Ex Parte Ali et alDownload PDFPatent Trial and Appeal BoardJul 18, 201312012118 (P.T.A.B. Jul. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/012,118 01/31/2008 Imtiaz Ali P07-164A 2074 26683 7590 07/18/2013 THE GATES CORPORATION IP LAW DEPT. 10-A3 1551 WEWATTA STREET DENVER, CO 80202 EXAMINER REESE, ROBERT T ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 07/18/2013 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 IMTIAZ ALI and ALEXANDER SERKH ____________ Appeal 2011-007684 Application 12/012,118 Technology Center 3600 ____________ Before: WILLIAM V. SAINDON, WILLIAM A. CAPP and JEREMY M. PLENZLER, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 3, 4, 6, 7, 9, 10, 12 and 14-24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-007684 Application 12/012,118 - 2 - THE INVENTION Appellants’ invention relates to a torsional decoupler with a frictional member interposed between a hub and pulley. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A torsional decoupler comprising: a hub having a hub surface, the hub surface having a profile; a pulley having a pulley surface, the pulley surface having a profile; a frictional member disposed between the hub surface and the pulley surface, the frictional member frictionally engaging at least one of the pulley surface or the hub surface; and the frictional member transmitting a torque between the hub and the pulley such that there is a continuous angular progression between the hub and pulley as a torque is transmitted. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: The following rejections are before us for review: 1. Claims 1, 3, 4, 6, 7, 9, 10, 12 and 14-20 are rejected under 35 U.S.C. § 112, first paragraph, as based on a disclosure which is not enabling. 1The Examiner also relies on an English language counterpart of Gouadec, namely, US 2008/0280709 A1, published November 13, 2008. Ans. 11. Mevissen Gouadec1 US 6,083,130 WO 2006/025166 A1 Jul. 4, 2000 Sep. 3, 2006 Appeal 2011-007684 Application 12/012,118 - 3 - 2. Claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20 are rejected under 35 U.S.C. § 102(b) as being anticipated by Gouadec. 3. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Gouadec. 4. Claims 21-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Gouadec and Mevissen. OPINION The Section 112 Non-enablement Rejection The Examiner’s non-enablement rejection focuses primarily on the term “continuous angular progression” in claim 1. Ans. 3-4. According to the Examiner, a more complete definition of “continuous angular progression” and how it would be distinguished from normal, stress induced rotation of the pulley around the hub would be required to demonstrate the patentability of the subject matter. While the Examiner acknowledges that Appellants have discussed what continuous angular progression is, the Examiner finds that Appellants have failed to adequately discuss how the invention is to be implemented. Ans. 9-10. In particular, the Examiner faults the Specification for failing to adequately define structure or material that encourage the phenomenon of continuous angular progression to occur or to limit it to a predetermined amount. Ans. 10. In the absence of a detailed teaching disclosure as to how the invention is implemented, the Examiner finds that the Appellants’ Specification fails to patentably differentiate between the instant invention and any other pulley that uses frictional contact between its components to transmit torque from the hub to the pulley. Id. Appeal 2011-007684 Application 12/012,118 - 4 - Appellants traverse the Examiner’s rejection by arguing that language on pages 10 and 11 of the Specification provides an adequate enabling disclosure. App. Br. 7-8. Appellants point to language describing a frictional relationship between surface 21 (the outer surface of frictional member 20) and surface 31 (the inner surface of pulley 30). Id. Appellants quote language that the hub and pulley are frictionally engaged such that a predetermined amount of micro-slip occurs resulting in relative rotation between the hub and pulley for each rotation of the decoupler. App. Br. 7. Appellants refer to this phenomenon of relative rotation as “angular progression.” Id. Appellants argue that the Specification fully describes that the angular progression is “continuous.” Reply Br. 2. “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (internal citation omitted). Factors to consider include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Enablement is a question of law based upon underlying facts. Id. at 735. The Federal Circuit has further instructed that: Appeal 2011-007684 Application 12/012,118 - 5 - When rejecting a claim under the enablement requirement of section 112, the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application; this includes, of course, providing sufficient reasons for doubting any assertions in the specification as to the scope of enablement. If the PTO meets this burden, the burden then shifts to the applicant to provide suitable proofs indicating that the specification is indeed enabling. Wright, 999 F.2d at 1561-62. Appellants disclose a frictional member interposed between a hub and a pulley. See Fig. 1. The frictional member may be comprised of plastic, natural or synthetic rubber, or any conventional thermoplastic elastomeric composition. Spec. 5. According to the Appellants, the mechanism underlying the phenomenon of continuous angular progression is not attributable to the resilient material characteristics of the frictional member 20. Spec. 11. The Appellants’ invention is a relatively simply device. Instead of a one-piece pulley, Appellants’ pulley essentially has three pieces, namely: (1) an inner hub; (2) an outer pulley; and (3) an intermediate structure interposed between the hub and pulley that slips when the pulley is subject to rotational force. The various pieces are spaced close enough together that friction is generated when slippage occurs. Appellants provide no operational definition of “continuous” that narrows the scope of magnitude of the slippage or the duration thereof.2 Under the circumstances, we think that the Appellants’ Specification, taken together with the accompanying 2 During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appeal 2011-007684 Application 12/012,118 - 6 - drawings, supports Appellants’ position of enablement by a preponderance of the evidence. Accordingly, we do not sustain the Examiner’s non-enablement rejection of claims 1, 3, 4, 6, 7, 9, 10, 12 and 14-20. Anticipation of Claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20 by Gouadec Appellants argue claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20 as a group. App. Br. 8-9. We select claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds that Gouadec discloses all of the elements of claim 1. Ans. 4. The Examiner finds that Gouadec’s frictional member disposed between the hub surface and pulley surface frictionally engages the pulley surface and/or the hub surface. Id. citing Gouadec, Fig. 1. More particularly, the Examiner finds that the frictional member transmits torque between the hub and pulley such that there is a continuous angular progression as the torque increases, further noting that such is an inherent property when the assembly is rotating and transmitting torque. Id. Appellants traverse the Examiner’s rejection by arguing that Gouadec does not teach a continuous angular progression between the hub and pulley as torque is transmitted. App. Br. 9. Appellants argue that relative angular movement between elements 20 and 40 of Gouadec is limited to a range bounded by the radial movement of each ball 41 within each slot 40c and, therefore, not continuous. Id. The Examiner responds by stating that the frictional connection involved in the Examiner’s rejection is not between elements 20 and 40 of Gouadec, pointing out that Figures 3, 5, 6 and 8 of Gouadec depict the Appeal 2011-007684 Application 12/012,118 - 7 - placement of a torque transmission ring 21. Ans. 10-11. The Examiner explains that the accompanying disclosure in paragraphs 27 and 28 of the English language version of Gouadec indicates a frictional connection between elements 20 and 30 through torque transmission ring 21. Ans. 11. The Examiner states that the frictional connection is the same type of connection as claimed in claim 1. Id. The Examiner notes that Appellants have failed to differentiate the structure of the frictional connection of the instant invention vis-à-vis the structure of Gouadec’s element 21. Id. Thus, reasons the Examiner, Gouadec and the instant invention, should exhibit the same behavior. Id. In reply, Appellants accuse the Examiner of relying on similarity and supposition. Reply Br. 2. Appellants argue that such is not an appropriate test for an anticipation rejection. Id. We think that the Examiner has articulated a sound basis for believing that the structure of the instant invention and Gouadec are the same and that, therefore, they also behave in the same manner. This is sufficient to satisfy the Examiner’s burden of establishing a prima facie case of anticipation, thereby shifting the burden of proof to the Appellants. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Apart from attacking the Examiner’s finding in conclusory fashion, Appellants have not persuaded us, with either evidence or technical reasoning, that the Examiner is incorrect. Accordingly, we sustain the Examiner’s anticipation rejection of claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20. Appeal 2011-007684 Application 12/012,118 - 8 - Unpatentability of Claim 18 Claim 18 depends from independent claim 17 that we have previously found to be anticipated. Claim 18 adds the limitation: “wherein the hub surface is toothed and the pulley surface is ribbed.” Clms. App’x. The Examiner finds that Gouadec discloses a ribbed pulley surface, but not a toothed hub surface. Ans. 7. The Examiner concludes that it would have been obvious to place a toothed profile on the hub. Id. Claim 17 is obvious. See In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103 since anticipation is the epitome of obviousness). Appellants have not raised any new arguments for the patentability of claim 18 apart from the arguments previously considered with respect to independent claims 1, 10 and 17. App. Br. 9. Accordingly, we sustain the rejection of claim 18 for the same reasons as with claim 17. Unpatentability of Claims 21-24 Claims 21-24 depend directly or indirectly from independent claim 17. Appellants have not raised any new arguments for the patentability of claims 21-24 apart from the arguments previously considered with respect to independent claims 1, 10 and 17. Accordingly, we sustain the rejection of claims 21-24 for the same reasons as with claim 17. DECISION The decision of the Examiner to reject claims 1, 3, 4, 6, 7, 9, 10, 12 and 14-20 under 35 U.S.C. § 112, first paragraph, as non-enabled is REVERSED. Appeal 2011-007684 Application 12/012,118 - 9 - The decision of the Examiner to reject claims 1, 3, 4, 6, 7, 9, 10, 12, 14-17, 19 and 20 as anticipated under 35 U.S.C. § 102(b) is AFFIRMED. The decision of the Examiner to reject claims 18 and 21-24 as unpatentable under 35 U.S.C. § 103(a) is AFFIRMED. 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 hh/rvb Copy with citationCopy as parenthetical citation