Ex Parte Furuya

Patent Trial and Appeal Board

Aug 16, 2017

14028325 (P.T.A.B. Aug. 16, 2017)

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.
14/028,325 09/16/2013 Akira FURUYA A-2641US 6213
21254 7590 08/17/2017
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
MCMAHON, MARGUERITE J
ART UNIT PAPER NUMBER
3747
MAIL DATE DELIVERY MODE
08/17/2017 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 AKIRA FURUYA1
Appeal 2016-005320
Application 14/028,325
Technology Center 3700
Before DANIEL S. SONG, JAMES P. CALVE, and SEAN P. O’HANLON,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner’s final
rejection of claims 1—20 in the present application. We have jurisdiction
under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 The real party in interest is Fuji Jukogyo Kabushiki Kaisha (Appeal Brief
(hereinafter “App. Br.”) 1). Fuji Jukogyo Kabushiki Kaisha also is the
applicant. See 37 C.F.R. § 1.42.
Appeal 2016-005320
Application 14/028,325
The claimed invention is directed an engine having first and second
crankcase members (Title; Abstract). Claim 1 is the sole independent claim,
and reads as follows (App. Br. 14, Claims App’x, emphasis added):
1. An engine comprising:
a cylinder;
a first bearing at least partially integrally formed with the
cylinder and configured to rotatably support a first shaft of a
crankshaft;
a second bearing at least partially integrally formed with
the cylinder and configured to rotatably support a second shaft
of the crankshaft; and
a first crankcase member and a second crankcase member
including a resin-based material, and respectively constituting
part and remaining part of a crankcase housing the crankshaft,
wherein a connecting portion between the first crankcase
member and the second crankcase member is continuously
connected along substantially an entire length of the connecting
portion by at least one of fitting, bonding, and welding such that
the first crankcase and the second crankcase are permanently
affixed to each other.
Dependent claims 3 and 4 further recite, inter alia, that “the crankcase
is divided into the first crankcase member and the second crankcase member
in an axial direction of the crankshaft.” (App. Br. 15, Claims App’x).
The Examiner rejects the claims under 35 U.S.C. § 103(a) as being
unpatentable as follows:
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Application 14/028,325
1. Claims 1 and 9-20 as obvious over Balzar2 in view of Araki3
and Strimling4 (Final Office Action (hereinafter “Final Act.”) 2 4).
2. Claim 2 as obvious over Balzar in view of Araki, Strimling, and
Fink5 (Final Act. 4—5).
3. Claims 3 and 4 as obvious over Balzar in view of Araki,
Strimling, and Ryu6 (Final Act. 5—6).
4. Claims 5—8 as obvious over Balzar in view of Araki, Strimling,
and Kochi7 (Final Act. 6).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
In rejecting claim 1, the Examiner finds that Balzar discloses every
limitation of claim 1 “except the second bearing being at least partially
2 Patent No. US 6,279,522 Bl, issued August 28, 2001.
3 Patent Application Publication No. US 2002/0020370 Al, published
February 21, 2002.
4 Patent Application Publication No. US 2004/0154297 Al, published
August 12, 2004.
5 Patent No. US 4,610,228, issued September 9, 1986.
6 Patent No. US 6,250,273 Bl, issued June 26, 2001.
7 Patent Application Publication No. US 2007/0089692 Al, published April
26, 2007.
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Appeal 2016-005320
Application 14/028,325
integrally formed with the cylinder, the crankcase members including a
resin-based material, and the means of permanently joining the crankcase
members being one of fitting, bonding, and welding.” (Final Act. 3). The
Examiner further finds that:
the means of joining the crankcase members being one of fitting
bonding, and welding would have been obvious to one having
ordinary skill in the art since these are all conventional means of
joining parts together, as shown by Strimling et al (see paragraph
27). Note that it is inherent that the first and second crankcase
portions are continuously connected and permanently affixed to
each other when welding is employed as the means to join them
together.
(Final Act. 4).
Strimling discloses a Stirling cycle engine, and the portion cited by
the Examiner states “[t]he lower crankcase 116 is then joined to the upper
crankcase 112 at joints 118. Preferably, the upper crankcase 112 and the
lower crankcase 116 are joined by welding.” (Strimling 127).
The Appellant submits numerous arguments in support of
patentability, focusing on the claim limitation “the first crankcase and the
second crankcase are permanently affixed to each other.” We find the
submitted arguments unpersuasive for the reasons discussed infra.
The Appellant argues that the claimed invention stemmed from the
inventor’s recognition that “general purpose engine users (e.g., use for
gardening) seldom repair the engine and renew a new one; thus, it is not
necessary for the engine structure, to use bolted connections such that users
could rebuild or assemble.” (App. Br. 8). However, this argument is
unpersuasive because “[i]n determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
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Appeal 2016-005320
Application 14/028,325
purpose of the patentee controls. What matters is the objective reach of the
claim.” KSR Int 7 v. Teleflex, Inc., 550 U.S. 398, 419 (2007).
The Appellant also argues that “a person of ordinary skill in the art
would not combine a connection means of a close-cycle engine with the
engines of Araki and Balzar” because Strimling is directed to a Stirling cycle
engine and is “unrelated to the disclosure of Balzar and Araki,” which are
directed to a two-stroke and a four-stroke engine (App. Br. 8—9). In this
regard, the Appellant asserts that the Examiner is engaging in impermissible
hindsight reconstruction (App. Br. 9).
However, we generally agree with the Examiner that this argument
“does not address the specifics of the rejection,” which relies upon Strimling
merely “to show that the means of joining the crankcase members being one
of fitting bonding, and welding is known.” (Ans. 8). The fact that Strimling
