Ex Parte Baldwin

Patent Trial and Appeal Board

Feb 20, 2014

12210231 (P.T.A.B. Feb. 20, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/210,231 09/15/2008 Reid Alan Baldwin 81180667 6200
28866 7590 02/21/2014
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
HLAVKA, DAVID J
ART UNIT PAPER NUMBER
3655
MAIL DATE DELIVERY MODE
02/21/2014 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

____________

Ex parte REID ALAN BALDWIN
____________

Appeal 2012-002895
Application 12/210,231
Technology Center 3600
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, FRANCES L.
IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-8, 14, and 17.1 We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We note that the Final Rejection dated April 12, 2011 indicates that claim 8
is objected to but not rejected. Final Rej. 1. The Examiner, however,
subsequently addresses claim 8 in the analysis for the rejection under section
102(e). Id. at 4. Moreover, in the Answer, the Examiner withdrew the
section 102(e) rejection against claim 8. Ans. 4, 9. As such, claim 8 is not
before us on appeal.
Appeal 2012-002895
Application 12/210,231

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CLAIMED SUBJECT MATTER
Claims 1, 14, and 17 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A multiple speed power transmission, comprising:
an input shaft (10);
an output shaft (12);
a first epicyclic gearing assembly comprising first (A),
second (B), third (C), fourth (D), and fifth (E) rotating
members;
a second epicyclic gearing assembly comprising sixth
(G), seventh (F), and eighth (D) rotating members;
wherein:
the first rotating member (A) is driveably connected to
the input shaft (10);
the sixth rotating member (G) is driveably connected to
the output shaft (12); and
the fourth rotating member and eighth rotating member
are driveably connected.

App. Br. 15, Claims App’x.
REJECTION2

2 In the Answer, the Examiner indicated that the “35 U.S.C. rejection of
claims 2 and 8 have been withdrawn after further consideration.” See Ans. 4,
9; see also Reply Br. 1. The Examiner did not also explicitly withdraw the
rejection of claim 3 under 35 U.S.C. § 102(e), however, we understand the
Examiner to have intended to do so because claim 3 depends from claim 2
and includes all the limitations of the parent claim. See Ans. 4. Thus, we
treat the section 102(e) rejection against claim 3 as having been withdrawn
along with parent claim 2. Likewise, the Examiner did not expressly
withdraw the rejection of claims 4-7 under 35 U.S.C. § 103(a) as being
unpatentable over Gumpoltsberger. Claims 4-7 also depend from claim 2
and include all the limitations of the parent claim. The section 103(a)
rejection of claims 4-7 is based on the same single reference,
Gumpoltsberger, relied upon by the Examiner in the withdrawn rejection of
Appeal 2012-002895
Application 12/210,231

3
Claims 1, 14 and 17 are rejected under 35 U.S.C. 102(e) as being
anticipated by Gumpoltsberger (US 7,575,533 B2, iss. Aug. 18, 2009).

ANALYSIS
Claim 1
Claim 1 requires, among other features, a first and second epicylic
gearing assemblies, and further that “the fourth rotating member and eighth
rotating member are driveably connected.” App. Br. 15, Claims App’x
(emphasis added).
Appellant argues that Gumpoltsberger does not teach this feature
because
the Examiner has labeled the sun gear of Gumpoltsberger’s
gearset P2 as the fourth member and sun gear of gearset P4 as
the eighth member. Gumpoltsberger does not disclose any
drive connection between the fourth rotating member and
eighth rotating member, as claim 1 recites. Instead, the sun
gear of Gumpoltsberger’ s gearset P2 is connected to input
shaft (An), the sun gear of geaerset P3 and clutch 14. The sun
gear of Gumpoltsberger’ s gearset P4 is connected to the ring
gear of Gumpoltsberger’s gearset P2, clutch 57 and brake 05.

