AUDI AG

Patent Trials and Appeals Board

Sep 30, 2021

2021002054 (P.T.A.B. Sep. 30, 2021)

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.
15/485,971 04/12/2017 Mario SCHENKER 07780417US 9375
62008 7590 09/30/2021
MAIER & MAIER, PLLC
345 SOUTH PATRICK STREET
ALEXANDRIA, VA 22314
EXAMINER
DODD, RYAN P
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
09/30/2021 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@maierandmaier.com
maierandmaier_PAIR@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MARIO SCHENKER, RALF KISCHKAT,
WILHELMUS GIELES, and LIONEL DUMONT
____________________

Appeal 2021-002054
Application 15/485,971
Technology Center 3600
____________________

Before JENNIFER D. BAHR, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 6, and 7. Claims 3–5 are withdrawn. See
Amendment 3–4 (dated Sept. 12, 2019). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Audi AG. Appeal
Br. 2.
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THE CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to motor vehicles with a
transmission and transmission fluid pump. Spec. ¶ 3. Claims 1 and 6 are
independent. We reproduce claim 1 below.
1. A motor vehicle, comprising:
a transmission fluid pump for transport of transmission
oil to and within a transmission of the motor vehicle, said
transmission fluid pump having a moving element;
a planetary gear train having a summation shaft coupled
with the moving element, said planetary gear train having a first
driveshaft connected to an internal combustion engine of the
motor vehicle and a second driveshaft connected to an electric
motor of the motor vehicle, the electric motor comprising an
electric motor housing;
a freewheel mechanism, the freewheel mechanism
connected in a first connection on an inner circumference of the
freewheel mechanism, directly without intervening elements, to
the second driveshaft operated by the electric motor, and
connected in a second connection on a first side portion of the
freewheel mechanism, directly without intervening elements, to
the electric motor housing, said freewheel mechanism having a
second side portion facing a transmission housing and not
connected to the transmission housing.

A freewheel mechanism, sometimes called a one-way clutch, permits
rotation in one direction and prevents rotation in the other direction. See
Appeal Br. 13–14; Ans. 28.
EVIDENCE
We refer to the Specification filed April 12, 2017 (“Spec.”), the parent
application filed March 9, 2012 (“parent application”)2, the Final Office
Action mailed January 21, 2020 (“Final Act.”), the Appeal Brief filed June

2 Now issued as US 9,651,143.
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17, 2020 (“Appeal Br.”), the Examiner’s Answer mailed November 30,
2020 (“Ans.”), and the Reply Brief filed February 1, 2021 (“Reply Br.”).
The prior art relied upon by the Examiner is:
Name Reference Date
Stockton ’777 US 4,418,777 Dec. 6, 1983
Stockton ’400 US 5,418,400 May 23, 1995
Takenaka US 2002/0060099 A1 May 23, 2002
Supina US 2004/0176203 A1 Sept. 9, 2004
Asa US 2006/0019786 A1 Jan. 26, 2006
Abe US 2009/0247341 A1 Oct. 1, 2009
REJECTIONS3
I. Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
II. Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Takenaka and one of either Asa, Abe,
Stockton ’400, or Stockton ’777.
III. Claims 1, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Supina and one of either Asa, Abe, Stockton
’400, or Stockton ’777.
OPINION
Rejection I – Written Description
Before addressing the rejection, we note that sufficiency of the written
description and entitlement to an earlier filing date are distinct inquiries. As
explained by the Federal Circuit,
Although § 120 incorporates the requirements of § 112 ¶ 1,
these requirements and the statutory mechanism allowing the

3 The Examiner withdrew a rejection of claims 1 and 3–7 under 35 U.S.C.
§ 112, second paragraph. Ans. 2; Final Act. 11–14.
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benefit of an earlier filing date are separate provisions with
distinct consequences. In accordance with § 120, claims to
subject matter in a later-filed application not supported by an
ancestor application in terms of § 112 ¶ 1 are not invalidated;
they simply do not receive the benefit of the earlier
application’s filing date.
Reiffin v. Microsoft Corp., 214 F.3d 1342, 1346 (Fed. Cir. 2000).
Specifically, where, as here, an application is filed that is a divisional
of a prior filed copending application (parent), each claim may be entitled to
the priority date of the application, or the priority date of the parent
application. See Spec. ¶ 1. To be entitled to the filing date of the
application, each claim must satisfy the written description requirement of
35 U.S.C. § 112(a). This necessitates comparison of each claim to the
disclosure as filed. For a claim to be entitled to the earlier priority date, the
claim must have an adequate written description in the parent application.
See 35 U.S.C. §§ 112, 119, 120, 121. This necessitates comparison of each
claim to the parent application.
The Examiner rejected claims 1, 6, and 7 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Such a rejection
necessitates comparison of the claims to the application as filed, but the
rejection compared the claims at issue to the parent application. See
generally MPEP § 2163; see also Final Act. 7–11. Given that the rejection
does not analyze the claims with respect to the disclosure of the application
at hand, we cannot sustain the rejection.
We expressly make no determination whether claims 1, 6, and 7 are
entitled or not entitled to the earlier priority date, nor do we determine if
those claims have sufficient written description in the application at hand.
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Rejection II – Obviousness Based on Takenaka and one of
either Asa, Abe, Stockton ’400, or Stockton ’777
In rejecting claim 1, the Examiner finds that Takenaka discloses a
motor vehicle including a transmission fluid pump (oil pump 82) and a
planetary gear train (planetary gear set 6) including a first driveshaft (output
shaft 11) connected to an internal combustion engine and a second driveshaft
(output shaft 41) connected to an electric motor (generator 4). Final Act. 15.
The Examiner also finds that Takenaka discloses brake device 7, which the
Examiner considers analogous to a freewheel, but Takenaka does not
explicitly disclose a freewheel mechanism that is “connected, on one side of
the freewheel mechanism, directly without intervening elements, to the
second driveshaft, the second driveshaft being operated by the electric
motor, and connected, on another side of the freewheel mechanism, directly
without intervening elements, to the electric motor housing.” Id. However,
the Examiner finds that each of Asa, Abe, Stockton ’400, and Stockton ’777
teaches that it was known in the art to attach a freewheel mechanism to an
electric motor output. Id. at 15–16. The Examiner determines that it would
have been obvious to substitute a freewheel mechanism, as taught by Abe,
Asa, Stockton ’400, or Stockton ’777, for brake device 7 of Takenaka and
connect it to the electric motor housing as merely applying a known
technique to a piece of prior art ready for the improvement to yield
predictable results. Id. at 16.
Appellant argues that it would not have been obvious to modify
Takenaka to substitute a freewheel mechanism for brake device 7 as
proposed by the Examiner. Appeal Br. 16–21. In particular, Appellant
argues that a freewheel would not provide active control, which would
frustrate Takenaka’s intent to prevent driving losses. Id. at 19 (citing
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Takenaka ¶ 52); see also id. at 17 (explaining that a hydraulic circuit
selectively engages brake device 7 to prevent driving losses (citing
Takenaka ¶¶ 45, 49)). According to Appellant, Takenaka’s brake device 7
performs a function that cannot be replicated by a freewheel. Id. at 20. For
the reasons that follow, we agree with Appellant that a sustainable case of
obviousness has not been established.
Takenaka discloses a vehicle-mounted hybrid driving apparatus
including electric motor 2 and generator 4 coupled to internal combustion
engine 1 via planetary gear set 6. Takenaka ¶ 39. Generator 4 generates
power to charge a battery using the output of engine 1 according to the
battery state of charge and operating loads. Id., ¶ 44. When power
generation is not required, brake device 7 latches rotor shaft 41 of generator
4 to driving apparatus case 9 to prevent a driving loss due to rotation by
reaction torque. Id., ¶ 42. If the hybrid driving apparatus has a sufficient
battery state of charge, brake device 7 is engaged to mechanically stop
generator 4 and prevent unnecessary rotation. Id., ¶ 52. In other words,
Takenaka actively controls brake device 7 to stop rotation of generator 4 if
the battery has a sufficient state of charge. It logically follows that, if the
battery does not have a sufficient state of charge, brake device 7 is
disengaged to allow generator 4 to rotate and charge the battery.
The Examiner’s proposed modification of Takenaka involves
replacing brake device 7 with a freewheel (i.e., a one-way brake that allows
rotation in only one direction), as taught by any of Abe, Asa, Stockton ’400,
or Stockton ’777. See Final Act. 15–16. The Examiner takes the position
that “[s]electively applied brakes are readily substitutable for one-way
brakes, depending on the particular application and the needs of the
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rotational system (transmission).” Ans. 35. However, the Examiner does
not cogently explain how Takenaka’s need for actively controlling rotation
of generator 4 based on battery state of charge would be satisfied by
replacing brake device 7 with a freewheel. Indeed, the Examiner concedes
that substituting a freewheel (i.e., one-way clutch) for Takenaka’s brake
device 7 would prevent generator 4 from operating as intended. See id. at 36
(explaining that “the subst[itu]tion of a one-way clutch for the selectable
clutch will sacrifice some modes of operation, . . . perhaps at the expense of
an electric motor acting as a generator”).
Given this loss of function, we fail to see a sufficient reason based on
some rational underpinning that one of ordinary skill in the art would have
modified Takenaka as proposed by the Examiner. Accordingly, we do not
sustain the rejection of claim 1 as being unpatentable over Takenaka and one
of Asa, Abe, Stockton ’400, and Stockton ’777.
Independent claim 6 contains similar recitations as claim 1, and the
Examiner’s rejection of claim 6 relies on the same deficient reasoning for
the proposed combination of Takenaka and one of Asa, Abe, Stockton ’400,
and Stockton ’777 as in the rejection of claim 1. See Final Act. 16
(explaining that claim 6 is rejected based on the same analysis and mapping
as claim 1). For the same reasons as set forth above, we do not sustain the
rejection of claim 6, or its dependent claim 7, as being unpatentable over
Takenaka and one of Asa, Abe, Stockton ’400, and Stockton ’777.

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Rejection III – Obviousness Based on Supina and one of either
Asa, Abe, Stockton ’400, or Stockton ’777
This rejection of independent claim 1 is substantially similar in form
to Rejection II. As detailed below, our analysis here parallels that of
Rejection II.
The Examiner finds that Supina discloses a motor vehicle including,
in relevant part, generator brake 46, which the Examiner considers
analogous to a freewheel, but does not explicitly disclose a freewheel
mechanism connected directly without intervening elements to an electric
motor housing. Final Act. 17 (citing Supina, Fig. 1a). The Examiner relies
on Asa, Abe, Stockton ’400, or Stockton ’777 to cure this deficiency and
proposes modifying Supina to substitute a freewheel mechanism for
Supina’s generator brake 46 and connect it to an electric motor housing. Id.
at 18. The Examiner determines that such a modification would have been
obvious to one of ordinary skill in the art as merely applying a known
technique to a piece of prior art ready for the improvement to yield
predictable results. Id.
Supina discloses a hybrid-electric vehicle powertrain including engine
10 connected to transmission input shaft 12, which is connected to carrier 16
of planetary gear unit 18, and sun gear 20 connects to rotor 22 of electric
generator 24. Supina ¶ 31. Battery 37 is electrically coupled to electric
traction motor 36 and generator 24. Id., ¶ 32. Supina discloses that, when
operating in a highway cruise mode, generator brake 46 is applied to provide
a fully mechanical power flow via a geared connection between transmission
input shaft 12 (i.e., driven by engine 10) and differential-and-axle assembly
42. Id., ¶¶ 33–34. If the vehicle is launched from a standing start with
engine 10 off, a fully electrical power source can be provided (i.e., via
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electric traction motor 36). Id., ¶ 34. Rotation of generator 24 (i.e., by
disengaging generator brake 46) contributes electrical power to the system.
Id.
Appellant correctly observes that, “as with Takenaka’s device,
Supina’s generator brake [46] must be actively applied in order to establish
or disestablish a mechanical connection between the engine-driven shaft and
the differential-and-axle assembly.” Appeal Br. 23 (citing Supina ¶ 33).
Appellant asserts that “[i]t is not clear how a freewheel could accomplish
what the generator brake is accomplishing here.” Id. at 24. We agree with
Appellant. Here, the Examiner does not cogently explain, nor is it readily
apparent, how substituting a freewheel (i.e., one-way clutch) for Supina’s
generator brake 46 would provide active braking control to stop or allow
rotation of generator 24 under certain conditions, such as when operating in
a highway cruise mode. Instead, the Examiner appears to concede that a
freewheel (i.e. one-way clutch) would not provide the same functionality as
generator brake 46. See Ans. 37 (explaining that Supina’s “additional
function of using its electric motor as a generator may be sacrificed to
simplify the system, by substituting a one-way clutch for a selectively
applied clutch or vice versa”).
For the above reasons, we fail to see a sufficient reason based on some
rational underpinning why one of ordinary skill in the art would have
modified Supina as proposed by the Examiner. Accordingly, we do not
sustain the rejection of claim 1 as being unpatentable over Supina and one of
Asa, Abe, Stockton ’400, and Stockton ’777.
Independent claim 6 contains similar recitations as claim 1, and the
Examiner’s rejection of claim 6 relies on the same deficient reasoning for
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the proposed combination of Supina and one of Asa, Abe, Stockton ’400,
and Stockton ’777 as in Rejection III of claim 1. See Final Act. 18
(explaining that claim 6 is rejected based on the same analysis and mapping
as claim 1). For the same reasons as set forth above, we do not sustain the
rejection of claim 6, or its dependent claim 7, as being unpatentable over
Supina and one of Asa, Abe, Stockton ’400, and Stockton ’777.

CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 7 112 Written Description 1, 6, 7
1, 6, 7 103(a) Takenaka and one
of Asa, Abe,
Stockton ’400, and
Stockton ’777
1, 6, 7
1, 6, 7 103(a) Supina and one of
Asa, Abe, Stockton
’400, and Stockton
’777
1, 6, 7
Overall
Outcome
1, 6, 7
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).
REVERSED