Ex Parte Lemke et al

Patent Trial and Appeal Board

Sep 26, 2018

14038508 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/038,508
116845 7590
Terrance A. Meador
Achates Power, Inc.
FILING DATE
09/26/2013
09/26/2018
4060 Sorrento Valley Boulevard
San Diego, CA 92121
FIRST NAMED INVENTOR
James U. Lemke
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.
ACHP1520USC1 5996
EXAMINER
PICON-FELICIANO, RUBEN
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
09/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES U. LEMKE, GORDON E. RADO, MICHAEL H. WAHL,
PATRICK R. LEE, CLARK A. KL YZA, and ERIC P. DION
Appeal 2018-005591
Application 14/03 8,508 1
Technology Center 3700
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellants identify Achates Power, Inc. as the real party in interest.
Appeal Br. 3.
Appeal 2018-005591
Application 14/038,508
ILLUSTRATIVE CLAIM
1. An opposed piston engine, comprising:
an elongate member with a lengthwise dimension and a
plurality of through bores transverse to the lengthwise
dimension;
a cylinder liner supported in each through bore, each
cylinder liner including an exhaust end with an exhaust port and
an inlet end with an inlet port, an external surface, and an
internal bore with a longitudinal axis;
a pair of opposed pistons disposed in the internal bore of
each liner; and,
each piston including a crown, a skirt, an annular joint
coupling the skirt to a rear side of the crown, and a rod
extending through the skirt and fixed to the rear side, the
annular joint permitting the skirt to swing axially with respect
to the rod.
CITED REFERENCES
Bock et al. US 5,483,869 Jan. 16, 1996
(hereinafter "Bock")
Lemke et al. US 2006/0157003 Al July 20, 2006
(hereinafter "Lemke")
Alvarez US 2009/0151663 Al June 18, 2009
REJECTION
Claims 1-11 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Lemke, Alvarez, and Bock.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Non-
Final Office Action at pages 3-10 and the Answer at pages 3-15, except as
stated otherwise in the Analysis below. Additional findings of fact may
appear in the Analysis below.
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ANALYSIS
Independent Claim 1
and Dependent Claims 2, 3, and 5-11
The Appellants argue that independent claim 1 stands erroneously
rejected, based upon the "elongate member" and the "rod"/"annular joint"
limitations. For the reasons provided below, these arguments are not
persuasive of error in the rejection. Accordingly, we sustain the rejection of
independent claim 1 and dependent claims 2, 3, and 5-11 (for which no
separate argument is presented) under 35 U.S.C. § 103(a).
1. "elongate member"
Independent claim 1 recites, in part, "an elongate member with a
lengthwise dimension and a plurality of through bores transverse to the
lengthwise dimension."
The Non-Final Office Action states that "it would have been obvious
to one of ordinary skill in the art ... to have modified the engine of Lemke
incorporating an elongate member as taught by Alvarez in order to have
multiple cylinders in an engine." Non-Final Act. 5.
According to the Appellants, the rejection is erroneous because it
lacks a viable reason to modify Lemke in view of Alvarez:
The Office offers no evidence or articulated reasoning as to
how or why an elongate member would modify [Lemke's]
engine so as to "have multiple cylinders", when it already has
two cylinders and when "it can be scaled to engines of any size
and engines having one, two or three or more cylinders."
Lemke at paragraph [0051]. Thus there is no motivation to
make the proposed modification.
Appeal Br. 5.
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Application 14/038,508
Further, the Appellants contend that Alvarez' cylinder-block structure
is "fundamentally different" from Lemke's design, wherein "the cylinders
are decoupled from the mechanical and thermal stresses of an engine block,"
such that Lemke teaches away from the modification proposed in the
rejection. Appeal Br. 6 (quoting Lemke ,r 7).
In response, the Examiner's Answer states that Lemke, by itself,
discloses or suggests the "elongate member" limitation - even though the
"elongate member" is "better illustrated by Alvarez." Answer 11-12.
The Appellants' Reply Brief criticizes the Examiner's Answer for
referring to the claimed "elongate member" as a "cylinder bank" - a term
that the Appellants regard as inaccurate. See Reply Br. 1-2. However, the
viability of the Appellants' position turns not upon the Examiner's use of the
term "cylinder bank," but instead upon the question of whether Lemke
teaches or suggests the claimed "elongate member." In this regard, the
Appellants contend that the claimed "elongate member" is "manifestly a
passive element which retains cylinder liners, which is incompatible with
Lemke's teachings." Id. at 3. The Appellants contend that "Lemke
disparages a construction in which cylinders are held in an engine block"
and "teaches away" from the "elongate member" limitation of claim 1. Id.
( citing Lemke ,r,r 4, 6, 7, 51 ).
Yet, in drawing these distinctions with Lemke, the Appellants are
relying upon features shown in the Specification, but not required by claim 1
-particularly the Specification's description of a "spar" (an alternative
term to "elongate member") being "cast and machined" in the manner of an
engine block. See id. at 2 ( citing Spec. ,r 56). Although "understanding the
claim language may be aided by the explanations contained in the written
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Application 14/038,508
description, it is important not to import into a claim limitations that are not
a part of the claim." Superguide Corp. v. DirecTV Enters., Inc., 358 F.3d
870, 875 (Fed. Cir. 2004). Indeed, the Specification does not constrain the
description of the "elongate member" in the manner that the Appellants
contend. Notably, the Appellants cite to paragraph 56 of the Specification
(see Reply Br. 2), which does not even use the term "elongate member," but
instead refers to a "spar." The Specification identifies "spar" as an
alternative expression to the phrase "elongate longitudinal member" (which
itself also differs from the expression "elongate member" of the claims). See
Spec. ,r 54 ("The engine 10 has a generally lengthwise dimension along a
longitudinal axis ... and includes an elongate longitudinal member, or spar,
50 that supports components of the engine.") Even so, the Specification
does not describe the "spar" in definitive terms that might mandate a cast
and machined engine block, stating: "Preferably the spar is cast from a high
strength, lightweight aluminum alloy" and "may then be machined to fill out
and complete its basic structure." Spec. ,r 56 (emphasis added).
Thus, we are not persuaded that the claim term "elongate member"
requires a cast and machined engine block, as the Appellants contend.
Consequently, the Appellants do not persuasively argue that the Lemke
reference fails to teach or suggest the "elongate member" of independent
claim 1.
2. "rod"/"annular joint"
Independent claim 1 recites, in part, "a pair of opposed pistons,"
further reciting:
each piston including a crown, a skirt, an annular joint
coupling the skirt to a rear side of the crown, and a rod
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Application 14/038,508
extending through the skirt and fixed to the rear side, the
annular joint permitting the skirt to swing axially with respect
to the rod.
In regard to this limitation, the Non-Final Office Action introduces the Bock
reference. Non-Final Act. 5---6.
The Appellants argue that the rejection is erroneous, because the cited
portions of Bock (Abstract and col 3, 11. 52-53) do not teach the recited
"rod" or provide any disclosure of how Bock's piston might be connected to
any other engine element, such as a crankshaft. Appeal Br. 6.
In response, the Examiner's Answer states that Bock is not relied
upon for teaching the "rod," because "Lemke already has a connecting rod."
Answer 13. Rather, Bock is relied upon for teaching the claimed "annular
joint" -which is specifically taught by Bock's 0-ring seal that is part of the
linkage between the head and skirt portions of the pistons in Bock' s
embodiments. See id. at 12-13; see also Non-Final Act. 5---6 (citing Bock
Abstract and col. 3, 11. 52---63).
The Appellants nevertheless argue that Bock's teachings do not
provide the claimed feature of "permitting the skirt to swing axially with
respect to the rod." Reply Br. 3. Specifically, the Appellants argue that
"Lemke teaches articulation that permits the rod to swing with respect to the
crown" of a piston; however, "in Bock's description, any role of a
connecting rod in articulation is absent." Id. Rather, Bock discloses
articulation "between the head and skirt portions" and "substantially in the
axial direction." Id. (quoting Bock, col. 5, 11. 15-24). Thus, according to the
Appellants, neither Lemke nor Bock teaches or suggests piston articulation
enabling "the skirt to swing axially with respect to the rod." Id.
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The Appellants' argument is unpersuasive, because it criticizes Lemke
and Bock, individually, but does not address their combined teachings set
forth in the rejection. See In re Keller, 642 F.2d 413,426 (CCPA 1981)
("[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.")
Notably, the Appellants acknowledge that Lemke teaches the claimed
relationship between the claimed "skirt" and "rod" (Reply Br. 3 ( quoting
Lemke ,r 34)); thus, Lemke lacks only the implementation of an "annular
joint" in doing so. Bock teaches such an "annular joint" (the same 0-ring
technique disclosed in the Specification ,r 68), which Bock (see col. 5,
11. 14--19) employs in the articulated connection between the skirt and the
head of the piston. Bock's omission of the claimed "rod" is irrelevant,
because Lemke discloses this element. See Lemke ,r 34 (referring to "a
compliance boot 1336 that permits limited movement between the disc-
shaped end 1334 of the piston rod 1330 and the crown 1308 by resiliently
deforming in response to off-axial force acting on the piston rod 1330"),
Figs. 3A-3E.
Insofar as the Appellants emphasize that Bock' s movement between
the skirt and head is "substantially in the axial direction" (Reply Br. 3
( quoting Bock, col. 5, 11. 15-24) ), the use of the modifier "substantially"
means that there is nevertheless some amount of articulation in the radial
direction (i.e., permitting the claimed "swinging"). Indeed, the amount of
radial or off-axial movement of the claimed subject matter need not be
substantial, because the swinging described in the Specification, on account
of an annular joint, is "slight[ ]":
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Application 14/038,508
The flexible rings and the flange form an annular, resiliently
deformable joint coupling the crown 510 and skirt 520 that
permits the skirt 520 to swing slightly on the crown 510 with
respect to the piston rod 82.
Spec. ,r 68 ( emphasis added).
Therefore, in view of the foregoing, the Appellants do not
persuasively argue that the cited prior art fails to teach or suggest the "rod"
or "annular joint" features of independent claim 1.
Dependent Claim 4
Dependent claim 4 recites, in part:
the cylinder liners are disposed in the through bores with the
exhaust ends extending out of the through bores along a first
side of the elongate member, and with the inlet ends extending
out of the through bores along a second side of the elongate
member opposite the first side.
The Appellants acknowledge that Lemke - one of the references
cited in the rejection of claim 4 (see Non-Final Act. 7)-teaches this
limitation. Appeal Br. 6 ("This orientation is observed in Lemke.") The
Appellants contend, however, that Alvarez "teaches away" from the
limitation, because Alvarez alternates sides of the cylinder inlets and
exhausts, so as to provide better thermal balance. Appeal Br. 6-7 ( citing
Alvarez ,r 80).
In response, the Examiner's Answer states that Lemke alone teaches
the identified limitation of claim 4. Answer 14--15. Further, according to
the Examiner, combining Lemke with Alvarez would not conflict with
Lemke's teachings:
Moreover, even with the incorporation of Alvarez['] teaching,
the structure of Lemke's cylinder liner is capable to be fitted
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Application 14/038,508
inside Alvarez cylinder bank, because claim 4 does not provide
any other limitation providing more required details as to how
to mount said cylinder liner inside the cylinder bank.
Id. at 15.
The Appellants' Reply Brief, in one aspect, relies upon the position
( addressed above) that Lemke does not teach the claimed "elongate
member." Reply Br. 4. For the reasons already provided (in the discussion
of the "elongate member" limitation of independent claim 1 ), such argument
is unpersuasive of error.
Id.
The Appellants further contend, in the Reply Brief:
Moreover, Lemke's cylinders are unconstrained by any
structure corresponding to an elongate member with bores in
which the cylinder liners are disposed with ends of the cylinder
liners "extending out of the bores." Alvarez in FIGS. 1 and 2
shows cylinder liners 20 fully enclosed in a "bi-block", without
any ends extending out of the block structure.
As an initial matter, the Appellants' position regarding the alleged
failure of the prior art to teach or suggest the claimed "cylinder liner" "ends
extending out of the through bores" is a new argument in the Reply Brief
and, therefore, should not be considered in the present Appeal. See 3 7
C.F.R. § 4I.41(b)(2) ("Any argument raised in the reply brief which was not
raised in the appeal brief, or is not responsive to an argument raised in the
examiner's answer, including any designated new ground of rejection, will
not be considered by the Board for purposes of the present appeal, unless
good cause is shown.") In any event, the Appellants do not explain
adequately why the claim language should be construed as limited to
configurations in which the cylinders protrude in the manner suggested.
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Accordingly, the Appellants' argument regarding the claimed feature of the
"cylinder liner" "ends extending out of the through bores" is not persuasive
of error in the rejection.
Furthermore, the Appellants address and allege distinctions, with
regard to aspects of Lemke and Alvarez, by considering these references
individually. See Appeal Br. 6-7; see also Reply Br. 4. However, the
Appellants do not confront the Examiner's combination of the references'
teachings. See Reply Br. 15. Even if the Appellants were to distinguish
Lemke and Alvarez individually, this would be insufficient to show error in
the rejection of claim 4. See In re Keller, 642 F .2d at 426.
Finally, we are not persuaded by the Appellants' argument that
Alvarez allegedly teaches away from the subject matter of claim 4. See
Appeal Br. 6-7; see also Reply Br. 4. The Appellants contend that Alvarez
contradicts and, therefore, teaches away from claim 4, because Alvarez
discloses alternating the orientation of the intake and exhaust ends of
adjacent cylinder liners. See Reply Br. 4 ( citing Alvarez ,r 80). A reference
may be said to teach away from an invention, "when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994 ). Yet, "[a] reference does not teach away ... if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed
Cir. 2004)). Notwithstanding any alternative arrangement of inlet and
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exhaust ends in Alvarez, the Appellants identify no portion of Alvarez that
criticizes, discredits, or otherwise discourages their alignment recited in
claim 4. Accordingly, the Appellants' teaching-away argument is not
persuasive of error in the rejection of claim 4.
In view of the foregoing, we sustain the rejection of dependent
claim 4 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-11 are
rejected under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
11