Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE MOTHOHIRO OHSHIRO
Appeal No. 87-0642
July 31, 1989
HEARD: May 25, 1989
Application for Patent filed April 23, 1985, Serial No. 726,912, which is a continuation of Serial No. 590,557 filed March 19, 1984, which is a continuation of Serial No. 361,531 filed March 23, 1982. Two-Cycle Internal Combustion Engine.
Ernest A. Beutler for appellant
Primary Examiner--Craig R. Feinberg
Lyddane and Pate
This is an appeal from the final rejection of claims 1 to 16, all the claims in the application.
Claim 1, the only independent claim, reads as follows:
1. A two-cycle internal combustion engine having a piston, a cylinder head and a cylinder defining a variable volume combustion chamber, intake port means in said cylinder sequentially communicating with said combustion chamber for delivering a charge thereto, exhaust port means communicating with said combustion chamber for receiving the exhaust products therefrom, said piston and said cylinder head defining a restricted area in said combustion chamber around said cylinder when said chamber approaches its minimum volume condition, at least one of said piston and said cylinder having a recessed channel formed therein having an inlet end communicating with said restricted area and an outlet end spaced from said inlet end, said recessed channel being configured to provide a substantially smooth flow area from said inlet end to said outlet end for substantially uninterrupted flow through said channel, said intake port means being configured to generate a high velocity flow of fresh intake charge toward said inlet end of said channel for substantially unrestricted flow through said channel from said inlet end to said outlet end as said chamber approaches its minimum volume condition, and a spark plug having its gap disposed in an uninterrupted portion of said channel positioned to be swept by said high velocity flow.
The final rejection was based on two references [FN1]:
Bocquet (France) 1,015,841 Oct. 24, 1952
Tanaka [FN2] (Japan) 52-63529 May 26, 1977
The claims on appeal stand rejected on the following grounds:
1. Claim 1, under 35 USC 112, first paragraph;
2. Claims 1 and 4, under 35 USC 102, as anticipated by Tanaka;
3. Claims 2, 3 and 5 to 16, under 35 USC 103, as unpatentable over Tanaka in view of Bocquet.
35 USC 112 Rejection
The examiner's rejection of claim 1 under 35 USC 112 centers upon the recitation 'at least one of said piston and said cylinder( [FN3]) having a recessed channel formed therein.' The examiner notes and we agree, that the only recessed channel disclosed by appellant is located in the cylinder head. He therefore takes the position that since appellant's disclosure does not support the recitation of a channel in the piston, the claim violates the first paragraph of 35 USC 112. Appellant on the other hand argues that it would be readily apparent to those skilled in the art that the channel could be formed in the head of the piston (brief, p.12), and that 'it is well known practice in mechanical arts for an applicant to be permitted to claim an invention as broadly as the prior art allows. Frequently, this results in the presentation of claims which may read upon species which are not disclosed in addition to species which are disclosed' (reply brief, p.1).
*2 In general, an applicant in a mechanical case may be allowed claims which cover more than the specific embodiment shown, if the prior art permits. In re Newton, 414 F.2d 1400, 1406, 163 USPQ 34, 39 (CCPA 1969). However, in the present case we do not regard claim 1 as merely a broad claim which covers appellant's disclosed 'cylinder head' species; rather, it specifically recites the 'piston' species, somewhat in the manner of a Markush-type claim (see MPEP § 706.03(y)). Since the 'piston' species is not disclosed in the original specification or claims, there is no compliance with the written description requirement of the first paragraph of 35 USC 112. This defect would not be cured even if we were to assume, for the sake of argument, that the 'piston' species would be obvious from the disclosed 'cylinder head' species. Cf. In re Barker, 559 F.2d 588, 194 USPQ 470 (CCPA 1977), cert.den., 197 USPQ 221 (1978).
In addition to the question of written description, a rejection under 35 USC 112, first paragraph, for lack of support also subsumes the issue of enablement. In the present case, the disclosed invention involves providing recesses or cavities located in an engine in a particular relationship to other components of the engine to achieve a particular manner of operation. Specifically, the cylinder head 15 contains a recess 34, in which the spark plug 41 is positioned, communicating with a larger volume recess 35. On page 6 of the specification, appellant discloses how these recesses operate to provide high velocity and turbulence across the spark plug when it is fired, the combustion products being discharged at high velocity into recess 35, with the burning gases passing toward exhaust port 24 as the piston is driven downwardly. It does not appear to us that this disclosure would enable one of ordinary skill in the art to make and use the invention if the recesses were located in the top of the piston. In such an arrangement, it is not apparent that the operation described in the specification could be achieved, particularly with regard to the flow of gases as the piston is driven downwardly (since the piston would take the recesses with it if they were located in its top surface). In our view, it would require undue experimentation for one of ordinary skill to practice appellant's claimed 'piston' species, if in fact it could be practiced at all. Martin v. Johnson, 454 F.2d 746, 751, 172 USPQ 391, 395 (CCPA 1972).
