Ex Parte Arnold

Board of Patent Appeals and Interferences

Jan 24, 2011

11321391 (B.P.A.I. Jan. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN DON ARNOLD
____________

Appeal 2009-011449
Application 11/321,391
Technology Center 3700
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-011449
Application 11/321,391

2
Steven Don Arnold (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision finally rejecting claims 1, 3-7, 9-13, and 21 under
35 U.S.C. § 103(a) as unpatentable in view of Arnold (US 6,647,724 B1, iss.
Nov. 18, 2003) and Kawamura (US 5,881,559, iss. Mar. 16, 1999) and
claims 8 and 15 under 35 U.S.C. § 103(a) as unpatentable in view of Arnold,
Kawamura, and Woollenweber (US 6,079,211, iss. Jun. 27, 2000). Claims
2, 14, and 16-20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Invention
The claims on appeal relate to system for an internal combustion
engine.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for an internal combustion
engine comprising:
an exhaust turbine operably coupled to a
generator;
an intake air compressor operably coupled to
an electric motor and mechanically decoupled
from the exhaust turbine;
an additional electric motor;
a linkage to link the additional electric
motor to a drivetrain drivable by the internal
combustion engine; and
a controller to direct electricity generated by
the generator to one or more members of the group
consisting of the electric motor, the additional
electric motor, and a power storage.

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OPINION
Issue
The determinative issue in this appeal is:
Does a preponderance of the evidence support the Examiner’s
proposition that a person having ordinary skill in the art would interpret the
claim limitation of a linkage to link an additional electric motor to a
drivetrain drivable by an internal combustion engine, as called for in the
claims, when viewed in light of the Specification, to include a series of
electrical connections such as those taught by Kawamura.
Analysis
Construing the claims is the first step in an obviousness analysis. Key
Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998)
(citations omitted). When claim terminology is construed in the United
States Patent and Trademark Office, claims are to be given their broadest
reasonable interpretation consistent with the specification, reading claim
language in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). In addition to correctly applying a broadest
reasonable interpretation of the claim terms under examination, it is also
necessary to properly construe what an applied reference fairly teaches or
discloses. See, e.g., In re Fracalossi, 681 F.2d 792 (CCPA 1982) (emphasis
added). What a reference teaches or suggests must be examined in the
context of the knowledge, skill, and reasoning ability of a person having
ordinary skill in the art. While, what a reference teaches a person of
ordinary skill is not limited to what a reference specifically “talks about” or
what is specifically “mentioned” or “written” in the reference, see Syntex
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(U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005), the
reference must be considered in its entirety, in the whole, see e.g. Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987) (error to
not consider prior patent in its entirety, i.e., as a whole, including portions
that would lead away from the invention). Finally, rejections based on 35
U.S.C. § 103 must rest on a factual basis. In making such a rejection, an
examiner has the initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply deficiencies in
the factual basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Given Appellant’s arguments that the Examiner’s evidence is
insufficient to provide a basis for the rejections, we find that the Examiner’s
error lies in the Examiner failing to provide sufficient evidence that a person
of ordinary skill in the art would understand that the claim limitation “a
linkage to link the additional electric motor to a drivetrain drivable by the
internal combustion engine” when read in light of the Specification would
include the teachings of the series of electrical connections between the
generator 2 and the motor 7, as shown in figure 1, within Kawamura as the
Examiner posited in making the rejections against the claims. See Ans. 4, 6,
and 7. In responding to Appellant for support of the above proposition, the
Examiner opines that “Kawamura shows the emergence of engines and
vehicles that replace the bulky, inefficient drive shaft of the past with
efficient, space-saving electrical devices such as electric motors, power
storage (batteries), generators and electrical wiring to link the engine power
to the wheels.” Ans. 7. However, while there might have been a movement
within the art to replace drive shafts of the past with efficient, space-saving
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electrical drives, the Examiner’s opinion is not sufficiently supported by
what Kawamura fairly discloses and teaches as understood by a person
having ordinary skill in the art. Instead, the Examiner’s opinion is inferred
from looking at a figure and quoting a passage from Kawamura. Id.
Contrary to the Examiner’s premises drawn from the figure and quoted
passage which form the basis for the rejection, a person having ordinary skill
in the art would understand Kawamura, in the whole, as teaching that
conventional hybrid electric vehicles have problems of premature engine
bearing wear because a heavy generator is mounted only on one side of the
engine, see col. 1, ll. 37-42, and thermal inefficiency because the engine
needs to be water cooled and the thermal energy within the exhaust gas is
not recovered, see id. at ll. 31-35. Kawamura ameliorates those problems by
providing a hybrid electric vehicle with two motor-generators to balance the
load, see e.g. col. 3, ll. 43-49, and thermally insulating the combustion
chambers with ceramics, see e.g., col. 4, ll. 12-14. These two features lead
to the elimination of a cooling system, thus a simplified engine structure,
since the water jacket is omitted, and further the two generators on opposite
sides of the engine output shaft provide a balance on the engine bearings.
Id. at ll. 14-20. As such, a preponderance of the evidence does not appear to
support the Examiner’s opinion that Kawamura shows the emergence in the
art of replacing bulky, inefficient drive shafts with electrical devices.
Indeed, part of the drive shaft is present, the engine output shaft. Rather, a
preponderance of the evidence supports the proposition that Kawamura’s
teachings are directed to an electric hybrid vehicle that distributes the load
on the output shaft of the engine with two generators and coating at least the
combustion chambers with ceramics. This leads to an electric hybrid vehicle
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that does not need a cooling system and a balance on the engine bearings
that support the output shaft of the engine, which in turn leads to a simplified
and improved thermal efficient hybrid power source.

CONCLUSION
Based on the foregoing, a preponderance of the evidence fails to
support the Examiner’s proposition that a person having ordinary skill in the
art would interpret the claim limitation of a linkage to link an additional
electric motor to a drivetrain drivable by an internal combustion engine, as
called for in the claims, when viewed in light of the Specification, to include
a series of electrical connections such as those taught by Kawamura.

DECISION
The Examiner’s decision to reject claims 1, 3-8, 9-13, 15, and 21 is
reversed.

REVERSED

Klh

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