Ex Parte Serkh et al

Patent Trial and Appeal Board

Sep 25, 2017

14515114 (P.T.A.B. Sep. 25, 2017)

United States Patent and Trademark Office
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.
14/515,114 10/15/2014 Alexander Serkh O14-063A 9754
26683 7590 09/26/2017
OATFS torpor atton
EXAMINER
IP LAW DEPT. 10-A3 LIU, HENRY Y
1551 WEWATTA STREET
DENVER, CO 80202 ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
09/26/2017 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 ALEXANDER SERKH and DEAN SCHNEIDER
Appeal 2017-002493
Application 14/515,114
Technology Center 3600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
JOYCE CRAIG, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge ST. JOHN
COURTENAY III.
Opinion Concurring filed by Administrative Patent Judge JOYCE CRAIG.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
STATEMENT OF THE CASE
Appellants’ claimed invention generally “relates to automotive
accessory belt drive systems (ABDS drives).” More particularly, the
invention relates to a two-speed belt drive system (Spec. 1).
Appeal 2017-002493
Application 14/515,114
Representative Claim
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A two speed belt drive system comprising:
a crankshaft module (200) comprising a first pulley (213) engaging
a first belt (10) and a second pulley (206) engaging a second belt
(20);
a clutch module (100) engaging the first belt and the second belt;
the second belt (20) engaged to an engine accessory;
the crankshaft module having a clutch spring (205) for frictional
driving of the second pulley; and
the clutch module having a clutch (57) for selectively driving the
second belt.
Rejections
A. Claims 1, 2, and 4—17 are rejected under (AIA) 35 U.S.C. § 103
based upon the teachings and suggestions of Serkh (US
2005/0215366 Al; published Sept. 29, 2005) in view of Hoff (US
3,581,853; issued June 1, 1971).
B. Claim 3 is rejected under (AIA) 35 U.S.C. § 103 as being
unpatentable over Serkh in view of Hoff and further in view of
Antchak et al. (US 2006/0144664 Al; published July 6, 2006)
(hereinafter “Antchak”).
2
Appeal 2017-002493
Application 14/515,114
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of rejection
A of claims 1, 2, and 4—17 on the basis of representative independent claim
1. See 37 C.F.R. § 41.37(c)(l)(iv). We address rejection B of claim 3
separately, infra. To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants ’ Contentions
Appellants contend, inter alia, the Examiner’s proffered combination
of Serkh and Hoff is improper because the Examiner relies on a rationale
derived from Appellants’ own Specification:
Neither SERKH nor HOFF teaches the elements by which the
spring of HOFF can be combined with the dual pulley of
SERKH, except through application of hindsight by reference
to the specification of SERKH. For example, the dual pulley
unit of SERKH does not comprise a cylindrical surface to
frictionally engage the spring of HOFF. Further, in order to
utilize a wrap spring a journal bearing must also be present to
rotationally connect and locate the two pulleys since a wrap
spring does not provide means to align or locate rotating
elements relative to each other. SERKH does not teach a journal
bearing, instead only teaching the one-way clutch.
(App. Br. 10) (emphasis added).
Appellants further contend:
It is also relevant that HOFF does not teach pulleys, but instead
relates to coaxial clutched surfaces of shafts of equal diameter
(72, 78), see HOFF Figure 4, partial section below and 3: 13-16.
. . . Acquiring a cylindrical frictional surface and journal
bearings to locate the pulleys would require a re-design of
SERKH. Respectfully, the need for redesign indicates the
examiner is using the pending invention to inform the prior
art, which is inappropriate.
3
Appeal 2017-002493
Application 14/515,114
(App. Br. 11) (emphasis added).
The Examiner disagrees:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to use a wrap spring as a one
way clutch to produce the two speed transmission at a lower
cost. The wrap spring in HOFF, which is commonly used as a
one-way clutch in general, is also used in this instance for a two
speed transmission to accomplish the same function as the spring
in applicant's device. And the only required change in
componentry is that the pulley would engage the wrap spring in
HOFF in its inner diameter surface while the hub would only
engage an axial half of the inner diameter surface [,] which is a
change within the capabilities of one of ordinary skill in the art.
