HAMILTON SUNDSTRAND CORPORATION

Patent Trials and Appeals Board

Feb 1, 2022

2021004011 (P.T.A.B. Feb. 1, 2022)

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. 15/871,449 01/15/2018 Derek R. Hochstetler 99941US01; 67036-936US1 4218 26096 7590 02/01/2022 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER LAZO, THOMAS E ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): cgolaw@yahoo.com ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DEREK R. HOCHSTETLER, TED A. MARTIN, DUANE C. JOHNSON, and GLENN C. LEMMERS JR. Appeal 2021-004011 Application 15/871,449 Technology Center 3700 Before JEREMY M. PLENZLER, CARL M. DEFRANCO, and MICHAEL L. WOODS, Administrative Patent Judges. DEFRANCO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 8, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a “fixed block shaft” for use in an integrated drive generator of a gas turbine engine. Spec. ¶¶ 1-2. Of the 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hamilton Sundstrand Corporation, a subsidiary of Raytheon Technologies Corporation. Appeal Br. 1. Appeal 2021-004011 Application 15/871,449 2 pending claims, three are independent, namely, claims 1, 8 and 15. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A fixed block shaft for use in an integrated drive generator comprising: a body extending from a first end to a second end, and a disc extending radially outwardly of a shaft portion, said shaft portion extending to said second end and said disc extending radially outwardly from said shaft adjacent said first end with a boss extending to said first end from said disc, said boss defining an inner peripheral surface, and said inner peripheral surface being a bearing race, and said bearing race extending from said first end to a bearing race end, and an inner diameter of said bearing race defining a first distance, an inner diameter of said bearing race being defined as a first distance and said bearing race extending along a central axis for a second distance, and a ratio of said first distance to said second distance being between 4.30 and 4.50; wherein an outer diameter of said boss is defined as a third distance, and a ratio of said first distance to said third distance being between 0.80 and 0.95; wherein a fourth distance defined between an end of said disc facing said first end and said second end and a ratio of said second distance to said fourth distance being between 0.050 and 0.075; wherein gear teeth are formed at an outer periphery of said disc, and spline teeth are formed at an outer surface of said fixed shaft; wherein there are one hundred gear teeth and twenty-two spline teeth; and wherein a ratio of said third distance to said fourth distance is between 0.25 and 0.40. Appeal Br. 9 (Claims App) (emphases added). Appeal 2021-004011 Application 15/871,449 3 REJECTIONS Claims 1, 8, and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Baehler (US 4,743,776, issued May 10, 1988). See Final Act. 4-6. Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over Baehler and Stadler (US 4,965,477, issued Oct. 23, 1990). See Final Act. 6. OPINION Appellant argues the pending claims together. See Appeal Br. 3-8. We select claim 1 for review, with the remaining claims standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). In rejecting claim 1, the Examiner finds that Baehler discloses all the structural elements as claimed, except for the limitations reciting ratios of various dimensions of the shaft as well as particular numbers of teeth on the shaft. See Final Act. 4-5. But because Appellant’s Specification does not describe the significance of the dimensional ratios and teeth counts as claimed, nor otherwise explains why they might “provide a different operation or performance than the prior art,” the Examiner finds that the dimensional ratios and teeth counts taught by Baehler “would perform equally well” as those of the claimed shaft. Id. at 3, 5 (citing Baehler 5:45- 52; Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied, 469 U.S. 830 (1984) (hereinafter, “Gardner”)). With that reasoning in mind, the Examiner concludes “it would have been an obvious matter of engineering expedience to change the sizes and proportions of the fixed shaft of Baehler” such that the dimensional ratios and teeth count are “as claimed Appeal 2021-004011 Application 15/871,449 4 for the purposes of housing a bearing and receiving/transmitting rotation to provide a constant frequency.” Id. at 5-6. Asserting that Baehler fails to meet any of the so-called “shape- defining ratios” or “number of teeth” recited by the claims, Appellant disputes the propriety of the Examiner’s shifting the burden to Appellant “to prove criticality of the claimed ratios and gear teeth.” Appeal Br. 5. In doing so, Appellant argues that the Examiner’s reliance on the Federal Circuit’s decision in Gardner is misplaced. Id. at 5-7. According to Appellant, Gardner actually stands for the proposition that “it is