Ex Parte Pontanari et al

Board of Patent Appeals and Interferences

Jun 29, 2012

10543080 (B.P.A.I. Jun. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARCO PONTANARI, MARCO BASSI,
GIOVANNI BELLOMI, and ROBERTO GIANONE
____________________

Appeal 2010-000758
Application 10/543,080
Technology Center 3600
____________________

Before JOHN C. KERINS, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-20 and 24-27. (App. Br. 2). Claims 21-23 have been cancelled.
(Id.). We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
The invention is directed to a differential locking assembly for a drive
axle that uses an electronic coil to actuate a differential lock shift collar.
(Spec. 1, ll. 4-5). Independent claims 1, 9, 13, and 17 are on appeal. Claim
1, reproduced below, is illustrative of the appealed claims.
1. A differential locking mechanism for a drive
axle comprising:
a differential including a differential gear
assembly supported within a differential case;
a pair of axle shafts driven by said
differential gear assembly for rotation about an
axis;
a shift collar movable between an unlocked
position where speed differentiation between said
pair of axle shafts is permitted and a locked
position wherein said shift collar directly engages
said differential case such that said differential
case, said shift collar, and said pair of axle shafts
are fixed for rotation together;
an electronic actuator responsive to an
electronic signal to move said shift collar from said
unlocked position to said locked position; and
a resilient member that returns said shift
collar to said unlocked position, said resilient
member surrounding an outer end portion of said
shift collar.

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THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-10, 12-20, 24, 25, and 27 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Keller (US 5,030,181, iss. Jul. 9, 1991) and
Petzold (US 6,886,425 B2, iss. May 3, 2005).
2. Claims 11 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Keller, Petzold, and Fogelberg (US 4,561,520, iss. Dec.
31, 1985).
ANALYSIS
Claims 1-10, 12-20, 24, 25, and 27 – Keller and Petzold
Claim 1
Claim 1 recites a differential locking assembly comprising "a shift
collar movable between an unlocked position . . . and a locked position
wherein said shift collar directly engages said differential case"; "an
electronic actuator responsive to an electronic signal to move said shift
collar from said unlocked position to said locked position"; and "a resilient
member that returns said shift collar to said unlocked position, said resilient
member surrounding an outer end portion of said shift collar." (Emphasis
added). The Examiner found Keller discloses a locking differential
comprising a shift collar 18 (sliding sleeve), an electronic actuator 16
(magnet), and a differential case including a first case half C and a second
case half 24 (clutch wheel). (Ans. 3-4, citing Keller Fig. 1; see also Keller
col. 4, ll. 36-55). The Examiner found Keller does not disclose a resilient
member surrounding an outer end portion of the shift collar. (Ans. 6).
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The Examiner found Petzold discloses an electromagnetic shift
arrangement including a resilient member 46 (plate spring) that surrounds an
outer end portion 44 of a shift collar 18 (shift dog), and reacts between a coil
40 (electromagnetic device) and a washer 22 (disc) mounted to the shift
collar. (Ans. 6; see also Petzold col. 3, ll. 21-27, 38-41, 58-61; Fig. 2). The
Examiner found both Keller and Petzold teach methods of biasing a shift
collar that is electromagnetically actuated, and concluded that it would have
been obvious to one of ordinary skill in the art "to substitute one method for
the other to achieve the predictable result of biasing the shift collar." (Ans.
7). The Examiner's modification of Keller in view of Petzold "would
position the spring between the washer (19) and the coil (16)." (Ans. 11).
Appellants present multiple arguments for claim 1. (Reply Br. 2-4).1
Firstly, Appellants contend that one of ordinary skill in the art would not
consider Keller's clutch wheel 24 as corresponding to the claimed
differential case. (Reply Br. 2). Appellants do not explain why the clutch
wheel does not correspond to the claimed differential case, or provide any
evidence supporting the alleged understanding of one of ordinary skill in the
art. Accordingly, this contention is not persuasive.
Appellants also contend that neither Keller nor Petzold discloses a
resilient member that surrounds an outer end portion of the shift collar.
(Reply Br. 2). The Examiner's modification would result in Keller's device
including a spring located between the magnet 16 and armature plate 19 and

