Ex Parte Kozlowski et al

Patent Trial and Appeal Board

Aug 10, 2016

11950587 (P.T.A.B. Aug. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111950,587 12/05/2007
80748 7590 08/12/2016
Cantor Colburn LLP-General Motors
20 Church Street, 22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Keith A. Kozlowski
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.
DP-316669(060408.00804) 6821
EXAMINER
RIPLEY,JAYR
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/12/2016 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 KEITH A. KOZLOWSKI and EDUARDO MONDRAGON
Appeal2013-002434
Application 11/950,587
Technology Center 3600
Before LINDA E. HORNER, ANNETTE R. REIMERS, and
JAMES J. MAYBERRY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Keith A. Kozlowski and Eduardo Mondragon (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner's decision to reject claims 1-19
under 35 U.S.C. § 103(a) as unpatentable over Jacob (US 5,242,329; iss.
Sept. 7, 1993) and Rubin (DE 3700868 Cl; pub. July 14, 1988). 1 We have
jurisdiction under 35 U.S.C. § 6(b ).
1 Appellants contend that "[a]lthough an English language abstract has been
provided, an English language translation of the full text of Rubin is not found
in the record." Appeal Br. 15-16; see also Reply Br. 5. The Examiner makes
it clear on the record that he relies only on the drawings and abstract of Rubin
for the rejection (i.e., "[t]he written specification [of Rubin] is not being used
in the rejection[]."). See Ans. 9-10.
Appeal2013-002434
Application 11/950,587
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a fixed center constant velocity
joint." Spec. para. 1, Figs. 1, 5. Claims 1 and 13 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A constant velocity joint comprising:
an outer member defining an interior and a plurality of
outer member ball tracks within said interior extending along a
longitudinal axis with said plurality of outer member ball tracks
including a first group of outer member ball tracks and a second
group of outer member ball tracks;
an inner member disposed within said interior and
defining a plurality of inner member ball tracks extending along
said longitudinal axis with said plurality of inner member ball
tracks including a first group of inner member ball tracks and a
second group of inner member ball tracks;
said first group of inner member ball tracks opposing said
first group of outer member ball tracks to define a first group of
funnels and said second group of inner member ball tracks
opposing said second group of outer member ball tracks to define
a second group of funnels;
a plurality of drive balls with one of said plurality of drive
balls disposed within each of said first group of funnels and
within each of said second group of funnels;
a cage disposed between said outer member and said inner
member and defining a plurality of windows with one of said
plurality of drive balls disposed within each of said plurality of
windows;
said first group of inner member ball tracks and said first
group of outer member ball tracks of said first group of funnels
spaced from each other in parallel relationship relative to each
other to define a uniform width between said first group of inner
member ball tracks and said first group of outer member ball
tracks along said longitudinal axis to define a plurality of uniform
funnels and said second group of inner member ball tracks and
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Application 11/950,587
said second group of outer member ball tracks of said second
group of funnels spaced from each other in non-parallel
relationship to define a diverging width between said second
group of inner member ball tracks and said second group of outer
member ball tracks along said longitudinal axis to define a
plurality of diverging funnels, said plurality of uniform funnels
located radially opposite one another about the longitudinal axis
in radially opposing pairs and said plurality of diverging funnels
located radially opposite one another about the longitudinal axis
in radially opposing pairs.
ANALYSIS
Claims 1-12
Claim 1 recites, in relevant part, "said plurality of uniform funnels
located radially opposite one another about the longitudinal axis in radially
opposing pairs and said plurality of diverging funnels located radially
opposite one another about the longitudinal axis in radially opposing pairs."
Appeal Br. 19-20, Claims App. (emphasis added). The Examiner finds that
Jacob discloses a plurality of diverging funnels located radially opposite one
another about the longitudinal axis in radially opposing pairs. See Final Act.
6, 10, 12; see also Ans. 5. The Examiner further finds that (1) Rubin
discloses a plurality of uniform funnels arranged radially about the
longitudinal axis (see Final Act. 8; see also the Examiner's annotated
versions of Figures 1-3 of Rubin at Attachments A, B); and (2) Rubin
discloses "the use of diverging funnel ball races with parallel sided funnel
ball races in the same constant velocity joint structure" (Ans. 7, 8; see also
Final Act. 9). The Examiner concludes that it would have been obvious "to
simply modify the constant velocity joint of Jacob by providing ball races
with funnels having parallel sides as taught by Ruben et al[.] to make the
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Application 11/950,587
joint have a considerably greater torque transmission capacity." Final Act.