The rejection of claim 1 under 35 USC 112 is accordingly affirmed.
35 USC 102 Rejection
In the final rejection, the examiner referred to Figures 1 and 2 of Tanaka as showing plural intake ports 2 leading to the inlet end of a channel 17 formed in the cylinder head. In response to appellant's arguments that Tanaka does not provide a substantially smooth flow area from the inlet end to the outlet end, a high velocity flow of fresh intake charge toward the inlet end, and a spark plug in position to be swept by the high velocity flow, the examiner responds that the claims are silent as to the status of the flow after reaching the outlet end of the channel, the flow between the ends of Tanaka's channel being substantially uninterrupted even though it is curtailed after reaching the outlet end of the channel.
*3 We will not sustain this rejection.
In the Tanaka apparatus, there is a vertical wall 17a positioned at the end of channel 17 opposite the inlet end, with spark plug 10 located in 'close vicinity' to the wall (p.6). [FN4] The operation of the device, as described on Tanaka pp. 7 to 9, involves the fuel-air mixture flowing along the channel 17, colliding with wall 17a, and floating around the electrode of spark plug 10. During the compression stroke, the residual (exhaust) gas pushes the fuel-air mixture to the area around the spark plug, thus yielding 'separative compression' or stratification of the mixture and the residual gas. From this description we consider that at least two limitations of claim 1 (and claim 4 dependent thereon) are not found in Tanaka, namely, a recessed channel 'configured to provide a substantially smooth flow area' from its inlet end to its outlet end 'for substantially uninterrupted flow' through the channel, and 'a spark plug having its gap disposed in an uninterrupted portion of said channel and positioned to the swept by said high velocity flow.' It is clear that the presence of the wall 17a at the end of Tanaka's channel 17 does not permit 'substantially uninterrupted flow' and prevents the spark plug 10 from being swept by high velocity flow. We do not consider that a channel whose outlet end is blocked, as the end of Tanaka's channel is, can reasonably be interpreted as a channel which is configured to provide substantially uninterrupted flow.
Since Tanaka does not disclose each and every element of claims 1 and 4, it cannot serve as an anticipation of them. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d 1440, 221 USPQ 385 (Fed.Cir.), cert. dismissed, 468 U.S. 1228 (1984).
35 USC 103 Rejection
The rejection of claims 2, 3 and 5 to 16 as unpatentable over Tanaka in view of Bocquet is reversed.
Bocquet discloses the use of a channel in the cylinder head of, inter alia, a two-stroke engine (Figs. 12 and 13). The spark plug 5 is located in channel 4, to be swept by part of the freshly introduced gas as it enters the cylinder (p.1, second paragraph). As shown in Figure 12, the outlet end of channel 4 leads to an area of larger cross-section.
The examiner asserts that it would have been obvious to one of ordinary skill in the art, given this disclosure of Bocquet, to 'use the channel and larger recessed area arrangement as taught by Bocquet' (answer, p.2). We disagree. In Tanaka, as discussed above, a wall 17a is provided at the end of channel 17 to block the gas-air mixture flowing through the channel and create a stratified charge around the spark plug. In Bocquet, by contrast, the gas-air mixture flows freely through the channel past the spark plug to the layer area with no blockage deflecting the gas to the 'hot zones,' such as the exhaust valve 3. The fundamental purpose and operation of the apparatus disclosed in these two references appears to be entirely different, and we perceive no reason why one of ordinary skill in the art would be motivated to, in effect, negate the Tanaka invention by completely ignoring Tanaka's teaching of the desirability of providing a wall at the outlet end of the channel to produce a stratified charge at the spark plug.
Rejections Under 37 CFR 1.196(b)
*4 Pursuant to 37 CFR 1.196(b), we enter the following new grounds of rejection:
1. Claims 1, 2, 4, 5, 8, 10, 11, 12, 15 and 16 are rejected under 35 USC 103 as unpatentable over Bocquet in view of Tanaka. As discussed above, Bocquet's Figures 12 an 13 disclose a two-stroke engine having a recess 4 in the cylinder head in which is positioned spark plug 5, there being substantially unrestricted flow through the channel from its inlet to outlet ends. With regard to claims 2, 5, 10, 11, 12, 15 and 16, the cross-sectional area of the channel is shown in Figure 12 as increasing from its inlet end to its outer, end, and its outer end is in unrestricted communication with a larger recessed area. Tanaka is relied upon for its showing of the various conventional elements of a two-stroke engine recited in claim 1, e.g., intake (scavenging) ports 2 and exhaust port 3 in the cylinder wall. To the extent that Tanaka may be considered not to disclose intake ports disposed to direct the charge toward the inlet of the channel, we note that the arrows in Bocquet's Figure 13 indicate that the charge flows in that direction, and applicant indicates on page 3 of the specification, lines 7 and 8, that his disclosed scavenging arrangement is well known, since he refers to it as the 'Schnuerle scavenging type of arrangement.' Inasmuch as Bocquet does not disclose any particular two-stroke engine to be used in conjunction with the cylinder head of Figures 12 and 13, it would have been obvious to one of ordinary skill in the art to use the Bocquet cylinder head with the known piston-cylinder-port arrangement of the two-stroke engine disclosed by Tanaka.
2. Claims 2, 4, 5, 8, 10 to 12, 15 and 16 are rejected under 35 USC 112, first paragraph. Since we have affirmed the rejection of claim 1 on this ground, these claims, which likewise are not limited to appellant's disclosed 'cylinder head' species, are subject to the same ground of rejection.
3. Claims 3, 6, 7, 9, 13 and 14 are rejected under 35 USC 112, first paragraph, on the ground that the recitation that the piston has a 'generally planar' head is unsupported. The drawings show the piston 17 with a curved or domed head, and we find no disclosure or suggestion of a generally planar head in either the original specification or claims as filed.
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date hereof (37 CFR 1.197).
With respect to the new rejections under 37 CFR 1.196(b), should appellant elect the alternate option under that rule to prosecute further before the Primary Examiner by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision. In the event appellant elects this alternate option, in order to preserve the right to seek review under 35 USC 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome.
*5 If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to us for final action on the affirmed rejection, including any timely request for reconsideration thereof.
The examiner's decision to reject claim 1 under 35 USC 112 is affirmed; his decisions to reject claims 1 and 4 under 35 USC 102, and to reject claims 2, 3 and 5 to 16 under 35 USC 103 are reversed. All the claims are rejected under 37 CFR 1.196(b) on one or more grounds.
Rule 37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal. AFFIRMED-IN-PART; 37 CFR 1.196(b)
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
William E. Lyddane
William F. Pate, III
Ian A. Calvert
REQUEST FOR RECONSIDERATION
Appellant has filed a request for reconsideration of our decision of July 31, 1989 (Paper No. 36), only to the extent that we rejected claims 1, 2, 4, 5, 8, 10, 11, 12, 15 and 16 under 35 USC 103, pursuant to 37 CFR 1.196(b).
In the decision, we also affirmed the examiner's decision to reject claim 1 under 35 USC 112 and entered, under 37 CFR 1.196(b), two rejections of the remaining claims, also under 35 USC 112. On the last page of the request, appellant asks for a 'stay in the time for further prosecution of the three 12 (sic) rejections,' since he would 'like to preserve his opportunity to present an amendment to these claims before the Examiner or the Board until the Board rules on this request for reconsideration.'
Appellant's request for a stay is denied. 37 CFR 1.196(b) permits an appellant, in response to a new rejection by the Board, to either (1) submit an amendment or showing of facts and have the matter reconsidered by the examiner, or (2) have the case reconsidered by the Board on the same record. These options are in the alternative; an appellant cannot exercise both of them, as appellant is apparently attempting to do in the present case.
Turning to the rejection under 35 USC 103, we have reconsidered our position in light of the request, but are not persuaded of any error therein. Appellant's arguments are directed to alleged differences in the operation of his engine vis-a-vis that of Bocquet, but he does not point to any differences between the structure recited in the claims and that provided by the combination of Bocquet and Tanaka. Moreover, claim 1 recites that there is 'substantially unrestricted flow through said channel from said inlet end to said outlet end as said chamber approaches its minimum volume condition,' and, even accepting appellant's analysis of how Bocquet's Fig. 12 and 13 apparatus operates, it appears that the quoted recitation of appellant's operation would read on Bocquet since appellant admits on page 2 of the request that a charge flows across the spark plug 'during the initial position [sic: portion?] of the inward movement of the piston.' Such 'inward movement' would result in the chamber approaching 'its minimum volume condition' as recited in claim 1.
*6 In view of the foregoing, appellant's request for reconsideration is denied insofar as it seeks any reversal or modification of our previous decision, Paper No. 36. In accordance with the last sentence of 37 CFR 1.196(b)(2), as amended effective August 20, 1989 (54 F.R. 29548, 29552 (July 13, 1989), 1105 O.G. 5, 9 (August 1, 1989)), this decision incorporates the previous decision, and is final for the purpose of judicial review.