1 Appellants indicate that the Reply Brief reiterates all of the arguments
made in the Appeal Brief, and also presents additional arguments in
response to the Examiner's Answer. (Reply Br. 1). We will refer only to the
Reply Brief in our analysis except where otherwise indicated.
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also surrounding an outer end portion of the sliding sleeve 18. Appellants
have not apprised us of error in the Examiner's position. Accordingly, this
contention is also not persuasive.
Appellants further contend that "[t]he examiner argues that such a
modification [of Keller] would allow for easier access to the spring for
maintenance and removal." (Reply Br. 2-4). Appellants cite to the Office
Action dated February 26, 2008. (Reply Br. 3). However, the Appeal Brief
was filed pursuant to the Notice of Appeal filed December 5, 2008 (App. Br.
1), which states "Applicant hereby appeals the final rejection of September
5, 2008." Appellants do not identify, and we are unable to find, where in the
Final Rejection or Answer the Examiner stated this particular rationale for
the modification. Accordingly, Appellants' arguments directed to this
rationale, instead of the Examiner's current rationale, are not persuasive.
Appellants also contend that Keller teaches away from the Examiner's
modification (Reply Br. 3), but fail to identify any specific disclosure in
Keller that criticizes, discredits, or otherwise discourages the particular
claimed arrangement of a resilient member surrounding an outer end portion
of the shift collar. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
As such, this contention is also not persuasive.
Appellants further contend that the Examiner's modification would be
detrimental to Keller, and defeat the beneficial features provided by its
spring configuration. (Reply Br. 3). We disagree. Appellants have
provided no persuasive argument or evidence why placing a resilient
member between the magnet 16 and armature plate 19 in Keller, instead of
the location of spring 26 shown in Figure 1, would not allow separation of
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the drive gears when no current is flowing through magnet 16 (i.e., retain
this function of spring 26). (Reply Br. 3). Accordingly, this contention is
not persuasive.
In view of the above, we sustain the rejection of claim 1.
Claims 2-4
Appellants argue claims 2-4 as a group, and present specific
arguments only for claim 2. (Reply Br. 4). We select claim 2 as
representative of the grouping, and claims 3 and 4 stand or fall with claim 2.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 2 recites "said electronic actuator includes a coil mounted to an
axle component and surrounding said shift collar. . . ." Appellants contend
that "element 16 of Keller is not a coil mounted to an axle component as
defined in the claim. Instead, Keller discloses mounting element 16 within
the bushing which is part of the locking mechanism itself." (Reply Br. 4).
This contention is not persuasive.
Firstly, the Examiner found Keller's magnet 16 is supplied electrical
power by cables 29, 30. (Ans. 10; see also Keller col. 4, ll. 66-68). To the
extent that Appellants are contending that Keller's magnet 16 does not
include a coil, Appellants have not provided any persuasive argument or
evidence to support this contention. In addition, the Examiner found Keller
discloses that magnet 16 sits against inner shoulder 12, and that inner
shoulder 12 corresponds to the claimed "axle component." (Ans. 10).
Appellants have not provided any persuasive argument why these findings
are erroneous. Accordingly, we sustain the rejection of claims 2-4.

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Claim 5
Claim 5 depends from claim 4 and recites "said resilient member
reacts between said coil and an outboard end of said shift collar."
Appellants contend that Keller does not teach using a spring to react against
its washer, and that Petzold discloses disc 22 is centrally positioned on the
shift dog 18, not mounting a spring to react between a washer fixed to an
end of a shiftable sleeve and a fixed electromagnetic device. (Reply Br. 4).
We agree with the Examiner that these arguments attack the applied
references separately, but do not address the combination. (Ans. 10).
Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
Examiner found Keller already discloses a washer (armature plate 19).
(Ans. 5). Appellants do not provide any persuasive argument why the
modified Keller device would not include each feature of claim 5.
Appellants contend that the Examiner relied on hindsight. (Reply Br.
5). This contention is not persuasive. The Examiner articulated a reason
with a rational basis to combine the teachings of Keller and Petzold (i.e., "to
substitute one method for the other to achieve the predictable result of
biasing the shift collar.") (Ans. 7). See KSR Int'l Co v. Teleflex, Inc., 550
U.S. 398, 417-18 (2007). Appellants do not provide any persuasive
argument why this rationale lacks rational underpinning. We sustain the
rejection of claim 5.

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Claim 6
Claim 6 depends from claim 5 and recites "a washer fixed to said
outboard end for reacting with said resilient member." Appellants contend
that Petzold's disc 22 is not fixed to an outboard end of shift dog 18.
However, the Examiner did not rely on Petzold for disclosure of a washer.
(Reply Br. 10-11). Keller's armature plate 19 would react with a spring
positioned between it and magnet 16. Keller also discloses that the armature
plate 19 is "axially fixed on the sliding sleeve 18 by means of a locking ring
20 and a radial turned groove situated on the side facing the magnet."
(Keller col. 4, ll. 49-52). Accordingly, Appellants do not apprise us of any
error in the Examiner's position, and we sustain the rejection of claim 6.
Claims 7-8
Claim 7 depends from claim 2 and recites "said shift collar includes
an inboard end having a splined surface and an outboard end for supporting
said resilient member, said inboard end having a greater diameter than said
outboard end." Appellants contend that neither Keller nor Petzold discloses
"a combination of a shift collar having a smaller diameter at one end that
supports a resilient member." (Reply Br. 6). However, Keller's sliding
sleeve has a reduced diameter between the armature plate 19 and magnet 16
as compared to the diameter at the inboard end. (See Keller Fig. 1).
Accordingly, we sustain the rejection of claim 7, and claim 8 which is not
separately argued.
Claims 9, 10, 17, and 18
Appellants argue claims 9, 10, 17, and 18 as a group, and present
specific arguments only for claim 9. (Reply Br. 6-7). We select claim 9 as
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representative of the grouping, and claims 10, 17, and 18 stand or fall with
claim 9.
The Examiner found Keller discloses a differential case including a
ring gear section 24 and a housing section C, and that shift collar 18 engages
the ring gear. (Ans. 12). Appellants contend that Keller's element 24
comprises a clutch wheel 24 with a hub 23 that engages sliding sleeve 18,
and that one of ordinary skill in the art would not consider the clutch wheel
24 to comprise a differential case. (Reply Br. 6). For reasons discussed
supra, this contention is not persuasive. We sustain the rejection of claims
9, 10, 17, and 18.
Claim 12
Claim 12 depends ultimately from claim 9 and recites "a washer is
fixed to said outboard end such that said resilient member reacts between
said washer and said coil, said coil being positioned axially between said
inboard end of said shift collar and said washer." Appellants contend that
Petzold's disc 22 is centrally mounted on the shift dog 18, not fixed to an
outboard end. (Reply Br. 7). As discussed supra, the Examiner did not rely
on Petzold for disclosure of a washer. Appellants have not apprised us of
any error in the Examiner's finding that the combination of Keller and
Petzold would include each of the above-noted features of claim 12.
Accordingly, we sustain the rejection of claim 12.
Claim 13
Appellants contend that Keller teaches away from the proposed
modification, and that the proposed modification would render Keller
unsatisfactory for its intended purpose, for the reasons stated with regard to
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claim 1. (Reply Br. 7-8). For similar reasons to those discussed supra with
respect to claim 1, we do not find these contentions persuasive. Appellants
also contend that neither Keller nor Petzold discloses or suggests that "the
resilient member reacts between the coil and a washer mounted to the
outboard end of the shift collar." (Reply Br. 8). For reasons similar to those
discussed supra, this contention is also not persuasive. We sustain the
rejection of claim 13.
Claims 14-16
Claim 14 depends from claim 13. Claim 13 recites "a differential
including a differential gear assembly supported by a differential case
wherein said ring gear is attached to said differential case to drive said
differential gear assembly." Claim 14 recites "said differential case includes
a first case half and a second case half attached to the first case half and
wherein said electronic actuator selectively draws said shift collar into direct
engagement with one of said first and second case halves." The Examiner
found Keller's shift collar 18 engages with the case half formed by the ring
gear 24.
Appellants contend that Keller's shift collar 18 does not engage
differential case C, but engages the ring gear 24. (Reply Br. 8). However,
the Examiner found that Keller's differential case includes a second case half
24 (Ans. 4), and is comprised of the ring gear 24. We understand that the
Examiner found Keller's element 24 corresponds to a ring gear and a second
