Ex Parte Braig et alDownload PDFPatent Trial and Appeal BoardSep 25, 201212008747 (P.T.A.B. Sep. 25, 2012) Copy Citation 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. 12/008,747 01/14/2008 Ralf Braig BRAIG ET AL - 1 2227 25889 7590 09/25/2012 COLLARD & ROE, P.C. 1077 NORTHERN BOULEVARD ROSLYN, NY 11576 EXAMINER BACON, ANTHONY L ART UNIT PAPER NUMBER 3747 MAIL DATE DELIVERY MODE 09/25/2012 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 RALF BRAIG, RAINER FISCHER, PETER KEMNITZ, and PETER KLEINLE ____________ Appeal 2010-005760 Application 12/008,747 Technology Center 3700 ____________ Before STEFAN STAICOVICI, JAMES P. CALVE, and SCOTT A. DANIELS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005760 Application 12/008,747 2 STATEMENT OF THE CASE Ralf Braig et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 1-7, 9-13, 17, and 18 as unpatentable over Glinsner (US 6,862,977 B2, issued Mar. 8, 2005) and Take (US 6,345,569 B1, issued Feb. 12, 2002) and claims 14-16 as unpatentable over Glinsner, Take, and Suzuki (US 5,839,407, issued Nov. 24, 1998). We have jurisdiction over this appeal under 35 U.S.C. § 6. THE INVENTION Appellants’ invention relates to “a piston for an internal combustion engine, having a piston crown [11], a top land [12], and a circumferential ring belt [13] having ring grooves [14].” Spec. 1, ll. 3-5 and fig. 1. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A piston for an internal combustion engine, comprising: a piston crown having a top land and a circumferential ring belt having ring grooves; a piston skirt that has two skirt walls disposed one each on a major thrust side (DS) and a minor thrust side (GDS) of the piston, and two box walls that connect the skirt walls and which are set back with respect to the ring belt; wherein the box walls are provided with pin bosses having pin bores, and wherein the skirt wall disposed on the major thrust side (DS) is shorter, in a circumference direction of the piston, than the skirt wall disposed on the minor thrust side (GDS), and wherein both skirt walls have the same curvature. SUMMARY OF DECISION We AFFIRM. Appeal 2010-005760 Application 12/008,747 3 ANALYSIS Independent claim 1 The Examiner found that Glinsner discloses all the limitations of independent claim 1 with the exception of a “skirt wall disposed on the major thrust side[(DS)] [that] is shorter, in a circumferen[tial] direction of the piston, than the skirt wall disposed on the minor thrust side [(GDS)].” Ans. 3-4. See also, App. Br., Claims Appendix1. The Examiner further found that, “Take discloses an asymmetric piston skirt (12) wherein the skirt wall on the thrust side is shorter in a circumference direction of the piston than a skirt wall disposed on the anti-thrust side.” Ans. 4 (citing to col. 3, l. 60 through col. 4, l. 13; col. 4, ll. 25-28; and col. 6, ll. 37-56). The Examiner concluded that it would have been obvious to a person of ordinary skill in the art “to have a shorter skirt wall on the major thrust side (thrust side) than on the minor thrust side (anti-thrust side) as taught by Take in the piston of Glinsner because it is known that this arrangement can be used to reduce noise and vibration.” Ans. 4. 2 Appellants first argue that because the objective of Take is different from that of the claimed invention, namely, “to minimize the piston slap sound of the piston,” a person of ordinary skill in the art would not look to Take “for measures to improve the stress resistance of a piston.” App. Br. 7- 8. We are not persuaded by Appellants’ argument because in determining whether the subject matter of a claim is obvious, “neither the particular motivation nor the avowed purpose of the [applicant] controls. What 1 Refers to the Appeal Brief filed Oct. 5, 2009. 2 Nomenclature in parentheses refers to Take. Appeal 2010-005760 Application 12/008,747 4 matters is the objective reach of the claim. If the claim extends to what is obvious, it is [unpatentable] under § 103.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The reason to modify the reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by an applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). Appellants then argue that Take does not disclose that the skirt wall disposed on the major thrust side is circumferentially shorter than the skirt wall on the minor thrust side because “Take does not have separate skirt wall portions, but rather a single barrel-shaped skirt” and “does not show skirt portions having the same curvature.” App. Br. 8. See also, App. Br. 11. Appellants further argue that, “[i]f anything is suggested by Take et al., is to change the curvature of the two skirt walls so that the skirt walls of Glinsner et al. each have a different curvature.” Reply Br. 6. We disagree with Appellants’ argument, because obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). As noted by the Examiner, Glinsner discloses a box-type piston having “separate skirt wall portions which have the same curvature” and “Take was relied upon primarily for its teaching of an asymmetric design with the anti-thrust side or minor thrust side being larger in a circumferential direction.” Ans. 12. In view of Take’s teaching of a skirt wall disposed on the anti-thrust side being longer than the skirt wall disposed on the thrust side, the Examiner is merely proposing to modify the Appeal 2010-005760 Application 12/008,747 5 length of Glinsner’s skirt portions (which have