MIGUEL POTOLICCHIO

Patent Trials and Appeals Board

Oct 15, 2021

2020005113 (P.T.A.B. Oct. 15, 2021)

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.
15/677,595 08/15/2017 MIGUEL ALFONSO POTOLICCHIO TUNERS-106-CIP 5831
110839 7590 10/15/2021
Thomas K. Zlegler
6184 NW 124th Drive
Coral Springs, FL 33076
EXAMINER
LATHERS, KEVIN ANTHONY
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
10/15/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MIGUEL ALFONSO POTOLICCHIO
____________

Appeal 2020-005113
Application 15/677,595
Technology Center 3700
____________

Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–20 as unpatentable under 35 U.S.C. § 103 over Semar
(US 5,589,059, iss. Dec. 31, 1996). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a).
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Application 15/677,595
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THE INVENTION
Appellant’s invention relates to a lubrication system for internal
combustion engines. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A device for use with an internal combustion engine
having a crankcase provided with an oil filter opening therein
adapted to receive a removable oil filter, an oil pump and at
least one external component outside the crankcase to which oil
is supplied from the crankcase, a device for controlling flow of
oil between the crankcase and the external component when the
engine is running, comprising:
an adapter configured to be installed in the oil filter opening
and coupled between the oil pump and the external component
to allow oil to be pumped from the crankcase to the external
component, the adapter including an adapter body having a
passageway therein and an outlet port from which oil may flow
from the adapter to the external component, the adapter body
including an internal valve within the passageway for
preventing backflow of oil from the external component though
the adapter to the crankcase.
OPINION
Claim 1
The Examiner finds that Semar discloses the invention substantially as
claimed except for the valve being disposed internally within the adapter.
Final Act. 2–4. The Examiner concludes that it would have been obvious to
a person of ordinary skill in the art at the time the invention was made to
relocate Semar’s check valve internal to its adapter. Id. at 3–4. According
to the Examiner, a person of ordinary skill in the art would have done this as
such would have entailed a mere rearrangement of parts. Id. at 4 (citing In
re Japikse, 181 F.2d 1019 (CCPA 1950)). In the Examiner’s own words,
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“there is no significant modification occurring other than a simple
movement of a valve from one spot on a path to another spot on the same
path.” Id.
Appellant argues that the Examiner fails to provide evidence of a
reason or motivation for making the proposed modification to Semar and
criticizes the Examiner’s reliance on Japikse, which Appellant characterizes
as stating an improper per se rule of unpatentability. Appeal Br. 11.
Appellant further argues that location of its valve involves more than mere
design choice. Id. Appellant also argues that modifying Semar as proposed
would reduce its effectiveness by interfering with the return flow of engine
oil. Id. Appellant then lists a plethora of advantages achieved by the
invention, including: (1) eliminating the need for additional connections; (2)
reducing leakage; (3) protecting the valve from damage; (4) providing repair
access; and (5) reducing backflow. Id. at 12.
In response, the Examiner explains that Appellant’s invention merely
provides a generic valve to prevent backflow. Ans. 7. According to the
Examiner, “the main difference between the claim limitation at hand and
what is disclosed in Semar is that Semar’s check valve 34 is external to the
adapter body 20, rather than ‘the adapter body including an internal valve
within the passageway.’” Id. at 8. The Examiner rebuts Appellant’s Japikse
– per se rule of unpatentability argument by emphasizing that the proposed
rearrangement of parts does not affect the operation of the adapter. Id.
Here it can be seen that the check valve 34 is immediately
adjacent to the adapter 20. Its movement to the adapter itself
would involve little in the way of modification, a simple
removal of the line between the two and the check valve
incorporated into the adapter housing, a structural modification
that is well-within the skill of one of ordinary skill in the art.
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Further, the functionality of the device would be completely
unaltered: the check valve performs its function the same no
matter its location and the adapter’s function is unchanged due
to a check valve being moved within its housing.
Id. at 10.
With respect to purported advantages that Appellant outlined in the
Appeal Brief, the Examiner notes that none of them amount to unexpected
results nor is more than ordinary skill required to achieve them. Id. at 11.
The Examiner further comments that such advantages are matters of
common knowledge among skilled practitioners and, in and of themselves,
provide reasons to make the proposed modification. Id.
The Examiner’s position is persuasive. It is now settled law that
under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for modifying the prior art in the manner claimed. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007).
Moreover, we have reviewed the Semar reference. Figure 1 of Semar
depicts adapter 20 disposed in the same location where an oil filter would
otherwise be placed. Semar, Fig. 1. An oil filter 40 is disposed external to
the engine and is connected to adapter 20 by means of hose 32. Id. Check
valve 34 is disposed along hose 32 proximate to adapter 20. Id. We agree
with the Examiner that all of the claim limitations are met except for
location of the check valve. We also agree with the Examiner that the
proposed relocation of the check valve would have been obvious, would
have required no more than ordinary skill, and produces no unexpected
results. We also agree that relocation of the check valve, as proposed, would
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not affect operation of the adapter and, therefore, the Examiner’s reliance on
Japikse is appropriate under the facts of this particular case.
Furthermore, we find no evidence in the record to support Appellant’s
speculative argument that modifying Semar as proposed would interfere
with the return flow of oil. An artisan must be presumed to know something
about the art apart from what the references disclose. In re Jacoby, 309
F.2d 513, 516 (CCPA 1962). Once the decision is made to move Semar’s
check valve upstream and incorporate it into the adapter, it would have taken
no more than ordinary skill to arrange and dispose the various components
so that oil would flow in and out of the adapter.
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is well-
founded. In view thereof, we sustain the Examiner’s unpatentability
rejection of claim 1.
Claims 2, 8, and 16
Appellant argues claims 2, 8, and 16 as a group. Appeal Br. 16.
Claim 2 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 2 depends from claim 1 and adds the limitation:
the valve includes a valve seat integrally formed in the adapter
body, and valve ball shiftably disposed within the passageway,
the valve further including a spring within the passageway for
biasing the valve ball toward a closed position against the valve
seat to prevent backflow of oil through the adapter to the oil
pump, but yieldable under oil pressure to allow oil to flow
through the passageway and exit the adapter from the outlet
port.
Claims App. Appellant argues that the prior art fails to disclose a valve seat
integrally formed in the passageway of an adapter body as claimed. Appeal
Br. 16.
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In response, the Examiner explains that “[t]he seat of a valve being
integral with its housing is shown in these applications and indeed the check
valve being moved to the outlet of a housing would allow for such an
integral seat.” Ans. 14 (citing Kuklewicz, US 3,743,053 iss. July 3, 1973;
and Peeples, US 3,343,564, iss. Sept. 26, 1967).
Having considered the competing positions of Appellant and the
Examiner, we find the Examiner’s position more persuasive. The Examiner
is correct that Kuklewicz discloses the claimed feature and, although
Kuklewicz is not relied on as applied art in the rejection, it is evidence of the
background of knowledge of a person of ordinary skill in the art that could
be brought to bear in considering to modify Semar. See Randall v. Rea, 733
F.3d 1355, 1361–1363 (Fed. Cir. 2013) (explaining that non-applied
references may be relied on as evidence of background knowledge of a
person of ordinary skill in the art).
We sustain the Examiner’s unpatentability rejection of claims 2, 8,
and 16.
Claims 3, 11, and 17
Appellant argues claims 3, 11, and 17 as a group. Appeal Br. 14–15.
Claim 3 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 3 depends from claim 1 and adds the limitation: “wherein the
adapter includes an external fitting attached to the adapter body and
configured to couple the adapter body with the external component, wherein
the external fitting forms a part of the valve and the outlet port forms part of
the external fitting.” Claims App.
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Appellant argues that although the art is fully populated with spring-
loaded ball valves, none of the cited art discloses an adapter fitting having an
external fitting forming part of the valve itself. Appeal Br. 15.
In response, the Examiner explains that some kind of a fitting for a
valve necessarily must be chosen and, therefore, one of ordinary skill in the
art would select from adapters and ball check valves which include known
and easily included fittings such as a threaded securing structure. Ans. 15.
Similar to the inclusion of a ball check valve with an integral
seat, this is essentially a claim of a common and routine device
(‘an external fitting attached to the adapter body . . .’) which is
necessary to the structure of any device (i.e. the hose/pipe to the
external component requires a fitting onto the adaptor body)
and that it is obvious for one of ordinary skill in the art to
include such routine structures.
Id.
The Examiner’s position is persuasive. Anyone who has ever
connected a garden hose to an external spigot is familiar with providing a
screw thread fitting on the end of the spigot where it connects to the hose.
