Ex Parte Simonov et al

Board of Patent Appeals and Interferences

Aug 17, 2012

11291516 (B.P.A.I. Aug. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/291,516 12/01/2005 Anton Simonov P050163/10US 8253
20676 7590 08/17/2012
ALFRED J MANGELS
4729 CORNELL ROAD
CINCINNATI, OH 452412433
EXAMINER
MOMPER, ANNA M
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
08/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTON SIMONOV, MARTIN VORNEHM,
ANDREAS TRILLER, MARCUS JUNIG, and OLGA ISPOLATOVA
____________

Appeal 2010-008549
Application 11/291,516
Technology Center 3600
____________

Before LINDA E. HORNER, WILLIAM V. SAINDON, and WILLIAM A.
CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008549
Application 11/291,516

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 (2002) of the final
rejection of claims 1-5 and 7-10 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM but designate the affirmance as a NEW GROUND of
REJECTION.

THE INVENTION
Appellants’ claimed invention is directed to a plate-link chain for a
motor vehicle drive system. Spec. p. 6, ¶ 15. Claim 1, reproduced below, is
representative of the subject matter on appeal.
Claim 1: A plate-link chain for a motor vehicle drive
system, the chain including a large number of link plates
connected by rocker members to allow relative pivotal
movement of successive chain links, wherein the rocker
members extend transversely to the longitudinal direction of the
plate-link chain, said chain comprising:
curved contact surfaces formed on the rocker members
and on surfaces of rocker-member-receiving openings in the
link plates, over which contact surfaces respective rocker
members and link plates are in contact with each other to
transmit force when the chain is pulled,
the respective contact surfaces each being arc-shaped and
having a width that extends transversely to the longitudinal
direction of the plate-link chain and having at least three
sequentially-arranged arc-shaped regions with different
curvatures along respective arc lengths of the regions,
wherein the at least three regions include convexly-
curved contact surfaces on the rocker members and concavely-
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curved contact surfaces on the rocker-member-receiving
openings in the link plates,
wherein pairs of the curved contact surfaces are provided
at spaced surface contact regions on the rocker members and on
the link plates and lie on respective opposite sides of a
longitudinal axis of the chain, and
wherein at least one contact surface region has a curved
segment along the contact surface arc length whose smallest
radius of curvature is located substantially in the middle of the
contact surface arc length.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Cole US 5,423,724 Jun. 13, 1995

The following rejections are before us for review:
1. Claims 1, 3-5, and 7-10 are rejected under 35 U.S.C. § 102(b)
as anticipated by Cole.
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Cole.

THE ISSUE
At issue is whether the Examiner erred in finding that that the back
surface of Cole’s pivot member pins satisfies the rocker member limitations
of claim 1. Applicants challenge whether Cole discloses respective force
transmittal contact surfaces between the pivot member pins and
corresponding pin receiving apertures that possess the requisite curvature
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features within the meaning of claim 1. We find that it does, but not for the
same reason identified in the Final Rejection.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. The pin 20, as illustrated in FIG. 6 of Cole, has a substantially flat
front surface. Col. 8, ll. 57-59.
FF2. The inside link aperture that receives the pin 20, as illustrated in FIG.
2 of Cole, has a curved surface that contacts the front surface of the
pin 20 when the chain is pulled so as to transmit force along the length
of the chain. See also FIG. 7-9; Col. 8, ll. 26-31.
FF3. The corresponding pin and receiving aperture of the inside link are
shaped and configured so that the pin rocks within the aperture of the
inside link as the chain links articulate when the chain is wrapped
around the sprocket. Cole, col. 9, ll. 1-26.
FF4. When the chain is pulled to transmit force, the pin contacts the surface
of the aperture at contact point 110. Cole, col. 9, ll. 1-7.
FF5. A pin-to-aperture clearance is provided at point 112, which is opposite
the side of the rocking contact point 110, allowing substantially free
movement of the back surface of the pin relative to the link as the
chain articulates. Cole, col. 9, ll. 9-26.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF6. The embodiment of Cole illustrated in Figures 34 and 35 is
characterized by a curved front surface on both the pin and the
aperture of the flanking guide link. Cole, col. 18, l. 23 – col. 19, l. 20.
FF7. The corresponding pin and aperture configuration disclosed in Figures
34 and 35 is further characterized by a plurality of additional
connecting arcs that are situated between and connect the front surface
and back surface of such structures.
FF8. The curvilinear transition from the front surface to the back surface of
the pin in Figure 35 involves a plurality of arc sections with differing
radii.
FF9. The flanking guide links are preferably press fit onto the pins. Col. 4,
ll. 3-4.

ANALYSIS
With respect to sole independent claim 1, the Examiner found that
Cole describes “curved contact surfaces” 96 formed on the rocker members.
Fin. Rej. 3. The Examiner takes the position that “any contact between the
surface 96 and the rocker-member-receiving openings … [is] a force
transmitting surface.” Ans. 4. However, it is not clear that surface 96 in
Cole “transmit[s] force when the chain is pulled” (emphasis ours) as
required by claim 1. In particular, Appellants observe that feature 112 in
figure 7 of Cole illustrates a clearance between the Examiner’s alleged
contact surface (96) and the aperture in the link plate, which is inconsistent
with the back surface of the pin transmitting force to the link plate. With
respect to the embodiment of Cole illustrated in figure 7, we agree with the
Appellants. Discussing figure 7 at column 9, line 9, Cole explains that a pin-
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to-aperture clearance is provided at point 112, which is opposite the side of
the rocking contact point 110 and that the clearance at 112 between the back
surface of the pin and back surface of the aperture allows substantially free
movement of the back surface of the pin relative to the link, as the chain
articulates. FF5. We agree with Appellants that this disclosure does not
satisfy the limitation in claim 1 directed to contact surfaces that are in
contact with each other to transmit force when the chain is pulled. The
Examiner does not provide any further technical reasoning or evidence
tending to show that the surface 96 is a contact surface when the chain is
pulled. Thus, we are persuaded that the Examiner has not shown the subject
matter of claim 1 to be anticipated by the embodiment of Cole illustrated in
figure 7.
However, neither the Examiner nor the Appellants discussed the
embodiment of Cole illustrated in figures 34 and 35 that does possess the
contact surface feature missing in the figure 7 embodiment.
Claim 1
The embodiment of Cole illustrated in figures 34 and 35 possesses all
of the limitations of claim 1. In particular, Cole’s disclosure of a curved
front surface, together with a plurality of connecting arcs between the front
and back surfaces of both the pin and the corresponding aperture would be
understood and interpreted by someone of ordinary skill as constituting radii
of multiple lengths, thereby satisfying the limitation in claim 1 of “having at
least three sequentially-arranged arc-shaped regions with different
curvatures along respective arc lengths of the regions.” In column 19, Cole
teaches that the aperture in figure 34 contains additional connecting arcs
formed from connecting radii 1422, 1424, 1426, and 1428, and that the pin
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in figure 35contains additional connecting arcs from connecting radii 1516,
1518, 1520, and 1522. In addition, the pin contains a curved back surface
defined by a radius 1510 and the corresponding flanking guide link aperture
contains a curved back surface defined by a radius 1420. The respective arc
surfaces of the pin are convex and the corresponding arc surfaces on the
aperture are concave, thereby satisfying the limitation in claim 1 regarding
concavity. Also, the respective pairs of arc surfaces in figures 34 and 35
clearly lie on opposite sides of a longitudinal axis of the chain within the
meaning of claim 1.
The crux of the matter, however, is whether the corresponding pin and
aperture each contain three sequentially-arranged arc-shaped surfaces that
constitute contact surfaces that transmit force when the chain is pulled. In
column 19, lines 3 through 20, Cole teaches that the corresponding pin and
aperture are each comprised of least six arc-shaped surfaces, including a
curved front surface, an arcuate back surface, and four additional connecting
arcs, at least one of such arcs connecting the back surface to the front surface
on both the pin and the corresponding aperture. Cole further discloses that
the flanking guide links are preferably press fit on the pins. Col 4, ll. 3-4. In
other words, the pins are fit within the apertures of the flanking guide links
so that the pins do not rotate with respect to the flanking guide links. Col. 4,
ll. 4-11. From this description, we deduce that, in addition to the front
surface 1502, at least two and as many as all four of the additional
connecting arcs, as well as the arcuate back surface illustrated at 1510 of
figure 35, constitute contact surfaces to transmit force when the chain is
