Ex Parte Jacques et al

Patent Trial and Appeal Board

Jul 26, 2017

13803475 (P.T.A.B. Jul. 26, 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.
13/803,475 03/14/2013 Robert Lionel JACQUES P021271-PTUS-RRM 8162
74175 7590
Harness Dickey & Pierce, P.L.C. (GM)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
LATHERS, KEVIN ANTHONY
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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 ROBERT LIONEL JACQUES and EDWARD R. ROMBLOM
Appeal 2015-008026
Application 13/803,4751
Technology Center 3700
Before EDWARD A. BROWN, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Lionel Jacques and Edward R. Romblom (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 8, 9,
12, and 13 under 35 U.S.C. § 103(a) as unpatentable in view of Hendrain
(US 6,450,890 Bl, iss. Sept. 17, 2002), Brown (US 4,683,849, iss. Aug. 4,
1987), Killion (US 5,918,573, iss. July 6, 1999), and Huster (US 7,201,131
B2, iss. Apr. 10, 2007).2 We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is GM Global
Technology Operations, LLC. Appeal Br. 2 (filed Mar. 25, 2015).
2 Claims 1—7, 10, 11, and 14—20 have been canceled. Appeal Br. 2.
Appeal 2015-008026
Application 13/803,475
INVENTION
Appellants’ invention “relates to a dry sump scavenge pump system
with balance shaft capability for balancing engine horizontal shake.” Spec.
11-
Claim 8, which is independent and representative of the claimed
invention, reads as follows:
8. An internal combustion engine, comprising:
a cylinder block including at least eight cylinders;
a plurality of pistons disposed in said at least eight
cylinders;
a flat plane crankshaft connected to said plurality of
pistons;
a balance shaft assembly including a housing mounted
under said cylinder block, said housing supporting a pair of
balance shafts rotatably driven by said crankshaft, said pair of
balance shafts rotating in opposite directions and each including
a hollow tubular body with an internal eccentric mass, wherein
a first of said pair of balance shafts is drivingly connected to a
drive sprocket at a first end and includes a first drive gear at a
second end that is meshingly engaged with a first driven gear at
an end of a second of said pair of balance shafts, a first oil
pump at said first end of said pair of balance shafts and a
second oil pump at said second end of said pair of balance
shafts.
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Appeal 2015-008026
Application 13/803,475
ANALYSIS
Appellants argue for patentability of claims 8, 9, 12, and 13 together
as a group. See Appeal Br. 4—7. We select claim 8 as representative, and
claims 9, 12, and 13 stand or fall with claim 8. See 37 C.F.R.
§41.37(c)(l)(iv) (2016).
Rejecting claim 8, the Examiner determines the disclosure of
Hendrian, Killion, Brown, Huster, and admitted prior art, evidence the
recited combination would have been obvious to a skilled artisan at the time
of the invention. Final Act. 2—5.
Taking official notice that eight cylinder engines were well-known to
a skilled artisan, which Appellants do not dispute, the Examiner finds a
skilled artisan also knew, “a V8 configuration . . . provides more torque and
when combined with a flat plane crankshaft allows for uniform combustion
for quicker acceleration and simpler exhaust characteristics.” Id. at 5. The
Examiner notes further it was known that, “[f]lat plane crankshafts provide
faster acceleration and more power than a cross plane crankshaft, but they
have much larger vibration issues.” Ans. 6. This finding is consistent with
Appellants’ representation that, “[o]ne known specific type of engine that
produces sideways or horizontal shake, is the flat plane V8 engine,” which
“characteristically has an undesirable horizontal shake.” Spec. 14.
Hendrian “relates to balance mechanisms for rotatory machinery,
particularly balance shafts for multi-cylinder internal combustion engines
which exhibit shaking forces and/or rotating imbalanced couples.” Hendrian
col. 1,11. 6—9. Hendrian suggests that, before Appellants’ invention,
“[bjalance shafts [were] commonly used to reduce or cancel shaking forces
and/or vibrations which result from residual imbalances inherent in the
design architecture of machinery with rotating parts” — “[t]hese balance
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Appeal 2015-008026
Application 13/803,475
shafts are often called ‘counterbalance’ shafts.” Id. at col. 1,11. 12—16.
Moreover, skilled artisans knew, “multi-cylinder motor vehicle engines,
such as the 90-degree V-6 engines . . ., produce resultant imbalanced forces
in the form of a crankshaft-speed rotating couple.” Id. at col. 1,11. 26—30
(emphasis added).
The Examiner finds Hendrian discloses a “a balance shaft assembly
including a housing mounted under said cylinder block, said housing
supporting a pair of balance shafts rotatably driven by said crankshaft, said
pair of balance shafts rotating in opposite directions and each including a
hollow tubular body with an internal eccentric mass,” as recited by
Appellants’ claim 8. Final Act. 2—3 (citing Hendrian col. 5,11. 58—61, Figs.
1—30, 24—35). And the Examiner concludes,
one of ordinary skill in the art at the time of the invention would
have had good reason to use a V-8 flat plane engine but would
continue to have the issue of heavy vibrations. However, they
would have also possessed the modified Hendrian and therefore
had good reason to apply it to the V-8 flat plane engine to reduce
this vibration. Further, as established in Hendrian, one of
ordinary skill in the art would have understood that balancing
shafts can be balanced for the engine they are intended to be
included on.
In light of this it is clear that one of ordinary skill in the art
at the time of the invention would have had the knowledge and
reasoning to add the modified Hendrian to a V-8 flat plane
crankshaft engine in order to achieve higher power and quicker
acceleration in the compact V-8 engine configuration while
lessoning vibration of the engine which is the main problem flat
plane V8 engines suffer from.
Ans. 7. The Examiner finds additionally that Brown discloses it was known
for V-type engines with a flat crankshaft to use dual balance shafts rotating
in opposite directions to balance the horizontal forces and the secondary
vertical forces. Final Act. 3^4.
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Appeal 2015-008026
Application 13/803,475
Appellants do not dispute the Examiner’s factual findings regarding
the balance shaft assembly of Hendrian, but argue, unpersuasively, that the
Examiner determines erroneously that combining it with a V-8 flat plane
crankshaft would have been obvious. Appeal Br. 4—7. Appellants contend,
“[t]here is no teaching or suggestion that the balance shafts of Hendrian . . .
can be used for an internal combustion engine having at least eight cylinders
with a flat plane crankshaft.” Id. at 5. Arguing against the combination,
Appellants note the described embodiment discloses an arrangement of
weight members designed to balance an engine with fewer cylinders. Id.
Additionally, Appellants assert different considerations exist for the design
of balance shaft systems for a V-8 flat plane crankshaft engines. Id. at 5—6.
Appellants notably, however, do not provide any persuasive evidence,
through either prior art citations or a declaration, that the modifications
necessary to adapt the balance shaft assembly of Hendrian to a V-8 flat plane
crankshaft engine would have been more than an ordinary application of a
skilled artisan at the time of the invention. Nor do Appellants challenge in
any other way the rational underpinning supporting the Examiner’s
reasoning to support the obviousness of this combination.
In response, the Examiner “note[s] the primary reference of Hendrian
discloses a 90 degree V-6 and an in-line four cylinder engine ... by way of
examples in the background section . . ., but later notes that it is not limited
to these engines and can be added to similar engines.” Ans. 6 (citing
Hendrian col. 1,11. 26—34, col. 3,1. 34). This evidence, the Examiner finds,
“shows that one of ordinary skill in the art would already have contemplated
the ability to change the balancing characteristics to suit the engine
crankshaft type and cylinder number that the device was being placed on.’ ''
Id. We note additionally that claim 1 does not recite any specific
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Appeal 2015-008026
Application 13/803,475
arrangement of the weight members by which the balance shaft assembly is
limited. Because the Examiner may “take account of the inferences and
creative steps a person of ordinary skill in the art would employ,” KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), and because we agree
Hendrian indicates a skilled artisan would have understood the disclosure as
addressing balance issues with multi-cylinder internal combustion engines
generally, and further because Appellants have not demonstrated that
modifying the balance shaft assembly of Hendrian to a V-8 flat plane
crankshaft requires more than ordinary skill, we are not persuaded the
Examiner erred in combining the balance shaft assembly of Hendrian with a
V-8 flat plane crankshaft.
