Ex Parte ASSMANN et al

Patent Trial and Appeal Board

Oct 31, 2018

14455153 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/455,153 08/08/2014
73442 7590 11/02/2018
JONES ROBB, PLLC (w/Ford Motor Co.)
1420 Spring Hill Road
Suite 325
McLean, VA 22102
FIRST NAMED INVENTOR
Birger ASSMANN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
83456435 4578
EXAMINER
GOODEN JR, BARRY J
ART UNIT PAPER NUMBER
3616
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
elizabeth.burke@jonesrobb.com
docketing@jonesrobb.com
susanne.jones@jonesrobb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIRGER ASSMANN and ANDRE WILMSEN
Appeal2018-003545
Application 14/455, 153 1
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1, 3-10, and 13-17. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 According to the Appellants, "Ford Global Technologies, LLC is the real
party in interest." Appeal Br. 2.
Appeal2018-003545
Application 14/455,153
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 9, and 10 are the independent claims on appeal. Claim 9,
reproduced below, is illustrative of the subject matter on appeal.
9. A motor vehicle, comprising:
a steering system comprising an articulated bearing having
a clevis and a mating clevis pivotally connected to the clevis; and
a shaft configured to be fixed to the articulated bearing,
wherein the clevis includes a foot arranged substantially
transversely to a longitudinal axis of the clevis, and two arms
connected to the foot and substantially extending opposite one
another along the longitudinal axis, and wherein the foot includes
a clamping gap and a longitudinal opening having a cross-
sectional contour for receiving the shaft, and
wherein at least one end of the shaft has an external
contour complementary to the cross-sectional contour, wherein
the cross-sectional contour of the longitudinal opening and the
external contour of the shaft are formed to permit the shaft to be
received in the longitudinal opening in one single rotational
position about the longitudinal axis, and wherein the external
contour of the shaft comprises two substantially planar recesses
formed along secant lines of the shaft and extending over a chord
of the shaft, the secant lines forming a V-shape, and wherein the
two substantially planar recesses are positioned on opposite sides
of and adjacent to the clamping gap when the shaft is received in
the longitudinal opening of the clevis.
Rejections
Claims 1, 3-8, 10, and 13-17 stand rejected under 35 U.S.C. § 103 as
unpatentable over Moriyama et al. (US 8,235,420 B2, iss. Aug. 7, 2012)
("Moriyama") and Inoue et al. (US 2008/0118326 Al, pub. May 22, 2008)
("Inoue").
Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over
Inoue.
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Appeal2018-003545
Application 14/455,153
ANALYSIS
The Rejection of Claims 1, 3---8, 10, and 13-17 as Unpatentable Over
Moriyama and Inoue
Independent claim 1 requires, among other things, a shaft having an
external contour, which "includes at least one external bias comprising a
substantially planar recess formed along a secant line of the shaft." Appeal
Br., Claims App. ( emphasis added).
The Examiner finds that the sides of Moriyama' s trapezoidal phase
matching projecting portion 47b corresponds to the external contour, which
"includes at least one external bias comprising a substantially planar recess
formed along a secant line of the shaft" as claimed. 2 See Final Act. 3 ( citing
Moriyama Figs. 14--15); Ans. 3--4. Moriyama's Figure 15, copied from the
Examiner's Answer at page 4 with annotations, is reproduced below:
FIG. 15
The Examiner's annotated version of Moriyama's Figure 15 includes a
circular line that matches the outside points of male shaft 22 's serration
portion 46 and two arrows drawn from a box labelled "recess" where the two
arrows point to the sides of trapezoidal phase matching projecting
2 For this ground of rejection, the Examiner does not rely on Inoue to teach a
"substantially planar recess" as claimed. See Final Act. 5---6.
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Application 14/455,153
portion 4 7b. The Examiner's position is that "trapezoidal projection
portion 4 7b ... extends from an outer circumferential area to at least the
lowest point of the adjacent teeth, which are also recessed into the shaft."
Ans. 4. We understand the Examiner's position to be that the triangular
shaped space between the sides of trapezoidal phase matching projecting
portion 4 7b and male shaft 22' s serration portions 46 is a "substantially
planar recess."
Additionally, the Examiner explains that the term "substantially" in
"substantially planar recess" is broad and "[t]he specification does not
provide a range, minimums or norms for the term 'substantially'." See id.
at 3--4. The Examiner does not offer a definition of the term "substantially."
In this case, we fail to understand how the broadest reasonable
interpretation of "substantially planar recess," in light of the Specification as
it would be interpreted by one of ordinary skill in the art, includes an
interpretation that reads on the sides of Moriyama's trapezoidal phase
matching projecting portion 47b (i.e., the triangular shaped space) as
identified by the Examiner's annotations in Figure 15. Hence, we disagree
with the Examiner's position. See also Reply Br. 2--4.
Thus, we do not sustain the Examiner's rejection of independent
claim 1 and dependent claims 3-8 as unpatentable over Moriyama and
Inoue. Independent claim 10 includes a similar requirement as claim 1, i.e.,
"the shaft includes a second contour ... compris[ing] two substantially
