Ex Parte Christ

Patent Trial and Appeal Board

Sep 18, 2012

10470684 (P.T.A.B. Sep. 18, 2012)

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.
10/470,684 07/29/2003 Michael Christ 12604/5 1052
26646 7590 09/18/2012
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
KRAUSE, JUSTIN MITCHELL
ART UNIT PAPER NUMBER
3658
MAIL DATE DELIVERY MODE
09/18/2012 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 MICHAEL CHRIST
____________

Appeal 2010-005928
Application 10/470,684
Technology Center 3600
____________

Before STEFAN STAICOVICI, JAMES P. CALVE, and
SCOTT A. DANIELS, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005928
Application 10/470,684

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STATEMENT OF THE CASE
Michael Christ (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 18-21,
23, 26, 27, 29, and 36 as unpatentable over Gingery (US Re 27,126, issued
Mar. 25, 1971) and Ohtomi (US 4,422,531, issued Dec. 27, 1983) and claims
24 and 25 as unpatentable over Gingery, Ohtomi, and Dye (US 5,366,422,
issued Nov. 22, 1994). Claims 1-17, 22, 28, and 35 have been canceled and
claims 30-34 have been withdrawn. We have jurisdiction over this appeal
under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to “a toothed piece for a geared motor.”
Spec. 1, ll. 2-3.
Claim 18 is illustrative of the claimed invention and reads as follows:
18. A toothed piece of a geared motor, including an electric motor
and a gear unit, comprising:
a first toothing arranged in a first axial region adapted for
connection to a motor shaft of the electric motor;
a second toothing arranged in a second axial region adapted to
mesh with a running toothing of a further toothed piece of the gear
unit; and
a pin arranged at a motor-side end of the toothed piece, the pin
configured to be inserted into a corresponding cut-out of the motor
shaft to center the toothed piece;
wherein the motor shaft includes a bore hole with an interior
having a driver toothing, the first toothing meshing with the driver
toothing.

SUMMARY OF DECISION
We REVERSE.
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Application 10/470,684

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ANALYSIS
Claims 18-21, 23, 26, 27, and 29
Independent claim 18 requires inter alia a motor shaft including “a
bore hole with an interior having a driver toothing” meshing with a “first
toothing.” App. Br., Claims Appendix.
The Examiner found that Gingery discloses a shaft member 18
including first toothing 20, second toothing 22, pin 19 configured to be
inserted into a corresponding cutout of a motor shaft 11 having a bore hole
25 with an interior having a driver toothing 26 that meshes with first
toothing 20. Ans. 3. See also, Gingery, col. 2, ll. 55-58 and fig. 1.
Appellant argues that although input shaft element 11 of Gingery
includes a bore containing a pilot bearing 12, “this bore does not have any
driver toothing,” as called for by independent claim 18. App. Br. 4.
In response, the Examiner takes the position that motor shaft 11 of
Gingery “is also deemed to include the elements of the flywheel, clutch and
pressure plate assemblies (see fig. 1), since when assembled, the assembly is
operable as a single, integrated entity which rotates together as a motor
shaft.” Ans. 3. See also, Ans. 5-6. Thus, according to the Examiner, motor
shaft 11 includes dual splined sleeve 23 that has bore hole 25 with splines 26
that mesh with first toothing 20. Ans. 3.
Appellant then argues that the Examiner’s position to include the
elements of the flywheel, clutch and pressure plate assemblies of Gingery as
part of motor shaft 11is “overly broad and untenable, since no person skilled
in the art would consider a clutch assembly that detachably couples an
engine output shaft to a further gear shaft to be part of the engine output
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Application 10/470,684

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shaft.” App. Br. 4. Hence, according to Appellant, dual splined sleeve 23,
having bore hole 25 with splines 26 that mesh with first toothing 20, “cannot
properly be considered to constitute a motor shaft” because they are “two
entirely separate components.” Reply Br. 1. We agree.
Although we appreciate the Examiner’s position that “the claims do
not preclude an interpretation of the ‘motor shaft’ as an assembly,” (Ans. 5)
nonetheless, claims are to be given their broadest reasonable interpretation
consistent with the specification, reading claim language in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In
this case, we agree with Appellant that a person of ordinary skill in the art
would not consider clutch assembly 10 of Gingery (including flywheel 13,
plates 16, 17, clutch members 30, 31, hub 32, and dual splined sleeve 23) to
be part of input shaft 11, as the Examiner proposes. An ordinary and
customary meaning of the term “clutch” is “[a] device for connecting one
driveshaft to another shaft or wheel.” DICTIONARY OF ENGINEERING TERMS
(2001) (Found at:
http://www.credoreference.com/entry/bhidet/clutch_in_mechanical_engineer
ing_and_manufacture, last visited Sep. 13, 2012). In Gingery, clutch
assembly 10 connects driveshaft 11 (input shaft) to shaft member 18. See
Gingery, fig. 1.
As such, we agree with Appellant that Gingery’s shaft element 11
constitutes a “motor shaft” as understood by a person of ordinary skill in the
art. Since Gingery’s shaft element 11 does not include a bore having
toothing, we agree with Appellant that Gingery fails to disclose a motor
shaft having “a bore hole with an interior having a driver toothing” meshing
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with a “first toothing,” as called for by independent claim 18. See App. Br.
4. The addition of Ohtomi does not remedy the deficiencies of Gingery as
discussed supra.
Thus, for the foregoing reasons, the rejection of independent claim 18,
and its dependent claims 19-21, 23, 26, 27, and 29 under 35 U.S.C. § 103(a)
as unpatentable over Gingery and Ohtomi cannot be sustained. See In re
Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).

Claim 36
Independent claim 36 requires inter alia “helix angles of the first
toothing and the second toothing are arranged so that . . . an axial force
generated by the running toothing and the second toothing are opposite to
reduce the resulting axial force.” App. Br., Claims Appendix.
The Examiner found that, “the limitation that the directions of the
helix forces being opposite to reduce the resulting axial force is a functional
limitation which is given limited patentable weight. See MPEP 2114.” Ans.
4.
We recognize that this is a functional limitation, and while features of
an apparatus may be recited either structurally or functionally, claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78
(Fed. Cir. 1997). “[A]pparatus claims cover what a device is, not what a
device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464,
1468 (Fed. Cir. 1990). Therefore, as long as the arrangement of the helix
angles of splined portion 20 (first toothing) and gear 22 (second toothing) of
Gingery’s shaft element 18 is capable of “reduc[ing] the resulting axial
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force,” the limitation of claim 36 is satisfied. However, in this case, the
Examiner has not provided any evidence of such capability. Thus, since the
Examiner has not made any findings with respect to the functional limitation
of independent claim 36, we cannot sustain the rejection of claim 36 under
35 U.S.C. § 103(a) as unpatentable over Gingery and Ohtomi.

Claims 24 and 25
With respect to the rejection of claims 24 and 25, the addition of Dye
does not remedy the deficiencies of the Gingery and Ohtomi as described
supra. Accordingly, the rejection of claims 24 and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Gingery, Ohtomi, and Dye likewise cannot be
sustained.

SUMMARY
The decision of the Examiner to reject claims 18-21, 23-27, 29, and
36 is reversed.

REVERSED

mls