Ex Parte Batlle

Patent Trials and Appeals Board

Jan 2, 2019

13977924 - (D) (P.T.A.B. Jan. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/977,924 07/02/2013 Frederic Ferdinand Jacques Batlle
22850 7590 01/04/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
417895US41X PCT 1065
EXAMINER
SUTHERLAND, STEVEN M
ART UNIT PAPER NUMBER
3741
NOTIFICATION DATE DELIVERY MODE
01/04/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERIC FERDINAND JACQUES BATLLE
Appeal2018-002648
Application 13/977 ,924
Technology Center 3700
Before MICHELLE R. OSINSKI, FREDERICK C. LANEY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frederic Ferdinand Jacques Batlle ("Appellant") 1 appeals under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 13-31, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION of
claims 13-31 pursuant to our authority under 37 C.F.R. § 41.50(b ).
1 Appellant identifies the real party in interest as TURBOMECA. Appeal
Br. 2.
Appeal 2018-002648
Application 13/977,924
THE CLAIMED SUBJECT MATTER
Claims 13, 15, 19, 23, and 2 7 are independent. Claim 13, reproduced
below, is illustrative of the claimed subject matter on appeal.
13. A mechanical protection device comprising:
a transmission shaft with a nominal speed of rotation and
a forward whirl critical speed of rotation corresponding to a
predetermined rotary overspeed higher than the nominal speed of
rotation of the transmission shaft;
wherein the transmission shaft has an inherent damping
that is insufficient to avoid breakage of the transmission shaft
resulting from resonance in bending at the forward whirl critical
speed of rotation.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Howard
Moulebhar
US 6,575,709 B2
US 2006/0260323 Al
June 10, 2003
Nov. 23, 2006
Shen Zhaorong & Yin Qiling, Device State Detection and Diagnosing
Technology and Application for the Failure, Chapter 7: Rotating
Machine Failure and Diagnosing Technology, pp. 127-132 (June 30,
2 00 3) (hereinafter "Zhaorong") 2
THE REJECTIONS
I. Claims 13-15, 18-20, 23, 24, and 27-29 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Howard and Zhaorong.
Final Act. 2-6.
2 Unless otherwise noted, citations to "Zhaorong" in this opinion will be to
the English translation entered into the record as an attachment to the
Examiner's Answer.
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II. Claims 15-17, 19, 21-23, 25-27, and 29-31 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Moulebhar and Zhaorong.
Id. at 6-12.
OPINION
Rejection I
Independent claims 13, 15, 19, and 23 and Their Dependent Claims
The Examiner finds, among other things, that Howard's transmission
shaft 308 "has an inherent damping that is insufficient to avoid breakage of
the transmission shaft resulting from resonance in bending at the forward
whirl critical speed of rotation" (Final Act. 2 (independent claim 13)) and "is
arranged to break at the forward whirl critical speed of rotation of the
transmission shaft from resonance in bending" (id. at 3, 4--5 (independent
claims 15, 19, and 23)). The Examiner takes the position that Howard's
shaft inherently or necessarily possesses the characteristic of the claimed
product (i.e., an inherent damping that is insufficient to avoid breakage of
the transmission shaft resulting from resonance in bending at the forward
whirl critical speed of rotation or being arranged to break at the forward
critical speed of rotation of the transmission shaft from resonance in
bending). Id. at 3, 4, 5. The Examiner points out that "there is no active
damping in the transmission shaft 308 to prevent breakage from resonance in
bending beyond the inherent damping of the shaft itself' and that "neck 314
is designed to break with a level of force greater than experienced in normal
operation." Id. at 2-3 (citing Howard 6:7-10).
