Ex Parte Beutler et al

Patent Trial and Appeal Board

Feb 18, 2014

12342734 (P.T.A.B. Feb. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN R. BEUTLER,
JAMES P. BOROWIAK, GREGORY J. HILKER,
DAVID C. JOHNSON, RAJENDRA D. PATIL, and JEFFREY E. REA
____________

Appeal 2012-002555
Application 12/342,734
Technology Center 3600
____________

Before HUBERT C. LORIN, GAY ANN SPAHN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-002555
Application 12/342,734

2
Claimed Subject Matter
The claimed subject matter relates to “an axle assembly having
improved heat rejection capabilities” for controlling heat generated during
operation of the axle assembly that could cause premature breakdown of the
lubricant within the axle assembly, the heat rejection occurring via a heat
sink 48 which includes an air channel 120 that “provides a substantially
constant flow of cooling air to . . . the exterior surface 118” of the axle
housing assembly 40. Spec., paras. [0002], [0003], [0031], and [0032].
Claim 1, reproduced below, with emphasis added, is illustrative of the
appealed subject matter.
1. An axle assembly for propelling a vehicle, the axle
assembly comprising:
a housing assembly having a housing structure that
defines a cavity with an opening;
a differential assembly received in the cavity and being
supported for rotation by the housing structure about a first
axis;
a pair of axle shafts driven by the differential assembly;
and
an air channel having a hollow body that extends
between a tubular leading end and a tubular trailing end, the
hollow body being mounted to the housing assembly so that the
leading end projects away from the housing structure such that
the leading end is adapted to passively intake air from an
airstream that passes around the housing assembly as the
vehicle is operated in a predetermined direction.

Independent claim 16 is directed to a driveline component and similar
to claim 1 includes, inter alia, an air channel, the air channel having a
“leading end projecting away from the housing assembly and being
positioned to receive air flowing over the driveline component when the
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Application 12/342,734

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vehicle is operated in a predetermined direction.” App. Br., Clms. App’x.
Emphasis added.

Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review:1
I. claims 1-7, 10, 12, 13, 16, 17, 19, and 20 as unpatentable over
Waldner (US 5,927,384, issued Jul. 27, 1999), Endreszl (US 6,553,865 B1,
issued Apr. 29, 2003), and Feher (US 6,954,944 B2, issued Oct. 18, 2005);
II. claims 8, 14, and 20 as unpatentable over Waldner, Endreszl,
Feher, and Adamson (US 2,325,647, issued Aug. 3, 1943);
III. claim 11 as unpatentable over Waldner, Endreszl, Feher, and
Hayashida (US 4,915,192, issued Apr. 10, 1990); and
IV. claims 9, 15, 18, and 21 as unpatentable over Waldner,
Endreszl, Feher, and Stenlund (US 5,072,784, issued Dec. 17, 1991).

OPINION
Rejection I – Obviousness based on Waldner, Endreszl, and Feher
Claims 1-7, 10, 12, 13, 16, and 17
The Examiner finds that Waldner substantially discloses the subject
matter of independent claims 1 and 16, but fails to disclose “an air channel
with a leading edge that passively intakes air from an air stream.” Ans. 5-6.
To cure the deficiency of Waldner, the Examiner turns to Feher for its
disclosure of an air channel 40 having a tubular leading end 46, wherein the

1 The Examiner withdrew the rejection of claim 4 under 35 U.S.C. § 112,
second paragraph, as being indefinite. Ans. 4; see also Final Rej. 2.
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leading end projects away from the housing 12 such that leading end 46 is
adapted to passively intake air from an airstream the passes around the
housing 12 as the housing 12 is moved in a predetermined direction. Ans. 6.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art to modify Waldner
to include the air channel and allow for passive air intake from
the front of the housing assembly 2 as taught by . . . Feher . . .
in order to provide a way to cool the differential housing using
cooler air from the front of the housing and bending it around to
the rear of the housing for more efficient cooling of the
differential assembly.
Ans. 7.
Appellants argue that the Examiner’s rejection fails to set forth a
prima facie case of obviousness. App. Br. 8. Appellants note that
Waldner’s fan 24 “is located in a position where it is shielded from air flow
when the vehicle is operated in a forward direction,” and “when the vehicle
is operated in reverse any air that may enter into the system of Waldner
would neither be passive nor taken from an airstream that passes around the
axle housing of the vehicle.” Ans. 9 (citing Waldner, Fig. 8). Thus,
Appellants also argue that the Examiner’s rejection “has not provided ‘some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness,’” because the Examiner “has not stated why one
of ordinary skill in the art, having knowledge of Waldner, Endreszl and
Feher would re-configure the cooling system of Waldner with the wall (40)
of Feher.” Ans. 9-10 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007)).

