Ex parte Smith et al.

Board of Patent Appeals and Interferences

Jul 30, 1998

08225653 (B.P.A.I. Jul. 30, 1998)

Application for patent filed April 11, 1994. According to appellants,1
the application is a continuation-in-part of Application 08/145,885, filed
October 29, 1993, now abandoned.
Claims 2, 11 and 22 have been amended subsequent to final rejection.2
1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD W. SMITH, Jr.
and MARK D. HOWARD
_____________
Appeal No. 96-3130
Application 08/225,6531
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and STAAB, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Richard W. Smith, Jr. and Mark D. Howard (the appellants)
appeal from the final rejection of claims 2, 11, 22, 23, 26 and
28. Claims 9 and 10 stand allowed. On page 5 of the answer,2
the examiner states that claims 3, 4, 12-21, 27 and 29-33, the
Appeal No. 96-3130
Application 08/225,653
2
only other claims remaining in the application, are allowable
subject to the requirement that they be rewritten to include all
the subject matter of the claims from which they depend.
We AFFIRM-IN-PART and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), enter a new rejection of claim
2.
The appellants invention pertains to a cylinder head for an
internal combustion engine. Independent claims 2, 11, 22 and 28
are further illustrative of the appealed subject matter and
copies thereof may be found in EXHIBIT A of the appellants'
brief.
The references relied on by the examiner are:
Sperry 4,159,011 Jun. 26, 1979
Piatti 5,148,781 Sep. 22, 1992

Claim 2 is rejected under 35 U.S.C. § 102(e) as being
anticipated by Piatti.
Claims 11, 22, 23, 26 and 28 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Piatti in view of Sperry.
The examiner's rejections are explained on pages 3-5 of the
answer. The arguments of the appellants and examiner in support
of their respective position may be found on pages 14-34 of the
Appeal No. 96-3130
Application 08/225,653
Page 3 of the specification indicates that scavenging is "the fuel3
passing directly between the inlet and exhaust valve during valve overlap (that
period of time during which both the intake and the exhaust valves are
simultaneously open" (lines 10-12).
3
brief, pages 1-9 of the reply brief and pages 6-10 of the answer.
OPINION
We have carefully reviewed the appellants' invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellants in the brief and reply brief and by the
examiner in the answer. As a consequence of this review, we will
sustain the rejection of claims 11 and 28 under 35 U.S.C. § 103.
We will not, however, sustain the rejection of claim 2 under 35
U.S.C. § 102(e) or the rejection of claims 22, 23 and 26 under 35
U.S.C. § 103. Additionally, we will enter a new rejection of
claim 2 under 35 U.S.C. § 112, second paragraph.
Considering first the rejection of claim 2 under 35 U.S.C.
§ 102(e), the appellants note that claim 2 expressly requires a
"means for restricting the amount of cross flow scavenging3
between said intake valve port and said exhaust valve port"
(footnote added) and thereafter assert that there is no such
Appeal No. 96-3130
Application 08/225,653
4
structure in Piatti. On the other hand, the examiner is of the
opinion that this means plus function clause "is so broad as to
read on both the exhaust valve and the intake valve" (answer,
page 3).
Since the limitation in question is drafted in a means-plus-
function format, the scope thereof is governed by 35 U.S.C.
§ 112, sixth paragraph. In re Donaldson, 16 F.3d 1189, 1195, 29
USPQ2d 1845, 1850 (Fed. Cir. 1994). See also Valmont Indus.,
Inc. v. Reinke Mfg. Co., Inc., 983 F.2d 1039, 1042, 25 USPQ2d
1451, 1454 (Fed. Cir. 1993) (Paragraph 6 of Section 112 "limits
the applicant to the structure, material, or acts in the
specification and their equivalents").
Reviewing the appellants' specification, it appears that
there are at least five distinct structural arrangements which
perform, or at least contribute to, this function: (1) the
positioning of the intake valve at an angle which is different
from the exhaust valve (see page 5, lines 5-20; page 6, lines 14-
17); (2) the valve seats for each cylinder being offset from one
another (see page 6, lines 1-5 and 9-13; (3) a restriction in the
exhaust passage (see page 6, lines 5-11); (4) the wedge-shaped
combustion chamber (see page 6, lines 25-29); and (5) a
protuberance in the intake passage (see page 8, lines 1-16). As
Appeal No. 96-3130
Application 08/225,653
5
to exactly which (or combination thereof) of these distinct
structural arrangements the appellants intended to encompass by
the means-plus-function clause, it might be speculated that the
appellants intended that arrangements (1) and (4) should not be
encompassed by the "means" clause inasmuch as they have been
previously set forth in claim 2. It also might be argued that
arrangement (5) should not be encompassed by the "means" clause
since no intake passage has been set forth, although this again
is at least somewhat speculative. With respect to arrangements
(2) and (3), one is left to complete speculation as to which one
(or both) of these two arrangements the appellants intend to
encompass by the "means" clause.
