Ex Parte Hoffman et al

Patent Trial and Appeal Board

Jun 29, 2018

14282274 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/282,274 05/20/2014
28395 7590 07/03/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Donald Edward Hoffman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83423825 1012
EXAMINER
HLAVKA, DAVID J
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD EDWARD HOFFMAN and
GREGORY DANIEL GOLESKI
Appeal2017-008332
Application 14/282,27 4
Technology Center 3600
Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008332
Application 14/282,274
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals 1 from the
Examiner's decision, as set forth in the Final Office Action dated August 9,
2016 ("Final Act."), rejecting claims 1-23. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claims are directed to an automatic transmission. Claims 1 and
14 are the independent claims on appeal. Claim 1, reproduced below with
disputed limitations italicized for emphasis, is illustrative of the claimed
subject matter:
1. A transmission comprising:
four planetary-gearsets each having gear-elements
including a sun, a carrier, and a ring, wherein the first planetary-
gearset sun is fixedly coupled to a ground and the first planetary-
gearset carrier is fixedly coupled to the second planetary-gearset
rmg;
a first shift-element selectively coupling the second
planetary-gearset carrier to the ground;
a second shift-element selectively coupling the first
planetary-gearset ring to a first one of the third planetary-gearset
gear-elements;
an input fixedly coupled to the second planetary-gearset
sun and to a first one of the fourth planetary-gearset gear-
elements; and
an output fixedly coupled to a second one of the third
planetary-gearset gear-elements.
Ford Global Technologies, LLC ("Appellant") is the applicant
pursuant to 37 C.F.R. § 1.46, and is identified as the real party in interest.
Appeal Brief, dated December 6, 2016 ("Appeal Br."), at 2.
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Application 14/282,274
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Hart US 7,749,127 B2 July 6, 2010
REJECTIONS
The Examiner made the following rejections:
1. Claims 1-23 stand rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement.
2. Claims 1-12, 14--17, and 19 stand rejected under 35 U.S.C.
§ 102(a)(l) as being anticipated by Hart.
Appellant seeks our review of these rejections.
DISCUSSION
Rejection 1: Claims 1-23
as Failing to Comply with the Written Description Requirement
As we understand the Examiner's rejection, the Examiner contends
that the terms "fixedly coupled" and "selectively coupled" (both of which
use the term "unit" in their definitions) are not supported by paragraphs 24--
25 of the Specification as originally filed. Final Act. 2--4; Ans. 15-17.
Appellant does not agree and, in an attempt to clarify the intended claim
scope, attempted to amend paragraphs 24--25 of the Specification to remove
the term "unit." Appeal Br. 7.
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Application 14/282,274
The relevant portion of paragraph 24 of the Specification, with
Appellant's proposed amendment, states:
A group of gear-elements are fixedly coupled to one another if
they are constrained to rotate as a unit have the same speed in all
operating conditions.
The relevant portion of paragraph 25 of the Specification, with
Appellant's proposed amendment, states:
A gear-element or shaft may be selectively coupled to another
gear-element, shaft or to the transmission housing by a shift-
element when the shift-element constrains them to rotate (or to
not rotate) as a unit at the same speed whenever the shift-element
is fully engaged. A shift-element may also be referred to as a
clutch. In the case of selectively coupling two gear-elements,
they are free to rotate at distinct have different speeds when the
clutch is not fully engaged.
We agree with Appellant that "rotate as a unit" is synonymous with
"have the same speed" and "rotate (or to not rotate) at the same speed" as
recited in paragraphs 24--25, respectively.
We do not agree with Appellant that "free to rotate at distinct speeds"
is synonymous with "have different speeds." When two elements are "free"
to rotate at distinct speeds, the elements are free to ( 1) rotate at the same
speed, or (2) rotate at different speeds. Contrary to the proposed
amendment, the elements are not always required to have "different" speeds.
Thus, the Specification as originally filed is broader than Appellant's
proposed amendment. We have not considered whether other portions of the
Specification, if any, support Appellant's proposed amendment.
Thus, the term "fixedly coupled" is supported by paragraph 24, either
as originally filed or under Appellant's proposed amendment. The term
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Application 14/282,274
"selectively coupled" is supported by paragraph 25, as originally filed, but
not under Appellant's proposed amendment.
The rejection of claims 1-23 is sustained.
Rejection 2: Anticipation of Claims 1-12, 14-17, and 19 by Hart
Appellant argues independent claims 1 and 14 as a group. Appeal Br.
4---6. We select claim 1 as the representative claim, and claim 14 stands or
falls with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Hart discloses all of the limitations of claims
1-12, 14--17, and 19, including
(1) "the first planetary-gearset sun (i.e., 22) is fixedly coupled to a
ground (i.e., 60)";
(2) "the first planetary-gearset carrier (i.e., 26) is fixedly coupled to
the second planetary-gearset ring (i.e., 26 fixedly coupled to 54 via 24 and
72)";
(3) "an input (i.e., 17)fixedly coupled to the second planetary-gearset
sun (i.e., 52) and to a first one of the fourth planetary-gearset gear-elements
(i.e., input fixedly coupled to one of fourth planetary-gearset gear-elements
via 52, 57, 58, 54, 72, 24, 27, 70 to either 46, 47, 48, 42 or 44);" and
(4) "an output (i.e., 19)fixedly coupled to a second one of the third
planetary-gearset gear-elements (i.e., 19 fixedly coupled to a second
planetary-gearset gear-element via 44, 48, 47, 42, 74 and one of 32, 37 or 34
not previously selected as the first one of the third planetary-gearset gear-
element)." Final Act. 4--5 (emphasis added).
As Appellant correctly explains, the Specification defines "fixedly
coupled:"
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Application 14/282,274
A group of gear-elements are fixedly coupled to one another if
they are constrained to rotate as a unit in all operating conditions.
Appeal Br. 5 (quoting Spec. i-f 24). The Examiner apparently agrees that the
Specification's definition is binding. See, e.g., Final Act. 10 (stating "Hart
reads on the claimed limitations when applying [Appellant's] non-ordinary
definition of the terms, "fixedly coupled" and "selectively coupled"); Ans.
10.
Appellant asserts that the Examiner's anticipation rejection is
erroneous because the "rejections of independent claims 1 and 14 are
premised on an unreasonably broad construction of the claim term 'fixedly
coupled."' Appeal Br. 4. We do not agree.
We have compared the Examiner's relevant findings regarding the
"fixedly coupled" limitations with Hart's disclosure:
Examiner's Findings Hart
(Final Act. 4--5) (emphasis added)
(emphasis added)
(1) "the first planetary-gearset sun "The sun gear member 22 of the
(i.e., 22) is fixedly coupled to a planetary gear set 20 is continuously
ground (i.e., 60)" connected with the transmission
housing 60." [3:57-59]
(2) "the first planetary-gearset "A second interconnecting member
carrier (i.e., 26) is fixedly coupled to 72 continuously connects the ring
the second planetary-gearset ring gear member 24 of the planetary
(i.e., 26 fixedly coupled to 54 via 24 gear set 20 with the ring gear
and 72)"; member 54 of the planetary gear set
50." [3:64--67]
(3) an input (i.e., 17)fixedly coupled "The input member 17 is
to the second planetary-gearset sun continuously connected with the
(i.e., 52) and to a first one of the sun gear member 52 of the
fourth planetary-gearset gear- planetary gear set 50." [3 :54--55]
elements (i.e., input fixedly coupled
to one of fourth planetary-gearset
gear-elements via 52, 57, 58, 54, 72,
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Application 14/282,274
24, 27, 70 to either 46, 47, 48, 42 or
44); and
(4) "an output (i.e., I9)fixedly
coupled to a second one of the third
planetary-gearset gear-elements
(i.e., 19 fixedly coupled to a second
planetary-gearset gear-element via
44, 48, 47, 42, 74 and one of 32, 37
or 34 not previously selected as the
first one of the third planetary-
gearset gear-element)."
"The output member 19 is
continuously connected with the
ring gear member 44 of the
planetary gear set 40." [3:55-57]
The Examiner's findings are supported by Hart's disclosure, which
describes elements which are "continuously connected" and other elements
which are "selectively connected." See, e.g., Hart 3:54--4:24. Based on
Hart's disclosure, we understand that Hart's usage of "continuously
connected" is synonymous with the term "fixedly coupled" recited in claim
1; that is, Hart's recited gear-elements are constrained to rotate as a unit in
all operating conditions. Appellant does not adequately explain why claim
1 's "fixedly connected" is different from Hart's "continuously connected."
Appellant's argument is not persuasive.
For the reasons above, we sustain the rejection of claim 1. Claim 14
falls with claim 1.
Claims 2-12, 15-17, and 19
Appellant does not present additional arguments addressing
specifically the rejection of claims 2-12, 15-17, and 19. See generally
Appeal Br. 4---6. Thus, we sustain the rejection of claims 2-12, 15-17, and
19 for the reasons set forth above for claims 1 and 14. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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Application 14/282,274
DECISION
For the above reasons, the Examiner's rejection of claims 1-23 under
35 U.S.C. § 112(a) is AFFIRMED.
The Examiner's rejection of claims 1-12, 14--17, and 19 under
35 U.S.C. § 102(a)(l) 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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