Ex Parte Hahnl et al

Board of Patent Appeals and Interferences

Jul 23, 2009

10910662 (B.P.A.I. Jul. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte WOLFGANG HAHNL, ROBIN WILLATS,
JURGEN LESCH, KLAUS REGENOLD,
and MELVYN CAUNT
________________

Appeal 2009-001035
Application 10/910,662
Technology Center 2800
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Decided:1 July 23, 2009
________________

Before JOSEPH F. RUGGIERO, ROBERT E. NAPPI, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001035
Application 10/910,662

2
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-5, 16-18, and 20.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a semi-active muffler that includes a
spring controlled valve element that opens when the amount of exhaust
exceeds a certain volume. A cooling means is implemented in order to keep
the spring from relaxing at high temperatures. See Spec. 1-3. Claim 1 is
representative of the invention and reproduced below:
1. Semi-active muffler having a casing, an inlet pipe for
exhaust gas, at least one outlet pipe for said exhaust gas, a valve
element controlling flow of exhaust gas, a spring cooperating
with said valve element and biasing said valve element into a
first position, and cooling means for reducing the amount of
heat transferred from said exhaust gas to said spring.

REFERENCES
Marcotte US 4,389,980 Jun. 28, 1983

Suzuki US 5,971,098 Oct. 26, 1999

Holt US 6,231,944 B1 May 15, 2001

Boehm US 6,501,784 B1 Dec. 31, 2002

2 Appellants elected to have claims 1-5, 16-18, and 20 examined in response
to an Election/Restriction filed September 11, 2006. Therefore, claims 6-15
and 19 were withdrawn from consideration.
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REJECTIONS AT ISSUE
The Examiner rejected claims 1, 2, 16-18, and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Suzuki in view of Marcotte. Ans. 3-4.
The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a) as
being unpatentable over Suzuki in view of Marcotte and further in view of
Boehm. Ans. 4-5.
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki in view of Marcotte and further in view of Holt.
Ans. 5.

ISSUES
Rejection of claims 1, 2, 16-18, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki in view of Marcotte
Appellants argue on pages 9-14 of the Appeal Brief and pages 4-11 of
the Reply Brief that the Examiner’s rejection of claims 1, 2, 16-18, and 20 is
in error. Appellants argue that the combination of Suzuki with Marcotte is
not obvious. App. Br. 9-13; Reply Br. 4-11. In addition, Appellants argue
that the combination of Suzuki and Marcotte does not teach the claimed
invention. App. Br. 13-14.
Thus, with respect to claims 1, 2, 16-18, and 20, Appellants’
contentions provide us with two issues. (1) Have Appellants shown that the
Examiner erred in finding that it is obvious to combine Suzuki with
Marcotte? (2) Have Appellants shown that the Examiner erred in finding
that the combination of Suzuki with Marcotte teaches the claimed invention?

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Rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as being unpatentable
over Suzuki in view of Marcotte and further in view of Boehm
Appellants argue on page 14 of the Appeal Brief and page 12 of the
Reply Brief that claims 3 and 4 are allowable based upon their dependency
on claim 1. Thus, Appellants’ arguments with respect to the Examiner’s
rejection of claims 3 and 4 present the same issues as claim 1.

Rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over
Suzuki in view of Marcotte and further in view of Holt
Appellants argue on page 14 of the Appeal Brief and page 12 of the
Reply Brief that claim 5 is allowable based upon its dependency on claim 1.
Thus, Appellants’ arguments with respect to the Examiner’s rejection of
claim 5 present the same issues as claim 1.

FINDINGS OF FACT (FF)
Suzuki
1. Suzuki discloses “a muffler for [an] internal combustion engine.”
Col. 1, ll. 9-10.
2. The muffler comprises a housing that has three chambers (a first
expansion chamber, a second expansion chamber, and a resonator
chamber), an inlet pipe that opens into the first expansion chamber,
and an outlet pipe that opens into the second expansion chamber.
Col. 4, l. 56 through col. 5, l. 10; Fig. 3(a).
3. Inside the muffler, there is an inner pipe and a by-pass inner pipe
that communicate with the first expansion chamber and the second
expansion chamber. Col. 5, ll. 11-17; Fig. 3(a).
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4. The by-pass inner pipe comprises a valve that is held shut by a coil
spring. Col. 6, ll. 34-39.
Marcotte
5. Marcotte teaches a boiler for a hot water heating system that uses
wood as a fuel. Col. 1, ll. 36-41.
6. During operation, in order to induce the flow of hot gases through
the heat exchanger, air is discharged through an orifice and
through a conduit to create a cross draft in the combustion zone.
Col. 6, ll. 11-17.
7. The cross draft is a result of “the relationship between the
dimensions of the orifice 64 and the jet ports 67.” Col. 6, ll. 17-22.
8. A damper, located below the jet ports, is affixed to a lower portion
of a rod. Col. 6, ll. 4-6.
9. The upper portion of the rod contains a spring that is untensioned
when the cover is raised and causes the jet ports to be blocked by
the damper. Col. 8, ll. 19-25.
10. The spring is located between a contact and a bushing and is within
a heat shield, which completely surrounds the spring, in order to
help the spring withstand the high temperatures located there. Col.
8, ll. 26-28, 46-48.
11. The bushing contains a drilled port, which supplies a flow of
relatively cool air to prevent the spring from being subjected to
damaging temperatures. Col. 8, ll. 54-60.

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PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348 (Fed. Cir.
2002) (citation omitted) (internal quotation marks omitted).
On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
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Id. at 417. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 419-20.
It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art, the burden of
proof is shifted to applicant to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990); In re Best, 562
F.2d 1252, 1255 (CCPA 1977).
Whether the rejection is based on ‘inherency’ under 35 U.S.C. §
102, on ‘prima face obviousness’ under 35 U.S.C. § 103, jointly
or alternatively, the burden of proof is the same, and its fairness
is evidenced by the PTO’s inability to manufacture products or
to obtain and compare prior art products.
Best, 562 F.2d at 1255 (footnote omitted).
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellants have the burden of presenting a rebuttal to
the prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellants have the burden, on appeal to the Board, to demonstrate error in
the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).

ANALYSIS
Rejection of claims 1, 2, 16-18, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Suzuki in view of Marcotte
Appellants’ contentions have not persuaded us that the Examiner’s
rejection of claims 1, 2, 16-18, and 20 is in error. Independent claim 1
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recites “cooling means for reducing the amount of heat transferred from said
exhaust gas to said spring.” Appellants argue that the Examiner did not
supply a sufficient obviousness analysis to support combining Suzuki’s heat-
resistant spring with Marcotte’s heat shield. App. Br. 12; Reply Br. 4.
However, the Examiner has found that it would have been obvious “to
combine the apparatus of Suzuki, with the apparatus of Marcotte to protect
the spring from damage due to the hot gases associated with an exhaust
muffler.” Ans. 4. We agree with the Examiner.
Appellants argue that adding a heat shield to an already heat-resistant
spring would not be obvious because the combination adds extra expense
and effort. App. Br. 12. However, in KSR, the Supreme Court has stated
that “[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. The combination of Suzuki with Marcotte yields
predictable results.
Suzuki discloses “a muffler for [an] internal combustion engine.” FF
1. Inside the muffler, there is an inner pipe and a by-pass inner pipe that
communicate with a first expansion chamber and a second expansion
chamber. FF 2. The by-pass inner pipe comprises a valve that is held shut
by a coil spring. FF 4.
Marcotte teaches a boiler for a hot water heating system that uses
wood as a fuel. FF 5. The boiler contains an upper portion, which has a rod.
FF 9. The rod contains a spring that is untensioned when the cover is raised
and causes the jet ports to be blocked by the damper. FF 9. The spring is
located within a heat shield in order to help the spring withstand the high
temperatures located there. FF 10.
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Both references disclose a spring being subjected to high temperatures
and the need to withstand these high temperatures. Therefore, we consider
using Marcotte’s heat shield with Suzuki’s coil spring that is located within
a muffler to be nothing more than using a known device to perform its
known function. As such, the combination is obvious.
In addition, the Examiner has provided explicit motivation to combine
the references. Ans. 4. While KSR does not require a specific motivation,
providing an “‘articulated reasoning with some rational underpinning’”
supports a legal conclusion of obviousness. KSR, 550 U.S. at 418 (citation
omitted). The Examiner stated, on page 4 of the Answer that the
combination would “protect the spring from damage due to the hot gases
associated with an exhaust muffler.” In response, Appellants argue that it
cannot be obvious to combine the heat shield with the spring when the
spring is already made of material that is heat-resistant because this would
increase the cost and require additional effort. App. Br. 11-12; Reply Br. 6-
7. Therefore, Appellants argue that the Suzuki reference teaches away from
the proposed combination. Reply Br. 6.
The Federal Circuit held that “[t]he fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000). Here, that the benefit gained by using a heat
shield as disclosed by Marcotte may come at the expense of additional cost
and effort of using only a heat-resistant spring as disclosed by Suzuki should
not nullify its use as the basis to modify the Suzuki spring. One of ordinary
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skill in the art could see a benefit in adding additional heat protection to the
spring.
Appellants also argue that the Examiner has improperly identified
himself as a person of ordinary skill in the art.3 Reply Br. 5. The Federal
Circuit has stated that Examiners and Patent Judges on the Board are
“persons of scientific competence in the fields in which they work” and that
their findings are “informed by their scientific knowledge, as to the meaning
of prior art references to persons of ordinary skill in the art.” In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003). Regardless, in the case at hand, the
references indicate a person of ordinary skill in the art. See In re GPAC Inc.,
57 F.3d 1573, 1579 (Fed. Cir. 1995) (USPTO board did not err in adopting
the approach that the level of skill in the art was best determined by the
references of record). As noted above, both references contain springs that
are exposed to high temperatures. Both references disclose how the spring is
being protected from high temperatures. Therefore, someone who is looking
to protect a spring from high temperatures would look to either of these
references for guidance.
Appellants additionally argue that the combination would not arrive at
the claimed invention because Marcotte “provides a stream of relatively cool
air around the spring” in addition to the heat shield. App. Br. 13; Reply Br.
11. Appellants argue that the spring would not be protected without the
stream of cool air because the spring would still be exposed to hot exhaust
gas. App. Br. 13. This argument contradicts Appellants’ original argument
that it is not obvious to combine a heat shield with an already heat-resistant

