Ex Parte Heber et al

Patent Trial and Appeal Board

Apr 25, 2018

13977783 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/977,783 09/23/2013
24972 7590 04/27/2018
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
FIRST NAMED INVENTOR
Andreas Heber
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BOSC.P7890US/l 1603254 6669
EXAMINER
PANG, ROGER L
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS HEBER and OLIVER DREWS
Appeal2017-007593
Application 13/977, 783
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andreas Heber and Oliver Drews (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's final decision rejecting claims 13-17, 20, 21,
23, 24, 26, and 27. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention relates to a planetary gear set for a power tool.
Spec., p. 1, 11. 3--4.
Appeal2017-007593
Application 13/977 ,783
Claims 23, 26, and 27 are independent. Claim 23 is illustrative of the
claimed invention and reads as follows:
23. A hand-held power tool, comprising:
a planetary gear set that includes:
a plurality of shafts;
a plurality of rolling elements;
a plurality of planet carriers; and
multiple gear stages, wherein:
at least one gear stage includes a shifting ring
gear which engages an annulus gear and which is
movable in relation to a housing, the at least one
gear stage includes planetary wheels which are each
supported on a respective one of the shafts via a
respective one of the rolling elements, and the shafts
are held on assigned ones of the planet carriers,
wherein the planetary gear set is shiftable for
setting at least two different gears,
wherein the shifting ring gear is displaceable
between a locked position and an unlocked position,
the shifting ring gear being coupled fixedly relative
to a housing in the locked position and being
coupled to one of the planet carriers of an adjacent
one of the stages in the unlocked position,
wherein the shifting ring gear is assigned to a
second gear stage of the multiple gear stages.
THE REJECTIONS
The Examiner has rejected:
(i) claims 13-17, 20, 21, 23, 24, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Ho (US 2008/0032848 Al, published Feb. 7, 2008)
in view of Abarquez (US 7,448,980 B2, issued Nov. 11, 2008);
2
Appeal2017-007593
Application 13/977 ,783
(ii) claim 27 under 35 U.S.C. § 103(a) as being unpatentable over
Eisenhardt (US 2006/0068968 Al, published Mar. 30, 2006) in view of
Abarquez; and
(iii) claim 26 under 35 U.S.C. § 103(a) as being unpatentable over
Buck (US 6,796,921 Bl, issued Sept. 28, 2004) in view of Abarquez and
Aeberhard (US 2006/0118380 Al, published June 8, 2006).
Appellants amended claims 23, 26, and 27 in an Amendment filed
subsequent to the Final Office Action on November 1, 2016. That
Amendment was entered in an Advisory Action dated November 9, 2016.
The Advisory Action indicates that "Applicant's reply has overcome the
following rejection(s): 35 USC 112 first paragraph rejections of claims 13-
17, 20-21, 23-24, 26-27." Advisory Act. 2. As such, the rejection of
claims 13-17, 20, 21, 23, 24, 26, and 27 under 35 U.S.C. § 112, first
paragraph, present in the Final Office Action is not before us for review,
notwithstanding that the Examiner's Answer does not identify this rejection
as having been withdrawn.
ANALYSIS
Claims 13-17, 20, 21, 23, 24, and 26--0bviousness--Ho/Abarquez
Appellants do not argue claims 13-17, 20, 21, 23, 24, and 26
separately. Appeal Br. 3--4. We take claim 23 as illustrative of this group,
and claims 13-17, 20, 21, 24, and 26 stand or fall with claim 23.
The Examiner finds that Ho discloses a hand-held power tool
comprising a planetary gear set that includes a plurality of shafts (retaining
members 108, 130, 140) and at least one gear stage including planetary
3
Appeal2017-007593
Application 13/977 ,783
wheels (planetary gear 42) 1 which are each supported on a respective one of
the shafts. Final Act. 4; see also Ho, Fig. 5. The Examiner acknowledges
that Ho does not disclose a plurality of rolling elements disposed between
the shafts and planetary wheels. Id.
The Examiner finds that Abarquez discloses a planetary gear set that
includes a plurality of shafts (planet shafts 34), a plurality of rolling
elements (rollers 36), and at least one gear stage including planetary wheels
(planet gears 3 2) which are each supported on a respective one of the shafts
via a respective one of the rolling elements. Id. at 4--5; see also Abarquez,
Fig. 1. The Examiner concludes that it would have been obvious to modify
the hand-held power tool of Ho to employ the rolling elements of Abarquez
disposed between the shafts and planetary wheels in order to reduce wear
between those components. Final Act. 5.
Appellants contend that Ho is not concerned with rotation of planet
gears around a shaft, which we understand to mean that Ho has not
identified any particular problem with rotation of planet gears around a
shaft. Appeal Br. 3; see also id. at 4; Reply Br. 2. Appellants maintain, in
light of this, that Ho does not provide a motivation to combine its teaching
with Abarquez.
