Ex Parte Suzuki

Patent Trial and Appeal Board

Jul 25, 2017

13137303 (P.T.A.B. Jul. 25, 2017)

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.
13/137,303 08/04/2011 Naoto Suzuki 142545.01 5725
27049 7590 07/27
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
GURARI, EREZ
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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):
OfficeAction27049@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOTO SUZUKI
Appeal 2015-003803
Application 13/137,303
Technology Center 3600
Before NEIL T. POWELL, JASON W. MELVIN, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Naoto Suzuki (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner’s March 13, 2014 final decision (“Final Act.”) rejecting claims 1
and 3—12.2 Appellant’s representative presented oral argument on July 13,
2017. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellant, the real party in interest is Toyota Jidosha
Kabushiki Kaisha. Appeal Br. 1.
2 Claims 2 and 13 are canceled. Amendment 2, 7 (filed Sept. 11, 2012).
Appeal 2015-003803
Application 13/137,303
SUMMARY OF THE DECISION
We REVERSE.
SUMMARY OF THE INVENTION
Appellant’s disclosure is directed to “a vehicle including a plurality of
drive sources.” Spec. 1:10—11. Claim 1, reproduced below from page A-l
(Claims Appendix) of the Appeal Brief, is illustrative of the claimed subject
matter:
1. A vehicle, comprising:
an internal combustion engine driven by fuel;
a drive source driven by an energy source different from
said fuel;
an energy source storage portion that stores said energy
source;
an energy source supply portion to which an external
connection portion is removably connected, for at least one of
being supplied with said energy source from said external
connection portion and supplying said energy source to said
external connection portion;
a vehicle-mounted device arranged adjacent to said
internal combustion engine,
an internal combustion engine accommodation portion
for accommodating said internal combustion engine,
the internal combustion engine accommodation portion
including a first side surface and a second side surface
extending in a longitudinal direction of the vehicle and aligned
with each other in a parallel fashion,
said internal combustion engine being arranged closer to
the first side surface relative to the second side surface in the
internal combustion engine accommodation portion,
said internal combustion engine being a heat source that
emits irradiation on said vehicle-mounted device to form a
projection region on said second side surface, the projection
region being a region substantially in-line with said internal
combustion engine and said vehicle-mounted device where
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direct heat irradiation from said internal combustion engine
onto said second side surface is partially blocked by said
vehicle-mounted device; and
said energy source supply portion being arranged within
said projection region in the second side surface.
REJECTIONS
Claims 1 and 12 stand rejected under 35U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1, 3—6, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Oyobe ’068 (US 2009/0040068 Al, pub. Feb. 12,
2009), Ishikawa (US 7,398,844 B2, iss. July 15, 2008), and Official Notice.3
Claims 7—9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oyobe ’068, Ishikawa, Official Notice, and Oyobe ’455
(US 7,265,455 B2, iss. Sept. 4, 2007).
Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oyobe ’068, Ishikawa, Official Notice, Oyobe ’455, and
Kaneko (US 2008/0190680 Al, pub. Aug. 14, 2008).
ANALYSIS
Request for Information
The Examiner requests that Appellant “provide schematics for any
and all Toyota Hybrid vehicle models sold in the US up through 2008,”
stating that “the schematics are likely to identify vehicles sold in the US
which read on the language of the claims.” Final Act. 2—3. The Examiner
3 Although the heading indicates that claim 7 is included in this rejection,
claim 7 is not addressed in the body of the rejection. See Final Act. 4—8.
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later characterizes the request for information as being authorized by 37
C.F.R. § 1.105. Adv. Act. 2 (mailed Aug. 1, 2014).
Appellant argues that “[t]he Examiner never made a formal
Requirement for Information under 37 C.F.R. § 1.105,” that the requested
“information is not material to patentability,” and that the information
Appellant submitted “supports the Appellant’s position that the claims are
patentable.” Appeal Br. 5—9.
We do not address this argument because such issues are reviewable
by petition under 37 C.F.R. § 1.181, and are, therefore, not within the
jurisdiction of the Board. Ex parte Frye, 94 USPQ2d 1072, 1078 (BPAI
2010) (precedential); see also 37 C.F.R. §§ 1.113, 1.181; MPEP
§§ 1002.02(c), 1201.
Objection to the Specification
The Examiner finds that “[t]he title of the invention is . . . not
sufficiently descriptive.” Final Act. 3.
Appellant argues that the objection is improper. Appeal Br. 9.
We do not address this argument because objections are reviewable by
petition under 37 C.F.R. § 1.181, and are, therefore, not within the
jurisdiction of the Board. Frye, 94 USPQ2d at 1078; see also 37 C.F.R.
