Bayerische Motoren Werke Aktiengesellschaft

Patent Trials and Appeals BoardNov 3, 2020

2020002669 (P.T.A.B. Nov. 3, 2020)

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. 14/801,163 07/16/2015 Johannes HOEHL 080437.67797US 3200 23911 7590 11/03/2020 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 EXAMINER MOUBRY, JAMES G ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): edocket@crowell.com mloren@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHANNES HOEHL Appeal 2020-002669 Application 14/801,163 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and KENNETH G. SCHOPFER, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–6, 9–16, and 18–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Bayerische Motoren Werke Aktiengesellshaft. Appeal Br. 1. Appeal 2020-002669 Application 14/801,163 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 1 and 13 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A three-cylinder reciprocating-piston internal combustion engine of a single-track vehicle, comprising: first, second and third cylinders; a crankshaft mounted rotatably in a crankcase, first and second crank pins; first, second and third connecting rods for first, second and third pistons, respectively, of the first, second and third cylinders, wherein the first crank pin is assigned to the first and second connecting rods for the first and second pistons, the second crank pin is assigned to the third connecting rod for the third piston, the first and second cylinders together with the first and second pistons are arranged in a V-shape, the third cylinder together with the third piston is arranged between the first and second pistons inside the V- shape when viewed along a crankshaft rotation axis, a first cylinder axis of the first cylinder and a second cylinder axis of the second cylinder enclose a V angle α of between 45° and 80°. Appeal 2020-002669 Application 14/801,163 3 References The prior art relied upon by the Examiner is: Name Reference Date Laimboeck US 8,627,790 B2 Jan. 14, 2014 Sato et al. (“Sato”) US 8,726,881 B2 May 20, 2014 Suemori2 JP 64-21245 Jan. 24, 1989 Pongratz3 DE 10 2008 020 423 A1 Oct. 29, 2009 Rejections Claims 1–6, 9–11, 13–16, and 18 are rejected under 35 U.S.C. § 103 as unpatentable over Pongratz and Suemori. Claims 12 and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Pongratz, Suemori, and Sato. Claim 20 is rejected under 35 U.S.C. § 103 as unpatentable over Pongratz, Suemori, and Laimboeck. ANALYSIS The Examiner’s rejection of independent claims 1 and 13 relies on the combined teachings of Pongratz and Suemori. Final Act. 3–4. The Examiner finds that Pongratz teaches substantially all of the subject matter of claims 1 and 13, including first, second, and third cylinder/piston combinations, but fails to disclose “that the third cylinder/piston combination is disposed between the first and second pistons inside the V.” Id. at 3. The Examiner turns to Suemori’s teachings to remedy this 2 The Examiner relies on a machine translation of Suemori into the English language (mailed Oct. 20, 2016) to support the rejections. 3 The Examiner relies on a machine translation of Pongratz into the English language (mailed June 19, 2018) to support the rejections. Appeal 2020-002669 Application 14/801,163 4 deficiency with regard to the subject matter of claims 1 and 13. Id. at 3–4. The Examiner concludes that “it would have been obvious . . . to modify the engine of Pongratz by providing the third cylinder/piston centrally within the V as described in Suemori in order to facilitate mitigating vehicle vibration by distributing forces during operation.” Id. at 4. The Appellant points out a difference between the applications of each of Pongratz’s and Suemori’s three cylinder engines. See generally Appeal Br. 7–16. Notably, Pongratz’s “reciprocating internal combustion engine with three cylinders in V-arrangement” appears to be designed for a “motorcycle” (Pongratz ¶ 1), whereas Suemori’s three cylinder engine is for vehicles where rigidity of the right and left directions is high (Suemori 2). With this difference as a foundation, the Appellant argues: [M]oving one of Pongratz’ paired cylinders would unbalance the Pongratz engine due to the movement of a piston and its connecting rod relative to the other pistons and connecting rods and relative to the primary balancing components, the crankshaft counterweights that move directly opposite to the reciprocating pistons to offset the pistons’ moving masses (not to mention other imbalances resulting from moving of associated components such as crankpins and valve actuating drives). One of ordinary skill in the art would instantly recognize that such an arbitrary movement of a cylinder would greatly upset the engine’s primary, secondary and tertiary balances, not “mitigate[] vehicle vibration by distributing forces during operation”; just the opposite; such a move would increase the forces on the engine (and hence the vibrations felt by a rider) because the previously-counter-balanced forces would no longer be balanced out. Appeal Br. 15; see Reply Br. 5. In other words, the Appellant is arguing that Examiner’s rationale fails to be adequately supported with the necessary articulated reasoning with some rational underpinning. See, e.g., Reply Appeal 2020-002669 Application 14/801,163 5 Br. 3–5, n.4. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds . . . [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The Appellant’s argument is persuasive. In this case, the Examiner’s rejection fails to adequately establish on the record why one of ordinary skill in the art would have used Suemori’s teaching of mitigating vehicle vibration by distributing forces during operation to result in a third cylinder/piston combination disposed between first and second pistons inside a V-shape. Most notably, the Examiner fails to adequately address the Appellant’s argument that applying Suemori’s teachings to modify the teachings of Pongratz would result in an unbalanced engine. For example, the Examiner fails to address how one of ordinary skill in the art would weigh the likelihood of an unbalanced engine and its effects with the asserted benefits of the modification. Additionally, we note that the Examiner responds to the Appellant’s argument by indicating “that one of ordinary skill in the art could use the teachings of Suemori to modify Pongratz to arrive at the claimed invention, namely providing the third cylinder disposed within the V-shape of the first 3 cylinders.” Ans. 13; see id. at 9 (“One of ordinary skill could have combined the teachings of Pongratz and Suemori to arrive at the claimed invention.”). However, merely because one of ordinary skill in the art could have used Suemori’s teachings to modify the teachings of Pongratz to result in the claimed invention does not answer the question why one of ordinary skill in the art would have done so. Appeal 2020-002669 Application 14/801,163 6 Thus, we do not sustain the Examiner’s rejection of claims 1 and 13, and claims 2–6, 9–11, 14–16, and 18 that depend therefrom, as unpatentable over Pongratz and Suemori. Further, the Examiner fails to rely on Sato or Laimboeck in any manner that would remedy the deficiency in the Examiner’s rejection as discussed above. Thus, we likewise do not sustain the Examiner’s rejections of claims 12, 19, and 20, which depend directly from one of the independent claims. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 9–11, 13–16, 18 103 Pongratz, Suemori 1–6, 9–11, 13–16, 18 12, 19 103 Pongratz, Suemori, Sato 12, 19 20 103 Pongratz, Suemori, Laimboeck 20 Overall Outcome 1–6, 9–16, 18–20 REVERSED