drain." Id. at 4--5.
Appellants "respectfully submit that Hirano and Dyson are not in the
same field of endeavor." Appeal Br. 8; see also Reply Br. 6. Specifically,
Appellants argue that "Hirano relates to an internal combustion engine and
Dyson relates to the unrelated subject matter of a fluid transport device."
Appeal Br. 8. However, Appellants' conclusory statement does not explain
why Hirano and Dyson are not in the same field of endeavor. Moreover, we
are not aware of any requirement that the references be in the same field of
endeavor.
To the extent that Appellants are contending that Hirano and Dyson
are not analogous art, we note that "[ t ]wo separate tests define the scope of
analogous prior art." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011).
These tests are "(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." Id.
Appellants do not allege that Hirano and Dyson are not in the same field of
endeavor as the instant invention. Further, Appellants do not allege that
Hirano and Dyson are not pertinent to the problem with which the inventors
were concerned. Accordingly, Appellants do not show that either Hirano or
Dyson are non-analogous art. Thus, Appellants do not apprise us of error.
Next, Appellants assert that "there is no teaching or suggestion in
Hirano or Dyson of using a fluid flow diode in a drain line or breather line of
an internal combustion engine such as disclosed by Hirano." Appeal Br. 8;
See also Reply Br. 7. In support of this assertion, Appellants argue that
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Application 14/015,456
"Hirano does not address the limiting of flow or flow direction through the
breather line 91 or the drain line 96, in any way. Further, Dyson does not
suggest the use of the disclosed flow diode in a drain line or a breather line
of an internal combustion engine." Id. At 8-9. However, we are not aware
of any requirement for an express teaching or suggestion of the proposed
combination in the references. Rather, this argument is foreclosed by KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007), in which the Court rejected
the rigid requirement of a teaching or suggestion or motivation to combine
known elements in order to show obviousness. KSR, 550 U.S. at 415. The
Court noted that an obviousness analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id. at 418. Appellants do not
address the combined teachings of Hirano and Dyson, nor do they explain
why the Examiner's articulated reasoning discussed supra is flawed. Thus,
Appellants do not apprise us of error.
Finally, Appellants contend that "it is only through impermissible
hindsight following the teachings of the present disclosure that the Examiner
has combined Dyson with Hirano since neither reference properly teaches or
suggests the combination of the subject matter of the present claims."
Appeal Br. 9; see also Reply Br. 7. However, Appellants do not identify any
knowledge relied upon by the Examiner that was gleaned only from
Appellants' disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention, thereby obviating Appellants'
assertion of hindsight. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
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For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2-6 and 8-20, which fall therewith.
Rejection II: Obviousness of Claim 7
Based on Hirano, Dyson, and Sullivan
Appellants "submit that claim 7 is dependent from claim 1 and should
be allowable for the same reasons as claim 1." Appeal Br. 9; see also Reply
Br. 7. For the reasons discussed supra, Appellants' arguments pertaining to
claim 1 are unconvincing. As Appellants provide no other arguments in
support of the patentability of claim 7, we sustain the Examiner's decision
rejecting claim 7.
DECISION
The Examiner's rejections of claims 1-20 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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