Charles Robert. Taylor

Patent Trials and Appeals Board

Aug 19, 2019

14126293 - (D) (P.T.A.B. Aug. 19, 2019)

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.
14/126,293 03/12/2014 Charles Robert Taylor PA02P0009WOAUS 9617
49458 7590 08/19/2019
DON W. BULSON (PARK)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE / 19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
08/19/2019 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES ROBERT TAYLOR
Appeal 2019-000075
Application 14/126,293
Technology Center 3600
Before STEFAN STAICOVICI, CHARLES N. GREENHUT, AND
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Charles Robert Taylor,
appeals from the Examiner’s decision to reject claims 1, 3–11, 13 and 15–
17. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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 Parker-
Hannifin Corporation. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a gearbox isolator. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A gearbox isolator device adapted to be used with a gearbox,
the gearbox isolator device comprising:
a breather bladder fluidly connectable to the gearbox and
adapted to store and return gas from the gearbox;
a reservoir assembly fluidly connectable to the gearbox,
the reservoir assembly comprising a desiccant filter positioned in
a reservoir gas canister, the reservoir gas canister including a
vacuum check valve, the reservoir assembly adapted to provide
make-up air to the gearbox filtered by the desiccant filter from
atmosphere;
a pressure check valve fluidly connectable to the gearbox
and adapted to allow gas from the gearbox to vent to atmosphere
when the breather bladder cannot take in additional air; and
first, second, and third fluid passageways that are fluidly
connected, wherein
(a) the breather bladder is fluidly connectable to the
gearbox via the first fluid passageway,
(b) the reservoir assembly is fluidly connectable to
the gearbox via the second fluid passageway, and
(c) the pressure check valve is fluidly connectable
to the gearbox via the third fluid passageway, in which the third
fluid passageway does not include the reservoir assembly;
wherein the pressure check valve is separate and spaced
from the reservoir assembly.
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REFERENCES
The prior art relied upon by the Examiner is:
Paoluccio
Davison, Jr.
Heinzelmann
US 4,827,719
US 5,062,447
US 6,663,279 B1
May 9, 1989
Nov. 5, 1991
Dec. 16, 2003
Sigmund US 2009/0286649 A1 Nov. 19, 2009
Des Case Corp, 2006 Catalog, (“Des-Case”)
retrieved by the Examiner from:
http://lubeng.eom.au/assets/files/Des%20Case%20Brochure.pdf.
REJECTIONS
Claims 1, 3–7, 11, 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sigmund and Des-Case. Final Act. 3.
Claims 9 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sigmund, Des-Case, and Heinzelmann. Final Act. 9.
Claims 10 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sigmund, Des-Case, and Paoluccio. Final Act. 10.
OPINION
Claims 1 and 13
Appellant argues each of independent claims 1 and 13 under separate
headings. App. Br. 14–30, 33–44. However, many of the arguments
presented for each claim are substantially similar. The main difference
between claim 1 and claim 13 is that the functional language recited in
apparatus claim 1 is positively recited in the form of manipulative steps in
method claim 13.
There is no dispute that Sigmund discloses the basic device and
method according to claims 1 and 13, respectively, albeit without the bladder
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and the desiccant reservoir assembly.2 Final Act. 3–4, 6. Appellant also
acknowledges that Sigmund is, among other things, concerned with a
problem similar to Appellant, namely avoiding contamination when
introducing air to adjust the gearbox pressure. Reply. Br. 15 (citing Sigmund
paras. 22, 40); Spec. paras. 1–2; see also Sigmund paras. 4–5. Appellant
correctly points out Sigmund solves this problem by providing intake air
from the interior of the vehicle. Reply. Br. 15 (citing Sigmund para. 40).
However, this is not, as Appellant suggests, evidence that it would have been
non-obvious to seek alternative solutions. Rather, “a person of ordinary skill
in the art has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the product
not of innovation but of ordinary skill and common sense.” KSR Int’l. v.
Teleflex, 550 U.S. 398, 421 (2007).
The Examiner cites Des-Case as providing an alternative solution to
the contamination problem through the use of an expandable bladder and
reservoir containing desiccant and filtration. Final Act. 4–6. In the
Specification, Appellant acknowledges both of these solutions are
independently known. Spec. 3–4. What Appellant regards as inventive is
their combination. Spec. paras. 6–7. However, the combination of an
expandable bladder system with a reservoir containing desiccant and
filtration is exactly what Des-Case teaches with the DC/HGS-3. Final Act. 4
(citing Des-Case p. 13 (for the DC/HGS-3 overview) and p. 6 (for the
breather or “reservoir” DC/HGS3) details). It is true that Des-Case does not
include the same level of detail as a patent specification, but as these are

