Ex Parte Hayman et al

Patent Trial and Appeal BoardAug 18, 2017

12834420 (P.T.A.B. Aug. 18, 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. 12/834,420 07/12/2010 ALAN W. HAYMAN P010935-PTUS-DPH 8452 74175 7590 Harness Dickey & Pierce, P.L.C. (GM) P.O. Box 828 Bloomfield Hills, MI 48303 EXAMINER KIM, JAMES JAY ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 08/22/2017 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): gm-inbox@hdp.com troymailroom @hdp. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAN W. HAYMAN, ERIC C. DOUSE, and ROBERT S. MCALPINE Appeal 2015-005696 Application 12/834,4201 Technology Center 3700 Before MICHAEL L. HOELTER, NATHAN A. ENGELS, and BRENT M. DOUGAL, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims 1—4, 6—11, 13—16, and 18—21. Claims 5, 12, and 17 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify GM Global Technology Operations LLC as the real party in interest. Appeal Br. 2. Appeal 2015-005696 Application 12/834,420 ILLUSTRATIVE CLAIM Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An engine assembly comprising: an engine structure defining: first, second, third and fourth combustion chambers arranged in series, so that said second combustion chamber is immediately adjacent said first combustion chamber, said third combustion chamber is immediately adjacent said second combustion chamber and said fourth combustion chamber is immediately adjacent said third combustion chamber; a pair of first exhaust ports in communication with the first combustion chamber, a pair of second exhaust ports in communication with the second combustion chamber, a pair of third exhaust ports in communication with the third combustion chamber, and a pair of fourth exhaust ports in communication with the fourth combustion chamber; a flange region defining a first exhaust gas outlet axially aligned with the second combustion chamber and a second exhaust gas outlet axially aligned with the third combustion chamber, said first gas outlet being spaced axially from said second exhaust gas outlet to define a space directly therebetween; a pair of first exhaust passages extending from the pair of first exhaust ports to the first exhaust gas outlet, a pair of second exhaust passages extending from the pair of second exhaust ports to the first exhaust gas outlet, a pair of third exhaust passages extending from the pair of third exhaust ports to the second exhaust gas outlet, and a pair of fourth exhaust passages extending from the pair of fourth exhaust ports to the second exhaust gas outlet, said pair of first exhaust passages converging axially and laterally toward said pair of second exhaust passages and said first exhaust gas outlet, said pair of fourth exhaust passages converging axially and laterally toward said pair 2 Appeal 2015-005696 Application 12/834,420 of third exhaust passages and said second exhaust gas outlet; a coolant jacket defining a coolant passage extending directly between the first and second exhaust gas outlets; exhaust valves supported by the engine structure and located in the first, second, third and fourth exhaust ports; and a camshaft supported by the engine structure and engaged with the exhaust valves. THE REJECTION Claims 1—4, 6—11, 13—16, and 18—21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable in view of the combination of Nagura et al. (US Pat. No. 5,095,704; iss. Mar. 17, 1992) and Asame et al. (US Pat. No. 7,849,683 B2; iss. Dec. 14, 2010). ANALYSIS Appellants’ arguments address claims 1—4, 6—11, 13—16, and 18—21 collectively. Accordingly, we select claim 1 as representative and address the Examiner’s rejection of claim 1 as follows. See 37 C.F.R. § 41.37(c)(l)(iv) In the rejection of claim 1, the Examiner finds Nagura discloses each limitation of claim 1 with the exception that “Nagura fails to disclose the four [combustion] chambers immediately adjacent to one another inline wherein Nagura teaches a six cylinder inline engine.” Final Act. 3. The Examiner cites Asame as evidence that it was known to have a four-cylinder engine with each of the four combustion chambers arranged in series and immediately adjacent to one another, and the Examiner concludes that it would have been obvious to a person of ordinary skill to modify the engine 3 Appeal 2015-005696 Application 12/834,420 of Nagura to include only four combustion chambers based on the known advantages of four-cylinder engines. Final Act. 4. Appellants do not dispute that each claim limitation was known in the art, but Appellants argue the Examiner erred in the conclusion of obviousness. See Appeal Br. 13—14; Reply Br. 4—7. According to Appellants, “mere removal of cylinders from the engine design of Nagura would dictate changes to the engine design that are not suggested by Nagura nor Asame.” Appeal Br. 14; accord Reply Br. 4. Appellants also argue “that to the extent that one having ordinary skill in the art would be motivated to modify the engine of Nagura in view of Asame,” a person of ordinary skill would have recognized that some options for such modifications would not read on the present claims. Appeal Br. 13—14. We disagree with Appellants. The Supreme Court has explained that “[i]n automotive design, as in many other fields, the interaction of multiple components means that changing one component often requires the others to be modified as well.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 424 (2007). Further, the Court explains that the obviousness analysis does not require a precise teaching of the claimed subject matter. Rather, the obviousness analysis asks “whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. Here, the Examiner cited evidence that each claim limitation was known in the art and that modification of the disclosures of Nagura would have been a mere rearrangement of commonly used parts according to their known functions with predictable results. See Final Act. 3^4; Ans. 2—3. Appellants cite no evidence to rebut those findings. In fact, Appellants’ 4 Appeal 2015-005696 Application 12/834,420 arguments recognize that applying the teachings of Nagura to a four-cylinder engine would have presented a person of ordinary skill with a limited set of design options (see Appeal Br. 13—14 (discussing options for modification of Nagura); Reply Br. 5 (same)), and Appellants present no evidence that the claimed option would have been unpredictable or uniquely challenging. Additionally, Appellants argue for the first time in the Reply Brief that the claimed arrangement of four combustion chambers, exhaust ports, and exhaust passages represent details critical to the overall design that distinguish the claimed invention from the prior art. Reply Br. 5. Appellants waived this argument by failing to raise it in the Appeal Brief, but even if this argument were timely, the passages of the Specification cited by Appellants do not show any criticality of the claimed features. To the contrary, the cited passages describe “non-limiting example[s].” Reply Br. 5. Further, Appellants assert that the Specification’s description of “offset distances” of the first and second exhaust gas outlets from the midpoint between the cylinder pairs evidence the criticality, but claim 1 does not specify any offset distances or other details alleged to be critical. Cf. Appeal Br. 18 (Claims App’x (dependent claims 6—9 adding limitations relating to offset distances)). Accordingly, having considered the Examiner’s rejection in light of each of Appellants’ arguments and the evidence of record, we disagree with Appellants and agree with the Examiner’s findings, conclusions, and reasons. We adopt as our own the Examiner’s findings, conclusions, and reasons consistent with the analysis above, and we sustain the Examiner’s rejection of claims 1—4, 6—11, 13—16, and 18—21. 5 Appeal 2015-005696 Application 12/834,420 DECISION For the above reasons, we affirm the Examiner’s rejection of claims 1^1, 6-11, 13-16, and 18-21. No time period for taking any subsequent action in connection with this appeal may be extended. 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6