Ex Parte Hayman et al

Patent Trial and Appeal Board

Aug 18, 2017

12834420 (P.T.A.B. Aug. 18, 2017)

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.
12/834,420 07/12/2010 ALAN W. HAYMAN P010935-PTUS-DPH 8452
74175 7590
Harness Dickey & Pierce, P.L.C. (GM)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
KIM, JAMES JAY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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):
gm-inbox@hdp.com
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN W. HAYMAN, ERIC C. DOUSE, and
ROBERT S. MCALPINE
Appeal 2015-005696
Application 12/834,4201
Technology Center 3700
Before MICHAEL L. HOELTER, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—4, 6—11, 13—16, and 18—21. Claims 5, 12, and 17 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify GM Global Technology Operations LLC as the real
party in interest. Appeal Br. 2.
Appeal 2015-005696
Application 12/834,420
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An engine assembly comprising:
an engine structure defining:
first, second, third and fourth combustion chambers
arranged in series, so that said second combustion
chamber is immediately adjacent said first combustion
chamber, said third combustion chamber is immediately
adjacent said second combustion chamber and said fourth
combustion chamber is immediately adjacent said third
combustion chamber;
a pair of first exhaust ports in communication with
the first combustion chamber, a pair of second exhaust
ports in communication with the second combustion
chamber, a pair of third exhaust ports in communication
with the third combustion chamber, and a pair of fourth
exhaust ports in communication with the fourth
combustion chamber;
a flange region defining a first exhaust gas outlet
axially aligned with the second combustion chamber and
a second exhaust gas outlet axially aligned with the third
combustion chamber, said first gas outlet being spaced
axially from said second exhaust gas outlet to define a
space directly therebetween;
a pair of first exhaust passages extending from the
pair of first exhaust ports to the first exhaust gas outlet, a
pair of second exhaust passages extending from the pair of
second exhaust ports to the first exhaust gas outlet, a pair
of third exhaust passages extending from the pair of third
exhaust ports to the second exhaust gas outlet, and a pair
of fourth exhaust passages extending from the pair of
fourth exhaust ports to the second exhaust gas outlet, said
pair of first exhaust passages converging axially and
laterally toward said pair of second exhaust passages and
said first exhaust gas outlet, said pair of fourth exhaust
passages converging axially and laterally toward said pair
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Application 12/834,420
of third exhaust passages and said second exhaust gas
outlet;
a coolant jacket defining a coolant passage
extending directly between the first and second exhaust
gas outlets;
exhaust valves supported by the engine structure
and located in the first, second, third and fourth exhaust
ports; and
a camshaft supported by the engine structure and
engaged with the exhaust valves.
THE REJECTION
Claims 1—4, 6—11, 13—16, and 18—21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable in view of the combination of Nagura et al.
(US Pat. No. 5,095,704; iss. Mar. 17, 1992) and Asame et al. (US Pat. No.
7,849,683 B2; iss. Dec. 14, 2010).
ANALYSIS
Appellants’ arguments address claims 1—4, 6—11, 13—16, and 18—21
collectively. Accordingly, we select claim 1 as representative and address
the Examiner’s rejection of claim 1 as follows. See 37 C.F.R.
§ 41.37(c)(l)(iv)
In the rejection of claim 1, the Examiner finds Nagura discloses each
limitation of claim 1 with the exception that “Nagura fails to disclose the
four [combustion] chambers immediately adjacent to one another inline
wherein Nagura teaches a six cylinder inline engine.” Final Act. 3. The
Examiner cites Asame as evidence that it was known to have a four-cylinder
engine with each of the four combustion chambers arranged in series and
immediately adjacent to one another, and the Examiner concludes that it
would have been obvious to a person of ordinary skill to modify the engine
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Application 12/834,420
of Nagura to include only four combustion chambers based on the known
advantages of four-cylinder engines. Final Act. 4.
Appellants do not dispute that each claim limitation was known in the
art, but Appellants argue the Examiner erred in the conclusion of
obviousness. See Appeal Br. 13—14; Reply Br. 4—7. According to
Appellants, “mere removal of cylinders from the engine design of Nagura
would dictate changes to the engine design that are not suggested by Nagura
nor Asame.” Appeal Br. 14; accord Reply Br. 4. Appellants also argue
“that to the extent that one having ordinary skill in the art would be
motivated to modify the engine of Nagura in view of Asame,” a person of
ordinary skill would have recognized that some options for such
modifications would not read on the present claims. Appeal Br. 13—14.
We disagree with Appellants. The Supreme Court has explained that
“[i]n automotive design, as in many other fields, the interaction of multiple
components means that changing one component often requires the others to
be modified as well.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 424
(2007). Further, the Court explains that the obviousness analysis does not
require a precise teaching of the claimed subject matter. Rather, the
obviousness analysis asks “whether the improvement is more than the
predictable use of prior art elements according to their established
functions.” Id.
Here, the Examiner cited evidence that each claim limitation was
known in the art and that modification of the disclosures of Nagura would
have been a mere rearrangement of commonly used parts according to their
known functions with predictable results. See Final Act. 3^4; Ans. 2—3.
Appellants cite no evidence to rebut those findings. In fact, Appellants’
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Application 12/834,420
arguments recognize that applying the teachings of Nagura to a four-cylinder
engine would have presented a person of ordinary skill with a limited set of
design options (see Appeal Br. 13—14 (discussing options for modification of
Nagura); Reply Br. 5 (same)), and Appellants present no evidence that the
claimed option would have been unpredictable or uniquely challenging.
Additionally, Appellants argue for the first time in the Reply Brief
that the claimed arrangement of four combustion chambers, exhaust ports,
and exhaust passages represent details critical to the overall design that
distinguish the claimed invention from the prior art. Reply Br. 5.
Appellants waived this argument by failing to raise it in the Appeal Brief,
but even if this argument were timely, the passages of the Specification cited
by Appellants do not show any criticality of the claimed features. To the
contrary, the cited passages describe “non-limiting example[s].” Reply Br.
5. Further, Appellants assert that the Specification’s description of “offset
distances” of the first and second exhaust gas outlets from the midpoint
between the cylinder pairs evidence the criticality, but claim 1 does not
specify any offset distances or other details alleged to be critical. Cf. Appeal
Br. 18 (Claims App’x (dependent claims 6—9 adding limitations relating to
offset distances)).
Accordingly, having considered the Examiner’s rejection in light of
each of Appellants’ arguments and the evidence of record, we disagree with
Appellants and agree with the Examiner’s findings, conclusions, and
reasons. We adopt as our own the Examiner’s findings, conclusions, and
reasons consistent with the analysis above, and we sustain the Examiner’s
rejection of claims 1—4, 6—11, 13—16, and 18—21.
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DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1^1, 6-11, 13-16, and 18-21.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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