Ex Parte KimesDownload PDFPatent Trial and Appeal BoardOct 23, 201714037430 (P.T.A.B. Oct. 23, 2017) Copy Citation 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. 14/037,430 09/26/2013 John W. Kimes MEII0314PUSP 9512 22045 7590 10/25/2017 RROOKS KTTSHMAN P C EXAMINER 1000 TOWN CENTER DANG, TINH TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER 3655 NOTIFICATION DATE DELIVERY MODE 10/25/2017 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): docketing @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN W. KIMES Appeal 2016-007290 Application 14/037,43c1 Technology Center 3600 Before JOHN A. EVANS, JOHN P. PINKERTON, and SCOTT B. HOWARD, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of Claims 2—5, 9—11, and 25—32. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.2 1 The Appeal Brief identifies Means Industries, Inc. as the real party in interest. App. Br. 1. 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed May 16, 2016, “App. Br.”), the Reply Brief (filed July 21, 2016, “Reply Br.”), the Examiner’s Answer (mailed June 29, 2016, “Ans.”), the Final Action (mailed March 31, 2016, “Final Act.”), and the Specification (filed April 28, 2015, “Spec.”) for their respective details. Appeal 2016-007290 Application 14/037,430 STATEMENT OF THE CASE The Invention The claim relates to a vehicle drive system including a transmission. See Abstract. Claims 2, 3, and 4 are independent. An understanding of the invention can be derived from a reading of Claim 2, which is reproduced below: 2. A vehicle drive system including a transmission, the system comprising: a gear set including first, second, third and fourth elements, the second element connecting with an output shaft of the transmission; a transmission housing; a first electric motor having an output shaft connecting with the first element for driving the first element in response to a first electrical signal; a second electric motor having an output shaft connecting with the fourth element for driving the fourth element in response to a second electrical signal wherein the motors are actuatable to cause transmission ratios to change steplessly without the need for an engine output shaft of the vehicle to be connecting with any of the elements; and a non-friction controllable brake assembly having a coupling state for coupling the fourth element to the transmission housing and an uncoupling state for uncoupling the fourth element from the transmission housing, the brake assembly being non-hydraulically controlled to change state to maintain a desired transmission ratio. 2 Appeal 2016-007290 Application 14/037,430 Holmes Tuckfield, et al., Oba References and Rejection US 7,128,680 B2 Oct 31, 2006 US 7,695,387 B2 Apr. 13, 2010 US 2012/0270691 Al Filed Mar. 23, 2012 Claims 2—5, 9—11 and 25—32 stand rejected under 35 U.S.C. § 103(a), as unpatentable over Holmes, Oba, and Tuckfield. Final Act. 5—8. We have reviewed the rejection of Claims 2—5, 9—11 and 25—32 in light of Appellant’s arguments that the Examiner erred. We are persuaded of error. Appellant argues independent Claims 2, 3, and 4 as a group in view of the limitations of Claim 2. App. Br. 15. Appellant contends the primary reference, Holmes, is not concerned with the “torque hole” problem that is solved by the present invention. Id. The Examiner finds “torque hole” is not recited in the claims. We agree with the Examiner that Appellant’s arguments respecting a torque hole are not commensurate in scope with the claims. The Examiner finds the modified drive system of Holmes and Oba teaches the claimed invention, except Holmes and Oba, as modified, fails to ANALYSIS Claims 2-5,9-11 and 25-32: Obviousness over Holmes, Oba, and Tuckfield. Torque hole. Internal combustion engine. 3 Appeal 2016-007290 Application 14/037,430 teach the motors operate together without connecting the engine shaft. Final Act. 7. The Examiner finds Tuckfield teaches a drive system wherein the motors operate together to cause transmission ratios to change steplessly without a need to connect to an engine output shaft. Id. Appellant contends that the present claims are limited to all-electric embodiments in response to the Restriction Requirement issued November 11, 2014. App. Br. 13. Appellant argues the Examiner’s prima facie case is flawed because it modifies Holmes and Obo to be compatible with the hybrid (electric motors and internal combustion engine). Id. Appellant argues the Examiner’s prima facie case is invalid because internal combustion engines have been restricted from the claims. Id. The Examiner finds the proposed modification of Holmes is proper because it “is a basic construction of a vehicle electric system or an operation of an electric vehicle mode (EV) in a hybrid vehicle that include an internal combustion engine.” Ans. 9 (emphasis added). Tuckfield teaches “[a] hybrid powertrain for a vehicle having a disconnect clutch located between an internal combustion engine, or other power source, and a hybrid transmission.” Tuckfield, Abstr. We fail to see why it would have been obvious to one of ordinary skill in the automotive arts to modify a transmission to accommodate an internal combustion engine when such engine is explicitly excluded from the claimed design. We disagree that any such motivation exists. The principles of operation of the prior art must be changed. Appellant argues “[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not 4 Appeal 2016-007290 Application 14/037,430 sufficient to render the claims prima facie obvious.” Id. at 16 (citing MPEP 2143.01, VI) (quoting In reRatti, 270 F .2d 810, 813, (CCPA 1959)). Appellant argues the system architecture and principle of operation of Holmes’ transmission are materially different from those of independent claims 2—\. Id. Appellant argues Holmes teaches a “dual power path” transmission which requires five gear elements operatively interconnected to permit two countershafts to be selectively connectable to an output shaft. Id. Appellant maintains the Examiner deconstructs Holmes to omit the second of five gear rings and the two countershafts. Id. Appellant argues without the two countershafts and the second gear ring that Holmes could not function. Id. The Examiner finds the system architecture of Holmes, and that of the present invention, each disclose the operation of an electric vehicle mode “in a hybrid vehicle that include [sic, “includes”] an internal combustion engine.” Ans. 9. Appellant re-iterates his argument that the Examiner’s selective culling of various parts of Holmes’ transmission requires hindsight in view of Appellant’s Specification. Reply Br. 5. We agree with Appellant. The Examiner acknowledges Holmes’ additional gear elements are not required by the claims and consequently, the Examiner finds it would not change the principle of operation of a transmission to only consist of the parts as set forth in the claims. Ans. 9. We disagree. If the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959). To function as 5 Appeal 2016-007290 Application 14/037,430 Holmes teaches, the reference transmission requires five gear rings (of which the Examiner selects only four) and two countershafts (which the Examiner omits entirely). The Examiner does not explain how Holmes would function with various of its pieces missing. Where, as here, the degree of modification that would have been required is significant, then proposed modification would not have been a “mere substitution of one element for another known in the field.” See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Rather, the Examiner’s reasoning will appear to demonstrate little more than “that each of [the elements of the claimed subject matter] was, independently, known in the prior art,” Id. at 418. “A patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art.” Id. at 401. In view of the foregoing, we decline to sustain the rejection of independent Claims 2, 3, and 4, or of claims dependent therefrom. DECISION The rejection of Claims 2—5, 9—11, and 25—32 under 35 U.S.C. § 103(a) is REVERSED. REVERSED 6 Copy with citationCopy as parenthetical citation