John R. Saieg et al.

Patent Trials and Appeals Board

Jun 19, 2020

2019001244 (P.T.A.B. Jun. 19, 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.
14/103,942 12/12/2013 John R. Saieg 83385101 7810
28866 7590 06/19/2020
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
FLUHART, STACEY A
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
06/19/2020 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):
MST@mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. SAIEG, JACOB M. POVIRK, DENNIS W. ISKEN, and
BRIAN J. ANDONIAN
Appeal 2019-001244
Application 14/103,942
Technology Center 3600

Before JENNIFER D. BAHR, JAMES P. CALVE, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

WOOD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s August 29, 2017 Non-Final Action rejecting claims 1–18. See
Non-Final Act. 1 (summary). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Ford Global Technologies
LLC. Appeal Br. 1.
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Application 14/103,942

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CLAIMED SUBJECT MATTER
The claims are directed to an automotive wheel end assembly
comprising an electromagnetically actuated coupler. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A wheel end assembly, comprising:
an outboard shaft supported on a knuckle secured to a
vehicle frame, including first clutch teeth;
an inboard shaft;
a coil;
a plunger;
a spring biasing the plunger axially away from the
outboard shaft;
a collar rotatably secured to the inboard shaft, axially
displaceable relative to the outboard shaft, including second
clutch teeth;
a thrust bearing located axially between the plunger and
the collar that transmits axial movement of the plunger to the
collar when the coil is energized to engage the first and second
clutch teeth.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fujikawa
Itoh
US 4,534,455
US 5,967,279
Aug. 13, 1985
Oct. 19, 1999
Umekida US 2014/0339885 A1 Nov. 20, 2014