App. Br. 6 (emphasis added). Appellant adds that Appellant’s “disclosure
makes clear that the claim limitation ‘driveably connected’ means ‘directly
connected.’” Reply Br. 2 (citing Spec., Figs. 1, 2, p. 3, l. 28 - p. 4, l. 6). In
support of this position, Appellant asserts that

claim 2 under section 102(e). Final Rej. 6. Also, there is no indication in
the Examiner’s Answer that this rejection of claims 4-7 is maintained.
Accordingly, we understand the Examiner to have also intended to withdraw
the rejection under section 103(a) against claims 4-7.
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Application 12/210,231

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Figure 1 [of Appellant’s Specification] illustrates input shaft 10
directly connected to Body A, which corresponds to sun gear 22
and sun gear 42; the output shaft 12 directly connected to the
sixth rotating member (G), which corresponds to ring gear 54;
and the fourth rotating member, which corresponds to ring gear
24, carrier 36, and ring gear 44 directly connected to the eighth
rotating member, which corresponds to sun gear 52.
Id.
The Examiner responds that Appellant has not shown where the
Specification explicitly defines “driveably connected” to mean “directly
connected.” Ans. 11. The Examiner explains that “[u]sing its ordinary
meaning, the term ‘driveably connected’ is interpreted as ‘operatively
connected[.]’ This is not restricted to direct connections and includes a
connection via clutches.” Id. The Examiner further explains that
Gumpoltsberger teaches the claimed feature because
the fourth rotating member (i.e., sun gear of P2) is driveably
connected to the eighth rotating member (i.e., sun gear of P4)
by means of the sun gear of P2 being connected to the sun gear
of P3, meshed (connected) to the carrier of P3, meshed
(connected) to the ring gear of P3, connected to the carrier of
P4 and finally meshed (connected) to the eighth rotating
member.

Id. at 9-10.
Appellant has not persuaded us that the Examiner’s interpretation is
unreasonable. The words of a claim are generally given their ordinary and
customary meaning as understood by a person of ordinary skill in the art
when read in the context of the specification and prosecution history. See
Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed.Cir.2005) (en banc).
Here, the ordinary and customary meaning of “driveably” is “suitable for
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Application 12/210,231

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driving.”3 Consistent with this common meaning, Appellant’s Specification
describes an automatic transmission for motor vehicles that includes an input
shaft 10 driven by the vehicle engine and planetary gear sets with “[r]ing
gear 24, carrier 36, ring gear 44, and sun gear 52…mutually connected such
that they rotate in unison.” Spec., p. 2, ll. 10-13 (emphasis added). It bears
repeating that Appellant contends that the fourth rotating member recited in
claim 1 corresponds to ring gear 24, carrier 36, and ring gear 44, and that the
eighth rotating member corresponds to sun gear 52. Reply Br. 2.
We are also not apprised of Examiner error by Appellant’s argument
that the Specification defines “driveably connected” to mean “directly
connected.” Our reviewing court has instructed that “[t]o act as its own
lexicographer, a patentee must clearly set forth a definition of the disputed
claim term other than its plain and ordinary meaning.” Thorner v. Sony
Computer Entertainment America LLC, 669 F.3d 1362, 1365-66 (Fed. Cir.
2012) (citations and quotations omitted). Appellant has not pointed to, and
we do not see, where the Specification clearly sets forth that “driveably
connected” means something other than its plain and ordinary meaning.
Appellant argues that the disclosed embodiments (e.g., Fig. 1) show
driveable connections as direct connections between gear set components.
See Reply Br. 2. Even if this is the case, “[i]t is not enough for a patentee to
simply disclose a single embodiment or use a word in the same manner in all
embodiments, the patentee must clearly express an intent to redefine the
term.” Thorner, 669 F.3d at 1365 (citations and quotations omitted).

3 http://www.oed.com/view/Entry/57786?redirectedFrom=drivable#eid (last
visited Feb. 5, 2014)
Appeal 2012-002895
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Appellant additionally argues that the original claims support this
claim interpretation. Reply Br. 2-3. We are not apprised of any error on this
basis as the Appellant has not explained where the original claims (as filed
on September 15, 2008) clearly set forth the asserted definition. For
example, original claim 1 recites “the fourth rotating member and eighth
rotating member are mutually driveably connected.” Claims filed Sept. 15,
2008 (emphasis added). Appellant does not explain how “mutually
driveably connected” equates to “directly connected” as asserted. Reply Br.
2-3.
Additionally, we are also not persuaded of error by Appellant’s
argument that Gumpoltsberger does not teach a “fourth rotating member and
eighth rotating member” driveably connected. App. Br. 6. The Examiner
found that Gumpoltsberger’s P2 sun gear (fourth member) and P4 sun gear
(eighth member) are driveably connected “by means of the sun gear of P2
being connected to the sun gear of P3, meshed (connected) to the carrier of
P3, meshed (connected) to the ring gear of P3, connected to the carrier of P4
and finally meshed (connected) to the eighth rotating member.” Ans. 9-10.
Appellant does not challenge this finding, but argues that the reference does
not teach “driveably connected” fourth and eighth members. Appellant’s
argument is based on the premise that “driveably connected” means
“directly connected.” App. Br. 6. As explained supra, we do not find this
claim interpretation persuasive and, likewise, are not apprised of error in the
Examiner’s finding that the indirect connections of Gumpoltsberger teach
“driveably connected.”
Appellant next argues that “Gumpoltsberger’s gearsets P2 and P3
does not meet the definition of an epicyclic gearing assembly, as used in this
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application and set forth in the specification.” App. Br. 7. Appellant
contends that “[t]he condition expressed in the definitions that the speeds of
any two elements of the epicyclic gearing assembly determine the speeds of
the other elements is another way of saying that the epicyclic gearing
assembly has only two degrees of freedom.” Id. Appellant asserts that
Gumpoltsberger’s gearsets P2 and P3 have three degrees of freedom. Id.
We do not find Appellant’s position persuasive. To start, the ordinary
and customary meaning of “epicyclic” is pertaining to epicycles and the
corresponding ordinary and customary meaning of “epicycles” is “a small
circle, having its center on the circumference of a greater circle.”4 Thus, we
find that the ordinary and customary meaning of “epicyclic gearing
assembly” to be a gearing assembly that includes a small circle, having its
center on the circumference of a greater circle. We do not discern any
inconsistency between this common meaning and the Specification. For
example, the Specification describes “[g]ear sets 20, 30, and 40 of Figure 1
collectively form an epicyclic gearing assembly with five rotating bodies
that each rotate about the central axis.” Spec., p. 3, ll. 24-26. Gear sets 20,
30, and 40 are described as “simple planetary gear sets . . . each have a sun
gear with external gear teeth, a ring gear with internal gear teeth, a planet
carrier, and a set of planet gears that are supported for rotation with respect
to the carrier and mesh with both the sun gear and the ring gear.” Id. at p. 2,
ll. 6-9.

4 http://www.oed.com/view/Entry/63299?redirectedFrom=epicyclic#eid (last
visited Feb. 5, 2014)
http://www.oed.com/view/Entry/63297?rskey=ySHFaZ&result=1&isAdvan
ced=false#eid (last visited Feb. 5, 2014).
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Application 12/210,231

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Furthermore, while we agree that Appellant’s Specification describes
an embodiment (e.g., Fig. 4) in which “the speeds of any two elements of the
epicyclic gearing assembly determine the speeds of the other elements”
(Reply Br 6, see also Spec., p. 3, l. 26-p. 4, l. 7), we are not constrained to
read any such definition into claim 1 when Appellant has chosen to claim the
invention using broad language, which under the broadest reasonable
interpretation, does not require this speed relationship between the recited
rotating members. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997)
(“Absent an express definition in their specification, the fact that appellants
can point to definitions or usages that conform to their interpretation does
not make the PTO’s definition unreasonable when the PTO can point to
other sources that support its interpretation.”). As discussed above, it is not
enough for Appellant to “disclose a single embodiment or use a word in the
same manner in all embodiments, the patentee must clearly express an intent
to redefine the term.” Thorner, 669 F.3d at 1365 (citations and quotations
omitted).
Additionally, we are also not apprised of error in the Examiner’s
finding that Gumpoltsberger’s planetary gear sets P2 and P3 teach a “first
epicyclic gearing assembly” or that P4 teaches “a second epicyclic gearing
assembly.” See Ans. 4-5. Essentially, Appellant’s position is that
Gumpoltsberger does not teach an “epicyclic gearing assembly” because P2
and P3 do not satisfy the requirement that “the speeds of any two elements
of the epicyclic gearing assembly determine the speeds of the other
elements.” See App. Br. 6-8. We explained, however, that the recited
“epicyclic gearing assembly” does not require this limitation. As such, we
do not find Appellant’s argument persuasive as unclaimed features cannot
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impart patentability. See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998).
For the foregoing reasons, we sustain the Examiner’s decision
rejecting claim 1.
Claim 14
Independent claim 14 recites, among other features,
a second planet carrier (36) driveably connected to the
first ring gear (24);
a third ring gear (44) driveably connected to the second
planet carrier (36);
a third planet carrier (46) driveably connected to the
second ring gear (34);
a fourth sun gear (52) driveably connected to the second
planet carrier (36);

App. Br. 19, Claims App’x (emphasis added).

Appellant argues that the Specification distinguishes direct
connections from selective connections such as clutches and brakes, “which
must be selected for activation and engaged to produce a connection.” App.
Br. 10. Appellant adds that claim 14 recites the term “driveably connected”
to distinguish this connection from the “releasable connecting” clutches and
“‘releasably holding’” brakes recited in claims 9, 10, 18, and 19. App. Br.
11. In sum, we understand Appellant’s argument to be that selective or
releasable connections (i.e. clutches and brakes) do not teach “driveably
connected” as recited in claim 14 because clutches and brakes “are
fundamentally different from direct connection[s].” App. Br. 11
Even assuming arguendo that the Specification does distinguish
between direct and selective connections, we are not apprised of Examiner
error on this basis because Appellant has not shown where the Specification
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clearly sets forth that “driveably” means something other than its plain and
ordinary meaning (e.g., suitable for driving). Thus, even if there is a
difference between directly and selectively/releasably connected, it does not
then follow that there is also a distinction between selectively/releasably and
driveably. Additionally, to the extent that Appellant presents the same
argument for claim 14 that “driveably connected” means “directed
connected,” we are not persuaded of error for the same reasons discussed
supra.
We are also not persuaded by Appellant’s argument that claims 9, 10,
18, and 19 distinguish between “driveably connected” and releasable
connecting/releasably holding. Specifically, Appellant asserts that “claim 14
uses the term ‘driveably connected’ between members that are non-
releasably connected, thereby distinguishing clutched and braked
connections from the connections recited in claim 14.” App. Br. 11.
However, we do not see where in the record that Appellant has persuasively
established that “driveably connected” means “non-releasably connected.”
For example, Appellant has not explained where the Specification clearly
defines “driveably” to have this meaning.
Appellant also argues that Gumpoltsberger does not disclose the
claimed invention because several recited components are “driveably
connected” to other components in claim 14. See App. Br. 10-11. Appellant
contends that Gumpoltsberger’s clutches and brakes do not describe
driveable connections because these are selective connections. For the same
reasons discussed above, we do not find this argument persuasive as it is
premised on adopting Appellant’s claim interpretation of “driveably
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connected” as excluding selective connections. We have not adopted this
position.
Claim 17
For independent claim 17, Appellant reiterates the same arguments
addressed above. See App. Br. 12-13 (arguing that “driveably connected”
differs from selective connections). We are not persuaded of Examiner error
for the same reasons discussed above for claims 1 and 14.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
decision rejecting claims 1, 14, and 17 as being anticipated by
Gumpoltsberger under 35 U.S.C. § 102(e).

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 14, and 17.
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

rvb