Because the Examiner acknowledges that "Howard does not teach that
the shaft breaks at a forward whirl critical speed from resonance in bending
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of the shaft at a first bending mode" (id. at 3, 4, 5), the Examiner also points
to Zhaorong as "teach[ing] that it was well known at the time of invention
that rotating a shaft between two points at a threshold value of rotation speed
at a first resonant frequency of bending will result in intense vibration that
will break the shaft." Id. at 3 (citing Zhaorong 127; Fig. 7-1 "showing
deflection of shaft between points A and B during rotation co"). According
to the Examiner:
Howard's shaft has the same structure as the one disclosed in the
instant application (rotating shaft fixed at two ends). All rotating
shafts have a forward whirl critical speed (harmonic frequency
con on page 129 of Zhaorong), which is a function of the stiffness
coefficient and mass of the rotor. When the shaft turns at the
critical speed, the amplitude of the bending of the shaft increases,
resulting in the shaft eventually breaking (page 131 of
Zhaorong).
Ans. 2-3.
Appellant argues that "[t]he lack of an active damping of the shaft
between pump 4 and input 303 does not necessarily imply that its inherent
damping alone will be insufficient to avoid breakage of the transmission
shaft resulting from resonance in bending at any forward whirl critical speed
of rotation." Appeal Br. 7-8. Appellant also argues that the Examiner has
mischaracterized the cited section of Howard in that it discloses only that the
neck is designed to break "when torque exceeds a predetermined load" and
that "resistance in torsion and bending of the neck 314 are not ...
necessarily related, and it is by no means certain that shaft 308 will break at
the same place under a bending and a torsion load." Id. at 8. We agree with
Appellant that neither of these findings by the Examiner adequately supports
that Howard's transmission shaft inherently or necessarily possesses the
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characteristic of the claimed product (i.e., an inherent damping that is
insufficient to avoid breakage of the transmission shaft resulting from
resonance in bending at the forward whirl critical speed of rotation or the
shaft being arranged to break at the forward whirl critical speed of rotation
of the transmission shaft from resonance in bending).
When relying upon a theory of inherency, "the examiner must provide
a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art." Ex parte Levy, 17 USPQ2d
1461, 1464 (B.P .A.I. 1990) ( emphasis in original). Further, under principles
of inherency, when a reference is silent about an asserted inherent
characteristic, it must be "clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill." Continental Can Co. USA,
Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). Therefore, the
apparatus of the prior art meets the recited limitation if it necessarily has an
inherent damping that is insufficient to avoid breakage of the transmission
shaft resulting from resonance in bending at the forward whirl critical speed
of rotation or is necessarily arranged to break at the forward whirl critical
speed of rotation of the transmission shaft from resonance in bending.
The first remaining basis for the Examiner's determination that
Howard's transmission shaft inherently or necessarily possesses the
characteristic of the claimed product is the purported structural similarity
between Howard's shaft and the claimed shaft. Ans. 2-3. We find the
structural similarity identified by the Examiner to be insufficient to justify
determining that Howard's shaft necessarily has a damping that is
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insufficient to avoid breakage at the forward whirl critical speed of rotation
of the transmission shaft from resonance in bending or is necessarily
arranged to break at the forward whirl critical speed of rotation of the
transmission shaft from resonance in bending. The only structural similarity
identified by the Examiner is that Howard's shaft, and the shaft as disclosed
and claimed, are fixed at two ends. Ans. 2-3. Appellant argues that not all
shafts fixed at two ends will break at the forward critical speed of rotation
and it is "only an issue with relatively slender shafts having a relatively long
distance between bearings." Appeal Br. 8. We agree with Appellant that
merely because Howard's shaft is a rotating shaft fixed at two ends is not a
sound basis for determining that Howard's shaft necessarily has a damping
that is insufficient to avoid breakage at the forward whirl critical speed of
rotation of the transmission shaft from resonance in bending or is necessarily
arranged to break at the forward whirl critical speed of rotation of the
transmission shaft from resonance in bending.
The only additional technical reasoning provided by the Examiner in
support of the Examiner's determination that Howard's transmission shaft
inherently or necessarily possesses the characteristic of the claimed product
is based on Zhaorong's teachings. As to the Examiner's reliance on
Zhaorong as an evidentiary reference, Appellant maintains that, at most,
Zhaorong teaches that resulting vibration from rotating a shaft between two
points at a threshold value of rotation speed at a first resonant frequency of
bending can break the shaft, not that it necessarily will do so. Appeal Br. 8.
As explained by Appellant, shafts can "accelerate[] and decelerate[] through
[their] forward whirl critical speed and corresponding vibration, without
breakage" and "[ o ]nly if the inherent damping of the shaft is so low that the
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lateral deflection exceeds the breaking point of the shaft[,] will the
transmission shaft break as a result of resonance in bending." Id. We are
not persuaded that Zhaorong's teachings adequately support that Howard's
transmission shaft inherently or necessarily possesses the characteristic of
the claimed product (i.e., an inherent damping that is insufficient to avoid
breakage of the transmission shaft resulting from resonance in bending at the
forward whirl critical speed of rotation or the shaft being arranged to break
at the forward whirl critical speed of rotation of the transmission shaft from
resonance in bending or is necessarily capable of being arranged to break at
the forward whirl critical speed of rotation of the transmission shaft from
resonance in bending). See In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999) (internal quotation marks and citations omitted) ("To establish
inherency, the extrinsic evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.").
For the foregoing reasons, we are persuaded that the Examiner erred
in finding that Howard and Zhaorong teach a transmission shaft necessarily
having an inherent damping that is insufficient to avoid breakage of the
transmission shaft resulting from resonance in bending at the forward whirl
critical speed of rotation or is necessarily arranged to break at the forward
whirl critical speed of rotation of the transmission shaft from resonance in
bending. We do not sustain the rejection of claims 13-15, 18-20, 23, and 24
under 35 U.S.C. § 103(a) over Howard and Zhaorong.
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Independent Claim 2 7 and its Dependent Claims
Independent claim 27 recites, in relevant part, "dimensioning the
transmission shaft so that the transmission shaft breaks by resonance in
bending at a forward whirl critical speed of rotation of the transmission shaft
that corresponds to a predetermined rotary overspeed exceeding the nominal
speed of rotation." Appeal Br. 15 (Claims App.). The Examiner finds that
"[ t ]he shaft of Howard inherently comprises a rotary overspeed (harmonic
frequency as defined by Zhaorong, which is present with all rotating shafts)
with dimensions as disclosed in [F]igure 4 of Howard." Ans. 4. For the
same reasons as described in detail above, we are persuaded that the
Examiner erred in finding that Howard and Zhaorong teach dimensioning a
transmission shaft so that the transmission shaft breaks by resonance in
bending at a forward whirl critical speed of rotation of the transmission
shaft. We do not sustain the rejection of claims 27-29 under 35 U.S.C.
§ 103(a) over Howard and Zhaorong.
Re} ection II
Independent Claims 15, 19, and 23 and Their Dependent Claims
The Examiner finds, among other things, that Moulebhar's
"transmission shaft is arranged to break at a forward whirl critical speed of
rotation of the transmission shaft from resonance in bending." Final Act. 7,
10. The Examiner takes the position that Moulebhar's shaft inherently or
necessarily possesses the characteristic of the claimed product (i.e., is
arranged to break at a forward whirl critical speed of rotation of the
transmission shaft from resonance in bending). Id. The Examiner points out
that Moulebhar' s "transmission shaft is not damped in [F]igure 4 beyond the
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inherent damping of the shaft, such that there is no resistance to breakage
from bending of the shaft." Id.
Because the Examiner acknowledges that "Moulebhar does not teach
that the shaft breaks at a forward whirl critical speed from resonance in
bending of the shaft at a first bending mode" (id.), the Examiner also points
to Zhaorong as "teach[ing] that it was well known at the time of invention
that rotating a shaft between two points at a threshold value of rotation speed
at a first resonant frequency of bending will result in intense vibration that
will break the shaft." Id. (citing Zhaorong 127; Fig. 7-1 "showing deflection
of shaft between points A and B during rotation co").
Appellant argues that Moulebhar fails to offer any basis for assuming
that the inherent damping of Moulebhar's shaft is insufficient to avoid
breakage of the transmission shaft resulting from resonance in bending at the
forward whirl critical speed of rotation. Appeal Br. 10. Appellant also
argues that Moulebhar "does not disclose that the transmission shaft
connecting the drive shaft in Figure 4 to fuel feed pump 50 is 'fixed at two
points at high pressure shaft and input to gearbox 20. "' Id. ( quoting Final
Act. 7, 10). Appellant asserts that "[i]nstead, Figure 4 is a schematic
drawing that simply does not show how and where this transmission shaft is
supported, and the written specification of Moulebhar does not describe this
either." Id. ( emphasis omitted).
The Examiner has not set forth a sound basis for determining that
Moulebhar' s transmission shaft is necessarily arranged to break at the
forward whirl critical speed of rotation of the transmission shaft from
resonance in bending. For example, the Examiner has not shown sufficient
structural similarity between Moulebhar' s transmission shaft and
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Appellant's transmission shaft, as disclosed and claimed, to support the
finding that Moulebhar' s transmission shaft is inherently arranged to break
at the forward whirl critical speed of rotation of the transmission shaft from
resonance in bending. The only additional technical reasoning provided by
the Examiner is based on Zhaorong's teachings. We are not persuaded that
Zhaorong's teachings adequately support that Moulebhar's transmission
shaft inherently or necessarily possesses the characteristic of the claimed
product (i.e., is necessarily arranged to break at the forward whirl critical
speed of rotation of the transmission shaft from resonance in bending). See
Robertson, 169 F.3d at 745.
For the foregoing reasons, we are persuaded that the Examiner erred
in finding that Moulebhar and Zhaorong teaches a transmission shaft
necessarily capable of being arranged to break at the forward whirl critical
speed of rotation of the transmission shaft from resonance in bending. We
do not sustain the rejection of claims 15-17, 19, 21-23, 25, and 26 under 35
U.S.C. § 103(a) over Moulebhar and Zhaorong.
Independent Claim 2 7 and its Dependent Claims
Independent claim 27 recites, in relevant part, "dimensioning the
transmission shaft so that the transmission shaft breaks by resonance in
bending at a forward whirl critical speed of rotation of the transmission shaft
that corresponds to a predetermined rotary overspeed exceeding the nominal
speed of rotation." Appeal Br. 15 (Claims App.). The Examiner finds that
"[t]he shaft of Moulebhar inherently comprises a rotary overspeed (harmonic
frequency as defined by Zhaorong, which is present with all rotating shafts)
with dimensions as disclosed in [F]igure 4 of Moulebhar." Ans. 4. For the
same reasons as described in detail above, we are persuaded that the
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Examiner erred in finding that Moulebhar and Zhaorong teach dimensioning
a transmission shaft so that the transmission shaft breaks by resonance in
bending at a forward whirl critical speed of rotation of the transmission
shaft. We do not sustain the rejection of claims 27 and 29--31 under 35
U.S.C. § 103(a) over Moulebhar and Zhaorong.
NEW GROUNDS OF REJECTION
Written Description
We enter a new ground of rejection of independent claims 13, 15, 19,
23, and 27 and dependent claims 14, 16-18, 20-22, 24--26, and 28-31
(based solely on their dependence from claims 13, 15, 19, 23, and 27) under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
To satisfy the written description requirement of 35 U.S.C. § 112, first
paragraph, a specification must describe the claimed invention in sufficient
detail that one skilled in the art can reasonably conclude that the inventor
had possession of the claimed invention. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1562---63 (Fed. Cir. 1991). Specifically, the specification must
describe the claimed invention in a manner understandable to a person of
ordinary skill in the art and show that the inventor actually invented the
claimed invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane). In addition, the specification must
