Ex Parte Boese et alDownload PDFPatent Trial and Appeal BoardJan 31, 201814381066 (P.T.A.B. Jan. 31, 2018) Copy Citation 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. 14/381,066 08/26/2014 Olaf Boese 619.1101 4288 23280 7590 02/02/2018 Davidson, Davidson & Kappel, LLC 589 8th Avenue 16th Floor New York, NY 10018 EXAMINER KESSLER, MICHAEL A ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): ddk @ ddkpatent .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLAF BOESE and HOLGER BRENNER Appeal 2017-003205 Application 14/3 81,0661 Technology Center 3700 Before: CHARLES N. GREENHUT, PAUL J. KORNICZKY, and BRENT M. DOUGAL, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s Final rejection of claims 11—21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Schaeffler Technologies AG & Co. KG as the real party in interest. App. Br. 2. Appeal 2017-003205 Application 14/381,066 CLAIMED SUBJECT MATTER The claims are directed to a camshaft adjuster and stator cover unit for automatic adjustment of a locking device. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A camshaft adjuster comprising: a stator cover unit, the stator cover unit comprising: an annular gear for receiving a torque; a stator, designed as a housing, being mounted on the annular gear; and a locking cover, separate from the stator, the locking cover being mounted torsion-proof on the stator, the stator and the locking cover being rotatably fixedly secured in the mounted position, at least during assembly, via a projection on one of the stator and the locking cover, the projection engaging with a form fit a recess on the other of the stator and the locking cover, the locking cover having an opening for receiving an axially movable piston, the form fit setting a locking clearance for the opening. REJECTIONS Claims 11—17 and 19-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Palesch et al. (DE 103 56 908 Al, pub. July 7, 2005, hereinafter “Palesch”) and Wagner et al. (US 2012/0291735 Al; pub. Nov. 22, 2012, hereinafter “Wagner”). Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Palesch, Wagner, and Boese (DE 10 2010 008 005 Al; pub. Aug. 18, 2011). 2 Appeal 2017-003205 Application 14/381,066 Claim 21 is rejected under U.S.C. § 103(a) as being unpatentable over Palesch, Wagner, and Lichti et al. (US 6,276,321 Bl; iss. Aug. 21, 2001, hereinafter “Lichti”). OPINION Claims 11—17, 19, and 21 are argued as a group (App. Br. 3—5) for which we select claim 11 as representative. 37 C.F.R. § 41.37(c)(l)(iv). Claim 18 is argued based on dependency from claim 11. App. Br. 5. The Examiner essentially finds that Palesch “appear[s]” to disclose everything recited in claim 11, but acknowledges the arrangement of a locking piston cooperating with an opening on the locking cover, though alluded to in Palesch’s figures (Final Act. 3 (annotating Palesch Fig. 3)) is not clearly described in Palesch. Appellants contend “[t]his does not meet the standard for a rejection.” App. Br. 4. Appellants are incorrect. First, the prior art is relevant for all it discloses which includes anything fairly taught in the figures as it would be understood by one skilled even if there is no express discussion of that illustrated subject matter. See, e.g., In re Meng, 492 F.2d 843 (CCPA 1974).2 Second, this is particularly true where, as here, the aspect in question is something Appellants’ own Specification discloses is old and well-known. See Spec, paras. 6—7. The Examiner was not incorrect to focus on a reference concerned primarily with what Appellants regard as their contribution to the art, the form fitting facilitating assembly. Nor was the Examiner incorrect to point out that the structure Palesch improves upon appears to be the same as that Appellants sought to improve 2 See also In re Aslanian, 590 F.2d 911 (CCPA 1979); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). 3 Appeal 2017-003205 Application 14/381,066 upon. Third, the Examiner acknowledged the possible shortcoming in Palesch and cited Wagner to account for any deficiency in this regard. Final Act. 3. Despite arguing against the Examiner’s allegedly speculative reliance on Palesch for the locking cover having an opening and locking piston, Appellants argue against the motivation to combine Palesch with Wagner because “Palesch already appears to provide a locking cover.” App. Br. 4. However, Wagner’s cited teachings do not modify Palesch so much as they describe a mechanism for achieving what already appears to be present in Palesch—the functional capability to adjust cam timing. Final Act. 3; Ans. 3. Appellants’ argument concerning increased cost or complexity resulting from implementing Wagner’s teachings appears to stem from greater detail in Wagner’s disclosure as opposed to actual changes to cost and complexity because Palesch does not detail a structural alternative that can form the basis for such a comparison. Appellants acknowledge the cited portions of Wagner relate to the locking, via the locking cover, of the rotor to the stator, but argue Wagner lacks the recited form fit between the stator and cover. Reply. Br. 2. This is because Palesch was cited to demonstrate this aspect of the claimed subject matter was known in the art. Final Act. 3. Appellants further argue that “[n]o reference teaches or shows ‘the locking cover having an opening for receiving an axially movable piston, the form fit setting a locking clearance for the opening.’” Reply. Br. 2. This is only true because no single reference was relied on for this feature. As the Examiner correctly points out, Palesch discloses the form fit and possibly the opening, and Wagner discloses the opening that cooperates with the 4 Appeal 2017-003205 Application 14/381,066 piston. It is the combined teachings that yield a device containing all the structural limitations of claim 11. Once the Examiner has established that the obviousness of the claimed structure, if Appellants wish to distinguish the claimed structure by the recitation of a particular function, it is Appellants burden to inform the PTO as to how or why that recitation results in a structural difference between the claimed subject matter and the prior art. MPEP § 2112. Here, the Examiner reasonably concludes that, once a locking cover is provided with the form fit arrangement of Palesch and the opening of Wagner, the form fit will “set[] a locking clearance for the opening.” Ans. 3. Appellants have not offered any arguments in rebuttal to explain why “setting a locking clearance for the opening” would not be achieved by the structure resulting from the Examiner’s proposed combination. Ans. 3; see In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F. 2d 1252, 1255 (CCPA 1077). Appellants have not even discussed the meaning of “setting a locking clearance for the opening.”3 3 Although we are able to decide this case based on the reasonableness of the Examiner’s belief that this function would be an inherent characteristic of a structural combination that would have been obvious, and the lack of any substantive rebuttal arguments on that point from Appellants, we note that the phrase “locking clearance,” while used in the Specification, is not clearly defined thereby, or anywhere else in the record before us. If the Examiner has not done so already, the Examiner may wish to consider whether this phrase complies with 35 U.S.C. § 112, second paragraph. See MPEP § 2173.03 (“The [Specification should ideally serve as a glossary to the claim terms so that the [EJxaminer and the public can clearly ascertain the meaning of the claim terms.”). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02. 5 Appeal 2017-003205 Application 14/381,066 For the foregoing reasons, we sustain the Examiner’s rejection of claim 11 and those claims argued therewith or based upon dependency therefrom. Appellants’ argument concerning claim 21, reproduced in its entirety below, is similar to that addressed above concerning the alleged lack of a motivation to “modify” Palesch: The motivation to combine in the rejection is simply inapplicable: Palesch already fixedly locks the cover to the stator so there is no need to “reduce a loss of energy” or have “a restorative mechanical biasing means” in Palesch since the pieces are locked. App. Br. 5. Again, Lichti is cited as a particular way to implement to Palesch and Wagner locks. Lichti incorporates a spring, which has the advantages expressly discussed, including overcoming retarding frictional bias of the camshaft. See Final Act. 8 (citing Lichti col. 1,1. 58—col. 2,1. 15); Ans. 13. Lock 26 was already present in the prior-art design Lichti sought to improve upon. See col. 2,1. 67—col. 3,1. 4 and Fig. 1. Thus, the existence of a locking arrangement in Palesch, as argued by Appellants, clearly does not render “inapplicable” the stated motivation to incorporate the torsional spring of Lichti. Accordingly, we also sustain the rejection of claim 21. DECISION The Examiner’s rejections are affirmed. 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 6 Copy with citationCopy as parenthetical citation