Ex Parte Goleski et al

Patent Trial and Appeal Board

Jun 7, 2018

13923488 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/923,488 06/21/2013 28395 7590 06/11/2018 BROOKS KUSHMAN P.C./FG1L 1000 TOWN CENTER 22NDFLOOR SOUTHFIELD, MI 48075-1238 FIRST NAMED INVENTOR Gregory Daniel Goleski 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. 83373043 7013 EXAMINER CHAU, TERRY C ART UNIT PAPER NUMBER 3655 NOTIFICATION DATE DELIVERY MODE 06/11/2018 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY DANIEL GOLESKI, JEFFREY EDWARD MAURER, and STEVEN GERALD THOMAS Appeal2017-008928 Application 13/923,488 Technology Center 3600 Before STEFAN STAICOVICI, LEE L. STEPINA, and RICHARD H. MARSCHALL, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Gregory Daniel Goleski et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action (dated Sept. 9, 2016, hereinafter "Final Act.") rejecting claims 8, 9, and 15. 2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). 1 Ford Global Technologies, LLC. is the applicant as provided in 37 C.F.R. § 1. 46 and is identified as the real party in interest in Appellants' Appeal Brief (filed Dec. 1, 2016, hereinafter "Appeal Br."). Appeal Br. 2. 2 Claims 1-7 and 11-14 are withdrawn from consideration. See Final Act. 2. Claim 10 is canceled. See Appellants' Amendment 3 (filed Mar. 22, 2016). Claim 16 is objected to by the Examiner as being dependent upon a rejected base claim and otherwise indicated as being allowable if rewritten in Appeal2017-008928 Application 13/923,488 We REVERSE. SUMMARY OF DECISION INVENTION Appellants' invention "relates to the field of automatic transmissions for motor vehicles." Spec. para. 1. Claim 8, the sole independent claim, is representative of the claimed invention and reads as follows: 8. A planetary gear set comprising: a planet carrier, sun gear, and ring gear configured to rotate about an axis; a plurality of planet gears configured to rotate with respect to the planet carrier and in continuous meshing engagement with the sun gear or the ring gear; and a compression spring configured to disengage a clutch and occupying space radially between the sun gear and the ring gear and circumferentially between adjacent planet gears. REJECTIONS I. The Examiner rejects claims 8 and 9 under 35 U.S.C. § 102(a)(l) as being anticipated by Bondarenko et al (SU 564474 A, published Aug. 18, 1977 hereinafter "Bondarenko"). 3 II. The Examiner rejects claims 8 and 9 under 35 U.S.C. § 102(a)(l)/(a)(2) as being anticipated by Morden (US 3,757,605, issued Sept. 11, 1973). independent form including all of the limitations of the base claim and any intervening claim. Final Act. 9. Claim 16 is not part of the instant appeal. 3 We derive our understanding of this reference from the English language translation contained in the image file wrapper of this application. 2 Appeal2017-008928 Application 13/923,488 III. The Examiner rejects claims 8 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Janson et al. (US 2012/0217120 Al, published Aug. 30, 2012, hereinafter "Janson") and Bondarenko. ANALYSIS Rejection I The Examiner finds that Bondarenko discloses "a compression spring (22 from figure 4) configured to disengage a clutch ( 18; 18 appears to be a brake, however, in the broadest sense, a 'clutch' encompasses a brake, since a clutch is broadly defined as any member which grips or holds tight an object." Final Act. 5. According to the Examiner, A clutch, under ... [the] broadest reasonable interpretation, encompasses both a shift element that holds a rotating element against rotation by selectively connecting it to a housing or fixed member (a brake, under appellant's specific interpretation), and a shift element that selectively couples two or more rotating elements to one another (a clutch, under appellant's specific interpretation). Examiner's Answer 4 (dated Mar. 29, 2017, hereinafter "Ans."). 4 During examination, "claims ... are to be given their broadest reasonable interpretation consistent with the specification, [ ] and ... claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Bond, 910 F .2d 831, 833 (Fed. Cir. 1990) (alteration in original) (citing In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). This means that the words of the claim must be 4 Citing to Phebus et al. (US 5,024,636, issued June 18, 1991, hereinafter "Phebus") and Matsuoka (US 5,846,153, issued Dec. 8, 1998). 