"demonstrate that the patentee possessed the full scope of the invention
recited in [the] claim." LizardTech, Inc. v. Earth Resource Mapping, Inc.,
424 F.3d 1336, 1345 (Fed. Cir. 2005).
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The written description requirement of 35 U.S.C. 112, first paragraph,
applies to all claims, including original claims that are part of the disclosure
as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit:
The problem [ of demonstrating possession for a recited genus] is
especially acute with genus claims that use functional language
to define the boundaries of a claimed genus. In such a case, the
functional claim may simply claim a desired result, and may do
so without describing species that achieve that result. But the
specification must demonstrate that the applicant has made a
generic invention that achieves the claimed result and do so by
showing that the applicant has invented species sufficient to
support a claim the functionally-defined genus.
Id. at 1349.
In this case, independent claims 13, 15, 19, and 23 recite a
transmission shaft that has an inherent damping that is insufficient to avoid
breakage of the transmission shaft resulting from resonance in bending at the
forward whirl critical speed of rotation or that is arranged to break at the
forward whirl critical speed of rotation of the transmission shaft from
resonance in bending. Appeal Br. 12-14 (Claims App.). Independent claim
27 recites a method step of "dimensioning the transmission shaft so that the
transmission shaft breaks by resonance in bending at a forward whirl critical
speed of rotation of the transmission shaft that corresponds to a
predetermined rotary overspeed exceeding the nominal speed of rotation."
Id. at 15. The Specification describes only that
a real transmission shaft 1 [as opposed to a Jeffcott rotor model]
can present a certain amount of inherent damping, [but] such
inherent damping is very limited and normally does not suffice
to dissipate the energy of the vibration induced in the shaft 1 at
such a speed of rotation [i.e., the critical speed of rotation].
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Spec. 4:15-19. The Specification, however, does not disclose how the shaft
structure (e.g., dimensions or materials) affects the damping of the shaft,
such that the shaft would have inherent damping that, contrary to the
"normal" situation, suffices to dissipate the energy of the vibration.
We determine that the Specification does not describe the structure of
a shaft and its resulting inherent damping ( or provide a correlation between
shaft structure and its damping properties) in sufficient detail that one skilled
in the art would reasonably conclude that the inventor had possession of the
claimed invention, especially when the Specification does not provide any
disclosure of how a transmission shaft should be dimensioned so as to break
at the forward whirl critical speed of rotation of the transmission shaft from
resonance in bending. Appellant has asserted that "relatively slender shafts
having a relatively long distance between bearings" might have inherent
damping "so low that the lateral deflection exceeds the breaking point of the
shaft [ so that] the transmission shaft break[ s] as a result of resonance in
bending" (Reply Br. 3), but has provided no supporting evidence for such
assertion or otherwise suggested that one skilled in the art would understand
how dimensions affect inherent damping of a shaft and would understand
how to dimension ( or otherwise design) the claimed shaft.
In other words, the claims and the Specification appear to set out a
desired functional result of the shaft, without sufficiently identifying how the
invention achieves the claimed functional result. See Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 692 (Fed. Cir. 2015) (citing Ariad,
598 F.3d at 1349) (explaining that the written description requirement is not
met if the Specification merely describes a "desired result"). The
Specification provides no guidance or example as to what is necessary in
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order to provide a shaft having the recited inherent damping that is
insufficient to avoid breakage of the transmission shaft resulting from
resonance in bending at the forward whirl critical speed of rotation or being
arranged to break at the forward whirl critical speed of rotation of the
transmission shaft from resonance in bending. Without any such guidance
or example in the Specification as to what is structure achieves the
functional limitation, the Specification does not demonstrate that Appellant
possessed the functionally-defined transmission shaft recited in the claims.
Claims 13-31 are thus rejected under 35 U.S.C. § 112, first paragraph,
as failing to meet the written description requirement. This rejection is a
NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 4I.50(b).