Appellants' contention does not address the rejection as Abarquez is
relied upon as teaching a plurality of rolling elements to reduce wear
1 Although the Examiner mentions only planetary gear 42 which is
supported on retaining member 130, Figure 5 of Ho also shows that
planetary gear 3 6 is supported on retaining member 108 and planetary gear
48 is supported on retaining member 140. See Ho, Fig. 5.
4
Appeal2017-007593
Application 13/977 ,783
between the shafts and the planetary wheels, and the Examiner cites to this
as a reason to modify the Ho apparatus. Ans. 11.
Notwithstanding Appellants' position that Ho is not concerned with
the rotation of planet gears about a planet shaft but is concerned with
variable speed transmission for use with a power tool, Ho explicitly
discloses that the planet gears such as planetary gears 3 6 and 48 are rotated.
See Ho, paras. 60, 62. Because the planetary gears 36, 42, 48 are positioned
about the retaining members 108, 130, 140, the planetary gears would
necessarily rotate about the retaining members. See Ho, Fig. 5. Appellants
acknowledge that the Abarquez disclosure states that rollers provided
between the planet gears and shaft will facilitate such rotation. If instead,
Appellants are arguing that the variable transmission of Ho cannot be
modified by adding the rollers of Abarquez, Appellants have not provided
any evidence or persuasive argument to this effect.
Appellants contend that the combination of Ho and Abarquez is based
on hindsight. Appeal Br. 3; Reply Br. 2.
As discussed above, the Examiner's rationale for combining the
teachings of Ho and Abarquez in the manner proposed is grounded in
teachings present in the references themselves (see Final Act. 4--5; Ans. 7,
9-11) and knowledge that was within the level of ordinary skill at the time
of the claimed invention was made, and not on Appellants' disclosure.
Thus, we do not agree with Appellants' contention that the Examiner's
rejection is based on impermissible hindsight reconstruction.
Appellants argue that the Examiner fails to establish a reasonable
expectation of success were the Ho power tool modified in the proposed
manner based on the teachings of Abarquez. Reply Br. 2.
5
Appeal2017-007593
Application 13/977 ,783
The ordinary artisan, informed by Abarquez that rollers may be
employed to facilitate the rotation of planet gears about planet shafts, would
have reasonably expected that the Examiner's proposed modification would
result in reduced wear between the planetary gears and the retaining
members of Ho.
None of Appellants' arguments apprise us of Examiner error in
rejecting claim 23. Accordingly, we sustain the rejection of claim 23 as
unpatentable over Ho and Abarquez, with claims 13-17, 20, 21, 24, and 26
falling with claim 23.
Claim 2 7-0bviousness--Eisenhardt/ Abarquez
The Examiner finds that Eisenhardt discloses a hand-held power tool
comprising a planetary gear set that includes a plurality of shafts (bolts 16)
and at least one gear stage including planetary wheels 15 which are each
supported on a respective one of the shafts. Final Act. 5---6; see also
Eisenhardt, Fig. 1. The Examiner acknowledges that Eisenhardt does not
disclose a plurality of rolling elements disposed between the shafts and
planetary wheels. Final Act. 6.
The Examiner finds that Abarquez discloses a planetary gear set that
includes a plurality of shafts (planet shafts 34), a plurality of rolling
elements (rollers 36), and at least one gear stage including planetary wheels
(planet gears 32) which are each supported on a respective one of the shafts
via a respective one of the rolling elements. Id.; see also Abarquez, Fig. 1.
The Examiner concludes that it would have been obvious to modify the
hand-held power tool of Eisenhardt to employ the rollers of Abarquez
6
Appeal2017-007593
Application 13/977 ,783
disposed between the shafts and planetary wheels in order to reduce wear
between those components. Final Act. 6.
Appellants contend that Eisenhardt is not concerned with rotation of
planet gears around a shaft, which we understand to mean that Eisenhardt
has not identified any particular problem with rotation of planet gears around
a shaft. Appeal Br. 3; see also id. at 4; Reply Br. 2. Appellants maintain, in
light of this, that Eisenhardt does not provide a motivation to combine its
teaching with Abarquez.
Appellants' contention does not address the rejection as Abarquez is
relied upon as teaching a plurality of rollers to reduce wear between the
planet gears and planet shafts, and the Examiner cites to this as a reason to
modify the Eisenhardt apparatus. Ans. 11.
Notwithstanding Appellants' position that Eisenhardt is not concerned
with the rotation of planet gears about a planet shaft but is concerned with a
planetary gearbox of power tools during operation, Eisenhardt explicitly
discloses that the planet wheels 15 are rotated. See Eisenhardt, para. 25.
Because the planet wheels 15 are positioned about bolts 16, the planet
wheels would necessarily rotate about the bolts. See Eisenhardt, Fig. 1.
Appellants acknowledge that the Abarquez disclosure states that rollers
provided between the planet gears and shaft will facilitate such rotation. If
instead, Appellants are arguing that the planetary gearbox of Eisenhardt
cannot be modified by adding the rollers of Abarquez, Appellants have not
provided any evidence or persuasive argument to this effect.