case half, as claimed. Appellants have not provided any persuasive
argument why this finding is erroneous. Accordingly, we sustain the
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rejection of claim 14, and claims 15 and 16 which depend from claim 14 and
are not separately argued.
Claim 19
Claim 19 depends ultimately from claim 17 and recites "the step of
providing driving input to the differential by providing a pinion gear for
driving a ring gear attached to the differential case which comprises a first
case half and a second case half." The Examiner's findings (Ans. 14) and
Appellants' contentions (Reply Br. 8) are similar to those discussed supra for
claim 14. Accordingly, we sustain the rejection of claim 19.
Claim 20
Claim 20 depends ultimately from claim 17. Appellants contend that
claim 20 is allowable for the reasons stated for claims 6 and 12, as discussed
supra. (Reply Br. 9). However, because we find no deficiency in the
Examiner's rejection of claims 6 and 12, we sustain the rejection of claim 20.
Claim 24
Claim 24 depends from claim 1 and recites
said shift collar includes a first end . . . and a
second end opposite of said first end, said first end
having a greater diameter than said second end,
and wherein a washer is fixed to said second end
such that said resilient member reacts between said
washer and said electronic actuator.
Appellants contend that Keller does not disclose the claimed washer is fixed
to an end of the shift collar and reacts with the resilient member, and that
Petzold does not disclose or teach mounting a washer to an end of a shift
collar having a greater diameter than at the other end, where the washer
comprises a reacting element for a spring. (Reply Br. 9). These contentions
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are not persuasive for similar reasons as those discussed supra. We sustain
the rejection of claim 24.
Claim 25
Claim 25 depends from claim 24 and recites "said electronic actuator
includes a coil that is positioned axially between said first end and said
washer, and wherein said resilient member is positioned axially between said
washer and said coil." Appellants contend that Keller does not disclose a
resilient member positioned axially between a washer mounted at one end of
a shift collar and a coil, and neither Keller nor Petzold discloses a spline
surface at one end, a washer fixed to an opposite end, and a resilient member
positioned between a washer and coil. (Reply Br. 10). These contentions
are not persuasive. Appellants attack the references individually, but have
not provided any persuasive argument why the combination would not
include each of the features recited in claim 25. Accordingly, we sustain the
rejection of claim 25.
Claim 27
Claim 27 depends from claim 13 and recites "said coil is positioned
axially between said inboard end and said washer." Appellants contend that
claim 27 is allowable for the reasons stated for claims 13 and 25, as
discussed supra. (Reply Br. 10). However, because we find no deficiency
in the Examiner's rejection of claims 13 and 25, this contention is not
persuasive. We sustain the rejection of claim 27.
Claims 11 and 26 - Keller, Petzold and Fogelberg
Claim 11 ultimately depends from claim 9 and recites "an axle
housing for substantially enclosing said carrier and said pair of axle shafts
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wherein said coil includes mount portions to receive fasteners to directly
secure said coil to said axle housing." Regarding claim 11, the Examiner
found the combination of Keller and Petzold does not include a coil having
mounting portions to receive fasteners to connect the coil to the housing.
(Ans. 7). The Examiner found Fogelberg discloses a coil 48 attached to a
housing 12 by fasteners, and concluded that it would have been obvious to
one of ordinary skill in the art to substitute one method for the other to
achieve the predictable result of retaining the coil in the housing. (Ans. 7).
We agree with Appellants that the Examiner did not articulate an
adequate reason with rational underpinnings for combining the teachings of
Keller, Petzold, and Fogelberg to result in the claimed subject matter.
(Reply Br. 11-12). Accordingly, we do not sustain the rejection of claim 11.
We also do not sustain the rejection of claim 26 for similar reasons as those
for claim 11.
DECISION
1. The rejection of claims 1-10, 12-20, 24, 25, and 27 as
unpatentable over Keller and Petzold is AFFIRMED.
2. The rejection of claims 11 and 26 as unpatentable over Keller,
Petzold, and Fogelberg is REVERSED.
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-IN-PART

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