Ex Parte Quigley et al

Board of Patent Appeals and Interferences

Jun 21, 2012

10603528 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/603,528 06/25/2003 David P. Quigley 8222-42 4126
54620 7590 06/21/2012
KRIEG DEVAULT LLP
ONE INDIANA SQUARE
SUITE 2800
INDIANAPOLIS, IN 46204-2079
EXAMINER
KWON, JOHN
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
06/21/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte DAVID P. QUIGLEY, PATRICK R. SHEA,
AARON S. QUINTON, DANA E. RICHARDSON, and
DOUG DOUP
____________________

Appeal 2010-005238
Application 10/603,528
Technology Center 3700
____________________

Before: CHARLES N. GREENHUT, WILLIAM V. SAINDON, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005238
Application 10/603,528
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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
35-43 and 45-52. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to an internal combustion engine piston.
Claim 35, reproduced below, is illustrative of the claimed subject matter:
35. An apparatus, comprising:
a piston having a solid head, a skirt, a longitudinal centerline
and a first end including an annular surface, said piston having
a circumferential sidewall portion and a bottom wall portion
defining a combustion bowl within said solid head at said first
end with said annular surface extending thereround, said
sidewall portion including a sharp edge at the intersection of
said annular surface and a part of said sidewall portion
extending substantially parallel to the centerline and a
substantially rounded lip overhanging a portion of said
combustion bowl and spaced axially from said sharp edge and
an upwardly flared portion located between said sharp edge and
said substantially rounded lip, said combustion bowl defined at
said sharp edge is round and said rounded lip is closer to said
centerline than said sharp edge is to said centerline, and
wherein said sharp edge directs a fuel passing out of said
combustion bowl away from said annular surface.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hofmann
Gaiser
US 5,605,126
US 6,539,910
Feb. 25, 1997
Apr. 1, 2003
Appeal 2010-005238
Application 10/603,528
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REJECTIONS
Claims 42, 43 and 45-49 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 4.
Claims 35-43 and 45-52 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gaiser and Hoffmann. Ans. 4.

OPINION
The rejection of claims 42, 43 and 45-49 under 35 U.S.C. § 112, first
paragraph, is reversed.
New or amended claims which introduce elements or limitations
which are not supported by the as-filed disclosure violate the written
description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971).
While there is no in haec verba requirement, newly added claim limitations
must be supported in the specification through express, implicit, or inherent
disclosure. The fundamental factual inquiry is whether the specification
conveys with reasonable clarity to those skilled in the art that, as of the filing
date sought, applicant was in possession of the invention as now claimed.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-4 (Fed. Cir. 1991).
In an appropriate situation, drawings may be used to provide
descriptive support required by 35 U.S.C. § 112, first paragraph. Vas-Cath
Inc. v. Mahurkar, 935 F.2d at 1565. However, as both the Examiner and
Appellants recognize, unless otherwise stated, patent drawings typically do
not define the precise proportions of the depicted elements. See Ans. 6 and
App. Br. 8 discussing In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA
1977). Where the drawings do not clearly and conclusively disclose subject
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Application 10/603,528
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matter an applicant for a patent seeks to enter by amendment, and the
specification is completely silent in this respect, the Patent Office is justified
in denying the applicant’s request as not complying with 35 U.S.C. §§ 112,
132. See, e.g., In re Olson, 212 F.2d 590 (CCPA 1954) (affirming a
rejection based on improperly inserting the limitation “equally spaced”).
However, where the figures conform to limitations introduced by
amendment there is no such justification. See, e.g., In re Heinle, 342 F.2d
1001,1007 (CCPA 1965) (reversing a rejection (of claims 3 and 6) based on
inserting a limitation that one part was “approximately one-forth” the size of
another). Each case is fact-specific and highly dependent upon the
construction given to the term in question. See Vas-Cath Inc., Olson and
Heinle, supra.
In the case before us, the Specification, as originally filed, describes
the relationship between the upstanding wall 62 on the outer section 60 of
the piston head 54 combustion bowl 51 as “substantially parallel” to the
longitudinal centerline X of the bowl. Spec. 7-8. While the Specification
allows for some deviation from parallel, Figures 2 and 3 seem to depict a
parallel relationship between these elements. This configuration appears to
aid in directing the portion of the spray plume from the combustion bowl 51
up into the combustion chamber 24 in the general direction of arrow Y
which also appears to be parallel the centerline X.
The Examiner contends that by omitting the word “substantially,” the
term “parallel” would not account for manufacturing tolerances. We cannot
agree with the Examiner’s claim interpretation. While it may be reasonable
in the realm of mathematics, in the realm of manufacturing engine
components, one of ordinary skill in the art would understand that the term
“parallel” already allows for slight deviations due to the manufacturing
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process. One of ordinary skill in the art would understand that prefacing the
term with substantially allows for an even greater deviation than that. One of
ordinary skill in this fairly predictable art would recognize that making
upstanding wall 62 “parallel” to the bowl centerline X is one of a small
number of ways to make it “substantially parallel” and would understand the
drawings as showing this specific example. Cf e.g., In re Smythe, 480 F.2d
1376, 1383-6 (CCPA 1973) and In re Wertheim, 541 F.2d 257, 264-5
(CCPA 1976)) with In re Ruschig, 379 F.2d 990, 994-5 (CCPA
1967)(“Appellants are pointing to trees. We are looking for blaze marks
which single out particular trees. We see none.”) Thus, the Specification
conveys with reasonable clarity to those skilled in the art that applicant was
in possession of the invention as now claimed. Accordingly, we cannot
sustain the rejection under 35 U.S.C. § 112, first paragraph.

