Norman J. Bird

Patent Trials and Appeals BoardJan 3, 2020

15156568 - (D) (P.T.A.B. Jan. 3, 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. 15/156,568 05/17/2016 NORMAN J. BIRD 83651708 2569 28866 7590 01/03/2020 MACMILLAN, SOBANSKI & TODD, LLC - FORD ONE MARITIME PLAZA - FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604 EXAMINER FLUHART, STACEY A ART UNIT PAPER NUMBER 3655 NOTIFICATION DATE DELIVERY MODE 01/03/2020 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): MST@mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NORMAN J. BIRD ____________ Appeal 2018-008270 Application 15/156,568 Technology Center 3600 ____________ Before BENJAMIN D. M. WOOD, ANNETTE R. REIMERS, and JEREMY M. PLENZLER, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to reject under 35 U.S.C. § 103(a) claims 1–6 as unpatentable over Wittkopp (US 2008/0217131 A1, published Sept. 11, 2008), Pires (US 5,070,978, issued Dec. 10, 1991), and Swales (US 2011/0011694 A1, published Jan. 20, 2011). 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. Appellant identifies the real party in interest as “Ford Global Technologies LLC.” Appeal Brief (“Appeal Br.”) 1, filed Apr. 19, 2018. Appeal 2018-008270 Application 15/156,568 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates generally to a one-way clutch, particularly to a one-way clutch, whose states of engagement and disengagement are controlled electromagnetically by axially pivoting a locking element.” See Spec. ¶ 3, Fig. 12. Claims 1 and 6 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A clutch assembly, comprising: a first clutch including a first cam plate, a first pocket plate and axially pivoting first struts that drivably connect the first plates for rotation in a first rotary direction, and disconnect the first plates when the first cam plate rotates in a second direction relative to the first pocket plate; a second clutch including a second cam plate, a second pocket plate, a coil and axially pivoting second struts that drivably connect the second cam plate and the second pocket plate for rotation in the second direction and disconnect the second cam plate and the second pocket plate when the coil is energized and the second cam plate rotates in the first direction relative to the second pocket plate. ANALYSIS Appellant does not offer arguments in favor of independent claim 6 or dependent claims 2–5 separate from those presented for independent claim 1. See Appeal Br. 6–9. We select claim 1 as the representative claim, and claims 2–6 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Appellant contends that the Examiner’s proposed redesign of Wittkopp’s clutch in view of Pires changes Wittkopp’s “operation (inner and outer races of the two clutches being rotationally fixed as shown in [Figure 2 of Wittkopp] changes due to required change in inner/outer races) while also Appeal 2018-008270 Application 15/156,568 3 increasing the axial dimension of [Witkopp’s] . . . clutch assembly 100.” Appeal Br. 7–8; see also Reply Br. 4–5.2 According to Appellant, the Examiner’s modification of Wittkopp in view of Pires, i.e., “to change Wittkopp to axially pivoting struts” would “force Wittkopp to have first and second races 12, 30 that are radially the same distance from the rotational axis (not one radially nested in the other)” that “only engag[e] axially in order to allow for engagement of the rockers with cams” such that “first race 12 in Wittkopp has to have a much greater outer diameter” and/or “second race 30 has to have a much smaller inner diameter, with the two no longer completely axially aligning to allow for the assembly 100 of two clutches 10, 50 as shown in fig. 2 of Wittkopp.” Appeal Br. 7–8; see also Reply Br. 4–5. In the Answer, the Examiner notes that “Appellant does not contest the Examiner’s stated advantages for why it would have been obvious to have switched the direction/type of one way clutch in Wittkopp. Instead, Appellant describes the advantages of having radial clutches over axial clutches, disregarding the advantages of having axial clutches over radial clutches.” Ans. 4 (emphasis omitted); see also Final Act. 2–3, 8.3 The Examiner also notes that “[t]here are advantages and disadvantages to both types of clutches and either choice is an obvious and preferable choice depending on the intended use of the device.” Ans. 4. Indeed, in the Final Office Action, the Examiner explains that “Pires discloses how and why one would substitute from radially pivotable struts to axially pivotable struts, and 2 Reply Brief (“Reply Br.”), filed July 30, 2018. 3 Final Office Action (“Final Act.”), dated July 19, 2017; Examiner’s Answer (“Ans.”), dated May 29, 2018. Appeal 2018-008270 Application 15/156,568 4 this substitution naturally occurs with changes in dimensions and relative positions of the numerous components.” Final Act. 8. The Examiner further explains that “these minor changes are well within the purview of one having ordinary skill in the art and do not amount to a complete redesign” and “[i]n fact, despite these changes in dimensions or design, Pires discloses this substitution to be advantageous in order to (since the attack angle of the pawls may be reduced relative to a radial clutch) provide a higher speed clutch (see Pires, column 3, line 32 to column 4, line 7).” Final Act. 8; see also Final Act. 3. Appellant does not apprise us of Examiner error. See generally Appeal Br. and Reply Br.; see also Ans. 3–4. In addition, the Examiner takes the position that Appellant’s discussion about “the physical locations of different elements in a radial arrangement as in Wittkopp, such as that two clutches [are] axial adjacent and the selector ring is radially between the races”: (1) “only works for lower speeds and thus if higher speed clutches were required based on the intended use, the axial type clutches must be used”; (2) that “if the radial dimensions of the device were critical, axial type clutches would be preferable;” and (3) that “with the axially pivoting clutch, the selector ring would still be between the two races, albeit axially between the two races[,] which assists in reducing the radial dimension at the expense of the axial dimension.” Ans. 4. Appellant does not apprise us of Examiner error. See generally Reply Br. As to Appellant’s contention that when switching from a radial type clutch to an axial type clutch, “the outer race of the radial type clutch becomes smaller and the inner race of the axial type [clutch] becomes larger such that the inner races can no longer be fixed to one another and the outer Appeal 2018-008270 Application 15/156,568 5 races can no longer be fixed to one another as in Wittkopp” (Ans. 4; see also Appeal Br. 7–8; Reply Br. 4–5), the Examiner notes that “the claims do not specify a particular relationship between the first races of the two clutches, e.g., the cam plates, and the second races of the two clutches, e.g., the pocket plates” and “switching the clutches to an axial type clutch does not eliminate the ability to fix the respective races to one another.” Ans. 4. Appellant does not apprise us of Examiner error. See generally Reply Br. The Examiner also takes the position that “the two axial type clutches may be radially adjacent one another, both formed on an integral cam plate with an adjacent integral pocket plate” or “[a]lternatively, the two axial clutches may be respectively on each half of a single integral cam plate and single integral pocket plate” and that “[t]hese arrangements are well within the knowledge of one having ordinary skill in the art.” Ans. 5. Appellant does not apprise us of Examiner error. See generally Reply Br. Appellant contends that the Examiner’s proposed “redesign appears to interfere with the operation of the selector ring 54 [of Wittkopp], which is configured to be radially sandwiched between the outer race 30 the rockers 20 mounted in the radially inner race 12.” Appeal Br. 8; see also Reply Br. 5. According to Appellant, because neither Wittkopp nor Pires “teaches or suggests a selector ring for selectively engaging axially pivoting struts,” the Examiner’s combination of these references “eliminates the selector ring– unless a newly designed selector ring is added to the assembly” and the Examiner’s “impermissible hindsight reconstruction . . . requires designing a whole new selector ring to attempt to operate the clutch assembly as desired in Wittkopp.” Appeal Br. 8; see also Reply Br. 5 (Appellant contends that a “newly designed selector ring is added to . . . [Wittkopp’s] assembly.”). Appeal 2018-008270 Application 15/156,568 6 In the Answer, the Examiner clarifies that “with the axially pivoting clutch, the selector ring would still be between the two races, albeit axially between the two races[,] which assists in reducing the radial dimension at the expense of the axial dimension.” Ans. 4. In addition, the Examiner takes the position that “incorporation of a selector ring in an axial clutch is well within the ability of one having ordinary skill in the art. The selector plate in an axial clutch is between the cam and pocket plate axially and functions identically to a selector plate in a radial clutch.” Ans. 5. Appellant does not apprise us of Examiner error. See generally Reply Br. In response to Appellant’s hindsight argument, the Examiner states, “there are only two possible orientations for a cam and strut one-way clutch, namely axial and radial,” “the fact that there are physical differences between a radial and axial clutch does not mean switching between types amounts to a redesign outside of the level of ordinary skill in the art” and “this type of switch between two well-known types of one way clutches is certainly within the knowledge of those having ordinary skill in the art and can be easily achieved.” Ans. 5–6. The Examiner also correctly points out that the reasoning used by the Examiner for “the proposed modification[] of [Wittkopp in view of Pires] . . . was not taken from [Appellant’s Specification].” Ans. 5; see also Final Act. 3, 8 (both citing Pires 3:32–4:7). In this case, we are not persuaded of Examiner error, because Appellant has not made a showing that the Examiner’s rationale was outside of the knowledge within the level of ordinary skill in the art at the time the claimed invention was made or was gleaned only from Appellant’s disclosure. Appeal 2018-008270 Application 15/156,568 7 Appellant contends that “coils 28, 30 in Swales only operate for axially adjacent plates” and that the Examiner’s proposed modification of Wittkopp and Pires with Swales “creates a combination that takes a simple mechanical mechanism (selector ring 54 of Wittkopp) for selectively activating/deactivating the rockers 20, and completely redesign[s] the races to be axially adjacent rather that axially aligned,” so as to “add the more involved coil assembly (20, 24, 26, 28, 30) (see Swales figs. 1 and 6) to actuate struts at an axial face of one of the clutch plates (of Wittkopp [as] modified by Pires).” Appeal Br. 8–9; see also Reply Br. 6. In response to Appellant’s contention, the Examiner clarifies that “with the axially pivoting clutch, the selector ring [of Wittkopp] would still be between the two races, albeit axially between the two races[,] which assists in reducing the radial dimension at the expense of the axial dimension.” Ans. 4. As such, the Examiner takes the position “Appellant improperly concludes that switching the clutches in Wittkopp to be axial clutches will necessarily prohibit the use of a selector ring . . . , and further improperly concludes that the coil in Swales will only operate for axially adjacent plates.” Id. at 6–7. The Examiner also takes the position “[i]t is unclear why Appellant believes that electromagnetic actuators cannot be used in radial clutches. In fact, in viewing [Figure] 6 of Swales alone without further disclosure, the clutch in [Figure] 6 could equally be axial or radial.” Id. at 7; see also Final Act. 9 (The Examiner states that “the selector ring [of Wittkopp] itself requires an actuator to move the ring. Thus, it is unclear how providing a coil to actuate the struts would be any more complicated.”). Appellant does not apprise us of Examiner error. See generally Reply Br. Appeal 2018-008270 Application 15/156,568 8 The Examiner also correctly points out that Appellant does not challenge the Examiner’s stated reasoning for modifying Wittkopp and Pires with Swales. Ans. 6; see also Final Act. 9. The Examiner explains that “[i]n Wittkopp, actuation is performed by a selector ring which is movable by an outside actuator that is not shown; these outside actuators may be solenoids, hydraulic, electromagnetic, etc.” and that “it would have been obvious to substitute another well-known actuation method for that of Wittkopp, and in particular to have substituted independent actuators for the two sets of struts that each include a coil, an electromagnet, and springs,” as taught by Swales. Ans. 6; see also Final Act. 3–4. The Examiner further explains that “[t]he reason for the proposed modification [to each of the two clutches (10, 50) in Wittkopp is] . . . to be able to selectively control each one-way clutch [thus] allowing for a wider range of uses for the double one-way clutch of Wittkopp.” Ans. 6; see also Final Act. 3–4, 9 (The Examiner states that the proposed modification of Wittkopp and Pires with Swales “would be beneficial since [it] would allow each clutch to be independently controlled allowing for many more combinations of functions and many more uses for the double clutch of Wittkopp.”). Appellant does not apprise us of Examiner error. See generally Appeal Br. and Reply Br.; see also Ans. 6. In summary, and based on the record presented, we are not persuaded the Examiner erred in rejecting independent claim 1 as unpatentable over Wittkopp, Pires, and Swales. Accordingly, we sustain the Examiner’s rejection of claim 1. We further sustain the rejection of claims 2–6, which fall with claim 1. Appeal 2018-008270 Application 15/156,568 9 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6 103(a) Wittkopp, Pires, and Swales 1–6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED