Ex parte Michael et al.

Board of Patent Appeals and Interferences

Mar 25, 1998

08354304 (B.P.A.I. Mar. 25, 1998)

Application for patent filed December 12, 1994.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT J. MICHAEL and RENE L. M. A. PAQUET
________________
Appeal No. 97-0752
Application 08/354,3041
________________
ON BRIEF
________________
Before STAAB, McQUADE and CRAWFORD, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-4. Claim 5, the only other claim currently pending in
the application, has been indicated by the examiner as being
Appeal No. 97-0752
Application 08/354,304
The amendment filed on May 9, 1996 subsequent to the final2
rejection has not been entered. See the advisory letters dated
June 7, 1996 (Paper No. 9) and June 19, 1996 (Paper No. 10).
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allowable if rewritten in independent form to include all the
limitations of base claim 1.2
Appellants’ invention pertains to a mechanical coupling
device for transmitting rotational movement from one member to
another. A basic understanding of the invention can be derived
from a reading of exemplary claim 1, a copy of which is appended
to appellants’ brief.
In support of the rejection, the examiner relies on the
reference listed below:
Moore 4,240,763 Dec. 23, 1980
Claims 1-4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Moore. The examiner’s findings with respect to
Moore are as follows:
[T]he examiner views member 16 as a particulate charge
residing with a chamber, and means for compressing or
releasing the charge as the transfer of torsional
forces between the inner and outer shafts 11 and 12
(described in column 3, lines 8-13). . . . [T]he
material of the coupling member 16 of Moore is designed
such that it comprises elastomeric material and acts as
a resilient coupling, and such that at predetermined
stress’ [sic] the member will transfer the applied
torque between members. [answer, page 3]
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Application 08/354,304
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Based on the above, the examiner has made the following
conclusions of obviousness:
[I]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to
use silicone rubber in crumb form . . . since it has
been held to be within the general skill of a worker in
the art to select a known material on the basis of its
suitability for the intended use as a matter of obvious
design choice. In re Leshin, 125 USPQ 416.
The examiner also takes the position that “although Moore
does not specifically describe rubber charge 16 as a silicone
crumb in a particulate form, it is well known in the art to use
such materials in similar applications as stated within the
specification of the instant application on page 2 lines 27-30”
(final rejection, page 3).
We will not sustain this rejection.
At the outset, the examiner’s reference to a portion of
appellants’ specification in support of the rejection is improper
and inappropriate since this portion of the specification is not
included in the list of prior art relied upon by the examiner in
support of the rejection and is not included in the statement of
the rejection. If a prior art teaching is relied upon in any
capacity to support a rejection, it should be positively included
Appeal No. 97-0752
Application 08/354,304
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in the statement of the rejection. Compare Manual of Patent
Examining Procedure (M.P.E.P.) 706.02(j); In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) and Ex parte
Raske, 28 USPQ2d 1304-05 (BPAI 1993).
In any event, to the extent it is the examiner’s position
that appellants’ specification teaches that it is known in the
art to use silicone crumb material in particulate form to
transmit torque, the examiner’s position is not well taken. The
patents listed by appellants at the bottom of page 1 of the
specification indeed establish that cured silicone rubber
composition in crumb form, as called for in base claim 1, is per
se known. However, these patents do not teach appellants’ use of
this material, namely, to transmit torque when sufficiently
compressed.
The examiner’s reliance on In re Leshin to supply this
apparent deficiency in the prior art also is inappropriate. In
Leshin, the material in question, plastic, was selected for use
in the claimed device based on its known suitability for the
applicant’s intended purpose. Such is clearly not the case here
where, based on the record before us, only appellants have
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Application 08/354,304
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recognized cured silicone rubber composition in crumb form as
being a material suitable for transmitting torque when
sufficiently compressed.
We also do not agree with the examiner’s finding with
respect to the Moore patent. Moore pertains to a torque
transmitting coupling between an outer tubular shaft 11 and an
inner tubular shaft 12. The primary torque transmitting
mechanism is a pair of rubber sleeves 14, 15 provided in an
annular space between the shafts. These sleeves are bonded to
the inner shaft and are under radial compression (column 3, lines
1-7). As explained by Moore, “[i]nitial application of torque
between the universal joints 10 is transmitted solely via the
rubber sleeves 14, 15, but when a predetermined degree of
torsional deflection is exceeded torque is additionally
transmitted in parallel with the sleeves by means of a buffer
unit 16” (column 3, lines 8-13). Buffer unit 16 comprises a
female spider unit 18 integral with the outer shaft 11 and a male
spider unit 17 welded to the inner shaft 12. The male spider
unit and the female spider unit are formed of metal (column 3,
line 31; column 4, line 12) and are constructed in a manner
Appeal No. 97-0752
Application 08/354,304
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similar to that of a dog clutch (column 4, lines 9-10). Arms 20
of the male spider unit “are covered with a rubber layer 25 so as
to eliminate the shock load effect which would otherwise occur if
the metal arms 20 abutted directly with the metal abutments 24 of
the female spider unit 18” (column 3, lines 28-32).
A reading of Moore’s specification makes clear that buffer
unit 16 operates as a backup unit to prevent undue stain and
damage to the rubber sleeves when a certain degree of torsional
deflection is exceeded because of higher torque loadings (column
1, lines 50-58). In view of its stated purpose, the buffer unit
is essentially a rigid metal component, the arms of the male
spider unit being provided with a thin rubber layer 25 merely for
the purpose of eliminating shock loads that would result if
metal-to-metal contact occurred when the buffer unit first comes
into play (column 4, lines 10-14). Based on the above, it is
difficult to perceive how Moore’s buffer unit 16 could be
characterized as being “a particulate charge” and/or “designed
such that it comprises elastomeric material and acts as a
resilient coupling” (answer, page 3), as the examiner has done
here in an apparent attempt to analogize Moore’s buffer unit 16
to the claimed charge of silicon rubber in crumb form that may be
compressed to transmit torque. Because of the way Moore’s device
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Application 08/354,304
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operates, one of ordinary skill in the art would have found the
examiner’s proposed modification to be highly undesirable, and
thus not obvious, because it would render Moore’s buffer unit
unsuitable for its intented purpose of protecting the rubber
sleeves from undue strain and damage when higher torques are
encountered.
In light of the foregoing, we cannot sustain the examiner’s
rejection of the appealed claims as being unpatentable over
Moore.
The decision of the examiner is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-0752
Application 08/354,304
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Dow Corning Corporation
Patent Department
Midland, MI 48686-0994