The rejection of claims 35-43 and 45-52 under 35 U.S.C. § 103(a) as being
unpatentable over Gaiser and Hoffmann is reversed.
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) noted that an analysis supporting a rejection under 35 U.S.C. § 103
should be made explicit. The Federal Circuit has stated that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
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441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418.
The Examiner found that Gaiser discloses the basic device of
independent claims 35, 42 and 50. Ans. 4-5. The Examiner found that the
only element lacking in Gaiser was the use of a solid head portion of the
piston. Ans. 5. To account for this deficiency, the Examiner states
“Hoffmann shows that the provision of a solid piston head is old and well
known in the art. Since the prior art references art from the same field of
endeavor, the purpose disclosed by Hoffmann would have been recognized
in the pertinent art of Gaiser.” Ans. 5. While the requirement for a solid
head, or one not having cooling passages, is present in claims 35 and 50,
respectively, we do not find it in claim 42. The Examiner has not explained
why Hoffmann’s disclosure is relevant to claim 42.
While Gaiser does disclose a piston having a combustion bowl (see
Fig. 4), Gaiser provides only a minimal discussion of that structure. Col. 1,
ll. 13-15. We agree with Appellants (App. Br. 10) that the primary, if not the
sole, concern of Gaiser relates to the movement of cooling and lubrication
oil within the piston head. Gaiser passim. Thus, the Examiner’s proposed
modification aims to essentially destroy Gaiser’s device, and runs counter to
Gaiser’s teachings. This is indicative that hindsight has improperly crept into
the Examiner’s analysis. The fact that two references may be considered
within the same field of endeavor does not demonstrate a reason for their
combination. The Examiner references “the purpose disclosed by
Hoffmann” as a reason for combining the teachings of the references as
proposed by the Examiner. However, Hoffmann does not discuss any
advantages or desirability of using a solid head arrangement. We must
therefore conclude that the Examiner failed to articulate reasoning with
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rational underpinnings to support the legal conclusion of obviousness.
Accordingly, we cannot sustain the rejection of claims 35 and 50 and of
those claims depending therefrom.
The discussion in In re Wright, supra regarding dimensions is
pertinent to the Examiner’s rejection of claim 42 under 35 U.S.C. § 103(a).
There is no indication in Gaiser that the drawings are to scale and there is no
discussion of the part of the wall interpreted by the Examiner as “extending
in a direction parallel with said centerline.” If anything, Figures 3 and 4 of
Gaiser seem to show that part of the wall is not parallel to the centerline.
Thus, we cannot sustain the Examiner’s rejection of claim 42, and of those
claims depending therefrom, based on the Examiner’s finding of Gaiser
disclosing an “edge portion [] defined on a part of a wall of the combustion
bowl extending in a direction parallel with said centerline.” The Examiner
does not offer any alternative reasoning to account for this deficiency. Cf. In
re Wright, 569 F. 2d 1124, 1127-8.

DECISION
The Examiner’s rejections of claims 35-43 and 45-52 are reversed.

REVERSED

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