Ex Parte Takenaka et al - Page 4

             Appeal Number: 2006-3046                                                                          
             Application Number: 10/130,596                                                                    

                   shaft 12 extending along a first axis SH1 (Fig. 1 and col. 3, lines 52-                     
                   54). Fig. 2 is a schematic diagram that includes the engine 11 and the                      
                   output shaft 12. Fig. 2 is the only drawing that illustrates the engine                     
                   11.  Fig. 2 and the corresponding description for the engine 11 fail to                     
                   provide any disclosure with regard to the structural details of the                         
                   engine 11 or the position of a cylinder within the engine 11.                               
                   Yamaguchi fails to provide any additional disclosure with regard to                         
                   the engine 11 because Yamaguchi is directed toward improving a                              
                   drive unit that includes a drive motor 25, a generator-motor 16 and an                      
                   inverter unit 50 (and not the engine 11).  In other words, Yamaguchi                        
                   only briefly discloses the engine 11 in the schematic diagram of Fig. 2                     
                   in order to illustrate how the engine 11 interacts with the drive unit.                     
                   Fig. 2 is a schematic diagram that includes an engine 11 and an                             
                   output shaft 12 connected to the engine 11.  Cylinders presumably                           
                   exist within engine 11.  However, Yamaguchi fails to provide any                            
                   disclosure or suggestion with regard to the location of the cylinders or                    
                   a cylinder axis within the engine 11, or the location of the cylinders or                   
                   the cylinder axis relative to the output shaft 12.  Yamaguchi thus fails                    
                   to provide any guidance with regard to disposing an electronic circuit                      
                   in any position relative to the cylinder axis of the engine 11 because                      
                   Yamaguchi fails to provide any indication of the location of the                            
                   cylinders or the cylinder axis within the engine 11.                                        
                   Because Yamaguchi only discloses a schematic diagram of the engine                          
                   11, the Examiner must rely on hindsight reconstruction to suggest a                         
                   specific position of the cylinders or the cylinder axis within the engine                   
                   11 or suggest a position of the inverter unit 50 and the control unit 51                    
                   relative to a direction of the vibrations caused by the engine 11.  The                     
                   engine 11 presumably exists within an engine compartment of                                 
                   Yamaguchi's vehicle.  However, Yamaguchi fails to provide any                               
                   disclosure as to whether the engine 11 is a V-type multi-cylinder                           
                   engine, an in-line multi-cylinder engine, a horizontally opposed multi-                     
                   cylinder engine, a rotary engine, or another type of engine.                                
                   Yamaguchi also fails to disclose where the cylinders or the cylinder                        
                   axis in the previously mentioned engines are located relative to the                        
                   inverter unit 50 and the control unit 51.  It is impermissible to use                       
                   Appellants' claims as a template in order to suggest a location for the                     
                   cylinders or the cylinder axis relative to Yamaguchi's inverter unit 50                     
                   and control unit 51.                                                                        

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