UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`FORD MOTOR COMPANY
`
`Petitioner
`
`v.
`
`ETHANOL BOOSTING SYSTEMS, LLC, and MASSACHUSETTS INSTITUTE
`
`OF TECHNOLOGY,
`
`Patent Owner
`
`____________
`
`
`
`Case: IPR2020-00013
`
`U.S. Patent No. 8,069,839
`
`____________
`
`
`
`DECLARATION OF DR. NIGEL N. CLARK
`
`FORD Ex. 1103, page 1
` IPR2020-00013
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`

`

`TABLE OF CONTENTS
`
`LIST OF EXHIBITS .................................................................................................. 1
`
`I.
`
`Professional Background ................................................................................. 4
`
`II.
`
`Scope of the Engagement ................................................................................ 6
`
`III. Legal Understandings ...................................................................................... 8
`
`A.
`
`Claim Interpretation .............................................................................. 8
`
`B.
`
`C.
`
`Prior Art ................................................................................................. 9
`
`Anticipation .........................................................................................10
`
`D. Obviousness .........................................................................................10
`
`1. Motivation to Combine .............................................................12
`
`E.
`
`Date of Invention .................................................................................14
`
`IV. Technical Background ...................................................................................15
`
`V.
`
`The ’839 Patent ..............................................................................................19
`
`A. Disclosure of the ’839 Patent ..............................................................19
`
`1.
`
`2.
`
`3.
`
`Background of the Invention ....................................................19
`
`Summary of the Invention ........................................................20
`
`Detailed Description .................................................................22
`
`B.
`
`Challenged Claims of the ’839 Patent .................................................28
`
`VI. File History ....................................................................................................30
`
`A. U.S. Patent No. 8,069,839 ...................................................................30
`
`B.
`
`C.
`
`
`
`U.S. Patent No. 7,971,572 ...................................................................31
`
`U.S. Patent No. 7,762,233 ...................................................................32
`
`i
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`D. U.S. Patent No. 7,740,004 ...................................................................34
`
`E.
`
`U.S. Patent No. 7,314,033 ...................................................................36
`
`VII. Litigation related to the ’839 Patent ..............................................................42
`
`VIII. Claim Construction ........................................................................................43
`
`A.
`
`“Selected Torque Value” (Claim 1) / “some value of torque”
`(Claims 7, 8) ........................................................................................43
`
`B.
`
`“Port Injection” / “Direct Injection” (Claims 1-5, 7, 8) ......................45
`
`IX. PRIORITY ANALYSIS ................................................................................48
`
`A.
`
`B.
`
`C.
`
`The disclosure in the specification does not disclose the use of
`single fuel ............................................................................................52
`
`The common specification distinguishes “anti-knock agents”
`from “gasoline” ...................................................................................60
`
`Disclosure of a single fuel system was made during an
`amendment during the prosecution of the ’839 patent
`application ...........................................................................................62
`
`X. GROUND 1: BROMBERG ANTICIPATES CLAIMS 1, 2, 3, 4, 5, 6,
`7, 8 .................................................................................................................65
`
`A.
`
`Bromberg Overview ............................................................................65
`
`B.
`
`Analysis ...............................................................................................73
`
`i.
`
`ii.
`
`Claim 1: [1.Pre] A spark ignition engine that is fueled
`both by direct injection and by port injection ...........................73
`
`Claim 1: [1.A] wherein above a selected torque value the
`ratio of fuel that is directly injected to fuel that is port
`injected increases; .....................................................................75
`
`iii. Claim 1: [1.B] and wherein the engine is operated at a
`substantially stoichiometric fuel/air ratio. ................................79
`
`
`
`ii
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`iv.
`
`v.
`
`vi.