9-10. The Examiner further finds:
As concerns the placement of the various ball race funnels
in the constant velocity joint, the claimed relationships of the
various funnels would have been obvious to one having ordinary
skill in the art at the time the invention was made to equalize the
loading on the joint and since it has been held that where the
general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by
routine experimentation.
Final Act. 10 (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)); see also
Ans. 8 ("There are 360° in a circle and the choice of placing like ball race
funnels being positioned radially opposite one another about the longitudinal
axis in radially opposing pairs is simply an optimization to achieve equal
loading of the joint as well as rotational balance.").
Appellants contend:
[E]ven if the parallel grooves of Rubin could have been
implemented in Jacob, there is no teaching, suggestion or
motivation to arrange the grooves or funnels in the manner
claimed so that a plurality of uniform funnels are located radially
opposite one another about the longitudinal axis in radially
opposing pairs and a plurality of diverging funnels are located
radially opposite one another about the longitudinal axis m
radially opposing pairs, as recited in claim 1.
Reply Br. 3. Appellants further contend:
The Examiner proposes modifying Jacob based on the
teachings of Rubin to provide a greater torque capacity. In
modifying Jacob, the Examiner appears to pick and choose the
parallel groove pairs of Rubin as the feature which provides the
alleged benefit. In doing so, however, the Examiner fails to
consider the teachings of Rubin as a whole.
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Application 11/950,587
In Rubin, the parallel groove pairs are used in conjunction
with diverging groove pairs (in one direction) and the groove
pairs are not positioned radially opposite the longitudinal axis
from a groove pair of the same type. That is, in Rubin, a
diverging groove pair is positioned radially opposite about the
longitudinal axis from a parallel groove pair.
Appeal Br. 12; see also id. at 9.
Appellants also contend that "it is not clear how Aller is relevant to
[the] feature[s]" of the plurality of uniform funnels being located radially
opposite one another about the longitudinal axis in radially opposing pairs
and the plurality of divergent funnels being located radially opposite one
another about the longitudinal axis in radially opposing pairs, as called for in
claim 1. Appeal Br. 13. According to Appellants:
Aller pertains to situations where a value or range of values
outside of a known range of values is specified that may be
discovered by routine experimentation. Appellant[ s] recognize[]
that this holding may be relevant to situations other than
temperature or chemical concentrations. Ho\~1ever, the claims
recite features directed to the location of specific funnels relative
to other funnels in a constant velocity joint. These features are
not directed to the selection of a value that may be found through
routine experimentation. Accordingly, Appellant[ s] respectfully
submit[] that Aller, as applied by the Examiner, is not relevant to
the claims of the instant application.
Id. at 13-14.
At the outset, although we acknowledge the Examiner's position that
Jacob discloses a plurality of diverging funnels located radially opposite one
another about the longitudinal axis in radially opposing pairs (see Final Act.
6, 10, 12), as pointed out by Appellants, Rubin discloses "a divergent groove
pair is positioned radially opposite from a parallel groove pair as shown in
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Application 11/950,587
FIGS. 1 and 2." Appeal Br. 9; see also id. at 12 ("Rubin discloses different
types of grooves pairs, i.e., diverging and parallel, to be positioned radially
opposite from one another."); Final Act. 8-9; the Examiner's annotated
versions of Figures 1-3 of Rubin at Attachments A, B. The Examiner fails
to establish by sufficient evidence or technical reasoning that modifying
Jacob's divergent funnel velocity joint with the uniform (parallel) funnels of
Rubin will necessarily result in the divergent and uniform (parallel) funnels
being arranged as claimed. See Final Act. 9-10; see also Ans. 5. In other
words, it is possible that the Examiner's proposed modification of Jacob's
divergent funnel velocity joint with the uniform (parallel) funnels of Rubin
could result in a pair of diverging funnels being arranged radially opposite a
pair of uniform (parallel) funnels about the longitudinal axis. See Reply Br.
3. Moreover, like Appellants, we fail to see how arranging the divergent and
uniform (parallel) funnels as claimed is "directed to the selection of a value
that may be found through routine experimentation." See Appeal Br. 13-14;
see also Reply Br. 4; Final Act. 1 O; Ans. 8.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 1, and its dependent claims 2-12,
as unpatentable over Jacob and Rubin.
