Ex Parte Ruppert et al

Board of Patent Appeals and Interferences

Apr 27, 2010

11210461 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MALCOLM F. RUPPERT, LAWRENCE DOYLE BRILL,
WILLIAM CARL SULLIVAN, and GLEN E. SWANSON
____________

Appeal 2009-004419
Application 11/210,461
Technology Center 3600
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Decided: April 27, 2010
____________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004419
Application 11/210,461

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STATEMENT OF THE CASE
Malcolm F. Ruppert, et al. (Appellants) appeal under 35 U.S.C. § 134
(2002) from the Examiner's decision rejecting claims 23-39, 41, and 42. The
Examiner has indicated that claim 40 is allowable. Claims 1-22 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellants' claimed invention is directed to an automotive vehicle
drive unit having an electric motor driving a gear set at an angle to a second
gear set driving the wheel. Spec. 2:1-9.
Claim 23, reproduced below, is illustrative of the claimed invention.
23. A wheel drive unit assembly comprising:
a driving axle shaft defining a lateral axis of
rotation;
a wheel component driven by said driving
axle shaft about said lateral axis of rotation;
a gear drive for driving said wheel
component;
an electric motor for driving said gear drive,
said electric motor defining a longitudinal axis of
rotation that intersects said lateral axis of rotation;
and
a planetary gear set driven by said gear drive
about said lateral axis of rotation.
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The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Anglada US 1,540,526 Jun. 2, 1925
Masury US 1,735,404 Nov. 12, 1929
Quartullo US 2,589,863 Mar. 18, 1952
Rockwell US 3,812,928 May 28, 1974
Travis US 4,270,622 Jun. 2, 1981
Ruppert US 7,083,015 B2 Aug. 1, 2006

William K. Toboldt, et al. Goodheart-Willcox automotive encyclopedia,
597-98 (1977).

The Examiner makes the following rejections:
Under 35 U.S.C. § 102(b):
(A) Claims 23-27, 31, and 32 as anticipated by Travis.
Under 35 U.S.C. § 103(a):
(B) Claims 28-30 as unpatentable over Travis and Rockwell.
(C) Claim 33 as unpatentable over Quartullo and Rockwell.
(D) Claims 34-36 as unpatentable over Quartullo, Rockwell, and Anglada.
(E) Claims 23, 41, and 42 as unpatentable over Masury and Rockwell.
Under the doctrine of non-statutory obviousness-type double patenting:
(F) Claims 37-39 as being obvious in view of claims 27 and 28 of US Patent
7,083,015 B2 issued to Ruppert (Aug. 1, 2006)1.

1 Also referred to by Appellants and the Examiner as then-pending claims
51-52 of application number 09/781,795.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

