Ex parte OHRNBERGER et al.

Board of Patent Appeals and Interferences

Mar 26, 1998

08361284 (B.P.A.I. Mar. 26, 1998)

Application for patent filed December 22, 1994.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GERD OHRNBERGER and HELMUT DILLIG
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Appeal No. 96-3298
Application 08/361,2841
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ON BRIEF
________________
Before CALVERT, COHEN and STAAB, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 7-11. No other claims are currently
pending.
Appeal No. 96-3298
Application 08/361,284
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Appellants’ invention pertains to an inlet pipe system
for a multicylinder internal combustion engine, and in
particular to an inlet pipe system wherein the effective
length of the inlet pipes can be varied in order to improve
engine performance. A further understanding of the invention
can be derived from a reading of exemplary claim 7, a copy of
which is appended to appellants’ brief.
In rejecting appellants’ claims under 35 U.S.C. § 103,
the examiner has relied upon the references listed below:
Miyano et al. (Miyano) 4,854,271 Aug. 8, 1989
Parr 4,932,369 Jun. 12,
1990
Shillington 4,919,086 Apr. 24, 1990
Claims 7-11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Miyano in view of Parr and further in view
of Shillington.
Miyano pertains to an intake manifold assembly for a V6
internal combustion engine. With reference of Figures 1 and
2, the manifold includes an intake distributor 33, a first
series of counterclockwise extending pipes communicating with
first cylinder bank 1, and a second series of clockwise
extending pipes communicating with second cylinder bank 2.
Appeal No. 96-3298
Application 08/361,284
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The pipes communicating with the first bank are arranged in
pairs, with each pair comprising a first long pipe 42 and a
second shorter pipe 43. A set of valves 45 mounted on a
common shaft is
provided for the first series of pipes, one valve being
located in each of the shorter pipes. By turning the shaft,
valves 45 can be placed in a first position preventing the
passage of air from the intake distributor through the shorter
pipes to the cylinders of the first bank, a second position
permitting the passage of air from the intake distributor
through the shorter pipes to the cylinders of the first bank,
and various positions therebetween. Miyano’s second series of
pipes is similar to the first series, except, as can be
discerned from Figures 1 and 2, the second series of pipes is
a mirror image of the first series of pipes. In this regard,
the second series of pipes includes its own set of valves 45
mounted on a common shaft separate and distinct from the shaft
carrying the valves for the first series of pipes. Actuator
46 is attached to both valve shafts for actuating all of the
Appeal No. 96-3298
Application 08/361,284
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valves 45 simultaneously.
Parr discloses an intake manifold for an internal
combustion engine, wherein the manifold includes an intake
distributor 11 and a series of pipes communicating with the
cylinders. The engine of Parr appears to comprise an in-line
cylinder block, that is, the cylinders appear to be aligned in
a single row or
bank. As with Miyano, the pipes of Parr’s manifold are
arranged in pairs, with each pair comprising a first long pipe
14, 24 and a second shorter pipe 31. In addition, a rotary
valve member 15 having a number of transverse ducts 40 is
provided in Parr for controlling the passage of air through
either the long pipes or the shorter pipes.
Shillington discloses an air intake comprising pairs of
long and short pipes, the pipes being formed by a single
plastic part.
In rejecting the appealed claims under 35 U.S.C. § 103,
the examiner acknowledges that Miyano lacks, inter alia,
“utilizing a single drum controller rotatively arranged in a
Appeal No. 96-3298
Application 08/361,284
According to appellants (brief, page 5), Miyano also2
fails to disclose shorter inlet pipes that end at the same
flange as the long inlet pipes, as called for in claim 7, and
a common wall between each of the first and second inlet
pipes, as also called for in claim 7.
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longitudinal hole intersecting each second [shorter]
individual inlet pipe, the drum controller having through-
holes to open and close the second [shorter] individual inlet
pipes by rotation of the drum controller” (final rejection,
page 3). Nevertheless, the examiner has taken the position2
that “[i]t would have been obvious . . . to provide the intake
manifold of Miyano et al with the
drum controller of Parr in lieu of throttle valve 45, in order
to provide a more durable, less expensive control for the
