Ex Parte Ruggiero

Board of Patent Appeals and Interferences

Dec 18, 2008

10733516 (B.P.A.I. Dec. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN RUGGIERO
____________________

Appeal 2008-1417
Application 10/733,516
Technology Center 3700
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Decided: December 18, 2008
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian Ruggiero (Appellant) seeks our review under 35 U.S.C. § 134
from a final rejection of claims 1, 3-7, 20-23, and 28-30. (See Amended
App. Br. 2.) Appellant, after the final rejection, canceled claim 31.
(Amend. After Final dated May 10, 2006; see also Advisory Action dated
Appeal 2008-1417
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Nov. 14, 2006 (Examiner acknowledging the same).) We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
Appellant’s claimed invention pertains to a system for actuating
engine valves utilizing a master piston, two slave pistons and a hydraulic
control valve. (Spec. ¶ 0011.) The system may be used in conjunction with
a fixed profile cam to provide variable valve actuation. (Spec. ¶¶ 0004,
0025-0027.) Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A system for actuating two engine valves each having an
axial center spaced a first distance from each other, said system
comprising:
a housing having a first slave piston bore, a second slave
piston bore, and a passage adapted to provide hydraulic fluid to
the first and second slave piston bores;
a first slave piston slidably disposed in the first slave
piston bore and a second slave piston slidably disposed in the
second slave piston bore, said first and second slave pistons
each having an axial center spaced a second distance from each
other;
a master piston operatively connected to the housing
passage;
a hydraulic fluid control valve operatively connected to
the housing passage; and
a valve bridge disposed between (i) the first and second
slave pistons and (ii) the two engine valves,
wherein the first distance is different than the second
distance.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hausknecht US 4,153,016 May 8, 1979
Cosma US 5,619,965 Apr. 15, 1997
Egan, III US 6,112,710 Sep. 5, 2000
Meneely US 6,386,160 B1 May 14, 2002
Vorih US 6,412,457 B1 July 2, 2002
Vanderpoel US 6,474,277 B1 Nov. 5, 2002
The following rejections are before us for review:
1. The Examiner rejected claims 1, 3, 5-7, 20-22 and 29 under
35 U.S.C. § 103 as obvious over Egan and Meneely;
2. The Examiner rejected claims 7 and 28 under 35 U.S.C. § 103
as obvious over Egan, Meneely, and Vorih;
3. The Examiner rejected claim 30 under 35 U.S.C. § 103 as
obvious over Egan, Meneely, and Hausknecht.
The Examiner has withdrawn the rejection of claim 4 under 35 U.S.C.
§ 103 as obvious over Egan and Meneely (see Ans. 3), and states that that
claim would be allowable if rewritten in independent form (Ans. 7). The
Examiner has also withdrawn the rejection of claim 23 under 35 U.S.C.
§ 103 as obvious over Egan, Cosma, and Vanderpoel. (See Ans. 7 (stating
that claim 23 is allowed).) Accordingly, those rejections are not before us
for review.

