John Purcell et al.

Patent Trials and Appeals Board

Oct 2, 2019

14442257 - (D) (P.T.A.B. Oct. 2, 2019)

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.
14/442,257 05/12/2015 John Purcell 106389-3580 5753
116387 7590 10/02/2019
Foley & Lardner LLP
3000 K Street N.W.
Suite 600
Washington, DC 20007-5109
EXAMINER
LATHERS, KEVIN ANTHONY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN PURCELL, AARON QUINTON,
NATHANIEL P. HASSALL, and JOHN C. WALL
____________

Appeal 2019-000428
Application 14/442,257
Technology Center 3700
____________

Before CHARLES N. GREENHUT, BRANDON J. WARNER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–20, which are all the pending
claims. Appeal Br. 4. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Cummins
Inc. Appeal Br. 2.
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Application 14/442,257
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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “relates generally to internal
combustion engines, and more particularly to the cylinders and associated
liners of internal combustion engines.” Spec. ¶ 2. Claims 1, 13, and 20 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the subject matter on appeal.
1. An internal combustion engine, comprising:
a cylinder comprising a mid-stop shelf;
a liner positioned within the cylinder, the liner
comprising a seat supported on the mid-stop shelf, wherein the
liner defines a piston channel;
a coolant conduit between the cylinder and the liner, the
coolant conduit being located above the mid-stop shelf and
[the] seat; and
a piston comprising a head portion and a skirt portion, the
piston being movable within the piston channel between an
uppermost position and a lowermost position, wherein in the
uppermost position, the skirt portion is positioned below the
mid-stop shelf and [the] seat,
wherein the piston imparts a peak side thrust on the liner
within a peak thrust zone, and
wherein the peak thrust zone is located below the mid-
stop [shelf] and the seat.

EVIDENCE
The Examiner relies on the following evidence in rejecting the claims
on appeal:
Jones US 4,294,203 Oct. 13, 1981

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REJECTION
The following rejection is before us for review: Claims 1 and 3–20
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Jones.
Final Act. 2–7.

ANALYSIS
Appellant presents arguments against the rejection of independent
claim 1 (see Appeal Br. 7–20), relies on the same arguments in addressing
the rejection of independent claim 13 (see id. at 20–21) and independent
claim 20 (see id. at 21–22), and expressly notes that the dependent claims
are considered to stand or fall together with the respective independent
claims (see id. at 20, 21, 22). We select independent claim 1 as
representative of the issues that Appellant presents in the appeal of this
rejection, with remaining claims 3–20 standing or falling therewith. See
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the teachings from Jones alone render
obvious to one of ordinary skill in the art the subject matter claimed. See
Final Act. 2–5. Appellant argues that the rejection is deficient because “the
Examiner has failed to prove that Jones teaches [or] suggests a location of
the peak thrust zone or that the peak thrust zone is located below the mid-
stop and the seat,” as recited in the claim. Appeal Br 8; see id. at 10–11.
This argument does not apprise us of error in the Examiner’s conclusion of
obviousness.
First, the Examiner acknowledges that Jones does not expressly
disclose “the peak . . . side thrust’s specific location, including it being
below the mid-stop shelf and the seat.” Final Act. 3. Nevertheless, the
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Application 14/442,257
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Examiner explains, and we agree, that the engine of Jones will naturally
experience side thrust from the reciprocating piston such that there will be
some position along the vertical extent of Jones’s cylinder liner where the
piston imparts a peak side thrust with a peak thrust zone. Given the
Examiner’s reasonable explanation that such a peak thrust zone in Jones
would likely be approximately around the mid-way point of the vertical
extent of the cylinder (see Ans. 14–15), and given that Appellant explains
that the peak thrust zone is a region where a maximum side thrust from the
skirt portion of the piston occurs (see Appeal Br. 9 (citing Spec. ¶ 35)), we
are not apprised of error in the Examiner’s conclusion that Jones’s peak
thrust zone would be disposed below the mid-stop depicted, or that it would
have been obvious to so locate it without more than routine experimentation
by one of ordinary skill in the art (see Ans. 14–15; see also id. at 9–10).
Accordingly, Appellant’s arguments do not identify error in the
Examiner’s ultimate conclusion that the claimed subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. See
35 U.S.C. § 103(a). Logic dictates that the relative vertical disposition
between the peak thrust zone and the mid-stop shelf in Jones would naturally
fall into one of only three possibilities—the peak thrust zone is located
above the mid-stop shelf, the peak thrust zone is located below the mid-stop
shelf, or the peak thrust zone and the mid-stop shelf are in the same vertical
location. We discern no shortcoming in the Examiner’s reasoning that, if the
peak thrust zone in Jones is not already located below the mid-stop shelf
(admittedly unspecified in Jones), it would have been obvious to a person
having ordinary skill in the art to pick another location from such limited
options.
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Further, Appellant does not explain how such a modification
(if necessary) in relative vertical location between the peak thrust zone and
the mid-stop shelf in Jones would have yielded unpredictable results or
somehow been beyond the level of ordinary skill in the art. See KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); Ans. 9–10, 14–15. In this
regard, Appellant’s assertions against Jones (see Appeal Br. 11–13) neglect
to adequately consider that “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton” (KSR, 550 U.S. at 421). The analysis
under 35 U.S.C. § 103(a) presumes not only common sense, but also skill in
the art. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).
After careful consideration of the record before us, Appellant’s
arguments do not apprise us of error in the Examiner’s factual findings from
Jones, which are supported by a preponderance of the evidence, or the
Examiner’s reasonable conclusion of obviousness, which is rationally
articulated based on prior art teachings. In short, we sustain the Examiner’s
rejection based on the reasoned positions set forth therein and in light of the
Examiner’s thorough responses to Appellant’s arguments. See Final
Act. 2–5; Ans. 9–10, 14–15.
We note that any other arguments not specifically addressed in detail
herein have been thoroughly considered by the panel but are not persuasive
for the reasons well expressed in the Examiner’s Answer.2

2 Regarding the variety of “hypothetical” additional rationales for a
conclusion of obviousness provided in the Advisory Action (dated March 5,
2018), both Appellant and the Examiner agree that such “hypotheticals” do
not form the basis of the obviousness rejection before us on appeal. See
Appeal Br. 13–16; Ans. 12. We decline to speculate as to the sufficiency of
these additional rationales.
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In conclusion, after careful consideration of the evidence of record
and for the foregoing reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s findings or reasoning in support of the conclusion of
obviousness. Accordingly, we sustain the rejection of independent claim 1,
and claims 3–20 falling therewith, under 35 U.S.C. § 103(a) as being
unpatentable over Jones.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1 and 3–20
under 35 U.S.C. § 103(a) as being unpatentable over Jones.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

CONCLUSION
In summary:

Claims
Rejected Basis Affirmed Reversed
1 and 3–20 35 U.S.C. § 103(a)
over Jones
1 and 3–20

AFFIRMED