Ex Parte Choi et al

Patent Trial and Appeal Board

May 31, 2018

13822759 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/822,759 03/13/2013
105857 7590 06/04/2018
NOVICK, KIM & LEE, PLLC
3251 Old Lee Highway, Suite 404
Fairfax, VA 22030
FIRST NAMED INVENTOR
Young Jin Choi
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.
PK2150845 9663
EXAMINER
KNIGHT, DEREK DOUGLAS
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
docket@nkllaw.com
skim@nkllaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNG JIN CHOI and HO YUL LEE 1
Appeal2017-007965
Application 13/822,759
Technology Center 3600
Before: DANIELS. SONG, BRANDON J. WARNER, and
ANTHONY KNIGHT, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the Examiner's
Final Office Action (hereinafter "Final Act.") rejecting claims 1--4, 7, 8, and
21-25 in the present application (Br. 1). In addition to its Appeal Brief, the
Appellant relies on a Declaration of Mr. Luis M. Ortiz (hereinafter "Deel.").
We have jurisdiction under 35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 Collectively referred to as "Appellant" herein. The real party in interest is
Hycore Co. LTD. (Appeal Brief (hereinafter "Br.") 3).
Appeal2017-007965
Application 13/822,759
The claimed invention is directed to a planetary gear system (see
Abstract). Representative independent claim 1 reads as follows (Br. 15,
Claims App., emphasis added):
1. A gear system, comprising:
a first gear unit;
a second gear unit that rotates to mesh with the first gear
unit;
a third gear unit that rotates to mesh with at least one of
the first gear unit and the second gear unit; and
a driving source that generates a driving force,
wherein two gear units of the first to third gear units serve
as input parts to which driving forces from the driving source are
transmitted, respectively, and the rest one gear unit serves as an
output part from which a resultant force obtained by combining
the driving forces is output,
wherein the first gear unit includes a sun gear,
the second gear unit includes a planetary gear and a carrier,
and
the third gear unit includes a ring gear, and
wherein the sun gear and the carrier serve as the input
parts, and the ring gear serves as the output part.
Independent claim 7, the only other independent claim on appeal, is
nearly identical to claim 1, except that its last limitation recites that "the ring
gear and the carrier serve as the input parts, and the sun gear serves as the
output part." (Br. 16-1 7, Claims App.). Thus, both independent claims 1
and 7 require the carrier to serve as an input part.
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Application 13/822,759
REJECTIONS
1. The Examiner rejects claims 3, 4, 22, and 23 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement
requirement (Final Act. 3).
2. The Examiner rejects claims 3, 4, 22, and 23 under 35 U.S.C.
§ 112, second paragraph, as being indefinite (Final Act. 3--4).
3. The Examiner rejects claims 1--4, 7, 8, and 21-27 under 35
U.S.C. § 102(b) as anticipated by Konig (US 7,108,625, iss. Sep. 19,
2006) (Final Act. 4).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential)).
Rejection 1
The Examiner rejects dependent claims 3, 4, 22, and 23 for failing to
comply with the enablement requirement (Final Act. 3). Dependent claims 3
and 22 recite that "the geared motors have different capacities from each
other or different reduction ratios from each other." (Br. 16, Claims App.).
The Examiner rejects this claim as not enabled by the Specification,
determining that "[i]t is not disclosed how a motor can have a reduction
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Application 13/822,759
ratio." (Final Act. 3). Claims 4 and 23 depend from claims 3 and 22,
respectively.
The Appellant does not submit any arguments in its Appeal Brief
directed to this rejection. Accordingly, the enablement rejection is
summarily affirmed. See MPEP § 1205.02 ("If a ground of rejection stated
by the examiner is not addressed in the appellant's brief, appellant has
waived any challenge to that ground of rejection and the Board may
summarily sustain it.").
Rejection 2
The Examiner also rejects dependent claims 3, 4, 22, and 23 as being
indefinite, determining that "[i]t is unclear how a motor can have a reduction
ratio" as recited in claims 3 and 22 (Final Act. 3). As to claims 4 and 23 that
recite "one of the geared motors has a low speed-high torque characteristic,
and the other has a high speed-low torque characteristic," the Examiner
determines that it is "unclear if the motors by themselves hold this
characteristic, or by using the motors with specific gears, this characteristic
comes about." (Final Act. 4).
The Appellant does not submit any arguments in its Appeal Brief
directed to this rejection. Accordingly, the indefiniteness rejection is also
summarily affirmed.
Rejection 3
The Examiner rejects each of the claims on appeal as anticipated by
Konig, thereby finding that Konig discloses each and every limitations of
these claims (Final Act. 4---6). Specifically, as to independent claim 1, the
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Application 13/822,759
Examiner finds that Konig discloses that "the sun gear and the carrier serve
as the input parts, and the ring gear serves as the output part (Col. 5 lines
26-35, carrier and sun as input, ring as output)." (Final Act. 5, citing
Konig). In addition, the Examiner also specifically finds that Konig
discloses that "the ring gear and the carrier serve as the input parts, and the
sun gear serves as the output part (Col. 5 lines 26-35, carrier and ring as
input, sun as output)." (Final Act. 6, citing Konig).
The Appellant disagrees with these findings, arguing that:
K[ o ]nig' s gear system is configured in such a way that the sun
gear (wheel work 10) and the ring gear (3) serve as the input
parts and the carrier (base plate 7) attached to the shaft (1)
serves as the output part. See K[o]nig col. 4, lines 1--46 and
FIGS. 1--4.
(Br. 10).
However, this argument is unpersuasive because it does not address
the Examiner's rejection, which is based on other disclosures within Konig
instead of the specific embodiment shown in Figures 1--4. As the Examiner
points out, Konig depicts "only one possible embodiment in the figures,
[but] K[ o ]nig discloses other embodiments within the text of the
[S]pecification. These alternative embodiments are disclosed at least in
column 5, lines 26-35." (Ans. 5). In that regard, the portion of Konig relied
upon by the Examiner for disclosing the carrier (i.e. base plate 7 /shaft 1)
being used for input as required by independent claims 1 and 7 states:
By way of a slight deviation from the embodiment represented
in FIGS. 1 to 4, it can also be provided that the shaft 1 is used
together with one of the drive paths (first or second)/or driving
and the other drive path as off-drive. It is important in this
case, however, that the shaft 1 is driven via a self-arresting
worm shaft, while no worm shaft is arranged in the drive path
(first or second) used for the off-drive, as this would block the
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Application 13/822,759
off-drive. The alternative design and operation variants can be
realized with both the first and the second drive path as off-
drive.
(Konig, col. 5, 11. 26-35, emphasis added).
Thus, the Examiner is correct in finding that Konig discloses an
embodiment in which shaft I/base plate 7 is utilized as input, together with
either ring gear 3 or sun gear IO/sun wheel 5.
The Appellant argues that "the Examiner distorted the factual
evidence of K[ o ]nig" (Br. 11) so as to misunderstand the quoted portion of
Konig, and that the "Examiner's interpretation that the off-drive means an
'output' is baseless and unreasonable based on the factual evidence." (Br.
13). In particular, the Appellant argues that:
the output shaft (1) ofK[o]nig is never used as a driving shaft,
but as a driven shaft that is an output shaft. In K[o]nig, the
term "off drive" means that the drive path is disengaged with
the driven shaft (1). For example, one of the first and second
drive paths may be off such that the shaft can be rotated by one
of the two drive paths. Alternatively, both of the drive paths
may be off but the driven shaft ( 1) may rotate by itself when it
is connected to a wheel of a running vehicle.
(Br. 11-12).
The Appellant further relies on the Declaration of Mr. Luis M. Ortiz,
paragraph 6, in support of the assertion that "[i]n K[o]nig, the term 'off
drive' means that the drive path is disengaged with the driven shaft (1 )" (Br.
11-12), so that "it means that one of the two paths may be used to drive the
shaft while the other one is not used to drive the shaft." (Br. 12).
The Appellant's argument is unpersuasive because it fails to consider
the disclosure of Konig as a whole. Konig discloses instances where a
particular drive path is not utilized to drive shaft 1 due to a failure, but does
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not utilize the term "off-drive" in such a context (see, e.g., Konig, col. 4, 1.
62---col. 5, 1. 25). More significantly, in addition to the above-reproduced
portion of Konig relied upon in the rejection, Konig utilizes the term "off-
drive" earlier in its disclosure. In particular, in describing the illustrated
embodiment of Figures 1--4 in which output is provided to shaft 1, Konig
states:
The off-drive onto the shaft 1 takes place in this case via the
base plate 7, developed as a star wheel, on which the axes 17 of
the planet pinions 2 are arranged, the ultimate outcome being a
rotational movement of the shaft 1.
(Konig, col. 4, 11. 48-52, emphasis added).
This passage is not consistent with the Appellant's asserted meaning
of "off-drive," whereas it is entirely consistent with "off-drive" meaning
"output." Thus, Konig's disclosure indicates that the Examiner is correct
that "off-drive" refers to the output of the disclosed apparatus (see Ans. 6). 2
As to the Declaration of Mr. Luis M. Ortiz, we observe that this
individual was the patent attorney who prosecuted Konig, but is not an
inventor of Konig (Deel. Ortiz ,r 1 ). The declaration does not establish the
extent of Mr. Ortiz's knowledge of the invention disclosed in Konig or the
level of involvement in preparing the Specification of Konig, which is based
on a PCT application. Thus, the declaration evidence is of little probative
value and can be given little weight. In addition, Mr. Ortiz's testimony with
respect to Konig, column 5, lines 26-35, that "'off-drive' means that the
drive path is disengaged with the driven shaft," is inconsistent with the
2 While supportive of the Examiner's position (Ans. 6), we find it
unnecessary to rely on the English translations of EP 13 141910 (i-f 21) or
W003044394 (pgs. 10-11) to establish that "off-drive" in Konig means
"output."
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actual usage of the term in Konig for the reasons discussed above.
Accordingly, the declaration evidence is also substantively unpersuasive.
Therefore, in view of the above considerations, the Examiner's
finding that Konig anticipates independent claims 1 and 7 is supported by a
preponderance of the evidence. The Appellant merely relies dependency on
claim 1 or claim 7 for patentability of rejected dependent claims 2--4, 8, and
21-24 (Br. 14 ). Thus, these dependent claims fall with claims 1 and 7.
CONCLUSIONS
1. The Examiner's enablement rejection of claims 3, 4, 22, and 23
is summarily affirmed.
2. The Examiner's indefiniteness rejection of claims 3, 4, 22, and
23 is summarily affirmed.
3. The Examiner's anticipation rejection of claims 1--4, 7, 8, and
21-27 is 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
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