Ex parte YOSHIKAWA

Board of Patent Appeals and Interferences

Jul 23, 1998

08354539 (B.P.A.I. Jul. 23, 1998)

Application for patent filed December 13, 1994. According1
to appellant, this application is a continuation-in-part of
Application 08/197,610, filed February 17, 1994.
Claims 16 and 18 have been amended subsequent to final2
rejection.
1
Paper No. 20
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MASAAKI YOSHIKAWA
______________
Appeal No. 98-1604
Application 08/354,5391
_______________
HEARD: JULY 15, 1998
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
MEISTER and STAAB, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Masaaki Yoshikawa (the appellant) appeals from the final
rejection of claims 16 and 18-40. Claims 1-15 and 41-55, the2
only other claims present in the application, have been withdrawn
Appeal No. 98-1604
Application 08/354,539
Although correct in the copy of claim 16 as it appears in3
the appendix to the brief, we observe that in the penultimate
line of claim 16 (as it appears in the amendment filed March 31,
1997 (Paper No. 10)) "porting" should be --point--. At oral
hearing, the appellant's counsel stated that in line 12 of claim
16 (as it appears in the appendix to the appellant's brief)
"second plane" should be --first plane--. These obvious errors
should be corrected.
The examiner failed to include this reference in the4
listing of prior art in the answer. In the rejection of claim
26, wherein this reference is relied on, the examiner simply
refers to it as "Japanese Patent publication no. JP 61190147 to
Toyoichi et al." (as though it were the complete document). We
observe, however, no Japanese document in its entirety has ever
been made of record. The only "Toyoichi" of record is the
abstract of this document, which was cited in the European search
report submitted by the appellant in the information disclosure
statement filed on August 11, 1995 (Paper No. 2). Accordingly,
we presume the examiner intended to rely on this abstract.
2
from further consideration under the provisions of 37 CFR
§ 1.142(b) as be directed to a nonelected invention.
We REVERSE.
The appellant's invention pertains to an internal combustion
engine. Independent claim 16 is further illustrative of the
appealed subject matter and a copy thereof may be found in the
appendix to the appellant's brief.3
The references relied on by the examiner are:
Ascari 5,095,858 Mar. 17, 1992
Yamada 5,099,812 Mar. 31, 1992
Toyoichi et al. 61190147 Aug. 23, 1986
(Japanese abstract)4
Appeal No. 98-1604
Application 08/354,539
The examiner failed to include this rejection in the5
listing of the grounds of rejection which are "applicable" to the
appealed claims in the answer, it appears from the examiner's
comments in the paragraph bridging pages 2 and 3 of the answer,
that the examiner did not intend to withdraw the final rejection
of claims 16, 18, 20-24, 27-32 and 34-40 on this ground.
Although not stated to be such, it is apparent that this is a
provisional rejection.
Although it is not entirely clear from the examiner's6
cryptic explanation, the examiner appears to have intended that
the rejection be a provisional obviousness-type double patenting
rejection (as distinguished from a provisional statutory double
patenting rejection).
3
Claims 16, 18, 20-24, 27-32 and 34-40 stand rejected
under "the judicially created doctrine of double patenting"
over claims 1-21 of the appellant's copending application
Serial No. 08/197,610.5
Claims 16, 18-25 and 27-40 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Yamada in view of Ascari.
Claim 26 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Yamada in view of Ascari and Japanese abstract.
The rejection based on double patenting is explained on
pages 2 and 3 of the final rejection. The rejections under 6
§ 103 are explained on pages 4-6 of the answer. The arguments of
the appellant and examiner in support of their respective
positions may be found on pages 4-8 of the brief and pages 6 and
7 of the answer.
Appeal No. 98-1604
Application 08/354,539
4
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellant in the brief and by the examiner in the answer.
As a consequence of this review, we will not sustain any of the
above-noted rejections.
Considering first the provisional rejection of claims 16,
18, 20-24, 27-32 and 34-40 under "the judicially created doctrine
of double patenting" over claims 1-21 of the appellant's
copending application Serial No. 08/197,610, the appeal of claims
1-21 in that application has been dismissed. This being the
case, the question of double patenting is moot and, accordingly,
this rejection cannot be sustained.
We now turn to the rejections under 35 U.S.C. § 103 of
claims 16, 18-25 and 27-40 as being unpatentable over Yamada in
view of Ascari and claim 26 as being unpatentable over Yamada in
view of Ascari and Japanese abstract. We initially note that in
rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness.
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
Appeal No. 98-1604
Application 08/354,539
5
1444 (Fed. Cir. 1992). Only if that burden is met does the
burden of coming forward with evidence or argument shift to the
applicant. Id. If the examiner fails to establish a prima facie
case, the rejection is improper and will be overturned. In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Here, independent claim 16 expressly requires that the
reciprocal axes of the poppet valves (which lie at acute angles
with respect to both the first and second planes) intersect the
first plane
at a point below the bottom dead center
position of said piston so that the flow
into said cylinder bore from said side
intake valve seats does not interfere.
The examiner recognizes that none of the relied on references
teaches or suggests such an arrangement but, nevertheless, takes
the position that "this angle of inclination is an obvious matter
of design choice dictated by space constraints and desired flow
direction" (answer, page 6). However, as stated on page 2 of the
appellant's specification, the claimed arrangement overcomes the
prior art problem of "interfering turbulence." Inasmuch as the
claimed arrangement solves a stated problem compared with prior
art arrangements, we do not believe it can be dismissed as an
obvious matter of design choice as the examiner proposes to do.
Appeal No. 98-1604
Application 08/354,539
6
Cf. In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975).
Since the examiner has failed to provide a proper factual basis
for reaching a conclusion for concluding that the above-noted
limitation would have been obvious (see In re Fine, supra), we
will not sustain the rejections of claims 16 and 18-40 under
35 U.S.C. § 103.
The examiner's rejections are all reversed.
REVERSED
HARRISON E. MCCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )

Appeal No. 98-1604
Application 08/354,539
7
Ernest A. Beutler
Knobbe, Martens, Olson and Bear
620 Newport Center Drive
Sixteenth Floor
Newport Beach, CA 92660-8016
JMM/cam