Ex Parte Oyobe

Patent Trial and Appeal Board

Jun 7, 2016

12448618 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/448,618 0612612009
25944 7590 06/09/2016
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Hichirosai Oyobe
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.
142022 2981
EXAMINER
EVANS, BRYAN A
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HICHIROSAI OYOBE
Appeal2014-004057 1
Application 12/448,618
Technology Center 3600
Before: MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1, 3, 6, 7, 9, 10, 12, and 14--16. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellant identifies the real party in interest as "Toyota Jidosha
Kabushiki Kaisha." (Appeal Br. 1.)
Appeal2014-004057
Application 12/448,618
STATEMENT OF THE CASE
The Appellant's invention "relates to a vehicle, and particularly
relates to a vehicle to which different types of energy sources are supplied"
or, in other words, "a hybrid vehicle." (Spec. 1, 11. 6-12, Abstract.)
Illustrative Claim2
1. A vehicle comprising:
a first drive unit driven by a first energy source;
a first reservoir unit reserving said first energy source;
a single first connection unit that is a fuel supply unit
allowing a first energy source supply unit to be connected
thereto, and guiding said first energy source supplied from said
first energy source supply unit to said first reservoir unit;
a second drive unit driven by a second energy source
different from said first energy source;
a second reservoir unit reserving said second energy
source;
a single second connection unit that is a charge unit
allowing a second energy source supply unit to be connected
thereto, and guiding said second energy source supplied from
said second energy source supply unit to said second reservoir
unit;
a passenger accommodation cabin accommodating a
passenger; and a loading-and-unloading opening in
communication with said passenger accommodation cabin,
wherein
said first connection unit and said second connection unit
are located rearward in a traveling direction with respect to said
loading-and-unloading opening, and
only said single first connection unit is provided at a first
lateral surface of said vehicle and only said single second
connection unit is provided at a second lateral surface of said
vehicle, said first lateral surface and said second lateral surface
being arranged in a width direction of said vehicle.
2 This illustrative claim is quoted from the Claims Appendix (Claims App.)
accompanying the Appeal Brief.
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Appeal2014-004057
Application 12/448,618
Weihe
Meaney
Perlman
Harris
J anarthanam
Ishikawa
References
us 5,680,907
US 6,536,547 Bl
US 7,451,839 B2
US 7,859,219 B2
US 7,970,528 B2
JP 2005-204361
Rejections
Oct. 28, 1997
Mar. 25, 2003
Nov. 18, 2008
Dec. 28, 2010
June 28, 2011
July 28, 2005
The Examiner rejects claims 1, 3, 6, 9, and 14--16 under 35 U.S.C.
§ 103(a) as unpatentable over Pearlman, Meaney, and Harris. (Final
Action 2.)
The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Pearlman, Meaney, Harris, and Janarthanam. (Id. at 6.)
The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Pearlman, Harris, and Weihe. (Id. at 7.)
The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Pearlman, Harris, and Ishikawa. (Id. at 8.)
ANALYSIS
Independent claims 1, 15, and 16 are each directed to a vehicle
comprising "a single second connection unit that is a charge unit" and "a
single second connection unit that is a charge unit." (Appeal Br., Claims
App.) Independent claim 1, 15, and 16 further require that "only said single
first connection unit is provided at a first lateral surface of said vehicle and
only said single second connection unit is provided at a second lateral
surface of said vehicle." (Id.)
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Appeal2014-004057
Application 12/448,618
The Examiner finds that "[ e ]very component of the claimed invention
is taught by Perlman and Meaney" except for the "specific locations of the
fuel supply unit and charge unit." (Answer 11.) The Examiner also finds
that "Harris teaches that it is possible to place a charge unit at nearly any
location around the perimeter of the vehicle, independent of the location of
the battery or other electrical components." (Id.) The Examiner further
finds that it would have been obvious to one of ordinary skill in the art to
"substitut[ e] one known location of connection units for another known
