Ex Parte Bethel et alDownload PDFPatent Trial and Appeal BoardJun 30, 201612931199 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/931, 199 01/26/2011 116845 7590 06/30/2016 Terrance A. Meador Achates Power, Inc. 4060 Sorrento Valley Boulevard San Diego, CA 92121 FIRST NAMED INVENTOR Steven J. Bethel 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ACHP1050US 6698 EXAMINER TRAN,LONGT ART UNIT PAPER NUMBER 3747 MAILDATE DELIVERY MODE 06/30/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN J. BETHEL, BRIAN J. CALLAHAN, and BRYANT A. WAGNER Appeal2014-003625 Application 12/931, 199 1 Technology Center 3700 Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-24. Final Action 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to the Appellants, the real party in interest is Achates Power, Inc. Appeal Br. 3. Appeal2014-003625 Application 12/931, 199 ILLUSTRATIVE CLAIM 1. An opposed piston engine having at least one cylinder with a bore surface and longitudinally-spaced exhaust and intake ports, and a pair of opposed pistons disposed in the cylinder for sliding movement along the bore surface, in which an oil-retaining surface texture pattern in an interface between the pistons and the bore surface extends in a longitudinal direction of the cylinder between a top ring reversal zone where the sliding velocity of a ring mounted to a piston reaches zero when the piston is near a top dead center position and a bottom ring reversal zone where the sliding velocity of the ring reaches zero when the piston is near a bottom dead center position. REJECTION Claims 1-24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hofbauer (US 2008/0041346 Al, published Feb. 21, 2008) and Rein et al. (US 7,171,936 B2, issued Feb. 6, 2007) ("Rein"). 2 FINDINGS OF FACT We rely upon and adopt the Examiner's findings stated in the Final Action (at pages 3-9) and the Answer (at pages 3-10), except as stated in the Analysis below. Additional findings of fact may appear in the Analysis below. ANALYSIS 1. Combining the Teachings of Hofbauer and Rein The Appellants contend that "there is no teaching, suggestion, or motivation to modify Hotbauer's pistons with Rein's textured piston skirt appliques" and that, "[i]n fact, Hotbauer's objectives and explicit disregard 2 The Final Action (at 3) and the Appeal Brief (at 6) mistakenly identify the rejected claims as being claims 1-22. However, claims 1-24 are pending and are addressed in the Final Action (at 6) and Appeal Brief (at 8-9). 2 Appeal2014-003625 Application 12/931, 199 for 'conventional' splash lubrication teach away from the proposed combination." Appeal Br. 7; see also Answer 1-3. The Appellants direct this argument to all claims on appeal, but also raise the issue with particular regard to claims 19-21, stating that Hofbauer's oil pumping method "is designed to replace" the type of oil transport technique used in Rein. Appeal Br. 6-7, 9. The Appellants' argument is not persuasive. First, the Appellants' argument relies upon attorney argument for several key assertions - namely, the allegations that Rein involves the splash lubrication technique (id. at 7, 9), as well as that combining Rein with Hofbauer would transport oil to exhaust and inlet ports (id. at 6) and negate the precise delivery of oil by Hofbauer's inertial pump (id. at 7). Such attorney argument does not constitute evidence. In addition, the Appellants' argument amounts to a contention that the devices disclosed in Hofbauer and Rein might not be bodiiy incorporated into one another. However. "[ c ]ombining the teachings of references does not involve an ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968 (CCPA 1973). Rather, obviousness is evaluated by "what the combined teachings of those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981). Further, a reference does not teach away from claimed subject matter if it "does not criticize, discredit, or otherwise discourage the solution claimed." In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). The Appellants have presented no evidence that Hofbauer or Rein teach away from the claims on Appeal. 3 Appeal2014-003625 Application 12/931, 199 Accordingly, the Appellants have not persuasively argued that the references may not be combined. 2. Whether the Prior Art Teaches a "texture pattern ... extends in a longitudinal direction of the cylinder" The Appellants (Appeal Br. 7) contend that the Examiner (Final Action 3 (citing Rein, Figs. 2, 2a, col. 6, 11. 21-50)) erred in finding that Rein teaches claim 1 's limitation of an oil-retaining texture pattern that "extends in a longitudinal direction of the cylinder." The Appellants point out that "neither of [Rein's Figures 2 and 2a] shows a cylinder" and Rein's texture pattern is "related to the outer circumference of a piston skirt," as well as that Rein's texture feature "is referenced to sides and/or directions of a conventional piston, not to any longitudinal direction of the ported cylinder of an opposed-piston engine." Appeal Br. 7; see also Reply Br. 3. The Appellants' arguments are unpersuasive. Although Rein's Figures 2 and 2a do not themselves show a cylinder, a cylinder is shown clearly in relation to a piston (having a texture pattern at their interface) in Figure 1, as the Examiner finds (Answer 8), and cylinders are referenced throughout Rein's disclosure (see, e.g., Rein, Abstract, col. 2, 11. 36-46), including a portion (id. at col. 6, 1. 36) identified on page 4 of the Final Action. The Appellants remark that Rein's oil-retaining texture is described as oriented with respect to a conventional piston, rather than "any longitudinal direction of the ported cylinder of an opposed-piston engine" (Appeal Br. 7); however, the Examiner correctly finds that Rein's texture pattern extends in a longitudinal direction (Answer 8 (citing Rein Figs. 1-3)). Further, as the Examiner finds (Final Action 3), Hofbauer- not Rein - is relied upon for 4 Appeal2014-003625 Application 12/931, 199 the feature of an opposed-piston engine with a ported cylinder, such that the Appellants' contention that Rein lacks this feature is of no moment. "[ 0 ]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). Accordingly, the Appellants have not persuasively demonstrated error on this ground. 3. Whether the Prior Art Teaches "recesses in an outside surface of a skirt of each piston" Claim 4 recites (emphasis added): 4. The opposed piston engine of claim 1, in which the surface texture pattern includes a plurality of patterns of separate recesses in an outside surface of a skirt of each piston, and for each piston, each pattern extends in a longitudinal direction of the piston and is disposed at a circumferential location of the piston skirt that corresponds to a location of a bridge of one of the exhaust and intake ports. The Appellants contend that claim 4 was rejected in error because the claim recites "recesses in an outside surface of a skirt of each piston," whereas "Rein teaches no more than separate recesses in a coating on the outside surface of the piston skirt." Appeal Br. 8. The Appellants' argument is not persuasive. As the Examiner finds (Final Action 5 (referring to elements 40, 42 of Rein Figs. 2, 2a)), Rein teaches the claimed "recesses in an outside surface of a skirt." Indeed, the Examiner's Answer (at page 9) cites a portion of Rein (col. 4, 11. 49--58) that describes disclosed embodiments having a coating bonded to the piston skirt, referring to Figures 2 and 2a. Figure 2a shows that Rein's coating has a dimensional thickness that forms "recesses 42 includ[ing] sides 46 for 5 Appeal2014-003625 Application 12/931, 199 defining pathways for the lubricant" (Rein, col. 5, 11. 20-31 ), such that Rein teaches recesses in an outside surface of a piston skirt. Accordingly, the Appellants' argument on this ground is not persuasive. 4. Whether the Prior Art Teaches "recesses on the bore surface" Claim 6 recites (emphasis added): 6. The opposed piston engine of claim 1, in which the surface texture pattern includes at least one row of separate recesses on the bore surface aligned with a bridge of at least one port. The Appellants contend that the rejection of claim 6 is erroneous because neither Hofbauer nor Rein teaches or suggests a texture pattern "on the bore surface," as the claim requires. Appeal Br. 8 (emphasis added). The Final Action does not identify any teaching of this identified limitation. The Examiner's i~\~ns\x1er states that F"-ein sho\x1s "bore 24" as "being integral with the piston surface and thus, the recess of the texture pattern sits along the bore." Answer 9 (citing Rein element 24). The Appellants' argument is persuasive. Dependent claim 6' s "the bore surface" refers to the recitation in base claim 1 of "at least one cylinder with a bore surface." Thus, "the bore surface" of claim 6 is the surface of the claimed cylinder bore. Yet, Rein's "bore 24," referenced in the Examiner's Answer, is not an engine cylinder bore, but rather a different structure - "pin bore 24" through which "piston pin 26 is operatively received." Rein, col. 4, 11. 