Ex Parte Tumavitch et al

Patent Trial and Appeal Board

Aug 31, 2017

13751265 (P.T.A.B. Aug. 31, 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.
13/751,265 01/28/2013 Jeffrey J. Tumavitch 83339455 6815
28866 7590 09/05/2017
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
HLAVKA, DAVID J
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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 @ mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY J. TUMAVITCH, BRIAN J. DEURLOO, and
RICHARD R. HATHAWAY
Appeal 2016-001565
Application 13/751,2651
Technology Center 3600
Before CARLA A. KRIVAK, HUNG H. BUI, and SHARON FENICK,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Office Action rejecting claims 1—19, all of which are
pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. App. Br. 1.
2 Our Decision refers to Appellants’ Appeal Brief filed April 20, 2015
(“App. Br.”); Reply Brief filed November 19, 2015 (“Reply Br.”);
Examiner’s Answer mailed September 22, 2015 (“Ans.”); Final Office
Action mailed November 18, 2014 (“Final Act.”); and original Specification
filed January 28, 2013 (“Spec.”).
Appeal 2016-001565
Application 13/751,265
STATEMENT OF THE CASE
Parking mechanisms are used in automotive vehicles to allow the
vehicle to enter into a “Park” position from a “non-Park” position and
maintain in the “Park” position. Spec. 1:13—15. Appellants’invention seeks
to provide a parking mechanism that provides both stable “Park” and “non-
Park” positions without external power being provided. Spec. 1:8—9.
Claims 1, 9, and 15 are independent. Claim 1 is illustrative of
Appellants’ invention, as reproduced below with disputed limitations in
italics:
1. A park mechanism, comprising:
a cam pivotal between Park and not-Park ranges, including
a radial outer surface formed with angularly spaced lobes;
a roller urged by a spring into contact with the outer
surface;
a park spring configured to only urge the cam toward the
Park-range;
a power source for pivoting the cam;
a pawl actuated by cam movement into a Park state and a
not-Park state.
App. Br. 15—18 (Claims App’x.).
Examiner’s Rejections and References
(1) Claims 1—5, 7—12, 14—17, and 19 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Amamiya et al. (US 7,549,352 B2;
issued Jun. 23, 2009; “Amamiya”). Final Act. 2—7.
(2) Claims 6, 13, and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Amamiya and Koski et al. (US 7,490,528 B2;
issued Feb. 17, 2009; “Koski”). Final Act. 7—8.
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Application 13/751,265
ANALYSIS
§ 102(b) Rejection of Claims 1—5, 7—12, 14—17, and 19
Independent claim 1
In support of the anticipation rejection of independent claim 1 and its
dependent claims 2—8, the Examiner finds Amamiya discloses Appellants’
claimed “park mechanism” equipped with all the claim limitations including:
a cam (i.e., 100) pivotal between Park and not-Park ranges,
including a radial outer surface formed with angularly spaced
lobes (i.e., Fig. 3; 122, 200 and 210 in Fig. 3), a roller (i.e., 112)
urged by a spring (i.e., 110) into contact with the outer surface;
a park spring configured to only urge the cam toward the Park-
range (i.e., spring on element 104 urges the cam towards park
range; F3 shows the urging force in Fig. 5A), a power source for
pivoting the cam (i.e., 42), a pawl (i.e., 106) actuated by cam
movement into a Park state and a not-Park state.
Final Act. 2—3 (citing Amamiya, Figs. 3, 5A).
Amamiya’s Figure 3 is reproduced below with additional markings
for illustration.
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Application 13/751,265
FIG. 3
Amamiya’s Figure 3 shows a cam configuration 100 operable between (1)
not-Park range 120 and (2) Park range 124.
As shown in Amamiya’s Figure 3, cam 100 pivots between Park and
not-Park ranges 120 and 124, including a radial outer surface formed with
angularly spaced lobes 122, 200, and 210.
Amamiya’s Figure 5A is reproduced below.
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Application 13/751,265
F I G, 5 A
10
Amamiya’s Figure 5 A shows rotation direction F3 of cam 100 in a
counterclockwise direction from not-Park range 120 to Park range 124.
