Ex Parte Hill et al

Patent Trials and Appeals Board

Sep 20, 2018

13762059 - (D) (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/762,059 02/07/2013
87521 7590 09/24/2018
Cantor Colburn LLP - Hamilton Sundstrand
20 Church Street, 22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
David G. Hill
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.
64824US01 (U310274US) 7105
EXAMINER
HANNON, TIMOTHY
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
usptopatentmail @cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID G. HILL and MICHAEL CARBONE
Appeal2018-000177
Application 13/762,059
Technology Center 3600
Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
LISA M. GUIJT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-15 and 17-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Hamilton Sundstrand Corporation is the Applicant and real party in
interest. Br. 2.
Appeal2018-000177
Application 13/762,059
THE INVENTION
Appellants' invention relates to gear lubrication. Spec. ,r 1. Claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A method of lubrication within a gearbox, comprising:
disposing a rotating shaft within the gearbox that supports a
first gear and includes a differential bearing shaft that supports
a second gear, wherein the first gear interacts with the second
gear at a gear mesh location outside of the shaft;
housing a lubricant in an interior of the rotating shaft; and
dispersing the lubricant from the interior of the rotating
shaft to the gear mesh location through a grease delivery device
on the rotating shaft, the grease delivery device including:
an annular trough sharing a common central axis with the
member and disposed radially outboard of the member, the
annular trough configured to receive the lubricant from the
chamber; and
one or more openings in the annular trough configured to
disperse the lubricant to the gear mesh location.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Coldwell
Butterworth
Kumashi
us 796,957
us 2,532,757
US 2005/0049101 Al
Aug. 8, 1905
Dec. 5, 1950
Mar. 3, 2005
The following rejections are before us for review:
1. Claims 1-15 and 17-20 are rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention.
2. Claims 7-9, 11-15, and 17-20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Butterworth.
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Application 13/762,059
3. Claims 1-9, and 11-13 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Butterworth and Coldwell.
4. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Butterworth and Kumashi.
5. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Butterworth, Coldwell, and Kumashi.
OPINION
35 U.S.C. § 112, Second Paragraph, Indefiniteness
Claims 7-13 - antecedent basis of "the member"
The Examiner notes that "the member" of claim 7 lacks an antecedent
basis. Final Action 2. Appellants do not challenge this ground of rejection
in their Brief. See generally Br. We summarily sustain this ground of
rejection of claim 7. SeeHyattv. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
2008) ("When the appellant fails to contest a ground of rejection to the
Board, ... the Board may treat any argument with respect to that ground of
rejection as waived"). Claims 8-13 depend, directly or indirectly, from
claim 7 and suffer from the same infirmity as claim 7. We sustain the
Examiner's Section 112, second paragraph, rejection of claims 7-13 on
account of lack of antecedent basis of "the member."
Claims 1, 7, and 14 - "annular trough sharing a common central axis"
The Examiner considers "annular trough sharing a common central
axis with the member" in each of claims 1, 7, and 14, to be indefinite. Final
Action 2-3, Claims App. According to the Examiner, it is unclear whether
the common central axis is an axis of rotation, or a longitudinal axis, or
some other central axis. Id.
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Appeal2018-000177
Application 13/762,059
Appellants argue that the "common central axis" of the "annular
trough" is definite. Br. 6. According to Appellants, the annulus is defined
by two concentric circles and a person of ordinary skill in the art would
understand that the central axis defines the center of the annular trough and
also defines the center of shaft 104. Id.
Because an annulus is often defined by two concentric circles,
one skilled in the art would appreciate that the "central axis" of
the "annular trough" is the common center of the annulus, about
which the annulus is formed. In Appellant's claims, the center
of the annulus is also at the center of the shaft 104, as shown
clearly in the cross-sectional view of FIG. 2 as "202".
Appellant respectfully submits that based on the dictionary
definition of annulus and the disclosure of the present
application, one skilled in the art would readily appreciate that
the "common central axis" is both the axis around which the
annulus is formed, and the central axis of the shaft.
Id. ( emphasis added).
In response, the Examiner essentially points out that "[t]he annular
trough will have a center, and through that center are an infinite amount of
central axes (vertical, horizontal, lateral, etc)." Ans. 12. The Examiner
states that the best way to differentiate among such a plurality of axes is to
define their relation to the axis of rotation. Id.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014). Thetestfordefinitenessunder35
U.S.C. § 112, is whether "those skilled in the art would understand what is
claimed when the claim is read in light of the specification." Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
( citations omitted).
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Appeal2018-000177
Application 13/762,059
The Examiner's point that it is unclear whether the common central
axis is an axis of rotation, or a longitudinal axis, or some other central axis is
well taken. Final Action 2-3. Similarly, the Examiner's point that an
annular trough has a center through which there are an infinite amount of
central axes is also well taken. Ans. 12. However, these points go to the
