MIGUEL POTOLICCHIO

Patent Trials and Appeals BoardOct 15, 2021

2020005113 (P.T.A.B. Oct. 15, 2021)

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. 15/677,595 08/15/2017 MIGUEL ALFONSO POTOLICCHIO TUNERS-106-CIP 5831 110839 7590 10/15/2021 Thomas K. Zlegler 6184 NW 124th Drive Coral Springs, FL 33076 EXAMINER LATHERS, KEVIN ANTHONY ART UNIT PAPER NUMBER 3747 MAIL DATE DELIVERY MODE 10/15/2021 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 MIGUEL ALFONSO POTOLICCHIO ____________ Appeal 2020-005113 Application 15/677,595 Technology Center 3700 ____________ Before STEFAN STAICOVICI, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–20 as unpatentable under 35 U.S.C. § 103 over Semar (US 5,589,059, iss. Dec. 31, 1996). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appeal 2020-005113 Application 15/677,595 2 THE INVENTION Appellant’s invention relates to a lubrication system for internal combustion engines. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A device for use with an internal combustion engine having a crankcase provided with an oil filter opening therein adapted to receive a removable oil filter, an oil pump and at least one external component outside the crankcase to which oil is supplied from the crankcase, a device for controlling flow of oil between the crankcase and the external component when the engine is running, comprising: an adapter configured to be installed in the oil filter opening and coupled between the oil pump and the external component to allow oil to be pumped from the crankcase to the external component, the adapter including an adapter body having a passageway therein and an outlet port from which oil may flow from the adapter to the external component, the adapter body including an internal valve within the passageway for preventing backflow of oil from the external component though the adapter to the crankcase. OPINION Claim 1 The Examiner finds that Semar discloses the invention substantially as claimed except for the valve being disposed internally within the adapter. Final Act. 2–4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to relocate Semar’s check valve internal to its adapter. Id. at 3–4. According to the Examiner, a person of ordinary skill in the art would have done this as such would have entailed a mere rearrangement of parts. Id. at 4 (citing In re Japikse, 181 F.2d 1019 (CCPA 1950)). In the Examiner’s own words, Appeal 2020-005113 Application 15/677,595 3 “there is no significant modification occurring other than a simple movement of a valve from one spot on a path to another spot on the same path.” Id. Appellant argues that the Examiner fails to provide evidence of a reason or motivation for making the proposed modification to Semar and criticizes the Examiner’s reliance on Japikse, which Appellant characterizes as stating an improper per se rule of unpatentability. Appeal Br. 11. Appellant further argues that location of its valve involves more than mere design choice. Id. Appellant also argues that modifying Semar as proposed would reduce its effectiveness by interfering with the return flow of engine oil. Id. Appellant then lists a plethora of advantages achieved by the invention, including: (1) eliminating the need for additional connections; (2) reducing leakage; (3) protecting the valve from damage; (4) providing repair access; and (5) reducing backflow. Id. at 12. In response, the Examiner explains that Appellant’s invention merely provides a generic valve to prevent backflow. Ans. 7. According to the Examiner, “the main difference between the claim limitation at hand and what is disclosed in Semar is that Semar’s check valve 34 is external to the adapter body 20, rather than ‘the adapter body including an internal valve within the passageway.’” Id. at 8. The Examiner rebuts Appellant’s Japikse – per se rule of unpatentability argument by emphasizing that the proposed rearrangement of parts does not affect the operation of the adapter. Id. Here it can be seen that the check valve 34 is immediately adjacent to the adapter 20. Its movement to the adapter itself would involve little in the way of modification, a simple removal of the line between the two and the check valve incorporated into the adapter housing, a structural modification that is well-within the skill of one of ordinary skill in the art. Appeal 2020-005113 Application 15/677,595 4 Further, the functionality of the device would be completely unaltered: the check valve performs its function the same no matter its location and the adapter’s function is unchanged due to a check valve being moved within its housing. Id. at 10. With respect to purported advantages that Appellant outlined in the Appeal Brief, the Examiner notes that none of them amount to unexpected results nor is more than ordinary skill required to achieve them. Id. at 11. The Examiner further comments that such advantages are matters of common knowledge among skilled practitioners and, in and of themselves, provide reasons to make the proposed modification. Id. The Examiner’s position is persuasive. It is now settled law that under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for modifying the prior art in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Moreover, we have reviewed the Semar reference. Figure 1 of Semar depicts adapter 20 disposed in the same location where an oil filter would otherwise be placed. Semar, Fig. 1. An oil filter 40 is disposed external to the engine and is connected to adapter 20 by means of hose 32. Id. Check valve 34 is disposed along hose 32 proximate to adapter 20. Id. We agree with the Examiner that all of the claim limitations are met except for location of the check valve. We also agree with the Examiner that the proposed relocation of the check valve would have been obvious, would have required no more than ordinary skill, and produces no unexpected results. We also agree that relocation of the check valve, as proposed, would Appeal 2020-005113 Application 15/677,595 5 not affect operation of the adapter and, therefore, the Examiner’s reliance on Japikse is appropriate under the facts of this particular case. Furthermore, we find no evidence in the record to support Appellant’s speculative argument that modifying Semar as proposed would interfere with the return flow of oil. An artisan must be presumed to know something about the art apart from what the references disclose. In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Once the decision is made to move Semar’s check valve upstream and incorporate it into the adapter, it would have taken no more than ordinary skill to arrange and dispose the various components so that oil would flow in and out of the adapter. The Examiner’s findings of fact are supported by a preponderance of the evidence and the Examiner’s legal conclusion of unpatentability is well- founded. In view thereof, we sustain the Examiner’s unpatentability rejection of claim 1. Claims 2, 8, and 16 Appellant argues claims 2, 8, and 16 as a group. Appeal Br. 16. Claim 2 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 2 depends from claim 1 and adds the limitation: the valve includes a valve seat integrally formed in the adapter body, and valve ball shiftably disposed within the passageway, the valve further including a spring within the passageway for biasing the valve ball toward a closed position against the valve seat to prevent backflow of oil through the adapter to the oil pump, but yieldable under oil pressure to allow oil to flow through the passageway and exit the adapter from the outlet port. Claims App. Appellant argues that the prior art fails to disclose a valve seat integrally formed in the passageway of an adapter body as claimed. Appeal Br. 16. Appeal 2020-005113 Application 15/677,595 6 In response, the Examiner explains that “[t]he seat of a valve being integral with its housing is shown in these applications and indeed the check valve being moved to the outlet of a housing would allow for such an integral seat.” Ans. 14 (citing Kuklewicz, US 3,743,053 iss. July 3, 1973; and Peeples, US 3,343,564, iss. Sept. 26, 1967). Having considered the competing positions of Appellant and the Examiner, we find the Examiner’s position more persuasive. The Examiner is correct that Kuklewicz discloses the claimed feature and, although Kuklewicz is not relied on as applied art in the rejection, it is evidence of the background of knowledge of a person of ordinary skill in the art that could be brought to bear in considering to modify Semar. See Randall v. Rea, 733 F.3d 1355, 1361–1363 (Fed. Cir. 2013) (explaining that non-applied references may be relied on as evidence of background knowledge of a person of ordinary skill in the art). We sustain the Examiner’s unpatentability rejection of claims 2, 8, and 16. Claims 3, 11, and 17 Appellant argues claims 3, 11, and 17 as a group. Appeal Br. 14–15. Claim 3 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 3 depends from claim 1 and adds the limitation: “wherein the adapter includes an external fitting attached to the adapter body and configured to couple the adapter body with the external component, wherein the external fitting forms a part of the valve and the outlet port forms part of the external fitting.” Claims App. Appeal 2020-005113 Application 15/677,595 7 Appellant argues that although the art is fully populated with spring- loaded ball valves, none of the cited art discloses an adapter fitting having an external fitting forming part of the valve itself. Appeal Br. 15. In response, the Examiner explains that some kind of a fitting for a valve necessarily must be chosen and, therefore, one of ordinary skill in the art would select from adapters and ball check valves which include known and easily included fittings such as a threaded securing structure. Ans. 15. Similar to the inclusion of a ball check valve with an integral seat, this is essentially a claim of a common and routine device (‘an external fitting attached to the adapter body . . .’) which is necessary to the structure of any device (i.e. the hose/pipe to the external component requires a fitting onto the adaptor body) and that it is obvious for one of ordinary skill in the art to include such routine structures. Id. The Examiner’s position is persuasive. Anyone who has ever connected a garden hose to an external spigot is familiar with providing a screw thread fitting on the end of the spigot where it connects to