GKN Driveline Japan Ltd

Patent Trials and Appeals BoardDec 31, 2020

2020003682 (P.T.A.B. Dec. 31, 2020)

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. 15/281,662 09/30/2016 Kohji Iizuka 66974-0012 6375 119907 7590 12/31/2020 Bejin Bieneman PLC GKN Driveline 2000 Town Center Suite 800 Southfield, MI 48075 EXAMINER JOYCE, WILLIAM C ART UNIT PAPER NUMBER 3658 NOTIFICATION DATE DELIVERY MODE 12/31/2020 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): docket@b2iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KOHJI IIZUKA and SATOSHI NIIMURA ____________ Appeal 2020-003682 Application 15/281,662 Technology Center 3600 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 7, 8, and 10–12 under 35 U.S.C. § 102(a)(1) as anticipated by Hoffmann (US 8,215,440 B2, iss. July 10, 2012) and claim 9 as unpatentable under 35 U.S.C. § 103 over Hoffman and Falzoni (EP 0,273,878 A1, pub. July 6, 1988). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies GKN Driveline Japan Ltd. as the applicant and real party in interest. Appeal Br. 3. Appeal 2020-003682 Application 15/281,662 2 THE INVENTION Appellant’s invention relates to automobile drive trains. Spec. ¶ 5. Claims 7 and 9, reproduced below, are representative of the subject matter on appeal. 7. A power transfer unit for extracting torque from a transmission of an automobile, comprising: a casing having a first side having a coupling portion combinable with the transmission, and a second side opposed to the first side; a first shaft rotatably supported by a first bearing sitting on the first side of the casing and a second bearing sitting on the second side of the casing, the first shaft penetrating the casing from the coupling portion to the second side, and combining with the transmission to receive the torque, the first shaft fitting directly in both the first bearing and the second bearing; a first gear fixed to the first shaft; a second shaft rotatably supported by a third bearing sitting on the first side of the casing and a fourth bearing sitting on the second side of the casing, and gearing with the first gear of the first shaft to rotate in parallel with the first shaft, the second shaft comprising a bevel gear; and a third shaft rotatably supported by the casing and extending in a direction distinct from the first shaft and the second shaft, the third shaft comprising an internal end including a pinion gear in mesh with the bevel gear and an external end led out of the casing; wherein the first bearing is disposed closer in a lateral direction to the coupling portion than the bevel gear and the pinion gear are. 9. The power transfer unit of claim 7, wherein the bevel gear fits in, and is supported by, the third bearing. Appeal 2020-003682 Application 15/281,662 3 OPINION Anticipation of Claims 7, 8, and 10–12 by Hoffman The Examiner finds that Hoffman discloses each limitation of the captioned claims. Final Act. 2–3. Appellant’s brief states “Appellant now appeals the rejection of dependent claim 9.” Appeal Br. 4. Appellant does not otherwise appear to challenge the rejection of claims 7, 8, and 10–12. See generally Appeal Br. An appeal is presumed to be taken from the rejection of all claims under rejection unless claims are cancelled by an amendment filed by the applicant and entered by the Office. 37 C.F.R. § 41.31(c). As Appellant does not argue for the patentability of claims 7, 8, and 10–12, we deem Appellant to acquiesce in the rejection and, therefore, summarily sustain the Examiner’s rejection of these claims. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims constitutes a waiver of arguments for separate patentability). Unpatentability of Claim 9 over Hoffman and Falzoni The Examiner finds that Hoffman discloses the invention substantially as claimed except for a beveled gear configured to fit in and be supported by a third bearing, for which the Examiner relies on Falzoni. Final Act. 4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to configure Hoffman’s bevel gear to fit in and be supported by a third bearing as taught by Falzoni. Id. According to the Examiner, a person of ordinary skill in the art would have done this to reduce the number of components of the gear device. Id. Appeal 2020-003682 Application 15/281,662 4 In traverse, Appellant does not challenge the Examiner’s findings of fact with respect to what is disclosed in the prior art. Appeal Br. 5–8. In particular, Appellant does not dispute that Falzoni discloses a bevel gear that fits in, and is supported by, a third bearing. Id. Instead, Appellant argues that a person of ordinary skill in the art would not have modified Hoffman by the teachings of Falzoni. Id. at 6. Appellant argues that combining the references as proposed would not have resulted in a reduction of parts. Id. [T]here is no evidence that one of ordinary skill would have thought that combining Hoffman and Falzoni would have achieved the benefit of reducing a number of components. In fact, examination of the references, as explained above, shows that one of ordinary skill would have understood that combining Hoffman and Falzoni would have resulted in a same number of components, and thus could not have achieved this alleged benefit. Id. at 7. In response, the Examiner states that a person of ordinary skill in the art would have recognized the benefit of reducing the number of components of the gearing device that directly support the bevel gear. Ans. 6. According to the Examiner, such a configuration would prevent unwanted gear runout and would reduce the radial force subjected to the shaft due to the meshing contact of the bevel gear teeth. Id. The Examiner further finds that Falzoni’s bearing does not necessarily require an outer race or an inner race. Id. The Examiner reiterates that a person of ordinary skill in the art would have made the proposed combination to reduce the number of components. Id. In reply, Appellant accuses the Examiner of looking to Appellant’s own Specification to find a motivation to modify the prior art. Reply Br. 3. Appellant argues that such constitutes improper hindsight reasoning. Id. Appeal 2020-003682 Application 15/281,662 5 Appellant’s hindsight argument based on the teachings of its own Specification is not persuasive. It is well settled that one of the ways in which a patent application’s subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent’s claims. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007). Thus, under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. Id. at 420. The mere prospect that Appellant’s Specification addresses, and purportedly solves, a problem that is otherwise solved by the combined teachings of the prior art does not necessarily establish that Appellant’s solution is a patentable one. Where, as here, the Examiner states a sufficient non-hindsight reason to combine the references (i.e., prevent unwanted gear runout) we are not convinced by Appellant’s hindsight argument. See In re Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (explaining that a hindsight argument is of no moment where the Examiner provides a sufficient, non-hindsight reason to combine the references). The Supreme Court guidance handed down in KSR militates in favor of sustaining the Examiner’s rejection. For example, when a patent “simply arranges old elements with each performing the same function it had been known to perform” and yields no more than one would expect from such an arrangement, the combination is obvious. KSR at 417, quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976). Furthermore, design incentives and other market forces can prompt variations of the prior art and, if a person of ordinary skill can implement a predictable variation, section 103 likely bars Appeal 2020-003682 Application 15/281,662 6 its patentability. Id. at 417. Similarly, if a technique (fitting a bevel gear into a bearing) has been used to improve one device (Falzoni), and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Id. at 417. Here, Appellant presents neither evidence nor persuasive technical reasoning that fitting a bevel gear into a bearing requires more than ordinary skill or produces unexpected results. The Examiner’s findings of fact are supported by a preponderance of the evidence and the Examiner’s legal conclusion of unpatentability is well- founded. In view thereof, we sustain the Examiner’s unpatentability rejection of claim 9 over Hoffman and Falzoni. CONCLUSION Claims Rejected § References Affirmed Reversed 7, 8, 10-12 102 Hoffman 7, 8, 10-12 9 103 Hoffman, Falzoni 9 Overall Outcome 7-12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED