Ex Parte Nelson et al

Patent Trial and Appeal Board

Sep 20, 2018

14980663 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/980,663 12/28/2015 Christopher A. Nelson
98783 7590 09/24/2018
Perkins Coie LLP - DEN General
P.O. Box 1247
Seattle, WA 98111-1247
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.
089143-8043.US02 8392
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER A. NELSON, JAMES LECLAIRE,
and MARK GOLD
Appeal2018-000073 1
Application 14/980,663
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-9, 11-18, 20, 22,
and 23. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
1 The Appellants identify the "real party in interest for this appeal is
STEMCO LP and PURSUIT LLP." Appeal Br. 2.
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Application 14/980,663
The invention relates generally to "rotary air unions used in supplying
pressurized air to the rotating tires of trailers with hollow, non-drive axles."
Spec. ,r 2.
Claim 1 is illustrative:
1. A central tire inflation system for maintaining tire inflation on
a vehicle, the central tire inflation system comprising:
an axle plug shaped to cooperatively engage a hollow axle
of the vehicle, the axle plug having a bore;
a flexible torque transfer shaft having an upstream end
shaped to cooperatively engage the bore of the axle
plug and a downstream end opposite the upstream end,
the flexible torque transfer shaft comprising an air
conduit extending from the upstream end to the
downstream end and an overmolding;
a rotary air union assembly comprising a stationary shaft
and a housing rotatably coupled to the stationary shaft,
wherein the flexible torque transfer shaft overmolding
couples the flexible torque transfer shaft and the
stationary shaft; and
a fluid flow path contained in the housing of the rotary air
union assembly and in fluid communication with the
air conduit.
The Examiner rejected claims 1-3, 9, and 11-15 2 under 35 U.S.C.
§ I03(a) as unpatentable over Stech (US 6,425,427 Bl, iss. July 30, 2002)
and Beverly et al. (US 2006/0231184 Al, pub. Oct. 19, 2006) (hereinafter
"Beverly").
The Examiner rejected claims 4--7 under 35 U.S.C. § I03(a) as
unpatentable over Stech, Beverly, and Nelson et al. (US 7,207,365 B2, iss.
Apr. 24, 2007) (hereinafter "Nelson").
2 Claim 12 is addressed at pages 5--6 of the Answer, and page 6 of the Final
Action, even though not included in the statement of rejection at page 2 of
the Answer.
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Application 14/980,663
The Examiner rejected claim 8 under 35 U.S.C. § I03(a) as
unpatentable over Stech, Beverly, and Alexander et al. (US 2008/0290659
Al, pub. Nov. 27, 2008) (hereinafter "Alexander").
The Examiner rejected claims 16-18 and 22 under 35 U.S.C. § I03(a)
as unpatentable over Stech.
The Examiner rejected claims 20 and 23 under 35 U.S.C. § I03(a) as
unpatentable over Stech and Cormier Sr. (US 6,011,463, iss. Jan. 4, 2000)
(hereinafter "Cormier").
The Examiner rejected claims 1-9, 11-18, 20, 22, and 23 on the
ground of non-statutory double patenting over claims 1-18 ofNelson et al.
(US 9,221,308 B2, iss. Dec. 29, 2015) (hereinafter "Nelson '308").
We REVERSE.
ANALYSIS
Obviousness Reiection of Claims 1-3. 9. and 11-13
In rejecting claim 1, the Examiner finds the claimed flexible torque
transfer shaft in Stech comprises the "assembly of flexible nylon tubing 230,
compression sleeve 240, rotating aluminum shaft 242, seal 250, seal 270, a-
rings 264 and piston shaft 260) having an upstream end (end proximate 264)
shaped to cooperatively engage the bore of the axle plug ... and a
downstream end opposite the upstream end ( end of said shaft proximate
retainer 220)." Answer 2-3 (emphasis omitted). The Examiner finds 3 that
Stech discloses the claimed stationary shaft at element 282. Id. The
3 The Examiner also finds Stech's element 282 is part of the claimed axle
plug, consisting of "assembly of bolt 282, expander 302, seal 304, a-
ring 306, wedge plate 308 and wedge nut 290." Id. at 2. The Examiner,
thus, assigns Stech's element 282 to two different claim elements.
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Application 14/980,663
Examiner further finds it would have been obvious "to form the portion 242
of the shaft with an overmolding (i.e. seal 270) with the motivation of
reducing the number of parts to assemble." Id. at 3 (emphasis omitted).
The Appellants argue error in the rejection that overmolding Stech's
rotating element 242 and seal 270 with stationary shaft 282 would mold
together rotating and non-rotating parts, which would be problematic.
Appeal Br. 10.
The Examiner responds to the argument by stating:
the rejection sets forth the obviousness of overmolding seal 270
onto shaft 242, for the purpose of reducing the number of parts
of the assembly (namely, seal 270 being overmolded onto
shaft 242 would still form the same sealing function). Therefore,
the Appellant appears to be arguing a configuration not set forth
in the rejection.
Answer 20.
The Examiner is, thus, essentially arguing that element 282 was not
considered to be overmolded in the rejection. The claim, however, requires
that "the flexible torque transfer shaft overmolding couples the flexible
torque transfer shaft and the stationary shaft." The Specification makes it
clear that the overmolding includes at least a part of the stationary shaft, as
follows
The flexible torque transfer shaft 302 is formed by an
elastomeric overmolding of a portion of the stationary shaft 304,
the first air fitting 502, the air conduit 306, and a portion of the
second air fitting 504. The flexible torque transfer shaft 302
inhibits the rotation of the stationary shaft 304 and transfers the
torque along its length.
Spec. ,r 27 (cited at Appeal Br. 3). We, thus, construe that the claimed
overmolding, that couples the flexible torque transfer shaft and the stationary
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Application 14/980,663
shaft, must encompass at least part of the stationary shaft 282 in order to
meet the claim limitations.
As such, the Examiner has not demonstrated that Stech renders
obvious an overmolding that encompasses at least part of the claimed
stationary shaft, corresponding to Stech's shaft 282.
For this reason, we do not sustain the rejection of claim 1, nor of
dependent claims 2, 3, 9, and 11-13 that were rejected along with claim 1.
Obviousness Reiection of Claims 4-8
The Examiner has not established on the record that either of Nelson
or Alexander remedy the deficiencies in the combination of Stech and
Beverly set forth above at claim 1, from which claims 4--8 depend. For this
reason, we do not sustain the rejections of claims 4--8.
Obviousness Reiection of Claims 14 and 15
In rejecting claim 14, the Examiner finds the claimed stationary shaft
at Stech's element 260, "and a flexible torque transfer shaft (shaft extending
axially from tubing 230 to enlarged outer diameter shaft 282)." Answer 8.
The Examiner further finds it "would have been obvious to one of ordinary
skill in the art at the time of the invention to overmold seal 304 onto the
flexible torque transfer shaft with the motivation of reducing the number of
parts to assemble." Id. at 9 ( emphasis omitted).
Independent claim 14, however, recites "an elastomer overmold
covering the air conduit and at least a portion of the stationary shaft, wherein
the elastomer overmold resists rotation of the stationary shaft." The
Examiner has not established the obviousness of an overmold over Stech's
element 260, because the rejection only articulates overmolding seal 304 and
the flexible torque transfer shaft, but omits the identified stationary shaft. In
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Application 14/980,663
addition, Stech indicates that piston 260 is completely encased in bolt 282.
See Stech Figures 8 and 11, column 5 lines 48-56. Upon inspection of
Stech's Figures 8 and 11, it is clear that the portion of Stech between
tubing 230 and bolt 282 is made up only by the rigid shaft 242. To
overmold shaft 242 and seal 304, as suggested by the Examiner, would have
no effect on piston 260 encased in bolt 282, and, thus, would not "resist
rotation," as claimed.
The Examiner, as argued by the Appellants (Appeal Br. 13), thus fails
to address the claimed overmolding of parts sufficient to render claim 14
obvious over Stech and Beverly. For this reason, we do not sustain the
rejection of claim 14, nor of claim 15 that depends from, and was rejected
along with, claim 14.
Obviousness Reiection of Claims 16-18 and 22
Independent claim 16 recites "a flexible torque transfer shaft having a
rotary union assembly side coupled to the rotary union assembly and an axle
side opposite the rotary union assembly side, the flexible torque transfer
shaft comprising an air conduit."
We are persuaded by the Appellants' argument of error on the part of
the Examiner, that, "[t]o the extent a flexible torque transfer shaft was used
to couple the knob 94 and knob 65, the rotation of one with respect to the
other would cause such a flexible torque transfer shaft to shear and break."
Appeal Br. 15-16; see also Deel. 2 ("'the combination of the structure of the
embodiment of [F]igure[ s] 1-7 of Stech with the teachings of [F]igures 8-11
of Stech' would force an originally-designed rotating component to be
coupled with an originally-designed stationary component and therefore the
combination 'would not work'.")
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Application 14/980,663
Stech's knob 94 is connected to bearing cap body 45, which threads
onto axle 12, and all these parts are non-rotating. Stech col. 4 lines 9-16.
Knob 94 abuts knob 65. Id. at lines 30-31. Knob 65 is mounted on
projection 60, which is part of rim body 36. Id. at col. 3 lines 41--48. Rim
body 36 is bolted to rotor 14. Id. at col. 4 lines 19-20. Therefore, knob 65
rotates with rotor 14, and abuts non-rotating knob 94.
The Examiner reasons that:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the assembly shown in
the first embodiment of Stech with a flexible torque transfer shaft
disposed between knob 94 and knob 65 with the motivation of
maintaining an adequate air flow even in the event of axial
misalignment between the axle 12 and the oil cap assembly 34
thereby undesirably resulting in uneven alignment between knob
94 and knob 65 resulting in a less efficient air providing system.
Answer 12 (emphasis omitted).
However, Stech discloses that "rim body 36 is mounted to rotor 14 via
studs 81 and through bores 85 have a tapered contour to allow easy aligning
and attachment there between." Stech col. 4 lines 21-23. Therefore, there is
little need to avoid uneven alignment, such as with a flexible torque transfer
shaft, because the two parts allegedly needing alignment, knobs 65 and 94,
are already aligned using metal bolts on the rotor and a cap body that threads
on the axle the rotor is also mounted to.
In addition, in Stech, flexible tube 230 rotates, and rotating "shaft 242
can be frictionally inserted and sealingly secured within the opening 232 of
tubing 230." Id. at col. 5 lines 32-36; see also Fig. 8. Stech, thus, does not
implement flexible tube 230 in an arrangement where tube 230 abuts a
stationary, non-rotating element, because instead shaft 242 abuts rotating
seal 250 which abuts non-rotating piston 260. Id. at col. 5 lines 41--45.
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The Examiner has, thus, failed to adequately establish that the
modification of parts in Stech that the Examiner proposes would have
adequately functioned without damaging the flexible tube 230, and does not
establish a sufficiently valid rationale for making the proposed modification.
For these reasons, we do not sustain the rejection of claim 16, nor of
claims 17, 18, and 22 that depend from, and were rejected along with,
claim 16.
Obviousness Reiection of Claims 20 and 23
Similar to independent claim 16, independent claim 20 recites "a
flexible torque transfer shaft having a rotary union assembly side coupled to
the rotary union assembly and an axle side opposite the rotary union
assembly side, the flexible torque transfer shaft comprising an air conduit."
We are persuaded by the Appellants' argument that Cormier fails to
remedy the shortcomings in Stech, similar to those advanced for independent
claim 16.
The Examiner's rejection of claim 20, insofar as the above clause is
concerned, is essentially identical to that advanced for claim 16. We find
error in the rejection, therefore, for the same reasons as for claim 16, and do
not sustain the obviousness rejection of claim 20, nor of claim 23 that
depends from and was rejected along with claim 20.
Double Patenting Reiection
The Appellants do not advance argument in the Appeal Brief
concerning the double patenting rejection, and in the Reply Brief agree to
file a terminal disclaimer if any claim is allowed. However, since we do not
sustain the Examiner's obviousness rejections, we do not reach the double-
patenting rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BP AI 2010)
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Application 14/980,663
(precedential). Rather, we leave it to the Examiner to determine whether to
withdraw the rejection or whether a terminal disclaimer would be required
before the application issues as a patent. See MPEP § 804(I)(B)(l ).
DECISION
We reverse the rejections under 35 U.S.C. § 103(a) of claims 1-9, 11-
18, 20, 22, and 23.
We do not reach the rejection of claims 1-9, 11-18, 20, 22, and 23 on
the ground of non-statutory double patenting.
REVERSED
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