Ex Parte Radocaj

Patent Trial and Appeal Board

Oct 30, 2017

12645986 (P.T.A.B. Oct. 30, 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.
12/645,986 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.
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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
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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
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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.
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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.”).
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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
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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
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