FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Mar 20, 2020

13788535 - (D) (P.T.A.B. Mar. 20, 2020)

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.
13/788,535 03/07/2013 Robert Scott Lippert 83253829 8998
28395 7590 03/20/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
HLAVKA, DAVID J
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
03/20/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT SCOTT LIPPERT and REID ALAN BALDWIN
____________

Appeal 2019-005140
Application 13/788,535
Technology Center 3600
____________

Before: CHARLES N. GREENHUT, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 14–19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Ford Global Technologies, LLC as the
Applicant and real party in interest. Appeal Br. 2.
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Application 13/788,535
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THE INVENTION
Appellant’s invention is a vehicle transmission. Spec. ¶ 1. Claim 14,
reproduced below with emphasis added, is illustrative of the subject matter
on appeal.
14. A transmission comprising:
a first shift element configured to selectively hold a first
shaft against rotation independently of other shift elements;
a second shift element configured to selectively couple the
first shaft to an input shaft;
a third shift element configured to selectively couple the
first shaft to a second shaft; and
a fourth shift element configured to selectively couple the
first shaft to a third shaft.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
art rejection:2
NAME REFERENCE DATE
Ohnemus US 2013/0252780 Al Sept. 26, 2013
The following rejections are before us for review:
1. Claims 14–19 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which the applicant regards as the invention.
2. Claims 14–19 are rejected under 35 U.S.C. § 112, first paragraph,
for failure to comply with the written description requirement.
3. Claim 14 is rejected under 35 U.S.C. § 102(b) as anticipated by
Ohnemus.

2 Claims 1–13 are allowed. Final Act. 1. Rejections under 35 U.S.C. § 112,
first paragraph, as non-enabled have been withdrawn. Ans. 5.
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OPINION
Indefiniteness
The Examiner considers it unclear how the first shift element holds
the first shaft against rotation “independently of other shift elements,” when
there is always at least one other shift element engaged. Final Act. 7.
Appellant argues that the Examiner fails to establish those of skill in
the art would be unsure of what is covered by the claims. Appeal Br. 5.
Appellant argues that the standard for indefiniteness that the Examiner must
meet is set forth in the Supreme Court’s decision in Nautilus, Inc. v. Biosig
Instruments, Inc., 572 U.S. 898 (2014). Id.
In response, the Examiner reiterates that it is unclear how the first
shift element limitation is achieved. Ans. 7. The Examiner takes the
position that claim 14 is broader that what Appellant is asserting. Id. at 6.
More particularly, the Examiner maintains that the first shift element does
not have to be a brake and that “independently of other shift elements” does
not necessarily mean regardless of whether or not other shift elements are
engaged. Id.
In reply, Appellant accuses the Examiner of failing to apply the proper
test for definiteness. Reply Br. 3–4. Appellant reiterates that:
The final rejection does not find/discuss how a person skilled in
the art would be unable to determine the meets and bounds of
“a first shift element configured to selectively hold a first shaft
against rotation independently of other shift elements.”
Id. at 4.
The PTO can properly reject a claim as indefinite if the claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear. In re
Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). The test for definiteness
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under 35 U.S.C. § 112, is whether “those skilled in the art would understand
what is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (citations omitted). During patent prosecution when claims can
be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed. See In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989).
Careful and straightforward claim drafting by prosecuting
attorneys and agents, and rigorous application by examiners of
the statutory standard to particularly point out and distinctly
claim the subject matter regarded to be the invention, see 35
U.S.C. § 112, ¶ 2 (2000), serve an important public notice
function.
Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1300
(Fed. Cir. 2008). As the Federal Circuit explained in Halliburton Energy
Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) (cited with approval
in Nautilus, 572 U.S. at 910):
We note that the patent drafter is in the best position to resolve
the ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
Id. at 1255.
Initially, Appellant states the wrong legal standard to be applied in an
indefiniteness analysis during patent prosecution. Appeal Br. 5. The
Nautilus standard applies to District Court litigation that occurs after a patent
has issued. Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566,
at *4 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for
assessing indefiniteness approved by the Federal Circuit in Packard).
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The section in Appellant’s Appeal Brief that is devoted to the
indefiniteness issue is a single, six-line paragraph. Appeal Br. 5. The
section in Appellant’s Reply Brief devoted to the indefiniteness issue is a
single, seven-line paragraph. Reply Br. 3–4. The briefing is remarkably
abbreviated, vague, and conclusory. The phrase “independently of other
shift elements” does not appear, in so many words, in Appellant’s
Specification. See generally Spec. More significantly, Appellant makes no
genuine effort to explain what it actually means for the first shaft to be held
against rotation “independently of other shift elements.” See generally
Appeal Br., Reply Br. Furthermore, Appellant does not direct us to any
language in the Specification that purportedly provides guidance as to the
meaning of the term to a skilled artisan with the requisite definiteness.
Finally, Appellant makes no effort to rebut or refute the Examiner’s position
that “independently of other shift elements” does not necessarily mean, in so
many words, “regardless of whether or not other shift elements are
engaged.” Ans. 6.
During prosecution, the Examiner’s indefiniteness rejection begins
what is intended to be an interactive process in which Appellant has the
opportunity to respond to the Examiner by amending the claims or by
providing evidence or explanation that shows why the claims are not
indefinite. McAward, supra at *2 (citing Packard, 751 F.3d at 1311-12).
However, section 112 places the burden of precise claim drafting on
Appellant, not the Examiner. See In re Morris, 127 F.3d 1048, 1056–57
(Fed. Cir. 1997). Thus, we will not attempt to import limitations from the
Specification or speculate as to the meaning of the claim language,
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particularly where Appellant has not attempted to provide us with any
clarification or explanation.
Appellant admits that the phrase “independently of other shift
elements” was added by amendment to distinguish over the prior art. Appeal
Br. 6. Appellant currently relies on such claim language to distinguish over
the Ohnemus reference in the prior art rejection before us. Id. Appellant’s
inability or unwillingness to offer a reasonably definite construction of the
claim term effectively hamstrings our ability to consider and evaluate the art
rejection. See In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012)
(explaining that anticipation involves a two-step analysis, the first step of
which involves construction of the claims). In the instant case, rather than
engage the Examiner in a meaningful dialog to resolve ambiguity in the
claim language, Appellant merely asserts in conclusory fashion that the
Examiner has not established that a person of ordinary skill in the art would
be “unable to determine the metes and bounds of” the claim language at
issue. Reply Br. 4. Appellant’s approach to the definiteness inquiry,
declining to present substantive arguments or evidence in response to the
Examiner’s rejection, is not in accord with prevailing law. Packard, supra;
McAward, supra. Indeed, as the Packard Court held:
[W]hen the USPTO has initially issued a well-grounded
rejection that identifies ways in which language in a claim is
ambiguous, vague, incoherent, opaque, or otherwise unclear in
describing and defining the claimed invention, and thereafter
the applicant fails to provide a satisfactory response, the
USPTO can properly reject the claim as failing to meet the
statutory requirements of § 112(b).
Packard, 751 F.3d at 1311.
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Given the record before us, the phrase “independently of other shift
elements” is sufficiently vague that we sustain the Examiner’s Section 112
indefiniteness rejection of claim 14. For similar reasons, we sustain the
rejection of claims 15–19 which are rejected based on their dependency from
claim 14. Final Act. 6–7.
Written Description
In the Final Office Action, the Examiner focuses on the following
limitation in claim 14:
a first shift element configured to selectively hold a first shaft
against rotation independently of other shift elements.
Final Act. 2. According to the Examiner, Appellant’s Specification
allegedly splits shift elements into either a brake or clutch based on their
function. Id. Furthermore, the first shift element as recited, appears to
incorporate aspects of both a clutch and brake and therefore pertains to
subject matter not described in the Specification. Id. at 2–3.
Appellant argues that the specified function, holding a shaft against
rotation independently of other shift elements, is the normal function of a
transmission brake. Appeal Br. 4. Although, Appellant’s Specification
associates a brake with a housing (See Spec. ¶ 11),3 Appellant contends that
the written description requirement does not require the claim language to
recite the definition of brake from the Specification. Appeal Br. 4.
In response, the Examiner states that the first shift element is not
necessarily a brake. Ans. 5. The Examiner further states that neither the
definition of “brake,” nor the definition of “clutch,” in the Specification

3 “A shift element that holds a rotating element against rotation by
selectively connecting it to the housing is called a brake.” Spec. ¶ 11.
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applies to a shift element that selectively holds a shaft against rotation
independently of other shift elements. Id.
In reply, Appellant argues that the possibility that the first shift
element is not a brake does not demonstrate that Appellant was not in
possession of the subject matter of claim 14 at the time of filing.
Applicants are free to use generic terms as long a representative
number of species are disclosed in the written description.
M.P.E.P § 2163. Here, Appellant in Figure 2 and the associated
text discloses a brake 64' that is configured to selectively hold a
first shaft against rotation independently of other shift elements.
The brake 64' is a representative species of shift elements.
Reply Br. 3. Appellant directs our attention to paragraph 20 of the
Specification as providing the requisite written description support. Reply
Br. 2.
The written description requirement of 35 U.S.C. § 112, ¶ 1 provides,
in pertinent part, that “[t]he specification shall contain a written description
of the invention.” That requirement is satisfied only if the inventor
“‘convey[s] with reasonable clarity to those skilled in the art that, as of the
filing date sought, he or she was in possession of the invention,’ and
demonstrate[s] that by disclosure in the specification of the patent.”
Centocor Ortho Biotech, Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed.
Cir. 2011) (quoting Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541
F.3d 1115, 1122 (Fed. Cir. 2008)). “The essence of the written description
requirement is that a patent applicant, as part of the bargain with the public,
must describe his or her invention so that the public will know what it is and
that he or she has truly made the claimed invention.” AbbVie Deutschland
GmbH & Co. v. Janssen Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014);
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Nuvo Pharmaceuticals (Ireland) Designated Activity Company v. Dr.
Reddy’s Labs Inc., 923 F.3d 1368, 1377 (Fed. Cir. 2019).
The Figure 2 embodiment of Appellant’s invention is described, in
part, in paragraph 20 the Specification. That paragraph provides, in
pertinent part, as follows:
Intermediate shaft 74, brake 64', and clutches 62', 66', and 68'
form a four shift element module. Intermediate shaft 74 is
selectively held against rotation by brake 64', selectively
coupled to carrier 42 by clutch 62', selectively coupled to ring
gear 39 by clutch 66', and selectively coupled to input shaft 10
by clutch 68'. Applying two of the three clutches selectively
couples the corresponding two rotating elements.
Spec. ¶ 20. Taking into account our previous determination that the claim
language - “independently of other shift elements” – renders claim 14
indefinite, the foregoing passage, taken in the context of the remainder of
Appellant’s Specification, is insufficient to demonstrate that Appellant was
in possession of the invention, as best understood, as of the filing date. In
particular, it fails to demonstrate possession of a transmission that has a first
shift element configured to selectively hold a first shaft against rotation
“independently of other shift elements.”
Consequently, we sustain the Examiner’s Section 112 written
description rejection of claim 14. For the same reasons, we sustain the
rejection of claims 15–19 which are rejected based on their dependency from
claim 14. Final Act. 2–3.
Anticipation of Claim 14
by Ohnemus
In traversing the Examiner’s rejection, Appellant argues that
Ohnemus element B03 holds shaft IHW against rotation only when it is
engaged at the same time as K38. Appeal Br. 6. Therefore, according to
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Appellant, it does not hold the shaft against rotation “independently of other
shift elements.” Id.
However, because we have concluded that the phrase “independently
of other shift elements” renders claim 14 indefinite, the prior art rejection of
claim 14 must fall because it is necessarily based on a speculative
assumption as to the meaning of the claims. In re Steele, 305 F.2d 859, 862
(CCPA 1962).
Consequently, we reverse, pro forma, the Examiner’s anticipation
rejection of claim 14.
CONCLUSION
Claims Rejected § Reference/Basis Aff’d Rev’d
14-19 112 Indefiniteness 14-19
14-19 112 Written Description 14-19
14 102 Ohnemus 14
Overall Outcome 14-19

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) (2018).
AFFIRMED