Ex Parte Goleski

Patent Trial and Appeal Board

Jul 20, 2017

14100330 (P.T.A.B. Jul. 20, 2017)

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.
14/100,330 12/09/2013 Gregory Daniel Goleski 83393626 3075
28395 7590 07/24/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER HANNON, TIMOTHY
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
07/24/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY DANIEL GOLESKI
Appeal 2016-003847
Application 14/100,3301
Technology Center 3600
Before CARL W. WHITEHEAD JR., ADAM J. PYONIN, and
SHARON FENICK, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1—5 and 8—10.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Ford Global Technologies, LLC, a subsidiary of Ford Motor Co., is
identified as the real party in interest. See Appeal Brief 2.
2 Claims 7 and 15—19 are canceled, and claims 6 and 11—14 are withdrawn
from prosecution. See Amendment filed February 24, 2015; Final Action 2.
Appeal 2016-003847
Application 14/100,330
STATEMENT OF THE CASE
Introduction
The Application is directed to “the field of automatic transmissions
for motor vehicles.” Specification 11. Claims 1 and 8 are independent.
Claim 1 is reproduced below for reference:
1. A transmission comprising:
an input;
an output;
first, second, and third shafts;
a first gearing arrangement configured to fixedly impose a
linear speed relationship among the first shaft, the second shaft,
the output, and the third shaft;
a second gearing arrangement configured to alternately i)
hold the first shaft against rotation, ii) establish an underdrive
relationship between the input and the first shaft, and iii)
establish a reverse speed relationship between the input and the
first shaft;
a first shift element comprising a passive one-way-clutch
between a transmission housing and the second shaft and a dog
clutch configured to selectively couple the second shaft to the
transmission housing;
a second shift element configured to selectively coupled
the input to the second shaft; and
a third shift element configured to selectively couple the
input to the third shaft.
References and Rejections
The following is the prior art relied upon by the Examiner in rejecting
the claims on appeal:
Phillips
Iizuka (“Iizuka 1 ”)
Hart
Herbeth
Iizuka (“Iizuka 2”)
US 2009/0017971 A1
US 2010/0298086 A1
US 2012/0178579 A1
US 2012/0283064 A1
US 2013/0244826 A1
Jan. 15,2009
Nov. 25,2010
July 12, 2012
Nov. 8, 2012
Sept. 19,2013
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Application 14/100,330
Rl. Claims 1—5 and 8—10 stand rejected under 35 U.S.C. § 112(b) for
being incomplete for omitting essential structural cooperative relationships
of elements. Final Action 2.
R2. Claims 1—4 and 8—10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Phillips, Iizuka 1, and Herbeth. Final Action 4.
R3. Claims 1—4 and 8—10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Phillips, and Iizuka 2. Final Action 9.
R4. Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over: (1) Phillips, Iizuka 1, Herbeth, and Hart, and (2) Phillips,
Iizuka 2, and Hart. Final Action 14.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Any arguments Appellant could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv)
(2012). We are not persuaded the Examiner erred; we adopt the Examiner’s
findings and conclusions as our own, and we add the following primarily for
emphasis.
A. Rl: Essential Structural Cooperative Relationships
The Examiner finds the claims are incomplete, for reciting “a gearing
arrangement that is simply configured to impose a linear speed relationship
among shafts, [so that] it becomes unclear how everything relates to each
other.” Final Action 3. The Examiner recommends replacing the recited
term “among” with “in the order of,” because “‘among’ does not imply
connections .... [and] is too ambiguous to have any meaningful definition
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Application 14/100,330
to the structural relationship of the shafts.” Answer 15. The Examiner finds
that, in contrast, by reciting ‘“in the order of, the gearing arrangement must
be directly connected to these shafts to impose the linear speed relationship,
allowing enough necessary structural connections for the claim to be
complete.” Id. at 16.
Appellant argues the Examiner’s § 112 rejection is in error, because
“[i]t is not necessary for the claim to indicate how the first gearing
arrangement is configured to impose the specified speed relationship,”
particularly given that “Applicant clearly defines linear speed relationship in
paragraph [0010] as something that may exist among an ordered list of
shafts.” Appeal Brief 4.
We are persuaded by Appellant’s arguments. Claim 1 recites “a first
gearing arrangement configured to fixedly impose a linear speed relationship
among the first shaft, the second shaft, the output, and the third shaft.” We
agree with Appellant that the Examiner has not shown one of ordinary skill
would find claim 1 fails to particularly point out and distinctly claim the
invention. Rather, we find claim 1 recites a list of shafts (“first shaft, the
second shaft, the output, and the third shaft”), as described in the
Specification with respect to a linear speed relationship. See Specification
10 (“[a] linear speed relationship exists among an ordered list of shafts”).
Independent claim 8 and dependent claim 3 each similarly recite such a list
of shafts. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112(b)
rejection of these claims. See Final Action 3.
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Application 14/100,330
B. R2: Phillips, Iizuka 1, and Herbeth
Appellant argues the Examiner’s rejection of independent claims 1
and 8 is in error, because the Examiner ignores both “the teaching in Iizuka
1 that dog clutches are only applicable when the step size is small,” and “the
teaching in Herbeth regarding a disadvantage of using a dog clutch and the
need to overcome this disadvantage. The Examiner does not demonstrate
that the method of overcoming this disadvantage is applicable to the
kinematic arrangement described by other claim limitations.” Reply Brief
2—3; see also Appeal Brief 6.
We are not persuaded the Examiner erred. Iizuka 1 discloses the
benefits of a smooth gear change where the torque difference is “relatively