21-22. The Examiner's reference to "pin bore 24," as meeting "the bore surface" limitation of claim 6, is inconsistent with base claim 1, which requires "pistons disposed 6 Appeal2014-003625 Application 12/931, 199 in the cylinder for sliding movement along the bore surface." As stated in the Answer (at page 9), "pin bore 24" is "integral with the piston surface," as opposed to being in sliding relationship therewith, as claim 1 demands. The Examiner has not identified any evidence that Rein teaches a "texture pattern ... on the bore surface" of a cylinder bore, as claim 6 requires. Accordingly, the rejection of claim 6 is not sustained. A limitation substantially similar to that discussed above, regarding claim 6, appears in claims 17, 21, and 24. Thus, the rejection of claims 6 (and its dependent claims 7 and 8), 17 (and its dependent claim 18), 21, and 24 under 35 U.S.C. § 103(a) cannot be sustained. 5. Whether the Prior Art Teaches a "reversal zone ... positioned near the middle area of the bore surface" Claim 9 recites: 9. The opposed piston engine of claim 1, in which the reversal zone is positioned near the middle area of the bore surface. The Appellants contend that the Examiner erred in rejecting claim 9 because Rein does not teach or suggest the claimed "reversal zone" "near the middle area of the bore surface." Appeal Br. 8. The Appellants' argument is not persuasive because the rejection does not rely upon Rein alone for teaching the limitation, but rather a combination of the teachings of Rein and Hofbauer, with Hofbauer teaching the reversal zone. Answer 9; see also Final Action 3, 6. The rejection of claim 9 is sustained. 7 Appeal2014-003625 Application 12/931, 199 6. Whether the Prior Art Teaches a "texture pattern ... aligned with a bridge" Claim 10 recites (emphasis added): 10. A cylinder mechanism including a cylinder with a bore surface and longitudinally-spaced exhaust and intake ports near respective ends and a pair of opposed pistons disposed in the cylinder for sliding movement along the bore surface, in which a first oil-collecting surf ace texture pattern in an interface between an exhaust piston and the bore surface extends in a longitudinal direction of the cylinder, between respective top dead center (TDC) and bottom dead center (BDC) reversal zones of the exhaust piston and aligned with a bridge of the exhaust port, and a second oil-collecting surface texture pattern in an interface between an intake piston and the bore surface extends in a longitudinal direction of the cylinder, between respective TDC and BDC reversal zones of the intake piston and aligned with a bridge of the intake port. The Appellants contend that the Examiner erred in rejecting claim 10 because neither Hofbauer nor Rein teaches or suggests the claimed "surface texture pattern[ s ]" that are respectively "aligned with a bridge" of the "exhaust port" and the "intake port." Appeal Br. 8. This argument is persuasive because, as the Appellants point out, the statement in the Final Action, to the effect that Rein teaches the limitation, lacks evidentiary support. Id. (citing Final Action 7). The Examiner's Answer states that "Hofbauer in Figure 1 shows exhaust ports 107, and thus the area between the ports along the cylinder serves as the bridge." Answer 9-10 (citing Hofbauer Fig. 1). However, even if Figure 1 shows the "bridge" of claim 10, the Examiner has identified no evidence of teaching the claimed "surface texture pattern" being "aligned with a bridge." 8 Appeal2014-003625 Application 12/931, 199 A substantially similar limitation appears in claims 6 and 20-22. Thus, the rejection of claims 6, 10, and 20-22 (as well as the rejection of claims 7, 8, 11-18, 23, and 24, depending from such claims) under 35 U.S.C. § 103(a) cannot be sustained. 7. Whether the Rejection of Claims 19-24 was Adequately Supported The Appellants contend that the rejection of claims 19-24 "must be withdrawn" because it "is unsupported by evidence, reasoning, or argument, and so is conclusory." Appeal Br. 8-9. The Appellants go on to articulate other grounds of alleged error regarding claims 19-21 and 24 (addressed above). Id. at 9. In an Appeal Brief, the Appellants' "arguments shall explain why the examiner erred as to each ground of rejection contested." 37 C.F.R. § 41.37(c)(iv). The Appellants' argument, to the effect that the rejection of claims 19-24 is conclusory, lacks explanation and thus is not persuasive. However, the rejection of claims 20-24 is not sustained on account of other reasons that are addressed above. DECISION We AFFIRM the Examiner's decision rejecting claims 1-5, 9, and 19. We REVERSE the Examiner's decision rejecting claims 6-8, 10-18, and 20-24. 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 9 Copy with citationCopy as parenthetical citation