Ex Parte Cooper et al

Patent Trial and Appeal Board

Apr 26, 2017

12084603 (P.T.A.B. Apr. 26, 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.
12/084,603 05/06/2008 Clark V. Cooper PA11727;
67097-1259PUS1
1016
54549 7590 04/28/2017
TART SON OASKFY fr OT DS/PR ATT fr WHTTNFY
EXAMINER
400 West Maple Road
Suite 350
BOES, TERENCE
Birmingham, MI 48009 ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLARK V. COOPER,
SONIA TULYANI, EDWARD J. KAREDES,
JEFFERI J. COVINGTON, HARSH VINAYAK,
and ALEXANDER STAROSELSKY
Appeal 2015-006716
Application 12/084,603
Technology Center 3600
Before JAMES P. CALVE, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 15 and 18—23. See Appeal Br. 5. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-006716
Application 12/084,603
CLAIMED SUBJECT MATTER
Claim 15, the sole independent claim, is reproduced below.
15. A gear set, comprising:
a first gear having a first surface; and
an intermeshing second gear having a second surface,
wherein the first and second surfaces each, independently, have
an arithmetic mean roughness of about 0.0762 micrometers/3
microinches or less, the first surface and the second surface are
lubricated with a polyol ester lubricant and the first and second
surfaces each have a lambda value of 1.0 to 2.0, the first gear and the
second gear having a power density increase for pitting failure of
about 52% versus as-ground gears having an as-ground lambda value
of about 0.3.
REJECTIONS
Claims 15 and 18—22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoshiteru (JP 2000-257697 A, pub. Sept. 19, 2000) and
Pafford (US 5,698,502, iss. Dec. 16, 1997).
Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yoshiteru, Pafford, and Philip (US 4,157,258, iss. June 5, 1979).
ANALYSIS
Claims 15 and 18—22 as unpatentable
over Yoshiteru and Pafford
Regarding independent claim 15, the Examiner found that Yoshiteru
teaches a gear set, as claimed, with an arithmetic mean roughness of about
0.0762 micrometers/3 microinches or less, but does not disclose lubrication
by a polyol ester lubricant or a lambda value between 1 and 2. Final Act. 2—
3. The Examiner found that Pafford teaches a polyol ester lubricant used for
enhanced thermal stability and reasoned that it would have been obvious to
provide such a lubricant on Yoshiteru to enhance thermal stability. Id. at 3.
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Appeal 2015-006716
Application 12/084,603
The Examiner determined it would have been obvious to use a lambda
value between 1 and 2, as claimed, “since it has been held that discovering
an optimum value of a result effective variable involves only routine skill in
the art.” Id. The Examiner also found that Yoshiteru’s gear set is capable of
having the claimed power density increase. Id. at 2—3. The Examiner also
reasoned that the claimed power density increase for pitting failure is merely
a property of the claimed invention and not a structural limitation such that
the prior art’s disclosure of the claimed gear set with the claimed roughness
and lubricant structural features leads to this property, which is presumed to
be inherent in the prior art. Ans. 5—6.
We agree with Appellants that neither Yoshiteru nor Pafford teaches
or suggests that the lambda value (ratio of lubricant film thickness to surface
roughness) is a result-effective variable, the value, or adjustment of which is
recognized in the prior art as affecting a power density increase or any other
attribute such that a skilled artisan would have been motivated to experiment
and optimize it in some manner to arrive at the claimed lambda value of 1.0
to 2.0. The Examiner does not cite any evidence to support a determination
that it would have been obvious to use a lambda value between 1 and 2. See
Final Act. 3. The Abstract of Yoshiteru, which is cited by the Examiner to
show the claimed surface roughness (Final Act. 2), does not teach anything
about a lubricant or lubricant thickness. Pafford teaches the claimed polyol
ester lubricant for lubricant applications such as aircraft turbine oils but does
not teach thickness or use with gear sets. Pafford, 14:9—11; see Final Act. 3.
The Examiner’s citation of Biltgen (US 5,549,764, iss. Aug. 27, 1996)
(Ans. 9) is not persuasive evidence because it is not applied in the rejection
that is under review.
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Appeal 2015-006716
Application 12/084,603
Even considering Biltgen’s teachings, Biltgen teaches “[cjontacts in
gears usually operate in the region of mixed-film lubrication where the film
thickness to roughness ratio, lambda, is less than three.”1 Biltgen, 1:65—67.
Biltgen also teaches that the load is shared between the fluid and asperity
contacts, and lubrication behavior is influenced by overall distributions of
film thickness, pressure, shear stress, and flash temperature. Id. at 1:67—2:6.
We agree with Appellants that these disclosures do not teach varying the
lubrication film thickness and lambda in order to achieve a power density
increase or any other property or result. Reply Br. 2—3.
Biltgen teaches a lambda range of less than three without any teaching
of the advantage or efficacy of varying that range for any particular reason.
In the event of further prosecution, we note that Biltgen’s range of less than
three overlaps and encompasses the claimed lambda range of 1.0 to 2.0.
This overlap creates a prima facie case of obviousness. See In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003). Appellants may rebut that showing
with evidence of criticality and unexpected results of the claimed range
relative to the prior art. See Appeal Br. 3; Reply Br. 2.
For all of the foregoing reasons, we do not sustain the rejection of
claims 15 and 18—22.
1 The Examiner rejected original claims 1—14 under 35 U.S.C. § 103(a) as
unpatentable over Biltgen and Rao, “Repair of Helicopter Gears” and over
Biltgen and Yoshiteru. Non-Final Act. (mailed Apr. 5, 2011), at 2—8. Eater,
the Examiner rejected claims 1—17 on these grounds. Final Act. (mailed
Sept. 20, 2011), at 2—10. The Examiner also rejected claims 15—22 on these
grounds after Appellants cancelled claims 1—14. See Non-Final Act. (mailed
Feb. 1, 2012), at 2—7. When Appellants amended independent claim 15 to
recite lubrication “with a polyol ester lubricant,” the Examiner switched the
grounds of rejection to Yoshiteru and Pafford as we consider on this appeal.
See Final Act. (mailed May 23, 2012), at 2—4.
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Appeal 2015-006716
Application 12/084,603
Claim 23 as unpatentable over
Yoshiteru, Pafford, and Philip
Appellants argue that the Examiner’s reliance on Philip to teach the
features of claim 23 does not cure the deficiencies of Yoshiteru and Pafford
as to claim 15, from which claim 23 depends. See Appeal Br. 4. We agree.
Thus, we do not sustain the rejection of claim 23.
DECISION
We reverse the rejections of claims 15 and 18—23.
REVERSED
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