Ex Parte Winkelmann et al

Patent Trial and Appeal Board

Aug 12, 2013

10487498 (P.T.A.B. Aug. 12, 2013)

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.
10/487,498 08/20/2004 Stefan Winkelmann LUKP:107US 6756
24041 7590 08/12/2013
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
EXAMINER
KISWANTO, NICHOLAS
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
08/12/2013 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 STEFAN WINKELMANN and BORIS SEREBRENNIKOV
____________________

Appeal 2010-002258
Application 10/487,498
Technology Center 3600
____________________

Before JOHN C. KERINS, STEVEN D. A. McCARTHY, and
EDWARD A. BROWN, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-002258
Application 10/487,498

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STATEMENT OF THE CASE
Stefan Winkelmann and Boris Serebrennikov (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-13.
App. Br. 2. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 1, 12, and 13 are independent. Claim 1 reads:
1. A drivetrain comprising a drive unit, a
transmission having at least one transmission input
shaft and at least one transmission output shaft in
operative connection with at least one driving
wheel, there being provided between the at least
one transmission input shaft and a drive shaft of
the drive unit an automatically actuated friction
clutch whose engagement and disengagement
operations are controlled via a control device at
least as a function of signals of a sensor device that
detects a speed of the transmission input shaft and
a speed of the at least one drive wheel, vibrations
occurring in a torque transmission via frictional
surfaces of the friction clutch being damped,
wherein a variable VS, formed from the speed
n(R) of a transmission output section and the speed
n(G) of the transmission input shaft, functions as a
control parameter for controlling the engagement
and disengagement operations to dampen the
vibrations occurring in the friction clutch.

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REJECTIONS
1. Claims 1-10, 12, and 13 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kosik (US 6,035,984; issued Mar. 14, 2000) and
Schmidt-Brücken (US 5,322,150; issued Jun. 21, 1994).
2. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kosik, Schmidt-Brücken, and Fröhlich (US 6,466,852 B2; issued Oct.
15, 2002).

ANALYSIS
Rejection of claims 1-10, 12, and 13 – Kosik and Schmidt-Brücken
Claims 1-10
Appellants argue claims 1, 2 and 5-10 as a group. App. Br. 5-8. We
select claim 1 as representative of the grouping, and claims 2 and 5-10 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(vii).
Claim 1 is directed to a drivetrain comprising, inter alia, “an
automatically actuated friction clutch whose engagement and disengagement
operations are controlled via a control device at least as a function of signals
of a sensor device that detects a speed of the transmission input shaft and a
speed of the at least one drive wheel,” and recites “wherein a variable VS,
formed from the speed n(R) of a transmission output section and the speed
n(G) of the transmission input shaft, functions as a control parameter for
controlling the engagement and disengagement operations to dampen the
vibrations occurring in the friction clutch.” Emphasis added.
Kosik is directed to an automatic clutch in a vehicle in which
rotational speed differences between the clutch input and clutch output are
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determined by a computer using a speed measuring arrangement at the
clutch input or connected to the vehicle engine and another speed measuring
arrangement on the drive wheels. See Kosik, col. 1, ll. 31-41. Kosik’s
figure illustrates a drive train including an automatic clutch 2, a manual
transmission 3, a rotational speed measuring arrangement 6 connected to
engine 1, a rotational speed measuring arrangement 7 assigned to drive
wheels 5, and a computer 9 operable to determine values of the rotational
speeds of the input and output of clutch 2 from signals of the rotational
speed measuring arrangements 6, 7. See Kosik, col. 2, ll. 44-53; col. 3, ll.
29-39. Kosik discloses that “[a] difference is determined from these
rotational speed values, in which case variations of the value of the
difference can be eliminated with the frequency which is characteristic of
bucking vibrations of the drive train.” See Id., col. 3, ll. 38-42; see also col.
1, ll. 58-64.
The Examiner found that Kosik discloses that “a variable VS formed
from the speed n(R) of a transmission output component and the speed n(G)
of the transmission input shaft functions as a control parameter for damping
the vibrations.” Ans. 4 (citing Kosik, col. 3, ll. 36-41). The Examiner stated
“it is obvious if not inherent that Kosik uses the values of these various
speed sensors as a way to dampen vibrations, i.e. ‘no-jolt engaging’, when
controlling the actions of a clutch.” Id. (citing Kosik, col. 1, ll. 13-27). The
Examiner also found that Kosik does not disclose “controlling the
engagement and disengagement operations to dampen the vibrations
occurring in the friction clutch.” Ans. 5. The Examiner relied on Schmidt-
Brücken for teaching a transmission that dampens vibrations by controlling
engagement and disengagement operations of a clutch (Ans. 5 (citing
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Schmidt-Brücken, Abstract)), and concluded that it would have been
obvious to one of ordinary skill in the art to provide this teaching in Kosik to
effect mechanical control using the data Kosik calculates (id.).
Appellants contend that modifying Kosik to generate and use a
parameter to control a clutch as claimed would change Kosik’s principle of
operation. App. Br. 5-8; Reply Br. 4-5. 1 Appellants contend that Kosik’s
principle of operation is the execution of mathematical filtering operations to
separate a bucking frequency from data including rotational speed
differences (App. Br. 5-6 (citing Kosik, col. 2, ll. 17-23); Reply Br. 4-5), and
it does not include controlling engagement and disengagement of a clutch to
dampen vibrations (App. Br. 6; Reply Br. 5). These contentions are not
persuasive.
We agree with the Examiner that the modification of Kosik would be
a physical application of Kosik’s teachings. Ans. 9. Kosik determines
(generates) a rotational speed difference between the clutch input and clutch
output. The Examiner’s modification of Kosik would not eliminate this
determination, but rather, would apply it to control engagement and
disengagement operations of a clutch, in view of Schmidt-Brücken. In our
view, the Examiner’s modification of Kosik applies a known technique
taught by Schmidt-Brücken to Kosik’s known drivetrain to result in an
improved drivetrain having added control of engagement and disengagement
operations of the friction clutch to dampen vibrations. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to
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 is

1 We understand that this parameter is “VS.”
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obvious unless its actual application is beyond his or her skill.”). Appellants
have not provided any persuasive argument or evidence that this
modification would have been beyond the ordinary capabilities of one
skilled in the art, or would not have yielded predictable results.
Appellants also contend that the Examiner relied on impermissible
hindsight in citing to the disclosure at column 1, lines 13-27, of Kosik,
which we note is part of the Background and Summary of the Invention
section. App. Br. 8. In response, the Examiner noted that Kosik describes
“[w]hen controlling the automatic clutch and when monitoring the clutch, it
is, in principle, desirable to detect rotational speed differences between the
clutch input and the clutch output” (Ans. 9 (citing Kosik, col. 1, ll. 13-16)),
and “[i]t is an object of the invention to detect the rotational speed
differences between the clutch input and the clutch output at low
expenditures” (id. (citing Kosik, col. 1, ll. 28-30)). According to the
Examiner, “using only knowledge known in the art, one of ordinary skill in
the art could see that Kosik's invention is meant to be used for the
controlling of an automatic clutch.” Id. Contrary to the Examiner,
Appellants contend that Kosik’s sole object is the detection of speed
differences (Reply Br. 5), and that, at best, Kosik can only be construed as
teaching a general control function (id. at 6). These contentions are not
persuasive.
Kosik explicitly teaches that it is desirable to detect rotational speed
differences between the clutch input and clutch output when controlling an
automatic clutch. In light of this teaching, we agree with the Examiner that
one skilled in the art would appreciate that Kosik’s determination of
rotational speed differences could be used for controlling an automatic
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clutch. Appellants have not provided any persuasive argument to the
contrary. The Examiner acknowledged that Kosik does not disclose the
specific limitation of “controlling the engagement and disengagement
operations to dampen the vibrations occurring in the friction clutch,” and
relied on Schmidt-Brücken for this teaching. Accordingly, we disagree with
Appellants’ contention that the Examiner’s citation to disclosure in Kosik
amounts to impermissible hindsight.
Appellants also contend that the Examiner impermissibly introduced a
new ground of rejection in the Answer by relying on Schmidt-Brücken’s
teaching of effecting clutch control using differences in speed between a
clutch input and a clutch output. Reply Br. 6. In response to Appellants’
Appeal Brief, the Examiner stated “[e]ven assuming arguendo that Kosik
explicitly teaches not effecting clutch control, Schmidt-Brucken does teach
effecting clutch control using the difference in speed between a clutch input
and clutch output (col 2, line 2-7), thus in combination Kosik and Schmidt-
Brucken would obviate Appellants[’] claimed invention.” Ans. 9-10. This
statement does not imply to us that the Examiner retracted the finding that
Kosik teaches clutch control using the speed difference. Moreover, the issue
of whether the Examiner’s Answer contained a new ground of rejection is
not appealable.2 Thus, we do not reach this issue.

2 M.P.E.P. 1207.03(IV) states: “[i]f appellant believes that an examiner’s
answer contains a new ground of rejection not identified as such, appellant
may file a petition under 37 CFR 1.181(a) within two months from the
mailing of the examiner’s answer requesting that a ground of rejection set
forth in the answer be designated as a new ground of rejection …. Any
allegation that an examiner’s answer contains a new ground of rejection not
identified as such is waived if not timely raised (i.e., by filing the petition
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Appellants also do not apprise us of any error in regard to the
Examiner’s combination of teachings. In particular, Appellants do not
apprise us of any error in the Examiner’s findings for Schmidt-Brücken, or
in the Examiner’s rationale for combining the teachings of Kosik and
Schmidt-Brücken. Thus, we sustain the rejection of claim 1, and its
dependent claims 2 and 5-10.
Claims 3 and 4
Appellants rely on the dependency of claims 3 and 4 from claim 1 for
patentability. App. Br. 12-13. As we find no deficiency in the rejection of
claim 1, we also sustain the rejection of claims 3 and 4 for similar reasons.
Claim 12
Independent claim 12 differs from claim 1 in that claim 12 recites the
additional limitation “wherein a damping of the vibrations is performed if an
average amplitude of the vibrations has a predetermined limit value.”
Emphasis added. The Examiner found that Kosik discloses this limitation.
Ans. 4 (citing Kosik, col. 3, ll. 42-54). The Examiner stated “although
Kosik does not directly disclose a predetermined limit value for the average
amplitude, it is obvious if not inherent that amplitude, in this case ‘A’,
determines performance of a damping of vibrations since such action
depends on a predetermined limit of frequency, which directly affects
amplitude.” Id. The Examiner also found that Kosik and Schmidt-Brücken
do not disclose the terms “average amplitude” and “predetermined limit
value,” but found that one skilled in the art would recognize that the
“average amplitude” is merely the difference between clutch input and

within two months of the answer) by way of a petition under 37 CFR
1.181(a).”
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clutch output. Id. at 10. The Examiner further found that both Kosik and
Schmidt-Brücken would inherently have a predetermined limit value for the
amplitude to determine if control is required. Id. (citing Schmidt-Brücken,
col. 5, ll. 5-9).
Appellants contend that Kosik only teaches clutch inputs and outputs
for rotational speed, whereas the claimed average is with respect to
vibration. Reply Br. 7-8. Kosik describes “[i]f the bucking frequency has
the value fR, then the following applies to the number A of the preceding sign
change or of the zero crossover within a time interval t: A = 2fRt.” See
Kosik, col. 3, ll. 48-54 (emphasis added). The number “A” is unit-less and
indicates the number of times that the preceding sign of the determined
rotational speed difference changes, or that the value of the determined
rotational speed difference crosses over the 0 value, in the time interval, t.
Id. at col. 3, ll. 43-54. The Examiner did not make a finding supported by a
preponderance of the evidence that Kosik explicitly or inherently discloses
that the number “A” corresponds to amplitude, much less amplitude of
vibration. In addition, we agree with Appellants that the Examiner also did
not make a finding supported by a preponderance of the evidence that
Schmidt-Brücken discloses the claimed limitation. Reply Br. 8. Thus, we
do not sustain the rejection of claim 12.
Claim 13
Independent claim 13 differs from claim 1 by specifying that the
transmission is “an automatic transmission.” The Examiner found that both
Kosik and Schmidt-Brücken are silent regarding an automatic transmission,
but concluded that it would have been obvious that the teachings of Kosik
and Schmidt-Brücken are also applicable to an automatic transmission
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because an automatic transmission has all of the structure in these teachings.
Ans. 5. Appellants contend that one skilled in the art would not have
changed the manual transmission in Kosik to an automatic transmission due
to the “enormous physical, control, and operational changes and
modifications that would be required.” App. Br. 11.
In response, the Examiner stated that “it is common sense that the
principles of measuring a clutch input and clutch output would be easily
applicable to both a manual transmission and an automatic transmission.”
Ans. 10. Appellants challenge the Examiner’s “common sense” rationale as
being inadequate. Reply Br. 8. Appellants state “there is no certainty that a
set of input and output speed values in a clutch for a manual transmission
will have the same overall effect, for example, on vibration, as the values for
an automatic transmission.” Reply Br. 9. Appellants’ contentions are
persuasive.
The Examiner did not provide any evidence that Kosik and Schmidt-
Brücken have all of the structure of an automatic transmission, and
Appellants have challenged this finding, noting structural differences. In
addition, claim 13 does not merely recite “measuring a clutch input and
clutch output,” but rather, calls for “a control parameter for controlling the
engagement and disengagement operations to dampen the vibrations
occurring in the friction clutch.” Accordingly, the Examiner’s findings and
reasoning do not address all of the claim limitations. Appellants have also
challenged the predictability of the Examiner’s modification.
On this record, we find that the Examiner did not articulate an
adequate reason with a rational underpinning as to why one of ordinary skill
in the art would have modified Kosik’s drivetrain as required to result in the
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claimed invention. See KSR, 550 U.S. at 418. Thus, we do not sustain the
rejection of claim 13.

Rejection of claim 11 – Kosik, Schmidt-Brücken, and Fröhlich
Appellants contend that Fröhlich does not cure the deficiencies of
Kosik and Schmidt-Brücken in regard to claim 1, from which claim 11
depends. App. Br. 13. As we find no deficiency in the Examiner’s rejection
of claim 1, we also sustain the rejection of claim 11.

DECISION
The rejection of claims 1-11 is AFFIRMED, and the rejection of
claims 12 and 13 is REVERSED. 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)(1)(iv).

AFFIRMED-IN-PART

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