From the above, in comparing the claimed subject matter with
the applied prior art, it is apparent to us that considerable
speculations and assumptions are necessary in order to determine
what in fact is being claimed. Since a rejection on prior art
cannot be based on speculations and assumptions (see In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962)
and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970)), we are constrained to reverse the examiner's rejection of
claim 2 under 35 U.S.C. § 102(e). We hasten to add that this is
a procedural reversal rather than one based upon the merits of
Appeal No. 96-3130
Application 08/225,653
6
the § 102(e) rejection.
Turning now to the rejection of claims 11 and 28 under 35
U.S.C. § 103 as being unpatentable over Piatti in view of Sperry,
it is the examiner's position that:
Sperry discloses that it is known in the art
to provide the configuration described above
including the choke, protuberance, and abrupt
change of direction of the intake passage
(see Fig. 2 wherein 58 is the choke and 60 is
the protuberance). It would have been
obvious to one with ordinary skill in the art
at the time the invention was made to provide
the intake passage of Piatti with the
configuration of the intake passage of
Sperry, in order to increase the speed of air
flow therethrough. [Answer, pages 4 and 5.]
With respect to the question of whether the protuberance 60 in
the intake passage of Sperry enhances the fragmentation and/or
vaporization of the fuel, the examiner's position is that:
the structure of the Sperry reference is so
similar to appellant's that it would
necessarily inherently function in the same
way even though it is recognized that this
result was not intended by Sperry (compare
Fig. 2 of Sperry with Fig. 8 of the instant
application). [Answer, page 8.]
In response to the appellants' arguments that the structure of
Appeal No. 96-3130
Application 08/225,653
7
Sperry would not inherently function "in the same way," the
examiner challenged the appellants to prove that Sperry's
structure would not, citing In re Ludtke, 441 F.2d 660, 664, 169
USPQ 563, 566-67 (CCPA 1971) as authority.
The appellants argue that there is no suggestion to combine
the teachings of the references in the manner proposed by the
examiner. This is particularly the case, in the appellants'
view, since the references are not concerned with the appellants'
problem and "don't even recognized the desire, or need, to
enhance fragmentation and/or vaporization of the fuel droplets as
they pass through the intake passages within the cylinder head"
(see brief, page 25). With respect to the examiner's position
that the protuberance of Sperry would inherently function to
enhance fragmentation and/or vaporization of the fuel droplets,
the appellants contend that "[t]here is no mention, nor is there
a scintilla of evidence that supports the conclusion, that the
Appellants' further vaporization is inherent to the Sperry
configuration" (see brief, page 21).
We are unpersuaded by the appellants' arguments. While
there must be some teaching, reason, suggestion, or motivation to
combine existing elements to produce the claimed device (see ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
Appeal No. 96-3130
Application 08/225,653
8
1577, 221 USPQ 929, 933 (Fed. Cir. 1984)), it not necessary that
the cited references or prior art specifically suggest making the
combination (B.F. Goodrich Co. V. Aircraft Braking Systems
Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996)
and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed.
Cir. 1988)). Rather the test for obviousness is what the
combined teachings of the references would have suggested to one
of ordinary skill in the art. In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
Here, Piatti discloses a cylinder head 1 including a deck
surface (the bottom surface of the head 1), a combustion chamber
having first and second wedge portions (see Figs. 2-4 and 10), an
exhaust valve port having an exhaust valve seat 1b disposed at a
first angle relative to the deck surface, an intake valve port
having an intake valve seat 1a that is disposed at a second angle
relative to the deck surface, the second angle being less than
the first angle (see column 6, lines 52-59; Figs. 1-4 and 10) and
an intake passage (see Figs. 2-4 and 10). Sperry discloses a
cylinder head 18 having a deck surface (that surface adjacent
gasket 22), a combustion chamber having wedge portions 20, inlet
and exhaust ports 26, 24, an intake passage 4 which includes a
Appeal No. 96-3130
Application 08/225,653
9
sharp, angular change in direction just prior to inlet valve seat
46 (much the same as that depicted by Piatti in Fig. 10), a flow
constricting projection 58 (which is stated in column 3, lines
41-43, to "increase the amount of airflow" and thus would
necessarily provide for increased velocity in much the same
manner as the appellants' flow constricting means or choke 99)
and a V-shaped protuberance 60 that includes a reaction surface
(the sides of the protuberance), which protuberance is stated to
divide the flow of air or mixture passing
through the port and direct it relatively
smoothly around the protruding valve guide
portion and the associated valve stem.
[Column 3, lines 20-23.]
In our view, one of ordinary skill in this art would have found
it obvious to provide the head of Piatti with (1) a flow
constricting means as taught by Sperry at 58 (which of necessity
increases the velocity) in order to achieve Sperry's expressly
stated advantage of increasing the amount of airflow and (2) a V-
shaped protuberance in order to achieve Sperry's expressly stated
advantage directing the airflow "relatively smoothly."
As to the appellants' contention that neither Piatti nor
Sperry recognizes the problem that they were attempting to solve,
Appeal No. 96-3130
Application 08/225,653
10
we must point out that “[a]s long as some motivation or
suggestion to combine the references is provided by the prior art
taken as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor” (In re
Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992)) and all the utilities or benefits of the claimed invention
need not be explicitly disclosed by the prior art references to
render the claim unpatentable under section 103 (see In re
Dillon, 919 F.2d 688, 692, 696, 16 USPQ2d 1897, 1901, 1904 (Fed.
Cir. 1990) (in banc), cert. denied, 500 U.S. 904 (1991)). See
also In re Kemps, 97 F.3d 1427, 1429, 40 USPQ2d 1309, 1311 (Fed.
Cir. 1996) (“all the benefits of the claimed invention need not
be explicitly disclosed to render the claim unpatentable under
section 103"). We also observe that “[t]he fact that appellant
has recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise have been
obvious” (Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int.
1985), aff'd.mem., 795 F.2d 1017 (Fed. Cir. 1986)). Similarly,
the mere recognition of latent properties in an otherwise obvious
product in the prior art does not render such a product
Appeal No. 96-3130
Application 08/225,653
11
nonobvious. See In re Prindle, 297 F.2d 251, 254, 132 USPQ 282,
283-84 (CCPA 1962).
With respect to the appellants' contention that there is no
"evidence" that fuel droplets will impact against the sides of
the protuberance of Sperry and at least partially fragmentize, we
observe that when relying upon the theory of inherency, the
examiner has the initial burden of establishing a basis in fact
and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the prior art. See Ex
parte Levy, 17 USPQ2d 1461 (Bd. Pat. App. & Int. 1990). Here,
the examiner has noted the great similarity between the structure
depicted by Sperry in Fig. 2 and by the appellants in Fig. 8 and,
accordingly, has established a sound basis to conclude the
claimed subject matter may in fact be an inherent characteristic
of Sperry. Where, as here, there is a sound basis to believe
that the critical function for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteris-
tic of the prior art device, it was incumbent upon the appellants
to prove that the device of Sperry does not in fact possess the
characteristics relied on. See In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997); In re Spada, 911
Appeal No. 96-3130
Application 08/225,653
12
F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 597 (CCPA 1980); In re
Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433 (CCPA 1977); In
re Glass, 474 F.2d 1015, 1019, 176 USPQ 529, 532 (CCPA 1973); In
re Ludtke, supra; and In re Swinehart, 439 F.2d 210, 212-13, 169
USPQ 226, 229 (CCPA 1971). The appellants, however, have not
satisfied this burden.
In response to the examiner's challenge to prove that the
structure of Sperry does not in fact inherently perform the
critical function, the appellants merely argue that the, inasmuch
as Sperry's structure is stated to provide a "fairing," it cannot
perform the function in question. First, we observe that
counsel's arguments in the brief cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191,
196 (Fed. Cir. 1984), In re Payne, 606 F.2d 303, 315, 203 USPQ
245, 256 (CCPA 1979) and In re Pearson, 494 F.2d 1399, 1405, 181
USPQ 641, 646 (CCPA 1974). Second, it does not follow that just
because in lines 15 and 16 of column 3, Sperry describes the
leading edge of his protuberance as a "fairing," that the sides
of the protuberance do not perform the function in question as
Appeal No. 96-3130
Application 08/225,653
Although the examiner has relied on the combined teachings of Piatti4
and Sperry, it appears to us that there is response in Sperry alone for all the
limitations as broadly set forth in claim 28.