`
`Claim 2: The spark ignition engine of claim 1 where the
`ratio of directly injected fuel to port injected fuel
`increases with increasing torque. ..............................................79
`
`Claim 3: The spark ignition engine of claim 2 where the
`ratio of directly injected fuel to port injected fuel is
`determined by a signal from a knock detector. .........................83
`
`Claim 4: The spark ignition engine of claim 3 further
`including a microprocessor that controls the ratio of the
`directly injected fuel to the port injected fuel based on the
`signal from the knock detector. .................................................85
`
`vii. Claim 5: The spark ignition engine of claim 2 where
`open loop control is used to determine the ratio of the
`directly injected fuel to the port injected fuel. ..........................89
`
`viii. Claim 6: The spark ignition engine of claim 1 where the
`engine operates at a substantially stoichiometric fuel/air
`ratio at the highest loads. ..........................................................91
`
`ix.
`
`x.
`
`Claim 7: The spark ignition engine of claim 1 where the
`engine operates at some value of torque with port fuel
`injection alone. ..........................................................................92
`
`Claim 8: The spark ignition engine of claim 1 where the
`engine operates at some value of torque with direct
`injection alone. ..........................................................................94
`
`XI. GROUND 2: LEWIS ANTICIPATES CLAIMS 1, 2, 3, 4, 5, 6, 7, 8...........94
`
`A.
`
`Lewis Overview ..................................................................................94
`
`B.
`
`Analysis .............................................................................................101
`
`i.
`
`ii.
`
`Claim 1: [1.Pre] A spark ignition engine that is fueled
`both by direct injection and by port injection .........................101
`
`Claim 1: [1.A] wherein above a selected torque value the
`ratio of fuel that is directly injected to fuel that is port
`injected increases; ...................................................................103
`
`
`
`iii
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`iii. Claim 1: [1.B] and wherein the engine is operated at a
`substantially stoichiometric fuel/air ratio. ..............................107
`
`iv.
`
`v.
`
`vi.
`
`Claim 2: The spark ignition engine of claim 1 where the
`ratio of directly injected fuel to port injected fuel
`increases with increasing torque. ............................................110
`
`Claim 3: The spark ignition engine of claim 2 where the
`ratio of directly injected fuel to port injected fuel is
`determined by a signal from a knock detector. .......................113
`
`Claim 4: The spark ignition engine of claim 3 further
`including a microprocessor that controls the ratio of the
`directly injected fuel to the port injected fuel based on the
`signal from the knock detector. ...............................................115
`
`vii. Claim 5: The spark ignition engine of claim 2 where
`open loop control is used to determine the ratio of the
`directly injected fuel to the port injected fuel. ........................118
`
`viii. Claim 6: The spark ignition engine of claim 1 where the
`engine operates at a substantially stoichiometric fuel/air
`ratio at the highest loads. ........................................................121
`
`ix.
`
`x.
`
`Claim 7: The spark ignition engine of claim 1 where the
`engine operates at some value of torque with port fuel
`injection alone. ........................................................................124
`
`Claim 8: The spark ignition engine of claim 1 where the
`engine operates at some value of torque with direct