breadth and scope of the claim, not whether it is indefinite. During
examination of a patent application, pending claims are given their broadest
reasonable construction consistent with the specification. In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest
reasonable interpretation standard, claim terms are given their ordinary and
customary meaning as would be understood by one of ordinary skill in the
art in the context of the entire disclosure. In re Trans logic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007). Construing claims broadly during
prosecution is not unfair to the applicant, because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage. In
re Am. Acad. of Sci. Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2012).
We agree with the Examiner that the scope of the claim language is
not limited to the narrow construction proposed by Appellants in page 6 of
their Brief. However, the claim is merely broad, not indefinite. See In re
Gardner, 427 F.2d 786, 788 (CCPA 1970) ("Breadth is not indefiniteness");
MPEP § 2173 .04.
In view of the foregoing discussion, we do not sustain the Examiner's
Section 112, second paragraph, rejection of claims 1, 7, and 14, based on
"common central axis."
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Appeal2018-000177
Application 13/762,059
Claims 2-6, 8-13, 15, and 17-20
These claims depend, directly or indirectly, from either independent
claims 1, 7, or 14. Claims App. They appear to be rejected under the
"common central axis" grounds solely by virtue of their dependency from an
independent claim. Consequently, we do not sustain the Section 112, second
paragraph, rejection of claims 2---6, 8-13, 15, and 17-20 based on "common
central axis."
Anticipation of Claims 7-9, 11-15, and 17-20
by Butterworth
Claim 7-9 and 11-13
The Examiner finds that Butterworth contains all of the limitations of
claim 7. Final Action 3--4. In particular, the Examiner finds that
Butterworth' s shroud 18 features annular troughs that are configured to
receive lubricant. Id. at 4.
Appellants argue, among other things, that Butterworth lacks annular
troughs as claimed. Br. 7. "Element 18 of Butterworth appears to only be
described as a "filling member", and pathways through the filling member,
appear to be holes formed in the structure, and are not annular in shape,
since to be annular, the shape is required to be "ring-shaped". Id.
In response, the Examiner finds that Butterworth's pockets 19, 20, 21,
and 22 correspond to Appellants' "annular trough." Ans. 14. The Examiner
further finds that such pockets rotate about and extend radially outward from
the central axis of element 18. Id. The Examiner further finds that
shroud 18 rotates. Id. ("When rotating, element 18 lies on the same axis as
the half shafts").
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Appeal2018-000177
Application 13/762,059
Butterworth is directed to a differential gear in which differential
drive is effected by hydraulic means. Butterworth, col .1, 11. 8-11.
Butterworth discloses oil as the fluid component of the hydraulic means. Id.
1. 24. Butterworth features two half-shafts, 28, 33 that are hollow, thereby
forming conduits for the oil. Id. col. 2, 11. 10-19. Rotating half-shafts 28
and 33 are substantially perpendicular to the shaft of planet pinion gear 16
that runs co-axially within shroud 18. Id. Fig. 2. Pockets 19, 20, 21, and 22
are disposed radially outward of the shaft of planet pinion 16.
In order to be sustained, an Examiner's rejection must be supported by
a preponderance of the evidence. In re Caveny, 761 F.2d 671, 674 (Fed.Cir.
1985). In the instant case, we cannot find persuasive evidentiary support in
the record for the Examiner's finding that shroud 18 rotates or that
pockets 19, 20, 21, and 22 form a structure that may properly be considered
"annular" in shape. Although the record also does not definitively rule out
such a possibility, neither does it support the Examiner's finding by what
may be considered to be a preponderance of the evidence.
In view of at least the foregoing finding and analysis, we do not
sustain the Examiner's Section 102 rejection of claim 7, neither do we
sustain the rejection of claims 8, 9, and 11-13 that depend therefrom.
Claims 14, 15, and 17-20
Claim 14 is an independent claim and claims 15 and 17-20 depend
therefrom. Claims App. As with claim 7, claim 14 contains a limitation
directed to an annular tough that is disposed radially outboard of a rotating
member. Id. The Examiner's rejection of these claims suffers from the
same infirmity that was identified above with respect to claim 7 discussed
hereinabove. Thus, for essentially the same reason expressed above in
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Application 13/762,059
connection with claim 7, we do not sustain the rejection of claims 14, 15,
and 17-20.
Unpatentability of Claims 1-13
over Combinations Based On Butterworth
Claim 1, as with claim 7, contains a limitation that is directed to an
annular trough disposed radially outboard of a rotating member. Claims
App. The Examiner, once again, relies on Butterworth as disclosing this
claim limitation. Final Action 7-12. Thus, for essentially the same reason
expressed above in connection with the anticipation rejections, we do not
sustain the unpatentability rejections of claims 1-13.
DECISION
The decision of the Examiner to reject claims 7-13 as indefinite under
Section 112, second paragraph, on account of lack of antecedent basis of
"the member" is affirmed.
The decision of the Examiner to reject claims 1-15 and 17-20 as
indefinite under Section 112, second paragraph, on account of the phrase
"annular trough sharing a common central axis with the member" is
reversed.
The decision of the Examiner to reject claims 7-9, 11-15 and 17-20
under Section 102(b) as anticipated by Butterworth is reversed.
The decision of the Examiner to reject claims 1-13 as unpatentable
under Section 103, is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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