Ex Parte RadocajDownload PDFPatent Trial and Appeal BoardOct 30, 201712645986 (P.T.A.B. Oct. 30, 2017) 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. 12/645,986 12/23/2009 Mijo Radocaj OJI.P.l 9317 26360 7590 10/30/2017 Renner Kenner Greive Bobak Taylor & Weber Co., LPA First National Tower, Suite 400 106 South Main Street Akron, OH 44308-1412 EXAMINER PICON-FELICIANO, RUBEN ART UNIT PAPER NUMBER 3747 MAIL DATE DELIVERY MODE 10/30/2017 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 MIJO RADOCAJ Appeal 2016-003835 Application 12/645,986 Technology Center 3700 Before STEVEN D.A. McCARTHY, THOMAS F. SMEGAL, and BRENT M. DOUGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mijo Radocaj (Appellant)1 seeks our review under 35 U.S.C. § 134 of the Examiner’s rejections2 under 35 U.S.C. § 112, first paragraph, of claims 1, 3—9, and 16—20 as failing to comply with the written description requirement; and under 35 U.S.C. § 103(a) of claims 1, 3, 4, 6—9, 11, 12, 14— 17, and 19-21 as unpatentable over Bundrick (US 4,312,306, iss. Jan. 26, 1982) and Nelson (US 2008/0178835 Al, pub. July 31, 2008); and of claims 5, 13, 18, and 22 as unpatentable Bundrick, Nelson, and Forssell (US 1 Appellant self-identifies as the real party in interest. Br. 1. 2 Appeal is taken from the adverse decision of the Examiner as set forth in the Final Office Action, dated December 18, 2014 (“Final Act.”). Appeal 2016-003835 Application 12/645,986 2008/0163842 Al, pub. July 10, 2008).3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Claims 1,9, 16, and 20 are independent. Claim 1, reproduced below, illustrates the claimed subject matter, with disputed limitations emphasized. 1. An internal combustion engine of the type capable of converting reciprocal linear powered motion into unidirectional rotary motion for acting on an output drive, comprising: at least one pair of cylinders with an annular interior cylinder wall; a pair of opposed pistons within each cylinder, each piston having an inwardly facing end and an outwardly facing end, said pistons and said cylinder wall forming a combustion chamber between inwardly facing ends of said pistons; a piston rod attached to the outer end of each piston and extending axially outwardly from the outer end of the cylinder; means creating combustion within said combustion chamber to cause both pistons to move axially in a reciprocating movement to and from each other; motion conversion means in operative engagement with each outwardly extending piston rod to convert said axial reciprocal movement of said piston rod to unidirectional rotary movement wherein said motion conversion means comprises each piston rod having an outer end pivotally connected to a pivot arm on a one way clutch and establishing a torque arm- length that is substantially constant and independent of a stroke length of an associated one of said pistons', and an output drive shaft operatively connected to said motion conversion means. 3 Claims 2, 10, 23, and 24 have been canceled. Final Act. 2. 2 Appeal 2016-003835 Application 12/645,986 ANALYSIS First Ground of Rejection: Lack of Written Description We are not persuaded that the Examiner erred in finding that claims 1, 3—9, and 16—20 fail “to comply with the written description requirement” of 35 U.S.C. § 112, first paragraph, because claims contain “subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor. . . at the time the application was filed, had possession of the claimed invention,” pointing to independent claims 1 and 9 for reciting “establishing a torque arm length that is substantially constant and independent of a stroke length of an associated one of said pistons,” and to independent claims 16 and 20 for reciting “wherein a torque arm length associated with each piston and its cylinder is dependent upon an extent to which said first and second parallel cylinders are spaced apart and insubstantially upon a stroke length of said pistons.” Final Act. 2—3 (emphasis omitted). The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. This test “requires an objective inquiry into the four comers of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that 3 Appeal 2016-003835 Application 12/645,986 skilled artisan and show that the inventor actually invented the invention claimed.” Id. In response, Appellant first acknowledges that, as illustrated in Figure 2, “the limited arc of travel [of the pivot arm] makes the torque arm length [appear to be] substantially constant.” Br. 2. Appellant reasons that “the oscillatory motion of the pivot arms 28, 36 through a very limited, small arc of operations as driven by piston rods 26, 34 to drive the one-way clutch 30 in a ‘step-by-step intermittent engagement’ . . . results in very little movement of the pivot arms 28, 36.” Id. at 4. (citing Figure 2 as showing “the angle of movement between the centerline of the one-way clutch 30 and the pivot points of interconnection between 26, 28 and between 34, 36.”). Based on the foregoing, Appellant contends that [i]t is clear from Fig. 2 that the torque arm length associated with each piston is substantially constant and insubstantially dependent upon the stroke length of the piston. Indeed, any person skilled in the art would appreciate that the torque arm length is dependent upon the spacing between the parallel cylinders. Id. at 5. However, the Examiner explains that [e]ach cycle of reciprocation consists of two opposite motions: there is a motion in one direction, and then a motion back in the opposite direction. Each of these is called a stroke. The term is also used to mean the length of the stroke. However, is not clear how the effective torque arm length is independent of the piston stroke length in view of the written specification and/or Figures 1-13 of the present application. Ans. 24. While we agree with Appellant that, as illustrated in Figure 2, the limited movement of the piston rods causes the torque arm length to appear to be