Ex Parte Resh et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201713476125 (P.T.A.B. Feb. 23, 2017) Copy Citation 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. 13/476,125 05/21/2012 William F. Resh 708815US1 1606 24938 7590 02/27/; FCA US LLC CIMS 483-02-19 800 CHRYSLER DR EAST AUBURN llll.I S. MI48326-2757 EXAMINER HOLBROOK, TEUTA BAJRAMOVIC ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 02/27/2017 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): chris.davenport@fcagroup.com michelle.madak@fcagroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM F. RESH, WEI TAO, and BRUCE GEIST Appeal 2015-001446 Application 13/476,1251 Technology Center 3700 Before STEFAN STAICOVICI, SUSAN L. C. MITCHELL, and SEAN P. O’HANLON, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE William F. Resh et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1— 15 as being unpatentable over Urata (US 5,195,474, iss. Mar. 23, 1993).2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).3 1 According to Appellants, the real party in interest is Chrysler Group LLC. Appeal Br. 2 (filed July 14, 2014). 2 We consider the Examiner’s omission of claims 7 and 10 from the heading of this rejection a typographical error. See Adv. Act. 1 (transmitted Apr. 24, 2014); see also Final Act. 5—6 (transmitted Feb. 14, 2014), Ans. 3— 4 (transmitted August 28, 2014). 3 The rejection under 35 U.S.C. § 102(b) of claims 1—3, 6—11, 13, and 14 as anticipated by Busold (US 2004/0074732 Al, pub. Apr. 22, 2004) and Appeal 2015-001446 Application 13/476,125 SUMMARY OF DECISION We REVERSE. INVENTION Appellants’ invention relates to “a segregated oil supply circuit for a vehicle engine.” Spec., para. 1. Claims 1 and 8 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An engine oil circuit for a vehicle, comprising: a first oil circuit communicating with at least two first engine components; a first oil pump communicating with the first oil circuit to supply fluid flow in the first oil circuit at a first flow rate and a first pressure; a second oil circuit communicating with at least two second engine components, and wherein the second oil circuit is segregated from the first oil circuit; and a second oil pump communicating with the second oil circuit to supply fluid flow in the second oil circuit at the same time that the first oil pump provides fluid flow in the first oil circuit and at a second flow rate and a second pressure where at least one of the second flow rate or the second pressure is different than the first flow rate or the first pressure. ANALYSIS Each of independent claims 1 and 8 requires, inter alia, first and second oil pumps that provide oil to first and second oil circuits, the rejection under 35 U.S.C. § 103(a) of claims 4 and 5 as unpatentable over Busold and Nishikawa (US 2006/0223670 Al, pub. Oct. 5, 2006) have been withdrawn by the Examiner. See Adv. Act 2. 2 Appeal 2015-001446 Application 13/476,125 respectively, at different oil pressures or oil flow rates. See Appeal Br. 12— 13 (Claims App.). The Examiner finds that Urata discloses an engine oil circuit for a vehicle including, inter alia, a first oil circuit Ol and a second oil circuit Ou. Final Act. 5. The Examiner further finds that first oil circuit Ol includes first pump Pi that supplies oil at a first pressure and a first flow rate, and second oil circuit Ou includes second pump P2 that supplies oil at a second pressure and a second flow rate, wherein the “two segregated engine oil circuits [have] different [oil] pressure[s] and [flow] rates.” Id. at 5—6 (citing Urata, Abstract, col. 2,11. 7—36, Fig. 1). According to the Examiner, because Urata discloses “that the pumps operate at different temperatures, the oil viscosity at each pump differs . . . and this consequently can lead to different [oil] pressures and flow rates at each pump.” Ans. 5 (emphasis added). Appellants argue that: Urata is entirely silent about the flow rates and pressures in its oil circuits, and the unsupported suggestion that viscosity “can” lead to different pressures and flow rates is belied by the presence in Urata of pressure control valves and relief valves that permit control of the pumped fluid parameters independently of viscosity. Reply Br. 3 (filed Oct. 22, 2014) (citing Urata, col. 3,1. 59—col. 4,1. 3). According to Appellants, the Examiner’s position “that different viscosities ‘can lead’ to different flow rates and pressures ... is really an admission that this is not inherent.” Id. at 3^4 (emphasis added). “ft is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it. Under the principles of inherency, if the prior art necessarily 3 Appeal 2015-001446 Application 13/476,125 functions in accordance with, or includes, the claimed limitations, it anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and internal quotation marks omitted). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). In this case, we appreciate that in a simple hydraulic system, such as a cylindrical pipe of constant cross-section, changes in fluid viscosity of a Newtonian fluid necessarily will affect fluid pressure drop or flow rate. However, the oil flow in Urata’s first and second oil circuits Ol, Ou involves a more complex hydraulic system having a myriad of components with different flow cross-sections and lengths4 that affect fluid pressure or flow rate in the two circuits in a more complex manner. Furthermore, Urata’s second oil circuit Ou includes hydraulic devices such as pressure control valve 18, pressure relief valve 20, and accumulator 46 that may control the oil pressure or flow rate “independently of [fluid] viscosity.” See Reply Br. 3. The Examiner has not explained adequately how having different oil viscosities necessarily results in pumps Pi, P2 supplying oil at different oil 4 For example, Urata discloses that pump Pi is connected to crankshaft 5 and supplies oil to “a plurality of crank journal portions 9 and . . . cooling jets for cooling a sliding-contact surface of each of the pistons . . . in the cylinders.” Urata, col. 3,11. 40-45 and 54—66, Fig. 1. Urata further discloses that pump P2 is connected to valve operating cam shaft 3 and supplies oil to “a plurality of cam journal portions 10 included in the valve operating device 1 and sliding-contact surfaces of the cams 2, as well as to the valve operation characteristic changing means 4.” Id., col. 3,11. 47-52 and 56-58, Fig. 1. 4 Appeal 2015-001446 Application 13/476,125 pressures or flow rates to Urata’s first and second oil circuits Ol, Ou. In other words, just because Urata discloses that the oil viscosity in the first oil circuit Ol is different from the oil viscosity in the second oil circuit Ou does not mean that the oil pressures or flow rates are necessarily different in the two circuits, as the Examiner states. As such, the Examiner’s finding that Urata’s first and second engine oil circuits have different oil pressures or flow rates (see Final Act. 6) is mere speculation based on an unfounded assumption that a different oil viscosity in Urata’s first and second engine oil circuits would necessarily result in different oil pressures or flow rates in the two circuits. The Examiner’s modification of Urata’s engine oil circuits does not remedy the deficiency of Urata, as discussed above. See id. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 1—15 as unpatentable over Urata. SUMMARY The Examiner’s decision to reject claims 1—15 is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation