Palazzolo, Christopher K. et al.

Patent Trials and Appeals Board

Mar 13, 2020

13270110 - (D) (P.T.A.B. Mar. 13, 2020)

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.
13/270,110 10/10/2011 Christopher K. Palazzolo 83206505 5856
36865 7590 03/13/2020
MCCOY RUSSELL LLP
806 S.W. BROADWAY, SUITE 600
PORTLAND, OR 97205
EXAMINER
KIM, JAMES JAY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
03/13/2020 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):
usptomail@mccrus.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTOPHER K. PALAZZOLO, DARREN SIPILA,
STEVE POE, PHILIP D. CIERPIAL, and
CHANGSHENG GAN

Appeal 2018-004160
Application 13/270,110
Technology Center 3700
____________

Before MICHAEL L. HOELTER, BRADLEY B. BAYAT, and
FREDERICK C. LANEY, Administrative Patent Judges.

HOELTER, 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 1–20, which constitute all the claims

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Ford
Global Technologies, LLC.” Appeal Br. 3.
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Application 13/270,110

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pending in this application. Appellant’s counsel presented oral argument on
February 28, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The disclosed subject matter relates to internal combustion engines
which are continually being refined to increase the output of the engine as
well as reduce the engine's weight and/or size. See Spec. 1:9–10. Apparatus
claims 1 and 10, and method claim 16, are independent. Claim 1 is
illustrative of the claims on appeal and, is reproduced below.
1. A structural frame configured to be coupled between a
cylinder block and oil pan, comprising:
an oil pan engaging surface;
first and second cylinder block engaging surfaces, the
first and second surfaces positioned above the oil pan engaging
surface at a height that is above a centerline of a crankshaft
when the first and second surfaces are coupled to bottom
engaging surfaces of the cylinder block;
a structural frame lubrication passage internally routed
through an exterior sidewall of the structural frame and
traversing at least a portion of the structural frame; and
a plurality of laterally aligned supports, with respect to a
lateral direction, the lateral direction perpendicular to the
centerline, forming a ladder configuration, where the plurality
of laterally aligned supports and the oil pan engaging surface
form a bottom surface of the structural frame, the bottom
surface positioned vertically below and offset from the
centerline, and where the structural frame lubrication passage
includes an inlet located at the bottom surf ace of the structural
fame and an outlet located at one of the first and second
cylinder block engaging surfaces.
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EVIDENCE
Name Reference Date
Sonoda et al. US 4,729,349 Mar. 8, 1988
Elsbett et al. (“Elsbett”) US 4,854,276 Aug. 8, 1989
Breeden US 6,390,072 B1 May 21, 2002
Sachdev et al.
(“Sachdev”)
US 2003/0029413 A1 Feb. 13, 2003
Inoue et al. (“Inoue”) US 6, 530,356 B2 Mar. 11, 2003
Cho US 6,684,845 B2 Feb. 3, 2004
Lunsford US 6,729,284 B2 May 4, 2004
Ohta et al. (“Ohta”) US 7,040,275 B2 May 9, 2006
Toda US 7,938,094 B2 May 10, 2011
Kuah US 8,346,459 B2 Jan. 1, 2013
REJECTIONS
Claims 1–3, 5, 6, 10, 11, 16, and 19 are rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Elsbett and Sachdev.
Claims 4 and 13 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elsbett, Sachdev, and Ohta.
Claims 7 and 18 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elsbett, Sachdev, and Breeden.
Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over Elsbett, Sachdev, and Inoue.
Claims 9 and 17 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elsbett, Sachdev, and Toda.
Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elsbett, Sachdev, and Sonoda.
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Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elsbett, Sachdev, and Kuah.
Claim 15 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elsbett, Sachdev, Cho and Toda.
Claim 20 is rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Elsbett, Sachdev, and Lunsford.
ANALYSIS
The rejection of claims 1–3, 5, 6, 10, 11, 16, and 19
as unpatentable over Elsbett and Sachdev
Each independent claim on appeal (i.e., claims 1, 10, and 16) includes
a limitation to a “structural frame” having a bottom surface formed by both
“a plurality of laterally aligned supports and the oil pan engaging surface.”
The “structural frame” of apparatus claims 1 and 10 is recited as being
“coupled between a cylinder block and [an] oil pan.” The “structural frame”
of method claim 16 is recited as “positioned between and coupled to an oil
pan and a cylinder block.”
The Examiner relies on Elsbett for many of the limitations recited in
these claims. See Final Act. 2–3. However, the Examiner acknowledges
that Elsbett lacks disclosure of “a plurality of laterally aligned supports.”
Final Act. 3. The Examiner relies on Sachdev for disclosing this limitation.
Final Act. 3.
The laterally aligned supports relied on by the Examiner are
understood by Appellant as being Sachdev’s crankshaft bearing supports 50,
52, 54, 56, and 58. Appeal Br. 23; see also Sachdev Fig. 5. We agree with
this assessment by Appellant, and the Examiner does not indicate otherwise.
See Ans. 3–5 where laterally aligned supports are discussed. These supports
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50–58 are described in Sachdev as being integrally cast with crankcase 16.2
See Sachdev ¶ 34, Fig. 5. The Examiner’s reasoning for combining
Sachdev’s supports 50–58 with Elsbett’s engine is “to have laterally spaced
supports so that the crankshaft is to be supported.” Final Act. 3.
Appellant contends, “there is no reason to think that Elsbett does not
already support its bearings” and “Appellant finds no teaching in Elsbett that
there is a lack of bearing support.”3 Appeal Br. 24, Reply Br. 6. According
to Appellant, “it is more likely that one of ordinary skill in the art would find
it redundant and counterintuitive to include the bearing supports 50–58
taught by Sachdev . . . with the existing support system taught by Elsbett.”
Appeal Br. 24–25.
The Examiner does not explain why it would have been obvious to
employ Sachdev’s laterally aligned supports in place of (or in combination
with) Elsbett’s supports because the Examiner is silent as to how or why
Elsbett’s existing bearing supports are lacking in some manner, or otherwise
in need of replacement and/or modification. The Examiner indicates that
employing laterally aligned supports would “provide an easier assembly of
the engine” (Final Act. 3), but this disregards Elsbett’s express object as
being to provide an engine “which is simpler, less expensive and more
reliable than heretofore known systems.” Elsbett 1:60–63. Thus, it is not
clear why Elsbett’s engine needs to be combined with Sachdev or otherwise
needs to incorporate laterally aligned supports for “easier assembly” reasons
when Elsbett’s engine is already “simpler” in design.

2 Crankcase 16 also serves as an oil pan. See Sachdev ¶ 10 (“And the
architecture requires no oil pan.”).
3 Elsbett discloses “bearing 20 for the crankshaft 7.” Elsbett 5:19–20.
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The Examiner states, “it is known in the art to have laterally aligned
supports to support the crankshaft bearings.” Ans. 3. This statement is
supported by Fig. 5 of Sachdev. However, as stated above, Sachdev’s
laterally aligned supports 50–58 are cast integral with Sachdev’s bottom oil
pan. See Sachdev ¶ 34, Fig. 5. The Examiner does not explain why it would
have been obvious to remove Sachdev’s supports 50–58 from the oil pan
enclosure and, at the same time, have these supports also form a bottom
surface of a separate structural frame that is designed to engage the oil pan
itself.4 See Appeal Br. 14, Reply Br. 6. For example, simply because the
general concept of laterally aligned supports is known, it is not made clear
by the Examiner why Sachdev’s cast supports 50–58 are to be relocated
from their present position to the other side of the oil pan/structural frame
interface when it is not disputed that Elsbett already has mid-engine
supports, as well as an engine design described as being “simpler.” See
above.
Additionally, the Examiner addresses making Elsbett’s engine
modular, and provides an annotation as to how this is to be accomplished.
See Ans. 3–4. The Examiner’s annotation is provided below:

4 Claim 1 recites, “where the plurality of laterally aligned supports and the
oil pan engaging surface form a bottom surface of the structural frame.”
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The Examiner identifies the above as “Annotated Figure 1 of Elsbett
with the modular combination of Sachdev.” Ans. 4. The Examiner applied
a pair of dark marks labeling them “Cylinder block engaging surface,”
which identifies the interface between the upper “Cylinder head” and an
intermediate “Structural Frame.” This is distinct from the Examiner’s
identification of the “Oil Pan Engaging surface” which is the interface
between the intermediate “Structural Frame” and the lower “Oil Pan.”
Appellant, however, contends that the Examiner’s marking which
identifies the upper cylinder head/structural frame interface “is an arbitrary
position.” Reply Br. 5; see also id. at 3. Appellant contends that “the only
guidance of splitting the housing of the engine of Elsbett in that location of
record is Appellant’s specification.” Reply Br. 5. However, the Examiner
relies on the teachings of Sachdev for making Elsbett’s engine modular by
separating Elsbett’s engine into “an upper cylinder block and a lower
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cylinder block (known as a structural frame in the instant invention).” Final
Act. 3. Regardless, the Examiner does not elaborate as to why the
demarcation between a cylinder block and a structural frame is to be located
where specifically shown, and cannot, instead, be located elsewhere, such as
identified by Appellant. See, e.g., Reply Br. 5. The Examiner’s silence
regarding any reason for choosing the specific location identified may,
indeed, be a result of hindsight and/or speculation, neither of which can
provide a proper basis for an obviousness rejection. See, e.g., In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
There is merit to Appellant’s contentions above. In other words, the
Examiner has not provided sufficient reasoning with rational underpinning
which is necessary to support a legal conclusion of obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, and based
on the record presented, we do not sustain the Examiner’s rejection of
independent claims 1, 10, and 16 in view of Elsbett and Sachdev. Nor do we
sustain the Examiner’s rejection of dependent claims 2, 3, 5, 6, 11, and 19 in
view of Elsbett and Sachdev for the same reasons.
The remaining rejections
There are additional rejections expressed by the Examiner with
respect to claims 4, 7–9, 12–15, 17, 18, and 20, which rely on Elsbett and
Sachdev in addition to one or more other references. These additional
references being Ohta (claims 4, 13), Breeden (claims 7 and 18), Inoue
(claim 8), Toda (claims 9 and 17), Sonoda (claim 12), Kuah (claim 14), Cho
and Toda (claim 15), and Lunsford (claim 20). The Examiner does not
employ these additional references in a way that might cure the defect of
Elsbett and Sachdev discussed above. Accordingly, and based on the record
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presented, we do not sustain the Examiner’s further rejections of claims 4,
7–9, 12–15, 17, 18, and 20 in view of this additionally referenced art.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 6, 10,
11, 16, 19
103(a) Elsbett, Sachdev 1–3, 5, 6, 10,
11, 16, 19
4, 13 103(a) Elsbett, Sachdev,
Ohta
4, 13
7, 18 103(a) Elsbett, Sachdev,
Breeden
7, 18
8 103(a) Elsbett, Sachdev,
Inoue
8
9, 17 103(a) Elsbett, Sachdev,
Toda
9, 17
12 103(a) Elsbett, Sachdev,
Sonoda
12
14 103(a) Elsbett, Sachdev,
Kuah
14
15 103(a) Elsbett, Sachdev,
Cho, Toda
15
20 103(a) Elsbett, Sachdev,
Lunsford
20
Overall
Outcome
1–20

REVERSED