ISSUES
Appellants argue the claims of rejection A as a group. App. Br. 4;
Reply Br. 1-3. The dispositive issue in rejection A is whether Travis
describes a "planetary gear set," as found by the Examiner.
Appellants argue the claims of rejection B individually. App. Br. 6-9;
Reply Br. 4-8. The dispositive issue in rejection B is whether the Examiner
has given a proper rationale to support the proposed combination of Travis
and Rockwell, wherein Travis' differential is replaced by Rockwell's
planetary gear set in order to provide higher drive torque from the drive
arrangement. See Ans. 3-4; Reply Br. 4-6.
Appellants argue, in addressing rejection C, that the Examiner's
proposed modification of Quartullo's wheel drive system to include the
planetary gear structure of Rockwell (see Ans. 4) would require a lateral
shift of Quartullo's worm gear, which would reduce the benefit of the floor
being able to extend from side to side. Reply Br. 8-9. Appellants further
argue that there is no motivation to "pick out" the planetary gear set of
Rockwell and combine it into the worm gear set of Quartullo, as worm gears
are already known to reduce gear ratios. Reply Br. 9. Therefore, the
dispositive issue in rejection C is whether the Examiner has demonstrated
that it would have been obvious to add a planetary gear differential, as
taught in Rockwell, to the worm gear drive of Quartullo, for the purpose of
providing higher drive torque.
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Regarding rejection D, Appellants argue claims 34 and 35 together
and claim 36 separately. App. Br. 11-12; Reply Br. 10-11. The dispositive
issues in rejection D are whether the Examiner has demonstrated that the
proposed combination of Quartullo, Rockwell, and Anglada renders obvious
a sun gear driven by a ring gear, whether the Examiner has provided a
rationale for combining Quartullo's drive with Rockwell's planetary gear set
and Anglada's pinion and ring gear set, and whether Rockwell teaches away
from a gear drive solely comprised of a pinion gear and ring gear. Ans. 4-5;
Reply Br. 10-11; Appeal Br. 11-12.
Appellants argue the claims of rejection E as a group. App. Br. 12-13;
Reply Br. 12-13. The Examiner proposes to combine the drive system of
Masury, with a longitudinally mounted motor connected to a laterally
mounted wheel, to include the planetary gear set in the wheel hub, as
described in Rockwell, in order to provide higher drive torque to the wheel.
Ans. 5. Appellants argue that if one of ordinary skill in the art were to
combine the drive system of Masury with the planetary gear set of Rockwell,
he or she would merely replace Masury's gear and motor system with
Rockwell's (which also has the motor in the wheel hub), not combine them
as proposed by the Examiner. Reply Br. 12-13. Therefore, the dispositive
issue in rejection E is whether the Examiner has demonstrated that it would
have been obvious to combine the drive system of Masury with the planetary
gear set of Rockwell in order to provide higher drive torque as proposed.
Appellants have not contested the obviousness-type double patenting
rejection (rejection F) of claims 37 and 38. Appeal Br. 13. Thus, we
summarily affirm the rejection as to claims 37 and 38. However, Appellants
argue that claims 27-28 of Ruppert do not anticipate or render obvious the
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subject matter of claim 39 of the present application. Id.; Reply Br. 13. The
Examiner found that the "lateral spacing [a]part of motor drive longitudinal
axes is very old and well known … for the purpose of providing a laterally
well balanced static load in the vehicle." Ans. 5-6. Further, the Examiner
found that "the longitudinal and lateral axes" of the drive elements recited in
claims 27 and 28 of Ruppert would "inherently" intersect, so as to satisfy the
limitation in claim 39 that the first and second longitudinal axes of rotation
intersect the lateral axis of rotation. Ans. 12. Appellants contest this finding
of inherency. Reply Br. 13. Therefore, the dispositive issue in rejection F is
whether the Examiner has demonstrated that the longitudinal axes (motors'
output axis) of rotation of Ruppert’s claim 27 or 28 inherently intersect the
lateral axes (wheels' axis of rotation) of rotation.

FACTS PERTINENT TO THE ISSUES
(FINDINGS-OF-FACT (FF))
FF1 Travis describes a drive axle 10 for an electric vehicle wherein two
main motors 24, 36 drive a differential 16, which in turn drives the
axles 18, 20 and the wheels. Col. 2, ll. 30-45. Further, Travis
describes a pinion gear 34 driving a ring gear 14 encircling
differential 16. Id. In figure 1, Travis depicts, unlabeled, the gears
found in differential 16. Three planet gears, having axes of rotation
orthogonal to axles 18, 20 (a fourth is likely hidden) are depicted in
meshing engagement with two sun gears (unlabeled), which drive
individual axes 18 and 20, and are coaxial with ring gear 14.
FF2 Rockwell describes an electric wheel having a planetary speed
reducing gear and a motor located within the wheel. Col. 1, ll. 11-18,
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fig. 1. As depicted in figure 1, the sun gear 41, planetary gears 31,
and ring gear 16 all have axes of rotation that are parallel.
FF3 Quartullo describes a longitudinally-oriented electric motor 18 driving
a laterally-oriented wheel 20 via a worm gear set 48, 50. See fig. 4.
As depicted in figure 7, the worm gear set 48, 50 drives the axle 46.
Two motors 18 are depicted in figure 7 as spaced laterally apart from
one another, each driving separate worm gear sets and axles.
Quartullo describes how, if a motor with high torque is not used, a
hydraulic converter or fluid clutch is used. Col. 4, ll. 5-20, 48-53.
FF4 Anglada describes an electric motor 15 driving a wheel using a first
bevel (pinion) gear 20 and a second bevel (ring) gear 21. P. 1, ll. 91-
103, fig. 2.
FF5 Masury describes an electric motor d2 driving a wheel f. P. 1, ll. 13-
18. The motor d2 drives a pinion gear d3 that in turn drives a bevel
gear e1 to drive the wheel f. P. 1, ll. 53-66, fig. 1. As depicted in
figure 1, the axis of the pinion gear d3 is at a right angle to the axis of
the bevel gear e1.

ANALYSIS
Rejection A - Travis
Travis describes a drive axle for an electric vehicle wherein two main
motors drive a single differential, which in turn drives the axles and wheels.
FF1. In particular, the Examiner found that Travis' differential was a
planetary gear set. Ans. 3. Appellants disagree that Travis' differential is a
planetary gear set because, according to Appellants, a planetary gear set
requires a sun gear, a ring gear, and planet gears. Reply Br. 2.
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We find that Travis' differential is a planetary gear set, and indeed,
fully meets Appellants' asserted requirements of a "planetary gear set."
Travis describes a pinion gear 34 driving a ring gear 14 on the outside of
differential 16. FF1. Further depicted in Travis, but not separately labeled,
are the gears found in the differential. Three planet gears, two in profile and
one from its base, are depicted in figure 1 and are in meshing engagement
with the two sun gears coaxial with ring gear 14, the sun gears driving
individual axes 18 and 20. Id. Thus, Travis describes a differential having a
sun, ring, and planetary gears.
As pointed out by the Examiner, all gears of a gear set need not have
parallel axes in order to comprise a planetary gear set. See Ans. 6-7.
Appellants' claim 23 does not require a planetary gear set with a sun gear,
ring gear, and planet gears having parallel axes. It is well established that
limitations not appearing in the claims cannot be relied upon for
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).

Rejection B - Travis and Rockwell
The Examiner proposes to use the "planetary differential gear set as
taught by Rockwell . . . in place of the planetary differential taught by Travis
for the purpose of providing higher drive torque from the drive
arrangement." Ans. 3. As pointed out by Appellants, Rockwell does not
describe a differential. Reply Br. 5; see FF2, noting that Rockwell describes
a planetary speed reducing gear set for a single wheel. Thus, it is not clear
how replacement of Travis's differential, as suggested by the Examiner,
would result in a workable structure. Rockwell's speed-reducing planetary
gear set would not function as a differential, such that it is not clear how
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power would be properly transferred from the main motors to the axles, or
how this structure would address the problem of the wheels spinning at
different rates. As such, removal of Travis' differential would appear to
make the axles unable to operate in the manner intended. See Tec Air Inc. v.
Denso Mfg. Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999) (Where the
proposed modification would render the prior art invention being modified
inoperable for its intended purpose, the proposed modification would not
have been obvious.).
In addition, Appellants argue that the Examiner has failed to identify a
motivation for the proposed combination. Reply Br. 4-6. The Supreme
Court has stated that a rigid insistence on teaching, suggestion, or motivation
is incompatible with its precedent concerning obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007). However, the Examiner must
provide "[']some articulated reason with some rational underpinning to
support the legal conclusion of obviousness.'" In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). It is
unclear why one of ordinary skill in the art would add planetary gears to
Travis' axles to "provid[e] higher drive torque," as suggested by the
Examiner. It is well known in the art that the purpose of a differential is to
allow both axles to have different rotational speeds while supplying the same
amount of torque to those axles. See Reply Br. 5. If a planetary gear set
were installed in the axle(s) of Travis, to be driven by a gear drive about a
lateral axis of rotation (i.e., about the same axis as the axle and wheels), then
it is possible that one axle could get a different amount of torque than the
other, defeating the purpose of the differential.