`injection alone. ........................................................................125
`
`XII. REVISION OR SUPPLEMENTATION .....................................................127
`
`
`
`
`
`
`iv
`
`FORD Ex. 1103, page 5
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`LIST OF EXHIBITS
`
`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1101
`
`’839 Patent
`
`U.S. Patent No. 8,069,839
`
`Ex. 1102
`
`’839 File History File History of U.S. Patent No. 8,069,839
`
`Ex. 1103
`
`Clark
`Declaration
`
`Declaration of Dr. Nigel N. Clark under 37
`C.F.R. § 1.68
`
`Ex. 1104
`
`Clark CV
`
`Curriculum Vitae of Dr. Nigel N. Clark
`
`Ex. 1105
`
`RESERVED
`
`RESERVED
`
`Ex. 1106
`
`RESERVED
`
`RESERVED
`
`Ex. 1107
`
`RESERVED
`
`RESERVED
`
`Ex. 1108
`
`RESERVED
`
`RESERVED
`
`Ex. 1109
`
`RESERVED
`
`RESERVED
`
`Ex. 1110
`
`RESERVED
`
`RESERVED
`
`Ex. 1111
`
`RESERVED
`
`RESERVED
`
`Ex. 1112
`
`RESERVED
`
`RESERVED
`
`Ex. 1113
`
`RESERVED
`
`RESERVED
`
`Ex. 1114
`
`RESERVED
`
`RESERVED
`
`Ex. 1115
`
`RESERVED
`
`RESERVED
`
`Ex. 1116
`
`RESERVED
`
`RESERVED
`
`Ex. 1117
`
`RESERVED
`
`RESERVED
`
`Ex. 1118
`
`’572 File History File History of U.S. Patent No. 7,971,572
`
`
`
`1
`
`FORD Ex. 1103, page 6
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`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1119
`
`’233 File History File History of U.S. Patent No. 7,762,233
`
`Ex. 1120
`
`’004 File History File History of U.S. Patent No. 7,740,004
`
`Ex. 1121
`
`’033 File History File History of U.S. Patent No. 7,314,033
`
`Ex. 1122
`
`Complaint
`
`Ex. 1123
`
`Defendant’s
`Answer
`
`Ex. 1124
`
`Plaintiff’s
`Answer
`
`Complaint for Patent Infringement, Ethanol
`Boosting Sys LLC v. Ford Motor Co., D.I. 1,
`C.A. No. 19-cv-196-CFC (D. Del. Jan. 30,
`2019)
`
`Defendant’s Answer, Defenses,
`Counterclaims and Jury Demand, Ethanol
`Boosting Sys LLC v. Ford Motor Co., D.I. 8,
`C.A. No. 19-cv-196-CFC (D. Del. March 25,
`2019)
`
`Answer to Defendant’s Counterclaims,
`Ethanol Boosting Sys LLC v. Ford Motor
`Co., D.I. 12, C.A. No. 19-cv-196-CFC (D.
`Del. April 15, 2019)
`
`Ex. 1125
`
`Heywood
`
`John B. Heywood, Internal Combustion
`Engine Fundamentals (1988)
`
`Ex. 1126
`
`’735 File History File History of U.S. Patent No. 8,082,735
`
`Ex. 1127
`
`’157 File History File History of U.S. Patent Application No.
`11/758,157
`
`Ex. 1128
`
`RESERVED
`
`RESERVED
`
`Ex. 1129
`
`RESERVED
`
`RESERVED
`
`Ex. 1130
`
`RESERVED
`
`RESERVED
`
`Ex. 1131
`
`RESERVED
`
`RESERVED
`
`
`
`2
`
`FORD Ex. 1103, page 7
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`Exhibit
`
`Short Name
`
`Description
`
`Ex. 1132
`
`RESERVED
`
`RESERVED
`
`Ex. 1133
`
`RESERVED
`
`RESERVED
`
`Ex. 1134
`
`RESERVED
`
`RESERVED
`
`Ex. 1135
`
`’100 File History File History of U.S. Patent Application No.
`15/463,100
`
`Ex. 1136
`
`RESERVED
`
`RESERVED
`
`Ex. 1137
`
`RESERVED
`
`RESERVED
`
`Ex. 1138
`
`RESERVED
`
`RESERVED
`
`Ex. 1139
`
`RESERVED
`
`RESERVED
`
`Ex. 1140
`
`Bromberg
`
`U.S. Patent No. 7,225,787
`
`Ex. 1141
`
`Lewis
`
`U.S. Patent No. 7,694,666
`
`Ex. 1142
`
`RESERVED
`
`RESERVED
`
`Ex. 1143
`
`National
`Petroleum
`Council
`
`National Petroleum Council, U.S. Petroleum
`Refining: Meeting Requirements for Cleaner
`Fuels and Refineries (Washington, DC,
`August 1993) Appendix L.
`
`Ex. 1144
`
`RESERVED
`
`RESERVED
`
`Ex. 1145
`
`RESERVED
`
`RESERVED
`
`Ex. 1146
`
`RESERVED
`
`RESERVED
`
`
`
`
`
`
`
`
`3
`
`FORD Ex. 1103, page 8
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`DECLARATION OF DR. NIGEL N. CLARK
`
`I, Dr. Nigel N. Clark, do hereby declare and say as follows:
`
`I.
`
` Professional Background
`
`1.
`
`I have personal knowledge of the facts contained in this Declaration,
`
`am of legal age, and am otherwise competent to testify.
`
`2.
