Ex Parte Banks III

Board of Patent Appeals and Interferences

Mar 13, 2003

09428594 (B.P.A.I. Mar. 13, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GALE C. BANKS, III
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Appeal No. 2002-1827
Application No. 09/428,594
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HEARD: February 19, 2003
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Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-13,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2002-1827
Application No. 09/428,594
Page 2
BACKGROUND
The appellant's invention relates to an exhaust scavenging system for an internal
combustion engine. An understanding of the invention can be derived from a reading of
exemplary claim 1, which appears in the appendix to the appellant's Brief.
The single prior art reference of record relied upon by the examiner in rejecting
the appealed claims is:
McManus 5,678,404 Oct. 21, 1997
Claims 1-13 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
McManus.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the Answer
(Paper No. 10½) for the examiner's complete reasoning in support of the rejection and
to the Brief (Paper No. 10) and Reply Brief (Paper No. 12) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Appeal No. 2002-1827
Application No. 09/428,594
Page 3
1 Anticipation is established only when a single prior art reference discloses, either expressly or
under the principles of inherency, each and every element of the claimed invention. See, for example, In
re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
Independent claim 1 recites the appellant’s exhaust gas scavenging invention as
comprising at least three exhaust passages extending from the engine, each including
an outlet, the outlets being equidistant from a common center line and terminating
“substantially in an outlet plane, the exhaust passage outlets defining a center space
thereamong,” a collector interfacing with the exhaust passages at a transition collector
portion, and
a flow enhancement element in sealed arrangement with the exhaust
passages at the outlet plane to close the center space and extending in
an extended position along the common center line into the transition
collector portion.
It is the examiner’s view that all of the subject matter recited in the claims is
anticipated1 by McManus. This reference is directed to a variable tuned exhaust
system for an internal combustion engine. The examiner focuses on the embodiment
shown in Figures 2A and 2B, with regard to which the examiner finds that McManus
discloses “a flow enhancement element (16, 24, 25) in sealed arrangement with the
exhaust passages at the outlet plane to close the center space and extending solely
from the center space into the transition collector portion (lines 64-67 of column 3).”
The appellant argues in rebuttal that the reference does not support the conclusion that
the center space in the McManus device is closed and, even if that were considered to
Appeal No. 2002-1827
Application No. 09/428,594
Page 4
be the case, there is no disclosure or teaching that the flow enhancement element is “in
sealed arrangement with the exhaust passages at the outlet plane to close the center
space,” as is required by all of the independent claims.
We find ourselves in agreement with the appellant that the rejection is defective,
and we therefore will not sustain it. From our perspective, the representation of the
McManus invention provided in Figures 2A and 2B does not establish that the center
space between the four exhaust gas passages is closed at all, much less that it is
closed at the plane in which the outlets of the gas passages are located. The
specification does not provide further information on this point and, in this regard, the
passage in lines 64-67 of column 3, to which the examiner refers for support, states
only that the passages are joined together, but is silent as to whether this is
accomplished in such a fashion as to close the center space. Furthermore, even if one
were to agree with the examiner’s conclusion that the center space must be closed,
which has not been supported by any evidence, there is no teaching in McManus that
the movable element closes it at the outlet plane of the exhaust gas passages. It could,
for example, be closed at some other point, such as where exhaust passages 16 enter
the upstream end of collector 11, or elsewhere between the upstream end of the
collector and the plane of the exhaust gas passage outlets. It therefore is mere
speculation to conclude on the basis of the evidence adduced by the examiner that this
requirement of the claim is anticipated by the reference.
Appeal No. 2002-1827
Application No. 09/428,594
Page 5
Since the limitation discussed above is present in all four of the independent
claims, McManus fails to disclose or teach all of the subject matter recited in the claims,
and the rejection cannot be sustained.
CONCLUSION
The rejection is not sustained.
The decision of the examiner is reversed.
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA:pgg
JOHN D. McCONAGHY
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