REJECTIONS
Claims 1–18 are rejected under 35 U.S.C. § 112(b) as indefinite.
Claims 7 and 9 are rejected under 35 U.S.C. § 103 as unpatentable
over Fujikawa and Itoh.
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Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
Fujikawa, Itoh, and Umekida.
OPINION
Claims 1–18—Rejected as Indefinite
Claim 1
The Examiner determines that the terms “an outboard shaft” and “an
inboard shaft” in claim 1 are indefinite, asserting that “[i]t is unclear what
structural distinction the outboard and inboard aspects add to the shafts.”
Non-Final Act. 2. The Examiner acknowledges that the “most suitable”
general definition of “inboard” is “toward a center line of a vehicle,” id. at 3
(citing NPL Document, Definition of Inboard), but asserts that “this is a
matter of degree,” and that it was unclear “[h]ow close to the center line”
something must be to constitute “inboard.” Likewise, the Examiner
acknowledges that the “most suitable” general definition of “outboard” is
“closer to the sides of an automobile,” id. at 3 (citing NPL Document,
Definition of Outboard), but the Examiner finds that the term “an outboard
shaft” still lacks sufficient clarity. See id. (asking “[i]s the entire inboard
shaft located more toward the center line of the vehicle relative to the entire
outboard shaft? Can just a portion of these shafts be closer to the center line
and side of the vehicle respectively and still correspond to an outboard shaft
and an inboard shaft?”).
Appellant responds that the Specification clearly defines “outboard”
and “inboard,” and thus the dictionary definitions that the Examiner relies on
are “not applicable in this situation.” Appeal Br. 10. Appellant further
asserts that “the relative positions” of the inboard and outboard shafts are
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“clear from the specification and drawings,” and therefore “the ‘degree’ of
‘inboard’ or ‘outboard’ is irrelevant.” Id.
During prosecution, a claim is properly rejected as indefinite under 35
U.S.C. § 112 second paragraph if, after applying the broadest reasonable
interpretation in light of the specification, the metes and bounds of a claim
are not clear because the claim “contains words or phrases whose meaning is
unclear.” In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per
curiam) (approving, for pre-issuance claims, the standard from MPEP §
2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach
for assessing indefiniteness approved by the Federal Circuit in Packard).
We construe the claims based on the “broadest reasonable construction” of
the claims in light of the specification in which the claims appear. In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Under this standard, claim
terms are generally given their ordinary and accustomed meaning as
understood by one of ordinary skill in the art, unless it appears from the
specification, the file history, or other evidence asserted by the parties that
the inventor used them differently. In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994). Any special definition for a claim term must be set forth in the
specification with “reasonable clarity, deliberateness, and precision.” Id.
We agree with the Examiner that the Specification does not expressly
define “inboard” and “outboard” with “reasonable clarity, deliberateness,
and precision.” Accordingly, we may consult a dictionary to help construe
these terms “so long as the dictionary definition does not contradict any
definition found in or ascertained by reading the patent document.” Phillips
v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en banc); see also
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Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (If “the
specification does not assign or suggest a particular definition [of a claim
term], in determining the ordinary and customary meaning of the claim term
as viewed by a person of ordinary skill in the art, it is appropriate to consult
a general dictionary definition of the word for guidance”) (internal citation
omitted). The Examiner identifies several dictionary definitions for these
terms, and correctly identified those that are most pertinent to this case:
(1) “inboard” is defined as “toward a center line of a vehicle” (e.g., an
automobile); and (2) “outboard” is defined as “closer to the sides of an
automobile.” Non-Final Act. 3; see Free Motion Fitness, Inc. v. Cybex Int’l,
Inc., 423 F.3d 1343, 1349 (Fed. Cir. 2005) (“in those circumstances where
reference to dictionaries is appropriate, the task is to scrutinize the intrinsic
evidence in order to determine the most appropriate definition”). These
definitions are consistent with how the terms are used in the Specification.
For example, the Specification describes and depicts the outboard shaft as
closer to the wheel hub (i.e., closer to the side of the automobile) than the
inboard shaft. Spec. ¶ 14, Fig. 2.
We determine that the meanings of “inboard” and “outboard” would
have been reasonably clear to one of ordinary skill in the art at the time of
the invention and in light of the Specification, and therefore do not sustain
the Examiner’s rejection of claim 1 as indefinite. The Examiner asserts that
these terms are “matter[s] of degree,” and that it is not clear whether “the
