Ex Parte Ali et al

Patent Trial and Appeal Board

Jul 18, 2013

12012118 (P.T.A.B. Jul. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/012,118 01/31/2008 Imtiaz Ali P07-164A 2074
26683 7590 07/18/2013
THE GATES CORPORATION
IP LAW DEPT. 10-A3
1551 WEWATTA STREET
DENVER, CO 80202
EXAMINER
REESE, ROBERT T
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
07/18/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte IMTIAZ ALI and ALEXANDER SERKH
____________

Appeal 2011-007684
Application 12/012,118
Technology Center 3600
____________

Before: WILLIAM V. SAINDON, WILLIAM A. CAPP and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3, 4, 6, 7, 9, 10, 12 and 14-24. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-007684
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THE INVENTION
Appellants’ invention relates to a torsional decoupler with a frictional
member interposed between a hub and pulley. Spec. 1. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A torsional decoupler comprising:
a hub having a hub surface, the hub surface having a
profile;
a pulley having a pulley surface, the pulley surface
having a profile;
a frictional member disposed between the hub surface
and the pulley surface, the frictional member frictionally
engaging at least one of the pulley surface or the hub surface;
and
the frictional member transmitting a torque between the
hub and the pulley such that there is a continuous angular
progression between the hub and pulley as a torque is
transmitted.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

The following rejections are before us for review:
1. Claims 1, 3, 4, 6, 7, 9, 10, 12 and 14-20 are rejected under 35
U.S.C. § 112, first paragraph, as based on a disclosure which is not enabling.

1The Examiner also relies on an English language counterpart of
Gouadec, namely, US 2008/0280709 A1, published November 13, 2008.
Ans. 11.
Mevissen
Gouadec1
US 6,083,130
WO 2006/025166 A1
Jul. 4, 2000
Sep. 3, 2006
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2. Claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20 are rejected under
35 U.S.C. § 102(b) as being anticipated by Gouadec.
3. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Gouadec.
4. Claims 21-24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gouadec and Mevissen.
OPINION
The Section 112 Non-enablement Rejection
The Examiner’s non-enablement rejection focuses primarily on the
term “continuous angular progression” in claim 1. Ans. 3-4. According to
the Examiner, a more complete definition of “continuous angular
progression” and how it would be distinguished from normal, stress induced
rotation of the pulley around the hub would be required to demonstrate the
patentability of the subject matter. While the Examiner acknowledges that
Appellants have discussed what continuous angular progression is, the
Examiner finds that Appellants have failed to adequately discuss how the
invention is to be implemented. Ans. 9-10. In particular, the Examiner
faults the Specification for failing to adequately define structure or material
that encourage the phenomenon of continuous angular progression to occur
or to limit it to a predetermined amount. Ans. 10. In the absence of a
detailed teaching disclosure as to how the invention is implemented, the
Examiner finds that the Appellants’ Specification fails to patentably
differentiate between the instant invention and any other pulley that uses
frictional contact between its components to transmit torque from the hub to
the pulley. Id.
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Appellants traverse the Examiner’s rejection by arguing that language
on pages 10 and 11 of the Specification provides an adequate enabling
disclosure. App. Br. 7-8. Appellants point to language describing a
frictional relationship between surface 21 (the outer surface of frictional
member 20) and surface 31 (the inner surface of pulley 30). Id. Appellants
quote language that the hub and pulley are frictionally engaged such that a
predetermined amount of micro-slip occurs resulting in relative rotation
between the hub and pulley for each rotation of the decoupler. App. Br. 7.
Appellants refer to this phenomenon of relative rotation as “angular
progression.” Id. Appellants argue that the Specification fully describes that
the angular progression is “continuous.” Reply Br. 2.
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (internal citation omitted). Factors to consider include:
(1) the quantity of experimentation necessary,
(2) the amount of direction or guidance presented,
(3) the presence or absence of working examples,
(4) the nature of the invention,
(5) the state of the prior art,
(6) the relative skill of those in the art,
(7) the predictability or unpredictability of the art, and
(8) the breadth of the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Enablement is a question
of law based upon underlying facts. Id. at 735. The Federal Circuit has
further instructed that:
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When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.
Wright, 999 F.2d at 1561-62.
Appellants disclose a frictional member interposed between a hub and
a pulley. See Fig. 1. The frictional member may be comprised of plastic,
natural or synthetic rubber, or any conventional thermoplastic elastomeric
composition. Spec. 5. According to the Appellants, the mechanism
underlying the phenomenon of continuous angular progression is not
attributable to the resilient material characteristics of the frictional
member 20. Spec. 11.
The Appellants’ invention is a relatively simply device. Instead of a
one-piece pulley, Appellants’ pulley essentially has three pieces, namely: (1)
an inner hub; (2) an outer pulley; and (3) an intermediate structure
interposed between the hub and pulley that slips when the pulley is subject
to rotational force. The various pieces are spaced close enough together that
friction is generated when slippage occurs. Appellants provide no
operational definition of “continuous” that narrows the scope of magnitude
of the slippage or the duration thereof.2 Under the circumstances, we think
that the Appellants’ Specification, taken together with the accompanying