ISSUES
The issues before us are whether the Appellant has shown that the
Examiner erred in rejecting claims 1, 3, 5-7, 20-22 and 29 as unpatentable
over Egan and Meneely; in rejecting claims 7 and 28 as unpatentable over
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Egan, Meneely, and Vorih; and in rejecting claim 30 as unpatentable over
Egan, Meneely, and Hausknecht. These issues all turn on whether one of
ordinary skill in the art would have found it obvious to combine the
teachings of Egan and Meneely to arrive at the claimed system.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. The customary meaning of “piston” in the mechanical arts is a
sliding piece moved by or moving against fluid pressure which usually
consists of a short cylinder fitting within a cylindrical vessel along which it
moves back and forth. MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 886
(10th ed. 1996).
2. Egan discloses a system for actuating two engine valves. (See
Egan, col. 2, ll. 41-43; Fig. 3.) Egan teaches a housing 31 having a first
slave piston bore (in the first slave piston assembly 34 depicted in Figure 3),
a second slave piston bore (in the second slave piston assembly 34 depicted
in Figure 3), and a passage 33 adapted to provide hydraulic fluid to the first
and second slave piston bores. (Egan, col. 6, ll. 47-52; Fig. 3.)
3. Egan also discloses a first slave piston slidably disposed in the
first slave piston bore and a second slave piston slidably disposed in the
second slave piston bore. (Egan, Fig. 3 (the two items 34).) Egan discloses
a master piston 32 operatively connected to the housing passage and a
hydraulic fluid control valve 35 operatively connected to the housing
passage. (Egan, col. 6, ll. 45-46, 52-56.)
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4. Meneely teaches a device for actuating two engine valves.
(Meneely, col. 4, ll. 20-27.) Meneely discloses an example of the device in
which a valve bridge 20 is disposed between two pistons, 96 and 98, and two
engine valves, 16 and 18. (Meneely, col. 4, ll. 30-31; col. 5, ll. 43-46; Fig.
1.) In this example, the pistons are mounted above the valves such that the
distance between the axial centers of the valves appears to be the same as the
distance between the axial centers of the pistons. (See Meneely, Fig. 1.)
Meneely states that “an additional piston [could be] added and the positions
of the pistons altered.” (Meneely, col. 5, ll. 48-50.)
5. Meneely discloses a second embodiment of a device for
actuating two valves utilizing a valve bridge 220. (Meneely, col. 7, ll. 13,
32-36; Figs. 9-16.) In this second embodiment, the bridge is disposed
between the valves on one side and first and second members (222 and 224,
respectively) on the other side. (Meneely, col. 7, ll. 36-40, 41-45; Fig. 10.)
6. Meneely’s cylindrical first member 222 (also identified as a
“valve spool”) reciprocates in its bore 286 and is moved by pressurized oil.
(See Meneely, col. 8, l. 12; col. 9, l. 13-15, 24-27, 38-42; Fig. 9.) Therefore,
the first member 222 is a hydraulic piston.
7. Pressurized oil moves Meneely’s piston 226 downwardly.
(Meneely, col. 9, ll. 8-11.) This movement of piston 226 extends the second
member 224. (Id., col. 9, ll. 11-12.)
8. In Meneely’s second embodiment, the distance between the
axial centers of the two valves, 216 and 218, and the distance between the
axial centers of the pistons, 222 and 226, are different. (Meneely, Fig. 13.)
9. Therefore, Meneely teaches, via the second embodiment, a
valve bridge disposed between (i) two hydraulic pistons and (ii) two engine
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valves, where the distance between the valves is different than the distance
between the pistons.
10. Meneely shows that the relative location of the pistons on the
bridge is variable.
11. The Examiner found that Meneely’s two pistons are not
identical, and that Meneely thereby discloses a second piston having a
greater mass than a first piston. (Ans. 5 (citing Meneely, Fig. 10).)
Apparently, the Examiner assumes them to be of the same composition. We
agree that the two pistons shown in Meneely’s second embodiment do not
appear to be identical in size. (See, e.g., Meneely, Fig. 10.) Appellant does
not point to any evidence suggesting that Meneely’s pistons have the same
mass. Therefore, it is reasonable to assume that Meneely discloses a second
piston that has a greater mass than the first piston.
12. The prior art references of record indicate that the ordinary
artisan in the mechanical arts, including those arts pertaining to engine valve
actuation systems, has a relatively high level of skill. For example, Meneely
shows that the artisan has an understanding of complex valve actuating
systems utilizing a cam, rocker arm and hydraulics. (See, e.g., Meneely,
Figs. 1, 9.)