entire inboard shaft [must be] located more toward the center line of the
vehicle relative to the entire outboard shaft,” or whether “just a portion”
suffices. Non-Final Act. 3. We disagree that these concerns render the
terms indefinite. The Specification and claims use “inboard” and “outboard”
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not as terms of degree, but rather as relative to the other; i.e., one shaft is
inboard of the other, and vice versa. Further, “reasonable certainty” does not
require “absolute or mathematical precision.” Biosig Instrs., Inc. v.
Nautilus, Inc., 783 F.3d 1374, 1381 (Fed. Cir. 2015) (internal quotation
marks omitted). We are not persuaded that one of ordinary skill in the art
would not be able to determine whether one shaft is inboard or outboard of
another shaft given the constructions noted above.
Claims 3, 7, and 15
Claim 3 depends from claim 1 and additionally recites, inter alia, that
“the first clutch teeth are located on an inboard axial end face of the
outboard shaft; and the second clutch teeth are located on an outboard axial
end face of the collar.” Appeal Br. 20 (Claims App.). Claims 7 and 15
contain similar limitations. Id. at 20, 22. The Examiner determines that the
terms “inboard axial end face” and “outboard axial end face” used in these
claims are “unclear.” Non-Final Act. 3, 4, 6. The Examiner first asserts that
it is unclear whether “axial end face mean[s] an axially extending face, or a
radially extend[ing] face at an end in an axial direction.” The Examiner also
asserts that it is unclear whether “the inboard end [is] closer to the center
line of the vehicle relative to another end of the outboard shaft, or relative to
the outboard axial end of the collar.” Id. at 3.
Appellant responds that it is “readily apparent” that an “axial end face
is an end face at an axial end of the particular shaft or rotating element to
which it is associated.” Appeal Br. 11. Appellant also asserts that “outboard
end of the inboard shaft” and “inboard end of the outboard shaft” are “self-
explanatory.” Id. at 12.
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We are not persuaded that claims 3, 7, and 15 are indefinite. First, it
is not entirely clear why it is necessary to consider whether an axial end face
of a rotating element “extend[s]” axially or radially; to the extent we
understand the Examiner’s use of these terms, the axial end face of a three-
dimensional rotating element would necessarily “extend radially.”
However, this does not exclude the possibility that it would also “extend
axially,” i.e., have a contour that is not entirely flat. Second, the phrase
“inboard axial end face” is modified by the phrase “of the outboard shaft”
(emphasis added), which makes clear that the inboard axial end face is
relative to the outboard axial end face of the outboard shaft (not of the
collar). Likewise, the “outboard axial end face of the collar” is relative to
the inboard axial end face of the collar, not of the outboard shaft.
Claim 5
The Examiner determines that claim 5 is indefinite “for the same
reasons as claims 1 and 3.” Non-Final Act. 4. Because we are not
persuaded that claims 1 and 3 are indefinite, we are also not persuaded that
claim 5 is indefinite.
Claim 11
The Examiner determines that the terms “an outboard end of the
inboard shaft” and “an inboard end of the outboard shaft” are indefinite “for
the same reasons as claim 7 relating to the terms inboard and outboard on
different elements.” Id. at 5. Because, as discussed above, we are not
persuaded that claim 7 is indefinite, we are also not persuaded that claim 11
is indefinite.
Claim 13
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Claim 13 is drawn to a wheel end assembly, comprising, among other
things, “an outboard shaft for transmitting torque to a wheel hub, including
radially extending first dog teeth,” and “a coil radially outboard of and
axially spaced from the outboard shaft.” Appeal Br. 22 (Claims App.). The
Examiner determines that “[i]t is unclear what direction these teeth extend.”
Non-Final Act. 5. According to the Examiner:
Typically “radially extending” teeth are teeth that extend radially
inward or outward from a circumferential/axial surface relative
to a rotation axis, while “axially extending” teeth are teeth that
extend axially parallel to the axis of rotation from a radial
surface. The teeth shown in the exemplary embodiments could
be interpreted under either interpretation and thus it is unclear
which arrangement the claims are intending to cover. . . . In view
of Applicant’s prior arguments, to best encompass the desired
scope of the claims, the Examiner has interpreted claim 13 as
reciting “axially extending clutch [sic, dog] teeth” in place of
“radially oriented clutch [sic, radially extending first dog] teeth.”
This is believed to be the intended scope of the feature.
Id. Appellant responds that the Specification depicts and describes radially
extending dog teeth, i.e., teeth 34 and 38. Appeal Br. 15 (citing Spec. ¶¶ 15,
17, Figs. 2–4).
We are not persuaded that “radially extending first dog teeth” is
indefinite. As the Examiner notes, “radially extending” teeth are teeth that
“extend inward or outward” toward or away from the axis of rotation of a
