Ex Parte Goleski et al

Patent Trial and Appeal Board

Nov 21, 2017

14057325 (P.T.A.B. Nov. 21, 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.
14/057,325 10/18/2013 GREGORY DANIEL GOLESKI 83357691 1033
28395 7590 11/24/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER HLAVKA, DAVID J
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
11/24/2017 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,
STEVEN GERALD THOMAS, and JEFFREY EDWARD MAURER
Appeal 2016-002893
Application 14/057,3251
Technology Center 3600
Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—18. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 “The real party in interest is Ford Global Technologies, LLC (‘Assignee’),
a subsidiary of Ford Motor Co.” Appeal Br. 2.
Appeal 2016-002893
Application 14/057,325
ILLUSTRATIVE CLAIM
1. A clutch module comprising:
a hollow shaft having an inner surface;
a shell fixedly coupled to the hollow shaft;
first, second, and third pressure plates splined to the
shell; and
first, second, and third pistons configured to slide axially
with respect to the hollow shaft and to apply axial force directly
to the first, second, and third pressure plates respectively,
wherein the first piston extends through an opening in the
second pressure plate.
REJECTION
Claims 1—18 are rejected under 35 U.S.C. § 102(e) as anticipated by
Diemer et al. (US 8,500,588 B2, iss. Aug. 6, 2013) (hereinafter “Diemer”).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Claims 1—11
Independent claim 1 recites, in part, “first, second, and third pistons
configured to slide axially with respect to the hollow shaft and to apply axial
force directly to the first, second, and third pressure plates respectively.”
The Appellants argue that claim 1 was rejected erroneously, because
Diemer does not teach a “third piston[ ]” that “applies] axial force directly
to the . . . third pressure plate[ ].” See Appeal Br. 3^4; see also Reply Br. 2.
Specifically, the Appellants argue that Diemer’s piston applies force to the
part that the Examiner designates as the “third pressure plates” through a
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Application 14/057,325
number of intermediate parts, rather than applying such force “directly,” per
claim 1. Appeal Br. 2.
We agree with the Appellants that “[ajpplying force through a number
of intermediate parts, as in Diemer, is an indirect application of the force,”
such that Diemer does not satisfy the identified claim limitation. Id. at 4.
By contrast, as shown in Figure 2 of the Specification, there is no
intermediate part between piston 112 and pressure plate 104, such that piston
112 can apply “axial force directly” to pressure plate 104.
Accordingly, the rejection of independent claim 1, and claims 2—11
depending therefrom, is not sustained.
Claims 12—16
Independent claim 12 requires, in part, “first, second, and third
pressure plates,” with “each pressure plate having an outer edge splined to
the shell.”
The Appellants argue that claim 12 was rejected erroneously, because
the element of Diemer that the Examiner identifies as a “third pressure
plate[ ]” has an inner edge splined to the element that the Examiner
identifies as the “shell.” Appeal Br. 4; see also Reply Br. 3. More
specifically, as the Appellants explain, the Examiner refers (in regard to the
“third pressure plate[ ]”) to a structure having the form of a disk with a large
central hole, wherein the referenced “edge” (which is splined to the element
that the Examiner calls the “shell”) is the interior “edge” of the hole — i.e.,
the “edge” that is closer to the center of the disk. See Reply Br. 3.
The “pressure plates” shown in the Specification likewise have the
form of a disk with a large central hole. See Spec. 122, Fig. 2. The “outer
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Appeal 2016-002893
Application 14/057,325
edges” (splined to the identified “shell”), of these disk-shaped elements, are
the edges farther from (not closer to) the centers of the respective disk­
shaped elements. See Spec. 122, Fig. 2.
Because the use of the terms in the Specification comports better with
the Appellants’ position, rather than that set forth in the rejection, we agree
with the Appellants that the claimed “outer edge” of the “third pressure
plate” is the edge that is farther from the center thereof.
Accordingly, the rejection of independent claim 12, and claims 13—16
depending therefrom, is not sustained.
Claims 17 and 18
Independent claim 17 recites, in part, “a hollow shaft supported for
rotation about an input shaft.”
The Appellants argue that claim 17 was rejected erroneously, because
some of the parts of Diemer that the Examiner identifies collectively as the
“hollow shaft” do not “rotat[e] about” the element that the Examiner
identifies as Diemer’s “input shaft.” See Appeal Br. 6.
The Examiner maintains that “[ejach part of the hollow shaft is
supported for rotation about the input shaft, but do[es] not necessarily
rotate.” Final Action 19. Indeed, according to the Final Office Action, the
“Examiner concedes that the two leftmost portions of the established hollow
shaft are coupled to the transmission housing,” such that they would not
rotate. Id. According to the Answer, “the term, ‘supported for rotation’
does not require that the elements supported be rotating.” Answer 12.
Although “the leftmost portion [of the elements forming Diemer’s hollow
shaft] is fixed to the housing” and is “restricted from rotating by the
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Appeal 2016-002893
Application 14/057,325
housing,” “[wjhether the shaft rotates or not is a moot point, as the claim
does not specify that the shaft must rotate.” Id. at 12—13.
The rejection relies upon a construction of the expression “supported
for rotation” that would render superfluous the words “for rotation.” “A
claim construction that gives meaning to all the terms of the claim is
preferred over one that does not do so.” Merck & Co. v. leva Pharms. USA,
Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005). Ascribing meaning to the phrase
“for rotation” here requires that the identified element be capable of rotation.
An element that is fixed to another structure, such that it cannot rotate, is not
“supported for rotation,” per claim 17.
Accordingly, the rejection of independent claim 17, and claim 18
depending therefrom, is not sustained.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—18 are
rejected under 35 U.S.C. § 102(e).
REVERSED
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