§§ 1.113, 1.181; MPEP §§ 1002.02(c), 1201.
Indefiniteness
The Examiner finds claims 1 and 12 to be indefinite because “it is
unclear how emitting heat on a vehicle device forms a projection region.”
Final Act. 3^4. The Examiner expounds, finding that “no devices are
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actually projected on to the sidewall portion.” Ans. 10. Continuing, the
Examiner states that although “it appears that Appellant wishes to claim the
projection region as that area on the sidewall which is protected from engine
heat by placement of the vehicle inverter in-between the compartment wall
and the engine,” “neither the claim language nor the [Specification
adequately provide for this configuration. One of ordinary skill in the art
would not be able to identify this configuration in the [Specification or the
claims as filed.” Id. at 11.
Appellant traverses, arguing that the meaning of the claim language is
clear and the Specification provides support for the claims. Appeal Br. 9—
11; see also Reply Br. 4—7.
We are persuaded of error. The penultimate paragraph of claims 1
and 12 specifies that the projection region, the vehicle-mounted device, and
the internal combustion engine are substantially in-line so that the heat
(“irradiation”) emitted by the internal combustion engine is partially blocked
by the vehicle-mounted device to form the projection region (which is on the
second side surface of the internal combustion engine accommodation
portion). We understand this language to define the recited projection
region as a region of the second side surface in which radiated heat emitted
by the internal combustion engine is blocked; in other words, the “shadow”
of the vehicle-mounted device is projected onto the second side surface.
This construction is consistent with the Specification. See, e.g., Spec. 12:3—
10, 13:12-16.
Accordingly, we do not sustain the rejection of claims 1 and 12 as
being indefinite.
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Obviousness Based on Oyobe ’068, Ishikawa, and Official Notice
Claims 1 and 3—6
The Examiner finds that Oyobe ’068 discloses a vehicle substantially
as recited in independent claim 1, including, inter alia, an internal
combustion engine (engine 4) that is “a heat source that emits irradiation on
said vehicle-mounted device (inherent, engines get hot and that heat will
reach other components in the engine compartment) to form a projection
region,” “the projection region being a region substantially in-line with said
internal combustion engine (heat from the engine is projected in every
direction).” Final Act. 4. The Examiner finds that Oyobe ’068 inherently
has a vehicle-mounted device because “any of the mounting devices for the
engine would meet this language.” Id. The Examiner reasons that “as
[Appellant] does not explicitly define what the vehicle mounted device is,
the [EJxaminer takes the position that one of ordinary skill in the art would
expect to find any number of vehicle mounted devices between an engine
and an engine compartment side wall (what [Appellant] calls the projection
region).” Id. at 5. The Examiner further reasons that the energy source
supply portion (connector 50) is arranged within the projection region
because “any part of the side surface could be fairly characterized as a
projection region.” Id. at 4—5. The Examiner takes Official Notice that “an
engine accommodation portion is a standard feature in all vehicles and
usually included in the portion of the vehicle under the front hood.” Id. at 5.
The Examiner relies on Ishikawa to teach the internal combustion engine
being closer to a first side surface of the internal combustion engine
accommodation portion, reasoning that it would have been obvious to one of
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ordinary skill to position the engine of Oyobe ’068 to be biased toward one
side “to ensure the components are arranged in a known and reliable way.”
Id. at 6. The Examiner further reasons that it would have been obvious to
one of ordinary skill to position the electric connection portion on the other
side of the internal combustion engine accommodation portion “to minimize
the distance from the plug to the inverter.” Id. The Examiner also
determines that the recited alignment of the internal combustion engine,
vehicle-mounted device, and projection region is “a mere arrangement of
parts” that “involves only . . . routine sill in the art.” Id. at 11—12.
Appellant argues, inter alia, that “[njeither Oyobe [’068] nor
Ishikawa, individually or in combination, teach or suggest the projection
region feature recited in claim[] 1.” Appeal Br. 16. Appellant also argues
that “[t]he Examiner’s assertion that the claimed positional locations of
various features (i.e., the internal combustion engine, the internal
combustion engine accommodation portion, the vehicle-mounted device, and
the energy source supply portion) amount to a mere rearrangement of parts
involving only routine skill in the art is misdirected.” Id. at 17.
The Examiner responds by stating “[t]he [EJxaminer does not see any
reason why Appellant’s stated motivation of suppressing heat should trump
the fact that Appellant relies on a mere arrangement of parts.” Ans. 15.