Claims 13-15
Appellants do not present arguments for independent claim 13
separate from those presented for independent claim 1. See Appeal Br. 7-
15. However, in contrast to claim 1, which requires a particular arrangement
of the divergent and uniform (parallel) funnels about the longitudinal axis,
claim 13 merely requires "at least two of said plurality of uniform funnels or
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Application 11/950,587
said plurality of diverging funnels located opposite one another about the
longitudinal axis." Compare Appeal Br. 19-20 Claims App. with id. at 22
Claims App. (emphasis added). Appellants' contentions appear to be
premised on the particular arrangement of the divergent and uniform
(parallel) funnels about the longitudinal axis of claim 1. See Appeal Br. 7-
15; see also Skvarla Declaration2 i-f 8 ("To my knowledge, none of these
joint configurations [Jacob and Rubin] combine diverging and parallel
groove pairs in the manner described in the present application."); see also
id. i-f 10 ("Neither Jacob nor Rubin, or their combination, teaches or suggests
the benefits or advantages of a joint configuration that incorporates both
diverging and uniform grooves."). However, claim 13 merely requires at
least two of the uniform or diverging funnels to be located opposite one
another about the longitudinal axis. See Appeal Br. 22 Claims App.; see In
re Self, 671F.2d1344, 1348 (CCPA 1982) (Limitations not appearing in the
claims cannot be relied upon for patentability).
In this case, the Examiner relies on Jacob for disclosing "like
members of the plurality of diverging funnels of Jacob are located opposite
like members about the longitudinal axis of the coupling." Final Act. 12; see
also id. at 6, 10. Appellants do not apprise us of error in this finding of the
Examiner. See Appeal Br. 7-15. 3 As such, Appellants do not apprise us of
error in the Examiner's rejection of claim 13.
2 Appellants present additional evidence in the Declaration of William Skvarla
(hereinafter the "Skvarla Declaration") filed under 37 C.F.R. § 1.132 on Aug.
25, 2011. See Appeal Br. 14.
3 We note that the Skvarla Declaration acknowledges that Jacobs discloses
"pairs of opposed diverging grooves." Skvarla Declaration i-f 11.
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Accordingly, we sustain the Examiner's rejection of independent claim
13 as unpatentable over Jacob and Rubin. Appellants do not present
arguments for claims 14 and 15, which depend from claim 13. See Appeal
Br. 16-17. For the same reasons discussed above, we likewise sustain the
Examiner's rejection of claims 14 and 15 as unpatentable over Jacob and
Rubin.
Claims 16-19
Claim 16 calls for the plurality of diverging funnels to include "a first
subset and a second subset," the first subset of the plurality of diverging
funnels to "diverge toward said attachment end in a first direction along said
longitudinal axis" and the second subset of the plurality of diverging funnels
to "diverge away from said attachment end in a second direction along said
longitudinal axis." See Appeal Br. 22-23, Claims App. The Examiner finds
that Jacob discloses these limitations. See Final Act. 5 (citing the
Examiner's annotated version of Figure lb of Jacob at Attachment C).
Figure lb of Jacob "is a sectional view like that of FIG. la illustrating
an alternate embodiment." Jacob, col. 3, 11. 27-28, Fig. 1 b. First, the
Examiner does not indicate what he considers to constitute the first and
second subsets of diverging funnels in Figure 1 b of Jacob. See Final Act. 5;
see also the Examiner's annotated version of Figure lb of Jacob at
Attachment C; Appeal Br. 16-17. Instead, the Examiner appears to rely on
two separate embodiments for this claim element. See the Examiner's
annotated version of Figure 1 b of Jacob at Attachment C (relying on both the
embodiment of Fig. 1 a and the alternative embodiment of Fig. 1 b together
for this claim element). Second, the Examiner does not direct us to any
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Application 11/950,587
discussion in Jacob regarding "a first subset and a second subset" of
diverging funnels that "diverge in opposite directions." See Final Act. 5; see
also the Examiner's annotated version of Figure 1 b of Jacob at Attachment
C; Appeal Br. 16-17.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of dependent claim 16 and claims 17-19, which
depend therefrom, as unpatentable over Jacob and Rubin.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-12 and
16-19 as unpatentable over Jacob and Rubin.
We AFFIRM the decision of the Examiner to reject claims 13-15 as
unpatentable over Jacob and Rubin.
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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