Ex Parte Ishikawa

Board of Patent Appeals and Interferences

Aug 5, 2008

10326164 (B.P.A.I. Aug. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KOUJI ISHIKAWA
____________

Appeal 2007-4055
Application 10/326,164
Technology Center 3600
____________

Decided: August 5, 2008
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER and
JOHN C. KERINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Kouji Ishikawa (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-3. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002). An oral hearing in this appeal was conducted on June 19,
2008.

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is to a continuously variable
transmission comprising, in pertinent part, a casing, a pair of middle walls
and a plurality of support plates disposed in the interior of the casing, a
support bracket for supporting the support plates on the interior of the
casing, and a mounting portion fixedly formed in a portion of the support
bracket for supporting and fixing the middle walls.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A continuously variable transmission,
comprising:

a casing;

a pair of middle walls each disposed in the interior
of the casing and having a through hole;

a plurality of support plates disposed in the interior
of the casing;

a rotary shaft rotatably supported on the interior of
the casing so as to be inserted through the through
hole of the middle wall;

a pair of first disks respectively including inner
surfaces each formed as a concave surface having
an arc-shaped section and respectively supported
on the two end portions of the rotary shaft in such
a manner that their respective inner surfaces are
opposed to each other so as to be rotated in
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synchronization with the rotary shaft;

an output gear rotatably accommodated between
the middle walls and supported on a middle
portion of the rotary shaft rotatably with respect to
the rotary shaft, the output gear having a
cylindrical portion in the center portion thereof;

a pair of second disks respectively including inner
surfaces each formed as a concave surface having
an arc-shaped section, respectively spline-
connected to the cylindrical portion of the output
gear, and respectively supported on the middle
wall in the periphery of the middle portion of the
rotary shaft in such a manner that their inner
surfaces are opposed to the inner surfaces of the
first disks so as to be rotated relatively with respect
to the rotary shaft and rotated in synchronization
with each other;

a plurality of trunnions respectively interposed
between the inner surfaces of the first and
second disks so as to be swung about pivot shafts
existing at twisted positions with respect to the
rotary shaft and pivotally supported on the support
plates;

a plurality of displacement shafts disposed so as to
project from the inner surfaces of the trunnions;

a plurality of power rollers respectively including
peripheral surfaces formed as spherical-shaped
convex surfaces and supported on the inner
surfaces of the trunnions so as to be rotatable about
the displacement shafts, the peripheral surfaces of
the power rollers being contacted with the inner
surface of the first and second disks;

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a support bracket for supporting the support plates
on the interior of the casing; and,

a mounting portion fixedly formed in a portion of
the support bracket for supporting and fixing the
middle walls.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kobayashi US 5,538,483 Jul. 23, 1996
Kuhn US 6,547,690 B11 Apr. 15, 2003

The following rejections are before us for review:
1. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Kobayashi in view of Kuhn.
ISSUES
The issue raised in this appeal is whether Appellant has shown that the
Examiner erred in concluding that claims 1-3 are rendered obvious by the
combined teachings of Kobayashi and Kuhn. This issue turns on whether
the teachings of the Kobayashi and Kuhn patents are properly combinable,
and, if so, whether the combined teachings result in a continuously variable
transmission having a single support bracket for supporting a pair of support
plates on the interior of the transmission casing.

1 US 6,547,690 B1, issued April 15, 2003, is recognized by Appellant and
the Examiner as the U.S. equivalent to WO 99/05431, which was originally
cited in rejecting the claims. Reference will be made herein to this U.S.
“Kuhn patent”, in that the Appellant’s briefs and the Examiner’s Answer cite
to the U.S. patent rather than to the WIPO published application.
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FINDINGS OF FACT
The following enumerated findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
FF1. The transmission construction illustrated in Figure 3C of the
Kuhn patent shows support brackets 28, 29, in abutting engagement, and
further shows that a weld joint 29A (the right-most weld joint) spans the
abutting lower ends of the brackets, signifying that the brackets are joined at
the weld joint. (Kuhn, Fig. 3C).
FF2. The joined brackets 28, 29, of Kuhn support thereon a plurality
of support plates, and support and mount thereon a middle wall component.
(Kuhn, Fig. 3C; Col. 5, ll. 11-16).

PRINCIPLES OF LAW
The Supreme Court, in Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966), set out a framework for applying the statutory language of § 103:
[T]he scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background the obviousness or nonobviousness
of the subject matter is determined. Such secondary considerations as
commercial success, long felt but unsolved needs, failure of others,
etc., might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.”

While the sequence of these questions might be reordered in any
particular case, the factors continue to define the inquiry that controls. If a
court, or patent examiner, conducts this analysis and concludes that the
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claimed subject matter was obvious, the claim is invalid or unpatentable
under §103. See KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1734 (2007).