`
`I earned my Bachelor of Science in Chemical Engineering from the
`
`University of Natal (now the University of KwaZulu-Natal) in Durban, South
`
`Africa in 1980 and my Ph.D. in Engineering from the University of Natal in 1985.
`
`3.
`
`I have extensive experience in automotive engines, alternative fuels,
`
`and energy-efficient transportation spanning a career of over thirty years in the
`
`field. My relevant expertise includes engine research, including diesel, gasoline
`
`and natural-gas combustion, emissions, controls, and testing, crankless linear
`
`engine design, fuel injection, internal combustion engines, ethanol-gasoline
`
`blending emissions effects focusing on the differences between port injection and
`
`direct injection, and dual fuel engines.
`
`4.
`
`I have served on the faculty at West Virginia University (WVU) for
`
`thirty-four years, where I have taught courses on thermodynamics, heat transfer,
`
`multiphase flows, machine design, and automotive engineering. I am currently the
`
`George Berry Chair Emeritus and a Research Professor of Mechanical and
`
`Aerospace Engineering at WVU. I have conducted research programs for the
`
`
`
`4
`
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`Department of Energy (DoE), Department of Defense (DoD), Department of
`
`Transportation (DoT), the Environmental Protection Agency (EPA), the National
`
`Aeronautics and Space Administration (NASA), the Environmental Defense Fund,
`
`the World Bank, the International Council for Clean Transportation, the
`
`Coordinating Research Council, the California Air Resources Board, and numerous
`
`state governments, federal government laboratories, major energy corporations,
`
`and engine manufacturers.
`
`5.
`
`I also have extensive consulting experience in conventional and
`
`alternative fuels, energy systems and conversion, engine design & control, engine
`
`efficiency and emissions, vehicle design and propulsion, transportation, and
`
`thermal sciences for government, industry, and nonprofit entities. My consulting
`
`experience has involved analysis, vehicle performance modeling, intellectual
`
`property review, seminar and workshop preparation, expert opinions, and business
`
`technology evaluations.
`
`6.
`
`I have served on many professional committees and supported
`
`professional organizations. For example, I am a Fellow of the Society of
`
`Automotive Engineers, Member of the American Society of Mechanical Engineers,
`
`and Member of Tau Beta Pi, and have served on National Academies committees
`
`addressing vehicle fuel efficiency. I was also honored as a National Science
`
`Foundation Presidential Young Investigator by President George H.W. Bush and
`
`
`
`5
`
`FORD Ex. 1103, page 10
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`have received the Donald Julius Groen Prize of the Institution of Mechanical
`
`Engineers, the Benedum Award for Science and Technology, the Donald T.
`
`Worrell Award, and several WVU Researcher of the Year awards.
`
`7.
`
`I have authored or co-authored about five hundred papers and
`
`technical presentations. For example, one of my papers was “Operation of a
`
`Compression Ignition Engine with a HEUI Injection System on Natural Gas with
`
`Diesel Pilot Injection,” which was directed to a dual fuel system. Another of my
`
`dual fuel papers was “An experimental investigation of the combustion process of
`
`heavy-duty diesel engine enriched with H2.” I am also a named inventor on several
`
`patents, including one entitled “Method and Apparatus for Reducing Pollutants in
`
`Engine Exhaust.”
`
`8. My qualifications and publications are set forth more fully in my
`
`curriculum vitae. See Ex. 1104.
`
`II. Scope of the Engagement
`
`9.
`
`I have been retained by Alston & Bird, LLP on behalf of Ford Motor
`
`Company (“Ford” or “Petitioner”) to provide analysis and opinion. I have also
`
`been asked to evaluate whether a person of ordinary skill in the art would have
`
`considered certain technologies and prior art to be relevant or material to
`
`determining the validity of the claims at issue.
`
`10. All of the opinions I express in this Declaration have been made from
`
`
`
`6
`
`FORD Ex. 1103, page 11
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`the standpoint of a person of ordinary skill. Based on my experience, it is my
`
`opinion that the person of ordinary skill in the field of the ’839 Patent would be
`
`expected to have at least a bachelor’s degree in engineering and at least five years
`
`of experience in the field of internal combustion engine design and controls.
`
`Individuals with different education and additional experience could still be of
`
`ordinary skill in the art if that additional experience compensates for a deficit in
`
`their education and experience stated above. I consider myself a person of ordinary
`
`skill in the art as of at least November 2004 and continuing through the filing date
`
`of the patent at issue. Through my work with undergraduates and through my
`
`instruction of the undergraduate internal combustion engine class, I was also able
`
`to judge their competency in appreciating internal combustion engine technology.
`
`11. My opinions are based on my experience and knowledge and the
`
`information I have reviewed as of the date of this Declaration. In connection with
`
`my analysis, I have reviewed the exhibits listed in the above list of exhibits as well
`
`as each of the items referenced herein. My opinions directed to the invalidity of the
`
`challenged claims are based, at least in part, on the following prior art publications:
`
`•
`
`“Bromberg” (Ex. 1140), which is U.S. Patent No. 7,225,787, which was
`
`filed in the United Sates on Apr. 6, 2005, and issued on June 5, 2007; and
`
`•
`
`“Lewis” (Ex. 1141), which is U.S. Patent No. 7,694,666, which was filed in
`
`the United Sates on July 21, 2008, and issued on April 13, 2010.
`
`
`
`7
`
`FORD Ex. 1103, page 12
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`12.
`
`I am being compensated for my time spent on the present matter at my
`
`standard consulting rate of $350 per hour. My compensation is not in any way
`
`contingent on my performance, the result of this proceeding, or any of the issues
`
`involved therein. I am also being reimbursed for expenses incurred as a result of
`
`activities performed as an expert.
`
`III. Legal Understandings
`
`A. Claim Interpretation
`
`13. My opinions concern what I believe a person of ordinary skill in the
`
`art would have understood the meaning of certain claim terms to be based on the
`
`patent documents. I use the legal principles below, of which I have been informed
`
`by counsel, as a guide in formulating my opinions.
`
`14.
`
`I understand that it is a basic principle of patent law that assessing the
`
`validity of a patent claim involves a two-step analysis. In the first step, the claim
`
`language must be properly construed to determine its scope and meaning. In the
`
`second step, the claim, as properly construed, must be compared to the alleged
`
`prior art to determine whether the claim is valid.
`
`15. My methodology for determining the meaning of claim phrases was
`
`first to study the patent carefully. In particular, I studied the claims themselves,
`
`followed by the background, detailed specification, figures, and other patent
`
`content. Next, I reviewed the prosecution history looking for any clarifications or
`
`
`
`8
`
`FORD Ex. 1103, page 13
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`limitations that might be attached to claim terms. In some circumstances, I looked
`
`at other documents, such as references applied by the patent office.
`
`16.
`
`I understand that in an inter partes review, claim terms are to be given
`
`their ordinary and customary meaning as understood by a person of ordinary skill
`
`in the art in the context of the entire disclosure at the time of the invention. I
`
`understand that one must be careful not to read a specific embodiment appearing in
`
`the written description into the claim if the claim language is broader than the
`
`embodiment. I further understand that any special definition for a claim term must
`
`be set forth with reasonable clarity, deliberateness, and precision.
`
`17.
`
`I understand that this standard is the same as that used in United
`
`States district courts, in which claim terms are given their ordinary and customary
`
`meaning as would be understood by a person of ordinary skill in the art at the time
`
`of the invention having taken into consideration the language of the claims, the
`
`specification, and the prosecution history of record under the Phillips claim
`
`construction standard.
`
`B. Prior Art
`
`18.
`
`It is my understanding that information which satisfies one of the
`
`categories of prior art set forth in 35 U.S.C. § 102 may be used in an invalidity
`
`analysis under §§ 102 or 103. If information is not properly classified as prior art
`
`under one of the subsections of § 102 of the Patent Code, then it may not form the
`
`
`
`9
`
`FORD Ex. 1103, page 14
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`basis of an anticipation or obviousness determination. It is also my understanding
`
`that, for inter partes review, applicable prior art is limited to patents and printed
`
`publications.
`
`C. Anticipation
`
`19.
