Ex Parte Janson et al

Board of Patent Appeals and Interferences

Nov 5, 2010

11973594 (B.P.A.I. Nov. 5, 2010)

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.
11/973,594 10/09/2007 David A. Janson 81172335 2823
28866 7590 11/05/2010
MACMILLAN, SOBANSKI & TODD, LLC
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
LEWIS, TISHA D
ART UNIT PAPER NUMBER
3655
MAIL DATE DELIVERY MODE
11/05/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID A. JANSON and REID A. BALDWIN
____________

Appeal 2010-009939
Application 11/973,594
Patent 7,086,987 B2
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, MICHAEL W. O’NEILL,
and STEFAN STAICOVICI, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-009939
Application 11/973,594
Patent 7,086,987 B2

2
STATEMENT OF THE CASE
David A. Janson and Reid A. Baldwin (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 14-23 under 35
U.S.C. § 103(a) as unpatentable in view of Thomas (US 6,955,627 B2,
issued Oct. 18, 2005) and Kukucka (US 2003/0125153 A1, published Jul. 3,
2003) in reissue application 11/973,594. The reissue application seeks to
reissue U.S. Patent 7,086,987 B2, issued August 8, 2006, based on
application 10/941,709. We have jurisdiction under 35 U.S.C. § 6(b). We
REVERSE.
The Invention
The claims on appeal relate to a powertrain for an automotive vehicle
Claim 14, reproduced below with underlining omitted, is
representative of the subject matter on appeal.
14. A powertrain for an automotive vehicle,
comprising:
a power source;
a transmission including a first input driveably
connected to the power source, a first output, and
epicyclic gearing located in a torque path between
the first input and the first output, the epicyclic
gearing producing multiple forward gears, a
reverse gear and a low range gear having a torque
ratio that is greater than a torque ratio of a lowest
gear of the forward gears, wherein the transmission
automatically produces gear shifts among the
forward gears, and the transmission produces the
low range gear only in response to manual
selection of low range gear operation of the
transmission; and
a transfer case including a second input
driveably connected to the first output and a
Appeal 2010-009939
Application 11/973,594
Patent 7,086,987 B2

3
second output continually driveably connected to a
first set of vehicle wheels and selectively driveably
connected to a second set of vehicle wheels, the
transfer case providing no low-range torque ratio.

DISCUSSION
Appellants contend that the Examiner improperly found Thomas
discloses that low gear is produced only in response to manual selection of
low range gear operation. Appellants explain Thomas as disclosing the
transmission responds to a PRNDL gear selector. According to Appellants,
Thomas fails to disclose the transmission automatically producing gear shifts
among the forward gears and producing the low range gear only in response
to manual selection of low range gear operation of the transmission as the
claims define the invention. Reply Br. 1-2. Appellants further contend that
the switch 70 that the Examiner is using to teach selecting low range
operation of the transmission manually is actually used to indicate to the
controller that off-road driving is desired. Appellants contend the controller
prevents a shift to the lower drive ratios of the transmission 16 until the
vehicle is traveling less than 25 mph. Reply Br. 3. Accordingly, to
Appellants, Kukucka’s switch 70 signals the controller 68 of a desire to shift
into a low range mode and into four-wheel drive. The controller then
determines whether the vehicle speed and engine speed are suitable for
shifting the constant variable transmission (CVT) into low range mode and
for engaging the coupling mechanism 34 for producing four-wheel drive.
When these conditions are met, the transmission can operate in a low range
and coupler mechanism 34 produces four-wheel drive. App. Br. 8.
Accordingly, Appellants contend that a prima facie case of obviousness is
Appeal 2010-009939
Application 11/973,594
Patent 7,086,987 B2

4
not present because claimed limitations are not found within the combined
references. Id.
Our review of Appellants’ contentions and the teachings of the
references lead us to conclude that Appellants are correct that the Examiner
failed to establish a case of obviousness for the claimed invention. In
addition to the above contended deficiencies as argued by Appellants, which
are not rebutted by the Examiner, we further conclude that the Examiner
failed to articulate how a person having ordinary skill in the transmission art
would combine the teachings of two completely different transmissions,
namely, Thomas’ automatic transmission (gears) and Kukucka’s CVT
(belts), in order to reach the claimed invention of a transmission having
epicyclic gearing where the transmission automatically produces gear shifts
among the forward gears and produces the low range gear only in response
to the manual selection of low range gear operation of the transmission. The
Examiner points to no interrelated teaching of these two patents, the effects
of demands known to the design community or present in the marketplace,
or the background knowledge possessed by a person having ordinary skill in
the art as support for the rationale to make the proposed modification. In our
view, the Examiner’s rationale for combining these two patents is based
upon an insufficient rational underpinning or factual basis to support the
combination, but instead is based upon doubts that the claimed invention is
unpatentable.

Appeal 2010-009939
Application 11/973,594
Patent 7,086,987 B2

5
DECISION
In view of the foregoing, the Examiner’s decision to reject claims 14-
23 under 35 U.S.C. § 103(a) as unpatentable in view of Thomas and
Kukucka is reversed.

REVERSED

Klh

MACMILLAN, SOBANSKI & TODD, LLC
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604