Ex Parte Bodine et al

Patent Trial and Appeal Board

Nov 4, 2014

12840127 (P.T.A.B. Nov. 4, 2014)

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.
12/840,127 07/20/2010 Thomas J. Bodine P-US-TN-10681-B 9532
28268 7590 11/04/2014
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
EXAMINER
PANG, ROGER L
ART UNIT PAPER NUMBER
3655
MAIL DATE DELIVERY MODE
11/04/2014 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 THOMAS J. BODINE, BARRY E. PLATO, KEVIN S. AGAN,
and JOAO NORONA
____________

Appeal 2012-005210
Application 12/840,1271
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas J. Bodine et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 18–34. We have jurisdiction
under 35 U.S.C. § 6(b).

1 Appellants identify Black & Decker Inc. as the real party in interest.
Appeal Br. 3.
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Application 12/840,127

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Claimed Subject Matter
Claims 18 and 30 are independent, are representative of the claimed
subject matter, and are reproduced below.
18. A transmission comprising:
a shaft member having a cylindrical outer surface in
which longitudinal grooves are formed;
rolling members disposed in said longitudinal grooves;
a gear member having lobes; said lobes disposed between
said rolling members and over said shaft member;
a clutch spring that at least partially encircles said rolling
members and said lobes, said clutch spring having a reduced
torque condition that at least defines said clutch spring
stretching to accommodate said rolling members leaving said
longitudinal grooves and moving to said outer cylindrical
surface such that said clutch spring forms a generally elliptical
shape in said reduced torque condition.

30. A transmission comprising:
an input member having a cylindrical outer surface with a
single pair of longitudinal grooves formed generally 180
degrees apart;
a single pair of rolling members disposed in said
longitudinal grooves;
an output member having a single pair of lobes; each of
said lobes disposed between said rolling members and over said
input member, and having a generally arcuate outer surface
with a generally non-circular elliptical shape; and
a clutch spring that at least partially encircles said rolling
members and said lobes,
wherein, in a torque transmission condition, the clutch
spring presses the rolling members into the grooves to enable
torque transmission from the input member to the output
member, and
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in a reduced torque condition, the balls move radially
outward from the grooves so that the clutch spring expands to a
generally elliptical shape to inhibit torque transmission from the
input member to the output member.
Appeal Br. 15, 17 (Claims App.).
References
The Examiner relies upon the following prior art references:
Crossley US 2,860,498 Nov. 18, 1958
Yeagle US 3,877,253 Apr. 15, 1975
Schröter2 DE 1712948 Dec. 15, 1955
Stirm EP 0 608 083 A1 July 27, 1994
Rejections
Appellants seek review of the following rejections:
I. Claims 18–22 and 25–32 are rejected under 35 U.S.C. § 102(b)
as anticipated by Yeagle;
II. Claims 30 and 34 are rejected under 35 U.S.C. § 102(b) as
anticipated by Crossley;
III. Claims 18–24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schröter and Stirm;
IV. Claims 23 and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yeagle and Stirm; and
V. Claims 24 and 34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yeagle and Crossley.

2 The Examiner relies upon an English language translation of DE 1712948,
which we refer to as “Schröter.” The translation appears to have a typo with
respect to the applicant’s name, referring to “Schroeter” rather than
“Schröter.”
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SUMMARY OF DECISION
We AFFIRM-IN-PART.
OPINION
Rejection I
Appellants raise several arguments in response to this rejection
directed to different groupings of claims. We address each.
Claims 18–22 and 25–29
The Examiner finds that Yeagle discloses each and every element of
claims 18–22 and 25–32, including the recited phrase “a gear member
having lobes.” See Ans. 4, 9. Specifically, the Examiner identifies outer
clutch member 32 of Yeagle as a gear member having “internal gear teeth 29
that mesh with external gear teeth 28 on shaft 22.” Id. at 10.
Appellants contend that element 32 is not a gear member, Appeal
Br. 8, asserting that “there are no gear teeth formed in the aperture [29] of
clutch member 32, or on the shaft 22 of Yeagle,” Reply Br. 7. Appellants
further assert that element 28, identified by the Examiner as gear teeth, is in
fact a section of knurls on shaft 22. Reply Br. 7.
Although the Examiner identifies element 29 of Yeagle as internal
gear teeth, Yeagle discloses element 29 as a central aperture. See Yeagle,
col. 2, ll. 62–63. The Examiner has not pointed to any disclosure that
element 29 are teeth. Thus, the Examiner’s finding that element 32 is a gear
member is not supported by a preponderance of the evidence.
Accordingly, we do not sustain Rejection I as applied to claims 18–
29.
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Claims 30–32
The Examiner finds that Yeagle discloses each and every element of
claims 30–32, including the recited phrase “an input member . . . [and] an
output member . . . wherein, in a torque transmission condition, the clutch
spring . . . enable[s] torque transmission from the input member to the output
member.” See Ans. 4, 9. Specifically, the Examiner finds:
In the entire mechanism of Yeagle, gear member 32 is
connected to the output of shaft 22 and transmits a torque to
shaft 41. It can be shown, however, that whether shaft 41 is the
input or output, the mechanism will function in the same
manner. For the purposes of the rejection, shaft 41 is
considered the input and gear member 32 is considered the
output.
Id. at 12.
Appellants acknowledge that gear member 32 is connected to output
shaft 22, which is described as the output shaft of electric motor and
reduction gear unit 23. Reply Br. 8–9. They assert, however, that torque is
transmitted by clutch member 32 to shaft 12 (not 41). Id. Appellants thus
contend that “clutch member 32 functions as the input member for the clutch
assembly 24.” Id. at 9.
Yeagle discloses that element 41 is an inner clutch member, which is
non-rotatably connected to shaft 12. Yeagle, col. 3, ll. 22–34. Regardless of
whether element 12 or 41 is considered to receive the transmitted torque, we
agree with the Examiner and Appellants that Yeagle discloses that torque is
transmitted from clutch member 32. The Examiner’s position, that clutch
member 32 can be considered an output member, is based on a modification
of Yeagle, rather than showing that Yeagle discloses all of the elements
arranged as in the claims. Thus, the Examiner’s finding that clutch member
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32 discloses the output member of claim 30 is not supported by a
preponderance of the evidence.
Accordingly, we do not sustain Rejection I as applied to claims 30–
32.
Rejection II
The Examiner finds that Crossley discloses each and every element of
claims 30 and 34, including the recited “input member having . . . a single
pair of longitudinal grooves formed generally 180 degrees apart . . . [and] an
output member having a single pair of lobes.” See Ans. 5, 13. Specifically,
the Examiner identifies the spaces between the teeth of heavy gear 20 as
corresponding to the claimed longitudinal grooves and the material between
passages 34 on disc 28 as corresponding to the claimed lobes. See id. at 13.
The Examiner relies on the use of the open-ended transitional phrase
“comprising” in finding that Crossley’s disclosure of eleven longitudinal
grooves and six lobes anticipates the claims. Id. at 14–15.
Appellants contend that the Examiner is improperly ignoring the term
“single,” used in the claims to mean that there is only a single pair of
longitudinal grooves on the input member (as opposed to the eleven grooves
disclosed by Crossley), despite the use of the transitional phrase
“comprising.” Reply Br. 10–11.
As correctly pointed out by the Examiner, claim 30 does include the
open-ended transitional phrase “comprising.” In general, claims employing
this phrase have a scope which covers devices that employ additional,
unrecited elements. AFG Indus. Inc. v. Cardinal IG Co., 239 F.3d 1239,
1245 (Fed. Cir. 2001). Hence, the open-ended nature of claim 30 does not,
in and of itself, exclude an input member having more than two longitudinal
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grooves. Due weight must be given, however, to the unequivocal recitation
in claim 30 that the input member has a “single” pair of longitudinal
grooves. We agree with Appellants that Crossley does not disclose such an
input member and thus does not anticipate the claims.
Accordingly, we do not sustain Rejection II.
Rejection III
Appellants do not separately argue claims 18–24. See Appeal Br. 11–
13; Reply Br. 12. We select claim 18 as representative. Accordingly,
claims 19–24 stand or fall with claim 18. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011); see also In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).
The Examiner finds that Schröter discloses all of the elements of
independent claim 18, except for the output member being a gear member.
Ans. 5. The Examiner finds that Stirm teaches a transmission comprising an
output member that is a gear member, and concludes that it would have been
obvious to one of ordinary skill in the art at the time of invention to “modify
Schr[ö]ter to employ a gear member as an output member in order to provide
and axially offset output and reduce axial space within the transmission.”
Id. Additionally, the Examiner identified Schröter’s annular spring 4 as
corresponding to the claimed clutch spring. Id.
Appellants contend that neither Schröter nor Stirm teaches or suggests
“a ‘clutch spring [that] forms a generally elliptical shape in said reduced
torque condition,’ as recited in independent claim 18.” Appeal Br. 11.
Specifically, Appellants contend that Schröter’s annular spring 4 “does not
form a ‘generally elliptical shape,’” which Appellants contend has an
ordinary and customary meaning of “a generally oval shape, i.e., similar to a
circle but longer than it is wide.” Id. at 11–12.
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For support, Appellants first point to their Figure 11, which illustrates
generally elliptical shape 220. See id. at 12; Fig. 11; Spec. paras. 17, 60.
Appellants further cite two dictionary definitions of “ellipse,” as meaning
“oval” and “a shape similar to a circle but longer than it is wide,”
respectively. App. Br. 12 (citing Exs. A, B). Applying their definition of
“ellipse,” Appellants argue that deformed spring 4 of Schröter is not a
generally elliptical shape because it “is not longer than it is wide.” Appeal
Br. 13; Reply Br. 12.
Appellants acknowledge that the modifier “generally” broadens the
term “elliptical” to include more than a perfect elliptical shape, but they
argue that it cannot broaden the term so much as to completely read it out of
the claim. Reply Br. 12. We agree that the term “generally” should not be
construed so as to completely read out the term “elliptical” from the claim.
We also agree, however, with the Examiner’s interpretation that the term
“generally” expands the scope of the shape of the spring beyond a perfect
ellipse. Thus, even if we accept Appellants’ position—that the length of
Schröter’s spring 4 is not greater than its width—that does not end our
inquiry. The question remains whether the shape of Schröter’s spring is
generally elliptical. In light of the evidence presented, we determine that the
Examiner’s ultimate finding—that Schröter’s Figure 2 shows spring 4 in a
“generally elliptical shape”—is supported by a preponderance of the
evidence.
Accordingly, we sustain Rejection III.
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Rejections IV and V
Rejections IV and V, directed to claims 23, 24, 33, and 34, rely upon
the Examiner’s finding that Yeagle’s outer clutch member 32 is a gear
member or an output member, as recited in independent claims 18 and 30,
respectively. See Ans. 7 (relying on the Examiner’s findings with respect to
claims 18 and 30). The Examiner does not point to anything in Stirm
(Rejection IV) or Crossley (Rejection V) to remedy the deficiencies we
noted in our discussion of Rejection I. Accordingly, for the reasons we
explained in the context of Rejection I, we do not sustain Rejections IV and
V.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 18–24 as
reflected in Rejection III.
We REVERSE the Examiner’s decision rejecting claims 18–34 as
reflected in Rejections I, II, IV, and V.
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

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