second [shorter] passage” (final rejection, page 3).
In addition, in responding to appellants’ argument, the
examiner acknowledges that one could not modify Miyano by
placing a single drum controller in a longitudinal hole
intersecting each of the shorter pipes because Miyano’s design
requires two separate and distinct valve shafts. The examiner
Appeal No. 96-3298
Application 08/361,284
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has taken the position, however, that
appellant has [sic, appellants have] made no
argument as to the benefit to be derived from having
one drum controller, and it is not seen that this is
a patentable distinction. Note that it has been
held that omission of an element and its function in
a combination where the remaining elements perform
the same functions as before involves only routine
skill in the art. In re Karlson, 136 USPQ 184
(answer, page 4).
Claim 7 calls for an inlet pipe system comprising a
single drum controller intersecting each of the second
(shorter) inlet pipes. If it is the examiner’s position that
it would have been obvious to replace the valve shaft and
valves 45 of each of Miyano’s first and second series of pipes
with a drum controller like that of Parr, the resulting
manifold clearly would not
correspond to appellants’ claimed subject matter because the
resulting modified Miyano manifold would not comprise a single
drum controller intersecting each of the shorter inlet pipes.
On the other hand, if it is the examiner’s position that it
would have been obvious in view of the teachings of Parr to
Appeal No. 96-3298
Application 08/361,284
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replace the valve shaft and valves 45 of both of Miyano’s
first and second series of pipes with a single drum controller
like that of Parr, we simply do not agree that the combined
teachings of the applied references suggest such a
modification. As aptly pointed out by appellants, Miyano’s
design virtually excludes the possibility of providing this
sort of construction absent a major reconstruction which would
involve eliminating one of the common valve shafts and
rerouting the paths of the pipes to allow each of the shorter
inlet pipes to be under the control of a single controller.
How this is to be accomplished in the absence of appellants’
teachings is not clear.
As for the examiner’s reliance on In re Karlson, 311 F.2d
581, 584, 136 USPQ 184, 186 (CCPA 1963) for the principle that
omission of an element and its function involves only routine
skill in the art, we observe that the court has also
recognized
that this is not a mechanical rule, and that the language in
Appeal No. 96-3298
Application 08/361,284
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Karlson was not intended to short circuit the determination of
obviousness mandated by 35 U.S.C. § 103. In re Wright, 343
F.2d 761, 769-70, 145 USPQ 182, 190 (CCPA 1965). We do not
agree with the examiner’s position to the extent it advocates
that the use of a single controller drum for opening or
closing each of the shorter pipes is not a patentable
distinction with respect to Miyano’s intake manifold for a V-
type engine. To the contrary, it appears that appellants have
eliminated one of Miyano’s valve shafts while retaining its
function (i.e., controlling the opening and closing of the
affected shorter inlet pipes) by arranging the inlet pipes in
a manner which allows use of a single controller. Such
elimination of an element (the second valve shaft) while
retaining its function is indicative of unobviousness, and we
find nothing in the applied prior art which would indicate
otherwise. See In re Fleissner, 264 F.2d 897, 900, 121 USPQ
270, 271 (CCPA 1959) (“it may be unobvious to omit an element
while retaining its function”), and Richards v. Chase Elevator
Co., 159 U.S. 477, 486, 1895 Dec. Comm’r of Pats., 728, 729
(“the omission of an element in a combination may constitute
Appeal No. 96-3298
Application 08/361,284
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invention, if the result of the new combination be the same as
before”).
The Shillington reference was cited for its showing of
air intake pipes formed by a single plastic part, and does not
add anything to the Miyano and Parr references insofar as the
deficiencies discussed above are concerned.
Accordingly, we conclude that the applied prior art does
not make out a prima facie case of obviousness.
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
IRWIN CHARLES COHEN ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-3298
Application 08/361,284
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Appeal No. 96-3298
Application 08/361,284
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Peter N. Lalos
Lalos & Keegan
1146 Nineteenth Street NW
Washington, DC 20036-3703