SUBARU CORPORATION

Patent Trials and Appeals Board

Oct 25, 2021

2021002179 (P.T.A.B. Oct. 25, 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.
16/717,611 12/17/2019 Masatoshi YAMAMOTO A04077US00 6902
21254 7590 10/25/2021
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
ROGERS, ADAM D
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
10/25/2021 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 MASATOSHI YAMAMOTO and
ATSUSHI TANAKA

____________

Appeal 2021-002179
Application 16/717,611
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated June 17, 2020, hereinafter “Final
Act.”) rejecting claims 1–10, 12–18, and 20.2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Subaru Corporation is identified as the real party in interest
in Appellant’s Appeal Brief (filed Nov. 16, 2020, hereinafter “Appeal Br.”).
Appeal Br. 1.
2 Claims 11 and 19 are canceled. Appeal Br. 22, 23 (Claims App.).
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

INVENTION
Appellant’s invention is directed to a crankshaft with “oil holes
through which lubricating oil flows.” Spec. 1.
Claims 1 and 13 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. A crankshaft, comprising:
a first oil hole;
a second oil hole that extends in a direction in
which the second oil hole intersects the first oil hole; and
a through hole,
wherein:
a first extension represents an imaginary line
extending from an inner wall surface of the first oil hole
on a second oil hole side;
a second extension represents an imaginary
line extending from an inner wall surface of the second oil
hole on a first oil hole side;
in a direction that the through hole extends
from an outer peripheral surface of the crankshaft to the
first oil hole and the second oil hole, the through hole
passes through an intersection between the first extension
and the second extension;
at least one end of the through hole opens on
the outer peripheral surface of the crankshaft; and
as viewed from the direction that the
through hole extends from the outer peripheral surface of
the crankshaft to the first oil hole and the second oil hole,
the through hole extends to an area of the crankshaft that
is located outside of the first oil hole and the second oil
hole.
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Appeal Br. 20 (Claims App).
REJECTIONS
I. The Examiner rejects claims 1, 3, 5, 7, 10, 12–15, 18, and 20
under 35 U.S.C. § 102(a)(1) as being anticipated by Simca.3
II. The Examiner rejects claims 2, 4, 6, 8, 9, 16, and 17 under 35
U.S.C. § 103 as being unpatentable over Simca.
III. The Examiner rejects claims 1–10, 12–18, and 20 under 35
U.S.C. § 103 as being unpatentable over Wittek4 and Zapp.5
IV. The Examiner rejects claims 1–10, 12–18, and 20 under 35
U.S.C. § 103 as being unpatentable over Toru6 and Zapp.

ANALYSIS
Rejection I
As illustrated below in the Examiner’s annotated portion of Figure 1
of Simca, the Examiner finds that Simca discloses a crankshaft having first
and second oil holes, first and second extensions extending from an inner
wall surface, respectively, and, when viewed in a direction from an outer

3 Simca, FR 1 310 621 A, issued Oct. 22, 1962. We derive our understanding
of this reference from the translation contained in the image file wrapper of
this application. All references to the text of this document are to portions of
the translation.
4 Wittek et al., DE 10 2010 023 297 A1, published Dec. 15, 2011. We
derive our understanding of this reference from the translation contained in
the image file wrapper of this application. All references to the text of this
document are to portions of the translation.
5 Zapp et al., US 8,479,703 B2, issued July 9, 2013.
6 Toru et al., JP 2011-208741 A, published Oct. 20, 2011.
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peripheral surface of the crankshaft, through hole 18 passing through an
intersection of the first and second extensions. Final Act. 3–4.

The Examiner’s annotated Figure 1 of Simca illustrates a portion of a
crankshaft having first and second oil holes, inner surface walls of first and
second oil holes, and through hole 18.
Appellant argues that Simca’s Figure 1 is a side view of the
crankshaft, rather than a plan view, which, according to Appellant “is
defined in ‘the direction that the through hole extends from an outer
peripheral surface of the crankshaft to the first oil hole and the second oil
hole.’” Appeal Br. 7 (emphasis omitted). For a better understanding of
Appellant’s position, we reproduce below the Board’s annotated Figure 2 of
Appellant:
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The Board’s annotated Figure 2 of Appellant illustrates journal 20 of
crankshaft 10 having first and second oil holes 52, 53, inner sidewalls 52a,
52b of first oil hole 52, inner sidewalls 53a, 53b of second oil hole 53, tip
52c of oil hole 52, tip 53c of oil hole 53, and through hole 60, which
intersects with first and second oil holes 52, 53.
Appellant contends that Simca fails to disclose the limitation that “the
through hole extends to an area of the crankshaft that is located outside of
the first oil hole and the second oil hole” when “viewed from the direction
that the through hole extends from the outer peripheral surface of the
crankshaft to the first oil hole and the second oil hole.” Appeal Br. 7
(emphasis omitted). In that regard, Appellant asserts that because Simca’s
channel 18 “passes through an area 27 that is confined within the alleged
first and second oil holes,” Simca’s though hole 18 “does not pass through
an area of the crankshaft that is located outside of the first oil hole and
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second oil hole.” Id. at 8 (emphasis omitted). According to Appellant,
“there is no area of the crankshaft [of Simca] that is located outside the first
extension and the second extension in a plan view.” Id. (emphasis omitted);
see also Reply Brief (filed Feb. 8, 2021, hereinafter “Reply Br.”) 1–2.
Although we appreciate that Appellant’s Figure 2 and Simca’s Figure
1 illustrate different views of through holes 60 and 18, respectively, claims 1
and 13 are broader than Appellant’s configuration shown in Figure 2. We
must be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004).
In this case, the Examiner is correct that, when viewing Simca’s
through hole 18 from the top of the crankshaft, i.e., downwards direction,
through hole 18 extends from an “outer peripheral surface of the crankshaft
to the first and second oil holes and through an area that is located outside
the first and second oil holes.” Examiner’s Answer (dated Dec. 10, 2020,
hereinafter “Ans.”) 4. In particular, we agree with the Examiner’s finding
that the area of Simca’s “crankshaft where the oil holes are not located” and
through which through hole 18 extends downwards constitutes the claimed
area that is located outside the first and second oil holes. Id. We further
agree with the Examiner that Simca’s through hole 18 opens on the outer
peripheral surface of element 3 and extends through an intersection of the
extensions of the first and second oil holes, i.e., region 27 where the
extensions of Simca’s oil holes intersect. Id. at 5. As such, although
Simca’s Figure 1 illustrates a view different from Appellant’s Figure 2,
nonetheless, Simca discloses a crankshaft having first and second oil holes,
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first and second extensions, and a through hole 18, as called for by each of
independent claims 1 and 13.
Accordingly, for the foregoing reasons, we sustain the rejection under
35 U.S.C. § 102(a)(1) of independent claims 1 and 13, and their respective
dependent claims 3, 5, 7, 10, 12, 14, 15, 18, and 20, as anticipated by Simca.

Rejection II
The Examiner finds that Simca fails to disclose that through hole 18
passes through the tips of the first and second oil holes, as required by each
of dependent claims 2 and 16. Final Act. 9. The Examiner also finds that
Appellant’s Specification “is silent regarding the criticality of the through
hole passing through the tips of the first and second oil holes.” Id. Thus, the
Examiner determines that it would have been obvious to a skilled artisan “to
increase the size of the through hole of Simca so that the through hole passes
through the tips of the first and second oil holes” because “such a
modification would have involved a mere change in the size of a
component” and “would allow more lubricant to exit the through hole thus
improving the lubrication of the invention.” Id. at 9–10. According to the
Examiner, “a change in size is generally recognized as being within the level
of ordinary skill in the art.” Id. at 10.
Appellant argues that “the inventors of the present application were
the first researchers who discovered the source of a problem in conventional
methods and recognized a need for, and suggested, the arrangement of size
of the claimed ‘through hole’ . . . passing through the tips of the first and
second holes.” Appeal Br. 17 (emphasis omitted) (citing In re Sponnoble,
405 F.2d 578, 585 (CCPA 1969)). Relying on In re Omeprazole Patent
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Litigation, 536 F.3d 1361 (Fed. Cir. 2008), Appellant contends that the
claimed invention is “non-obvious because the problem which would have
suggested the alleged modification of Simca was previously unknown.” Id.
at 18 (emphasis omitted).
In reviewing the record, we note that the Examiner’s Answer offers no
rebuttal to Appellant’s arguments. See generally Ans. Appellant’s
arguments are persuasive and unrebutted. Hence, we do not sustain the
rejection under 35 U.S.C. § 103 of claims 2 and 16 as unpatentable over
Simca. For the same reasons, we do not sustain the rejection under 35
U.S.C. § 103 of claims 4, 6, 8, 9, and 17, which depend directly or indirectly
from claims 2 and 16, respectively.