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Rejection C - Quartullo and Rockwell
Appellants argue that the Examiner's proposed modification of
Quartullo's wheel drive system to include the planetary gear structure of
Rockwell (see Ans. 4) would require a lateral shift of Quartullo's worm gear,
which would reduce the benefit stated in Quartullo of the floor being able to
extend from side to side. Reply Br. 8-9. Appellants contend that the lateral
shift is because "the gear set of Rockwell would additionally have to be
reconfigured to accept driving input from the worm gear." Reply Br. 8.
However, it is not apparent to us why the Examiner's proposed modification
would require a "lateral shift."
Quartullo describes an electric motor driving a wheel via a worm gear.
FF3. As depicted in figure 7, the worm gear drives the axle. Id. There are
two motors driving two worm gear-axle sets, one on each side of the vehicle,
that are spaced laterally apart from one another. Id. The speed reduction
planetary gears of Rockwell are wholly located within the wheel hub. FF2.
Indeed, with Quartullo's motor being located away from the wheel hub, the
space previously occupied by the motor in Rockwell would be free for any
connecting gears between Quartullo's existing hub and the planetary gearing
of Rockwell. Thus, we find no support in the evidence of record for
Appellants' contention that the Examiner's proposed combination would
require a lateral shift of the structure contrary to Quartullo's teachings.
Appellants further argue that there is no motivation to "pick out" the
planetary gear set of Rockwell and combine it with the worm gear set of
Quartullo, as worm gears are already known to reduce gear ratios. Reply Br.
9. However, as pointed out by the Examiner, additional gear reduction may
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be needed beyond that which could be reasonably provided by a worm gear.
Ans. 9.
Appellants further contend that one of ordinary skill would replace
Quartullo's gear set with Rockwell's gear set. Reply Br. 9. Quartullo
translates the longitudinally-oriented rotation provided by the motor to the
laterally-oriented wheels. See FF3. This translation requires the worm gear
set, or some other gear set that converts longitudinal rotation into lateral
rotation, because the planetary gear set of Rockwell has all of the gears
acting in parallel axes. See FF2. Thus, Rockwell's planetary gears cannot
translate the motor's longitudinal rotation to the wheels' lateral rotation
without some further structure. As such, replacement of Quartullo's gear set
with Rockwell's gear set, as Appellants contend one of ordinary skill would
do, would result in an unworkable combination.
Finally, incorporating the torque-increasing planetary gearing of
Rockwell into Quartullo's gearing could provide the additional benefit of
allowing the elimination of the hydraulic converter, as suggested in
Quartullo. See FF3. Thus, the Examiner's articulated reason for combining
Quartullo's wheel drive system to include Rockwell's planetary gear set is
based on rational underpinning.

Rejection D - Quartullo, Rockwell, and Anglada
Appellants argue that Rockwell dictates that Quartullo's worm
assembly would be replaced by Rockwell's planetary gear drive, not
supplemented as proposed by the Examiner. Reply Br. 10; Ans. 4-5.
However, as we have addressed in discussing rejection C above, the
Examiner has articulated a particular reason for utilizing both the worm
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drive and the planetary gear drive. Further, as we found above, the
Rockwell planetary gear drive would not be sufficient to translate power
from the motor to the wheels without another gear set, such as the worm
gear arrangement of Quartullo.
In this rejection, the Examiner further proposes to substitute a pinion
and ring gear, described in Anglada (FF4), for the worm gear set of
Quartullo. Ans. 4-5. The Examiner finds that a substantial advantage of
electric vehicles is the opportunity for recharging, which is more effective
with pinion and ring gears than worm gears, as worm gears are difficult to
back drive. Id. Appellants have not contested this finding. Appellants
argue that with a planetary gear set (Rockwell), Anglada's pinion and ring
gear would be unnecessary. Reply Br. 10. However, this argument ignores
the fact that some structure is required to interconnect the motor and the
wheel, as discussed with respect to rejection C above. The planetary gear set
of Rockwell is insufficient, by itself, to allow the desired recharging
abilities. Therefore, the Examiner's reason for including the pinion and ring
gears of Anglada are based on the rational desire to allow for a connection
that would effectively allow for recharging.
Appellants further argue that claim 34 requires a sun gear driven by a
ring gear. Reply Br. 10-11. However, this argument ignores the Examiner's
proposed combination, in which Anglada's ring gear would be substituted
for the worm gear of Quartullo, and would drive Rockwell's sun gear. See
Ans. 5.
Appellants argue that the references do not teach all of the limitations
of claim 36. Reply Br. 11. However, Appellants' argument merely attacks
the references in isolation. In the Examiner's proposed modification of
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Quartullo's electric motor vehicle, the two bevel gears of Anglada, which the
Examiner has called the pinion and ring gears, drive the planetary gear set of
Rockwell. See Ans. 4-5. The Examiner's proposed combination does not
include other gears for driving the planetary gear set.
Appellants further argue that Rockwell teaches away from the
Examiner's proposed combination. Appeal Br. 11. While Rockwell does
describe a motor in a wheel hub (see FF2), Rockwell does not "criticize,
discredit, or otherwise discourage" the Examiner's proposed combination of
Quartullo's longitudinally-mounted motor, located outside of the wheel hub,
driving a planetary gear set as described in Rockwell. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004).