In addition, applicant has not presented any evidence that the
replacement of one type of one-way clutch with another known
type of one-way clutch (wrap spring) would require knowledge
greater than that of one of ordinary skill in the art.
(Ans. 3) (emphases added).
ANAFYSIS
Issue: Under § 103, did the Examiner err by relying upon
impermissible hindsight in providing a rationale to modify Serkh with the
teachings of Hoff?
Regarding Appellants’ hindsight argument (App. Br. 10-11), we are
cognizant that our reviewing courts have not established a bright-line test for
hindsight. Prior to KSR International Co. v. Teleflex, Inc., 550 U.S. 398
(2007), the Federal Circuit guided that “[e]ven when obviousness is based
on a single prior art reference, there must be a showing of a suggestion or
motivation to modify the teachings of [the] reference.” In re Kotzab,
217 F.3d 1365, 1370 (Fed. Cir. 2000).
4
Appeal 2017-002493
Application 14/515,114
In KSR, the U.S. Supreme Court guides that “[a] factfinder should be
aware, of course, of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421
(citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)).
The Supreme Court also qualified the issue of hindsight by stating: “[rjigid
preventative rules that deny factfinders recourse to common sense, however,
are neither necessary under our case law nor consistent with it.” Id. KSR
guides that to be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
More recently, the Federal Circuit has provided additional guidance to
the Board against an overly expansive application of common sense:
Absent some articulated rationale, a finding that a
combination of prior art would have been “common
sense” or “intuitive” is no different than merely stating
the combination “would have been obvious.” Such a
conclusory assertion with no explanation is inadequate to
support a finding that there would have been a motivation
to combine. This type of finding, without more, tracks the
ex post reasoning KSR warned of and fails to identify any
actual reason why a skilled artisan would have combined
the elements in the manner claimed. See 550 U.S. at 418,
421, 127 S.Ct. 1727.
In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017).
Here, the Examiner finds Serkh teaches all that is claimed but a clutch
spring. (Final Act. 2—3). The Examiner finds and concludes: “HOFF
teaches a clutch spring (74). It would have been obvious to one of ordinary
skill in the art at the time the invention was made to change the clutch in
5
Appeal 2017-002493
Application 14/515,114
SERKH such that it is a clutch spring as in HOFF to create a durable and
cost effective one way clutch.” (Final Act. 3) (emphasis added).1
Hindsight Balancing Test2
Post-KSR, we see the hindsight question before us as a balancing test.
We decide the question of whether the Examiner’s proffered modification of
Serkh’s electromagnetic clutch 11 (133), with Hoff’s clutch spring 74 (Fig.
4, col. 2,1. 21), is merely:
1 The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court reaffirmed:
‘“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting Kahn, 441 F.3d at 988).
2 See In re Cree, Inc., 818 F.3d 694, 702, n.3 (Fed. Cir. 2016) (where the
Board applied the hindsight balancing test) (“Cree argues that the Board's
rejection was based on ‘impermissible hindsight.’ That argument, however,
is essentially a repackaging of the argument that there was insufficient
evidence of a motivation to combine the references. It is fully answered by
the Board’s observation that ‘the weight of the evidence shows that the
proffered combination is merely a predictable use of prior art elements
according to their established functions.’”); see also Ex Parte Cree, Inc.
Patent Owner & Appellant, APPEAF 2014-007890, 2014 WF 6664878, at
*17 (PTAB, Nov. 21, 2014). We note the hindsight balancing test has been
applied by various panels in over thirty PTAB opinions, mailed over a
number of years, as of the mailing date of this Opinion.
6
Appeal 2017-002493
Application 14/515,114
(1) “the predictable use of prior art elements according to their
established functions” (KSR, 550 U.S. at 417), consistent with common
sense; or,
(2) would an artisan have reasonably modified Serkh’s clutch system
with Hoffs clutch spring in the manner proffered by the Examiner (Final
Act. 3) but for having the benefit of Appellants’ Specification and claims to
use as a guide? 3
At the outset, we note that one of the inventors of record (Alexander
Serkh) in the application on appeal is also the single named inventor of the
Serkh ‘366 reference relied upon by the Examiner. However, we find Serkh
‘366 is available as prior art (filed March 2004, published September 2005),
because the effective filing date of the application on appeal is October 15,
2014.
3 “Care must be taken to avoid hindsight reconstruction by using ‘the patent
in suit as a guide through the maze of prior art references, combining the
right references in the right way so as to achieve the result of the claims in
suit.’” Grain Processing Corp. v. American-Maize Prods. Co., 840 F.2d
902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip Co. v. United States,
702 F.2d 1005, 1012 (Fed. Cir. 1983)). Hindsight is impermissible when an
Examiner rejects an application in reliance upon teachings not drawn from
any prior art disclosure, but from the Appellants’ own disclosure. See In re
Deminski, 796 F.2d 436, 443 (Fed. Cir. 1986); W.L. Gore &Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) cert, denied, 469 U.S.
851 (1984); Grain Processing Corp. v. American Maize-Products Co., 840
F.2d 902, 907 (Fed. Cir. 1988). “Obviousness cannot be established by
hindsight combination to produce the claimed invention.” In re Dance, 160
F.3d 1339, 1343 (Fed. Cir. 1998).
7
Appeal 2017-002493
Application 14/515,114
Because Serkh ‘366 qualifies as prior art, we find it is not hindsight to
rely on the specification of the Serkh ’366 reference, as urged by Appellants:
“Neither SERKH nor HOFF teaches the elements by which the spring of
HOFF can be combined with the dual pulley of SERKH, except through
application of hindsight by reference to the specification of SERKH.”
(App. Br. 10) (emphasis added).
Appellants also contend the references are not properly combined
because Serkh does not teach a journal bearing, and instead only teaches a
one-way clutch. (App. Br. 11). Appellants urge that a journal bearing would
be required to effect the combination with Hoff because “in order to utilize a
wrap spring a journal bearing must also be present to rotationally connect
and locate the two pulleys since a wrap spring does not provide means to
align or locate rotating elements relative to each other.” (Id.).
However, Appellants provide no evidence in support.4 Moreover, the
claims before us on appeal are silent regarding any mention of a journal
bearing. Regarding Appellants observation that “SERKH does not teach a
journal bearing, instead only teaching the one-way clutch” (App. Br. 10), we
note Hoff teaches a two-speed clutch system incorporating a bearing sleeve
71 (Fig. 5, col. 2,1. 19) and a bearing 50 (Fig. 4, col. 3,1. 56), evidencing
4 It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence). See also Manual of Patent Examining Procedure (MPEP) § 2145
(9th ed. Nov. 2015) (“Attorney argument is not evidence unless it is an
admission, in which case, an examiner may use the admission in making a
rejection.”).
8
Appeal 2017-002493
Application 14/515,114
that such bearings were familiar elements to persons of ordinary skill in the
art at the time of the invention.5 Instead of the multiple pulleys and the two
belts used by Serkh (Figs. 1—2), Hoffs system uses sprockets and two drive
chains (Figs. 3—4), but is only relied on by the Examiner for teaching a
clutch spring 74. (Final Act. 3; see also Hoff, Fig. 4).
The Supreme Court guides: “a combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 401. Moreover,
substitution of components does not destroy the principle of operation where
it does not destroy the overall principle of operation of the device. In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
Appellants’ challenge to the references individually is not convincing
of error in the Examiner’s legal conclusion of obviousness because all of the
features of the secondary reference need not be bodily incorporated into
the primary reference. Consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA
1981). The artisan is not compelled to blindly follow the teaching of one
prior art reference over the other without the exercise of independent
judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984).
5 The person of ordinary skill in the art [“PHOSITA”] is a hypothetical
person who is presumed to know the relevant prior art.” In re GPAC, 57
F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-
Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
9
Appeal 2017-002493
Application 14/515,114
The Supreme Court provides additional guidance that the conclusion
of obviousness can be based on the interrelated teachings of multiple
patents, the effects of demands known to the design community or present in
the marketplace, and the background knowledge possessed by a person
having ordinary skill in the art, and an obviousness “analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick
Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Further, Appellants have not provided persuasive evidence that
combining the respective teachings of Serkh and Hoff (as proffered by the
Examiner — Final Act. 3) would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” or that such a combination would have
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).6
6 See Jonathan J. Darrow, “The Neglected Dimension of Patent Law's
PHOSITA Standard,” 23 Harv. J.L. & Tech. 227 (2009) (“Despite its new
name, the PHOSITA standard itself traces its origins to nineteenth century
case law. In the landmark 1850 case of Hotchkiss v. Greenwood, the
Supreme Court held unpatentable an improvement on a doorknob,
explaining that ‘unless more ingenuity and skill... were required [to make
the invention] ... than were possessed by an ordinary mechanic acquainted
with the business, there was an absence of that degree of skill and ingenuity
which constitute essential elements of every invention. ’ Other cases
described the concept in terms of ‘ordinary skill,’ ‘ordinary mechanical
knowledge,’ or similar language.”
10
Appeal 2017-002493
Application 14/515,114
Nor have Appellants provided any objective evidence of secondary
considerations, which our reviewing court guides, “operates as a beneficial
check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). We additionally note
Appellants have not filed a Reply Brief to rebut the Examiner’s responsive
clarifications and findings in the Answer.
Therefore, on this record, we find the Examiner provided sufficient
evidence of a predictable result from combining the familiar elements of
Serkh and Hoff (prong 1), which we find outweighs any purported indicia of
impermissible hindsight (prong 2). Moreover, we find the Examiner
provides sufficient articulated reasoning with a rational underpinning to
support the legal conclusion of obviousness: “It would have been obvious to
one of ordinary skill in the art at the time the invention was made to change
the clutch in SERKH such that it is a clutch spring as in HOFF to create a
durable and cost effective one way clutch.” (Final Act. 3). (emphasis
added).
On this record, we find Appellants have not shown that the invention
as recited in claim 1 is “more than the predictable use of prior art elements
according to their established functions” so as to be non-obvious under KSR,
550 U.S. at 417. Therefore, for the reasons discussed above, Appellants
have not provided arguments supported by a preponderance of the evidence
to persuade us the Examiner erred.
Accordingly, for essentially the same reasons articulated by the
Examiner in the Answer (3), as further discussed above, we sustain the
Examiner’s rejection of representative independent claim 1. Grouped claims
11
Appeal 2017-002493
Application 14/515,114
2 and 4—17 (not separately argued) fall with claim 1. See Grouping of
Claims, supra.
Rejection B of Dependent Claim 3
Regarding claim 3, Appellants contend:
As noted for claim 1, the combination of SERKH and HOFF
requires hindsight. ANTCHAK is only offered for the purpose of
teaching a spring loaded in the unwinding direction. ANTCHAK
does not cure the deficiencies of the combination of SERKH and
HOFF as noted in the foregoing argument, see paragraph 1.
Therefore, the combination of SERKH, HOFF and ANTCHAK
does not render claim 3 obvious.
(App. Br. 12).
However, we find no deficiencies regarding the base combination of
Serkh and Hoff, for the same reasons discussed above regarding rejection A
of claim 1. Therefore, we sustain the Examiner’s rejection B of claim 3.
Conclusion
The Examiner did not err in rejecting claims 1—17 under 35 U.S.C.
§103.
DECISION
We affirm the Examiner’s rejections of claims 1—17 under § 103.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
12
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER SERKH and DEAN SCHNEIDER
Appeal 2017-002493
Application 14/515,114
Technology Center 3600
CRAIG, Administrative Patent Judge, concurring.
I respectfully concur with the majority’s decision with respect to the
Examiner’s final rejections of claims 1—17 under 35 U.S.C. § 103. I agree
with and would have adopted the Examiner’s findings of facts and
conclusions set forth in the Answer and in the Action from which this appeal
was taken, as Appellants have not persuasively rebutted or otherwise shown
error in them.
I am not persuaded by Appellants’ argument that the combination of
Serkh and Hoff is the result of improper hindsight. Appellants have not
identified knowledge gleaned only from the present application that was not
within the level of ordinary skill at the time the claimed invention was made.
See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). The Examiner has set
forth articulated reasoning with rational underpinnings for the combination.
Appeal 2017-002493
Application 14/515,114
See Final Act. 3. Moreover, Appellants have not provided objective
evidence of secondary considerations, which “operates as a beneficial check
on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc.,
725 F.3d 1341, 1352 (Fed. Cir. 2013).
2