2 It is noted that claim 13 recites “fluidly connecting a pressure check valve
that is separate and spaced from the reservoir assembly”
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acknowledged prior-art types of systems upon which Appellant builds,
Appellant cannot reasonably contend there is a shortcoming in the
Examiner’s rejection because Des-Case does not expressly describe every
detail of the device’s operation. App. Br. 18, 36. It is reasonably clear from
Des-Case’s annotated diagrams that “controlled breathing” to “ensure no
excess pressure/vacuum builds” (Des-Case p. 6), reasonably means filtered
“make-up” air is provided to the gearbox as necessary. If a prior art device,
in its normal and usual operation, would necessarily perform the method
claimed, then the method claimed will be considered to be unpatentable over
the prior art device. In re King, 801 F.2d 1324, 1326–7 (Fed. Cir. 1986). The
main difference between Appellant’s arrangement and that of Des-Case is
the location of the components. The Examiner correctly determined this
aspect of Appellant’s invention is not required by either of independent
claims 1 or 13.
Appellant takes issue with the particular way the Examiner proposed
to incorporate Des-Case’s teachings to arrive at the claimed subject matter.
App. Br. 18, 20–21, 36, 39–40. It seems rather clear from the figure and
description on page 13 of Des-Case that the DC/HGS-3 is intended to install
in a breather port much like the breather aperture 201 of Sigmund. However,
just because this particular manner of combining the reference teachings
may be obvious it does not illustrate that other ways of combining the
reference teachings are non-obvious. Instead of connecting the Des-Case
device directly to the aperture 201, the Examiner concluded it would have
been obvious to a skilled artisan to connect Des-Case’s device to the conduit
202, leading to the aperture 201, in place of the valve assembly 206, which
would leave in place the valve 208 which functions as a safety check valve
(Sigmund para. 41). Final Act. 3–6. With the valve assembly 206 replaced,
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there would be direct access to port 201, and no “one-way” limitation
preventing breathing via conduit 202 as Appellant argues. See App. Br. 21.
Appellant does not present any arguments specifically taking issue with the
retention of Sigmund’s check valve 208. In any case, check valve
redundancy particularly on the gear-box side of the filter and desiccant
mediums of Des-Case, has clear, predictable, and obvious advantages of
protecting the gearbox from an overpressure situation regardless of any
clogging or saturation of the filter and/or desiccant, respectively. Because
the Examiner relies on the Sigmund valve 208 to satisfy the claim recitations
relating to the “pressure check valve,” Appellant’s argument that the check
valves on the external side of Des-Case’s breather are not “[in a] third fluid
passageway . . . not include[ing] the reservoir” and not “spaced from the
reservoir” are unavailing. See App. Br. 24–27, 29–30, 40–43; Ans. 18–19.
For the foregoing reasons, we are not apprised of Examiner error in
rejecting independent claims 1 and 13 based on the Sigmund and Des-Case
combination.