`
`I understand that to anticipate a patent claim under 35 U.S.C. § 102, a
`
`single asserted prior art reference must disclose each and every element of the
`
`claimed invention, either explicitly or inherently, to a person of ordinary skill in
`
`the art. I understand that a disclosure of an asserted prior art reference can be
`
`“inherent” if the missing element is necessarily present or is the inevitable outcome
`
`of the process and/or thing that is explicitly described in the asserted prior art
`
`reference.
`
`D. Obviousness
`
`20.
`
`I am also informed and understand that a patent claim is invalid under
`
`35 U.S.C. § 103 if the differences between the invention and the prior art are such
`
`that the subject matter as a whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art to which the subject matter
`
`pertains. Obviousness, as I understand, is determined based on the scope and
`
`content of the prior art, the differences between the prior art and the claim, the
`
`level of ordinary skill in the art, and secondary indications of non-obviousness to
`
`the extent they exist.
`
`
`
`10
`
`FORD Ex. 1103, page 15
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`21.
`
`I understand that whether there are any relevant differences between
`
`the prior art and the claimed invention is to be analyzed from the view of a person
`
`of ordinary skill in the art at the time of the invention. A person of ordinary skill in
`
`the art is a hypothetical person who is presumed to be aware of all of the relevant
`
`art at the time of the invention. The person of ordinary skill is not an automaton,
`
`and may be able to fit together the teachings of multiple patents employing
`
`ordinary creativity and the common sense that familiar items may have obvious
`
`uses in another context or beyond their primary purposes.
`
`22.
`
`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I understand that I must consider the impact, if any, of
`
`such differences on the obviousness or non-obviousness of the invention as a
`
`whole, not merely some portion of it. The person of ordinary skill faced with a
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`23.
`
`I understand that an invention would have been obvious if a person of
`
`ordinary skill in the art, facing the wide range of needs created by developments in
`
`the field, would have seen an obvious benefit to the solutions tried by the
`
`applicant. When there is a design need or market pressure to solve a problem and
`
`there are a finite number of identified, predictable solutions, it would be obvious to
`
`a person of ordinary skill to try the known options. If a technique has been used to
`
`
`
`11
`
`FORD Ex. 1103, page 16
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`

`improve one device, and a person of ordinary skill in the art would recognize that it
`
`would improve similar devices in the same way, using the technique would have
`
`been obvious.
`
`24.
`
`I understand that I do not need to look for precise teaching in the prior
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`art directed to the subject matter of the claimed invention. I understand that I may
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`take into account the inferences and creative steps that a person of ordinary skill in
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`the art would have employed in reviewing the prior art at the time of the invention.
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`For example, if the claimed invention combined elements known in the prior art
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`and the combination yielded results that were predictable to a person of ordinary
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`skill in the art at the time of the invention, then this evidence would make it more
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`likely that the claim was obvious. On the other hand, if the combination of known
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`elements yielded unexpected or unpredictable results, or if the prior art teaches
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`away from combining the known elements, then this evidence would make it more
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`likely that the claim that successfully combined those elements was not obvious. I
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`understand that hindsight must not be used when comparing the prior art to the
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`invention for obviousness.
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`1. Motivation to Combine
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`25.
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`I understand that obviousness may be shown by demonstrating that it
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`would have been obvious to modify what is taught in a single piece of prior art to
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`create the patented invention. Obviousness may also be shown by demonstrating
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`that it would have been obvious to combine the teachings of more than one item of
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`prior art. I understand that a claimed invention may be obvious if some teaching,
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`suggestion, or motivation exists that would have led a person of ordinary skill in
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`the art to combine the invalidating references. I also understand that this suggestion
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`or motivation may come from sources such as explicit statements in the prior art,
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`or from the knowledge of a person having ordinary skill in the art. Alternatively,
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`any need or problem known in the field at the time and addressed by the patent
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`may provide a reason for combining elements of the prior art. I also understand
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`that when there is a design need or market pressure, and there are a finite number
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`of predictable solutions, a person of ordinary skill may be motivated to apply both
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`his skill and common sense in trying to combine the known options in order to
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`solve the problem.
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`26.