We see nothing innovative about placing a screw thread fitting on the outlet
of Appellant’s adapter and incorporating one end of Appellant’s check valve
into the outlet fitting. Such would obviously facilitate connection of a hose.
We sustain the Examiner’s unpatentability rejection of claims 3, 11,
and 17.
Claims 5
Claim 5 depends from claim 1 and adds the limitation: “the adapter
body is substantially solid and the passageway passes therethrough, and the
valve is located within the passageway.” Claims App. Appellant argues that
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Semar’s adapter has thin walls, is hollow, and, therefore, is not substantially
solid as claimed. Appeal Br. 13.
In response, the Examiner points out that Appellant does not disclose
how large or small a “passageway” is, nor does it disclose what the meaning
of “substantially” solid is supposed to be in view of the fact that the adapter
has passageways. Ans. 13. Consequently, the Examiner uses a broad, but
reasonable, construction of “substantially solid,” which permits the adapter
to incorporate passageways through which fluid moves. Id.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Translogic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Here, Appellant fails to offer a
construction of “substantially solid” that is sufficiently narrow to exclude
Semar, modified as proposed, and yet broad enough to encompass the langue
of claim 5. Under the circumstances, we treat the Examiner’s position as
unrebutted and sustain the Examiner’s rejection of claim 5 over Appellant’s
“substantially solid” argument.
Claims 6, 7, 13, 14, 15, and 20
Appellant argues claims 6, 7, 13, 14, 15, and 20 as a group. Appeal
Br. 15–16. Claim 6 is representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 6 depends from claim 1 and adds the limitations:
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a valve ball shiftably disposed within the passageway,
a valve seat formed in the adapter body at one end of the
passageway against which the valve ball may seat to close the
valve against oil flow therethrough, and
a perforated disk located at the other end of the passageway
against which the valve ball may seat while allowing oil flow
through the valve.
Claims App. Appellant asserts that the Examiner fails to provide evidence
that the claimed “perforated disk” is known in the prior art. Appeal
Br. 15–16.
In response, the Examiner finds that perforated discs that act as valve
seats are well-known in the art. Ans. 15 (citing Muto, US 4,470,382, iss.
Sept. 11, 1984; Wydra, US 5,853,575, iss. Dec. 29, 1998; Bouwkamp,
US 3,437,082, iss. Apr. 8, 1969; Hunnicutt, US 2003/0086801 A1, pub.
May 8, 2003; and Montague, US 2009/0223574 A1, pub. Sept. 10, 2009).
Appellant makes no effort to distinguish the art cited by the Examiner.
Appeal Br. 15–16.
The Examiner’s findings of fact are supported by a preponderance of
the evidence. We sustain the Examiner’s unpatentability rejection of
claims 6, 7, 13, 14, 15, and 20.
Claims 8 and 5
Claim 8 is an independent claim and is argued together with claim 5
that depends from claim 1. Claims App. We select claim 8 as
representative. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that the
following limitation from claim 8 — “an internal valve . . . including a
valve seat integrally formed in the adapter body within the passageway” —
is not met by the prior art. Appeal Br. 14.
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In response, the Examiner finds that such integrally formed valve
seats are disclosed in Kuklewicz, supra, and Peeples, supra. Ans. 14.
Appellant’s arguments to the contrary are abbreviated and conclusory, and
fail to patentably distinguish over the art cited by the Examiner. Appeal
Br. 14.
We sustain the Examiner’s unpatentability rejection of claims 5 and 8.
Claims 12 and 18
Claim 12 depends from claim 8 and adds the limitation: “wherein the
adapter body includes an integrated cover plate configured to act as a stop
and seat the adapter against a surface of the engine.” Claims App. Claim 18
depends from independent claim 16 and contains a similar limitation. Id.
Appellant argues that the Examiner fails to make any findings of fact that
address this limitation in either of these two claims. Appeal Br. 16–17.
Appellant’s Appeal Brief argument appears to have merit and we are unable
to find any discussion in the Examiner’s Answer that addresses this
limitation, much less provide findings of fact as to where the limitation is
met by the prior art or otherwise would have been known or obvious to a
skilled artisan. See generally Ans.
Rejections based on obviousness must rest on a factual basis; in
making a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
Under the circumstances, we do not sustain the Examiner’s rejection
of claims 12 and 18.
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Claims 4, 9, 10, and 19
These claims are not separately argued apart from their dependency
on claims for which we have already sustained the Examiner’s rejection.
Appeal Br. 17. They fall with the claims from which they depend.
CONCLUSION
Claims
Rejected
35
U.S.C. §
References/Basis Affirmed Reversed
1-20 103 Semar 1-11, 13-17, 19,
20
12, 18

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED IN PART