3 Appeal2017-008928 Application 13/923,488 given their plain meaning unless the plain meaning is inconsistent with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). Here, we appreciate the Examiner's definition of the term "clutch" (see Final Act. 5, Ans. 3--4) and "that clutches in the planetary transmission art encompass[ es] brakes." Ans. 4. However, in the art of automotive machinery, an ordinary and customary meaning of the term "clutch" is that of "a mechanism for readily engaging or disengaging a shaft with or from another shaft or rotating part." See http://www.dictionary.com/browse/clutch (last visited May 31, 2018). Such a definition is consistent with Appellants' Specification, which defines a "clutch" as "[a] shift element that selectively couples two or more rotating elements to one another." Spec. para. 13. Appellants are allowed to be their own lexicographer (see In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)) and where an explicit definition is provided by the applicant for a term, that definition will control interpretation of the term as it is used in the claim. See Toro Co. v. White Consolidated Industries Inc., 199 F.3d 1295, 1301 (Fed. Cir. 1999). Moreover, the Specification further contrasts the definition of a "clutch" to that of a "brake," which it defines as "[a] shift element that holds a rotating element against rotation by selectively connecting it to the housing." Spec. para. 13. This difference is also explicitly described in Bondarenko, which discloses a friction clutch 13 as separate and distinct from a brake having control elements piston 21 and spring 22. See Bondarenko, page 3. Therefore, as spring 22 is part of the brake, Bondarenko fails to disclose "a compression spring configured to disengage a clutch," as called for by 4 Appeal2017-008928 Application 13/923,488 independent claim 8. Accordingly, we do not sustain the rejection of claims 8 and 9 under 35 U.S.C. § 102(a)(l) as anticipated by Bondarenko. Rejection II The Examiner finds that Morden discloses "a compression spring (70 or 66) configured to disengage a clutch (62, 80; a clutch is broadly defined as any member which grips or holds tight an object.)." Final Act. 6. For the reasons discussed supra, we agree with Appellants that "the terms brake and clutch are not interchangeable." Appeal Br. 3. In this case, Morden discloses that springs 66, 70 are configured to act upon pin 62 to engage notches 80 to "ground[] the rigidly connected first and second planet carrier sections [ 44, 50] to the end plate 14 to prevent rotation of the carrier sections." Morden, col. 3, 11. 13-25, Fig. 2. As Morden's planet carriers 44, 50 are prevented from rotation by a selective connection to plate 14, and in light of the definitions of the terms "clutch" and "brake," discussed supra, in Rejection I, springs 66, 70 are configured to engage a "brake," not a "clutch," as called for by independent claim 8. See also Appeal Br. 3. Moreover, we note Morden describes a separate and distinct clutch means that is incorporated into its transmission mechanism, which includes "along with the sides 38 of the notch 36 which define [a] first cam means, an annular actuator 94 having a cylindrical internal surface 96, a leading face 98, and a trailing face 100." Morden, col. 3, 1. 63---col. 4, 1. 5. As such, for the foregoing reasons, Morden fails to disclose "a compression spring configured to disengage a clutch," as called for by 5 Appeal2017-008928 Application 13/923,488 independent claim 8. Accordingly, we also do not sustain the anticipation rejection of claims 8 and 9 based upon Morden. Rejection III The Examiner relies on Janson to disclose "a compression spring (plate spring to left of 90 in figure lB) configured to disengage a clutch (88)." Final Act. 7. Appellants argue that "the cited compression spring disengages brake 88 which is not a clutch." Appeal Br. 3. We agree with Appellants because, as correctly argued by Appellants, "the terms brake and clutch are not interchangeable." Appeal Br. 3. Janson explicitly refers to element 88 as a "brake." See Janson, para. 22 ("Middle cylinder assembly 86, which includes carrier 32, actuates brake 88."). Although we appreciate the Examiner's position that Janson also refers to element 88 as a "clutch pack" (see Ans. 7), this does not mean that Janson's break 88 constitutes a clutch, as defined by Appellants' Specification. Moreover, we note that Janson further discloses clutches 76, 80, 96, 100 as separate and distinct elements from brakes 88, 104. Janson, para. 25. Therefore, for the foregoing reasons, Janson fails to disclose "a compression spring configured to disengage a clutch," as called for by independent claim 8. Furthermore, for the reasons discussed supra, Bondarenko likewise fails to disclose "a compression spring configured to disengage a clutch." In conclusion, as both Janson and Bondarenko fail to disclose the claimed compression spring, the Examiner's legal conclusion of obviousness 6 Appeal2017-008928 Application 13/923,488 is not supported by sufficient factual evidence, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, we do not sustain the rejection of claims 8 and 15 under 35 U.S.C. § 103(a) as unpatentable over Janson and Bondarenko. SUMMARY The Examiner's decision to reject claims 8, 9, and 15 is reversed. REVERSED 7