Ex Parte 7,223,074 et al

Patent Trial and Appeal Board

Jun 30, 2015

95001764 (P.T.A.B. Jun. 30, 2015)

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.
95/001,764 09/15/2011 7,223,074 1636-00667 6440
68769 7590 06/30/2015
HOUSTON OFFICE OF
NOVAK DRUCE AND QUIGG LLP
1000 LOUISIANA STREET
FIFTY-THIRD FLOOR
HOUSTON, TX 77002
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/30/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

BRUNSWICK CORPORATION
Requester, Cross-Appellant, Respondent

v.

AB VOLVO PENTA
1

Patent Owner, Appellant, Respondent
____________________

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2

Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge

DECISION ON APPEAL

1
AB Volvo Penta is the Patent Owner and the real party in interest (Appeal
Brief of Patent Owner (hereinafter "ABPO") 2).
2
Patent US 7,223,074 B2 (hereinafter "the ’074 patent") issued May 29,
2007 to Rydberg et al.
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STATEMENT OF THE CASE
Claims 1–12 are subject to reexamination and stand rejected (RAN
3

PTOL-2066). The Patent Owner appeals under 35 U.S.C. §§ 134 and 315
from the Examiner's rejections with respect to all of the rejected claims
(ABPO 1). The Requester cross-appeals under 35 U.S.C. §§ 134 and 315
from the Examiner's withdrawal of certain previously adopted rejections
(CABR 5). We have jurisdiction under 35 U.S.C. §§ 134 and 315.
In addition to its Appeal Brief, the Patent Owner relies on its Rebuttal
Brief in support of its appeal, and submits a Respondent Brief in opposition
to the Requester's cross-appeal. The Patent Owner also relies on a
declaration from Mr. John F. Koopman. The Requester relies on its Cross-
Appeal Brief and Rebuttal Brief in support of its cross-appeal, and submits a
Respondent Brief in opposition to the Patent Owner's appeal. The Requester
further relies on declarations from Mr. Charles A. Garris, Jr. An oral
hearing with the representatives of the parties was held before the Patent
Trial and Appeal Board on May 15, 2014, a transcript of which was entered
into the record on June 3, 2015.

3
We refer to specific portions of the record, citing the documents therein as
follows:
1. Right of Appeal Notice = RAN
2. Appeal Brief of Patent Owner = ABPO
3. Rebuttal Brief of Patent Owner = Reb. Br. PO
4. Respondent Brief of Patent Owner = Res. Br. PO
5. Cross-Appeal Brief of Requester = CABR
6. Rebuttal Brief of Requester = Reb. Br. R
7. Respondent Brief of Requester = Res. Br. R
The Examiner's Answer incorporates the RAN by reference.
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Only the documents of record in this appeal and cross-appeal, and
those arguments made in the briefs of record have been considered. Other
references not of record have not been considered.
4
Any arguments not
made or those not properly presented to the Board have not been considered
and are deemed to be waived. See 37 C.F.R. § 41.67(c)(1)(vii).
We AFFIRM-IN-PART in that we REVERSE with respect to the
Appeal of the Patent Owner, and AFFIRM with respect to the Cross-Appeal
of the Requester.

THE INVENTION
The claimed invention is directed to a propeller shaft arrangement
having a splined connection wherein the splines are helical (Title; Abstract).
The Specification of the ’074 patent explains that the invention adapts the
oblique angle so that the resultant force is taken up in a direction
substantially at right angles to the splines and "the dimensions of the axial
limit stops, namely the flange and the end nut, can be made smaller, and that
the propeller shaft can have the optimum strength." (Specification, col. 2, ll.
36–43). Representative independent claim 1, as amended during the course
of the present reexamination, reads as follows (Ans., Claims App., emphasis
added):

4
RAN indicates that additional claim amendments, declaration evidence,
prior art references, proposed rejections and remarks, were submitted
subsequent to the Action Closing Prosecution dated April 6, 2012, but were
denied entry into the present reexamination record (RAN 5–7).
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1. A propeller shaft arrangement comprising:
a pair of counter rotating boat propeller shafts
(15,16) adapted to be connected in a propeller system to
an output shaft (11) of a drive motor (2) and by
rotationally fixed helical spline connections to respective
propellers (7,8) of a pair of counter rotating boat
propellers (7,8), the drive motor outputting known drive-
motor induced torque at cruising speed to each of the
pair of propeller shafts (15,16) and thereby causing
known driving compressive forces (FR) on the respective
propeller shafts (15,16) by the propellers (7,8) for
causing propulsion of a carrying boat in a travel
direction;
the pair of counter rotating boat propeller shafts
(15,16) having a common longitudinal axis, each of said
propeller shafts (15,16) having a known radius and at
least one spline (19,20) positioned thereupon and
oriented at a predetermined oblique angle (α, β) with
respect to the longitudinal axis, wherein said at least one
spline (19,20) on each of said propeller shafts (15,16) is
oriented at a different predetermined oblique angle (α, β)
with respect to the longitudinal axis of said propeller
shafts (15,16); and
each of said predetermined oblique angles (α, β) on
respective counter rotating boat shafts (15,16) of known
radius is oriented with respect to the longitudinal axis of
said propeller shafts (15,16) such that the force acting on
the spline (19,20) is a resultant force (FS) between a
tangential force component (FT) of the known drive-
motor-induced torque and the corresponding known
driving compressive force (FR) and the resultant force
(FS) is oriented at a substantially right angle to the
respective receiving spline (19,20).

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PRINCIPLES OF LAW
Claims are in compliance with 35 U.S.C. § 112, second paragraph, if
"the claims, read in light of the specification, reasonably apprise those
skilled in the art both of the utilization and scope of the invention, and if the
language is as precise as the subject matter permits." Hybritech, Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385 (Fed. Cir. 1986)); see
also Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986) (claim limitation allowing for various sizes definite because
it was accurate as the subject matter permitted and one of ordinary skill
could determine the appropriate dimensions).
The Supreme Court has held that "a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art." KSR Int’l v. Teleflex,
Inc., 550 U.S. 398, 418 (2007). "Although common sense directs one to
look with care at a patent application that claims . . . the combination of two
known devices according to their established functions, it can be important
to identify a reason that would have prompted a person of ordinary skill . . .
to combine the elements in the way the claimed new invention does." Id.
The Court also noted that "[t]o facilitate review, this analysis should be
made explicit." KSR, 550 U.S. at 418, (citing In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness")). The Court further stated that the "factfinder should be
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aware . . . of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning." Id. at 421.

APPEAL OF THE PATENT OWNER
A. Examiner's Rejections
5

Claims 1–12 under 35 U.S.C. § 112, second paragraph, as being
indefinite (RAN 7–8).
5. Claims 1–12 under 35 U.S.C. § 103(a) as being obvious based
on the combination of Pichl,
6
Snell,
7
Shigley
8
and Jordan
9
(RAN 9).
6. Claims 1, 4, 7 and 10–12 under 35 U.S.C. § 103(a) as being
obvious based on the combination of Pichl, Snell, Timken
10
and Jordan
(RAN 10).
9. Claims 1–12 under 35 U.S.C. § 103(a) as being obvious based
on the combination of Pichl, Snell, Shigley and Admitted Prior Art
11
(RAN
10–11).

5
For clarity, we utilize the numbering of the Grounds of Rejection as
proposed by the Requester in its Request for Inter Partes Reexamination
(hereinafter "Request"), which is used by the Examiner in the RAN with the
rejections being further modified. The indefiniteness rejection was entered
by the Examiner, and thus, lacks a corresponding number.
6
Pichl, U.S. 4,498,874, Feb. 12, 1985.
7
Snell, U.S. 4,292,001, Sep. 29, 1981.
8
Joseph E. Shigley, MECHANICAL ENGINEERING DESIGN, Third Edition
(1963).
9
Jordan, U.S. 6,053,782, Apr. 25, 2000.
10
The Timken Company, BEARING SELECTION HANDBOOK REVISED
(1986).
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10. Claims 1, 4, 7, 10 and 11 under 35 U.S.C. § 103(a) as being
obvious based on the combination of Pichl, Snell, Timken and APA (RAN
11).
13. Claims 1–6, 10 11 and 12 under 35 U.S.C. § 103(a) as being
obvious based on the combination of Staerzl,
12
Snell and Shigley (RAN 11–
12).
14. Claims 1, 4, 10 and 11 under 35 U.S.C. § 103(a) as being
obvious based on the combination of Staerzl, Snell and Timken (RAN 12).

B. Analysis
Level of Ordinary Skill in the Art
One of ordinary skill in the art has been asserted to be as follows:
[A] person of ordinary skill in the art of propeller system design
would have a bachelor's degree in mechanical or marine
engineering and at least two years of experience in the marine
propulsion industry.
(First Decl. of Garris ¶ 11).

11
Specification of the ’074 patent acknowledges that counter rotating boat
propeller shafts having counter rotating propellers were known in the art by
stating:
This is particularly problematic in what are known as twin-
screw arrangements, that is to say two propellers rotating
counter to one another on the same longitudinal geometric axis,
where one propeller is connected to a propeller shaft extending
through a bore in the second propeller's propeller shaft, and
where a large number of components therefore have to be
accommodated within a very limited space.
(Specification, col. 2, ll. 8–15; hereinafter "APA").

12
Staerzl, U.S. 5,791,951, Aug. 11, 1998.
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The Patent Owner does not contest the level of one of ordinary skill
asserted by the Requester's declarant. Thus, we accept the level of skill
asserted, further finding that the skill level of such a person is sufficiently
high to understand and practice the teachings of the prior art of record. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art of
record can be considered representative of the level of ordinary skill in the
art).

Rejection Under 35 U.S.C. § 112, Second Paragraph
The Examiner rejects claims 1–12 as being indefinite for various
terms recited in independent claim 1 and dependent claim 11 (RAN 7–8).
As to claim 1, the Examiner finds that the recited "cruising speed" is
indefinite because this term is undefined and a boat can cruise at many
different speeds; "counter rotating boat shafts (15,16)" is indefinite because
it is not clear whether this term is referring to "counter rotating boat
propeller shafts (15,16)" or "output shaft" in the claim, or some other shaft;
and "the force" is indefinite because it is unclear whether this term is
referring to this a total force or some other force (id.). The Requester agrees
with the positions of the Examiner and further argues that this claim is
indefinite because there are numerous terms that have indeterminate scope
such as including "drive motor, cruising speed, known drive-motor-induced
torque, and known driving compressive forces," the actual values of which
are not defined in the claims (Resp. Br. R 2–3).
We agree with the Patent Owner that claim 1 complies with the
requirements of 35 U.S.C. § 112, second paragraph for the reasons set forth
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in its Appeal Brief (ABPO 18–24). The record indicates that "cruising
speed" is a term of art that would have been understood by a person of
ordinary skill as evidenced by the Request for Reexamination (see Request
29), and the statements of Requester's declarant Mr. Garris (see First Decl.
of Garris ¶ 25).
As to the term "counter rotating boat shafts (15,16)," it is clear that
there exists a typographical error in that the word "propeller" has been
omitted. There is only one pair of "counter rotating" shafts recited in the
claim and the Specification, and the parenthetical numerals "(15,16)" makes
it clear that the shafts being referred to are the "counter rotating boat
propeller shafts (15,16)" previously recited in the claim (see also ABPO 17–
19). We also agree with the Patent Owner that the term "the force" in claim
1 does not render the claim indefinite (id. at 19–21). We observe that this
force is actually defined in the claim itself which states "the force acting on
the spline (19,20) is a resultant force (FS) between a tangential force
component (FT) of the known drive-motor-induced torque and the
corresponding known driving compressive force (FR)." We also observe that
absence of explicit antecedent basis does not necessarily render the claim
indefinite. Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001);
Energizer Holdings Inc. v. United States ITC, 435 F.3d 1366, 1370–71 (Fed.
Cir. 2006).
As to the Requester's assertion that claim 1 is indefinite because the
actual values of various limitations are not defined (Resp. Br. R 2–3), the
question is not whether such limitations are explicitly defined, but instead,
whether such limitations would have been understood by one of ordinary
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skill in the art as defined above. Although the various limitations in claim 1
are specific to a particular motor or application, we are not persuaded that
such terms that allow for variability based on the model of the motor and/or
application render the claim indefinite to a person of ordinary skill in the art
of propeller system design having a bachelor's degree in mechanical or
marine engineering and at least two years of experience in the marine
propulsion industry. Hybritech, 802 F.2d at 1385; Orthokinetics, 806 F.2d at
1576; In re Moore, 58 C.C.P.A. 1042, 439 F.2d 1232, 1235 (CCPA 1971)
("[T]he definiteness of the language employed must be analyzed––not in a
vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.").
With respect to dependent claim 11, while the Examiner finds that the
term "oblique angle (α)" is indefinite because the parenthetical is deemed to
not have a limiting effect, we observe that the MPEP, while giving an
indication of "the presumptions under which the PTO operates," does not
have the force of law. Critikon, Inc. v. Becton Dickinson Vascular Access,
Inc., 120 F.3d 1253, 1257 (Fed. Cir. 1997). That said, the use of the
parenthetical "(α)" to precisely identify the antecedent basis for the term
"oblique angle (α)" is consistent with MPEP § 608.01(m). For example, the
parenthetical has no effect on the scope of claim 1 in the sense of importing
characteristics of any disclosed embodiment into the claim. In the context of
claim 1, we agree with the Patent Owner (ABPO 21–23) that dependent
claim 11 adequately apprises one of ordinary skill in the art the scope of the
claimed invention.
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In view of the above, we reverse the Examiner's rejection of claims 1–
12 under 35 U.S.C. § 112, second paragraph.

Prior Art Rejections
The Examiner's rejections rely on either Pichl or Staerzl as a primary
reference. In rejecting the claims based on Pichl, the Examiner incorporates
by reference, pages 25–31,
13
38–44 and 50–62 of the Request, and
Appendices A-1, A-2, A-5, A-6, A-9 and A-10 (RAN 9–11). Pichl discloses
a boat propeller device with inner and outer propeller shafts, but utilizes
straight splines (see Pichl, Abst.; col. 2, ll. 15–26; Fig. 14–17). The
Examiner also finds that Pichl does not teach counter-rotation of the shafts
(RAN 12), and thus, relies on tertiary evidence such as Jordan or APA for
this limitation (id. at 9, 11).
As to the limitations requiring at least one spline oriented at an
oblique angle, the Examiner relies on Snell, which discloses a shaft coupling
9 with helical splines 12, 13 and axially-extending pins 14 that allow for
locking the hub against axial movement (see Snell, Abst.; col. 2, ll. 12–40;
Figs. 2 and 3). In incorporating by reference the noted portions of the
Request, it is the position of the Examiner (and the Requester) that:

13
Pages 25–29 of the Request and Appendix A-1 pertain to the withdrawn
Ground of Rejection 1. However, the Examiner states that pages 25–29 of
the Request and Appendix A-1 are further adopted for rejection of claims 1–
9 and 12 under Ground of Rejection 5 (RAN 9-10). Similarly, pages 30–31
of the Request and Appendix A-2 pertain to withdrawn Ground of Rejection
2. However, the Examiner states that pages 30–31 of the Request and
Appendix A-2 are further adopted for rejection of claims 1, 4, 7 and 12
under Ground of Rejection 6 (id. at 10).
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Based on the combined teachings of Snell, Pichl and Jordan, in
a counter-rotating propeller shaft arrangement with multiple
propeller shafts and splined connections as taught by Pichl, it
would have been obvious to a person of ordinary skill in the art
to utilize at least one spline positioned on each propeller shaft
oriented at an oblique angle with respect to the longitudinal axis
as taught by Snell. See Claim Chart A5; see also Declaration of
Charles A. Garris, Jr. (Garris Decl.).
(Request 39; see also Appendix A-5, pg. 1).
The other portions of the Request and Appendices incorporated by
reference for the rejections based on Pichl set forth nearly identical
positions. Declaration of Garris referenced (i.e., First Decl. of Garris) also
includes similar statements as to the obviousness of various claim limitations
(First Decl. of Garris ¶¶ 20–23). It is also the position of the Examiner and
the Requester that "in order to achieve the stated objective of the ’074 patent
in a dual propeller shaft arrangement having shafts with different diameters
and/or shafts rotating in opposite directions (i.e., counter-rotating) with
splined connections, it would have been obvious to a person of ordinary skill
in the art to utilize" the splines oriented at different oblique angles (see, e.g.,
Request 26, 31, 33, 39–40).
The Examiner further relies on Shigley or Timken, which disclose
equations for calculating forces acting on a helical gear (see Shigley, pg.
461; Timken, pgs. 28–29), in support of the obviousness of the limitation
requiring the resultant force be oriented at a substantially right angle to the
spline (RAN 22–23). According to the Requester, there inherently will be
axially and tangentially directed force components from the drive motor that
cause the resultant force to act at a right angle to the spline (Resp. Br. R 9,
citing Second Decl. of Garris ¶ 26).
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In rejecting the claims based on Staerzl, the Examiner incorporates by
reference, pages 74–83 of the Request, and Appendices A-13 and A-14
(RAN 11–12). Similar to Pichl, Staerzl discloses a twin propeller marine
propulsion unit, which utilizes straight splines (see Staerzl, Abst.; col. 3, ll.
55–60; col. 4, ll. 15–54; Figs. 1–2). Staerzl explicitly states that the
propellers can rotate in opposing directions to each other (see Staerzl, col. 4,
ll. 55–56). The Examiner's rejections based on Staerzl are substantively the
same as the rejections based on Pichl, and the portions of the Request and
Appendices incorporated set forth positions similar to those as set forth
above except that Pichl is replaced with Staerzl (Request 74–75; see also
Appendix A-13, pg. 1). The combined teachings of Pichl, Snell and either
Jordan or APA; or the combined teachings of Staerzl and Snell, suggest a
propeller shaft arrangement including each limitation of claim 1 except the
following:
each of said predetermined oblique angles (α, β) on respective
counter rotating boat shafts (15,16) of known radius is oriented
with respect to the longitudinal axis of said propeller shafts
(15,16) such that the force acting on the spline (19,20) is a
resultant force (FS) between a tangential force component (FT)
of the known drive-motor-induced torque and the
corresponding known driving compressive force (FR).
Because proper lubrication necessarily renders any frictional forces
negligible, "the force acting on the spline (19,20)" necessarily acts at a right
angle to the spline (see Second Decl. of Garris ¶¶ 13 & 19; see also Decl. of
Koopman ¶ 33). The "resultant force (FS)" is the vector sum of the forces FT
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and FR (ABPO 21, citing ’074 patent, col. 2, ll. 36–43 & col. 3, ll. 8–15).
14

When the quoted limitation is satisfied, that is, when the predetermined
oblique angles (α, β) are oriented such that "the force acting on the spline
(19,20) is [the] resultant force (FS)," the resultant force (FS) necessarily "is
oriented at a substantially right angle to the respective receiving spline
(19,20)" (see Second Decl. of Garris ¶ 19; Decl. of Koopman ¶ 33).
If a propeller shaft arrangement satisfies each limitation of claim 1,
except that the predetermined oblique angles (α, β) are not oriented such that
"the force acting on the spline (19,20) is [the] resultant force (FS)," only a
portion of the resultant force (FS) acts on the spline (19,20). The portion of
the resultant force (FS) acting on the spline (19,20) is the vector sum of the
entire tangential force component (FT) and a portion of the compressive
force (FR) proportional to the component (FT). The remaining compressive
force acts parallel to the surface of the spline (19,20) through a propeller hub
(see ’074 patent col. 1, l. 65 – col. 2, l. 8). The relationship that "the force
acting on the spline (19,20) is [the] resultant force (FS)" is not inherent (that
is, does not flow naturally) from the teachings of either Pichl or Staerzl in
combination with the teachings of Snell (see Decl. of Koopman ¶ 33). The

14
The word "resultant" had two related meanings at or around the filing date
of the ’074 patent. The word "resultant" was used to indicate a vector sum
(see Collins English Dictionary (HarperCollins Publ. 2003)(def. 2),
reproduced at http://www.thefreedictionary.com/resultant). The phrase
"resultant of forces" was used to indicate a "system of at most a single force
and a single couple whose external effect on a rigid body are identical with
the effects of several actual forces that act on a body." (Dictionary of
Eng'ring (McGraw-Hill, 2d ed., 2003)("resultant of forces")). The use of the
word "resultant" in the Specification is more consistent with the first usage
to indicate a vector sum.
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fact that the portion of the resultant force (FS) that acted on the spline did so
at a right angle to the spline does not imply that one of ordinary skill in the
art would have had reason to re-orient the spline to face the direction of the
entire force FS at a right angle (see id. ¶ 30).
The Examiner cites Appendix A-1 of the Request (RAN 9) as support
for rejecting claim 1 as obvious. In addressing claim 2, Appendix A-1
reasons that the
force analysis formulas from Shigley assume that the resultant
total tooth force, W, is normal to the splines, i.e., the resultant
force is oriented at a substantially right angle to the respective
receiving splines when the drive-motor power is applied. . . .
Accordingly, orientating the resultant total tooth force, FS,
normal to the splines, i.e., the resultant force is oriented at a
substantially right angle to the respective receiving splines
when drive-motor power is applied, is a teaching of Shigley,
such that the claimed invention as a whole would have been
obvious to a person of ordinary skill in the art.
(Appendix A-1 at 4–5; see also id. at 9 (discussing claim 5) and
14–15 (discussing claim 8)).
The Requester also argues that "[o]ne need only work backwards from the
angle [of one of the splines (19,20)] shown in Snell, using the equations of
Shigley or Timken, to solve for" a value of the compressive force (FR) that
causes the resultant force (FS) to act at a right angle to the spline (Res. Br. R
9).
In arguing impropriety of the rejections based on Pichl and Staerzl,
the Patent Owner argues, inter alia, that the specific orientation of the
splines is not disclosed in that "Shigley and Timken each only discloses
analytical equations that relate certain variable characteristics of spline
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gears; neither discloses, teaches or suggests values for those variables."
(ABPO 31; see also id. at 47). The Patent Owner further argues that:
In contrast with the teachings of the current invention, what is
not known from the asserted combinations that include Shigley
is that these variables are taken under the conditions of cruising
speed, and the entire resultant force acting at a right angle to the
helical spline face is composed of the tangential component
induced by the applied motor torque and the corresponding
compressive force from the associated propeller.
(Id. at 53).
We generally agree with the Patent Owner. The fact that "any force
on a spline will inherently have an axial component and a tangential
component" that can be calculated based on Shigley or Timken does not
fully account for the limitation requiring right angle orientation of the
resultant force FS to the spline. Specifically, claim 1 recites that the resultant
force FS acting on the spline results from "tangential force component (FT)
of the known drive-motor-induced torque and the corresponding known
driving compressive force (FR)." Thus, the claims refer to a specific
compressive force FR of determinable magnitude, that is, the force caused by
the drive motor outputting known drive-motor induced torque at cruising
speed to each of the pair of propeller shafts. The claim also refers to a
specific tangential force FT of determinable magnitude, that is, the force that
is also caused by the known drive-motor-induced torque as applied to
propeller shafts having a known radius (see also Patent Owner's Response to
the Non-Final Office Action dated February 9, 2012, pg. 5).
Correspondingly, the resultant force FS is determinable with respect to its
magnitude and direction, thereby dictating the requisite angle of the spline in
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order for this resultant force FS to be oriented at a substantially right angle to
the spline.
Although the Requester asserts that a "resultant force" must act at a
right angle to a spline and can be decomposed to axial and tangential
components based on Shigley or Timken, the Requester does not fully
account for the fact that the claim language necessitates a particular spline
angle due to the above discussed recitation of the force components. Even if
the force acting on a spline must be perpendicular to the spline and can be
decomposed down to axial and tangential components, this does not speak to
what the magnitude of these components should be, and thus, does not
suggest what the angle of the spline should be. Shigley and Timken do not
teach what the magnitude of these components should be so as to dictate the
magnitude and direction of the resultant force, and the spline angle that
follows when the resultant force acts perpendicular to the spline.
Correspondingly, it is not apparent how Shigley or Timken discloses the
recited oblique angles of the splines.
The Patent Owner also argues that although Snell is relied upon by the
Examiner and the Requester for disclosing "helical splines that can take-up
tangential and axial force," "there are no teachings in any of the references
that would lead to Patent Owner's claimed invention." (ABPO 44–45).
Specifically, the Patent Owner argues that:
Even if all findings and conclusions of fact are negative to
Patent Owner, it is respectfully submitted that all that is shown
is that each of the claimed elements may have been
independently known in the prior art. However, a claim is not
obvious on the demonstration that each of the claim elements
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was, independently, known in the references used to reject the
claim.
(Reb. Br. PO 4, citing KSR, 550 U.S. at 418).
The Patent Owner argues that "no reason with rational underpinning
has been proffered by the Examiner or Requester," and the assertions of
obviousness are unsubstantiated (id. at 5, citing Innogenetics, N.V. v. Abbott
Labs., 512 F.3d 1363, 1374 (Fed. Cir. 2008)). The Patent Owner argues that
while "it is important to look at the reason proposed for applying the
teachings of Snell and Shigley/Timken to Pichl or Staerzl," the Examiner's
adopted "reasons provided by Requester fail to state a rational underpinning
to support them. The rationale behind the application of Snell's teachings
appears to be using the claimed invention as a template for reconstruction of
the claimed invention with prior art." (Id. at PO 17–18).
We agree with this position of the Patent Owner as well. Although
Snell discloses a shaft coupling with helical splines, it is not apparent what
reason(s) supported by rational underpinnings would have prompted a
person of ordinary skill to combine the teachings of Snell with Pichl or
Staerzl in a way to result in the claims of the ’074 patent. KSR, 550 U.S. at
418; In re Kahn, 441 F.3d at 988. As noted by the Patent Owner, the fact
that Snell discloses a shaft coupling with helical splines merely establishes
that such splines were known at the time of invention, not that the claimed
invention would have been obvious. As also noted by the Patent Owner, the
Requester and the Examiner appear to engage in impermissible hindsight,
using the disclosure of the ’074 patent as a template for reconstructing the
claimed invention as evidenced by the statements in the Request adopted by
the Examiner suggesting the combination "in order to achieve the stated
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objective of the ’074 patent." KSR, 550 U.S. at 421 ("factfinder should be
aware . . . of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.").
In view of the above considerations, we reverse the Examiner's
rejections of claims 1–16 for failure to establish a prima facie case of
obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(initial burden is on the examiner to establish a prima facie case of
unpatentability). The other arguments of the parties such as whether
references are non-analogous art and/or teach away from the combination
(ABPO 27–28, 30–32; Resp. Br. R 6–9, 12–13) are moot.

C. Orders With Respect to Appeal of the Patent Owner
The rejections of the Examiner appealed by the Patent Owner are
REVERSED.

II. CROSS-APPEAL OF REQUESTER
The Requester cross-appeals the Examiner's decision to withdraw
previously adopted Proposed Rejections 1–4, 7, 8, 11, 12, 15 and 16.
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A. Proposed Rejections Withdrawn
15

1. Claims 1–9 under 35 U.S.C. § 103(a) as being obvious based on the
combination of Pichl, Snell and Shigley (RAN 12).
2. Claims 1, 4 and 7 under 35 U.S.C. § 103(a) as being obvious based on
the combination of Pichl, Snell and Timken (RAN 13).
3. Claims 1–9 under 35 U.S.C. § 103(a) as being obvious based on the
combination of Pichl, Burger and Shigley (RAN 13).
4. Claims 1, 4 and 7 under 35 U.S.C. § 103(a) as being obvious based on
the combination of Pichl, Burger and Timken (RAN 13).
7. Claims 10 and 11 under 35 U.S.C. § 103(a) as being obvious based on
the combination of Pichl, Burger, Shigley and Jordan (RAN 14).
8. Claims 10 and 11 under 35 U.S.C. § 103(a) as being obvious based on
the combination of Pichl, Burger, Timken and Jordan (RAN 14–15).
11. Claims 1–11 under 35 U.S.C. § 103(a) as being obvious based on the
combination of Pichl, Burger, Shigley and APA (RAN 15).
12. Claims 1, 4, 7, 10 and 11 under 35 U.S.C. § 103(a) as being obvious
based on the combination of Pichl, Burger, Timken and APA (RAN
15–16).
15. Claims 1–6, 10 and 11 under 35 U.S.C. § 103(a) as being obvious
based on the combination of Staerzl, Burger and Shigley (RAN 16).
16. Claims 1, 4, 10 and 11 under 35 U.S.C. § 103(a) as being obvious
based on the combination of Staerzl, Burger and Timken (RAN 16–
17).

15
We again utilize the numbering of the Proposed Grounds of Rejection as
used by the Requester and utilized by the Examiner for clarity.
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B. Analysis
The issues raised in the Requester's Cross-Appeal include whether
Pichl discloses counter rotating propellers and whether Burger discloses a
splined connection in which resultant force is oriented at a right angle to the
spline (CABR 5). The Requester argues that the Examiner erred in
withdrawing proposed Grounds of Rejection 1–4 based on the finding that
Pichl fails to disclose counter-rotating shafts (id. at 5, 6–10). Indeed, the
Patent Owner concedes that Pichl discloses counter-rotating propeller shafts
(Resp. Br. PO 3). Based on our review of Pichl, we agree with the
Requester and Patent Owner that Pichl discloses counter-rotating shafts, and
that the Examiner's finding to the contrary is erroneous. However, this error
is not determinative as to the Requester's cross-appeal.

Proposed Grounds of Rejection 1 and 2
Proposed Grounds of Rejections 1 and 2 are based on the combination
of Pichl and Snell, together with Shigley or Timken, the Examiner relying
on Snell for disclosing helical splines. However, as discussed supra, in
asserting that the claims are obvious, relying on Shigley or Timken, the
Requester fails to fully account for the limitations of the claims requiring
right angle orientation of the resultant force to the spline. In addition, as
also discussed supra, the Requester fails to provide a reason supported by
rational underpinnings as to why a person of ordinary skill would have been
prompted to combine the teachings of Snell with Pichl or Staerzl in a way to
result in the claims of the ’074 patent. Instead, the Requester appears to
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engage in impermissible hindsight using the disclosure of the ’074 patent as
a template for reconstructing the claimed invention. Correspondingly, we
decline to reverse the Examiner's decision to withdraw Grounds of
Rejections 1 and 2.

Proposed Grounds of Rejection 3, 4, 7, 8, 11 and 12
These proposed grounds of rejection are based on the combination of
Pichl and Burger, together with other tertiary references. Burger discloses a
splined connection with angled splines in which "the tooth cross section
diminishes toward the end of the shaft or shaft receiving member." (Burger,
Title; pg. 1, first column, ll. 1–4; Fig. 5). Burger further states:
It is an object of the invention to provide improved
splined connections especially adapted for transmitting torque
and at the same time transmitting stresses in an axial direction
as in case of propeller driving shafts.
It is another object to provide such splined connections
which may be made small and light as required by aircraft
service while at the same time giving maximum strength and
reliability.
(Burger, pg. 1, first column, ll. 5–13).
Burger further teaches that "there will be a tendency for the shafts to
pull together if the inclination of the teeth is properly chosen with reference
to the direction of torque transmission, this effect being secured by the
inclination of the cooperating surfaces 6," which may be "sufficient to hold
the parts together even though axial forces indicated by arrows 8 and 9 be
present, tending to pull the connection apart." (Burger, pg. 1, second
column, ll. 3–13).
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The Examiner's reason for withdrawing these rejections based on
Burger is set forth in the withdrawal of Grounds of Rejection 7, 8, 11, 12, 15
and 16 in which the Examiner states that the proposed combination:
still lacks a showing of the splines being at substantially a right
angle to a resultant force of torque produced by the motor and
compressive force derived from the propeller. Burger is seen to
angle the surface of the splines relative to each other to move
coaxial shafts closer together. This is not seen as a teaching of
placing the splines so their surfaces are being at substantially a
right angle to a resultant force of torque produced by the motor
and compressive force derived from the propeller.
(See, e.g., RAN 14; see also id. at 15–17).
In the above regard, the Examiner agrees with the Patent Owner and
declarant Mr. Koopman that if the splines were at right angles to the
resultant force FS as claimed, "the tangential and axial forces would be
squarely confronted on the splines and there would be no tendency for the
shafts to pull together or tighten upon each other" as taught in Burger (RAN
23–24). The Examiner further states that Burger, Snell, Shigley and Timken
are not "seen to teach angling the splines relative to the resultant force from
the motor torque and propeller axial force as now claimed." (Id. at 28).
The Requester argues that Burger discloses angling of splines to take
up a resultant force of torque produced by the motor and compressive force
derived by the propeller, and that the Examiner erred in withdrawing these
rejections (CABR 10). According to the Requester, the Examiner "confuses
the given variables and the solved-for variables," and argues that because the
force on the spline must act perpendicularly to the spline, "any force on a
spline will inherently have an axial component and a tangential component,"
which can be used to solve for the claimed resultant force FS that "dictates
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the angle of the spline." (Id. at 12). The Requester also asserts that "this
right angle orientation is taught by Shigley and Timken," referring to pages
4–5 of the Requester's Comments dated March 6, 2012 and pages 4–9 of the
Second Declaration of Garris (id. at 13) that assert that a resultant force
must act on a spline at a right angle according to trigonometric principles
and the negligibility of frictional forces. The Requester further argues that
Burger is not being relied upon for its teaching relative to moving the
coaxial shafts closer together (id. at 14; see also Reb. Br. R 2).
Regardless of whether the Examiner's articulation of the withdrawal
of the previously adopted grounds of rejections based on Burger is
confusing, the substantive issue is whether the Examiner's erred in
withdrawing these rejections. We agree with the Examiner's decision to
withdraw these rejections. As discussed supra with respect to the Patent
Owner's appeal, the fact that a force on a spline will have axial and
tangential components that are determinable by teachings of Shigley or
Timken does not fully account for the limitations of the claims requiring
right angle orientation of the resultant force to the spline because it does not
speak to what the angle of the spline should be.
As already discussed, the claims refer to a specific compressive force
FR and tangential force FT. It is these specific values for axial force and
tangential force that are used to derive the resultant force FS, which must be
oriented at a substantially right angle to the spline. Although Shigley or
Timken allow for determination of either the resultant force, or the
components thereof once one or the other is known, they do not teach what
the magnitude of these components should be so as to dictate the direction
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and magnitude of the resultant force and the spline angle that follows.
Hence, it is not apparent how Shigley or Timken discloses the recited
oblique angles of the splines (see also Resp. Br. PO 19).
The Requester's reliance on Burger is also inadequate. As set forth
above, Burger does disclose angled splined connections that are adapted to
transmit torque as well as "stresses in an axial direction." However, this
disclosure is silent as to a specific oblique spline angle, which as discussed
above, results from the claim language. Because the claim language refers
to compressive force FR and tangential force FT that are of determinable
magnitude based on the known drive-motor induced torque at cruising
speed, the resultant force FS accounts for the entirety of these force
components at these recited parameters. Burger is silent with respect to a
specific oblique spline angle and is silent as to the proportion of axial stress
that is transmitted in the axial direction generally or under specific
parameters (i.e., motor at cruising speed). Hence, it is indeterminable that
the resulting force in Burger would encompass the entirety of the
compressive and tangential force components at the recited parameters. In
other words, because the claims require a specific compressive force FR and
tangential force FT, the resultant force FS is determinable with respect to its
magnitude and direction thereby dictating the requisite angle of the spline in
order for this resultant force FS to be oriented at a substantially right angle to
the spline. This is not the case in Burger.
The Requester also does not provide persuasive rationale remedying
the above shortcomings with respect to Burger (or for that matter, Shigley or
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Timken) to establish a prima facie case of obviousness. The referred to
portion of the Requester's Comments dated March 6, 2012, page 5 states:
there are certain drive-motor-induced torque values, which,
when applied to the respective prior art structure in [] Burger [],
will cause the purported "specially defied resultant force" to act
on the spline at a "right angle", thus arresting or counteracting
the substantial entirety of the resultant force (FS), including the
axially-directed compressive force (FR) generated by the
propeller under the influence of the drive-motor-induced torque.
(Requester's Comments dated March 6, 2012, page 5; Second
Declaration of Garris ¶ 26).
However, this assertion is speculative because claim 1 does not
pertain to certain drive-motor-induced torque values, but rather, pertains to
"known drive-motor induced torque at cruising speed" as outputted by a
drive motor. That a motor, during the course of operation, may potentially
output a torque value in which the resultant force acting perpendicularly to
the spline encompasses the entirety of the axially-directed compressive force
does not satisfy the claim language, which requires that this occur at drive-
motor induced torque at cruising speed.
The claims at issue in these withdrawn Grounds of Rejection as cross-
appealed by the Requester include similar language discussed above relative
to claim 1. Thus, in view of the above, we affirm the Examiner's decision to
withdraw Grounds of Rejection 3, 4, 7, 8, 11 and 12. The remaining issues
disputed by the parties are moot as to these withdrawn grounds of rejection.

Proposed Grounds of Rejection 15 and 16
These proposed grounds of rejection are based on the combination of
Staerzl and Burger, together with other tertiary references. The issues
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argued with respect to these withdrawn grounds of rejections are
substantively the same as those discussed supra (CABR 26–28). Thus, we
affirm the Examiner's decision to withdraw Grounds of Rejection 15 and 16
for the reasons already discussed.

C. Orders With Respect to the Cross-Appeal of the Requester
The Examiner's decision to withdraw Grounds of Rejection 1–4, 7, 8,
11, 12, 15 and 16 is AFFIRMED.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g). In the event
neither party files a request for rehearing within the time provided in 37
C.F.R. § 41.79, and this decision becomes final and appealable under 37
C.F.R. § 41.81, a party seeking judicial review must timely serve notice on
the Director of the United States Patent and Trademark Office. See 37
C.F.R. §§ 90.1 and 1.983.

AFFIRMED-IN-PART

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alw

PATENT OWNER:
ANDRUS INTELLECTUAL PROPERTY LAW, LLP
100 East Wisconsin Ave., St. 1100
Milwaukee, WI 53202

THIRD PARTY REQUESTER:

NOVAK DRUCE CONNOLLY BOVE + QUIGG LLP
1000 Louisiana Street
Fifty-Third Floor
Houston, TX 77002