the hose. We see nothing innovative about placing a screw thread fitting on the outlet of Appellant’s adapter and incorporating one end of Appellant’s check valve into the outlet fitting. Such would obviously facilitate connection of a hose. We sustain the Examiner’s unpatentability rejection of claims 3, 11, and 17. Claims 5 Claim 5 depends from claim 1 and adds the limitation: “the adapter body is substantially solid and the passageway passes therethrough, and the valve is located within the passageway.” Claims App. Appellant argues that Appeal 2020-005113 Application 15/677,595 8 Semar’s adapter has thin walls, is hollow, and, therefore, is not substantially solid as claimed. Appeal Br. 13. In response, the Examiner points out that Appellant does not disclose how large or small a “passageway” is, nor does it disclose what the meaning of “substantially” solid is supposed to be in view of the fact that the adapter has passageways. Ans. 13. Consequently, the Examiner uses a broad, but reasonable, construction of “substantially solid,” which permits the adapter to incorporate passageways through which fluid moves. Id. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Here, Appellant fails to offer a construction of “substantially solid” that is sufficiently narrow to exclude Semar, modified as proposed, and yet broad enough to encompass the langue of claim 5. Under the circumstances, we treat the Examiner’s position as unrebutted and sustain the Examiner’s rejection of claim 5 over Appellant’s “substantially solid” argument. Claims 6, 7, 13, 14, 15, and 20 Appellant argues claims 6, 7, 13, 14, 15, and 20 as a group. Appeal Br. 15–16. Claim 6 is representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 6 depends from claim 1 and adds the limitations: Appeal 2020-005113 Application 15/677,595 9 a valve ball shiftably disposed within the passageway, a valve seat formed in the adapter body at one end of the passageway against which the valve ball may seat to close the valve against oil flow therethrough, and a perforated disk located at the other end of the passageway against which the valve ball may seat while allowing oil flow through the valve. Claims App. Appellant asserts that the Examiner fails to provide evidence that the claimed “perforated disk” is known in the prior art. Appeal Br. 15–16. In response, the Examiner finds that perforated discs that act as valve seats are well-known in the art. Ans. 15 (citing Muto, US 4,470,382, iss. Sept. 11, 1984; Wydra, US 5,853,575, iss. Dec. 29, 1998; Bouwkamp, US 3,437,082, iss. Apr. 8, 1969; Hunnicutt, US 2003/0086801 A1, pub. May 8, 2003; and Montague, US 2009/0223574 A1, pub. Sept. 10, 2009). Appellant makes no effort to distinguish the art cited by the Examiner. Appeal Br. 15–16. The Examiner’s findings of fact are supported by a preponderance of the evidence. We sustain the Examiner’s unpatentability rejection of claims 6, 7, 13, 14, 15, and 20. Claims 8 and 5 Claim 8 is an independent claim and is argued together with claim 5 that depends from claim 1. Claims App. We select claim 8 as representative. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that the following limitation from claim 8 — “an internal valve . . . including a valve seat integrally formed in the adapter body within the passageway” — is not met by the prior art. Appeal Br. 14. Appeal 2020-005113 Application 15/677,595 10 In response, the Examiner finds that such integrally formed valve seats are disclosed in Kuklewicz, supra, and Peeples, supra. Ans. 14. Appellant’s arguments to the contrary are abbreviated and conclusory, and fail to patentably distinguish over the art cited by the Examiner. Appeal Br. 14. We sustain the Examiner’s unpatentability rejection of claims 5 and 8. Claims 12 and 18 Claim 12 depends from claim 8 and adds the limitation: “wherein the adapter body includes an integrated cover plate configured to act as a stop and seat the adapter against a surface of the engine.” Claims App. Claim 18 depends from independent claim 16 and contains a similar limitation. Id. Appellant argues that the Examiner fails to make any findings of fact that address this limitation in either of these two claims. Appeal Br. 16–17. Appellant’s Appeal Brief argument appears to have merit and we are unable to find any discussion in the Examiner’s Answer that addresses this limitation, much less provide findings of fact as to where the limitation is met by the prior art or otherwise would have been known or obvious to a skilled artisan. See generally Ans. Rejections based on obviousness must rest on a factual basis; in making a rejection, the Examiner has the initial burden of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Under the circumstances, we do not sustain the Examiner’s rejection of claims 12 and 18. Appeal 2020-005113 Application 15/677,595 11 Claims 4, 9, 10, and 19 These claims are not separately argued apart from their dependency on claims for which we have already sustained the Examiner’s rejection. Appeal Br. 17. They fall with the claims from which they depend. CONCLUSION Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1-20 103 Semar 1-11, 13-17, 19, 20 12, 18 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 IN PART