Ex Parte Frait et al

Patent Trial and Appeal Board

Aug 18, 2015

12838574 (P.T.A.B. Aug. 18, 2015)

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.
12/838,574 07/19/2010 Steven A. Frait 83140633 6597
28866 7590 08/18/2015
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
BUSE, MARK KENNETH
ART UNIT PAPER NUMBER
3654
MAIL DATE DELIVERY MODE
08/18/2015 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 STEVEN A. FRAIT, LAURENCE A. DEUTSCH, and
SENTHIL PRABHU
____________

Appeal 2013-006401
Application 12/838,574
Technology Center 3600
____________

Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–20. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).
We REVERSE.

1 “Ford Motor Company . . . is the real party in interest.” (Appeal Br. 1.)
Appeal 2013-006401
Application 12/838,574

2
STATEMENT OF THE CASE
The Appellants’ invention relates to “an automatic transmission for
motor vehicle” and “an auxiliary oil pump.” (Spec. 1, lines 7–8.)
Illustrative Claim2
1. An assembly for an automotive vehicle transmission,
comprising:
a case containing a fluid sump and valve body;
a pump supported on the case and located external to the
case;
a passage formed in the case for carrying fluid from the
valve body to a transmission control element;
a second passage formed in the case for carrying fluid from
the oil sump to the pump.
Rejections3
The Examiner rejects claims 1, 2, 4–6, 8–12, 14–16, and 18–20 under
35 U.S.C. § 102(b) as anticipated by Eschenbeck (US 2009/0057062 A1,
published Mar. 5, 2009). (Final Act. 2.)
The Examiner rejects claims 3, 7, 13, and 17 under 35 U.S.C. § 103(a)
as unpatentable over Eschenbeck. (Id. at 7.)

ANALYSIS
Claims 1, 8, and 15 are the independent claims on appeal, with the rest
of the appealed claims (i.e., claims 1–7, 9–14, and 16–20) depending

2 This illustrative claim is quoted from the Claim Appendix (“Claim App.”)
set forth on pages 19–21 of the Appeal Brief.
3 The Examiner’s rejection of claim 14 under 35 U.S.C. § 112, second
paragraph (see Final Act. 2), is considered withdrawn in view of the entry of
an amendment to claim 14 (see Advisory Act.).

Appeal 2013-006401
Application 12/838,574

3
therefrom. (Claims App.) The claims on appeal are directed to “[a]n
assembly for an automatic vehicle transmission.” (Id.)
Claims 1–7
Independent claim 1 requires the assembly to comprise “a case
containing a fluid sump.” (Claims App.) The Examiner finds that
Eschenbeck discloses a housing 3 containing a fluid sump and points to
paragraph 32 in Eschenbeck to support this finding. (See Final Act. 3.) The
Examiner’s findings regarding other limitations in claims 1–7 are premised
upon Eschenbeck’s housing 3 being considered the claimed “case.” (Id. at
3–4; see also Answer 4–5.)
We are persuaded by the Appellants’ arguments that the Examiner
fails to establish a prima facie case of anticipation with respect to
independent claim 1. (See Appeal Br. 7.) Specifically, we are persuaded
because Eschenbeck’s disclosure evidences the Appellants’ position that
housing 3 does not contain a fluid sump. (See Reply Br. 2.)
The Appellants assert, and we agree, that Eschenbeck discloses both a
“bell housing 3” and a “transmission housing 5.” (Reply Br. 2; see also
Eschenbeck ¶¶ 14, 15, 25, 30, 34.) We also agree that the paragraph cited by
the Examiner for support introduces “an oil sump of the transmission
housing.” (Id., see also Eschenbeck ¶ 32, emphasis added.) In other words,
Eschenbeck discloses that its transmission housing 5, not its bell housing 3,
contains a fluid sump. (See Reply Br. 2.)
As such, the Examiner does not sufficiently support a finding that
Eschenbeck’s bell housing 3 is a case “containing a fluid sump” as required
by independent claim 1. The Examiner’s findings and determinations with
Appeal 2013-006401
Application 12/838,574

4
respect to dependent claims 2–7 do not compensate for this insufficiency, so
they stand with independent claim 1.
For the above reasons, we do not sustain the Examiner’s rejections of
claims 1–7.
Claims 8–20
Independent claim 8 requires the assembly to comprise a “passage
located at an elevation substantially equal to an elevation of [a] sump.”
(Claims App.) Independent claim 15 likewise requires a passage at this
elevation. (Id.) The Examiner “interprets” from Eschenbeck’s Figure 2 that
“a sump of the transmission housing,” as described in paragraph 32, is
substantially equal to the elevation of a passage 8. (Answer 7.)
We are persuaded by the Appellants’ arguments that the Examiner
fails to establish a prima facie case of anticipation with respect to
independent claims 8 and 15. (See Appeal Br. 9, 12.) We are persuaded
because the Examiner’s findings do not allow us to evaluate whether a
passage is located at an elevation “substantially equal” to Eschenbeck’s
sump.
The Appellants argue that “[t]he Examiner makes no attempt to point
out the location of Eschenbeck’s sump or its elevation relative to the
elevation of the [] passage.” (Appeal Br. 9, 12.) We too find no explanation
in the record as to how the Examiner “interprets” Figure 2. We also find no
discussion as to what this drawing reasonably discloses to one of ordinary
skill in the art. As for the paragraph in Eschenbeck cited by the Examiner
for support, we find it likewise provides no indication of the location and/or
elevation of the sump. (See Eschenbeck ¶ 32.)
Appeal 2013-006401
Application 12/838,574

5
As such, the Examiner does not sufficiently support a finding that
Eschenbeck has a passage “located at an elevation substantially equal to an
elevation of [a] sump.” The Examiner’s findings and determinations with
respect to dependent claims 9–14 and 16–20 do not compensate for this
insufficiency, so they stand with independent claims 8 and 15.
For the above reasons, we do not sustain the Examiner’s rejections of
claims 8–20.

DECISION
We REVERSE the Examiner’s rejections of claims 1–20.

REVERSED
mls