Relying on Killion, the Examiner next finds the prior art evidences it
was also known to have a balance shaft assembly with “a first. . . pair of
balance shafts [that are] drivingly connected to a drive sprocket at a first end
and ... a first drive gear at a second end that is meshingly engaged with a
first driven gear at an end of a second . . . pair of balance shafts,” which was
understood as providing a connection between a pump and shaft to increase
efficiency, reduce noise, and reduce cost. Final Act. 3 (citing Killion
Abstract, col. 2,11. 7—28, col. 4,11. 13—15, Fig. 1). The Examiner concludes,
“it would have been obvious to one of ordinary skill in the art at the time of
invention to modify the balance shafts of the modified Hendrian to be driven
in the manner of Killion in order to produce a balance shaft system which
increases efficiency, reduces noise, and reduces cost.” Id. at 5. Appellants
do not dispute these factual findings or conclusions related to Killion.
Lastly, the Examiner finds Huster discloses,
a balance shaft and pumping system . . . which includes a first
gear pump (4) at one end of a balance shaft (6) and a second gear
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Application 13/803,475
pump (5) at a second end of the balance shaft . . . which allows
for an effective dry sump operation allowing the engine to
operate inclined while also reducing the number of parts and
complexity.
Final Act. 4 (citing Huster Abstract, col. 1,11. 36-47, col. 2,11. 3—15, Fig. 1).
The Examiner determines it would have further been obvious to include dual
oil pumps, as Huster teaches, at opposite ends of the modified dual balance
shafts to provide a dry sump that an engine can operate in an inclined
position while also reducing the number parts. Id. at 5.
Appellants do not challenge the Examiner’s factual findings regarding
Huster. Appeal Br. 6—7. Nor do Appellants disagree a skilled artisan would
have been motivated to modify the modified balancing shaft system of
Hendrian, Brown, and Killion to include dual oil pumps at opposite ends to
improve operation on an inclined surface, as Huster teaches. Id. Instead,
Appellants dispute the combination because,
[njeither Killion nor Huster disclose how the two pumps would
be employed at opposite ends of a pair of balance shafts along
with having a driven sprocket at one end of one of the balance
shafts and a drive gear at the second end in engagement with a
driven gear on the second end of the second balance shaft, as
claimed.
Id. (emphasis added). The Examiner, however, explained in the Final Office
Action that,
the reference of Huster shows a quick and easy way for this
construction to be performed. The two pumps of Huster ... are
shown consisting of gears that are between the pump gears are
disposed on the shaft inside the drive gears for the shaft . . .
Therefore, the device of Hendrian could be modified to include
the gearing of Killion for the reasons outlined above, and then
within these drive and driven gears, between the dual balance
shafts, at least one shaft may contain gearing to drive the two
pumps located on opposite ends of the dual shaft assembly as is
shown and described in Huster.
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Appeal 2015-008026
Application 13/803,475
Final Act. 5—6. Appellants fail to identify any error with the Examiner’s
rationale. Appellants, moreover, do not offer any evidence demonstrating
what, if any, technical difficulties a skilled artisan would have faced that
would support a finding that the disclosures would not have enabled them to
combine the teachings in the manner claimed. Offering mere attorney
argument to the contrary is insufficient to overcome the prima facie case
made by the Examiner. Again, the Examiner may “take account of the
inferences and creative steps a person of ordinary skill in the art would
employ,” KSR Int’l Co., 550 U.S. at 418, and a preponderance of the
evidence supports the Examiner’s explanation of the steps a skilled artisan
would have known to take to combine the dual pumps on opposite ends of a
balance shaft system taught by the Hendrian, Brown, and Killion
combination.
Therefore, for the foregoing reasons, we are not persuaded the
Examiner’s obviousness determination of claim 8 was in error and, as such,
we sustain the rejection of claims 8, 9, 12, and 13.
DECISION
We affirm the Examiner’s decision to reject claims 8, 9, 12, and 13.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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