3 These arguments raise new issues not presented before in the Appeal Brief.
While these arguments are not timely made, we will briefly address them.
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spring. If the spring would still be exposed to hot exhaust gas even with the
use of a heat shield, it would make sense to also have a heat-resistant spring.
Additionally, Appellants misread the Marcotte reference. Appellants state
that the heat shield of Marcotte contains a drilled port, which would allow
Suzuki’s spring to be in direct contact with the hot exhaust gas. App. Br. 14.
However, the heat shield of Marcotte completely surrounds the spring and
protects the spring from high temperatures found in the chamber. FF 10.
The drilled port, which provides the flow of relatively cool air, is not open to
the chamber. FF 11. Thus, even though the heat shield contains a drilled
port, the spring would not come into direct contact with hot exhaust gas.
Appellants argue that the reasons given to combine the references are
flawed because Suzuki discloses a muffler and Marcotte discloses a boiler.
Reply Br. 7-10. Appellants argue that each of these references would have
separate operating conditions.4 Reply Br. 4-6, 7-10. In Icon, the Federal
Circuit stated
“A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). In other words, “familiar items may have obvious
uses beyond their primary purposes.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 127 S. Ct. 1727, 1742, 167 L. Ed. 2d 705
(2007). We therefore have concluded, for example, that an
inventor considering a hinge and latch mechanism for portable
computers would naturally look to references employing other
“housings, hinges, latches, springs, etc.,” which in that case
came from areas such as “a desktop telephone directory, a piano
lid, a kitchen cabinet, a washing machine cabinet, a wooden

4 These arguments raise new issues not presented before in the Appeal Brief.
While these arguments are not timely made, we will briefly address them.
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furniture cabinet, or a two-part housing for storing audio
cassettes.” [In re] Paulsen, 30 F.3d [1475,] 1481-82 [(Fed. Cir.
1994)].
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).
Marcotte teaches a boiler system that contains a spring that is
subjected to high temperatures and is protected from these high temperatures
by a heat shield. FF 5, 10. In creating a muffler system comprising a spring,
the determination is to identify a way which would logically have come to
the attention of the ordinary artisan to block the spring from being exposed
to hot exhaust gas. FF 10. We find that just as other references employing
hinges would have been relevant to a portable computer maker interested in
a hinge mechanism, references teaching a heat shield to block a spring from
being exposed to high temperatures would have been relevant to an ordinary
artisan designing a spring inside a muffler system that is protected from hot
exhaust gas. We therefore conclude that Marcotte is analogous art and is
properly applied in the obviousness rejection.
For all of the reasons stated above, we do not find Appellants’
arguments to be persuasive. Therefore, we sustain the Examiner’s rejection
of claims 1, 2, 16-18, and 20.

Rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as being unpatentable
over Suzuki in view of Marcotte and further in view of Boehm
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 3 and 4. Claims 3 and 4 ultimately depend
upon claim 1. Appellants’ arguments present the same issues discussed with
respect to claim 1 (App. Br. 14; Reply Br. 12). Therefore, we sustain the
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Examiner’s rejection of claims 3 and 4 for the reasons discussed supra with
respect to claim 1.

Rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over
Suzuki in view of Marcotte and further in view of Holt
Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claim 5. Claim 5 ultimately depends upon claim 1.
Appellants’ arguments present the same issues discussed with respect to
claim 1 (App. Br. 14; Reply Br. 12). Therefore, we sustain the Examiner’s
rejection of claim 5 for the reasons discussed supra with respect to claim 1.

CONCLUSIONS OF LAW
Under 35 U.S.C. § 103(a), Appellants have not shown that the
Examiner erred in finding that it is obvious to combine Suzuki with
Marcotte.
under 35 U.S.C. § 103(a), Appellants have not shown that the
Examiner erred in finding that the combination of Suzuki with Marcotte
teaches the claimed invention.

SUMMARY
The Examiner’s rejection of claims 1-5, 16-18, and 20 is affirmed.
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

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