Ex Parte Kato

Board of Patent Appeals and Interferences

Oct 30, 2003

09783428 (B.P.A.I. Oct. 30, 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for publication and is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASAHIKO KATO
____________
Appeal No. 2003-0460
Application No. 09/783,428
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HEARD: OCTOBER 22, 2003
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Before COHEN, McQUADE, and NASE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 7, all of the claims in the application.

Appellant’s invention pertains to a fuel supply system for
supplying fuel to a direct injected outboard motor. A basic
understanding of the invention can be derived from a reading of
exemplary claim 1, a copy of which appears in the APPENDIX to the
main brief (Paper No. 8).
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Application No. 09/783,428
2
As evidence of obviousness, the examiner has applied the
documents listed below:
Ozawa 5,197,436 Mar. 30, 1993
Kato 5,598,827 Feb. 4, 1997
The following rejection is before us for review.
Claims 1 through 7 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kato in view of Ozawa.
The full text of the examiner’s rejection and response to
the argument presented by appellant appears in the final
rejection and the answer (Paper Nos. 6 and 9), while the complete
statement of appellant’s argument can be found in the main and
reply briefs (Paper Nos. 8 and 10).

OPINION
In reaching our conclusion on the obviousness issue raised
in this appeal, this panel of the board has carefully considered
Appeal No. 2003-0460
Application No. 09/783,428
1 In our evaluation of the applied prior art, we have
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
3
appellant’s specification and claims, the applied teachings,1 and
the respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determination which
follows.
We do not sustain the obviousness rejection of appellant’s
claims for the reasons given below.
The sole independent claim reads as follows.
1. A fuel supply system for supplying fuel to a
direct injected outboard motor having a plurality of
vertically spaced cylinders, each of which is supplied
with fuel from a respective one of a plurality of
vertically spaced fuel injectors, said fuel supply
system including a vertically extending fuel rail
connected to said fuel injectors for supplying fuel to
said injectors, said fuel supply system having both a
pressure inlet port and a pressure return port formed at the
upper end thereof, said ports being disposed above the
uppermost fuel injector served by the fuel rail.
Appeal No. 2003-0460
Application No. 09/783,428
4
The examiner is of the opinion that the collective teachings
of Kato and Ozawa would have been suggestive of the fuel supply
system of claim 1. In particular, the examiner determines that
it would have been obvious to one having ordinary skill in the
art to locate the fuel pump and fuel rails of Kato following the
teaching of Ozawa since this compact fuel distribution system was
known in the V-type engine art (final rejection, page 2).
While we fully comprehend the examiner’s point of view, we
conclude that the claimed invention would not have been obvious
based upon the evidence before us.
Appellant seeks to solve an air problem present with a known
outboard motor incorporating a direct injection system
(specification, pages 1 through 3). The outboard motor of Kato
appears to be of the aforementioned prior art type, as
acknowledged by appellant (main brief, page 3). In seeking to
overcome the deficiency of the Kato teaching, vis-a-vis the
content of claim 1, the examiner turns to the Ozawa patent.
However, like appellant (main brief, page 4), we readily discern
that the Ozawa document does not address a fuel supply system for
supplying fuel to a direct injected outboard motor, characterized
Appeal No. 2003-0460
Application No. 09/783,428
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by vertically spaced cylinders and vertically spaced fuel
injectors. Instead, Ozawa relates to a fuel delivery system for
what is understood to be a horizontally oriented V-type engine
which would not effect the air problem of concern to appellant.
In fact, the solution to the problem sought to be solved by Ozawa
has to do with insuring that fuel pressure does not vary from
cylinder to cylinder and/or from bank to bank so that all
cylinders will receive the fuel at the same pressure (column 1,
lines 51 through 54). In light of the above differences between
the applied references, it is our opinion that the Ozawa
disclosure, assessed with the Kato teaching, would not have
motivated one having ordinary skill in the art to modify the
outboard motor fuel injection system of Kato, as proposed by the
examiner. It is for this reason that the obviousness rejection
cannot be sustained.
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Application No. 09/783,428
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In summary, this panel of the board has not sustained the
obviousness rejection on appeal.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
ICC:pgc
Appeal No. 2003-0460
Application No. 09/783,428
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Ernest A. Beutler
Attorney At Law
A Professional Corporation
500 Newport Center Drive, Suite 945
Newport Beach, CA 92660