the same curvature) in order to “reduce noise and vibration.” See Ans. 4. Appellants further argue that Take does not disclose that the skirt wall disposed on the major thrust side (thrust side) is circumferentially shorter than the skirt wall on the minor thrust side (anti-thrust side) because “Take shows an elliptic curvature on the thrust side and a[n] arcuate curvature on the anti-thrust side (see col. 4, lines 40 to 47 and fig. 2).” App. Br. 8. According to Appellants, “[t]here is no teaching in Take that the length of the two skirt portions differ in any way - only that they have different curvatures.” App. Br. 8-9. Reply Br. 4. Appellants then conclude that combining the teachings of Glinsner and Take “would not lead to the present invention, because . . . the skirt of Take et al. does not have a skirt portion that is shorter on the major thrust side than a skirt portion on the minor thrust side, with the same curvature.” Reply Br. 4-5. In response, the Examiner takes the position that “different curvatures, especially in the case of Take, necessarily mean that the length of the skirt portion (i.e. especially that length along the circumference of the piston head) are different, as it would be impossible for them not to be in this instance.” Ans. 12. We agree with the Examiner’s position for the following reasons. At the outset, we note that the USPTO has the initial burden of providing a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic reasonably flows from the teachings of the applied prior art. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986). Once the USPTO establishes a prima facie case of anticipation based on inherency, the burden shifts to the applicant to prove Appeal 2010-005760 Application 12/008,747 6 that the prior art does not possess the characteristic at issue. See Id. This is the case whether the rejection is based on inherency under 35 U.S.C. § 102, prima facie obviousness under 35 U.S.C. § 103, or both jointly or alternatively. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In this case, Figure 2 of Take includes inter alia a cross-sectional view of skirt 12 of piston P taken along the maximum diameter portion 18 (section a-a). Take, col. 2, l. 51. We agree with the Examiner that, as shown in Figure 2 of Take, the length of the cross-sectional view of skirt 12 along the maximum diameter portion 18 of the anti-thrust side is circumferentially longer than the length along the thrust-side. Ans. 12-13. We further agree with the Examiner that Take also discloses that the contact area of the cross section of skirt 12 with the wall surface of cylinder bore 22 is larger on the anti- thrust side than on the thrust-side. Ans. 13. See also, Take, col. 6, ll. 45-50. Takes’s teachings of an asymmetrical barrel-shaped piston including skirt 12 having the cross section of Figure 2 and a larger contact area with the wall surface of cylinder bore 22 on the anti-thrust side than on the thrust-side provides a reasonable basis for us to find that, within the context of a barrel- shaped piston, Take’s skirt wall disposed on the anti-thrust side is longer than the skirt wall disposed on the thrust side. For the above reasons, we conclude that the teachings of Take reasonably support the Examiner’s determination that Take’s skirt wall disposed on the major thrust side is circumferentially shorter than the skirt wall on the minor thrust side, so as to shift the burden to Appellants to show that this is not the case. Appellants have not come forward with any objective evidence to satisfy this burden. Thus, we adopt the Examiner’s finding with regard to the skirt wall length of Take being shorter on the thrust side than the anti-thrust side. Appeal 2010-005760 Application 12/008,747 7 Finally, Appellants argue that,”[t]here is no disclosure or suggestion in Take et al. to take a box-type skirt as shown in Glinsner et al. and change the length of the skirt walls while keeping the curvature of the walls the same, to achieve the present invention.” Reply Br. 6. Such an argument appears to be holding the Examiner to the old TSM standard; such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007) ("We begin by rejecting [TSM]"). In conclusion, for the foregoing reasons, the rejection of independent claim 1 under U.S.C. § 103(a) as unpatentable over Glinsner and Take is sustained. Dependent claims 2-7 and 9-18 With respect to the rejection of claims 2 and 4-6 over the combined teachings of Glinsner and Take, Appellants have not provided any evidence why the Examiner’s findings are in error. See e.g., Ans. 4-7. Appellants’ arguments merely reiterate the claim limitations and do not present separate arguments for patentability of these claims. App. Br. 12. See 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”) In regard to the rejections under 35 U.S.C. § 103(a) of claims 3, 7, 9- 13, 17, and 18 as unpatentable over Glinsner and Take and of claims 14-16 as unpatentable over Glinsner, Take, and Suzuki, Appellants do not make any other substantive arguments. App. Br. 12. Accordingly, we shall also sustain the rejections of claims 3, 7, 9-13, 17, and 18 over Glinsner and Take and of claims 14-16 as unpatentable over Glinsner, Take, and Suzuki. Appeal 2010-005760 Application 12/008,747 8 SUMMARY The decision of the Examiner to reject claims 1-7 and 9-18 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)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation