Ex Parte Bortoli

Patent Trial and Appeal Board

Mar 20, 2017

13008203 (P.T.A.B. Mar. 20, 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.
13/008,203 01/18/2011 Stephen Michael Bortoli PA-16352US;
67036-412PUS1
8319
26096 7590 03/22/2017
TART SON OASKFY fr OT DS P C EXAMINER
400 WEST MAPLE ROAD
SUITE 350
CHRISTENSEN, DANIELLE M
BIRMINGHAM, MI 48009 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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):
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN MICHAEL BORTOLI
Appeal 2015-005701
Application 13/008,203
Technology Center 3700
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1—
16. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a spiral bevel gear set for a ram air turbine.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A gear set for a ram air turbine, the gear set comprising:
a ring gear supported on a drive shaft driven by a turbine;
a pinion gear driven by the ring gear, the pinion gear
driving a pinion shaft, wherein each of the ring gear and the
pinion gear include a diametrical pitch and a face width with a
Appeal 2015-005701
Application 13/008,203
ratio between the diametrical pitch and the face width for both
the ring gear and the pinion gear being within a range between
11.48 and 11.85.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stone US 3,942,387 Mar. 9, 1976
Cohen US 4,742,976 May 10, 1988
REJECTIONS
Claims 1—7, 9-13, and 161 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Cohen.
Claims 8, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cohen and Stone.
OPINION
Regarding claims 1, 9, and 13 the Examiner finds that Cohen
discloses a ram turbine assembly including several of the ring and pinion
gear limitations set forth in those claims. See Final Act. 3, 9—10, 13.
However, for each of claims 1, 9, and 13, the Examiner finds that Cohen
fails to disclose “a ratio between the diametrical pitch and the face width for
both the ring gear and the pinion gear being within a range between 11.48
and 11.85.” Id. at 3, 10, 12.
According to the Examiner,
Since the ratios claimed by the Appellant are dependent upon
parameters such as gear size and number of teeth, and it would
have been obvious to one having ordinary skill in the art to select
1 The final office action inadvertently included claim 15 instead of claim 16.
2
Appeal 2015-005701
Application 13/008,203
the size of the gears and number gear teeth in order to optimize
the performance of the gear set, as a result the optimal values for
the claimed ratios would also be selected.
Ans. 5.
Appellant contends that: “support of a prima facia [sic] case of
obviousness based on optimization of a known features [szc] or result
effective variable requires first that the variable be recognized in the prior
art” (citing MPEP § 2144.05; In re Antonie, 559 F.2d 618, 620 (CCPA
1977); and In re Yates, 663 F.2d 1054, 1057 (CCPA 1981)).” App. Br. 6;
see also Reply Br. 2—3. Appellant contends the Examiner’s explanation of
the claimed relationship, without recognition of the relationship in the prior
art, is insufficient to meet this burden. App. Br. 3.
Appellant concludes:
In this instance, the Examiner [sic] argument is essentially that
because it is know [sic] that a ratio between a number of teeth in
a gear set provides a desired gear ratio, that therefore any
parameter related to defining a gear ratio would simply be within
skill in the art. Such an argument is an overly broad assertion
that is certainly not supported by Cohen and any of the other cited
prior art.
Reply Br. 3.
The claimed ratio specifically hinges on the relationship between the
diametrical pitch and the face width for both the ring gear and the pinion
gear. Cohen is silent regarding any relationships between the diametrical
pitch and the face width for the ring gear and pinion gears. Indeed, the
Examiner acknowledges that Cohen fails to explicitly disclose diametrical
pitch (Ans. 3), the face width of the gears {id. at 4), and a ratio therebetween
(id. at 2). The Examiner offers generalized explanations of gear ratio and
pitch diameter (which the Examiner acknowledges is not the same as
diametrical pitch) at pages 3^4 of the Examiner’s Answer. From this, the
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Appeal 2015-005701
Application 13/008,203
Examiner concludes: “Since the diametrical pitch is dependent on the
number of gear teeth and the pitch diameter (which is dependent on the
number of teeth and the size of the gear), the optimal diametrical pitch
would be selected as a result of selecting the optimal gear ratio for efficient
operation.” Id. at 4. However, first, the Examiner does not demonstrate
with evidence or explanation why any particular diametrical pitch would
derive from optimizing the gear ratio. Second, even taking into account that
diametrical pitch is indirectly dependent on the selected gear ratio, there is
no evidence to establish one would fix face width while optimizing the gear
ratio. The Examiner has not established with evidence or reasoning why it
would have been obvious to perform an optimization on the particular ratio
recited in the claims: “between the diametrical pitch and the face width.” As
rejections cannot be sustained based on conclusory statements alone, we
cannot sustain the rejections on the basis set forth by the Examiner.
DECISION
The Examiner’s rejections of claims 1—16 are reversed.
REVERSED
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