PRINCIPLES OF LAW
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the Specification. In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). It is Appellant’s burden to
precisely define the invention, not the United States Patent and Trademark
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Office’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997) (citing 35
U.S.C. § 112, ¶ 2). Appellants have the opportunity to amend the claims
during prosecution, and broad interpretation by the Examiner reduces the
possibility that the claim, once issued, will be interpreted more broadly than
is justified. Prater, 415 F.2d at 1404-05.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007) (quoting 35 U.S.C. § 103). The question of obviousness is
resolved on the basis of underlying factual determinations including: (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.
of Kansas City, 383 U.S. 1, 17-18 (1966); see also KSR Int’l Co., 127 S. Ct.
at 1734 (“While the sequence of these questions might be reordered in any
particular case, the [Graham] factors continue to define the inquiry that
controls.”). The scope and content of the prior art includes the explicit and
inherent teachings of the prior art. In re Zurko, 258 F.3d 1379, 1383-84
(Fed. Cir. 2001) (citing In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” KSR Int’l Co., 127 S. Ct. at 1739, and discussed circumstances in which
a patent might be determined to be obvious. In particular, the Court pointed
out that “the principles laid down in Graham reaffirmed the ‘functional
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approach’ of Hotchkiss [v. Greenwood], 11 How. 248 [(1851)].” KSR Int’l
Co., 127 S. Ct. at 1739 (citing Graham, 383 U.S. at 12). The Court
reiterated that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court also noted that “when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” Id. at 1740 (citing United States v. Adams, 383
U.S. 39, 50-51 (1966)). The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.

ANALYSIS
The Rejection of Claims 1, 3, 5-7, 20-22 and 29 Under 35 U.S.C. § 103 as
Obvious Over Egan and Meneely
Appellant asserts that the Examiner erred in finding that Meneely
discloses a valve bridge disposed between engine valves and “slave pistons.”
(App. Br. 8 (citing Final Rej. 3); Reply Br. 2.) Appellant argues that
Meneely does not disclose a master piston to actuate Meneely’s disclosed
pistons, and, therefore, the latter cannot be “slave pistons.” (App. Br. 9-10;
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Reply Br. 2.) However, “[n]on-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA
1981)). As discussed below, the Egan reference does disclose master and
slave pistons, and the combination of references includes those structures.
Therefore, the Examiner’s use of the phrase “slave pistons” in the context of
Meneely is, at most, harmless error.
We agree with the Examiner that the cited prior art would have
rendered the claimed valve actuating system obvious to a person of ordinary
skill in the art. Egan teaches a system for actuating two engine valves. (Fact
2.) Egan’s disclosed system has a master piston, two slave pistons, a
housing with a hydraulic fluid passage and slave piston bores, and a
hydraulic fluid control valve. (Facts 2-3.) Meneely similarly teaches a
device for actuating two valves. (Facts 4-5.) Meneely teaches a valve
bridge disposed between (i) two hydraulic pistons and (ii) two engine valves,
where the distance between the valves is different than the distance between
the pistons. (Facts 5-9.) Thus, it would have been obvious to add the valve
bridge and the different valve/piston spacing taught by Meneely to Egan’s
master/slave piston configuration. Appellant has not shown that the
combination of Meneely and Egan produces unpredictable results.
Therefore, Appellant’s claimed invention is merely the obvious combination
of familiar elements according to known methods. See KSR Int’l Co., 127 S.
Ct. at 1739.
Appellant argues that the Examiner failed to identify a suggestion or
motivation “to modify the Egan system as needed to meet the claims.”
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(App. Br. 8.) This argument is foreclosed by KSR, in which the Court
rejected the rigid requirement of a teaching, suggestion or motivation to
combine known elements in order to show obviousness. KSR Int’l Co., 127
S.Ct. at 1741. The Court noted that an obviousness analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id.
Nonetheless, Meneely teaches the use of a valve bridge between
engine valves and hydraulic pistons, thus providing a teaching to insert such
a bridge between Egan’s valves and slave pistons. Further, Meneely shows
that the relative location of the pistons on the bridge (and, therefore, the
distances between pistons) is variable. (See Fact 10.)
Appellant acknowledges that Meneely discloses that the position of
the pistons could be altered. (App. Br. 9.) Appellant contends, however,
that Meneely “would not have suggested to one of ordinary skill in the art
the advantage realized by modifying the distance between two slave pistons
as claimed in the present application.” (Id.) This argument is not persuasive
as the reason to combine the references is not limited to seeking the
purported advantages realized by Appellant. See KSR Int’l Co., 127 S.Ct. at
1741-42.
Appellant contends that one of ordinary skill would not have expected
the combination of Egan and Meneely to produce a successful valve
actuation system. (App. Br. 11.) Appellant theorizes that the combination
would produce a configuration such that “the engine valve stems would be
exposed to a side load causing damaged [sic] or failure.” (App. Br. 11.)
Appellant’s speculative argument is based on the assumption that a person of
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ordinary skill in the art would blindly combine the exact embodiments
shown. (See App. Br. 11.) “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference …. Rather, the test is what the combined
teachings of those references would have suggested to those of ordinary skill
in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations
omitted). A person of ordinary skill is not an automaton, and is expected to
exercise common sense. See KSR Int’l Co., 172 S.Ct. at 1742. The prior art
shows that the ordinary artisan has a relatively high level of skill. (Fact 12.)
Therefore, the person of ordinary skill in the art would understand that he or
she is not constrained to locate the pistons and valves exactly as shown in
Meneely’s figures. The teachings of Meneely in combination with the
teachings of Egan provide a reasonable expectation of success.
Appellant has not demonstrated that the Examiner erred in rejecting
claim 1 as unpatentable over Egan and Meneely. Accordingly, we sustain
the rejection of claim 1.
Claim 6, which depends indirectly from claim 1, adds the limitation
that reads “the second slave piston has a greater mass than the first slave
piston.” In addition to the arguments presented for claim 1, Appellant
argues that claim 6 is patentable because “Meneely does not disclose any
slave pistons at all, much less two slave pistons with different masses.”
(App. Br. 13.) Other than this conclusory assertion, Appellant does not offer
any argument or evidence to rebut the Examiner’s finding that Meneely
discloses pistons having different masses. Appellant does not contend that
the use of pistons of different masses is unknown to persons of ordinary skill
in the art or yields anything other than predictable results. (See App. Br.
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13.) Thus, Appellant has failed to show that the Examiner erred in rejecting
claim 6.
Appellant has provided no separate arguments directed to the merits
of claims 3, 5, 7, 20-22 and 29, but rather asserts that those claims are
patentable because they depend either directly or indirectly from claim 1.
Because we affirm the rejection of claim 1, we also sustain the rejection of
3, 5, 7, 20-22 and 29.