Enablement
We enter a new ground of rejection of independent claims 13, 15, 19,
23, and 27 and dependent claims 14, 16-18, 20-22, 24--26, and 28-31
(based solely on their dependence from claims 13, 15, 19, 23, and 27) under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement. "[T]o be enabling, the specification of a patent must teach
those skilled in the art how to make and use the full scope of the claimed
invention without 'undue experimentation."' In re Wright, 999 F.2d 1557,
1561 (Fed. Cir. 1993) (quoting In re Vaeck, 947 F.2d 488,495 (Fed. Cir.
1991) ). Our reviewing court has set forth factors to be considered in
determining whether a disclosure satisfies the enablement requirement:
(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, ( 4) the nature of the invention, ( 5) the state
of the prior art, ( 6) the relative skill of those in the art, (7) the
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predictability or unpredictability of the art, and (8) the breadth of
the claims.
In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Having considered the evidence as a whole in light of all of these
factors, we conclude that the Specification does not teach one skilled in the
art how to make and use the full scope of the claimed invention without
undue experimentation. Specifically, the Specification does not enable the
limitations directed to a transmission shaft having "an inherent damping that
is insufficient to avoid breakage of the transmission shaft resulting from
resonance in bending at the forward whirl critical speed of rotation" or being
"arranged to break at the forward whirl critical speed of rotation of the
transmission shaft from resonance in bending" (independent claims 13, 15,
19, and 23) or the method step of "dimensioning the transmission shaft so
that the transmission shaft breaks by resonance in bending at a forward whirl
critical speed of rotation of the transmission shaft that corresponds to a
predetermined rotary overspeed exceeding the nominal speed of rotation"
(independent claim 27). Appeal Br. 12-15 (Claims App.).
In particular, the Wands factors directed to the amount of direction or
guidance presented and the presence or absence of working examples do not
weigh in favor of enablement because Appellant's disclosure broadly
discloses the claimed invention without including detailed explanations of
the shaft or any working examples to guide one of ordinary skill in the art
how to make or use the claimed invention. Appellant's disclosure does not
explain what dimensions, and what materials, can be used for the shaft to
achieve the damping properties or the ability of the shaft to break as recited
in the claims. Due to the lack of direction and working examples in
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Appellant's disclosure, the quantity of experimentation necessary for one of
ordinary skill in the art to develop a shaft having the properties recited in the
independent claims would appear to be significant.
With regard to the breadth of the claims, we note that the claims do
not provide any significant structural limitations with respect to the shaft.
That is, the claims do not recite any particular dimensions or any particular
materials. As to the factors of the state of the prior art and the relative skill
of those in the art, the cited prior art does not support that one of ordinary
skill in the art would have understood how the structure of a shaft correlates
to its damping properties. As to the predictability or unpredictability of the
art, we see no particular evidence that the relevant art is unpredictable.
Weighing all of the above, we conclude that Appellant's disclosure
does not enable one of ordinary skill in the art to make and use the claimed
invention without undue experimentation. In particular, undue
experimentation would be required in order to determine what shaft
dimensions and materials would result in shafts having the damping
properties recited in the claims.
Claims 13-31 are thus rejected under 35 U.S.C. § 112, first paragraph,
as failing to meet the enablement requirement. This rejection is a NEW
GROUND OF REJECTION pursuant to 37 C.F.R. § 4I.50(b).
DECISION
The Examiner's decision to reject claims 13-15, 18-20, 23, 24, and
27-29 under 35 U.S.C. § 103(a) as unpatentable over Howard and Zhaorong
is reversed.
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The Examiner's decision to reject claims 15-17, 19, 21-23, 25-27,
and 29-31 under 35 U.S.C. § 103(a) as unpatentable over Moulebhar and
Zhaorong is reversed.
We enter a NEW GROUND OF REJECTION of claims 13-31 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We enter a NEW GROUND OF REJECTION of claims 13-31 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b ). Section 4I.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 4I.50(b)
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