Ex Parte Miller et al

Patent Trial and Appeal Board

Jul 31, 2014

11693281 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/693,281 03/29/2007 Kenneth James Miller 81152577 9015
28395 7590 07/31/2014
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
CHIBOGU, CHIEDU A
ART UNIT PAPER NUMBER
3631
MAIL DATE DELIVERY MODE
07/31/2014 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH JAMES MILLER,
SCOTT HOWARD GABOURY,
BRANDON R. MASTERSON,
WALTER JOSEPH ORTMANN, MARVIN PAUL KRASKA,
and STEVEN A. DALEIDEN
____________________

Appeal 2012-004392
Application 11/693,281
Technology Center 3600
____________________

Before: JOHN C. KERINS, MICHAEL L. HOELTER, and
LYNNE H. BROWNE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Kenneth James Miller et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner’s decision rejecting claims 1–3, 6–13, and 16–22
under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
McGee (US 2004/0254045 A1, pub. Dec. 16, 2004), Ibaraki (US 5,635,805,
iss. June 3, 1997), and Shimasaki (US 6,019,183, iss. Feb. 1, 2000). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2012-004392
Application 11/693,281
2

CLAIMED SUBJECT MATTER
The claims are directed to a hybrid vehicle integrated transmission
system. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A vehicle comprising:
first and second power sources each configured to
provide power to move the vehicle; and
a transmission including an input shaft, a drive shaft, a
rotationally powered accessory device disposed concentrically
about the drive shaft, and a clutch operatively attached with the
drive shaft and rotationally powered accessory device, wherein
the transmission is mechanically connected with the first power
source via the input shaft and operatively connected with the
second power source, and wherein the drive shaft is configured
to (i) be selectively driven by power from at least one of the
first and second power sources and (ii) drive the rotationally
powered accessory device if the clutch is engaged.

OPINION
Appellants argue claims 1–3, 6–13, and 16–22 together. See App. Br.
5. We select independent claim 1 as the illustrative claim and claims 2, 3,
6–13, and 16–22 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that the combined teachings of McGee, Ibaraki,
and Shimasaki disclose or suggest all of the limitations of independent claim
1. In particular, the Examiner finds that Ibaraki discloses “a rotationally
powered accessory device (fig. 1; in view of col. 6, ll. 15–21, as defined by
any one of the various mechanical appliances).” Ans. 7. Ibaraki lists these
various mechanical appliances as: “alternator 36, a P/S pump 38, an A/C
compressor 40, a vacuum pump 42 for braking assist, a hydraulic source 43
Appeal 2012-004392
Application 11/693,281
3
for the transmission (T/M), and so on.” Ibaraki, col. 6, ll. 17–21. The
Examiner additionally finds that Shimasaki discloses “a clutch (fig. 2, as
defined by 12) operatively attached with [a] drive shaft and [a] rotationally
powered accessory device (fig. 2).” Ans. 8.
Appellants argue that “Shimasaki does not disclose a rotationally
powered accessory device disposed concentrically about a drive shaft”
because “Shimasaki’s electric motor 2, however, cannot be the claimed
rotationally powered accessory device at least because Appellant has
distinguished between the terms ‘rotationally powered accessory device’ and
‘electric motor.’” Appeal Br. 3 (citing Spec., p. 3, ll. 7–20); Reply Br. 2.
Appellants’ argument is not responsive to the rejection as articulated
by the Examiner. The rejection relies upon Ibaraki’s rotationally mounted
appliances as discussed supra rather than Shimasaki’s electric motor to meet
the claim limitation “a rotationally powered accessory device disposed
concentrically about the drive shaft” as required by claim 1. Thus,
Appellants’ argument is not on point.
Appellants argue that “Shimasaki does not teach ‘to rotationally
mount an accessory device on a driveshaft for rotationally powering that
accessory device’ because Shimasaki’s electric motor 2 is not a rotationally
powered accessory device.” Appeal Br. 4. Again, Appellants’ argument is
not responsive to the rejection as articulated by the Examiner because
Shimasaki by itself is not relied upon to teach this limitation.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., Inc., 800 F.2d 1091, 1097, (Fed. Cir.
1986). Appellants do not explain why the combined teachings of Ibaraki
and Shimasaki would not have suggested rotationally mounting an accessory
Appeal 2012-004392
Application 11/693,281
4
device on a driveshaft for rotationally powering that accessory device. Thus,
Appellants have not apprised us of error.
Appellants argue that “Ibaraki does not disclose a transmission
including a rotationally powered accessory device.” App. Br. 4. Appellants’
argument is not responsive to the rejection as articulated by the Examiner
because Ibaraki by itself is not relied upon to teach this limitation. As
discussed supra nonobviousness cannot be established by attacking the
references individually. Here, McGee is relied on by the Examiner as
teaching a transmission and Appellants do not explain why the combined
teachings of Ibaraki and McGee would not have suggested a transmission
including a rotationally powered accessory device as disclosed by Ibaraki.
Ans. 5, 8. Thus, Appellants have not apprised us of error.
Appellants argue that the Examiner fails to set for a prima facie case
of obviousness. Appeal Br. 5; Reply Br. 3. In support of this argument,
Appellants state that none of the Examiner’s reasons for the proposed
modification “are germane to the question of whether it would have been
obvious to include a rotationally powered accessory device concentrically
disposed about a drive shaft within McGee’s transmission.” Id.
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Court
rejected the rigid requirement of a teaching or suggestion or motivation to
combine known elements in order to show obviousness. KSR, 550 U.S. at
415. The Court noted that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. Thus,
Appellants have not apprised us of error.
Appeal 2012-004392
Application 11/693,281
5
For these reasons, we sustain the Examiner’s decision rejecting
independent claim 1, and claims 2, 3, 6–13, and 16–22 which fall therewith.

DECISION

The Examiner’s rejection of claims 1–3, 6–13, and 16–22 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

rvb