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The Examiner responds with a new conclusion that
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the device of .
. . Waldner . . . to have the opening of the duct 18 extended to
the front of the housing 2 as taught by . . . Feher . . . as this
would allow for cooler air to be directed into the duct and allow
for more efficient cooling.
Ans. 14.
Appellants reply that “the Examiner’s proposed modification of
Waldner changes the orientation of the fan of Waldner from a rearward
facing orientation where it is shielded from an air flow that contains dirt and
debris when the vehicle is operated in a forward direction to a position
where the dirt and debris would readily flow into (and clog up) the
components of the cooling system.” Reply Br. 4-5.
We are persuaded by Appellants’ argument that the Examiner’s
rejection fails to set forth a prima facie case of obviousness because the legal
conclusion of obviousness has not been supported with reasoning having a
rational underpinning. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art to modify Waldner by including
the air channel 40 of Feher to allow for passive air intake from the front of
the housing assembly 2 of Waldner, or to have the opening of duct 18
extended to the front of housing 2 as taught by Feher, to allow for cooler air
to be directed into the duct, “for more efficient cooling of the differential
assembly.” See Ans. 7; see also Ans. 14. This does not set forth a reason
with a rational underpinning why it would have been obvious to one of
ordinary skill in the art to modify Waldner by Feher, because it is not clear
how modifying Waldner to include the air channel 40 of Feher which
passively intakes air would result in more efficient cooling of the differential
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assembly. The air that is passively intaken through the air channel 40 added
to the exterior of differential housing 2 of Waldner would still be directed to
fan 24 and fan 24 would still “be selectively operated to force cooling air
through the air duct arrangement [5] to control lubricant temperature.”
Waldner, col. 4, ll. 50-52. The Examiner has not established, by evidence or
technical reasoning, a sufficient factual basis to reasonably support the
conclusion that a person of ordinary skill in the art would have had a reason
to add air channel 40, or extend duct 18, on the housing assembly of
Waldner when there is no indication in Waldner that existing cooling was
unsatisfactory and when such modification would increase the air stream’s
exposure to dirt and debris to an extent not likely to be encountered by the
filter of Feher (see Reply Br. 5).
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 16, and claims 2-7, 10, 12, 13, and 17 dependent
thereon , under 35 U.S.C. § 103(a) as unpatentable over Waldner, Endreszl,
and Feher.
Claims 19 and 20
Independent claim 19 is directed to an axle assembly including, inter
alia, “an air channel . . . comprising a tubular body having an open leading
end and a trailing end, the leading end extending around the carrier housing
so as to terminate forwardly of the mounting flange.” App. Br., Clms.
App’x. Emphasis added.
The Examiner finds that Waldner discloses a first portion of air
channel 5 integrally formed with cover 1 and cover 1 is shown to be past the
midline of housing 2. Ans. 15 (citing Waldner, col. 3, ll. 64-66 and Figs. 3
and 4). The Examiner also finds that Feher discloses the leading end of duct
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40 extends past the mid line of the helmet when viewed front to back. Id.
(citing Feher, Fig. 1). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to modify Waldner “to have . . . air
channel 5 extend around the carrier housing so as to terminate forwardly of
the mounting flange, which in this case is behind the midpoint of the
housing 2, as taught by . . . Feher . . . in order to provide a way to have
cooler air routed back of the cover for more efficient cooling.” Id.
Appellants argue that the Examiner has not set forth a prima facie case
of obviousness, because “Waldner, Endreszl and Feher, whether taken alone
or in combination, fails to teach or suggest . . . an air channel with a leading
end that ‘extends around the carrier housing so as to terminate forwardly of
the mounting flange,’” as recited in claim 19. App. Br. 13. More
particularly, Appellants argue that “Feher discloses a helmet (12) and, as
such, does not disclose a mounting flange to which a cover is mounted,
while Waldner discloses a system in which an air duct arrangement (5)
extends rearwardly from a differential cover plate (1) (i.e., in a direction
away from a mounting flange to which the cover plate is mounted). Id.
For the same reasons as discussed supra, we are persuaded by
Appellants’ arguments and we do not sustain the Examiner’s rejection of
independent claim 19, and claim 20 dependent thereon, under 35 U.S.C.
§ 103(a) as unpatentable over Waldner, Endreszl, and Feher.

Rejections II-IV – Obviousness based on Waldner, Endreszl, Feher,
and any one of Adamson, Hayashida, and Stenlund, respectively
The Examiner’s rejections do not rely upon any one of Adamson,
Hayashida, and Stenlund to cure the deficiency of the combination of
Waldner, Endreszl, and Feher. Accordingly, for the same reasons as
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discussed supra with respect to independent claims 1, 16, and 19, we do not
sustain the Examiner’s rejections of: claims 8, 14, and 20 as unpatentable
over Waldner, Endreszl, Feher, and Adamson; claim 11 as unpatentable over
Waldner, Endreszl, Feher, and Hayashida; and claims 9, 15, 18, and 21 as
unpatentable over Waldner, Endreszl, Feher, and Stenlund.

DECISION
We reverse the Examiner’s decision to reject claims 1-21.

REVERSED

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