Ex Parte Gutmann

Patent Trial and Appeal Board

Nov 30, 2016

12599049 (P.T.A.B. Nov. 30, 2016)

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.
12/599,049 12/23/2009 Peter Gutmann GRAT 24131 6592
(100717-00142)
26304 7590 12/02/2016
KATTEN MUCHIN ROSENMAN LLP
575 MADISON AVENUE
NEW YORK, NY 10022-2585
EXAMINER
KELLEHER, WILLIAM J
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
nycuspto@kattenlaw.com
s amson. helfgott @ kattenlaw .com
hassan.shakir@kattenlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER GUTMANN
Appeal 2014-009344
Application 12/599,0491
Technology Center 3600
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Gutmann (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1—16. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Sona BLW
Prazisionsschmiede GmbH. Br. 1 (filed April 21, 2014).
Appeal 2014-009344
Application 12/599,049
INVENTION
Appellant’s invention relates to a “differential housing made of two
sheet metal shells, in which differential bevel gears are supported on driving
pins fixed to the housing and mesh with axle bevel gears, and wherein a
carrier shell having a drive gear fastened to the outer circumference thereof
and a cover shell are fitted together along a common joint plane to form the
differential housing.” Spec. 1.
Claims 1,15, and 16 are independent claims. Claim 1, reproduced
below with emphasis added, is illustrative of the claimed invention and reads
as follows:
1. A differential of lightweight construction for motor
vehicles, the differential comprising:
a carrier shell and a cover shell, each shell made from sheet
metal, each shell having a finished wall thickness of 2-5 mm,
the carrier shell and the cover shell fitted together
along a common joint plane to form a differential housing,
the carrier shell having an outer carrier shell surface
to which a driving gear is fastened, the differential housing
comprising a housing hole;
a driving pin and a plurality of bevel gears, the driving pin
having a first end received and fastened in the housing hole, the
plurality of bevel gears supported on the driving pin, each bevel
gear of the plurality of bevel gears meshing with an axle bevel
gear; and
a circumferential ring adjacent to the joint plane for
reinforcing the differential housing.
Br. 14 (Claims App.) (emphasis added).
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Appeal 2014-009344
Application 12/599,049
REJECTIONS
I. The Examiner rejected claims 1 and 8—13 under 35 U.S.C.
§ 103(a) as unpatentable over Victoria (US 6,061,907, iss. May
16, 2000).
II. The Examiner rejected claims 2, 3, 6, 7, 15, and 16 under
35 U.S.C. § 103(a) as unpatentable over Victoria and Orr
(US 6,699,154 B2, iss. Mar. 2, 2004).
III. The Examiner rejected claims 4 and 5 under 35 U.S.C. § 103(a)
as unpatentable over Victoria and Schubert (US 4,815,748, iss.
Mar. 28, 1989).
IV. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Victoria and Cilano (US 5,415,599, iss. May
16, 1995).
ANALYSIS
Rejections I—IV
Claims 1,15, and 16 are independent and claims 2—14 depend from
claim 1. Br. 14—16 (Claims App.). Each claim, either directly or through
dependency, requires a differential with “a circumferential ring” that is
“adjacent to the joint plane for reinforcing the differential housing.” Id.
“Joint plane” refers to the fitting together of the carrier shell and the cover
shell along a common joint plane to form a differential housing. Id.
For each independent claim 1,15, and 16, the Examiner finds the
recited circumferential ring limitation in Victoria’s representation that,
“[ejach end shaft 45 has a recess suited to receive a retaining ring, which is
installed at the outer surface of the housing so that a retaining ring elastically
engages and is seated in each recess.” Final Act. 3, 6, 7 (citing Victoria, col.
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Application 12/599,049
4,11. 56—59); see also Ans. 12—15. In the alternative, the Examiner finds the
support ring 42 of Orr discloses the claimed circumferential ring, as well as,
the radial ring 18 of Bostbarge. Final Act. 11; see also Ans. 14—15.
