Ex Parte Grosskopf et al

Patent Trial and Appeal Board

Aug 10, 2017

13457002 (P.T.A.B. Aug. 10, 2017)

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.
13/457,002 04/26/2012 Andrew P. Grosskopf 61068US01 8769
87521 7590 08/14/2017
Cantor Colburn LLP - Hamilton Sundstrand
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
HANSEN, COLBY M
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
08/14/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW P. GROSSKOPF and
GLENN C. JR. LEMMERS
Appeal 2017-004245
Application 13/457,0021
Technology Center 3600
Before ERIC S. FRAHM, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—6. Appellants have canceled claim 7 and withdrawn
claims 8—15 from consideration in response to a Restriction Requirement.
App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Hamilton Sundstrand
Corp. App. Br. 2.
Appeal 2017-004245
Application 13/457,002
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
an integrated drive generator, and more particularly to driving the integrated
drive generator at a constant output frequency with a variable input speed."
Spec. 11.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to contested limitations):
1. An integrated drive generator having a variable
input speed and a constant output frequency, the integrated
drive generator comprising:
a generator disposed about a first centerline;
a hydraulic trimming device disposed about a second
centerline; and
an epicyclic differential having a ring gear and a sun
gear,
wherein at least one of the ring gear and the sun gear
drives the generator at a constant output speed,
wherein the epicyclic differential is disposed about a
third centerline, wherein the third centerline is coaxial with the
second centerline, the first centerline distinctly oriented relative
to the coaxial second and third centerlines.
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Mar. 31, 2016); Reply Brief ("Reply Br.," filed Jan. 9, 2017); Examiner's
Answer ("Ans.," mailed Nov. 10, 2016); Final Office Action ("Final Act.,"
mailed Nov. 13, 2015); and the original Specification ("Spec.," filed
Apr. 26, 2012).
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Application 13/457,002
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Westbury et al. ("Westbury") US 3,023,638 Mar. 6, 1962
Murrell et al. ("Murrell") US 4,774,855 Oct. 4, 1988
Pollman et al. ('Tollman") US 6,533,695 B2 Mar. 18, 2003
Rejections on Appeal
Rl. Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Murrell and Westbury. Final Act. 2.
R2. Claims 1—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Murrell and Pollman. Final Act. 4.
ISSUES AND ANAFYSIS
We agree with particular arguments advanced by Appellants with
respect to claims 1—6 for the specific reasons discussed below. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. $103 Rejection Rl of Claims 1—6
Issue 1
Appellants argue (App. Br. 9—11; Reply Br. 2—3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Murrell and Westbury is in error. These contentions present
us with the following issue:
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Application 13/457,002
Did the Examiner err in finding the cited prior art combination teaches
or suggests an "integrated drive generator" that includes, inter alia, "a
hydraulic trimming device disposed about a second centerline," and "an
epicyclic differential. . . wherein the epicyclic differential is disposed about
a third centerline, wherein the third centerline is coaxial with the second
centerline, the first centerline distinctly oriented relative to the coaxial
second and third centerlines," as recited in claim 1?
Analysis
Appellants contend:
The disclosure of Murrell teaches precisely the type of
arrangement that Applicant's claimed invention improves upon.
Murrell fails to teach a hydraulic trimming device and an
epicyclic differential disposed about centerlines that are coaxial
with each other. (See Murrell, FIG. 7). Claim 1 specifies this
precise relationship to avoid the broad interpretation of merely
parallel centerlines. This clear distinction has been properly
acknowledged by the Examiner. (See Final Office Action dated
November 13, 2015, Page 4, lines 1-2). Westbury has been
relied upon to allegedly account for this feature. However,
Westbury has coaxially located first, second and third
centerlines. (See Westbury, FIGS. 4—6). Therefore, one
reference (Murrell) does not have coaxial centerlines of the
hydraulic trimming device and epicyclic differential, while the
other reference (Westbury) discloses a single axis for all three
centerlines.
App. Br. 9 (emphasis added).
In setting forth the rejection, the Examiner merely states, "Murrell. . .
does not disclose the second and third centerlines being coaxial," and
"Westbury . . . discloses a planetary gear set with a centerline that is coaxial
with a hydraulic trimming device centerline" (Final Act. 4), without any
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Application 13/457,002
specific pinpoint citation to figures or disclosure of Westbury in support.
See id.
In response to Appellants' arguments, the Examiner does not provide
much more in the way of specificity in the Answer as to how the
combination of Murrell with Westbury teaches or suggests the contested
limitation, but instead broadly states:
Murrell and Westbury both disclose arrangements of rotating
shafts with certain arrangement properties. Using the properties
of Westbury, specifically, that "it is impossible to obtain a low
overall speed ratio with ep[i] cyclic gear trains connected as
shown in Fig. 1" (col. 2/lines 24—29) thus better to utilize
coaxial arrangements as illustrated in fig. 3-7. Examiner is not
utilizing Westbury as a teaching for the exact
interaction/connections of the epicyclical gears (planetary) and
pump/motor elements, rather to teach that a coaxial relationship
between epicyclical gears and pump/motor elements would
have been obvious.
Ans. 2—3. Further, apparently with reference to Westbury column 2, lines
24—29, and Figures 1 and 3—7:3
[The] Examiner contends that Westbury discloses a hydraulic
trimming and epicyclic trimming device with coaxial
centerlines. The output shaft 4 is merely the output of the
transmission claimed, not necessarily the output of the
mechanism to which it is applied. The combination of Murrell
and Westbury have a rational underpinning as set forth in the
reasons to combine. There appears to [be] no conflict between
the teachings of Murrell and Westbury which would under
3 The cited portion of Westbury merely states, "[w]hile it is more
convenient to use epicyclic gear trains placed side by side than the bevel-
type differential gears referred to with reference to FIG. 1, it is impossible to
obtain a low overall speed ratio with epicyclic gear trains connected as
shown in FIG. 1. This will be clear from FIG. 3 of the drawings." Westbury
col. 2,11. 24—29.
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Application 13/457,002
mind [sic] the combination as they both are utilizing a hydraulic
trimming device and epicyclic transmission to maintain a
constant rotational speed.
Ans. 3.
Our reviewing court guides, '"[a] prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary skill in the art.'"
In re Bell, 991 F.2d 781, 783 (Fed. Cir. 1993) (quoting In re Rinehart, 531
F.2d 1048, 1051 (CCPA 1976)).
We note that the Examiner has not made the requisite showing of
obviousness since the Examiner paints with a broad brush in rejecting
claim 1 (Final Act. 4) by essentially pointing to the entirety of Westbury as
teaching or suggesting the contested limitations, and then, in a similarly
broad manner in the Answer, pointing to Figures 3—7, while stating he "is
not utilizing Westbury as a teaching for the exact interaction/connections of
the epicyclical gears (planetary) and pump/motor elements." Ans. 3. We
are left to speculate as to how the contested claim limitations of claim 1 are
taught or suggested in the manner recited by the combined teachings of
Murrell and Westbury.
Such conjecture on our part would impermissibly require us to resort
to speculation, unfounded assumptions, or hindsight reconstruction. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s]
the [B]oard to examine the application and resolve patentability in the first
instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). We
decline to engage in such speculation, unfounded assumptions, or hindsight
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reconstruction to make up for the deficiency in the Examiner's rejection
which fails to set forth a prima facie case for illustrative claim 1 pursuant to
the requirements of 35 U.S.C. § 132.
Accordingly, due to inadequate mapping of the contested limitations
to the cited prior art, we reverse the Examiner's rejection of independent
claim 1 and, for the same reasons, we also reverse the rejections of
claims 2—6 that depend therefrom.
2. $103 Rejection R2 of Claims 1—6
Issue 1
Appellants argue (App. Br. 12—14; Reply Br. 2—3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Murrell and Pollman is in error. These contentions present
us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests an "integrated drive generator" that includes, inter alia, "a
hydraulic trimming device disposed about a second centerline," and "an
epicyclic differential. . . wherein the epicyclic differential is disposed about
a third centerline, wherein the third centerline is coaxial with the second
centerline, the first centerline distinctly oriented relative to the coaxial
second and third centerlines," as recited in claim 1?
Analysis
Appellants set forth similar arguments as above in Rejection R1 of
claim 1, i.e., that the combination of Murrell and Pollman is deficient under
§103, and the Examiner makes similarly broad statements for Rejection R2
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as in Rejection Rl, this time with respect to the secondary Pollman
reference.
The Examiner does not cite to any specific portion of Pollman in the
Final Action (5), and further generally states "Pollman gives an express
teaching for it [sic] structure and outputs via gear 24, similar to the hydraulic
trimming/epicyclic transmission of Murrell" (Ans. 4), and in the
Examiner's opinion[,] ... all the claimed elements were known
in the prior art and one skilled in the art could have combined
the elements as claimed by known methods with no change in
their respective functions, and the combination yielded nothing
more than predictable results to one of ordinary skill in the art.
Id.
[The] Examiner contends that modifying Murrell in view of
Pollman would have been obvious such that a hydro mechanical
[sic] would have a space efficient layout and a simple, cost-
effective gear design (col. 1/line 39). Appellant has already
affirmed that Murrell discloses the exact mechanical
connections/interactions as its invention; thusly Examiner
contends that modifying Murrell with Pollman's concept of a
space efficient and simple layout would have been obvious.
Ans. 5.
We note the Examiner does not specifically cite to any portion of
Pollman other than shaft 24 in the drawing figures,4 and column 1, line 39 of
Pollman.5 We do not find these citations to be particularly relevant to the
4 We note Figures 1 A—1C et seq. merely represent shaft 24 in a schematic
manner, rather than in a plan, elevation, or isometric drawing view in which
structural relationships can be ascertained.
5 "Another objective of this invention is a hydromechanical transmission
design that can be easily tailored to different variable ratio range
requirements for different vehicles." Pollman col. 1,11. 39-41.
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contested limitations of claim 1, in which the arrangement of component
centerlines is recited with particularity.
Accordingly, due to inadequate mapping of the contested limitations
to the cited prior art, we reverse the Examiner's rejection of independent
claim 1 and, for the same reasons, we also reverse the rejections of
claims 2—6 that depend therefrom.
CONCLUSION
The Examiner erred with respect to obviousness Rejections R1 and R2
of claims 1—6 under 35 U.S.C. § 103(a) over the cited prior art combinations
of record, and we do not sustain the rejections.
DECISION
We reverse the Examiner's decision rejecting claims 1—6.
REVERSED
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