Ex Parte Dopke et al

Patent Trial and Appeal Board

Mar 19, 2018

14270699 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/270,699 05/06/2014 Russell J. Dopke
26629 7590 03/21/2018
ZIOLKOWSKI PATENT SOLUTIONS GROUP, SC (ZPS)
136 S WISCONSIN ST
PORT WASHINGTON, WI 53074
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.
CET1090.021 3587
EXAMINER
KIM, JAMES JAY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
info@zpspatents.com
sml@zpspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSELL J. DOPKE, ALEKO D. SOTIRIADES,
andMARKJ. SARDER1
Appeal2017-002768
Application 14/270,699
Technology Center 3700
Before STEVEN D.A. MCCARTHY, LYNNE H. BROWNE, and
NATHAN A. ENGELS, 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
1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real parties in interest as Champion Engine
Technology LLC. Br. 2.
Appeal2017-002768
Application 14/270,699
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A cylinder head for an internal combustion engine, the
cylinder head comprising:
a first end comprising a recessed rocker arm cavity, the
recessed rocker arm cavity having a lower surface with a pair of
push rod tube bores therethrough;
a second end opposite the first end and defining an upper
end of a combustion chamber, the second end having a pair of
push rod tubes positioned in the push rod tube bores between the
recessed rocker arm cavity and the second end of the cylinder
head;and
an intake port and an exhaust port each extending through
the cylinder head to the combustion chamber.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dornbos
Nakano
Woodward
Tomlinson
Imagawa
Hoffman
us 3,200,801
us 4,156,409
us 4,392,464
us 4,926,805
us 5,176,116
us 5,421,292
REJECTIONS
Aug. 17, 1965
May 29, 1979
July 12, 1983
May 22, 1990
Jan. 5, 1993
June 6, 1995
I. Claims 1, 5, 6, 8-10, and 13 stand rejected under 35 U.S.C.
§ 102 as anticipated by Hoffman.
II. Claim 2 stands rejected under 35 U.S.C. § 103 as unpatentable
over Hoffman and lmagawa.
III. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable
over Hoffman and Tomlinson.
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Application 14/270,699
IV. Claims 4 and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hoffman, Tomlinson, and Dornbos. 2
V. Claims 7, 14, 16, 17, and 20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Hoffman and Nakano.
VI. Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable
over Hoffman and Dornbos.
VII. Claim 15 stands rejected under 35 U.S.C. § 103 as unpatentable
over Hoffman, Dornbos, Tomlinson, and Imagawa.
VIII. Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable
over Hoffman, Nakano, and Dornbos.
IX. Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable
over Hoffman, Nakano, Dornbos, and Tomlinson.
X. Claim 21 stands rejected under 35 U.S.C. § 103 as unpatentable
over Hoffman, Nakano, and Woodward.
XI. Claims 22 and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Hoffman and Woodward.
2 The statement of the rejection of claim 12 refers to Hoffman, Dornbos, and
Tomlinson. Final Act. 8. However, we treat the rejection of claim 12 with
the rejection of claim 4 because, when a rejection is based on a combination
of references, the order in which prior art references are cited to the
Applicant is of no significance, but merely a matter of exposition. In re
Bush, 296 F.2d 491, 496 (C.C.P.A. 1961).
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Application 14/270,699
DISCUSSION
Rejection I: Anticipation of Claims 1, 5, 6, 8-10, and 13 by Hoffman
Claims 1, 5, and 6
The Examiner finds that Hoffman discloses each and every limitation
of claim 1. See Final Act. 2. In particular, the Examiner finds that Hoffman
discloses "a pair of push rod tubes 78 and 80 positioned in the push rod tube
bores between the recessed rocker arm cavity and the second end of the
cylinder head." Id.
Appellants argue that "Hoffman does not disclose a cylinder head
including a first end comprising a recessed rocker arm cavity and push rod
tubes as called for in claim 1." Appeal Br. 6. In support of this contention,
Appellants note that "Hoffman does not disclose a cylinder head wherein a
recessed rocker arm cavity and push rod tubes are part of the cylinder head
itself." Id. Appellant further explains that:
Id.
the only disclosure Hoffman makes to rocker components is
with respect to the rocker box 50 shown in the cylinder head
assembly 12 of FIG. 3. While Hoffman's rocker box 50 may
house rocker components and has a "pair of holes 62 ... for
receiving the push rods 38 and 40" (Hoffman, col. 3, 11. 48-
53), Hoffman specifically teaches a rocker box 50 distinct from
the cylinder head 48.
The Examiner responds to this argument by finding that "although the
prior art teaches two pieces that are to be combined together, together they
form the cylinder head." Ans. 2. The Examiner further states that "the
integration of components is obvious." Id.
The Examiner's statements are not responsive to the rejection or the
argument raised by Appellants. The rejection is based on anticipation.
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Application 14/270,699
Accordingly, the alleged obviousness of the integration of components is
inapposite.
Moreover, the Examiner does not explain why one skilled in the art
would consider Hoffman's separate cylinder head and rocker box to be a
cylinder head in accordance with the ordinary and customary meaning of
