Appeal No. 2005-0245 Page 4
Application No. 09/848,032
i.e., operating the overheating engine on alternating cylinders when the battery charge is
insufficient to power the motor, or, in other words, when the battery is dead. The Examiner cites
Gopp as evidence that it was known in the art to control an internal combustion engine such that,
upon overheating, the engine is powered by alternating cylinders and concludes, based on the
evidence provided by Gopp, that the modification of the hybrid electric vehicle of Kitada would
have been obvious to one of ordinary skill in the art (Answer, pp. 3-4).
Appellant argues that the Examiner has engaged in hindsight reconstruction of the
invention by plucking from Gopp the idea of running an engine on alternating cylinders (Brief,
p. 4). This, according to Appellant, is because Kitada teaches shutting down the engine if the
battery is dead and while Gopp describes operating an overheating engine on alternating
cylinders, Gopp makes no reference to a hybrid vehicle having both electric and internal
combustion engine propulsion (Id.).
Appellant’s argument is not convincing because it concentrates on what each reference
teaches separately without considering what the combination would have suggested to one of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(The claimed invention need not be expressly suggested in any one or all of the references,
rather, the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.). As pointed out by the Examiner, the problem of overheating is a
problem with the internal combustion engine component of the hybrid vehicle (Answer, pp. 4-5).
Those of ordinary skill in the art would have looked to solutions to problems with internal
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