Appeal Number: 2006-3046
Application Number: 10/130,596
time the claimed invention was made, and does not include
knowledge gleaned only from the applicant's disclosure, such a
reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170
USPQ 209 (CCPA 1971).
(Answer 6-7).
The appellants respond to this by arguing
(1) Yamaguchi fails to provide any such disclosure or suggestion, (2)
the Examiner has yet to point out where Yamaguchi or another
reference supports this conclusion, and (3) the Examiner has yet to
explain how providing the common plane in the same plane as the
cross section of Yamaguchi's drive unit casing 10 would reduce the
size of the engine compartment.
As argued in paragraph VII(B)(1)(a) of Appellants' Appeal Brief,
Yamaguchi only discloses a schematic diagram of the engine 11.
Yamaguchi and the Examiner fail to explain how the positioning of
the cylinder axis will save space within the engine compartment and
Yamaguchi fails to provide any motivation to position the cylinder
axis in order to save space. If the concern were to save space within
the engine compartment, one of ordinary skill in the art would,
undoubtedly, identify a number of considerations that might result in
saving space other than just adjusting the cylinder axis within the
engine compartment, if such would save space over other
configurations. Yamaguchi and the Examiner also fail to identify the
part of the casing 10 that has the "same inclination" as the profile of
the cylinder axis. As illustrated by Yamaguchi's Figs. 1 and 11, the
casing 10 can assume various shapes and thus various inclinations.
Appellants' claims are being used as a template to assert that, even if
the cylinder axis was at the "same inclination" as the casing 10, the
inverter unit 50 or control unit 51 would be at the "same inclination."
Page 6, line 19 - page 7, line 4 of the Examiner's Answer then cites In
re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971), in order
to justify hindsight reconstruction. In re McLaughlin is not being
properly applied because (1) the Examiner is only including
knowledge gleaned from Appellants' disclosure and (2) the Examiner
has failed to explain where he is taking into account only knowledge
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