Ex parte Huber et al.

Board of Patent Appeals and Interferences

Oct 17, 2000

08910822 (B.P.A.I. Oct. 17, 2000)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JON M. HUBER et al.
____________
Appeal No. 2000-0865
Application No. 08/910,822
____________
ON BRIEF
____________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 4, 7 to 11, 17 and 18 Claims 13 to
16 have been allowed. Claims 5, 6, 12 and 19, the only other
claims pending in this application, have been objected to as
depending from a non-allowed claim.
We REVERSE.
Appeal No. 2000-0865
Application No. 08/910,822
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Application No. 08/910,822
BACKGROUND
The appellants' invention relates to a method of
controlling a current torque value in a vehicle transmission.
A copy of the claims under appeal is set forth in the appendix
to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Sakaki et al. 5,303,614 Apr. 19,
1994
(Sakaki)
Kuriyama et al. 5,505,675 Apr. 9,
1996
(Kuriyama)
Takasaki et al. 5,631,829 May 20,
1997
(Takasaki)
Claims 1 to 4, 7 to 11, 17 and 18 stand rejected under
35 U.S.C. § 103 as being unpatentable over Takasaki in view of
Kuriyama.
Claims 1 to 4, 7 to 11, 17 and 18 stand rejected under
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Application No. 08/910,822
35 U.S.C. § 103 as being unpatentable over Takasaki in view of
Sakaki.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (Paper No. 17,
mailed January 7, 2000) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 15,
filed December 13, 1999) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejections of claims 1 to 4, 7 to
Appeal No. 2000-0865 Page 5
Application No. 08/910,822
11, 17 and 18 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellants argue (brief, pp. 3-7) that the applied
prior art does not suggest the claimed subject matter. We
agree.
All the claims under appeal require the following steps:
(1) determining a desired torque value for use during a
portion of a shifting operation; (2) changing the current
Appeal No. 2000-0865 Page 6
Application No. 08/910,822
torque value at a first rate of change until the desired
torque value is obtained or a preselected period of time
elapses; (3) when the current torque value does not correspond
to the desired torque value and the preselected period of time
has elapsed, changing the current torque value at a second
rate of change until the desired torque value is obtained.
However, these limitations are clearly not suggested by the
applied prior art. In that regard, while it may have been
obvious at the time the invention was made to a person having
ordinary skill in the art to modify the torque control system
of Takasaki by incorporating features of either the control
system of Kuriyama or the shift control system of Sakaki, we
see no suggestion in the applied prior art for modifying
Takasaki to arrive at the claimed invention. In fact, the
examiner never ascertained the differences between the applied
prior art and the claims at issue and never determined that it
would have been obvious to arrive at the claimed invention.

In our view, the only suggestion for modifying the
applied prior art to arrive at the claimed invention stems
from hindsight knowledge derived from the appellants' own
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Application No. 08/910,822
disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Assocs., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
In summary, we see no motivation in the applied prior art
of why one skilled in the art would have modified the torque
control system of Takasaki to make the modifications necessary
to arrive at the claimed invention. Thus, the examiner has
failed to meet the initial burden of presenting a prima facie
case of obviousness. It follows that we cannot sustain the
examiner's rejections of claims 1 to 4, 7 to 11, 17 and 18.
CONCLUSION
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Application No. 08/910,822
To summarize, the decision of the examiner to reject
claims 1 to 4, 7 to 11, 17 and 18 under 35 U.S.C. § 103 is
reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/910,822
DAVID J. GASKEY
HOWARD & HOWARD ATTORNEYS, P.C.
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BLOOMFIELD HILLS, MI 48304-2856
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