Timan, Peter Edward. et al.Download PDFPatent Trials and Appeals BoardOct 24, 201914420144 - (D) (P.T.A.B. Oct. 24, 2019) Copy Citation 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. 14/420,144 04/13/2015 Peter Edward Timan 2258-152177 6551 28289 7590 10/24/2019 THE WEBB LAW FIRM, P.C. ONE GATEWAY CENTER 420 FT. DUQUESNE BLVD, SUITE 1200 PITTSBURGH, PA 15222 EXAMINER KUHFUSS, ZACHARY L ART UNIT PAPER NUMBER 3617 NOTIFICATION DATE DELIVERY MODE 10/24/2019 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): patents@webblaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER EDWARD TIMAN, HANS PETER TROTSCH, MARTIN BAZANT, DANIEL MARTINEZ-ANON-PEREZ, and ALEXANDER BAUER ____________ Appeal 2019-001917 Application 14/420,144 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–4, 6, 7, 9, 10, 12–14, and 16–37. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Bombardier Transportation GmbH as the real party in interest. Appeal Br. 2. Appeal 2019-001917 Application 14/420,144 2 THE INVENTION Appellant’s invention relates to drive units for monorail trains. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A monorail vehicle comprising: a chassis supporting a vehicle body that includes spaced sides and a passenger floor, wherein a length direction, a height direction and a width (or side-to-side) direction of the vehicle body respectively correspond to X, Y and Z axes of a Cartesian coordinate system, the X and Y axes defining a vertical imaginary plane bisecting the vehicle body in two halves, and the X and Z axes defining a horizontal imaginary plane extension of the passenger floor; two bogies, each one of the two bogies supporting the chassis at a different end of the chassis, each one of the two bogies comprising: a drive unit comprising a housing, an electric motor received within the housing, and a planetary gear assembly coupled to a rotor of the electric motor, the planetary gear assembly comprising at least 3 planet gears coupled between a sun gear and a ring gear surrounding the planet gears, the planet gears rotatable within the ring gear in response to rotation of the sun gear by the electric motor, the housing being coupled to its respective bogie; and at least one drive wheel coupled to the rotor via the planetary gear assembly, the at least one drive wheel being laterally centered on the vertical imaginary plane, the at least one drive wheel having a rotation axis substantially coaxial with the rotor axis, wherein the electric motor resides within the drive wheel and in one of the halves of the vehicle body, and wherein the at least one drive wheel, the electric motor and the gear assembly reside on both sides of the horizontal imaginary plane extension of the passenger floor; and a shell covering the at least one drive wheel and the drive unit, the shell being integral to one side of the vehicle body and defining a space between the other side of the vehicle body and a portion of the drive wheel and drive unit residing above the horizontal imaginary plane extension of the passenger floor. Appeal 2019-001917 Application 14/420,144 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Name Reference Date Holmquist US 3,216,371 Nov. 9, 1965 Sherman US 3,770,074 Nov. 6, 1973 Schoon US 2011/0130238 A1 June 2, 2011 Deller DE 1123692 Feb. 15, 1962 The following rejections are before us for review: 1. Claims 1, 6, 9, 10, 13, 14, 16–27, and 29–35 are rejected under 35 U.S.C. § 103 as being unpatentable over Deller and Sherman. 2. Claims 2, 3, 4, 7, 12, and 28 are rejected under 35 U.S.C. § 103 as being unpatentable over Deller, Sherman, and Schoon. 3. Claims 36 and 37 are rejected under 35 U.S.C. § 103 as being unpatentable over Deller, Sherman, and Holmquist. OPINION Unpatentability of Claims 1, 6, 9, 10, 13, 14, 16–27, and 29–35 over Deller and Sherman Claims 1, 6, 9, and 25 Appellant argues claim 1, but raises no separate arguments for the patentability of claims 6, 9, and 25. Appeal Br. 6–16. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Deller discloses the invention substantially as claimed except for a coaxial electric motor and planetary gear assembly, for which the Examiner relies on Sherman. Final Action 3–4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the Appeal 2019-001917 Application 14/420,144 4 art at the time of the invention to use Sherman’s drive unit, including the electric motor and planetary gear assembly, in Deller’s monorail vehicle to achieve the claimed invention. Id. at 4. According to the Examiner, a person of ordinary skill in the art would have done this to provide an efficient, self-contained electric drive system. Id. The Examiner further finds that Deller does not specifically teach two bogies, but that it would have been obvious to place one of Deller’s bogies at each end of the chassis to properly support the vehicle and as matter of mere duplication of essential working parts of a device involving only routine skill in the art. Id. citing St. Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977). Appellant first raises a series of arguments concerning whether Deller implicitly discloses a motor. Appeal Br. 6–10. In a related argument, Appellant interprets the Examiner’s proposed combination as comprised of two motors, a first motor from Deller and a second motor from Sherman. Id. at 13. In such regard, Appellant asks: “are the two motors run together or separately?” Id. There is no need for us to discuss each of these arguments in detail. The Examiner’s rejection relies on Sherman as supplying an electric motor that is in coaxial arrangement with a planetary gear assembly. Final Action 4. At no time does the Examiner intimate that the proposed combination of Deller and Sherman includes two motors as imagined by Appellant. Ans. 4. The Examiner makes it abundantly clear that “Sherman’s drive unit is replacing Deller’s drive unit.” Id. (emphasis added). It is well settled that the obviousness inquiry does not ask “whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re Appeal 2019-001917 Application 14/420,144 5 Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (explaining that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements). Thus, we find Appellant’s arguments concerning Deller’s implicit disclosure of a motor and the prospect that the Examiner’s rejection would result in a vehicle with two motors unpersuasive.2 Appellant next questions whether there is sufficient room to mount Sherman’s drive unit on the same side of Deller’s drive wheel. Appeal Br. 11. Given this lack of space disclosed or hinted at in the prior art, it cannot be obvious to include Sherman’s electric motor and gear assembly on the same side of Deller’s drive wheel 1 as the transmission 4 and brake 5 . . . without substantial reconstruction and redesign. Indeed, given this lack of space, the addition of Sherman’s electric motor between Deller’s wheels 1 and the left side wall proximate brake 5 in Figs. 1 and 2 of Deller may not be possible at all because of insufficient space or, at least, would further reduce this space and an undesirably cramped arrangement of elements. Id. In response, the Examiner maintains that, although some redesign would be required to replace Deller’s transmission and brake with Sherman’s drive unit, such would have been within the capabilities of one of ordinary skill in the art. Ans. 5. We find the Examiner’s position on the “insufficient space” issue more persuasive. Appellant’s insufficient space argument is speculative at 2 In particular, Appellant’s argument based on Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) is inapposite. Contrary to Appellant’s position, the teachings of Deller and Sherman are not in conflict. Appeal Br. 10. Appeal 2019-001917 Application 14/420,144 6 best and is not supported by evidence or sound technical reasoning. There is no underlying factual basis to support a contention that Sherman’s drive unit, appropriately modified using no more than ordinary skill, would not fit within the volume represented by almost one-half of the width of a monorail vehicle. Appellant’s entire case on the insufficient space issue amounts to unsworn attorney argument. However, unsworn attorney argument is not evidence. See Estee Lauder, Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (explaining that attorney argument cannot take the place of evidence in the record). Next, Appellant argues that Deller fails to disclose a floor that defines a horizontal plane as claimed. Appeal Br. 10–12. According to Appellant: “absent Deller expressly disclosing what is a floor, the Examiner’s allegation that that one or both of these surfaces in Deller is/are a passenger floor amounts to speculation and conjecture.” Id. at 12. In response, the Examiner interprets the lowermost surface of Deller’s vehicle as a passenger floor. Ans. 5. According to the Examiner, “the location of this surface relative to the passenger vehicle body suggests that the surface is a passenger floor.” Id. at 5–6. The Examiner’s position is augmented by an annotated version of Deller, Figure 1, marked with an annotation of what the Examiner finds to be a passenger floor. Id. at 6. We have reviewed Figure 1 of Deller and determine that the Examiner’s finding is supported by a preponderance of the evidence. Appellant next argues that positioning Sherman’s drive unit as proposed by the Examiner would adversely affect the ability to pivot axle 6 about bolt 12 as shown in Figure 2 of Deller. Appeal Br. 12. Deller’s transmission 4 and brake 5 provide a designed degree of counterweight to Deller’s wheels 1 that enables pivoting of Appeal 2019-001917 Application 14/420,144 7 axle 6, as shown in Deller’s Fig. 2, with a certain (implicitly designed) degree of effort. Including Sherman’s electric motor and gear assembly between bearing 7 and the left drive wheel 1, absent other redesigns to Deller’s arrangement, would, at least, change (increase) the amount of effort required to pivot axle 6, if not make pivoting axle 6 infeasible. Id. In response, the Examiner contends that it would have been within the capabilities of one of ordinary skill in the art to replace Deller’s drive unit with Sherman’s drive unit while maintaining the ability of the axle to pivot about bolt 12 of Deller. Ans. 6. According to the Examiner, merely moving bearings and components such as motors and gearing relative to the drive axle is within the ordinary skill in the art. Id. In reply, Appellant argues that the Examiner is proposing yet another redesign of Deller. Reply Br. 5. there is only so much space to move Deller’s pivot about bolt 12 in order to accommodate Sherman’s drive unit which includes a motor which a PSA would understand is heavy. Accordingly, it is speculation and conjecture to allege that the ability to pivot Deller’s axle 6 could be retained when Sherman’s drive unit is mounted to said axle 6. To this end, there is no reasonable expectation of success in being able to maintain the ability to pivot Deller’s axle 6 in the manner disclosed in Deller if Sherman’s drive unit were mounted to said axle 6. Reply Br. 5. Deller is directed to improving the manner in which monorail support wheels are installed and removed for maintenance purposes. Deller ¶¶ 2–3. To that end, Deller provides for axle 6 to pivot about travel bolt 12. See Deller, Figs. 1, 2. However, Deller acknowledges that other methods and Appeal 