Ex Parte Bird

Patent Trial and Appeal Board

Oct 12, 2017

12914117 (P.T.A.B. Oct. 12, 2017)

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.
12/914,117 10/28/2010 Norman J. Bird 83166248 5211
28866 7590 10/16/2017
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
DODD, RYAN P
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
10/16/2017 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):
docketing @ mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORMAN BIRD1
Appeal 2016-006015
Application 12/914,117
Technology Center 3600
Before ST. JOHN COURTENAY III, LINZY McCARTNEY, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3, 7—9, 11, 15, and 16, which are all the claims
pending in this application. Claims 2, 4—6, 10, and 12—14 are withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Invention
The disclosed and claimed invention on appeal is directed to
“a one-way mechanical diode, such as a one-way clutch, whose states
of engagement and disengagement are controlled electromagnetically by
1 According to Appellant, the real party in interest is Ford Global
Technologies LLC. See Appeal Br. 1.
Appeal 2016-006015
Application 12/914,117
axially pivoting a locking element.” (Spec. 1,11. 7—9).
Illustrative Claim
1. A one-way mechanical diode, comprising:
a first plate including a coil mounted for rotation
with the first plate and cams distributed about an axis;
a second plate axially facing the cams and including
pockets and a second coil mounted for rotation with the
second plate;
struts, each strut supported in one of the pockets for
pivoting axially relative to the cams in a first direction in
response to an electromagnetic fields [sic] induced by
current in the coil and in a second, opposite direction by
an electromagnetic field induced, independently, in the
second coil.
Rejections 2' 3
A. Claims 1,3, 7—9, 11, 15, and 16 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions
of Baxter Jr. (US 5,996,758, issued Dec. 7, 1999) (hereafter “Baxter”), in
view of Petzold (US 6,886,425 B2, issued, May 3, 2005).
B. Claims 1, 3, 7—9, 11, 15, and 16 are alternatively rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over Baxter in view of Wiedman et
2 The Examiner withdrew various rejections under §§112 and 103 in the
Answer (19—20). We only reproduce herein the alternative, cumulative
§ 103 rejections the Examiner clarifies are before us on appeal. {Id.).
3 We note alternative rejections A and B, as listed in this opinion, are
cumulative over the same set of claims 1,3, 7—9, 11, 15, and 16. For clarity,
we have consolidated the Examiner’s two rejection headings (Ans. 3, 12),
which we reproduce as rejections A and B herein.
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Application 12/914,117
al. (US 2,969,134, issued Jan. 24, 1961) (hereafter “Wiedman”).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We focus our review and analysis on Appellant’s arguments that
an artisan would have had no reason to combine Baxter with Petzold (under
rejection A), or to combine Baxter with Wiedman (under alternative,
cumulative rejection B). Because we find the question of whether the
Examiner has improperly combined the references is the dispositive issue in
this appeal, we do not reach Appellant’s other arguments.
Rejections A and B Under 35 U.S.C. § 103(a)
Issues: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
improperly combining Baxter with Petzold (under rejection A), or by
improperly combing Baxter with Wiedman (under rejection B)?
Independent Claims 1 and 9
The Examiner’s Motivation for Combining
Baxter with Petzold Under Rejection A
Regarding the motivation for combining Baxter and Petzold under
rejection A, the Examiner proffers:
12. It therefore would have been obvious to one of ordinary
skill in the art at the time the invention was made to use a
known actuation/biasing strategy (a strategy using two
electromagnetic coils instead of one), as is known from Petzold,
and to form the actuation/biasing mechanism as an
electromagnetic coil which is included in (mounted for rotation
with) the first plate (20) of Baxter, in addition to, or in place of,
the spring (16) of Baxter.
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Application 12/914,117
13. It would have been obvious to construct the "one-way
mechanical diode" of Baxter, along with one extra coil in its
first plate (20), "for pivoting [the strut] axially relative the cams
in said first direction", because, combining prior art elements
according to known methods to yield predictable results (the
axial movement of a strut), is a matter of ordinary skill (KSR
Int'I v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385,
1395-97) (hereinafter referred to as "KSR").
(Ans. 6).
The Examiner further proffers an “obvious-to-try” rationale for
rejection A, over Baxter in view of Petzold:
41. In addition, in the instant case there are a limited number of
physical structures which may be used to actuate or bias a strut.
During prosecution, only a magnet and a spring have been
presented as reliable options for the clutch most analogous to
Baxter). Therefore, choosing from a finite number of strategies
for biasing a strut, would be "obvious to try", to the skilled
artisan at the time of the invention, given that Baxter already
explicitly discloses the analogous second plate which includes a
second coil (Fig. 2). Thus, the use of a coil in addition to, or in
place of, the spring of Baxter is not a patentably distinct or
creative act, as Petzold explicitly demonstrates (see again,
column 2, lines 46-63), and continuing to column 3, lines 1-3).
