Ex Parte Christ

Patent Trial and Appeal BoardSep 18, 2012

10470684 (P.T.A.B. Sep. 18, 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. 10/470,684 07/29/2003 Michael Christ 12604/5 1052 26646 7590 09/18/2012 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER KRAUSE, JUSTIN MITCHELL ART UNIT PAPER NUMBER 3658 MAIL DATE DELIVERY MODE 09/18/2012 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL CHRIST ____________ Appeal 2010-005928 Application 10/470,684 Technology Center 3600 ____________ Before STEFAN STAICOVICI, JAMES P. CALVE, and SCOTT A. DANIELS, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005928 Application 10/470,684 2 STATEMENT OF THE CASE Michael Christ (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 18-21, 23, 26, 27, 29, and 36 as unpatentable over Gingery (US Re 27,126, issued Mar. 25, 1971) and Ohtomi (US 4,422,531, issued Dec. 27, 1983) and claims 24 and 25 as unpatentable over Gingery, Ohtomi, and Dye (US 5,366,422, issued Nov. 22, 1994). Claims 1-17, 22, 28, and 35 have been canceled and claims 30-34 have been withdrawn. We have jurisdiction over this appeal under 35 U.S.C. § 6. THE INVENTION Appellant’s invention relates to “a toothed piece for a geared motor.” Spec. 1, ll. 2-3. Claim 18 is illustrative of the claimed invention and reads as follows: 18. A toothed piece of a geared motor, including an electric motor and a gear unit, comprising: a first toothing arranged in a first axial region adapted for connection to a motor shaft of the electric motor; a second toothing arranged in a second axial region adapted to mesh with a running toothing of a further toothed piece of the gear unit; and a pin arranged at a motor-side end of the toothed piece, the pin configured to be inserted into a corresponding cut-out of the motor shaft to center the toothed piece; wherein the motor shaft includes a bore hole with an interior having a driver toothing, the first toothing meshing with the driver toothing. SUMMARY OF DECISION We REVERSE. Appeal 2010-005928 Application 10/470,684 3 ANALYSIS Claims 18-21, 23, 26, 27, and 29 Independent claim 18 requires inter alia a motor shaft including “a bore hole with an interior having a driver toothing” meshing with a “first toothing.” App. Br., Claims Appendix. The Examiner found that Gingery discloses a shaft member 18 including first toothing 20, second toothing 22, pin 19 configured to be inserted into a corresponding cutout of a motor shaft 11 having a bore hole 25 with an interior having a driver toothing 26 that meshes with first toothing 20. Ans. 3. See also, Gingery, col. 2, ll. 55-58 and fig. 1. Appellant argues that although input shaft element 11 of Gingery includes a bore containing a pilot bearing 12, “this bore does not have any driver toothing,” as called for by independent claim 18. App. Br. 4. In response, the Examiner takes the position that motor shaft 11 of Gingery “is also deemed to include the elements of the flywheel, clutch and pressure plate assemblies (see fig. 1), since when assembled, the assembly is operable as a single, integrated entity which rotates together as a motor shaft.” Ans. 3. See also, Ans. 5-6. Thus, according to the Examiner, motor shaft 11 includes dual splined sleeve 23 that has bore hole 25 with splines 26 that mesh with first toothing 20. Ans. 3. Appellant then argues that the Examiner’s position to include the elements of the flywheel, clutch and pressure plate assemblies of Gingery as part of motor shaft 11is “overly broad and untenable, since no person skilled in the art would consider a clutch assembly that detachably couples an engine output shaft to a further gear shaft to be part of the engine output Appeal 2010-005928 Application 10/470,684 4 shaft.” App. Br. 4. Hence, according to Appellant, dual splined sleeve 23, having bore hole 25 with splines 26 that mesh with first toothing 20, “cannot properly be considered to constitute a motor shaft” because they are “two entirely separate components.” Reply Br. 1. We agree. Although we appreciate the Examiner’s position that “the claims do not preclude an interpretation of the ‘motor shaft’ as an assembly,” (Ans. 5) nonetheless, claims are to be given their broadest reasonable interpretation consistent with the specification, reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In this case, we agree with Appellant that a person of ordinary skill in the art would not consider clutch assembly 10 of Gingery (including flywheel 13, plates 16, 17, clutch members 30, 31, hub 32, and dual splined sleeve 23) to be part of input shaft 11, as the Examiner proposes. An ordinary and customary meaning of the term “clutch” is “[a] device for connecting one driveshaft to another shaft or wheel.” DICTIONARY OF ENGINEERING TERMS (2001) (Found at: http://www.credoreference.com/entry/bhidet/clutch_in_mechanical_engineer ing_and_manufacture, last visited Sep. 13, 2012). In Gingery, clutch assembly 10 connects driveshaft 11 (input shaft) to shaft member 18. See Gingery, fig. 1. As such, we agree with Appellant that Gingery’s shaft element 11 constitutes a “motor shaft” as understood by a person of ordinary skill in the art. Since Gingery’s shaft element 11 does not include a bore having toothing, we agree with Appellant that Gingery fails to disclose a motor shaft having “a bore hole with an interior having a driver toothing” meshing Appeal 2010-005928 Application 10/470,684 5 with a “first toothing,” as called for by independent claim 18. See App. Br. 4. The addition of Ohtomi does not remedy the deficiencies of Gingery as discussed supra. Thus, for the foregoing reasons, the rejection of independent claim 18, and its dependent claims 19-21, 23, 26, 27, and 29 under 35 U.S.C. § 103(a) as unpatentable over Gingery and Ohtomi cannot be sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). Claim 36 Independent claim 36 requires inter alia “helix angles of the first toothing and the second toothing are arranged so that . . . an axial force generated by the running toothing and the second toothing are opposite to reduce the resulting axial force.” App. Br., Claims Appendix. The Examiner found that, “the limitation that the directions of the helix forces being opposite to reduce the resulting axial force is a functional limitation which is given limited patentable weight. See MPEP 2114.” Ans. 4. We recognize that this is a functional limitation, and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Therefore, as long as the arrangement of the helix angles of splined portion 20 (first toothing) and gear 22 (second toothing) of Gingery’s shaft element 18 is capable of “reduc[ing] the resulting axial Appeal 2010-005928 Application 10/470,684 6 force,” the limitation of claim 36 is satisfied. However, in this case, the Examiner has not provided any evidence of such capability. Thus, since the Examiner has not made any findings with respect to the functional limitation of independent claim 36, we cannot sustain the rejection of claim 36 under 35 U.S.C. § 103(a) as unpatentable over Gingery and Ohtomi. Claims 24 and 25 With respect to the rejection of claims 24 and 25, the addition of Dye does not remedy the deficiencies of the Gingery and Ohtomi as described supra. Accordingly, the rejection of claims 24 and 25 under 35 U.S.C. § 103(a) as unpatentable over Gingery, Ohtomi, and Dye likewise cannot be sustained. SUMMARY The decision of the Examiner to reject claims 18-21, 23-27, 29, and 36 is reversed. REVERSED mls