Claim 3
In the Answer, the Examiner annotates figures from Sigmund and
Des-Case in an effort to illustrate a structure satisfying the “tee” recitation.
Ans. 46–47. Regardless of whether either of the identified structures
reasonably constitutes a “tee,” the structure identified by the Examiner
would not be arranged as required by claim 3. If the “tee” were on the
Sigmund breather, both the bladder and reservoir would be on the same
branch of the tee according to the Examiner’s combination. If the tee were
within Des-Case’s DC/HGS3 device that tee would not include a tube
extending to form a passageway to the “pressure check valve,” which the
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Examiner regards as valve 208 of Sigmund. All words in a claim must be
considered in judging the obviousness of the claimed subject matter. See In
re Wilson, 424 F.2d 1382, 1385. The Examiner has not sufficiently shown
how the proposed combination of Sigmund and Des-Case yields the subject
matter of claim 3.

Claims 6 and 7
The Examiner correctly recognizes that Des-Case includes multiple
filter elements in breather DC/HGS-R (Des-Case pg. 6). Final Act. 7–8. The
Examiner also appears to recognize those filter elements are not in the air
outlets of the DC/HGS3 bladder housing (Des-Case p. 13). Final Act. 7–8;
Ans. 50. The air outlets of the DC/HGS3 bladder housing would equate to
the recited “aperture” of the “breather gas canister” enclosing the “bladder”
of claim 6 as claim 6 is read in view of claims 4 and 5, from which claim 6
depends. The record before us does not contain any clearly articulated
reasoning supported by rational underpinnings for why it would have been
obvious for one skilled in the art to incorporate a filter in the aperture” of the
“breather gas canister” enclosing the “bladder” as required by claim 6. Our
reviewing court has stated that “rejections 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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int’l. v. Teleflex, 550 U.S. 398, 418 (2007)). As
the record before us contains no such showing by the Examiner we are
constrained to reverse the Examiner’s rejection on the basis set forth by the
Examiner.
Claim 11
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The Examiner cites the housing of Des-Case’s bladder as being made
from a thermoplastic material, high-density polyethylene (HDPE) and
determines that it would have been obvious to a skilled artisan to also make
the bladder from a thermoplastic material. Final Act. 8–9; Ans. 53–54. The
only reasoning provided by the Examiner to account for the distinction
between the claimed subject matter calling for the bladder itself to be made
from a thermoplastic material and Des-Case is:
because it has been held to be within the general skill of a worker
in the art to select a known material on the basis of its suitability
for the intended use as a matter of obvious design choice.
Final Act. 9 (citing In re Leshin, 277 F.2d 197 (CCPA 1960))
The facts here are distinguishable from those in Leshin. In that case,
the court addressed dependent claims requiring that the “container-dispenser
for cosmetics” from the parent claim be made from molded plastic materials.
Leshin, 277 F.2d at 198–99. Before the court was evidence in the form of a
secondary reference (Anderson) teaching the use of molded plastic in a
“similar container.” Id. at 199. On that evidence, the court held that “[m]ere
selection of known plastics to make a container-dispenser of a type made of
plastics prior to the invention, the selection of the plastics being on the basis
of suitability for the intended use, would be entirely obvious.” Id. In
contrast, here, the Examiner has not shown that the prior art teaches that “a
thermoplastic material” is suitable for forming an expandable bladder,
according to claim 11, when considering the bladder’s use. The lack of
evidentiary support on this issue distinguishes the record here from that in
Leshin, and undermines the rejection as currently set forth. Although Leshin-
like reasoning may apply to many situations, Leshin does not set forth a
blanket rule that any time the difference between the claimed invention and
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the prior art is a material, an examiner is excused from articulating the
requisite rational underpinning and reasoning for concluding that the
claimed invention is obvious. In re Kahn, 441 F.3d at 987 (requiring “some
rationale, articulation, or reasoned basis to explain why the conclusion of
obviousness is correct”). Here, the Examiner has not offered any explanation
as to why it would have been obvious to one of ordinary skill in the art to
choose a thermoplastic for the bladder so as to arrive at the subject matter of
claim 11. Accordingly, we cannot sustain the rejection of claim 11 on the
basis set forth by the Examiner.