(Ans. 15) (emphasis added).
The Examiner’s Motivation for Combining
Baxter with Wiedman Under Rejection B
Regarding the motivation for combining Baxter and Wiedman under
alternative cumulative rejection B, the Examiner proffers:
43. Consider also, Wiedman, which biases an analogous strut
(armature 70, and or ring 62) into and out of engagement with
collars 80 and 82, which are analogous to the first and second
plates found in Baxter and the present invention, using
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Appeal 2016-006015
Application 12/914,117
electromagnetic device(s) (76 and 76, Fig. 2). In Weidman
however, the electromagnetic devices are fixed to an annular
housing element 71 (Fig. 2), and are certainly not mounted for
rotation with collars 80 and 82.
44. Nevertheless, in Baxter, its second coil (30) is contained
within its second plate (12), and so unequivocally is mounted
for rotation with it. In addition, as stated in paragraph 32
above, Baxter already provides said "second plate (12, Fig. 1)
axially facing the cams (22) and including pockets and a second
coil (30) mounted for rotation with the second plate".
(Ans. 16).
45. It therefore would have been obvious to one of ordinary
skill in the art at the time the invention was made to use a
known actuation/biasing strategy (a strategy using two
electromagnetic coils instead of one), as is known from
Weidman, and to form the actuation/biasing mechanism as a
coil which is included in (mounted for rotation with) the first
plate (20) of Baxter, in addition to or in place of, the spring (16)
already provided by Baxter, and,
46. It would have been obvious to one having ordinary skill in
the art, at the time the invention was made, to construct the
"one-way mechanical diode" of Baxter, along with one extra
coil in, (mounted for rotation with), its first plate (20), "for
pivoting [the strut] axially relative the cams in said first
direction", because, combining prior art elements according to
known methods to yield predictable results (the axial movement
of a strut), is a matter of ordinary skill (KSR Inf I v. Teleflex
Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97)
(hereinafter referred to as "KSR")[.]
47. In Weidman, the "motivation" to apply the teachings of
Weidman to the one-way mechanical diode of Baxter is to
provide movement of a strut in two directions which is "active",
that is, reliant upon the energization of each solenoid (see
column 2, lines 40-45), instead of being reliant upon the
residual forces of a spring. Weidman also provides the use of
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Application 12/914,117
springs in the embodiments of Fig. 1 and Fig. 5). The only
drawback to using a controllable biasing mechanism such as a
magnet for both biasing mechanisms, is the potential for
malfunction. But Weidman discloses no malfunctions.
(Ans. 16—17) (emphasis added).
The Examiner also proffers an “obvious-to-try” rationale for rejection
B, over Baxter in view of Weidman:
48. In addition, in the instant case, there are a limited number of
physical structures which may be used to actuate or bias a strut.
During prosecution, only a magnet and a spring have been
presented as reliable options for the clutch most analogous to
Baxter. Therefore, choosing from a finite number of strategies
for actuation/biasing a strut, would be "obvious to try", to the
skilled artisan at the time of the invention, given that Baxter
already explicitly discloses the analogous second plate
which includes a second coil (Fig. 2). (emphasis added).
(Ans. 17-18).
Appellant disagrees, and reasserts arguments in the Reply Brief (2—7)
that were originally presented in the Appeal Brief (7—10). In the Reply Brief
(2—7), Appellant further responds to the Examiner’s restatement of the
rejections in the Answer (2—19), and also to the “Response to Arguments”
by the Examiner (Ans. 21—27).
After reviewing the record, we find at least the following arguments
by Appellant in the principal brief are supported by a preponderance of the
evidence:
Regarding the combinability of Baxter and Petzold (rejection B):
In so far as the examiner discusses combining Baxter with
Petzold (see final office action, bottom of page 9 to top of page
10) Baxter discloses one coil 30, with no need for another in
that it specifically uses the one coil in conjunction with the
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Application 12/914,117
specially located permanent magnets in the strut to obtain
the desired bidirectional one-way action, and Petzold
discloses no such coil arrangement. Petzold is merely
teaching biasing a sleeve with a spring or electromagnet to slide
the sleeve. There is no reason for one skilled in the art to
combine the sleeve movement of a spring/coil with Baxter as
this does nothing to overcome the deficiencies of Baxter,
discussed above. Claim 1 recites a first plate including a coil
mounted for rotation with the first plate and a second plate
including a second coil mounted for rotation with the second
plate. Neither Baxter nor Petzold discloses or suggests the
claimed separately located coils. And, as discussed above,
Baxter uses the single coil and the permanent magnets in
the strut itself to allow for the selective, bi-directional one­
way operation. This combination with Petzold would appear
to defeat a purpose of operation of Baxter to obtain this desired
operation in Baxter.
(App. Br. 9) (emphasis added).
Regarding the combinability of Baxter and Wiedman (rejection B)
In so far as the examiner discusses combining Baxter with
Wiedmann (see final office action, middle of page 10 to top of
page 10) Baxter discloses one coil 30, with no need for
another in that it specifically uses the one coil in
conjunction with the specially located permanent magnets
in the strut to obtain the desired bidirectional one-way
action, and Wiedmann discloses no such coil arrangement
on selectively rotatable plates. Wiedmann is merely teaching
biasing a sleeve with a spring or electromagnet to axially slide
the sleeve along a shaft, which is not relevant to the present
claims or to Baxter. There is no reason for one skilled in the
art to combine the sliding sleeve movement of a spring/coil
with Baxter as this does nothing to overcome the deficiencies of
Baxter, discussed above, relative to the claims. Claim 1 recites
a first plate including a coil mounted for rotation with the first
plate and a second plate including a second coil mounted for
rotation with the second plate. Neither Baxter nor Wiedmann
discloses or suggests the claimed separately located coils
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Application 12/914,117
mounted for rotation. And, as discussed above, Baxter uses the
single coil and the permanent magnets in the strut itself to allow
for the selective, bi-directional one-way operation. This
combination with Wiedmann would appear to defeat a
purpose of operation of Baxter to obtain this desired
operation in Baxter.
(App. Br. 9-10).
We note if the proposed modification of the prior art would change
the basic principles of operation of the prior art being modified, the
teachings of the references are insufficient to render the claims obvious.
In re Ratti, 270 F.2d 810, 813 (CCPA 1959). We are further persuaded the
Examiner erred in combining Baxter with Petzold, because, as noted by
Appellant (Reply Br. 4; App. Br. 9), “Baxter already teaches active
movement of the clutch struts (14) in two directions.” See Baxter e.g.,
col. 4,11. 56—61: “By reversing the direction of current flowing through
electric current coil 30, clutch struts 14 are made to pivot in the opposite
direction and electromagnetically controlled bi-directional one-way clutch
apparatus 10 is activated to work in a second rotational direction opposite to
the first rotational direction.”
Given this evidence (id.), we agree with Appellant there would have
been insufficient motivation to add Petzold to achieve active movement of
Baxter’s struts (14) in a second direction, as found by the Examiner.
(Ans. 14).4
4 The Supreme Court guides: “‘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.’” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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Application 12/914,117
We also agree with Appellant that the Examiner’s proffered
substitution would not have been “obvious to try,” because “Petzold’s
electromagnetic device (24, 26) is far more complex than Baxter’s spring
(16).” (Reply Br. 4) (emphasis added).
As persuasively argued by Appellant {id.), “Petzold’s electromagnetic
device (24, 26) requires power wiring and a control scheme to operate.”
Thus, we agree it would not have been “obvious to try” Petzold’s
electromagnetic device (24, 26) in place of Baxter’s spring 16. {Id.). For
essentially the same reasons, we are persuaded by Appellant that it would
not have been “obvious to try” substituting Wiedman’s (more complex)
electromagnetic coils in place of Baxter’s spring 16. {Id.).
Although Appellant has not directly argued the Examiner erred by
reliance on impermissible hindsight, we nevertheless find a preponderance
of the evidence supports Appellant’s contention the Examiner has selectively
applied a “contorted logic [that] requires one skilled in the art to look to
Petzold for a second coil in the form of one of Petzold’s stationary
electromagnetic devices (24 or 26), but then not look to Petzold for how
Petzold’s own device (24 or 26) should be mounted.” (Reply Br. 6).
Thus, we agree with Appellant’s further contention that it would have
been “far more reasonable to expect one skilled in the art having Petzold’s
teachings of the device (24 or 26) to mount the device (24 or 26) as taught
by Petzold. The Examiner has provided no motivation for one skilled in the
art to ignore Petzold's teachings for mounting Petzold's own device (24 or
26).” (Reply Br. 6). For essentially the same reasons argued by Appellant,
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Application 12/914,117
we find the Examiner’s proffered combination of Baxter and Wiedman
suffers from similar deficiencies.
For essentially the same reasons argued by Appellant, as discussed
above, we are constrained on this record to reverse the Examiner’s rejections
A and B of all claims 1, 3, 7—9, 11, 15, and 16 before us on appeal.
DECISION
We reverse the Examiner’s decision rejecting claims 1, 3, 7—9, 11, 15,
and 16 under pre-AIA 35 U.S.C. § 103(a).
REVERSED
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