Ex Parte Fahrer et al

Board of Patent Appeals and Interferences

May 30, 2008

10319303 (B.P.A.I. May. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SIEGFRIED FAHRER,
INGO FAULSTICH, and KLAUS PEIFFER
____________

Appeal 2008-0103
Application 10/319,303
Technology Center 3700
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Decided: May 30, 2008
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Before TERRY J. OWENS, JENNIFER D. BAHR, and
BIBHU R. MOHANTY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Siegfried Fahrer et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1 through 8. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

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THE INVENTION
The Appellants’ invention is directed towards a method of machining
a cylindrical gear having an axis of rotation (D) and a gear guiding axis (F)
(Spec. 4, ¶ 16 and fig. 2). The gear is machined on a gear processing
machine having axes (X, Y, Z, A, B, and C) and a tool (O) (Spec 3, ¶¶ 14-15
and fig. 1). The machining process includes positioning the gear on the gear
processing machine, evaluating the gear to establish the gear guiding axis
(F), determining the position of the gear guiding axis (F) relative to the axis
of rotation (D) of the gear on the gear processing machine, and machining
the gear with respect to the gear guiding axis (F) by displacing the tool (O)
in the direction of the gear guiding axis (F) (Spec. 2, ¶ 5).
Claim 1 is representative of the claimed invention and reads as
follows:
1. A method of machining a cylindrical gear with internal or
external gearing on a gear processing machine having axes and
a tool, said gear having a face width, said method comprising:
positioning said gear on said gear processing machine, said gear
having an axis of rotation (D),
evaluating said gear to establish a gear guiding axis (F),
determining the position of the gear guiding axis (F) relative to
the axis of rotation (D), and,
machining said gearing by displacing the tool in the direction of
the gear guiding axis (F).

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Faulstich US 4,954,027 Sep. 4, 1990
Faulstich US 5,765,974 Jun. 16, 1998
Faulstich JP 06-315825 A Nov. 15, 1994

The following rejections are before us for review:
Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by
Faulstich (JP 06-315825 A) (hereafter “Faulstich (JP ‘825)” )1.
Claims 3-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Faulstich (JP ‘825).
Claims 2 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Faulstich (JP ‘825) in view of Faulstich (US 4,954,027)
(hereafter “Faulstich (US ‘027)”).
The Examiner provides reasoning in support of the rejections in the
Answer (mailed December 14, 2005). The Appellants present opposing
arguments in the Appeal Brief (filed November 17, 2005). A Reply Brief
has not been filed.

1 The Appellants state that Faulstich (JP ‘825) corresponds to Faulstich (US
5,765,974) (hereafter “Faulstich (US ‘974)”) (Br. 9), and the Examiner
appears to stipulate that this is the case (Ans. 3). Accordingly, we derive our
understanding of Faulstich (JP ‘825) from Faulstich (US ‘974). Throughout
this decision we will refer to Faulstich (US ‘974) when addressing the
disclosure of Faulstich (JP ‘825).

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OPINION
The anticipation rejection based on Faulstich (JP ‘825)
Faulstich (JP ‘825) discloses a process for machining tooth flanks of a
workpiece 2 (gear) having a workpiece axis (axis of rotation) with a machine
carrying a tool O having a tool axis (col. 9, ll. 51-54 and fig. 6 of Faulstich
(US ‘974)). The tool axis is the axis of rotation of the tool O, which is
perpendicular to axis 11 (col. 9, ll. 63-65 and fig. 6 of Faulstich (US ‘974)).
The tool O is positioned relative to the workpiece by setting a center
distance (a) (the distance between the tool axis and the workpiece axis), a
tool eccentricity (e) (the distance between the center of the tool and the
crossing point of the axes of the tool and the workpiece), and a swivel angle
(η) (90O minus the crossing angle of the axes of the tool and the workpiece)
(col. 10, ll. 26-37 and fig. 6 of Faulstich (US ‘974)). The profile of the tooth
flanks is machined by adjusting one or more of the center distance (a), the
tool eccentricity (e), and the swivel angle (η) while moving an axial slide 8
in the z-direction (parallel to the workpiece axis) (col. 4, ll. 60-63 and fig. 6
of Faulstich (US ‘974)).
The Appellants argue that Faulstich (JP ‘825) does not teach the
limitation of “evaluating said gear to establish a gear guiding axis (F)” (Br.
10). According to the Appellants, Faulstich (JP ‘825) discloses machine
movement about the axes of the machine, rather than “…different axes
(gearing axis and guiding axis)” of the workpiece (Br. 9). Additionally, the
Appellants argue that Faulstich (JP ‘825) does not disclose the process step
of “determining the position of the gear guiding axis (F) relative to the axis
of rotation (D),” as required by claim 1 (Br. 11).
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In response, the Examiner contends that because the Appellants have
not placed any limitations on the step of “evaluating” the gear, the gear
guiding axis (F) is “any axis on the workpiece [toward which] the tool is
displaced [] during machining” (Ans. 8). Furthermore, the Examiner takes
the position that the language of claim 1 is broad enough as to cover the
situation where the gear guiding axis (F) coincides with the axis of rotation
(D) (Ans. 9-11). The Examiner then rationalizes that because the gear
guiding axis (F) coincides with the axis of rotation (D), and the gear guiding
axis (F) is “the axis that the tool is displaced towards,” the gear guiding axis
(F) is the axis of rotation of the workpiece (D) (Ans. 11).
In light of the contentions of the Examiner and the Appellants, the
issue presented in the appeal of the rejection of claim 1 is whether Faulstich
(JP ‘825) discloses evaluating the gear to establish the gear guiding axis (F)
of the workpiece and determining the position of the gear guiding axis (F) of
the workpiece relative to the axis of rotation (D). We reach the conclusion
that it does not.
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631, 484 U.S. 827 (1987).
We find the Examiner’s interpretation of the gear guiding axis as an
“axis [that] is anywhere on the workpiece that the tool approaches for
machining” (underlining added) to be overly broad. When construing claim
terminology in the United States Patent and Trademark Office, claims are to
be given their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
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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). The Appellants have
defined the gear guiding axis to be the “subsequent axis of rotation [of the
gear] in the gearbox” (Spec. 1, ¶ 2). Claim 1 specifically refers to two axes
of the gear, the axis of rotation (D) and the gear guiding axis (F). Although
Faulstich (JP ‘825) discloses a workpiece axis (axis of rotation), we could
not find, and the Examiner has not satisfactorily explained, which axis of the
workpiece in Faulstich (JP ‘825) constitutes the gear guiding axis, as
required by claim 1. Simply put, we do not find that Faulstich (JP ‘825)
discloses evaluating the gear to establish a gear guiding axis, as required by
claim 1.
Furthermore, although we agree with the Examiner that the invention
recited in claim 1 encompasses the situation where the axis of rotation (D)
coincides with the gear guiding axis (F), we find that claim 1 nonetheless
requires a distinct step of determining the position of the two axes relative to
each other. While we appreciate the Examiner’s analysis of the situation
when the axis of rotation (D) coincides with the gear guiding axis (F) (Ans.
11-13), we find Faulstich (JP ‘825) lacking because even in such a situation
Faulstich (JP ‘825) does not teach the specific step of determining the
position of the gear guiding axis relative to the axis of rotation. The
rejection of claim 1 as anticipated by Faulstich (JP ‘825) thus cannot be
sustained.

The obviousness rejection based on Faulstich (JP ‘825)
With regard to the rejection of claims 3 through 7 under 35 U.S.C.
§ 103(a) as unpatentable over Faulstich (JP ‘825), it is noted that claims 3
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through 7 depend from independent claim 1, and as such include all its
limitations. We find the Examiner’s reliance on common knowledge in the
art does not make up for the deficiency in Faulstich (JP ‘825) as discussed
above. Therefore, the rejection of claims 3 through 7 under 35 U.S.C.
§ 103(a) as unpatentable over Faulstich (JP ‘825) also cannot be sustained.

The obviousness rejection based on Faulstich (JP ‘825)
in view of Faulstich (US ‘027)
With regard to the rejection of claims 2 and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Faulstich (JP ‘825) in view of Faulstich (US
‘027), it is noted that claims 2 and 8 depend from independent claim 1, and
as such include all its limitations. We find that the application of Faulstich
(US ‘027) does not make up for the deficiency in Faulstich (JP ‘825) as
discussed above. Hence, the rejections of claims 2 and 8 under 35 U.S.C.
103(a) as unpatentable over Faulstich (JP ‘825) in view of Faulstich (US
‘027) also cannot be sustained.

DECISION
The decision of the Examiner to reject claims 1 through 8 is reversed.

REVERSED

vsh

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ROBERT L. MCDOWELL
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