The Rejection of Claims 7 and 28 Under 35 U.S.C. § 103 as Obvious Over
Egan, Meneely, and Vorih
Claims 7 and 28 depend from claim 3, which depends from claim 1.
Appellant does not offer separate arguments for the patentability of claims 7
and 28. (App. Br. 13.) Rather, Appellant merely asserts that claims 7 and
28 are patentable for the previous reasons given for claims 1 and 3. (Id.) As
Appellant has failed to show that the Examiner erred in rejecting claims 1
and 3, Appellant has also failed to show error in the rejection of dependent
claims 7 and 28. Thus, we sustain the rejection of claims 7 and 28.

The Rejection of Claim 30 Under 35 U.S.C. § 103 as Obvious Over Egan,
Meneely, and Hausknecht
As to claim 30, Appellant asserts only that that claim 30 “depends
from Claim 1 and is patentable for the reasons that Claim 1 is patentable[.]”
(App. Br. 14.) Because we affirm the rejection of claim 1 and Appellant
does not offer separate arguments for the patentability of claim 30, we also
sustain the rejection of claim 30.

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CONCLUSIONS
We conclude that the Appellant has failed to show that the Examiner
erred in rejecting claims 1, 3, 5-7, 20-22 and 29 under 35 U.S.C. § 103 as
obvious over Egan and Meneely, claims 7 and 28 under 35 U.S.C. § 103 as
obvious over Egan, Meneely, and Vorih, and claim 30 under 35 U.S.C.
§ 103 as obvious over Egan, Meneely, and Hausknecht.

DECISION
The decision of the Examiner to reject claims 1, 3, 5-7, 20-22, and
28-30 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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