pulled. This is sufficient to satisfy the limitation in claim 1 directed to
having at least three sequentially-arranged curved contact surfaces.
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We note that, in Column 19, at lines 21 through 35, Cole further
teaches, with respect to the inside non-guide links, that there is a minimal
clearance between the back surface of the pin and back surface of the
aperture and that the inside, curved surface of the non-guide links forms a
rocker for rocking action against the pin. However, there is no requirement
in the claim that the rocker member actually rock in relation to the rocker
member receiving opening in the link plates. Claim 1 is an open-ended
claim with a “comprising” transition phrase. Thus, there is nothing in the
claim that would prohibit the rocker member pin from being fixed in relation
to the rocker-member-receiver openings in a set of flanking guide links such
that almost the entire circumference of the rocker member serves as a
contact surface for transmitting force when the chain is pulled and,
nevertheless, the same rocker-member pin may rock in relation to apertures
on a set of inside non-guide links.
Finally, we find that the last limitation in claim 1 is also met. Taking
the broadest reasonable construction of this limitation, we consider this
limitation to be quite broad in scope. It appears that it can be met by any
curved segment along any contact surface region. The term “contact surface
arc length” is not defined in the Specification and can reasonably be
construed as applying to the length of the entire contact surface between the
pin and aperture, or any portion thereof that can be described as a curved
segment or region. Applying the scope of the term broadly, we find that this
limitation is met by almost any arbitrarily selected curved segment or region
in the embodiment of Cole illustrated in figures 34 and 35.
Thus, claim 1 is anticipated by Cole.
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Claim 2
In their Reply Brief, Appellants argue that the Examiner erred in
finding that the limitation directed to “a ratio of a radius of greatest
curvature to that of a [l]east curvature region is at least two” is satisfied by
Cole. Reply Br. 6. Appellants argue that the Examiner erred in drawing an
inference from drawings that are not exactly to scale. Appellants’ argument
is obviated, in large part however; by the new ground of rejection focusing
on the embodiment of Cole disclosed in figures 34 and 35. Although Cole’s
figures may not be exactly drawn to scale, Cole does disclose, in Column 19,
that the amount of curvature on front working surface 1502 is “small.” This
additional information is sufficient for a person of ordinary skill to
reasonably conclude that it would have been obvious that the ratio of
curvature of the front working surface 1502 vis-à-vis the greatest amount of
curvature among the additional connecting arcs formed from radii 1516,
1518, 1520, and 1522 is at least two.
Claim 3
In keeping with our new ground of rejection of claim 1, the dependent
limitation of claim 3 regarding regions having radii that are constant within
each of the individual regions is satisfied by the disclosure in column 18,
line 61 to column 19, line 20 of Cole. We note that neither the Specification
nor the claims require that such regions meet any minimum arc length
requirement, such that any region of almost infinitesimally short arc length
can satisfy a limitation of a region with constant radii of curvature.
Claim 4
The dependent limitation of claim 4 regarding regions having radii
that change within each of the individual regions is satisfied by the
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disclosure in column 18, line 61 to column 19, line 20 of Cole. We agree
with the underlying rationale at page 7 of the Examiner’s Answer that one
merely shifts the focus of the defined region to a transition region between
two arcs of constant radii that otherwise are of differing length.
Claim 5
Claim 5 depends from amended claim 1 and further recites that "at
least one contact surface has a curved segment along the contact surface arc
length whose second derivative is a constant.” The Examiner’s Answer
aptly demonstrated that Appellants’ argument on this issue is mathematically
flawed and incorrect. Ans. 8-10. With respect to the new grounds for
rejection, the Examiner’s reasoning applies with equal force to the
embodiment of Cole at figures 34 and 35 as it does to the embodiment in
figure 7 relied on by the Examiner. Claim 5 is anticipated by Cole.