not a patent applicant's burden to show there is a substantive difference, rather, one challenging the patentability of the dimension must show there is not.” Id. at 6. Instead, Appellant surmises, “[t]here is a burden on the Examiner to show there would be no functional difference between the claimed ratios, teeth numbers, etc. and the prior art. It is not a burden on Applicant.” Id. at 7. We disagree with Appellant’s take on Gardner. Although a patent challenger indisputably bears the burden of proving invalidity in a patent infringement action, we reject the notion that, during patent examination, the Examiner bears the burden of proving a negative where the Examiner otherwise provides sufficient basis and reasoning for concluding that the claimed invention as described in the patent application would perform no differently than the prior art device. Here, the Examiner establishes a prima facie case of unpatentability for two reasons. First, the Examiner finds that Baehler’s block shaft defines the same structural components and result in the same function as the claimed block shaft while differing only in terms of the relative dimensions of those components and the shaft’s number of teeth. See Final Act. 2-3 (comparing Baehler 5:45-52 with Appellant’s Spec. Appeal 2021-004011 Application 15/871,449 5 ¶¶ 1-7). Second, the Examiner points to legal precedent that changes in relative dimensions of known elements are within the level of ordinary skill in that art absent evidence of unexpected results or criticality. See Final Act. 3, 5-6 (citing Gardner). That reasoning, in our view, warrants a shift in the burden of production to Appellant to produce evidence of criticality and/or unexpected results as to the claimed dimensional ratios and teeth count. Indeed, Appellant ignores the very discussion in Gardner supporting the view that that it is the patent applicant, not the Examiner, who bears the burden of showing criticality and unexpected results. More specifically, the Gardner court makes clear that only after Gardner submitted an affidavit and tests during examination of the patent application did the Examiner relent in issuing the patent-at-issue. Gardner, 725 F.3d at 1341-42, 1347. Thus, once the Examiner here provided sufficient basis supported by rational underpinning (as discussed above) for why the claimed invention would perform no differently than the prior art device, the burden shifted to Appellant to produce evidence of criticality and/or unexpected results as to the specifically claimed dimensional ratios and teeth count. Rather than meet that burden with factual evidence, Appellant misconstrues the holding in Gardner. In the end, we agree with the Examiner that Appellant provides no evidence supporting a functional advantage of the claimed dimensional ratios and teeth count over those taught by Baehler. Mere differences in the dimensional ratios and teeth counts of the claimed block shaft as compared to Baehler’s comparable block shaft are insufficient to show unobviousness where the differences exhibit no functional significance and the claimed Appeal 2021-004011 Application 15/871,449 6 shaft appears to perform in same manner as Baehler’s shaft. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (explaining the use of a claimed feature that solves no stated problem and presents no unexpected result, “would be an obvious matter of design choice within the skill of the art”). Also, it is well settled that, generally speaking, it would have been obvious to one skilled in the art to develop workable or even optimum ranges for result-effective parameters. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990) (where the difference between the claimed invention and the prior art is some range, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). Here, Appellant does not direct us to any evidence of criticality of the claimed dimensional ratios and teeth counts. While the Specification provides dimensional ratios and teeth counts of an exemplary block shaft (see, e.g., Spec. ¶¶ 34-43), there are no comparisons with block shafts of different dimensions or different teeth counts to show the significance or criticality of the specified ratios and counts. Thus, the claimed invention appears to be no more than a predictable variant of existing block shaft technology. See In re Rice, 341 F.2d 309, 314 (Fed. Cir. 1984) (lack of rebuttal evidence by Appellants “of any critical relationship in position or size, or any difference in effect or result” of claimed invention as compared to prior art supports conclusion that any such changes “are no more than obvious variations consistent with the principles known in that art”). Appeal 2021-004011 Application 15/871,449 7 CONCLUSION Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 8, 14 103 Baehler 1, 8, 14 15 103 Baehler, Stadler 15 Overall Outcome 1, 8, 14, 15 TIME PERIOD FOR RESPONSE 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