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`In determining whether a piece of prior art could have been combined
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`with other prior art or with other information within the knowledge of a person
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`having ordinary skill in the art, the following are examples of approaches and
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`rationales that may be considered:
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`• Combining prior art elements according to known methods to yield
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`predictable results;
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`• Simple substitution of one known element for another to obtain predictable
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`results;
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`• Use of a known technique to improve similar devices, methods, or products
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`in the same way;
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`• Applying a known technique to a known device, method, or product ready
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`for improvement to yield predictable results;
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`• Applying a technique or approach that would have been “obvious to try”
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`(choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success);
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`• Known work in one field of endeavor may prompt variations of it for use
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`in either the same field or a different one based on design incentives or
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`other market forces if the variations would have been predictable to a
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`person having ordinary skill in the art; or
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`• Some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine
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`prior art reference teachings to arrive at the claimed invention.
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`E. Date of Invention
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`27.
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`I understand that absent evidence of an invention date prior to the
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`filing date of a patent, the invention date of the patent is presumed to be its filing
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`date. A prior invention requires a complete conception of the invention and a
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`reduction to practice of that invention. The patentee has the burden of establishing
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`a date of conception earlier than the filing date of the patent.
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`28.
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`I understand that conception is the formation in the mind of the
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`inventor of a definite and permanent idea of the complete and operative invention.
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`I also understand that conception must be proved by corroborating evidence which
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`shows that the inventor disclosed to others his complete thought expressed in such
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`clear terms as to enable those skilled in the art to make the claimed invention. The
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`inventor must also show possession of every feature recited in the claims, and that
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`every limitation was known to the inventor at the time of the alleged conception.
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`Furthermore, the patentee must show that he or she has exercised reasonable
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`diligence in later reducing the invention to practice, either actual or constructive.
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`The filing of a patent application can serve as a constructive reduction to practice.
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`29. A continuation-in-part is an application filed during the lifetime of an
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`earlier nonprovisional application, repeating some substantial portion or all of the
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`earlier nonprovisional application and adding matter not disclosed in the earlier
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`nonprovisional application. A continuation-in-part application allows an applicant
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`to claim later additional enhancements or embodiments after the parent application
`
`was filed. For a continuation-in-part application, claims to subject matter that was
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`also disclosed in the parent are entitled to the parent’s priority date, while claims to
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`the additional subject matter that is present in the continuation-in-part application
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`are only entitled to the filing date of the continuation-in-part application.
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`IV. Technical Background
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`30. Historically, engines have relied on multiple fuel delivery strategies,
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`including direct injection and port fuel injection.
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`
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`31. Fuel delivery strategies for internal combustion engines have
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`dramatically improved over the last 30 years to increase engine efficiency and to
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`reduce emissions. Such fuel delivery strategies work in conjunction with catalysts
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`to remove major exhaust pollutants. Carbureted engines introduced fuel into the air
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`intake at the intake manifold and distributed the air/fuel mixture to all cylinders.
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`Manifold or throttle body injection functioned in a similar manner such that one or
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`two injectors fed fuel to a manifold where it was combined with air and fed to all
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`cylinders. Port fuel injection was later developed with a fuel injector dedicated to
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`each cylinder in an intake runner or port that led to the intake valve of the
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`respective cylinder. The configuration used in port fuel injection allowed greater
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`control over the fuel delivery and more accurate air/fuel mixtures to each cylinder.
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`High pressure injectors that deliver fuel into the cylinder have a long history in
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`compression ignition engine design. With the advance of fuel injection
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`technologies, including high-pressure injectors that could withstand high
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`temperatures, direct fuel injection in spark ignition engines became possible and
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`was used to provide better volumetric efficiency and to provide air charge cooling
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`through vaporization of the fuel. Direct fuel injection was also capable of reducing
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`certain engine emissions and increasing engine energy efficiency and power
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`density. In consequence, direct fuel injection enabled attractive reduction of engine
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`
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`size and displacement, assisting in meeting corporate average fuel economy
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`(CAFE) requirements.
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`32. Direct fuel injection provided many advantages over port fuel
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`injection, including charge cooling and emissions control, but it also introduced
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`complications, such as cylin