discloses a Stirling cycle engine does not detract from the fact that Strimling
specifically discloses that it was known to join two crankcase members of an
engine using welding (Strimling 127), and does not bear on the applicability
of using such a known technique to join the crankcase members of Belzar.
Accordingly, it would have been obvious to a person of ordinary skill in the
art to have joined Balzac’s crankcase members using such a known
technique. KSR, 550 U.S. at 417 (“if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
The Appellant further argues that “Araki and Balzar are ordinary
crankcases that are designed such that the crankcases can be easily
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Application 14/028,325
overhauled or disassembled by users,” and, thus, the welded connection of
Strimling “completely teaches away” from Araki and Balzar (App. Br. 8).
This line of argument is also unpersuasive. Firstly, claim 1 merely requires
two crankcase members to be “permanently affixed to each other,” and does
not recite that the joined assembly is permanently affixed to the rest of the
engine so as to prevent access to the engine for overhaul. In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“Many of appellant’s arguments fail from
the outset because . . . they are not based on limitations appearing in the
claims . . . .”).
Secondly, we agree with the Examiner that Balzar is
silent as to the means of joining the first and second crankcase
members, and neither Balzar (nor Araki) suggest that
disassembly is contemplated. Appellant appears to be reading
too much into the reference. There is no support in Balzar for
Appellant’s contention that the intended use of the engine of
Balzar is to be readily disassembled.
(Ans. 8).
Indeed, there is no evidence that disassembly was a significant
consideration in Balzar as asserted by the Appellant. Balzar discloses an
engine with a drive train, which is compact and simplified, and, accordingly,
it focuses on various advantages provided by such compact and simplified
construction (Balzar, col. 1,11. 62—67, col. 2,1. 40-col. 3,1. 5).
The Appellant also argues that
changing the bolted connection of Balzar and Araki which is
intended to allow disassembly of the engine with the welding of
Strimling would render Balzar and Araki unsatisfactory for their
intended purpose and change the principle of operation of both
disclosures.
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Application 14/028,325
That is, permanently affixing the crankcases of Balzar and
Araki would defeat the entire purpose of the disclosures and
make the inventions inoperable for their intended purposes.
(App. Br. 10).
This argument is unpersuasive for reasons similar to that discussed
above. Firstly, we agree with the Examiner that Araki is not pertinent as
“Balzar is the primary reference” (Ans. 9) and because Araki is merely being
relied upon for teaching that “it is old in the art to form the crankcase from a
resin-based material.” (Final Act. 4). In addition, there is no evidence that
disassembly is the “intended purpose” and “the principle of operation” of
Balzar as asserted by the Appellant. As already noted, Balzar’s intended
purpose is to provide an engine with a drive train that is compact and
simplified, and the principle of operation is found in the manner in which the
drive train operates, not in some undiscussed/undisclosed disassembly of the
engine.
Accordingly, in view of the above considerations, we find the
Appellant’s arguments unpersuasive and affirm the Examiner’s rejection of
claim 1.
Claims 3 and 4
Dependent claims 3 and 4 further recite, inter alia, that “the crankcase
is divided into the first crankcase member and the second crankcase member
in an axial direction of the crankshaft.” (App. Br. 15, Claims App’x).
The Appellant argues that Balzar fails to disclose this limitation
because Balzar discloses a crankcase that is separated along plane PI-PI,
and that “an acute angle split crankcase is completely different than the
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Application 14/028,325
claimed crankcases divided in an axial direction.” (App. Br. 11). The
Appellant further argues that, accordingly, Balzar teaches away from the
invention claimed (App. Br. 11).
The Appellant’s arguments are unpersuasive. We agree with the
Examiner’s interpretation that in the context of the claims and the
Specification, “axial direction of the crankshaft” means “along the line of
the crankshaft.” (Ans. 9). The limitation at issue is directed to the division
of the crankcase into first and second crankcase members such that the
division is along the line of the crankshaft, and is not directed to the specific
angle of the interface of the crankcase members at that division.
Accordingly, we also agree with the Examiner that Balzar discloses this
limitation in that “the split along the plane PI-PI allows the first and second
crankcase portions to be divided in an axial direction of the crankshaft, with
the first crankcase member 32 . . . being on the left, and the second
crankcase member 20 . . . being on the right in an axial direction of the
crankshaft 12.” (Ans. 10 (referencing an annotated version of Balzar
Fig- 3)).
The Appellant’s teaching away argument is without merit because not
only does Balzar disclose the limitation at issue in claims 3 and 4, but also
because mere description of an implementation in the prior art that differs
from the Appellant’s claimed invention, without more, does not show that
the prior art is “teaching away” from the invention claimed. In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).
Therefore, we affirm the Examiner’s rejection of claims 3 and 4.
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Application 14/028,325
Finally, the Appellant does not separately argue the remaining
rejected dependent claims 2 and 4—20 also on appeal. Correspondingly, the
Examiner’s rejections of these dependent claims are also affirmed.
ORDER
The Examiner’s rejections of claims 1—20 are 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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