Claims 7 - 10
These claims all depend from claim 1 and are substantially identical
except that at least one contact surface region arc must be either circular,
elliptical, parabolic, or hyperbolic respectively. Looking at figures 34 and
35 and interpreting them in light of the accompanying disclosure in columns
18 and 19, we conclude that each of the respective dependent limitations is
inherently, if not expressly met, by such disclosure.
With respect to claim 7, Cole discloses a plurality of arcs with
connecting radii. See Cole, col. 19, ll. 6 – 20. A person of ordinary skill
would understand from the reference to radii that Cole is referring to circular
arcs. Thus, claim 7 is clearly anticipated by Cole.
With respect to claim 8, the Examiner correctly points out that a circle
is merely one form of an ellipse. See Examiner’s Brief at page 11. Thus,
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claim 8 is anticipated by Cole for the same reason that claim 7 is anticipated
by Cole.
With respect to claims 9 and 10, by disclosing a plurality of circular
arcs with differing radii in column 19, Cole necessarily implies the use of
non-circular arc segments in the transition between the arc length segments
of constant radius. Neither the Specification nor the claims define the
minimum length of any particular curved segment along the contact surface.
The Examiner, at pages 14 and 15 the Examiner’s Answer, aptly explains
the relative insignificance of various curvilinear shapes when the arc length
segments are short and correctly explains how the parabolic and hyperbolic
limitations of claims 9 and 10 are otherwise inherently, if not expressly, met
by Cole. With respect to the new grounds for rejection, the Examiner’s
reasoning applies with equal force to the embodiment of Cole at figures 34
and 35 as it does to the embodiment in figure 7 relied on by the Examiner.
Claims 7 – 10 are anticipated by Cole.
Furthermore, to the extent that such limitations are not anticipated
within the meaning of 35 U.S.C. § 102, the fact that Appellants have
alternatively claimed circular, elliptical, parabolic, and hyperbolic arcs is
tantamount to an admission that the particular curvilinear shape that is used
is inconsequential to the proper function and operation of the invention. A
person of ordinary skill would deduce from Cole that the invention could be
practiced using a wide variety of curvilinear shapes, given the fact that Cole
essentially describes such varied shapes by expressly disclosing substantially
adjacent, sequential circular arcs having different radii. Accordingly, we
conclude that the use of circular, elliptical, parabolic, and hyperbolic
curvilinear shapes as required by claims 7 through 10 would be a matter of
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obvious design choice to any skilled practitioner attempting to design a
curvilinear transition from a front surface to a back surface of a pivot
member pin. Thus, as an alternative grounds of rejection, we conclude that
the subject matter of claims 7 through 10 is obvious within the meaning of
35 U.S.C. § 103 over Cole.

CONCLUSIONS
We conclude that Cole discloses respective force transmittal contact
surfaces between the pivot member pins and corresponding pin receiving
apertures that possess the requisite curvature features within the meaning of
claim 1. The above analysis addresses each of the issues presented. We
reach the same overall conclusion as the Examiner, but rely on a different
embodiment disclosed in Cole that we believe more clearly supports the
claim rejections. Accordingly, our analysis deviates somewhat from the
thrust of the Examiner’s rejections of claims 1-5 and 7-10 and we denote our
affirmances as new grounds of rejection to provide Appellants an
opportunity to respond thereto. We also conclude that claims 7 – 10 are
obvious over Cole in addition to being anticipated by Cole.

DECISION
We affirm the Examiner’s decision regarding the anticipation
rejection of claims 1, 3-5, and 7-10 and the obviousness rejection of claim 2,
but denote the affirmances as new grounds of rejection. We also enter a new
ground of rejection of claims 7-10 as unpatentable over Cole.

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FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejections, including any timely request for
rehearing thereof.
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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).

AFFIRMED; 37 C.F.R. § 41.50(b)

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