2 During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
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drawings, supports Appellants’ position of enablement by a preponderance
of the evidence.
Accordingly, we do not sustain the Examiner’s non-enablement
rejection of claims 1, 3, 4, 6, 7, 9, 10, 12 and 14-20.
Anticipation of
Claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20 by Gouadec
Appellants argue claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20 as a
group. App. Br. 8-9. We select claim 1 as representative of the group. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Gouadec discloses all of the elements of
claim 1. Ans. 4. The Examiner finds that Gouadec’s frictional member
disposed between the hub surface and pulley surface frictionally engages the
pulley surface and/or the hub surface. Id. citing Gouadec, Fig. 1. More
particularly, the Examiner finds that the frictional member transmits torque
between the hub and pulley such that there is a continuous angular
progression as the torque increases, further noting that such is an inherent
property when the assembly is rotating and transmitting torque. Id.
Appellants traverse the Examiner’s rejection by arguing that Gouadec
does not teach a continuous angular progression between the hub and pulley
as torque is transmitted. App. Br. 9. Appellants argue that relative angular
movement between elements 20 and 40 of Gouadec is limited to a range
bounded by the radial movement of each ball 41 within each slot 40c and,
therefore, not continuous. Id.
The Examiner responds by stating that the frictional connection
involved in the Examiner’s rejection is not between elements 20 and 40 of
Gouadec, pointing out that Figures 3, 5, 6 and 8 of Gouadec depict the
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placement of a torque transmission ring 21. Ans. 10-11. The Examiner
explains that the accompanying disclosure in paragraphs 27 and 28 of the
English language version of Gouadec indicates a frictional connection
between elements 20 and 30 through torque transmission ring 21. Ans. 11.
The Examiner states that the frictional connection is the same type of
connection as claimed in claim 1. Id. The Examiner notes that Appellants
have failed to differentiate the structure of the frictional connection of the
instant invention vis-à-vis the structure of Gouadec’s element 21. Id. Thus,
reasons the Examiner, Gouadec and the instant invention, should exhibit the
same behavior. Id.
In reply, Appellants accuse the Examiner of relying on similarity and
supposition. Reply Br. 2. Appellants argue that such is not an appropriate
test for an anticipation rejection. Id.
We think that the Examiner has articulated a sound basis for believing
that the structure of the instant invention and Gouadec are the same and that,
therefore, they also behave in the same manner. This is sufficient to satisfy
the Examiner’s burden of establishing a prima facie case of anticipation,
thereby shifting the burden of proof to the Appellants. In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing
that the products of the applicant and the prior art are the same, the applicant
has the burden of showing that they are not.”). Apart from attacking the
Examiner’s finding in conclusory fashion, Appellants have not persuaded us,
with either evidence or technical reasoning, that the Examiner is incorrect.
Accordingly, we sustain the Examiner’s anticipation rejection of
claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20.
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Unpatentability of Claim 18
Claim 18 depends from independent claim 17 that we have previously
found to be anticipated. Claim 18 adds the limitation: “wherein the hub
surface is toothed and the pulley surface is ribbed.” Clms. App’x. The
Examiner finds that Gouadec discloses a ribbed pulley surface, but not a
toothed hub surface. Ans. 7. The Examiner concludes that it would have
been obvious to place a toothed profile on the hub. Id.
Claim 17 is obvious. See In re Fracalossi, 681 F.2d 792, 794 (CCPA
1982) (A disclosure that anticipates under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 U.S.C. § 103 since anticipation is the epitome
of obviousness). Appellants have not raised any new arguments for the
patentability of claim 18 apart from the arguments previously considered
with respect to independent claims 1, 10 and 17. App. Br. 9. Accordingly,
we sustain the rejection of claim 18 for the same reasons as with claim 17.
Unpatentability of Claims 21-24
Claims 21-24 depend directly or indirectly from independent claim
17. Appellants have not raised any new arguments for the patentability of
claims 21-24 apart from the arguments previously considered with respect to
independent claims 1, 10 and 17. Accordingly, we sustain the rejection of
claims 21-24 for the same reasons as with claim 17.

DECISION
The decision of the Examiner to reject claims 1, 3, 4, 6, 7, 9, 10, 12
and 14-20 under 35 U.S.C. § 112, first paragraph, as non-enabled is
REVERSED.
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The decision of the Examiner to reject claims 1, 3, 4, 6, 7, 9, 10, 12,
14-17, 19 and 20 as anticipated under 35 U.S.C. § 102(b) is AFFIRMED.
The decision of the Examiner to reject claims 18 and 21-24 as
unpatentable under 35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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