Appellants contend that the combination of Eisenhardt and Abarquez
is based on hindsight. Appeal Br. 3; Reply Br. 2.
7
Appeal2017-007593
Application 13/977 ,783
As discussed above, the Examiner's rationale for combining the
teachings of Eisenhardt and Abarquez in the manner proposed is grounded in
teachings present in the references themselves (see Final Act. 5---6; Ans. 8-
11) and knowledge that was within the level of ordinary skill at the time of
the claimed invention was made, and not on Appellants' disclosure. Thus,
we do not agree with Appellants' contention that the Examiner's rejection is
based on impermissible hindsight reconstruction.
Appellants argue that the Examiner fails to establish a reasonable
expectation of success were the Eisenhardt power tool modified in the
proposed manner based on the teachings of Abarquez. Reply Br. 2.
The ordinary artisan, informed by Abarquez that rollers may be
employed to facilitate the rotation of planet gears about planet shafts, would
have reasonably expected that the Examiner's proposed modification would
result in reduced wear between the planetary wheels and bolts of Eisenhardt.
None of Appellants' arguments apprise us of Examiner error in
rejecting claim 27. Accordingly, we sustain the rejection of claim 27 as
unpatentable over Eisenhardt and Abarquez.
Claim 2 6--0bviousness-Buck/ Abarquez/ Aeberhard
The Examiner finds that Buck discloses a hand-held power tool
comprising a planetary gear set that includes a plurality of shafts and at least
one gear stage including planetary wheels (planet gears 76) which are each
supported on a respective one of the shafts. Final Act. 6-7 (citing Buck,
Figs. 3, 4A). The Examiner acknowledges that Buck does not disclose a
plurality of rolling elements disposed between the shafts and planetary
wheels. Id. at 7.
8
Appeal2017-007593
Application 13/977 ,783
The Examiner finds that Abarquez discloses a planetary gear set that
includes a plurality of shafts (planet shafts 3 4), a plurality of rolling
elements (rollers 36), and at least one gear stage including planetary wheels
(planet gears 32) which are each supported on a respective one of the shafts
via a respective one of the rolling elements. Id. The Examiner concludes
that it would have been obvious to modify the hand-held power tool of Buck
to employ the rollers of Abarquez disposed between the shafts and planetary
wheels in order to reduce wear between those components. Id.
Appellants contend that Buck is not concerned with rotation of planet
gears around a shaft, which we understand to mean that Buck has not
identified any particular problem with rotation of planet gears around a
shaft. Appeal Br. 3; see also id. at 4; Reply Br. 2. Appellants maintain, in
light of this, that Buck does not provide a motivation to combine its teaching
with Abarquez.
Appellants' contention does not address the rejection as Abarquez is
relied upon as teaching a plurality of rollers to reduce wear between the
planet gears and planet shafts, and the Examiner cites to this as a reason to
modify the Buck apparatus. Ans. 11
Notwithstanding Appellants' position that Buck is not concerned with
the rotation of planet gears about a planet shaft but is concerned with
multiple speed transmission for providing at least three gear speed ratios for
which a shift actuator is needed, Buck explicitly discloses that the planet
gears 76 are rotated. See Buck, col. 8, 11. 29--31. Because the planet gears
76 are positioned about the shafts as shown in Figure 4A, the planet gears
would necessarily rotate about the shafts. See Buck, Fig. 4A. Appellants
acknowledge that the Abarquez disclosure states that rollers provided
9
Appeal2017-007593
Application 13/977 ,783
between the planet gears and shaft will facilitate such rotation. If instead,
Appellants are arguing that the multiple speed transmission of Buck cannot
be modified by adding the rollers of Abarquez, Appellants have not provided
any evidence or persuasive argument to this effect.
Appellants contend that the combination of Buck and Abarquez is
based on hindsight. Appeal Br. 3; Reply Br. 2.
As discussed above, the Examiner's rationale for combining the
teachings of Buck and Abarquez in the manner proposed is grounded in
teachings present in the references themselves (see Final Act. 6-7; Ans. 9--
11) and knowledge that was within the level of ordinary skill at the time of
the claimed invention was made, and not on Appellants' disclosure. Thus,
we do not agree with Appellants' contention that the Examiner's rejection is
based on impermissible hindsight reconstruction.
Appellants argue that the Examiner fails to establish a reasonable
expectation of success were the Buck power tool modified in the proposed
manner based on the teachings of Abarquez. Reply Br. 2.
The ordinary artisan, informed by Abarquez that rollers may be
employed to facilitate the rotation of planet gears about planet shafts, would
have reasonably expected that the Examiner's proposed modification would
result in reduced wear between the planetary gears and the shafts of Buck.
None of Appellants' arguments apprise us of Examiner error in
rejecting claim 26. Accordingly, we sustain the rejection of claim 27 as
unpatentable over Buck and Abarquez.
10
Appeal2017-007593
Application 13/977 ,783
DECISION
The rejections claims 13-17, 20, 21, 23, 24, 26, and 27 as being
unpatentable are 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).
AFFIRMED
11