11188098 (B.P.A.I. Jan. 18, 2011)

Ex Parte Conlon

Board of Patent Appeals and InterferencesJan 18, 2011

11188098 (B.P.A.I. Jan. 18, 2011)

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. 11/188,098 07/22/2005 Brendan M. Conlon GP-305520-PTE-CD 8683 72823 7590 01/18/2011 Quinn Law Group, PLLC 39555 Orchard Hill Place Suite 520 Novi, MI 48375 EXAMINER KNIGHT, DEREK DOUGLAS ART UNIT PAPER NUMBER 3655 MAIL DATE DELIVERY MODE 01/18/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte BRENDAN M. CONLON ____________________ Appeal 2009-009023 Application 11/188,098 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-009023 Application 11/188,098 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 17-20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a dual mode electronically variable transmission with input split reverse mode. Claim 17, reproduced below, is illustrative of the claimed subject matter: 17. An electrically variable transmission comprising: a first planetary gear set having a first, a second and a third member and being representable by a first lever of a lever diagram having a first, a second and a third node corresponding with said first, second and third members; a second and a third planetary gear set each having a first, a second and a third member, two of said members of said secondary planetary gear set being continuously connected with two of said members of said third planetary gear set, said interconnected second and third planetary gear sets being representable by a second lever of said lever diagram having a fourth, a fifth, a sixth and a seventh node corresponding with said members of said second and third planetary gear sets, said first node being continuously connected with said fourth node; an input member continuously connected with said second node; a first motor/generator continuously connected with said third node and a second motor/generator continuously connected with said fourth node; a first torque-transmitting mechanism operable for selectively connecting said first node with said fifth node; a second torque-transmitting mechanism operable for selectively connecting said fifth node with a stationary member; an output member continuously connected with said sixth node; and Appeal 2009-009023 Application 11/188,098 3 a third torque-transmitting mechanism operable for selectively connecting said seventh node with said stationary member; wherein said torque-transmitting mechanisms are engageable alone or in pairs to provide an input split, electrically variable reverse mode and an electric forward cruise mode. REFERENCES Haka Tomita Holmes US 6,663,528 B1 US 7,219,757 B2 US 7,256,510 B2 Dec. 16, 2003 May 22, 2007 Aug. 14, 2007 Howard L. Benford & Maurice B. Leising, The Lever Analogy: A New Tool in Transmission Analysis, SAE TECHNICAL PAPER SERIES (1981) (hereinafter “Benford”). REJECTION Claims 17-20 stand rejected under 35 U.S.C. § 112 second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Ans. 3. OPINION The Examiner’s conclusion of indefiniteness is based upon the contention that since a “lever diagram” is not a physical structure, claim 17 includes “a means for representing the invention” and does not clearly and specifically claim the invention itself—an electrically variable transmission. Ans. 3. Appellant argues that the Examiner erred in rejecting claims 17-20 because the “lever diagram” and the claimed first and second “levers” each containing “nodes,” describe a physical structure and the scope of the claim would be understood by one of ordinary skill in the art. App. Br. 16. Appeal 2009-009023 Application 11/188,098 4 The test for definiteness under 35 U.S.C. § 112, second paragraph is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). With regard to the second paragraph requirement for “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention,” it has been stated that the “essence of that requirement is that the language of the claims must make it clear what subject matter they encompass.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). Claim 17 recites inter alia “a first planetary gear set . . . representable by a first lever of a lever diagram.” Appellant states, “[t]he electrically variable transmission 14 of Figure 1 is shown in lever diagram form.” App. Br. 6. The subject matter of claim 17 includes actual planetary gear sets. A recitation that members of those gear sets are representable by nodes of a lever diagram further describes the gear sets themselves. Such a recitation is not an attempt to claim a means for representing the gear sets as the Examiner suggests. See Ans. 3. Benford establishes that lever diagrams are commonly utilized by those of ordinary skill in the art to “further specify the characteristics of the particular gear set.” App. Br. 16. Thus, one of ordinary skill in the art would have understood the scope of claim 17. See Hammack, 427 F.2d at 1382. We therefore find that the Examiner erred in determining that claim 17 is indefinite because it utilizes “lever diagram” terminology to describe the invention. Thus, we cannot sustain the Examiner’s rejection of claim 17, along with dependent claims 18-20, under 35 U.S.C. § 112, second paragraph being indefinite. Appeal 2009-009023 Application 11/188,098 5 DECISION For the above reasons, the Examiner’s rejection of claims 17-20 is reversed. REVERSED nlk Quinn Law Group, PLLC 39555 Orchard Hill Place Suite 520 Novi MI 48375