Ex Parte Tietyen et al

Patent Trial and Appeal Board

Aug 15, 2016

12694692 (P.T.A.B. Aug. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/694,692 01127/2010
26710 7590 08/17/2016
QUARLES & BRADYLLP
Attn: IP Docket
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
FIRST NAMED INVENTOR
ADAM L. TIETYEN
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.
790063.00301 6484
EXAMINER
YABUT, DANIEL D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
08/17/2016 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM L. TIETYEN and DOUGLAS E. MAKI
Appeal2014-006371
Application 12/694,692 1
Technology Center 3600
Before BART A. GERSTENBLITH, KENNETH G. SCHOPPER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1---6 and 8-17. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
BACKGROUND
According to Appellants, "[t]his invention relates to transmissions
having external fluid coolers." Spec. i-f 3.
1 According to Appellants, the real party in interest is Rexnord Industries,
LLC. Appeal. Br. 1.
Appeal2014-006371
Application 12/694,692
CLAHvIS
Claims 1---6 and 8-1 7 are on appeal. Claims 1 and 12 are the
independent claims on appeal. Claim 1 is illustrative of the appealed claims
and recites:
1. A transmission comprising:
a housing having housing walls defining an internal
chamber including an output port and an input port;
a rotatable input shaft extending through one of said
housing walls into said internal chamber;
power transmission components disposed in said internal
chamber and rotatably driven by said input shaft;
an output shaft extending through one of said housing
walls from said internal chamber and rotatably driven by said
power transmission components;
a lubricating fluid disposed in said internal chamber and
lubricating said power transmission components;
a cooling shroud surrounding said housing and defining a
gap between at least one of said housing walls, said cooling
shroud including a cooling passageway in fluid communication
with said output port and said input port, wherein said lubricating
fluid flows out of said internal chamber through said output port
into said cooling passageway, through said cooling passageway,
and back into said internal chamber through said input port;
a pump disposed in said internal chamber of said housing,
said pump delivering said lubricating fluid through said output
port and into said cooling passageway, through said cooling
passageway, and back into said internal chamber through said
input port; and
a fan exhausting air through said gap cooling said at least
one of said housing walls and said lubricating fluid flowing
through said cooling passageway.
Appeal Br., App. A at A-1.
2
Appeal2014-006371
Application 12/694,692
REJECTIONS
1. The Examiner rejects claims 9-11 under 35 U.S.C. § 112, second
paragraph, as indefinite.
2. The Examiner rejects claims 1-3, 8, and 12 under 35 U.S.C.
§ 103(a) as unpatentable over Holzman2 in view of Burgess. 3
3. The Examiner rejects claims 4---6, 9-11, and 13-17 under
35 U.S.C. § 103(a) as unpatentable over Holzman in view of
Burgess and Freer. 4
DISCUSSION
Indefiniteness
The Examiner finds that claim 9-11 are indefinite because the term
"said surfaces" in claim 9 lacks antecedent basis. Final Act. 2. Specifically,
the Examiner finds that "[a]lthough the claim previously defines 'opposing
surfaces' ... there is insufficient antecedent basis for the strict recitation of
'said surfaces' because it is ambiguous as to whether it refers to the
previously recited 'opposing surfaces' or if it refers to a separate set of
'surfaces."' Id. at 2-3.
Claim 9 depends from claim 1 and further recites, "wherein said
housing walls define opposing surfaces, and said cooling passageway
includes a first leg directing lubricating fluid proximate one of said surfaces
towards another of said surfaces." Appeal Br., App. A at A-3. We agree
with Appellants that nothing in claim 1 or claim 9 recites or suggests the
existence of any other surfaces, and thus, "said surfaces" unambiguously
2 Holzman, US 4,872,502, iss. Oct. 10, 1989.
3 Burgess, US 2,469,259, iss. May 3, 1949.
4 Freer, US 2,646,258, iss. July 21, 1953.
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Appeal2014-006371
Application 12/694,692
refers to the "opposing surfaces," as recited in claim 9. See Appeal Br. 3--4.
Accordingly, we do not sustain this rejection.
Obviousness
Independent claims 1 and 12 are directed to a transmission including a
housing with an internal chamber and a cooling shroud surrounding the
housing and require, inter alia, that the transmission lubricating fluid inside
the internal chamber lubricates the power transmission components and is
also circulated out of the internal chamber, through the cooling shroud so
that it may be cooled by a fan, and back into the internal chamber. See
Appeal Br., App. A at A-1, A-4. The Examiner finds that Holzman
discloses a housing and shroud but does not disclose the interconnection of
the housing and shroud or the flow of lubricating fluid from the internal
chamber of the housing to the shroud and back to the internal chamber.
Final Act. 3--4. The Examiner finds that Burgess makes up for this
deficiency. Id. at 4. Specifically, the Examiner finds:
Id.
Burgess teaches an inner chamber including an output port
( 11; Fig. 1) and an input port ( 11; Fig. 1) and a cooling shroud ( 5)
including a cooling passageway ( 10) in fluid communication
with said output port and said input port (col. 3 11. 19-28; Fig. 1),
wherein lubricating fluid flows out of said internal chamber
through said output port into said cooling passageway, through
said cooling passageway, and back into said internal chamber
through said input port (col. 3 11. 15-40) for the purpose of further
enhancing the aspect of heat transfer. (col. 111. 7-22).
We are persuaded by Appellants' arguments that the Examiner erred
in finding that the art of record teaches or suggests a transmission configured
such that a lubricating fluid flows out of an internal chamber into and
through a cooling passageway and back into the internal chamber. See
4
Appeal2014-006371
Application 12/694,692
Appeal Br. 5. Specifically, the Examiner erred in finding that Burgess
discloses a cooling shroud "wherein lubricating fluid flows out of said
internal chamber through said output port into said cooling passageway,
through said cooling passageway, and back into said internal chamber
through said input port." Final Act. 4. We find that Burgess does not
disclose a lubricating fluid or any fluid communication between a housing
with an interior chamber and a cooling shroud. At best, Burgess may be said
to disclose a device using the same cooling method as Holzman, i.e., passing
a fluid (air in Holzman, cooling fluid in Burgess) through a cooling passage
around an interior chamber. See Holzman col. 4, 11. 19-35; Burgess col. 3,
11. 15--40. Thus, we are not persuaded that Burgess would suggest
modifying Holzman such that the lubricating fluid is pumped out of the
housing/interior chamber, through the cooling shroud surrounding the
housing/interior chamber, and back into the housing/interior chamber. In
short, the Examiner has not cited any portion of the art of record teaching or
suggesting the fluid communication required by the independent claims.
For these reasons, we do not sustain the rejection of independent
claims 1 and 12. Further, with respect to the rejection of the dependent
claims, the Examiner has not cited anything in the art that cures the
deficiency in the rejection of independent claims 1 and 12. Accordingly, we
do not sustain the rejections of dependent claims 2---6, 8-11, and 13-17.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims 1-
6 and 8-17.
REVERSED
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