13
the examiner contends. Indeed, the appellants characterize the
leading edge of their protuberance to be a "knife edge" and,
thus, it appears that their leading edge would be more of a
"fairing" than the leading edge of Sperry.
The appellants also rely on decisions such as In re
Spormann, 363 F.2d 444, 150 USPQ 449 (CCPA 1966) and In re
Newell, 891 F.2d 899, 13 USPQ2d 1248 (Fed. Cir. 1989) as
authority for the notion that reliance on inherency is improper
in the present case. We must point out, however, this is not an
instance wherein the examiner concluded that the reference (i.e.,
Sperry) inherently performs the function and then utilized this
"inherent function" as a basis for modifying or combining the
teachings of the references. Here, the structure of Sperry4
appears to inherently perform the function in question with no
modification whatsoever. Moreover, as we have noted above, ample
motivation for combining the teachings of the references is
present separate and apart from the inherent function in
question. It should also be noted that the principle of
inherency is equally applicable to a rejection based on
Appeal No. 96-3130
Application 08/225,653
14
obviousness. See, e.g., In re Fitzgerald, supra, and In re Best,
supra.
In view of the foregoing, we will sustain the rejection of
claims 11 and 28 under 35 U.S.C. § 103 based on the combined
teachings of Piatti and Sperry.
Considering now the rejection of claims 22, 23 and 26 under
35 U.S.C. § 103 as being unpatentable over Piatti in view of
Sperry, we observe that independent claim 22 expressly requires
that the first and second wedge portions are successively
adjacent each other in the longitudinal direction. In Piatti,
however, these wedge portions are located opposite one another in
the transverse direction. Although the examiner's position with
respect to this limitation is less than clear, apparently the
examiner is of the opinion that such an orientation can be
dismissed as a matter of design choice. We disagree. It is
self-evident that Piatti's arrangement, wherein the exhaust and
intake valves (and hence the wedges) are inclined in direction
toward each other would promote (rather inhibit) scavenging.
Accordingly, we will not sustain the rejection of claims 22, 23
and 26 under 35 U.S.C. § 103 based on the combined teachings of
Piatti and Sperry.
Appeal No. 96-3130
Application 08/225,653
15
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claim 2 is rejected under 35 U.S.C. § 112, second paragraph,
for failing to particularly point out and distinctly claim the
subject matter that the appellants regard as the invention. For
the reasons stated above with respect to the § 102(e) rejection
of claim 2, considerable speculations and assumptions would be
necessary in order to in fact determine what structure the
appellants intended to be encompassed by the means-plus-function
clause and, therefore, the appellants have failed to set forth
the claimed invention with the requisite precision and
particularity. As our reviewing court stated in In re Donaldson,
16 F.3d at 1195, 29 USPQ2d at 1850:
Although paragraph six statutorily provides
that one may use means-plus-function language
in a claim, one is still subject to the
requirement that a claim "particularly point
out and distinctly claim" the invention.
Therefore, if one employs means-plus-function
language in a claim, one must set forth in
the specification an adequate disclosure
showing what is meant by that language. If
an applicant fails to set forth an adequate
disclosure, the applicant has in effect
failed to particularly point out and
distinctly claim the invention as required by
the second paragraph of section 112.
Appeal No. 96-3130
Application 08/225,653
16
In summary:
The rejections of claim 2 under 35 U.S.C. § 102(e) and
claims 22, 23 and 26 under 35 U.S.C. § 103 are reversed.
The rejection of claims 11 and 28 under 35 U.S.C. § 103 is
affirmed.
A new rejection of claim 2 under 35 U.S.C. § 112, second
paragraph, has been made.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63,122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of
the original decision . . . .
37 CFR § 1.196(b) also provides that the appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
Appeal No. 96-3130
Application 08/225,653
17
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (37 CFR § 1.197(c))
as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of facts
relating to the claims so rejected, or both,
and have the matter reconsidered by the
examiner, in which event the application will
be remanded to the examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
Should the appellants elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of the
affirmance is deferred until conclusion of the prosecution before
the examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the appellants elect prosecution before the examiner and
Appeal No. 96-3130
Application 08/225,653
18
this does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board of
Patent Appeals and Interferences for final action on the affirmed
rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
Appeal No. 96-3130
Application 08/225,653
19
) INTERFERENCES
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Jack L. Renner
RENNER, KENNER, GRIEVE, BOBAK, TAYLOR
& WEBER
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