We are persuaded of error. Contrary to the Examiner’s
characterization, the arrangement of the recited components is not a mere
arrangement of parts. Rather, the recited components are arranged in a
particular manner for a specific purpose: the vehicle-mounted device is
positioned relative to the internal combustion engine to form a projection
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region in which radiated heat from the internal combustion engine is
partially blocked, and the energy source supply portion is positioned in this
region. As explained in the Specification, such positioning suppresses direct
heat radiation from the engine onto the charge plug (the energy source
supply portion) and the deterioration of the charge plug that such direct heat
radiation causes. See, e.g., Spec. 12:3—14 (describing the arrangement of
components and explaining that “by arranging charge plug 30 in the portion
where region R1 of engine compartment sidewall portion 110B is located,
direct radiation of heat from engine 250 to charge plug 30 can be suppressed
and deterioration of charge plug 30 can be suppressed.”).
In essence, the Examiner’s rejection is a determination that it would
have been an obvious matter of design choice to arrange the components as
recited in claim 1. A claimed modification to the prior art may be obvious if
the claimed structure performs the same function as in the prior art and it
presents no novel or unexpected result over the prior art. See In re Kuhle,
526 F.2d 553, 555 (CCPA 1975) (holding that a claimed feature that solves
no stated problem and presents no unexpected result “would be an obvious
matter of design choice within the skill of the art”). Here, however, as noted
above, the arrangement does provide a purported benefit: suppression of
direct heat radiation to and accompanying deterioration of the charge plug.
Thus, the claim may not properly be rejected by simply stating it would have
been obvious to arrange the recited components in any manner, including the
recited manner; rather, the Examiner must “identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
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elements in the way the claimed new invention does.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). This the Examiner has not done.
Furthermore, it appears that the Examiner finds fault with the wording
“vehicle-mounted device” as recited in claim 1. See, e.g., Ans. 15
(“Appellant’s failure to specifically identify what the vehicle mounted
device is undermines its argument that heat suppression is anything beyond
what would be expected by any device residing between the engine and the
engine wall.”). We agree that Appellant’s use of the broad term “vehicle-
mounted device” indeed could correspond to any device residing between
the engine and the engine wall; however, “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, 441 F.3d 977, 988 (Fed. Cir.
2006) (cited with approval in KSR, 550 U.S. at 418). The Examiner has not
identified any device in the cited references that is positioned between the
engine and a sidewall, or the placement of an energy source supply portion
within the projection region formed by such positioning. Nor has the
Examiner articulated any reasoning for modifying the hybrid engine of
Oyobe ’068 to include such a positioned device. Thus, we are persuaded
that the rejection does not satisfy these requirements.
Accordingly, we do not sustain the rejection of claim 1 or its
dependent claims 3—6 as unpatentable over Oyobe ’068, Ishikawa, and
Official Notice.
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Claim 12
Independent claim 12 recites a hybrid vehicle similar to the vehicle of
claim 1, including the requirement that:
said internal combustion engine being a heat source that
emits irradiation on said vehicle-mounted device to form a
projection region on said second side surface, the projection
region being a region substantially in-line with said internal
combustion engine and said vehicle-mounted device where
direct heat irradiation from said internal combustion engine
onto said second side surface is partially blocked by said
vehicle-mounted device.
Appeal Br. A-5—A-6 (Claims App.).
For the same reasons as set forth above with respect to the rejection of
claim 1, we do not sustain the rejection of claim 12 as unpatentable over
Oyobe ’068, Ishikawa, and Official Notice.
Obviousness Based on Oyobe ’068, Ishikawa,
Official Notice, and Oyobe ’455
Claims 7—9 depend, directly or indirectly, from claim 1. Id. at A-3—
A-5 (Claims App.). Oyobe ’455 is not relied upon by the Examiner in any
manner that would remedy the deficiencies noted above with respect to the
proposed combination of Oyobe ’068, Ishikawa, and Official Notice in
rendering obvious the subject matter of claim 1. According, the rejection of
claims 7—9 is not sustained.
Obviousness Based on Oyobe ’068, Ishikawa,
Official Notice, Oyobe ’455, and Kaneko
Claims 10 and 11 depend indirectly from claim 1. Id. at A-5 (Claims
App.). Oyobe ’455 and Kaneko are not relied upon by the Examiner in any
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manner that would remedy the deficiencies noted above with respect to the
proposed combination of Oyobe ’068, Ishikawa, and Official Notice in
rendering obvious the subject matter of claim 1. According, the rejection of
claims 10 and 11 is not sustained.
DECISION
The Examiner’s decision to reject claims 1 and 12 under 35 U.S.C.
§ 112 is reversed.
The Examiner’s decision to reject claims 1 and 3—12 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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