Ryou Ono et al.

Patent Trials and Appeals Board

Aug 27, 2019

13884019 - (D) (P.T.A.B. Aug. 27, 2019)

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.
13/884,019 05/08/2013 Ryou Ono 739180/09023/P2652US00 8783
148434 7590 08/27/2019
Burr Forman McNair
Husqvarna
Bank of America Plaza
101 South Tryon Street, Suite 2610
Charlotte, NC 28280
EXAMINER
PICON-FELICIANO, RUBEN
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
08/27/2019 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):
mcnairip@mcnair.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RYOU ONO and TAKASHI OHNIWA
____________

Appeal 2019-001063
Application 13/884,019
Technology Center 3700
____________

Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–3 and 5–7 under 35 U.S.C. § 103(a) as unpatentable
over Koizumi (JP 2001295652 A, pub. Oct. 26, 2001), Eberhardt (US
2009/0013963 Al, pub. Jan 15, 2009), and Wada (US 2009/0007894 Al,
pub. Jan. 8, 2009). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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Application 13/884,019
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THE INVENTION
Appellants’ invention relates to carburetors for two-stroke engines.
Spec. ¶¶ 1–2. Claim 1, reproduced below, is illustrative.
1. An air supply device of a stratified scavenging two-cycle
engine, comprising:
a carburetor provided with a single bore through which air
passes, the single bore comprising a choke valve and a throttle
valve, the choke valve disposed on an upstream side of the
carburetor and the throttle valve disposed on a downstream side
of the carburetor, wherein the throttle valve is provided by a
butterfly valve that rotates in conjunction with a throttle
operation, wherein in response to the throttle valve being
opened, a carburetor-side mixture passage for generated air-fuel
mixture to flow in and a carburetor-side air passage for the air
to directly flow in are substantially defined on a downstream
side of the throttle valve in the single bore;
an insulator provided on the downstream side of the
carburetor, the insulator provided with an insulator-side mixture
passage that is in communication with the carburetor-side
mixture passage and an insulator-side air passage that is in
communication with the carburetor-side air passage;
a mixture passage defined by the carburetor-side mixture
passage and the insulator-side mixture passage;
an air passage defined by the carburetor-side air passage
and the insulator-side air passage; and
a flow-rate regulator formed as part of the insulator or the
carburetor, the flow-rate regulator provided on the downstream
side of the throttle valve and inside the air passage, the flow-
rate regulator bulging inward in the air passage, wherein at least
a part of a periphery of a valve body of the throttle valve is
located proximate to the flow-rate regulator until the valve body
is rotated by a predetermined rotation angle from an initial
position, the initial position corresponding to an idling speed,
wherein in response to the valve being rotated from the initial
position, the carburetor-side mixture passage opens to be
brought into communication with the insulator-side mixture
passage and the carburetor-side air passage is brought into
communication with the insulator-side air passage with a delay.
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OPINION
Claim 1
The Examiner finds that Koizumi discloses the invention substantially
as claimed except for the choke valve and the insulator for which the
Examiner relies on Eberhardt and Wada, respectively. Final Action 2–5.
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 include a
choke valve and an insulator. Id. at 5–6. According to the Examiner, a
person of ordinary skill in the art would have done this to reduce throttling
and control heat transfer. Id.
Appellants argue that Wada in non-analogous art and, therefore, not
properly combined with Koizumi and Eberhardt. Appeal Br. 5. A reference
qualifies as prior art for an obviousness determination when it is analogous
to the claimed invention. Innovention Toys, LLC. v. MGA Entertainment,
Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests define the
scope of analogous art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The “field of
endeavor” test asks if the structure and function of the prior art is such that it
would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
in the application.” Bigio, 381 F.3d at 1325–26.
Wada is directed to a stratified, scavenging two-cycle engine with a
carburetor. Wada, Abstract, ¶¶ 18, 19, 41, 54. It is sufficiently similar in
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structure and function to that of the claimed invention that it qualifies as
being from the same field of endeavor as Appellants’ invention. Bigio, 381
F.3d at 1325-26. Appellants’ arguments to the contrary have been fully
considered, but are not persuasive.
Next, Appellants argue that Wada discloses a two-bore carburetor and
Koizumi and Eberhardt each disclose single-bore carburetors. Appeal Br. 7.
Appellants argue that carburetors with two bores are incapable of interacting
with an insulator in the same way as single-bore carburetor. Id. Appellants
argue that the “bores” in Wada differ in structure from the “passages” in a
single-bore carburetor. Id. Appellants’ arguments are advanced with little
or no detailed discussion or analysis as why certain teachings of a two-bore
carburetor are not readily transferable to single-bore carburetors. Id.
Appellants “two-bore” argument is unpersuasive. As we understand
the rejection, the Examiner is not proposing to physically combine a two-
bore carburetor insulator with a two passage, single-bore carburetor. Rather,
the Examiner is merely relying on Wada to teach that it was known in the art
to interpose an insulator between a carburetor and an engine to control heat
transfer. Final Action 6. The obviousness inquiry does not ask “whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole.” In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc). “It is well-established
that a determination of obviousness based on teachings from multiple
references does not require an actual, physical substitution of elements.” In
re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
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
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devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). In this case, an insulator is taught by Wada as an
improvement to control heat transfer. Appellants present neither evidence
nor persuasive technical reasoning that using an insulator to control heat
transfer to improve a single-bore carburetor requires more than ordinary
skill.
Finally, Appellants argue that the Examiner fails to provide an
adequate rationale as to why Wada is properly combinable with Koizumi
and Eberhardt. Appeal Br. 6–8. Appellants argue that Wada discloses a
two-bore carburetor whereas Koizumi and Eberhardt each disclose single-
bore carburetors. Id. at 7. According to Appellants’, “[c]arburetors having
two bores are incapable of interacting with the insulator in the same way as a
single-bore carburetor. Id. Appellants characterize the Examiner’s reason to
combine as “conclusory.” Id. at 8.
[T]he reasoning provided for combining the cited art is a mere
conclusory statement and completely unrelated to the purposes
or uses of the claimed subject matter and therefore does not
provide an apparent reason why one of skill in the art would
make the proposed combination. In particular, one of ordinary
skill in the art would not combine references disclosing a
carburetor having two bores with single-bore carburetors.
Id.
In response, the Examiner finds that, despite Wada disclosing a two-
bore carburetor, Wada’s insulator is provided on the downstream side of the
carburetor. Ans. 11–12. The Examiner finds that Wada discloses an
insulator-side mixture passage that is in communication with the carburetor-
side mixture passage and an insulator-side air passage in communication
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with the carburetor-side air passage as required by the claim language. Id.
The Examiner considers the use of an insulator as a well-known feature for
controlling heat transfer from the engine body to the carburetor. Id. The
Examiner states that there is nothing about Wada being a two-bore
carburetor that prevents one of ordinary skill in the art from applying
Wada’s teaching of an insulator to single-bore carburetors such as Koizumi
and Eberhardt. Id. at 11–12. As to the question of motivation, the Examiner
finds that “one of ordinary skill in the art would definitely provide some
kind of insulation in the carburetor to control the overall energy performance
of the engine.” Ans. 11–12.
In reply, Appellants argue that the Examiner’s proposed modification
of Koizumi would render it unsatisfactory for its intended purpose. Reply
Br. 2. Appellants also argue that Koizumi teaches away from the proposed
modification. Id. at 3.
Appellants’ “unsatisfactory for its intended purpose” argument is
unpersuasive. Koizumi is directed to a stratified, scavenging two-cycle
engine. Koizumi ¶ 1. Nothing in the prior art suggests that modifying
Koizumi’s carburetor by adding an insulator downstream of the carburetor
would result in an inoperable device. See In re Urbanski, 809 F.3d 1237,
1244 (Fed. Cir. 2016) (affirming Board rejection over unsatisfactory for
intended purpose argument where nothing in prior art taught that proposed
modification would result in an inoperable process). Appellants’ “teaching
away” argument is similarly unpersuasive as Wada does not criticize or
discredit the use of an insulator on a single bore carburetor. Id.
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We have considered Appellants’ remaining arguments, but find them
unpersuasive. For the foregoing reasons, we sustain the Examiner’s
rejection of claim 1.
Claim 2
Claim 2 depends from claim 1 and adds the limitation: “wherein an
extended portion that extends toward the carburetor to be fitted into the
carburetor-side air passage of the carburetor is provided near an upstream
end of the insulator-side air passage of the insulator.” Claims App. The
Examiner identifies closing wall 32 of Koizumi as corresponding to the
claimed “extended portion.” Final Action 6.
In traversing the rejection, Appellants rely on arguments that we
previously considered and found unpersuasive with respect to claim 1 and
find equally unpersuasive here. Appeal Br. 8. Appellants further argue that
the prior art fails to disclose an extended portion as claimed. Appeal Br. 8.
In response, the Examiner directs our attention back to closing wall 32 of
Koizumi which was cited in the Final Action. Ans. 13, Final Action 6.
Appellants’ conclusory argument is not sufficient to apprise us of
Examiner error. 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim”); see also In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (explaining that Rule 41.37 requires more than
recitation of the claim elements and a naked assertion that the elements are
not found in the prior art). Appellants provide neither evidence nor
persuasive technical reasoning as to why the Examiner’s finding regarding
element 32 of Koizumi does not satisfy the claim limitation in question.
We sustain the Examiner’s rejection of claim 2.
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Claim 3
Claim 3 depends from claim 1 and adds the limitation:
the insulator includes an insulator body provided on an engine
body of the stratified scavenging two-cycle engine and an
intermediate member interposed between the insulator body and
the carburetor, an extended portion that extends toward the
carburetor to be fitted into the carburetor-side air passage of the
carburetor is provided near an upstream end of a part of the
intermediate member forming the insulator-side air passage,
and the flow-rate regulator is provided on the extended portion
as a part of the intermediate member.
Claims App.
In traversing the rejection, Appellants, once again, relies on arguments
that we previously considered and found unpersuasive with respect to
claim 1 and find equally unpersuasive here. Appeal Br. 3. Appellants
further make a naked, unsupported assertion that the prior art fails to
disclose the limitation of claim 3. Appeal Br. 9. As with claim 2, such is
insufficient to apprise us of Examiner error. 37 C.F.R. § 41.37(c)(1)(iv),
Lovin, 652 F.3d at 1357.
We sustain the Examiner’s rejection of claim 3.
Claim 6
Claim 6 depends from claim 1 and adds the limitation: “wherein an
opposing surface of the flow-rate regulator that is located proximate to the
valve body is a spherical surface extending along a rotation path of the valve
body.” Claims App. The Examiner finds this limitation met by Koizumi
and Eberhardt. Final Action 8–9.
Appellants argue that Koizumi does not disclose a throttle valve
proximate to a flow-rate regulator as claimed. Appeal Br. 9–10. Appellants
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also argue that Koizumi does not disclose a spherical surface extending
along a rotation path as claimed. Id. at 10.
In response, the Examiner, directs our attention to the findings of fact
in the Final Action where the Examiner finds that Koizumi, in Figures 3
and 4, shows a flow regulator formed as part of the carburetor. Ans. 14.
The Final Action provides an annotated version of Figures 3 and 4 noting the
location of the flow-rate regulator. Final Action 5. The Examiner notes
that, in 3-dimensional space, the curved cross-section in the drawings will
have a spherical surface portion. Id.
We have reviewed Figures 3 and 4 of Koizumi, including the
Examiner’s annotations, thereto. The Examiner’s findings of fact are amply
supported by the record before us. We sustain the Examiner’s rejection of
claim 6.
Claims 5 and 7
These claims depend from claim 1 and are not separately argued.
Claims App. They fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
The decision of the Examiner to reject claims 1–3 and 5–7 is 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)(1)(iv).
AFFIRMED