Appellant argues these finding are incorrect because none of the Victoria,
Orr, and/or Bostbarge structures are circumferential rings adjacent the joint
plane to reinforce the differential housing. Br. 10—12.
The dispute between the Examiner and Appellant is resolved largely
by deciding the meaning of “a circumferential ring” that is “adjacent to the
joint plane for reinforcing the differential housing.” During examination of
a patent application, pending claims have the broadest reasonable meaning
the specification supports. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The claim terms have the ordinary and customary
meaning a skilled artisan would apply to them within the context of the
claims, as informed by the entire disclosure. In re Translogic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007). When assessing the meaning of
disputed claim language, we always look to the specification for guidance.
See In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir.
2007). However, “[ejven when guidance is not provided in explicit
definitional format, ‘the specification may define claim terms ‘by
implication’ such that the meaning may be ‘found in or ascertained by a
reading of the patent documents.’” Irdeto Access, Inc. v. EchoStar Satellite
Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004).
We note first that Appellant’s Specification does not expressly define
any of the disputed terms, but it does provide guidance. In particular, the
Specification states, “[o]n the outside of the sheet metal shells, adjacent to
the joint plane, there are formed cylindrical faces as seating faces, which
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Application 12/599,049
bear against corresponding inner seating faces of the circumferential rings.”
Spec. 3. “The circumferential rings ensure special stiffening of the
differential housing in the region of the common separating plane, and so the
sheet metal shells themselves can have a relatively small sheet metal
thickness.” Id. As shown in Figure 2, “cover shell 18 is placed in such a
way on carrier shell 1 that the two sheet metal shells lie one on the other in
their entire joint plane 4” and are formed to provide a generally flat surface
to serve as a seating face for the circumferential ring 6. Id. at 9, Fig. 2.
“[Circumferential ring 6 acts to stiffen the sheet metal shells forming the
differential housing in the region of separating plane 4.” Id.
With the Specification’s description of the invention as a backdrop,
and within the context of the claims, the ordinary and customary meaning of
“a circumferential ring” is a device that extends around the external surface
of a differential housing. See Ring Definition, Merriam-Webster.com,
http://www.merriam-webster.com/dictionary/ring (last visited on Nov. 23,
2016) (“a circular band for holding, connecting . . .”); Circumferential
Definition, Merriam-Webster.com, http://www.merriam-
webster.com/dictionary/circumferential (last visited on Nov. 23, 2016) (“the
external boundary or surface of a figure or object”). We note that the
Examiner states, “the independent claims do not include the structural
limitation ‘on the outside of metal shells’ in the independent claims.” Ans.
13. As our construction indicates, we disagree. Because the term
“circumferential” modifies the term “ring,” and given the context of the
claims and the entire disclosure, a skilled artisan would understand
“circumferential” as structurally limiting the ring to the external surface of a
differential housing.
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Application 12/599,049
Regarding the phrase, “adjacent to the joint plane for reinforcing the
differential housing,” a skilled artisan would understand it as describing the
placement of the circumferential ring along the plane where the carrier shell
and cover shell meet to strengthen the differential housing by providing
additional material at that location. See Adjacent Definition, Merriam-
Webster.com, http://www.merriam-webster.com/dictionary/adjacent (last
visited on Nov. 23, 2016) (“having a common endpoint or border”); Joint
Definition, Merriam-Webster.com, http://www.merriam-
webster.com/dictionary/joint (last visited on Nov. 23, 2016) (“a place where
two things or parts are joined”); Reinforcing Definition, Merriam-
Webster.COM, http://www.merriam-webster.com/dictionary/reinforcing
(last visited on Nov. 23, 2016) (“to strengthen by additional assistance,
material, or support”). We note that the Examiner states, “none of the
independent claims include language related to a common joint plane.”
Ans. 15. This is also not correct, however, because the claims state, “the
carrier shell and the cover shell fitted together along a common joint plane
to form a differential housing” and “the joint plane” is referring to that
common joint plane.
To summarize, the limitation, “a circumferential ring adjacent to the
joint plane for reinforcing the differential housing,” requires a device that
extends around the external surface of a differential housing and is
positioned along the plane where the carrier shell and cover shell meet to
strengthen the differential housing by providing additional material at that
location. Element 6 in Figure 5, reproduced below, illustrates an example of
such a device:
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Application 12/599,049
5
y
Above Figure 5 depicts a “perspective view of the components of a
differential housing fitted together according to Fig[ure] 2.” Spec. 7—8.
We now consider the Examiner’s findings that several of the cited
prior art references disclose this limitation. First, the Examiner relies on the
retaining rings of Victoria. Final Act. 3, 6, 7 (citing Victoria, col. 4,11. 56—
59); see also Ans. 12—15. Victoria describes the retaining rings as being
located at each end of shaft 482, which has recesses suited to receive them.
Victoria, col. 4,11. 49-52. The retaining rings, however, do not extend
around the external surface of a differential housing, nor are they positioned
along the plane where the carrier shell and cover shell meet to strengthen the
differential housing by providing additional material at that location. Id.
Second, the Examiner relies on the support ring 42 in Orr. Final Act.
11; see also Ans. 14—15. Orr describes the support ring as being inside the
differential housing 20 and “placed between the pinion gears 24 to provide
radial support for the pinion gears 24 and maintain engagement of the pinion
gears 24 with the ring gear 36.” Orr, col. 3,11. 6—16 and 45^49, Fig. 2.
2 Although Victoria identifies the pinion shaft as both 48 and 45 in the
written description, Figure 2 only uses the number 48 to identify the pinion
shaft. In fact, the number 45 does not identify any part in the figures.
Therefore, we view the identification of 45 for the pinion shaft as a
typographical error, which was intended to identify pinion shaft 48.
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Orr’s support ring 42, however, does not extend around the external surface
of a differential housing, nor is it positioned along the plane where the
carrier shell and cover shell meet to strengthen the differential housing by
providing additional material at that location. Id. Additionally, the
Examiner fails to identify in what manner the Victoria structure would be
modified in order to include a support ring of the type shown in Orr.
Finally, the Examiner identifies radial ring 18 from Bostbarge. Final
Act. 11; see also Ans. 14—15. Bostbarge’s housing is comprised of a cage 2
and an obturator 3. Bostbarge, col. 2,11. 39-40, Fig. 2. Obturator 3 sits
within cage 2 and the parts use corresponding threads, 12 and 24, to bring
them together. Id. at col. 3,11. 20—32, col. 4,11. 26—37, Fig. 2. Cage 2 “is a
forged part in one piece” that includes a “radial ring 18 which forms a flange
for fixing by clamping a crown wheel. . . provided for drive of the
differential.” Id. at col. 3,11. 8—15, Fig. 2. Although radial ring 18 does
extend around the external surface of a differential housing, it is not
positioned along the plane where the carrier shell and cover shell meet to
strengthen the differential housing by providing additional material at that
location. In view of the above deficiencies, a preponderance of the evidence
does not support the Examiner’s findings that Victoria, Orr, and/or
Bostbarge disclose “a circumferential ring” that is “adjacent to the joint
plane for reinforcing the differential housing.” Therefore, we do not sustain
the rejection of claims 1,15, and 16 as unpatentable.
The Examiner’ use of the teachings of Cilano or Schubert,
respectively, does not cure the above deficiencies. As a result, we do not
sustain the Examiner’s rejection of dependent claims 2—14 as unpatentable
for the same reason.
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Appeal 2014-009344
Application 12/599,049
SUMMARY
The Examiner’s rejection of claims 1—16 as unpatentable is reversed.
REVERSED
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