Rejection III
As illustrated below in the Examiner’s annotated portion of Figure 4
of Wittek, the Examiner finds that Wittek discloses a crankshaft having first
and second oil holes, first and second extensions, and a hole that opens on an
outer peripheral surface of the crankshaft. Final Act. 11–12.

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The Examiner’s annotated Figure 4 of Wittek illustrates first and second oil
holes, inner surface walls of first and second oil holes, and a hole. Id. at 12.
The Examiner further finds that Wittek’s hole is not a through hole.
Id. Nonetheless, the Examiner finds that Zapp discloses a through hole 118,
120 that extends through oil hole 122 and to an outer peripheral surface of a
crankshaft’s journal 124 “for the purpose of supplying lubricant to the
journal bearings.” Id. at 13 (citing Zapp, col. 3, ll. 19–33, Fig. 1B). Thus,
the Examiner concludes that it would have been obvious for a person of
ordinary skill in the art “to modify the hole of Wittek . . . to be a
through hole that extends to the outer peripheral surface of the journal for
the purpose of supplying lubricant to the journal bearings, as taught by
Zapp.” Id. The Examiner further determines that it would have been
obvious for a skilled artisan “to increase the size of the through hole of
Wittek . . . in view of Zapp” to pass through the intersection of the first and
second extensions because “[f]orming the through hole to be larger in
diameter would allow more lubricant to exit the through hole thus improving
the lubrication of the invention,” and, moreover, “[a] change in size is
generally recognized as being within the level of ordinary skill in the art.”
Id.
Appellant argues that the Examiner’s conclusion of obviousness is
based on impermissible hindsight because a skilled artisan would not have
considered increasing the size of the through hole of Wittek, as modified by
Zapp, to pass through the intersection of the first and second extensions.
Appeal Br. 10. According to Appellant, “the inventors of the present
application were the first researchers who discovered the source of a
problem in conventional methods and recognized a need for, and suggested,
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the arrangement of size of the claimed ‘through hole’ to extend to an area of
the crankshaft that is located outside of the first oil hole and the second oil
hole.” Id. at 11 (emphasis omitted) (citing In re Sponnoble, 405 F.2d 578,
585 (CCPA 1969)). Relying on In re Omeprazole Patent Litigation, 536 F.
3d 1361 (Fed. Cir. 2008), Appellant asserts that the claimed invention is
“non-obvious because the problem which would have suggested the alleged
modification of Wittek was previously unknown.” Id.; see also Reply Br. 4–
5.
In response, the Examiner takes the position “that it would be well
within the ability of one having ordinary skill in the art to increase the size
of an oil hole (or a hole in general) to meet a need” and because “through
holes deal with oiling then changing the diameter of the through hole would
allow for more or less lubricant to flow into or out of the through hole thus
changing the effectiveness of the oiling system.” Ans. 9.
We appreciate that changing the size of a hole is common knowledge
and well within the ability of a skilled artisan. However, the reasoning
provided by the Examiner to increase the hole size of Wittek’s crankshaft, as
modified by Zapp, namely, “to allow more lubricant to exit the through hole
thus improving the lubrication of the invention” (Final Act. 13), does not
support the conclusion of obviousness. In particular, the Examiner’s
rejection does not adequately explain why a skilled artisan would increase
the size of the hole of Wittek’s crankshaft, as modified by Zapp, to “pass[]
through an intersection between the first extension and the second
extension” and “extend[] to an area of the crankshaft that is located outside
of the first oil hole and the second oil hole.” See Appeal Br. 20 (Claims
App).
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In the Examiner’s rejection, the hole size of Wittek’s crankshaft, as
modified by Zapp, is not merely increased, but rather, is increased to a size
that “passes through an intersection between the first extension and the
second extension” and “extends to an area of the crankshaft that is located
outside of the first oil hole and the second oil hole.” It is not clear from the
Examiner’s rejection why a skilled artisan would make such an increase in
size. In particular, it is not clear why increasing the size of the hole of
Wittek’s crankshaft, as modified by Zapp, to “pass[] through an intersection
between the first extension and the second extension” and “extend[] to an
area of the crankshaft that is located outside of the first oil hole and the
second oil hole” would “allow more lubricant to exit the through hole thus
improving the lubrication of the invention,” whereas a smaller increase in
hole size would not. See Final Act 13. Moreover, we note that the reason
proffered by the Examiner to increase the hole size of Wittek’s crankshaft,
as modified by Zapp, i.e., lubrication, is already adequately performed by
the Wittek’s oil central feed 42 and distribution lines 43, 44 and the
Examiner has not provided any findings that Wittek recognized a problem
with lubricating crankshaft 37. See Wittek, para. 38, Fig. 4.
As such, even though increasing the size of a hole is common
knowledge and well within the ability of a skilled artisan, in itself, it is not a
sufficient reason to make the Examiner’s particular modification. Without a
persuasive articulated rationale based on rational underpinnings for so
modifying Wittek’s crankshaft hole, as per Zapp, the Examiner’s rejection
appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). Accordingly, we do not sustain the rejection under 35
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U.S.C. § 103 of independent claims 1 and 13, and their respective dependent
claims 2–10, 12, 14–18, and 20, as unpatentable over Wittek and Zapp.

Rejection IV
As illustrated below in the Examiner’s annotated portion of Figure 4
of Toru, the Examiner finds that Toru discloses a crankshaft having an outer
peripheral surface 22e and first and second oil holes 183, 182 with
intersecting first and second extensions and inner surface walls. Final Act.
19.

The Examiner’s annotated Figure 4 of Toru illustrates outer peripheral
surface 22e, first and second oil holes 183, 182, first and second extensions,
and inner surface walls. Id.
The Examiner further finds that Toru does not disclose a through hole,
as called for by each of independent claims 1 and 13. Appeal Br. 19–20.
Nonetheless, the Examiner finds that Zapp discloses a through hole 118, 120
that extends through journal 124 to an outer peripheral surface of a
crankshaft “for the purpose of supplying lubricant to the journal bearings.”
Id. at 20 (citing Zapp, col. 3, ll. 19–33, Fig. 1B). Thus, the Examiner
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concludes that it would have been obvious for a person of ordinary skill in
the art
to modify the crankshaft of Toru . . . to have a through hole that
passes through intersection of the first and second oil holes
[183, 182], and to have the through hole open on the outer
peripheral surface [22e] of the crankshaft in a direction that the
through hole extends from the outer peripheral surface of the
crankshaft to the first oil hole and the second oil hole for the
purpose of supplying lubricant to the journal bearings, as taught
by Zapp.

