Briggs & Stratton Corporation

Patent Trials and Appeals Board

Oct 12, 2021

2020004945 (P.T.A.B. Oct. 12, 2021)

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.
15/555,323 09/01/2017 Jeffrey M. Zeiler 016831-0797 2573
88759 7590 10/12/2021
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
QUIGLEY, THOMAS K
ART UNIT PAPER NUMBER
2832
NOTIFICATION DATE DELIVERY MODE
10/12/2021 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 JEFFREY M. ZEILER and RICHARD J. GILPATRICK
____________

Appeal 2020-004945
Application 15/555,323
Technology Center 2800
____________

Before CHRISTOPHER C. KENNEDY, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–3, 5–12, and 14–20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Briggs & Stratton Corporation as the real party in
interest. Appeal Brief filed December 23, 2019 (“Appeal Br.”), 2.
2 Final Office Action entered April 16, 2019 (“Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims an engine (independent claims 1 and 11) and a
starter battery system for an air-cooled engine (independent claim 7).
Appeal Br. 4–5. Claims 1 and 7 illustrate the subject matter on appeal, and
read as follows:
1. An engine comprising:
at least one piston;
a rotatable crankshaft coupled to the at least one piston;
a starter motor configured to selectively initiate rotation
of the crankshaft;
a lithium-ion battery in electrical communication with the
starter motor, the lithium-ion battery having at least one cell;
a charging system powered by motion of at least one
component of the engine;
wherein the charging system provides energy to the
lithium-ion battery to charge the lithium-ion battery;
wherein the engine has a starting condition, a running
condition, and a stopping condition;
wherein the charging system continuously applies a
voltage potential to the at least one cell while the engine is in a
running condition.

7. A starter battery system for an air cooled engine rated at
less than 50 horsepower, the system comprising:
four lithium iron phosphate cells; and
a charging circuit powered by rotation of the engine;
wherein a voltage developed by the charging circuit is
applied to the four lithium iron phosphate cells without battery
management circuitry provided between the charging circuitry
and the four lithium iron phosphate cells.

Appeal Br. 17–18 (Claims Appendix) (emphasis added).
Similar to claim 1, the remaining independent claim on appeal—claim
11—recites, in part, an engine comprising at least one piston, a rotatable
crankshaft coupled to the at least one piston, a starter motor to selectively
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initiate rotation of the crankshaft, a lithium-ion battery, and a charging
system powered by the engine. Appeal Br. 18 (Claims Appendix).

REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered April 15, 2020 (“Ans.”):
I. Claims 1 and 2 under 35 U.S.C. § 103 as unpatentable over
Milwaukee (GB 2442345 A, published April 2, 2008); and
II. Claims 3, 5–12, and 14–20 under 35 U.S.C. § 103 as
unpatentable over Milwaukee in view of Koebler (US 2013/0241498 A1,
published September 19, 2013).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 1–3, 5, 6, 11, 12, and 14–20 under 35 U.S.C. § 103 for reasons set
forth in the Appeal and Reply Briefs and below, and we affirm the
Examiner’s rejection of claims 7–10 under 35 U.S.C. § 103 for reasons set
forth in the Final Action, Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
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Claims 1–3, 5, 6, 11, 12, and 14–20
The Examiner finds that Milwaukee discloses a portable generator
including engine 18, lithium-ion battery 94, battery charger 86, and
alternator 22. Final Act. 2–3 (citing Milwaukee ¶¶ 20, 29, 35, 36; Abstr.;
Fig. 1); Ans. 5, 9. The Examiner determines that Appellant’s Specification
evidences that “Milwaukee’s ‘portable generator’ may clearly be interpreted
as ‘an engine’” because the Specification indicates that the claimed engine
“may be used in a ‘portable generator’ without the two being so
fundamentally different that a POSITA would inherently and always
consider them different products.” Ans. 4, 7 (citing Spec. ¶ 643).
Appellant argues that Milwaukee does not disclose an engine
including a lithium-ion battery and a charging system, and instead discloses
generator 10 including alternator 22, engine 18, and battery charger 86,
which “are all distinct components of the generator 10.” Appeal Br. 13.
Appellant argues that “alternator 22 is not a part of the engine 18, but instead
is included as a component of the generator 10,” and “battery charger 86 of
Milwaukee is also a component of the generator 10 and not a component of
the engine 18.” Id. Appellant argues that the Examiner’s determination that
an “engine” as recited in independent claims 1 and 11 “is a generator . . . is
not consistent with the specification and would not be accepted by a person
of ordinary skill in the art.” Reply Br. 4 (citing Spec. ¶¶ 3, 57).
Appellant’s arguments identify reversible error in the Examiner’s
rejection, for reasons that follow.

3 The relied-upon disclosure appears in paragraph 60, rather than paragraph
64, of the Specification filed September 1, 2017.
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First, we first determine that “an engine” as recited in the preamble of
claims 1 and 11 constitutes a limitation of each claim because it provides
antecedent basis for “the engine” recited in the body of the claims, and
because Appellant relies on the recitation of “an engine” in the preamble of
claims 1 and 11 to distinguish Milwaukee, as discussed above. In re Fought,
941 F.3d 1175, 1178 (Fed. Cir. 2019) (“We have repeatedly held a preamble
limiting when it serves as antecedent basis for a term appearing in the body
of a claim.”); see also, e.g., Bio-Rad Labs., Inc. v. 10X Genomics Inc., 967
F.3d 1353, 1371 (Fed. Cir. 2020) (a claim body’s reliance on the preamble
for antecedent basis “is a strong indication that the preamble acts as a
necessary component of the claimed invention” (internal quotation marks
omitted)); Catalina Mktg. Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808–09 (Fed. Cir. 2002) (holding that “clear reliance on the preamble during
prosecution to distinguish the claimed invention from the prior art
transforms the preamble into a claim limitation because such reliance
indicates use of the preamble to define, in part, the claimed invention”).
Second, the Examiner’s determination that “an engine” as recited in
the preamble of independent claims 1 and 11 may be interpreted to be a
“portable generator” is unduly broad because it is inconsistent with the plain
meaning of an “engine,” and with the disclosures in Appellant’s
Specification.
The Specification consistently and repeatedly describes an “engine” as
a component of outdoor power equipment, such as a generator. See, e.g.,
Spec. ¶¶ 3, 57, 60, 62. For example, the Specification explains that
“[o]utdoor power equipment may, for example, use an internal combustion
engine to drive an implement, such as a rotary blade of a lawn mower, a
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pump of a pressure washer, the auger of a snowthrower, the alternator of a
generator, and/or a drivetrain of the outdoor power equipment.” Spec. ¶ 3.
The Specification describes “an internal combustion engine used to power
outdoor power equipment,” “outdoor power equipment, in the form of a
lawn mower 110, [that] includes an internal combustion engine 112,” and “a
pressure washer system 1910 [that] includes an internal combustion engine
610.” Spec. ¶¶ 57, 60, 62. The Specifications also describes “an engine of a
portable generator.” Spec. ¶ 60.
The Specification thus describes an “engine” as a component of a
portable generator, rather than describing an “engine” as one and the same as
a portable generator. Consistent with this description in the Specification,
“engine” is defined as “a machine for converting any of various forms of
energy into mechanical force and motion,” while “generator” is defined as
“a machine by which mechanical energy is changed into electrical energy.”
Merriam-Webster.com (accessed September 27, 2012),
https://www.merriam-webster.com/dictionary/engine, https://www.merriam-
webster.com/dictionary/generator.
The Examiner’s interpretation of an “engine” as being the same as a
“generator” is thus inconsistent with the plain meaning of these terms and
with disclosures in Appellant’s Specification, and the Examiner’s
interpretation of “engine” is, therefore, unduly broad. In re Morris, 127 F.3d
1048, 1054–55 (Fed. Cir. 1997) (“While the Board must give the terms their
broadest reasonable construction, the construction cannot be divorced from
the specification and the record evidence.”); In re Smith Int’l, Inc., 871 F.3d
1375, 1382–83 (Fed. Cir. 2017) (“The correct inquiry in giving a claim term
its broadest reasonable interpretation in light of the specification is not
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whether the specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an interpretation
that is not inconsistent with the specification. It is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’” (quoting Morris, 127 F.3d at 1054)).
Third, the Examiner does not provide a sufficient factual basis to
establish that Milwaukee discloses or would have suggested an engine
including a lithium-ion battery and a charging system, as required by
independent claims 1 and 11.
Milwaukee discloses generator 10 that “includes a frame 14, a power-
generating device 18 [engine], [and] an alternator 22.” Milwaukee ¶ 18.
Milwaukee discloses that “frame 14 provides, among other things, access to
the components of the generator 10 (e.g., the power-generating device 18,
the alternator 22, etc.).” Milwaukee ¶ 19 (emphasis added). Milwaukee
discloses that “generator 10 includes a battery charger 86” electrically
coupled to the alternator 22 and “operable to charge a battery pack [94] with
the electrical energy from the alternator.” Milwaukee ¶¶ 4, 29.
The Examiner does not identify any disclosure in Milwaukee that
indicates or would have suggested that battery charger 86, alternator 22, and
battery pack 94 are components of power-generating device (engine) 18. In
fact, claim 1 of Milwaukee explicitly indicates that an engine, alternator,
battery charger, and battery pack are components of Milwaukee’s generator.
Milwaukee claim 1 (reciting a power-generating apparatus (generator)
comprising, in part, an engine, an alternator coupled to the engine, and a
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battery charger operable to charge a battery pack with the electrical energy
from the alternator).
The Examiner, therefore, does not establish that Milwaukee discloses
or would have suggested an engine including a lithium-ion battery and a
charging system powered by the engine as required by independent claims 1
and 11. Because the Examiner does not rely on Koebler for any such
disclosure, we do not sustain the Examiner’s rejections of claims 1 and 11,
and claims 2, 3, 5, 6, 12, and 14–20, which each depend from either claim 1
or claim 11, under 35 U.S.C. § 103.
Claims 7–10
Unlike independent claims 1 and 11, independent claim 7 recites, in
part, a starter battery system for an air cooled engine comprising four lithium
iron phosphate cells, and a charging circuit powered by rotation of the
engine. Appellant argues that independent claim 7 is “patentable over
Milwaukee and Koebler for at least the same reasons” that independent
claim 1 is patentable over Milwaukee and Koebler. Appeal Br. 14. Claim 7
differs significantly in scope and content from claim 1, however, and
Appellant’s arguments for claim 1 do not address the specific subject matter
of claim 7 and identify with particularity any reversible error in the
Examiner’s factual findings, reasoning, and conclusion of obviousness
related specifically to claim 7. Final Act. 5–6.
We, accordingly, sustain the Examiner’s rejection of claim 7, and
claims 8 to 10, which each depend from claim 7, under 35 U.S.C. § 103.

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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2 103 Milwaukee 1, 2
3, 5–12,
14–20
103 Milwaukee,
Koebler
7–10 3, 5, 6, 11,
12, 14–20
Overall
Outcome
7–10 1–3, 5, 6,
11, 12, 14–
20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART