Ex Parte Antchak et al

Patent Trial and Appeal Board

Nov 15, 2017

13805085 (P.T.A.B. Nov. 15, 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.
13/805,085 12/18/2012 John R. Antchak 15417-000040/US/NP 3621
27572 7590 11/17/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
HLAVKA, DAVID J
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
11/17/2017 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):
troymailroom @hdp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. ANTCHAK,
WARREN WILLIAMS, and
JAMES W. DELL
Appeal 2016-002133
Application 13/805,0851
Technology Center 3600
Before CAROLYN D. THOMAS, SHARON FENICK, and
PHILLIP A. BENNETT Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner’s
Final Rejection of claims 17—22. Appeal Br. 5, 10. Claims 1—14 have been
indicated as allowed. Final Action 1, 4. Claims 15 and 16 are cancelled.
Appeal Br. A-4. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We AFFIRM.
1 Appellants identify Litens Automotive Partnership as the real party in
interest. (Appeal Br. 2.)
Appeal 2016-002133
Application 13/805,085
Invention
Appellants’ invention relates to a decoupler having an input hub, an
output member, a one-way clutch, and at least one isolation spring. Rotary
power is transmitted in a predetermined rotational direction from the input
hub, through the one-way clutch, through the isolation spring and to the
output member. Spec. 1 6; Abstract.
Exemplary Claim
Claim 17, reproduced below with italicization added for emphasis, is
exemplary:
17. A decoupler comprising:
an input hub;
an output member;
a one-way clutch; and
at least one isolation spring;
wherein rotary power is transmitted in a predetermined
rotational direction from the input hub, through the one-way
clutch, through the isolation spring and to the output member.
Rejection
The Examiner rejects claims 17—22 under pre-AIA 35 U.S.C. § 102(b)
as being anticipated by Antchak et al. (US 2006/0144664 Al; pub. July 6,
2006) (“Antchak”). Final Action 2-4.
Issue
Did the Examiner err in finding Antchak discloses the transmission of
rotary power “from the input hub, through the one-way clutch, through the
isolation spring and to the output member,” in the rejection of claim 17?
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Appeal 2016-002133
Application 13/805,085
ANALYSIS
Appellants argue that the claim limitation of rotary power being
transmitted “from the input hub, through the one-way clutch, though the
isolation spring and to the output member” requires rotary power to be
transmitted from the input hub, “then through the one-way clutch, then
through the isolation spring,” and finally to the output member. Reply Br. 2;
Appeal Br. 8—9 (emphasis added). Appellants further argue that one of
ordinary skill in the art would not understand the limitation at issue to “begin
with the inputting of rotary power to the input hub, end with the outputting
of rotary power from the output member, and randomly list elements
between the input hub and the output member through which the rotary
power was to be transmitted.” Appeal Br. 9. Thus, because, Appellants
argue, Antchak discloses power to be transmitted from the input hub first
through the isolation spring and only then through the one-way clutch,
finally through the output member, Antchak does not disclose the limitation.
Reply Br. 2—3.
The Examiner, however, determines that the limitation does not limit
the transmission of power “through specific elements in a specific order.”
Final Action 5; Answer 4—5, 6—7.
Claims should be given their broadest reasonable interpretation during
examination. “[DJuring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)
(citation omitted). “An essential purpose of patent examination is to fashion
claims that are precise, clear, correct, and unambiguous. Only in this way
can uncertainties of claim scope be removed, as much as possible, during the
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Appeal 2016-002133
Application 13/805,085
administrative process.” Id. at 322. Moreover, it is during prosecution that a
patent applicant has “the opportunity to amend the claims to obtain more
precise claim coverage.” In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). “Absent claim language carrying a narrow meaning,
the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
While the claim at issue is not a method claim, we find useful the
direction of our reviewing court in determining if steps in a method claim
must be performed in a specific order — looking to see if, as a matter of logic
or grammar they must be performed in a certain order, or something in the
claim or specification directly or implicitly requires a narrowed construction.
Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323, 1342-43
(Fed. Cir. 2001). Similarly, here, we are not convinced that a narrowed
construction, in which power is transmitted first through the one-way clutch
and only then through the isolation spring, is required.
Therefore, we are not convinced of error in the Examiner’s rejection
of claim 17 as anticipated by Antchak, or of error in the rejection of claims
18—22, argued together with claim 17. Appeal Br. 5—9.
DECISION
The Examiner’s 35 U.S.C. § 102(b) rejection of claims 17—22 is
affirmed.
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Appeal 2016-002133
Application 13/805,085
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)(l)(iv).
AFFIRMED
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