Ex parte Masuda et al.

Board of Patent Appeals and Interferences

Mar 24, 2000

08656919 (B.P.A.I. Mar. 24, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TATSUYUKI MASUDA and MASANORI MIYAMOTO
________________
Appeal No. 1999-0954
Application 08/656,919
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HEARD: MARCH 8, 2000
________________
Before McCANDLISH, Senior Administrative Patent Judge, McQUADE
and CRAWFORD, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Tatsuyuki Masuda et al. appeal from the final rejection
of claims 1 through 20, all of the claims pending in the
application.
The invention relates to “a precombustion form of diesel
Appeal No. 1999-0954
Application 08/656,919
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engine that is particularly adapted for use in motor vehicles”
(specification, page 1). Claim 1, the only independent claim
on appeal, is illustrative and reads as follows:
1. A two-cycle diesel engine for a vehicle, said engine
being comprised of a cylinder block containing at least one
cylinder bore closed at one end by a cylinder head and at the
other end by a crankcase member for forming a crankcase
chamber, a piston reciprocating in said cylinder bore, a
crankshaft journaled in said crankcase chamber, a connecting
rod connecting said piston to said crankshaft for driving said
crankshaft, an exhaust port formed in one side of said
cylinder bore and valved by the reciprocation of said piston,
and a precombustion chamber formed in said cylinder head on
said one side of said cylinder bore and communicating with a
main combustion chamber formed by said cylinder head, said
cylinder bore and said piston through a throat directed away
from said exhaust port, the direction of rotation of said
crankshaft being such that said piston tends to rotate about
its connection with said connecting rod in a direction during
the expansion stroke for moving the upper edge of said piston
into engagement with the side of said cylinder bore where said
exhaust port is formed.
The references relied upon by the examiner as evidence of
anticipation and obviousness are:
Okui et al. (Okui) 5,257,674 Nov. 2, 1993
Okubo et al. (Okubo) 5,501,190 Mar. 26, 1996
(filed Aug. 9, 1994)
Masuda 5,511,523 Apr. 30, 1996
(filed Jul. 19, 1994)
Claims 1, 2, 3 and 7 stand rejected under 35 U.S.C. §
Appeal No. 1999-0954
Application 08/656,919
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102(e) as being anticipated by Masuda.
Claims 4 through 6 and 8 through 14 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Masuda in view
of Okubo.
Claims 15 through 20 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Masuda in view of Okui.
Reference is made to the appellants’ brief (Paper No. 13)
and to the examiner’s answer (Paper No. 14) for the respective
positions of the appellants and the examiner with regard to
the merits of these rejections.
Masuda, the examiner’s primary reference, discloses a
two-cycle automotive diesel engine 1 having a cylinder block
2, cylinder bores 2c, a cylinder head 5, a crankcase member 3,
crankcase chambers 4, pistons 7, a crankshaft 12, connecting
rods 9, exhaust ports 18, precombustion chambers 22,
precombustion chamber throats 21b and main combustion chambers
8. Figure 3 shows the general relationship between these
components.
The sole issue raised by the appellants with regard to
the 35 U.S.C. § 102(e) rejection is whether Masuda meets the
limitation in claim 1 requiring the direction of rotation of
Appeal No. 1999-0954
Application 08/656,919
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the crankshaft to be such that the piston tends to rotate
about its connection with the connecting rod in a direction
during the expansion stroke to move the upper edge of the
piston into engagement with the side of the cylinder bore
where the exhaust port is formed. In the appellants’ words,
[t]his depends upon the direction of rotation of the
crankshaft which is shown in Masuda’s Figure 3 and
is identified at 12. This figure is basically in
the same orientation as Appellants’ Figure[s] 9-11
and if the crankshaft rotates in a clockwise
direction as shown in this figure (Figure 3) then
Appellants’ [sic] will concede the reference
anticipates the invention even though it does not
describe it or, in fact, teach this important result
to those skilled in the art [brief, pages 3 and 4].
As partially indicated by this passage, Masuda does not
literally describe the relationship required by claim 1
between the exhaust port, the precombustion chamber, the
throat and the crankshaft rotation direction, or the
combustion efficiencies attributed thereto by the appellants’
specification. Nonetheless, the law of anticipation does not
require that the reference teach what the subject application
teaches, but only that the claim read on something disclosed
in the reference, i.e., that all of the limitations in the
claim be found in or fully met by the reference. Kalman v.
Appeal No. 1999-0954
Application 08/656,919
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Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984). Our
review of claim 1 and the Masuda reference confirms the
appellants’ framing of the issue: if Masuda’s crankshaft 12
rotates in a clockwise direction in Figure 3, then the subject
matter recited in claim 1 reads on, and thus is anticipated
by, Masuda.
Masuda’s Figure 7, which shows the crankshaft 12 rotating
in a clockwise direction, assumes critical importance here
because it offers the only clue in the reference as to the
crankshaft’s rotational direction in Figure 3. Figures 3 and
7 are cross-sectional views taken along viewlines 3-3 and 7-7,
respectively, in Figure 4. The arrows on these viewlines
point in the same direction, thus indicating that the
crankshaft depictions in Figures 3 and 7 are from the same
directional perspective. It would seem to follow that since
the crankshaft rotates in a clockwise direction in Figure 7,
it also rotates in a clockwise direction in Figure 3.
The appellants submit (see pages 4 through 6 in the
brief), however, that the oil level representations L7, L2 and
L3 in Masuda’s Figure 7 and discrepancies between Figures 3
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Application 08/656,919
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and 7 as to the relative positions of the crankshaft 12 and
balancer shaft 28 demonstrate that the arrows for viewline 7-
7 in Figure 4 should point in the opposite direction. As a
result, the appellants contend, the crankshaft in Figure 3
actually rotates in a counter-clockwise direction.
The examiner, on the other hand, argues (see pages 5
through 7 in the answer) that the arrows for viewline 7-7 in
Masuda’s Figure 4 are correct as shown, and that the drawing
incongruities noted by the appellants are due instead to an
inaccurate depiction of angular orientation in Figure 7.
Masuda’s Figure 7 is in fact inconsistent with the other
drawing figures in the reference, particularly Figure 3, and
the reference itself sheds no definitive light on which of the
two competing explanations offered by the appellants and the
examiner, if either, is correct. Hence, the disclosure of
Masuda as to the direction of crankshaft rotation in Figure 3
is, at best, ambiguous. It is well settled that an
anticipation rejection cannot be predicated on an ambiguous
reference. In re Turlay, 304 F.2d 893, 899, 134 USPQ 355, 360
(CCPA 1962). Accordingly, we shall not sustain the standing
35 U.S.C. § 102(e) rejection of claim 1, or of dependent
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claims 2, 3 and 7, as being anticipated by Masuda.
Our review of the Okubo and Okui references indicates
that neither cures the aforementioned deficiency in Masuda
with respect to the subject matter recited in independent
claim 1. Therefore, we shall not sustain the standing 35
U.S.C. § 103(a) rejection of dependent Claims 4 through 6 and
8 through 14 as being unpatentable over Masuda in view of
Okubo or the standing 35 U.S.C. § 103(a) rejection of
dependent Claims 15 through 20 as being unpatentable over
Masuda in view of Okui.
The decision of the examiner to reject claims 1 through
20 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
Appeal No. 1999-0954
Application 08/656,919
-8-
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
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