As shown in Amamiya’s Figure 5A, cam 100 is urged toward Park-
range 124 when rotation direction F3 of cam 100 is in a counterclockwise
direction activated by way rod 104 (shown in Figure 2) which corresponds
to Appellants’ claimed “park spring configured to only urge the cam toward
the Park-range” as recited in claim 1. Final Act. 2 (citing Amamiya, Fig.
5 A).
Appellants acknowledge Amamiya’s rod 104 corresponds to
Appellants’ claimed “park element” but contend that Amamiya’s rod 104
and spring “act to bias in both directions (see direction of F3 in figure 5A
versus F3 in figure 5B)” and, as such, is not “configured to only urge the
cam toward the Park-range” as recited in claim 1. App. Br. 7—8. In
particular, Appellants argue the Examiner “has ignored the word ‘only’ in
claim 1.” App. Br. 9; Reply Br. 2. Appellants contend,
[I]n Amamiya, the spring (104) urges the cam (100) in two
different, opposite directions, one of which is specifically away
from the Park-range, which is contrary to the claim language.
Thus, with this limitation of claim 1 missing from the cited art,
there is no anticipation.
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Application 13/751,265
Reply Br. 3.
We do not find Appellants’ arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants’
arguments supported by a preponderance of evidence. Ans. 8—9. As such,
we adopt the Examiner’s findings and explanations provided therein. Id. At
the outset, we note anticipation under § 102 involves two steps. We first
construe the claim, a question of law, and second we compare the construed
claim to the prior art, a question of fact. Key Pharms. v. Hereon Labs.
Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). Claims in patent applications are
given their broadest reasonable construction in light of the claims
themselves and the specification as it would be interpreted by one of
ordinary skill in the art. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005).
Appellants’ Specification describes cam 12, shown in Figure 1, as
pivoting about axis 16 between (1) Park range 22 and (2) not-Park range 28,
as reproduced below.
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Application 13/751,265
Fig,. 1
Appellants’ Specification discloses, “a source of power 30, such as an
electric motor or hydraulic pressure, applies alternately both clockwise and
counterclockwise torque to cam 12.” Spec. 3:9—10. In the context of a
torque applied in a counterclockwise direction, shown in Figure 1, park
spring 20 is described as applying the “torque to the cam 12 tending to rotate
the cam [12] counterclockwise (when viewed as in Fig. 1) toward the Park
range 22.” Spec. 2:30-31. However, cam 12 can also rotate clockwise to
exit the Park range 22 to the non-Park range 28. Spec. 3:29^4:4.
Based on Appellants’ Specification, the phrase “park spring
configured to only urge the cam toward the Park-range” (emphasis added)
can broadly and reasonably be interpreted to encompass Amamiya’s Figure
5A in which cam 100 is only urged toward Park-range 124 by rod 104 when
rotation direction F3 of cam 100 is in a counterclockwise direction. Final
Act. 2 (citing Amamiya, Fig. 5A). As correctly recognized by the Examiner,
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Application 13/751,265
“the claim does not establish a condition that the park spring has to only
urge the cam towards the Park-range at all times” and “Fig. 5A is sufficient
for establishing a condition where a park spring urges a cam towards the
Park-range at all times.” Ans. 8. The Examiner acknowledges, and we
agree, that the presence of a condition such as that in Figure 5B, in which a
force F3 urges the cam away from the Park-range does not undermine the
findings relating to the disclosure of Figure 5 A, including the park spring
configuration limitation. Id.
For the reasons set forth above, Appellants have not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s anticipation
rejection of independent claim l3 and its dependent claims 2—8, which
Appellants do not argue separately. App. Br. 9.
Independent claim 9
Claim 9 is similar to claim 1, except that the radial outer surface of the
cam is further defined as being “formed with [1] a first lobe always outside
of the Park range and spaced angularly from a boundary between the Park
and not-Park ranges and [2] a second lobe spaced from the first lobe.”
Appellants contend:
Amamiya, on the other hand, uses the crest (122) (see
figure 3) as part of the map-correcting process for the encoder
(46) of the motor (42) and thus, there are only two end travel
3 In the event of further prosecution, we invite the Examiner to consider
rejecting independent claim 1 and its dependent claims under 35 U.S.C.
§ 112, 1st paragraph, for lack of “enablement” and “written support” for the
term “only” recited in claim 1. The substitution of “configured to only urge”
for “urging” by Appellants in the Amendment filed on August 6, 2014 to
modify Appellants’ claimed “park spring” is not supported by Appellants’
Specification.
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Application 13/751,265
positions if the detent plate (100), one of which is the park
position (see col. 6, lines 13-52). Thus, this lobe of Amamiya is
at the boundary moving from a park range to a non-park range
depending upon which end of travel is being mapped (see figures
3, 5A and 5B). So contrary to the examiner’s contention, the lobe
upon which crest 122 is located in Amamiya cannot be the ‘first
lobe’ of claim 9 as it is at the boundary between the Park and
not-Park ranges, not ‘spaced angularly from a boundary between
the Park and not-Park ranges’ as is recited in claim 9 . . . and the
cam in Amamiya is different from the cam as claimed in claim
9. Accordingly, the examiner is in error.
App. Br. 9-10.
Appellants contend the “crest (122) is not part of a cam ‘including a
radial outer surface with a lobe always outside of the Park range and spaced
angularly from a boundary between the Park and not-Park ranges’
(emphasis added) as recited in claim 9.” Reply Br. 4.
We are not persuaded and adopt the Examiner’s responses on pages
10—11 of the Examiner’s Answer. For example, Amamiya’s Figure 3, as
reproduced below, shows (1) first lobe 122 that is outside of Park range 124,
and spaced angularly from a boundary between Park range 124 and not-Park
range 120; and (2) second lobe spaced apart from first lobe 122. Ans. 11
(citing Amamiya’s Fig. 3).
For these reasons, we sustain the Examiner’s anticipation rejection of
independent claim 9 and its dependent claims 10-14, which Appellants do
not argue separately. App. Br. 11.
Independent claim 15
Claim 15 is almost identical to claim 1, except that “a park spring” is
used to urge the cam toward the Park range “under all operating conditions.”
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Similar to claim 1, Appellants contend Amamiya’s spring 104 is used
to urge the cam (100) in two different, opposite directions, and as such, does
not “urge, under all operating conditions, the cam toward the Park-range” as
recited in claim 15. App. Br. 11—12.
Again, we are not persuaded for the same reasons discussed in
connection with claim 1. For these reasons, we sustain the Examiner’s
anticipation rejection of independent claim 154 and its dependent claims 16—
17, which Appellants do not argue separately. App. Br. 12.
Claim 19
Claim 19 depends from claim 15, and further recites “wherein a first
one of the spaced lobes is always outside of the Park range and spaced
angularly from a boundary between the Park and not-Park ranges, and the
roller rolls over a crest of the first one of the spaced lobes.”
Appellants iterate similar arguments presented against claim 9. We
disagree and adopt the Examiner’s responses on pages 14—15 of the
Examiner’s Answer.
4 In the event of further prosecution, we invite the Examiner to consider
rejecting independent claim 15 and its dependent claims under 35 U.S.C.
§ 112, 1st paragraph, for lack of “enablement” and “written support” for the
term “under all operating conditions” recited in claim 15. The conditional
phrase “under all operating conditions” that was added by Appellants in the
Amendment filed on August 6, 2014 to describe the use of Appellants’
claimed “park spring” is not supported by Appellants’ Specification.
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Application 13/751,265
§ 103(a) Rejection of Claims 6, 13, and 18 based on
Amamiya and Koski
Claims 6, 13, and 18 depend from independent claims 1, 9, and 15,
and further recite: “wherein the power source is hydraulic pressure.”
The Examiner further relies on Koski for teaching the use of hydraulic
pressure to replace electric power as a power source to support the
conclusion of obviousness. Final Act. 8 (citing Koski, Fig. 2).
Appellants reiterate the same arguments presented against
independent claims 1, 9, and 15, and additionally argue that “[i]f the electric
motor (42) of Amamiya is replaced with the hydraulics of Koski, then there
is no encoder that detects the position of the electric motor and hence no
need for the particular arrangement in Amamiya used for the mapping
correction of the encoder.” App. Br. 13.
We disagree. As correctly recognized by the Examiner, hydraulic
power and electrical power are well-known interchangeable power source
and require only routine skill in the art to implement. Ans. 16. For this
reason, we also sustain the Examiner’s obviousness rejection of claim 6, 13,
and 18.
CONCEUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1—19 under 35 U.S.C.
§ 102(b) and § 103(a).
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Application 13/751,265
DECISION
As such, we AFFIRM the Examiner’s final rejection of claims 1—19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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