substantially constant, there is no disclosure of the torque arm length 4 Appeal 2016-003835 Application 12/645,986 actually being constant nor is there any disclosure of the torque arm length being dependent upon the spacing between parallel cylinders. Thus, Appellant has not apprised us that the Examiner’s finding of a lack of written description, is in error.4 Accordingly, we sustain the Examiner’s rejection of claims 1, 3—9, and 16—20 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Second and Third Grounds of Rejection: Obviousness of Claims 1, 3, 4, 6—9, 11, 12, 14—17, and 19—21 over Bundrick and Nelson; and Claims 5, 13, 18, and 22 over Bundrick, Nelson, and Forssell Appellant argues claims 1, 3—9, and 11—22 as if all the claims were rejected as obvious over Bundrick, alone. See Br. 5—8. We select claim 1 as the representative claim for this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(l)(iv). In rejecting claim 1, the Examiner relies on Bundrick for disclosing an internal combustion engine including a motion conversion means and substantially all the limitations of claim 1, pointing out that “claim 1 is directed to an apparatus which must be distinguished from the prior art in [terms] of structure rather function [MPEP 2114],” and that “the functional limitations ‘. . . and establishing a torque arm length that is substantially constant and independent of a stroke length of an associated one of said pistons . . . ’ which are narrative in form have been given very little patentable weight.” Final Act. 3^4. 4 Appellant did not file a Reply Brief. 5 Appeal 2016-003835 Application 12/645,986 While acknowledging that Bundrick “fails to disclose . that said motion conversion means comprises each piston rod having an outer end pivotally connected to a pivot arm on a one wav clutchthe Examiner finds Nelson teaches “the use of a clutch [that] permits piston motion in either direction to convert to rotational motion of the axle in a single direction.” Id. at 5 (citing Nelson | 8). From the foregoing, the Examiner concludes that it would have been obvious ... to modify Bundrick such that said motion conversion means has each piston rod having an outer end pivotally connected to a pivot arm on a one way clutch as taught and suggested by Nelson because the use of a clutch permits piston motion in either direction to convert to rotational motion of the axle in a single direction. Id. at 5—6. In taking issue with the Examiner’s findings and conclusions, Appellant contends that “Brundrick employs a standard crankshaft engine in which the torque arm length depends solely on the radius of the cranks 16, 18 and the stroke of the pistons,”5 while “the torque arm length in the instant invention is not so dependent, but rather depends on the extent to which the pairs of cylinders and associated pistons are spaced apart, rather than the stroke length of the pistons.” Br. 6. However, Appellant’s contention is unavailing as it is not commensurate with the scope of these claims, none of 5 Appellant appears to base this contention on Exhibit A, first submitted on March 13, 2014, alleged “to show the remarkable difference between the prior art Bundrick patent and an engine made in accordance with the instant invention.” Br. 6. However, in spite of a request by the Examiner to do so, Appellant does not provide sufficient evidence for this contention. Final Act. 23. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“Arguments and conclusions unsupported by factual evidence carry no evidentiary weight.”). 6 Appeal 2016-003835 Application 12/645,986 which is limited to the amount of spacing between cylinders and pistons. See Br. 10-17, Claims App. As we are instructed by our reviewing court, “limitations are not to be read into the claims from the [Specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)); see also In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Appellant also contends that the claims’ “torque arm length is substantially constant and it is substantially independent of stroke length,” as “a result of the step-by-step intermittent engagements afforded by the one way clutches 30 and the small arcs of operation of the pivot arms 28, 36 under control of the pistons.” Br. 8. Again, Appellant’s contention is unavailing as it is not commensurate with the scope of the claims, none of which is limited to small arcs of operation of pivot arms. See Br. 10—17, Claims App. As we are instructed by our reviewing court, “limitations are not to be read into the claims from the [Specification.” In re Van Geuns, 988 F.2d at 1184. The Examiner also points out that “there are two types of well-known in the art torque arm lengths,” those being “[t]he physical torque arm length and the effective torque arm length,” and explains that “the actual physical torque arm of Bundrick's engine (Figure 1) is the radius of the circle or path followed by the crankshaft end of the connecting rod.” Ans. 23—24. We agree with the Examiner that “the actual physical torque arm of Bundrick's engine is constant because [it] is just the radius of the circle of cranks (16 and 18),” even though “the effective torque arm length of Bundrick's engine will change upon the stroke length.” Id. at 24. Appellant has not disputed these findings, or the Examiner’s conclusion that 7 Appeal 2016-003835 Application 12/645,986 the recited “torque arm length” encompasses the actual physical torque arm. We note that the actual physical torque arm of Bundrick’s engine, as explained by the Examiner, is not directly related to the amount of spacing between cylinders and pistons Based on the foregoing, we sustain the Examiner’s rejections of claims 1, 3, 4, 6—9, 11, 12, 14—17, and 19-21 over Bundrick and Nelson; and claims 5, 13, 18, and 22 over Bundrick, Nelson, and Forssell. DECISION We AFFIRM the Examiner’s rejections. 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 8 Copy with citationCopy as parenthetical citation