small,” but does not discourage investigation into using dog clutches in other
situations. See Iizuka 1 176. Thus, we do not find Iizuka 1 teaches away
from using a dog clutch. Contra Appeal Brief 6; see DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away, however, if it merely expresses a general
preference for an alternative invention but does not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.”) (citations
omitted).
Nor are we persuaded Examiner erred in citing to Herbeth for
teaching a dog clutch as claimed. See Final Action 8—9; Herbeth || 6, 42,
60. Rather, we agree with the Examiner that “[sjwitching one kind of clutch
element for another is a practice well known in the art” as taught by Herbeth.
Answer 17—18; Herbeth || 42, 60. We find that Herbeth does not teach
away from the combination as found by the Examiner, nor has Appellant
shown the combination would not function as described by the Examiner.
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See Appeal Brief 6—7. Further, we find the Examiner’s analysis constituted
articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness. Final Action 8, 9, 15; Answer 17—18. In
contrast, Appellant fails to provide sufficient evidence or reasoning to
persuade us that modifying Phillips’ transmission, to include the one-way
clutch as taught by Iizuka 1 and a dog clutch as taught by Herbeth, yields
anything other than predictable results. See Final Action 9; KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).
Accordingly, we are not persuaded the Examiner erred in finding
independent claims 1 and 8 to be obvious in view of Philips, Iizuka 1, and
Herbeth.
C. R3: Phillips and Iizuka 2
Appellant argues the Examiner’s rejection of independent claims 1
and 8 is in error, because Iizuka 2 first discusses the removal of the one-way
clutch before the relied-upon teaching, and “[t]he transition ‘[sjtill
furthermore,’ [preceding the relied-upon teaching] indicates that
replacement of the friction clutch with a dog clutch is dependent upon
having first removed the one-way clutch. At no point does this passage
teach the combination of a dog clutch and one-way clutch in parallel.”
Appeal Brief 5; see also Reply Brief 2. Appellant further asserts “paragraph
[0018] of U.S. Patent Application 13/714,929, which is incorporated by
reference in the present application at paragraph [0015]” supports this
reading of Iizuka 2, as it discusses the “use of a dog clutch in parallel with a
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one-way-clutch presents problems that are avoided when no one-way clutch
is present.” Id.
We are not persuaded the Examiner erred in finding Iizuka 2 teaches
or suggests a transmission shift element with a dog clutch and a one-way
clutch, as claimed. Iizuka 2 states the following with respect to a dog clutch
and a one-way clutch:
Furthermore, the one-way clutch FI may be removed. In such a
case, the third brake B3 can be set in the fixed mode when the
first transmission gear ratio is achieved. Still furthermore, the
third brake B3 may be configured as a meshing mechanism
formed from, for example, a dog clutch or a synchromesh
gearbox.
Iizuka 2 175 (emphasis added). Although we find this paragraph is not a
model of logical clarity, we agree with the Examiner that one of ordinary
skill would understand the “still furthermore” phrase to at least suggest that
the various alternative teachings can be combined; thus we find one of
ordinary skill would use Iizuka 2’s dog clutch and the one-way clutch in a
transmission as claimed. See Answer 16—17; cf. In re Preda, 401 F.2d 825,
826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”).
We similarly do not find U.S. Patent Application 13/714,929, as
discussed by Appellant, to support Appellant’s reading of Iizuka 2. The full
paragraph as cited by Appellant is the following:
As illustrated in Table 1, the clutches and brakes of
transmission 18 are engaged in combinations of two to establish
a variety of speed ratios between input shaft 26 and output gear
28. In 1st gear, torque may be transmitted by either dog clutch
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Application 14/100,330
44 or one way clutch 42. However, dog clutch 42 must be
disengaged before the shift to 2nd gear can be completed. As
discussed above, attempts to disengage a dog clutch when the
dog clutch is transmitting torque may fail. Consequently, there is
a need to ensure that the piston for dog clutch 44 can slide from
the engaged position to the disengaged position while in 1st gear.
Dog clutch 42 must be engaged before a shift from 1st gear to
reverse because one way clutch 42 cannot transmit torque in the
correct direction for reverse. As discussed above, some relative
rotation may be required as the dog clutch piston slides from the
disengaged position to the engaged position. Consequently, there
is a need to ensure that the one way clutch will not preclude any
necessary rotation.
U.S. Patent Application 13/714,929 118 (published as US 2014/0166422
Al) (emphasis added). The above paragraph provides guidelines for
transmission design, but does not indicate one of ordinary skill would
narrowly read Iizuka 2 as only teaching use of a dog clutch without also
using a one-way clutch.3 Contra Appeal Brief 5.
Accordingly, we are not persuaded the Examiner erred in finding
independent claims 1 and 8 to be obvious in view of Philips and Iizuka 2.
CONCLUSION
We do not sustain the Examiner’s § 112(b) rejection of claims 1, 3,
and 8, and the claims dependent thereon.
We sustain the Examiner’s 35 U.S.C. § 103 rejections of independent
claims 1 and 8. Appellant advances no further argument on the dependent
3 We note the prior paragraph of the patent application states a “variety of
different one way clutch designs are known,” some having different
properties. U.S. Patent Application 13/714,929 117.
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Application 14/100,330
claims; thus we sustain the Examiner’s 35 U.S.C. § 103 rejections of these
claims for the same reasons discussed above.
DECISION
The Examiner’s decision rejecting claims 1—5 and 8—10 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)(l)(iv).
AFFIRMED
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