Claims 10 and 17
The Examiner cites Paoluccio for disposing a sensor outside of a
gearbox as required by claims 10 and 17. Final Act. 10–11 (“Paoluccio
teaches a sensor (28a and/or 9a) positioned outside of the gearbox.”).
Appellant contends that Paoluccio does not teach positioning sensors outside
of a gearbox. App. Br. 52. Paoluccio, like the present application and Des-
Case, does involve using an expandable member 3 in a system that maintains
a desired pressure range. See Paoluccio, Fig. 3. Paoluccio, also like the
present invention, uses a drying desiccant 28. See id. However, Paoluccio’s
system for pressure and moisture control is applied to a hydraulic fluid
reservoir 14 not a gearbox. The Examiner does not explain and it is not
apparent how the Examiner considers the location of moisture indicator 28a
and pressure gauge 9a in Paoluccio as relevant to gearboxes. Perhaps the
Examiner is attempting to analogize the location of Paoluccio’s reservoir 14
to the location of the fluid-containing gearbox in Sigmund and show the
pressure and moisture mitigation systems, along with their respective
sensors, are disposed externally thereto, as they would be if applied to
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Sigmund’s gearbox. However, based on the record before us we are only
speculating as to the Examiner’s position in this regard. “[T]he precise
language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent
unless,’ concerning novelty and unobviousness, clearly places a burden of
proof on the Patent Office which requires it to produce the factual basis for
its rejection of an application under sections 102 and 103.” In re Warner,
379 F.2d 1011, 1016 (CCPA 1967). The Patent Trial and Appeal Board is
primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075–
1077 (BPAI 2010) (precedential). For that review to be meaningful it must
be based on some concrete evidence in the record to support the Examiner’s
factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386
(Fed. Cir. 2001). A rejection must be set forth in sufficiently articulate and
informative manner as to meet the notice requirement of § 132, such as by
identifying where or how each limitation of the rejected claims is met by the
prior art references. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see
also 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified.”); Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir.
1997) (PTO must create a record that includes “specific fact findings for
each contested limitation and satisfactory explanations for such findings.”).
It is neither our place, nor Appellant’s burden, to speculate as to the basis for
rejecting claims. In re Stepan, 660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is the
PTO’s obligation to provide timely notice to the applicant of all matters of
fact and law asserted.). Accordingly, we do not sustain the Examiner’s
rejection of claims 10 and 17 on the record presently before us.
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Claims 4, 5, 9, and 16
Appellant does not present any substantive arguments concerning the
rejections of claims 4, 5, 9 and 16. See App. Br. 45–46, 49–50. “Filing a
Board appeal does not, unto itself, entitle an appellant to de novo review of
all aspects of a rejection.” See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (citations omitted). “[T]he Board will not, as a general
matter, unilaterally review those uncontested aspects of the rejection.” Id. at
1075–76 (citations omitted). Appellant’s argument concerning these claims
consists of only “a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011); App. Br. 18–20.
Arguments of this nature do not satisfy the requirements of 37 C.F.R.
§ 41.37(c)(1)(iv) (“The arguments shall explain why the examiner erred as
to each ground of rejection contested by appellant”). In re Lovin, 652 F.3d at
1357. Appellants have not sufficiently contested any of the Examiner’s
findings nor apprised us of any flaws in the Examiner’s reasoning or legal
conclusions concerning the rejections of claims 4, 5, 9, and 16. Accordingly,
we sustain the rejections of claims 4, 5, 9, and 16.
DECISION
The rejection of claims 1, 4, 5, and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Sigmund and Des-Case is affirmed.
The rejection of claims 3, 6, 7, and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Sigmund and Des-Case is reversed.
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The rejection of claims 9 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Sigmund, Des-Case, and Heinzelmann is affirmed.
The rejection of claims 10 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Sigmund, Des-Case, and Paoluccio is reversed.
FINALITY AND 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-IN-PART