Id. The Examiner further determines that it would have been obvious for a
skilled artisan “to increase the size of the through hole of Toru . . . in view of
Zapp” to pass through the intersection of the first and second extensions
because “[f]orming the through hole to be larger in diameter would allow
more lubricant to exit the through hole thus improving the lubrication of the
invention,” and, moreover, “[a] change in size is generally recognized as
being within the level of ordinary skill in the art.” Id. at 20–21.
Appellant argues that the Examiner’s conclusion of obviousness is
based on impermissible hindsight because a skilled artisan would not have
considered increasing the size of the through hole of Toru, as modified by
Zapp, to pass through the intersection of the first and second extensions.
Appeal Br. 14. According to Appellant, “the inventors of the present
application were the first researchers who discovered the source of a
problem in conventional methods and recognized a need for, and suggested,
the arrangement of size of the claimed ‘through hole’ to extend to an area of
the crankshaft that is located outside of the first oil hole and the second oil
hole.” Id. at 15 (emphasis omitted) (citing In re Sponnoble, 405 F.2d 578,
585 (CCPA 1969)). Relying on In re Omeprazole Patent Litigation, 536 F.
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3d 1361 (Fed. Cir. 2008), Appellant asserts that the claimed invention is
“non-obvious because the problem which would have suggested the alleged
modification of Toru was previously unknown.” Appeal Br. 15 (emphasis
omitted); see also Reply Br. 7–8.
In response, the Examiner takes the position “that it would be well
within the ability of one having ordinary skill in the art to increase the size
of an oil hole (or a hole in general) to meet a need” and because “through
holes deal with oiling then changing the diameter of the through hole would
allow for more or less lubricant to flow into or out of the through hole thus
changing the effectiveness of the oiling system.” Ans. 13–14.
We appreciate that changing the size of a hole is common knowledge
and well within the ability of a skilled artisan. However, the reasoning
provided by the Examiner to increase the hole size of Toru’s crankshaft, as
modified by Zapp, namely, to “allow more lubricant to exit the through hole
thus improving the lubrication of the invention” (Final Act. 20–21), does not
support the conclusion of obviousness. In particular, the Examiner’s
rejection does not adequately explain why the skilled artisan would increase
the size of the hole of Toru’s crankshaft, as modified by Zapp, to “pass[]
through an intersection between the first extension and the second
extension” and “extend[] to an area of the crankshaft that is located outside
of the first oil hole and the second oil hole.” See Appeal Br. 20 (Claims
App).
In the Examiner’s rejection, the hole size of Toru’s crankshaft, as
modified by Zapp, is not merely increased, but rather, is increased to a size
such that the modified hole “passes through an intersection between the first
extension and the second extension” and “extends to an area of the
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crankshaft that is located outside of the first oil hole and the second oil
hole.” It is not clear from the Examiner’s rejection why a skilled artisan
would make such an increase in size. In particular, it is not clear why
increasing the size of the hole of Toru’s crankshaft, as modified by Zapp, to
“pass[] through an intersection between the first extension and the second
extension” and “extend[] to an area of the crankshaft that is located outside
of the first oil hole and the second oil hole” would “allow more lubricant to
exit the through hole thus improving the lubrication of the invention,”
whereas a smaller increase in hole size would not. See Final Act 20–21.
Moreover, the reason proffered by the Examiner to increase the hole size of
Toru’s crankshaft, as modified by Zapp, i.e., lubrication, is already
adequately performed by the Toru’s oil holes 182, 183 and the Examiner has
not provided any findings that Toru recognized a problem with lubricating
crankshaft 22. See Toru, Fig. 4.
As such, even though increasing the size of a hole is common
knowledge and well within the ability of a skilled artisan, in itself, it is not a
sufficient reason to make the Examiner’s particular modification. Without a
persuasive articulated rationale based on rational underpinnings for
modifying Toru’s crankshaft hole, as per Zapp, the Examiner’s rejection
appears to be the result of hindsight analysis. See In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). Accordingly, we do not sustain the rejection under 35
U.S.C. § 103 of independent claims 1 and 13, and their respective dependent
claims 2–10, 12, 14–18, and 20, as unpatentable over Toru and Zapp.

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CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 3, 5, 7,
10, 12–15,
18, 20
102(a)(1) Simca 1, 3, 5, 7, 10,
12–15, 18, 20

2, 4, 6, 8,
9, 16, 17
103 Simca 2, 4, 6, 8, 9,
16, 17
1–10,
12–18, 20
103 Wittek, Zapp 1–10,
12–18, 20
1–10,
12–18, 20
103 Toru, Zapp 1–10,
12–18, 20
Overall
Outcome
1, 3, 5, 7, 10,
12–15, 18, 20
2, 4, 6, 8, 9,
16, 17

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).

AFFIRMED IN PART