Michael Schmidt et al.

Patent Trials and Appeals Board

Aug 2, 2019

13850047 - (D) (P.T.A.B. Aug. 2, 2019)

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.
13/850,047 03/25/2013 MICHAEL SCHMIDT ZIMM003 1861
54698 7590 08/02/2019
MOSER TABOADA
1030 BROAD STREET
SUITE 203
SHREWSBURY, NJ 07702
EXAMINER
RUSHING, JR, BOBBY
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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@mtiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL SCHMIDT, HEIKO SCHREIBER,
FRANK MICHEL, and THOMAS BAYER1
__________

Appeal 2019-001461
Application 13/850,047
Technology Center 3600
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–8, 10–12, 16, 17, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over by Schreiber (US 8,256,327 B2, issued Sept.

1 WITTENSTEIN SE (“Appellant”) is the applicant as provided under
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Brief 3
(“Appeal Br.”), filed June 8, 2018.
2 The Examiner states that “[c]laim 23 is objected to as being dependent upon
a rejected base claim, but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any intervening claims.”
Final Office Action 8 (“Final Act.”), dated Jan. 10, 2018.
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4, 2012) and Musser (US 2,930,254, issued Mar. 29, 1960). Claims 9, 13–
15, 18, and 20–22 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 35 U.S.C. § 41.50(b).

CLAIMED SUBJECT MATTER
The claimed subject matter “relates to a transmission and a method for
manufacturing or operating a transmission.” Spec. ¶ 2, Fig. 1. Claims 1, 17,
and 19 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A transmission, in particular, a coaxial transmission or a
linear transmission, comprising:
a toothing;
a tooth holder in which a plurality of tooth segments are
accommodated to engage with the toothing, wherein the tooth
segments are borne to be radially shiftable relative to the tooth
holder; and
a drive element having a profiling for radially driving the
tooth segments borne in a radially shiftable manner,
wherein the transmission has inner initial stress,
wherein the inner initial stress is generated by oversizing,
and
wherein the tooth segments have been installed oversized
to achieve the inner initial stress.

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ANALYSIS
NEW GROUND OF REJECTION3
Claims 1–8, 10–12, and 16
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1–8, 10–12, and 16 under 35 U.S.C. § 112(b) as being indefinite.
For claims under examination, “a claim is indefinite when it contains
words or phrases whose meaning is unclear,” i.e., “ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention.” In re Packard, 751 F.3d 1307, 1310–14 (Fed. Cir.
2014); see also MPEP § 2173.02(I) (Rev. 07.2015, Nov. 2015) (advising
examiners that a rejection for indefiniteness is appropriate “after applying
the broadest reasonable interpretation to the claim, if the metes and bounds
of the claimed invention are not clear”). Moreover, “if a claim is amenable
to two or more plausible claim constructions, the USPTO is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207,
2008 WL 5105055, at *5 (BPAI 2008) (precedential).
In this case, we determine that the term “oversized” as recited in the
limitation “the tooth segments have been installed oversized,” renders claim
1 indefinite. In particular, it is unclear what aspects of the tooth segments
are oversized. For example, it is unclear which dimension of the tooth

3 Because Appellant’s application was filed after September 16, 2012, the
effective date of the amendments to 35 U.S.C. § 112 enacted by the Leahy-
Smith America Invents Act (AIA), the AIA version of the statute applies. See
AIA, Pub. L. No. 112–29, § 4(e), 125 Stat. 284, 297 (2011).
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segments, i.e., their width, their length, their diameter (if round), their tooth
angle, their length of taper, etc., is oversized. Further, it is unclear whether
one dimension or multiple dimensions, i.e., both length and width, or one
portion as opposed to multiple portions, of the tooth segments is/are
oversized. We note that the Specification discloses that “[t]he oversizing is
preferably at least 0.0001%, or at least 0.0005%, or at least 0.001 % of the
diameter, or the inner diameter, of the toothing.” Spec. ¶ 18 (emphasis
added). However, this addresses the amount or degree of the recited
oversizing, not the dimension of the tooth segment being oversized. Further,
regarding this stated amount of oversizing, the Specification does not define
a particular dimension of the toothing as its “diameter” (in view of the
toothing also having an “inner diameter” (unless the two diameters are the
same)). For these reasons, we determine that the recitation “the tooth
segments have been installed oversized,” renders claim 1 indefinite as there
is no reference by which to determine this.
Accordingly, we reject claim 1 and claims 2–8, 10–12, and 16
depending therefrom, as indefinite.

Obviousness over Schreiber and Musser
Claims 1–8, 10–12, and 16
We do not reach the merits of the prior art rejection of claims 1–8,
10–12, and 16 because we are unable to review them without having to
make speculative assumptions about the meaning of the language of the
rejected claims, as discussed above for the rejection under 35 U.S.C.
§ 112(b). Consequently, we are constrained to reverse the rejection of
claims 1–8, 10–12, and 16 as unpatentable over Schreiber and Musser. See
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Final Act. 3–5; In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language).

Claim 17:
Claim 17 is directed to “[a] transmission” including “a tooth holder in
which a plurality of tooth segments are accommodated to engage with [a]
toothing” “wherein the tooth segments have an oversized length” and
“wherein the tooth segments are oversized by at least 0.001 % of the
diameter of the toothing.” Appeal Br. 22–23 (Claims App.) (emphasis
added).
The Examiner finds that Schreiber discloses the transmission of claim
17 but that Schreiber “does not disclose or show tooth segments having an
oversized length and . . . explicitly cite the transmission as having inner
initial stress generated by oversizing of the tooth segments.” Final Act. 5–6.
However, the Examiner finds that
Musser [] teaches [a] transmission with “increased . . . torque-
carrying capabilities” (col. 1, para. 2) by way of prestress “to
increase the intimacy of the tooth contact” (col 1., lines 54–56).
This intimacy is directly proportional to the tooth size (col. 2,
line 15–18) and thus the prestress increases as the tooth size (i.e.,
length) increases.
Id. at 6.
Musser discloses that “[i]n accordance with the present invention, the
peak or valley of the sine or harmonic wave . . . is desirably increased in
length” and that “at the point where the wave becomes tangent to the pitch
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circle of the mating ring gear, the lobe of the wave generator is extended
along the pitch circle of the ring gear.” Musser 2:7–14.
As Appellant explains, “[t]he increase in length of the peak or valley
of the harmonic wave [in Musser] pertains to the peripheral length of the
section of the flexible gear 23.” Reply Br. 3–4.4 In other words, “the
‘length’ in Musser relates to the section of the flexible gear 23 . . . not [to]
the length of an individual tooth from the teeth 22. Therefore, the ‘increase
in length’ in Musser is not related to the ‘tooth size.’” Id. at 4. Although we
acknowledge the Examiner’s position that “[t]he amount of oversizing of the
tooth segments may be determined through the use of routine
experimentation during the engineering design process to optimize the
functionality of the device,” the Examiner does not direct us to any
discussion in Musser concerning tooth segments 22 being “oversized” by at
least a percentage of the “diameter” of toothing 21. Final Act. 5–6. For
these reasons, the Examiner fails to establish by a preponderance of the
evidence that the combined teachings of Schreiber and Musser disclose the
transmission of claim 17.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 17 as unpatentable over Schreiber and Musser.

Claim 19:
Claim 19 is directed to “[a] transmission” including “a plurality of
tooth segments” “wherein the plurality of tooth segments are dimensioned to
cause clamping of at least one tooth segment between the drive element and

4 Reply Brief (“Reply Br.”), filed Dec. 6, 2018.
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the toothing, to achieve an inner initial stress.” Appeal Br. 23–24 (Claims
App.) (emphasis added).
The Examiner finds that Schreiber discloses the transmission of claim
19 but that Schreiber “does not explicitly reference the tooth segments as
being dimensioned to cause clamping and inner initial stress.” Final Act. 7.
The Examiner further finds that “the plurality of tooth segments of Musser
are dimensioned to cause clamping of at least one tooth segment between the
drive element and the toothing (tightly held between the drive element and
toothing) to achieve an inner initial stress.” Id.
Appellant contends that “[a]s discussed . . . with respect to claim 1,
Schreiber in view of Musser fail to teach that tooth segments are oversized,
or that there exists an inner initial stress in the transmission.” Appeal Br. 18.
However, claim 19 does not recite the tooth segments are “oversized.”
Appeal Br. 23–24 (Claims App.). See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”). Further, claim
19 and the Specification do not define “inner initial stress” to preclude any
stress that exists in Musser’s transmission due to the clamping of its tooth
segments between its drive element and its toothing. See Final Act. 7; see
also Ans. 11;5 Musser 2:15–18 (“Since any extended contact reduces the
angular distance available for the deflection of the flexible gear, it increases
the stress for a given tooth size.”) (emphasis added). For these reasons, a
preponderance of the evidence supports the Examiner’s finding that the

5 Examiner’s Answer (“Ans.”), dated Oct. 5, 2018. The Examiner references
claim 17 rather than claim 19. See Ans. 11. We consider this an inadvertent
typographical error.
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combined teachings of Schreiber and Musser disclose the transmission of
claim 19.
Accordingly, we sustain the Examiner’s rejection of independent
claim 19 as unpatentable over Schreiber and Musser.

DECISION
For the above reasons, we REVERSE the decision of the Examiner to
reject claims 1–8, 10–12, 16, and 17 as unpatentable over Schreiber and
Musser.
We AFFIRM the decision of the Examiner to reject claim 19 as
unpatentable over Schreiber and Musser.
We enter a NEW GROUND OF REJECTION of claims 1–8, 10–12,
and 16 under 35 U.S.C. § 112(b).
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellant],
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 prosecution will be remanded to
the Examiner. The new ground of rejection is binding upon the
Examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the Examiner,
overcomes the new ground of rejection designated in the
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decision. Should the Examiner reject the claims, Appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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-IN-PART; 37 C.F.R. § 41.50(b)