rotating element. Non-Final Act. 5. This term does not become indefinite
simply because the radially extending dog teeth disclosed in the
Specification also extend axially, i.e., along the axis of rotation. This may
render the term broad and not particularly descriptive, but not indefinite.
Because we do not agree that “radially extending dog teeth” is indefinite, we
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see no justification for the Examiner’s approach of provisionally interpreting
this term to mean “axially extending dog teeth.”
Finally, the Examiner determines that the term “a coil radially
outboard of . . . the outboard shaft” is indefinite. Id. According to the
Examiner “[i]f outboard vs inboard means either of the alternative
definitions (left to right; or front to back), the term ‘radially’ relative to
outboard makes this phrase even more confusing.” Id. Appellant responds
that “[t]he modifier ‘radial’ clearly modifies the ‘outboard’ for the coil
element to indicate a direction for this different use of the term outboard.”
Appeal Br. 15. We agree with Appellant that “radially outboard” is not
indefinite. “[C]laims must be read in view of the specification, of which
they are a part.” Phillips, 415 F.3d at 1315 (internal quotations omitted).
Reading this term in view of the Specification, particularly Figure 2,
“radially outboard of . . . the outboard shaft” means farther away from the
axis of rotation than the outboard shaft.
Claims 7 and 9—Rejected as Unpatentable over Fujikawa and Itoh
For claim 7, the Examiner finds that Fujikawa teaches the claimed
inboard shaft, coil, outboard shaft secured to a wheel hub and including an
inboard end face having radially extending first dog teeth, and collar
rotatably secured to the inboard shaft and including an outboard end face
having second dog teeth. Non-Final Act. 6–7 (citing Fujikawa 2:9–26, 46–
48, 2:67–3:42); see Fujikawa Fig. 1. The Examiner further finds that
Fujikawa does not teach that the first dog teeth are on the inboard end face
on the outboard shaft, that the second dog teeth are on the outboard end face
of the collar, or that the first and second dog teeth are “radially extending.”
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Non-Final Act. 7. The Examiner therefore relies on Itoh to teach these
limitations. Id.
Itoh discloses a positive clutch with engaging/disengaging clutch
teeth and illustrates two alternative embodiments. In one
embodiment (FIGS. 11 and 12), the teeth (81, 82) are radially
extending teeth (spline-like teeth) which each extend from an
axial/circumferential face of the two engaging elements (13, 9a),
similar to the radially extending teeth of non-modified Fujikawa.
In the other embodiment (FIGS. 3, 4a-4c), the teeth (40, 41) are
axially extending teeth (typical dog-like teeth) which each extend
from a radially extending face of the two engaging elements (18,
34).
Id. The Examiner determines that “[i]t would have been obvious to one
having ordinary skill in the art at the time of filing to have modified
Fujikawa to have replaced the radially extending teeth (11a, 15a) with
axially extending teeth since this is a simple substitution of one known type
of positive clutch teeth for another to yield predictable results.” Id. at 7–8
(citing MPEP § 2141). The Examiner also asserts that “such a substitution
would have provided stronger teeth and thus less likelihood of tooth failure,
as well as avoid the need for a stop to stop the inner moving teeth from
extending entirely through the outer stationary teeth.” Id. at 8.
Appellant responds that combining Fujikawa and Itoh in the manner
suggested would require the positions of Fujikawa’s teeth to change, which
would “render the clutch of Fujikawa inoperable.” Appeal Br. 16. In the
Answer, the Examiner clarifies that “the Examiner proposed to replace the
type of teeth in Fujikawa for the type of teeth disclosed in FIGS. 3, 4A, and
4B of Itoh, with no other changes to Fujikawa.” Ans. 12.
As is evident from Figure 1 of Fujikawa, teeth 11a are not located on
the “inboard end face” of cylindrical body 11, which the Examiner finds
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corresponds to the claimed outboard shaft, as recited in claim 7. Further, as
noted above, the Examiner’s proposed modification would not change the
location of teeth 11a with respect to cylindrical body 11. Therefore, the
combined teachings of Fujikawa and Itoh do not teach or suggest all of the
limitations of claim 7. For that reason, we do not sustain the rejection of
claim 7, and its dependent claim 9, as unpatentable over Fujikawa and Itoh.
Claim 8—Rejected as Unpatentable over Fujikawa, Itoh, and Umekida
The Examiner’s rejection of claim 8 relies on the erroneous finding
that the combination of Fujikawa and Itoh teaches all of the limitations of
claim 7, from which claim 8 depends. Non-Final Act. 9. Umekida is not
relied on to cure this deficiency. Therefore, we do not sustain the
Examiner’s rejection of claim 8 as unpatentable over Fujikawa, Itoh, and
Umekida.
CONCLUSION
The Examiner’s rejections are reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 112(b) Indefiniteness 1–18
7, 9 103 Fujikawa, Itoh 7, 9
8 103 Fujikawa, Itoh,
Umekida
8
Overall
Outcome

1–18

REVERSED