planar recesses forming a V-shape and extending around a second portion of
the perimeter of the shaft. " 3 Appeal Br., Claims App. ( emphasis added).
3 Claim 10 requires both of the substantially planar recesses to form a V-
shape, which is distinct from each recess forming a V-shape.
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Application 14/455,153
For this limitation, the Examiner relies on the same finding of Moriyama as
for claim 1. See Final Act. 3--4; Ans. 3. For similar reasons as discussed
above, we do not sustain the Examiner's rejection of independent claim 10
and dependent claims 13-17 as unpatentable over Moriyama and Inoue.
The Rejection of Claim 9 as Unpatentable Over Inoue
The Examiner finds that Inoue teaches substantially all of the subject
matter of claim 9. See Final Act. 6-7 (citing Inoue, Figs. 1-5B). The
Examiner modifies Inoue' s teachings to meet the remainder of the claimed
subject matter, which concerns the positional relationship between the
substantially planar recesses and the clamping gap. See id. More
particularly, the Examiner determines that it would have been obvious to one
of ordinary skill in the art to modify the orientation of Inoue' s shaft to be
inverted as "a simple design choice not affecting the effectiveness of the
coupling." Id. at 7; see also Inoue, Fig. 3A.
The Appellants argue that "[t]here is no motivation for a person of
ordinary skill in the art to modify Inoue in the manner asserted by the
Office." Appeal Br. 22 (emphasis omitted). The Appellants recognize that
the Examiner's determination based on "design choice" may refer to "to the
recognized rationale of rearranging parts," but assert that that rationale is not
applicable here because the Office fails to provide any motivation for a
worker in the art to change Inoue' s disclosure. See id. at 23 ( citing Ex parte
Chicago Rawhide Mfg. Co., 223 USPQ 351,353 (BPAI 1984) (non-
precedential)); see Reply Br. 9-10. The Appellants' argument is not
persuasive of Examiner error.
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Appeal2018-003545
Application 14/455,153
In response, the Examiner explains that Inoue shows various positions
(i.e., designs) for the planar surfaces of Inoue's shaft. Ans. 7 (citing Inoue
Figs. 3A, 4A, 5A). And, the Examiner determines that "it would have been
obvious to one of ordinary skill in the art to try to continue to rotate the
planar surfaces about the shaft as a matter of design choice." Id. See also
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (stating that, in an
obviousness analysis, "a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ"). The
Examiner also explains that "it has been held that a simple rearrangement of
parts that does not modify the operation of a device is within the skill of
those in the art and a matter of design choice." Ans. 6-7 ( citing MANUAL OF
PATENT EXAMINING PROCEDURE (MPEP) § 2144.04(VI)(C)). Design choice
applies when alternative elements in the prior art perform the same function
as the claimed structures with no unexpected results. See In re Kuhle, 526
F.2d 553,555 (CCPA 1975).
The Examiner finds that "[ n Jo criticality or effectiveness regarding the
position of the planar surfaces relative to the shaft and the clamping gap was
provided." Ans. 7. The Specification supports the Examiner's position.
The Specification describes that "[t]he at least one internal bias 22 may be
situated on the side of the clamping gap 32 of the cross sectional contour 37"
(Spec. ,r 44 ), but it does not describe how the positional relationship between
the internal bias and the clamping gap is critical or provides unexpected
results.
Lastly, we note that we are not bound by the decision in Chicago
Rawhide as it is a non-precedential opinion.
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Application 14/455,153
The Appellants argue that "[a] person of ordinary skill in the art
would have no reasonable expectation of success in modifying the disclosure
of Inoue in the manner asserted by the Office" because the modification
would not be a simple design change. Appeal Br. 24 ( emphasis omitted).
The Appellants' argument is based on alleged changes to the specific
manufacturing method described in Inoue. See id. at 24--25 ( citing Inoue
Figs. 3A, 9A, 9B, ,r,r 60-65). For similar reasons, the Appellants argue that
the proposed modification to Inoue' s device would change the principle of
operation of Inoue' s disclosure. See Reply Br. 10-11. The Appellants'
arguments are not persuasive of Examiner error.
In response to the Appellants' argument, the Examiner explains
"pressing/ironing/forging are old and well known practices and would not
require undue experimentation by one of ordinary skill in the art to arrive at
the final piece if the V shape were to be inverted." Ans. 7. We agree.
Additionally, we note that the Examiner's rejection is based on a
modification of Inoue's device (i.e., a shaft). And the Examiner's rejection
of claim 9 is not directed to and does not rely on the method of making
Inoue' s shaft. Hence, the significance of potential alterations to the method
of making the proposed modified shaft of Inoue is not clear.
Thus, we sustain the Examiner's rejection of independent claim 9 as
unpatentable over Inoue.
DECISION
We REVERSE the Examiner's decision rejecting claims 1, 3-8, 10,
and 13-17 as unpatentable over Moriyama and Inoue.
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Application 14/455,153
We AFFIRM the Examiner's decision rejecting claim 9 under
35 U.S.C. § 103 as unpatentable over Inoue.
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)(l )(iv).
AFFIRMED-IN-PART
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