that claim language. As Appellants correctly note in the Reply Brief, "the
cylinder head assembly 12 of Hoffman is not equivalent to the cylinder head
as called for in the claims." Reply Br. 4 (original emphasis omitted, new
emphasis added). Thus, the Examiner's finding that Hoffman's cylinder
assembly 12 corresponds to the claimed cylinder head is not supported by
Hoffman which identifies its cylinder head as element 48. 3 See, e.g.,
Hoffman 3:36-38.
Claim 1 requires a cylinder head comprising "a first end comprising a
recessed rocker arm cavity" and "a second end opposite the first end and
defining an upper end of a combustion chamber" with "a pair of push rod
tubes positioned in ... push rod tube bores between the recessed rocker arm
cavity and the second end of the cylinder head." The rejection as articulated
by the Examiner does not adequately explain how any of these limitations
are met by Hoffman. See Final Act. 2. Moreover, Appellants are correct
that in Hoffman the push rod tubes "are positioned external to the cylinder
head of the engine." Appeal Br. 4 (emphasis omitted). Thus, Appellants'
arguments are convincing.
3 We note that Hoffman's identification of its cylinder head as corresponding
to element 48 is consistent with the ordinary and customary meaning of this
term - "[ t ]he closed, often detachable. End of a cylinder in an intemal-
combustion engine." The Free Dictionary.com.
http://www.thefreedirctionary.com/cyliinder+head (last visited March 16,
2018).
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Application 14/270,699
For these reasons we do not sustain the Examiner's decision rejecting
claim 1, and claims 5 and 6, which depend therefrom.
Claims 8-10 and 13
As noted by Appellants, claim 8
calls for, in part, a cylinder head assembly including a cylinder
head comprising a base portion to contact the cylinder block, a
top portion comprising a recessed valve assembly cavity, the
recessed valve assembly cavity and base portion forming a gap
there between along a side of the cylinder head, and a pair of
push rod tubes extending through the gap from the base portion
to the recessed valve assembly cavity.
Appeal Br. 10. Appellants contend that Hoffman fails to disclose these
limitations for reasons similar to those discussed supra with respect to the
rejection of claim 1. See, e.g. id. at 10-11. Except to the extent that the
Examiner's single paragraph in the Response to Arguments section of the
Answer is intended to respond to all of Appellants' arguments, the Examiner
does not respond to this argument. See Ans. 2. Moreover, Appellants are
correct that the Examiner does not adequately explain how these limitations
are met by Hoffman.
Accordingly, we do not sustain the Examiner's decision rejecting
claim 8, and claims 9, 10, and 13, which depend therefrom.
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Application 14/270,699
Rejections II-IV, VI, VII, and XI: Obviousness of
Claim 2 Based on Hoffman and Imagawa
Claim 3 Based on Hoffman and Tomlinson
Claim 4 Based on Hoffman and Nakano
Claim 11 Based on Hoffman and Dornbos
Claim 15 Based on Hoffman, Dornbos, Tomlinson, and Imgawa
Claims 22 and 23 Based on Hoffman and Woodward
Rejections II-IV, VI, VII, and XI rely upon the same unsupported
findings pertaining to the cylinder head and push rod tubes as claims 1 and
8. None of the secondary references relied upon in any of these rejections
cure the deficiencies in Hoffman. Accordingly, we do not sustain the
Examiner's decisions rejecting claims 2--4, 11, 15, 22, and 23.
Rejection V: Obviousness of Claims 7, 14, 16, 17, and 20
Based on Hoffman and Nakano
Claims 7 and 14
Claim 7 depends indirectly from claim 1 and claim 14 indirectly
depends from claim 8. Appeal Br. 27, 28 (Claims App.). Accordingly, the
rejection of these claims suffers from the same deficiencies as the rejection
of claims 1 and 8. Nakano does not cure these deficiencies. Accordingly,
we do not sustain the Examiner's decision rejecting claims 7 and 14.
Claims 16, 17, and 20
As noted by Appellants, in support of the rejection of claim 16, the
Examiner finds that Hoffman discloses "a cylinder head having a lower end
coupled to a respective cylinder, the cylinder head comprising a cavity for
inclusion of rocker components, a recess located under the cavity, a pair of
push rod tubes positioned within the recess and extending from the lower
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Application 14/270,699
end to the cavity." Appeal Br. 15 (citing Final Act. 9--10). These findings
are similar to the unsupported findings discussed supra with respect to the
rejection of claims 1 and 8. Nakano does not cure the deficiencies in these
findings. Accordingly, we do not sustain the Examiner's decision rejecting
claim 16, and claims 17 and 20, which depend therefrom.
Rejections VIJJ-X· Obviousness of
Claim 18 Based on Hoffman, Nakano, and Dornbos
Claim 19 Based on Hoffman, Nakano, Dornbos, and Tomlinson
Claim 21 Based on Hoffman, Nakano, and Woodward
Rejections II-IV, VI, VII, and XI rely upon the same unsupported
findings pertaining to the cylinder head and push rod tubes as claim 16.
None of the secondary references relied upon in any of these rejections cure
the deficiencies in Hoffman. Accordingly, we do not sustain the Examiner's
decisions rejecting claims 18, 19, and 21.
DECISION
The Examiner's rejections of claims 1-23 are REVERSED.
REVERSED
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