Rejection E - Masury and Rockwell
Masury describes a longitudinally-oriented motor driving a laterally-
oriented wheel by way of a bevel gear and a pinion gear. FF5. The
Examiner proposes to keep this configuration, but incorporate the torque-
increasing benefits of Rockwell's in-hub planetary gear set. Ans. 5, 11.
Appellants argue that if one of ordinary skill in the art were to combine the
drive system of Masury with the planetary gear set of Rockwell, he or she
would merely replace Masury's gear and motor system with Rockwell's, not
combine them as proposed by the Examiner. Reply Br. 12-13.
However, there are many reasons that one of ordinary skill in the art
would desire to keep the motor oriented as described in Masury and pointed
out by the Examiner. See Ans. 11. For example, the Masury motor
orientation would allow a motor to be larger than the wheel hub, and would
allow for improved access to the motor. Therefore, Appellants' argument
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that one of ordinary skill would only look to Rockwell's motor arrangement
is not persuasive.

Rejection F - Obviousness-Type Double Patenting
Claim 39 recites that the longitudinal axes of rotation (of the motor-
driven pinion gear) intersects the lateral axis of rotation (of the wheel-and
planetary gear-driving ring gear). Appellants argue that claims 27-28 of
Ruppert do not anticipate or render obvious the subject matter of claim 39 of
the present application. Appeal Br. 13; Reply Br. 13. Appellants contest the
Examiner's finding that the "intersect" limitation in claim 39 is inherent in
the arrangement of claims 27 and 28 of Ruppert. Reply Br. 13.
The Examiner found "the longitudinal and lateral axes" of the drive
elements recited in claims 27 and 28 of Ruppert would "inherently" intersect
"in at least one plane view (e.g., a plan view)." Ans. 12. In making such a
finding, the Examiner implicitly interprets "intersect" to include those lines
that appear to intersect in one "plane view," apparently even if the lines do
not actually meet or pass through a common point (intersection in the
mathematical sense2). See id. The Examiner's interpretation of "intersect"
would therefore include all sets of longitudinal and lateral axes, as any pair
of non-parallel lines would appear to cross from some viewpoint. Such an
interpretation, however, would render the term "intersect" superfluous in
claim 39, which already defines the intersecting axes as being longitudinal
and lateral, i.e., non-parallel. See Stumbo v. Eastman Outdoors, Inc., 508

2 See, e.g., Webster's New World Dictionary 737 (David B. Guralnik ed., 2nd
Coll. Ed., Simon & Schuster, Inc. 1984), defining the term "intersection" as
"the point or line where two lines or surfaces meet or cross."
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F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that
render phrases in claims superfluous). Thus the Examiner has not given
claim 39 its broadest reasonable interpretation.

CONCLUSIONS
(A) Travis describes a "planetary gear set," as required by claim 23. Thus,
we affirm rejection A.
(B) The Examiner has not articulated a reason with rational underpinning
to support the proposed combination of Travis and Rockwell in the
rejection of claim 28. Thus, we reverse rejection B.
(C) The Examiner has demonstrated that it would have been obvious to
add a planetary gear differential, as taught in Rockwell, to the worm
gear drive of Quartullo, for the purpose of providing higher drive
torque. Thus, we affirm rejection C.
(D) The Examiner has demonstrated that the proposed combination of
Quartullo, Rockwell, and Anglada renders obvious a sun gear driven
by a ring gear, and the Examiner has provided a rationale for
combining Quartullo's drive with Rockwell's planetary gear set and
Anglada's pinion and ring gear set, to facilitate recharging. Thus, we
affirm rejection D.
(E) The Examiner has demonstrated that it would have been obvious to
combine the drive system of Masury with the planetary gear set of
Rockwell in order to provide higher drive torque as proposed. Thus,
we affirm rejection E.
(F) The Examiner has not demonstrated that claims 27 and 28 of Ruppert
render obvious the subject matter of claim 39, particularly, the
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longitudinal axes (motors' output axis) of rotation intersecting the
lateral axes (wheels' axis of rotation) of rotation. Thus, we reverse the
Examiner's rejection of claim 39. As noted above, however, we
affirm the rejection of claims 37 and 38, which Appellants have not
contested.

DECISION
We affirm the Examiner's decision as to claims 23-27, 31-38, 41, and
42. We reverse the Examiner's decision as to claims 28-30 and 39.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

AFFRIMED-IN-PART

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