location of connection units" and this "would have yielded the expected
result of providing symmetry to the vehicle for improved aesthetics." (Final
Action 4.)
Thus, the Examiner finds that the claimed invention amounts to a
structure already known in the art being altered by the substitution of one
element (i.e., a connection-unit location) for another known in the field to
yield a predictable result. More succinctly, the Examiner's rejection is based
on a KSR mere-substitution rationale. 3
The Appellant advances arguments premised upon individual prior art
references failing to precisely show both the claimed location of the fuel
supply unit and the claimed location of the charge unit on the same vehicle.
(See Appeal Br. 12-13.) For example, the Appellant argues that Perlman's
fuel port 112 and electricity port 129 are shown on the same lateral side of a
vehicle, that Meaney' s charge plug 30 and fuel inlet 32 are likewise
3 See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (When "a
structure already known in the prior art [] is altered by the mere substitution
of one element for another known in the field, the combination must do
more than yield a predictable result" in order to be considered non-obvious);
see also MPEP § 2143 Rationale (B).
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Appeal2014-004057
Application 12/448,618
provided on the same side surface of a vehicle, and that Harris is silent with
respect to a fuel port. (Id.)
We are not persuaded by these arguments because they do not
implicate that the Examiner's articulated rationale (i.e., a KSR mere-
substitution rationale) is unreasonable and/or without rational underpinnings.
Specifically, the Appellant does not challenge the Examiner's finding
that the prior art teaches a vehicle which differs from the claimed vehicle by
substitution of the specific location of its single charge unit. (See
Answer 11; see also Perlman Fig. 4 and Meaney Fig. 1.) The Appellant
does not contend that it is not known in the art to locate a charge unit on
either lateral side of a vehicle. (See id.; see also Harris Fig. 1.) The
Appellant does not disagree with the Examiner's finding that a person of
ordinary skill "would have been able locate the charge unit on a lateral
surface of the vehicle opposite of the lateral surface having the fuel supply
port." (Answer 11.) And the Appellant does not point, with particularity, to
flaws in the Examiner's finding that the results of the substitution would
have been predictable (i.e., the substitution would have yielded the expected
result of providing symmetry to the vehicle for improved aesthetics). (See
Final Action 4.)
The Appellant also argues that the prior art references fail to
recognize "advantages" and "solutions for problems" discussed in the
Specification. (See Appeal Br. 13-14.) We are not persuaded by this
argument because it is not indicative of Examiner error. A rejection based
upon a KSR mere-substitution rationale does not require the Examiner to
establish that the prior art teaches the particular advantages, problems,
and/or solutions recognized by the Appellant.
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Appeal2014-004057
Application 12/448,618
As the Appellant does not otherwise argue that the Examiner errs in
rejecting the independent claims, we sustain the Examiner's rejection of
independent claims 1, 15, and 16.
Claims 3, 6, 9, and 14 depend from independent claim 1 (see Appeal
Br., Claims App.), are rejected on the same ground (see Final Action 2), and
are not argued further (see Appeal Br. 14). Thus, they fall with independent
claim 1; and we sustain the Examiner's rejection of dependent claims 3, 6, 9,
and 14.
Claims 7, 10, and 12 depend from independent claim 1 (see Appeal
Br., Claims App.) and are rejected on grounds involving additional prior art
references (see Final Action 6-8). The Appellant argues only that these
additional prior art references do not "overcome the deficiencies in the
rejection of claim 1." (Appeal Br. 14.) As discussed above, we are not
persuaded by the Appellant's position that the Examiner's rejection of
independent claim 1 is deficient. Thus, these claims also fall with
independent claim 1; and we sustain the Examiner's rejections of dependent
claims 7, 10, and 12.
DECISION
We AFFIRM the Examiner's rejections of claims 1, 3, 6, 7, 9, 10, 12,
and 14--16.
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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