2019-001917 Application 14/420,144 8 means for removing and re-installing support wheels were known in the prior art. Id. ¶ 2. There is no analogous teaching or claim language in Appellant’s disclosure or claims regarding pivoting an axle to facilitate maintenance access. See generally Spec., Claims App. Consequently, Deller’s teaching about a pivoting axle is superfluous to the issues before us in the instant appeal. It is well settled that omitting an element and its function in a combination where the remaining elements perform the same functions as before involves only routine skill. In re Karlson, 311 F.2d 581, 584 (CCPA 1963). That is the case here. Once the pivoting axle feature of Deller is omitted, the remaining elements of Deller and Sherman perform the same functions and Appellant’s argument about counterbalancing is irrelevant. Thus, for purposes of the instant appeal, we need not decide any issue regarding counterbalancing Sherman’s drive unit about pivot 12.3 Next, Appellant argues that it is unclear how Sherman’s drive unit can be physically located between Deller’s bearing 7 and drive wheel 1 without substantial reconstruction. Appeal Br. 12. Similarly, Appellant argues that it is unclear how Sherman’s drive unit could be held in place on Deller’s axle. Id. at 13. “As can be seen, Sherman’s electric motor and gear assembly cannot simply be added on the same side of Deller’s drive wheel 1 as the transmission 4 and brake 5 without substantial reconstruction and redesign of the arrangement disclosed in Deller to compensate for such 3 In any event, we find Appellant’s reasonable expectation of success argument on the counterbalance issue unpersuasive. Reply Br. 5. Children playing on a see-saw quickly learn to counterbalance weights and moment arms about a pivot point. The Examiner’s determination that only ordinary skill is required to counterbalance about Deller’s pivot 12 is well founded. Appeal 2019-001917 Application 14/420,144 9 addition.” Id. This is another bodily incorporation argument that runs counter to prevailing case law. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . .” In re Keller, 642 F.2d 413, 425 (CCPA 1981); Mouttet, 686 F.3d at 1332. A person of ordinary skill in the art would have known how to mount a drive unit, such as Sherman, on a vehicle frame at the time of the invention. Next, Appellant argues that the proposed combination fails to disclose a shell as claimed. Appeal Br. 15. In response, the Examiner states that Deller’s housing located over transmission 4 and brake 5 is reasonably interpreted as part of Deller’s shell. Ans. 8. We have reviewed the Figures of Deller and determine that the Examiner’s findings that Deller satisfies the shell limitation of claim 1 to be supported by a preponderance of the evidence. Finally, Appellant argues that the Examiner’s rejection lacks sufficient underlying rationale and demonstrates impermissible hindsight. Appeal Br. 13–14. This argument is not persuasive. The Examiner’s stated reason, namely, providing an efficient, self-contained drive system, is sufficient to support the rejection. Final Action 4, see In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be based on explicit articulated reasoning with rational underpinning) cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellant’s accompanying hindsight argument is without merit. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (explaining that a hindsight argument is of no moment where the Examiner provides a sufficient, non-hindsight reason to combine the references). Appeal 2019-001917 Application 14/420,144 10 We have considered Appellant’s remaining arguments and find them to be without merit. Accordingly, we sustain the Examiner’s unpatentability rejection of claim 1. For lack of separate argument, claims 6, 9, and 25 fall with claim 1. Claims 10, 19, and 26 In traversing the rejection of independent claims 10, 19, and 26, Appellant just reiterates essentially the same arguments that we have previously considered and found unpersuasive with respect to claim 1 and find equally unpersuasive here. Appeal Br. 16–18. We sustain the rejection of claims 10, 19, and 26. Claims 13, 14, 16–18, 21–24, 27, and 29–35 Claims 13, 14, and 16–18 depend, directly or indirectly, from claim 10. Claims App. Claims 20–24 depend, directly or indirectly, from claim 19. Id. Claims 29–35 depend, directly or indirectly, from claim 26. Id. These claims are not argued separately and, therefore, fall with claims 1, 10, 19, and 26. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims). Unpatentability of Claims 2, 3, 4, 7, 12, and 28 over Deller, Sherman, and Schoon Appellant does not argue for the separate patentability of these claims apart from arguments presented with respect to claim 1, which we have previously considered. Consequently, we sustain the Examiner’s rejection of claims 2, 3, 4, 7, 12, and 28. 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-001917 Application 14/420,144 11 Unpatentability of Claims 36 and 37 over Deller, Sherman, and Holmquist Appellant does not argue for the separate patentability of claims 36 and 37 apart from arguments presented with respect to claim 1, which we have previously considered. We sustain the Examiner’s rejection of claims 36 and 37. 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Aff’d Rev’d 1, 6, 9, 10, 13, 14, 16-27, 29- 35 103 Deller, Sherman 1, 6, 9, 10, 13, 14, 16-27, 29- 35 2, 3, 4, 7, 12, 28 103 Deller, Sherman, Schoon 2, 3, 4, 7, 12, 28 36, 37 103 Deller, Sherman, Holmquist 36, 37 Overall Outcome 1-4, 6, 7, 9, 10, 12-14, 16- 37 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 Copy with citationCopy as parenthetical citation