ANALYSIS
Appellant argues claims 1-3 as a group. We will select claim 1 as
being representative of this group for the purposes of this appeal. 37 C.F.R.
41.37(c)(1)(vii) (2007). Claims 2 and 3 will stand or fall with claim 1.
A first issue joined by Appellant and the Examiner with respect to the
rejection of claim 1 is whether the teachings of Kobayashi and Kuhn are
properly combinable. Appellant’s principal argument in this regard is that,
because the Kuhn patent has a different configuration of output disks
(wherein the output disks “appear to move axially”), from that of Kobayashi
(wherein the output disks are axially fixed), a person of ordinary skill in the
art would not have used the teachings of Kuhn to modify the brackets
disclosed in Kobayashi. (Reply Br. 5).
Appellant contends that this difference would subject the support
brackets in each reference to “different considerations”, that are “likely due
to the manner in which the transmission is assembled—the disks 16 might be
mounted in the transmission separately, one after the other … whereby the
support brackets (28, and unlabeled) are separately mounted to the casing of
the transmission.” (Id.)(emphasis added). Appellant concludes that these
considerations evidence that, “there is no proper motivation for the
Examiner’s suggested combination of Kobayashi and Kuhn.” (Appeal Br.
15).
The Supreme Court, in KSR, has instructed that a rigid application of
the “teaching, suggestion, motivation” (TSM) test in assessing the
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patentability of an invention under 35 U.S.C. § 103(a) is not a legally correct
approach. KSR, 127 S.Ct. at 1739. Moreover, in attempting to establish a
lack of motivation to combine the teachings, Appellant has failed to
specifically identify what “different considerations” exist in the Kobayashi
and Kuhn constructions that would negate a motivation to combine
teachings, and merely speculates as to the possibility that the steps in the
assembly of the transmission in each reference might be different. Even if
we accept that the steps in the assembly are different, which Appellant
seems to be reluctant to affirmatively argue, we are not persuaded that this
would foreclose the possibility that a person of ordinary skill in the art
would consider incorporating teachings found in the Kuhn patent into the
transmission construction of the Kobayashi patent. We do not find
reversible error in the Examiner’s determination that the Kuhn and
Kobayashi references are properly combinable.
Appellant further urges that, even if the teachings of the Kobayashi
and Kuhn references are combined, the combined teachings do not teach or
suggest all of the elements set forth in the claims. More specifically,
Appellant contends that the combined teachings of the Kobayashi and Kuhn
patents do not teach or suggest a transmission in which “the support plates
and the middle walls are supported by the casing via a single supporting
bracket.” (Appeal Br. 13)(emphasis added).
Claim 1 on appeal calls for the claimed transmission to have “a
support bracket for supporting the support plates on the interior of the casing
…”. (Appeal Br., Claims Appendix). That the claim calls for “a support
bracket” does not, in itself, limit the claimed transmission to include only “a
single support bracket”. Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973,
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977 (Fed. Cir. 1999)(“a” or “an” can mean “one” or “more than one,”
depending on the context in which the article is used). Other elements or
limitations in claim 1 do, however, when read as a whole, require that a
single claimed support bracket is to support both a plurality of support
plates, as well as to support and fix the claimed pair of middle walls.
(Appeal Br., Claims Appendix).
Appellant argues that:
…Kuhn discloses two different clamps 28, 29,
which are part of the frame 2, which the Examiner
relies on as being the presently claimed support
bracket. However, the clamps 28 and 29 are not a
single structure as is the claimed support bracket
that mounts support plates which in turn mount
trunnions. Instead, in Kuhn, the friction wheels
11, 21 are mounted to the separate clamps 28, 29
via fastening devices 20, 30. The bearing support
wall 7 is then mounted to one or the other of the
clamps 28, 29. Yet the clamps are separate pieces,
they are not a single support bracket. Moreover,
neither clamp 28, 29 by itself supports more than
one support plate for mounting a trunnion.
Accordingly, neither one of the clamps 28, 29 by
itself qualifies as a support bracket that mounts
plural support plates, each of which mounts a
trunnion, as claimed.

(Appeal Br. 12)(emphasis added).
Appellant points to the use, in the Kuhn drawing figures, of different
directions of cross-hatching for clamp elements 28, 29, as evidence that the
clamps are not a single structure. (see, e.g., Reply Br. 4). The Examiner
replies that this is not persuasive evidence, in view of the disclosure of Kuhn
as a whole (Answer 5), and further that the language in the claim resulting in
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a single support bracket being used to support both support plates and
middle walls, does not preclude the use of a support bracket made up of
multiple elements that are fixedly attached, as by welding. (Answer 6).
Appellant appears to concede the latter point made by the Examiner,
but asserts that “Kuhn fails to teach or suggest any such structure.” (Reply
Br. 6). Appellant refers to Figures 3A-3C of Kuhn in arguing that bearing
support 7 of Kuhn, which is analogous to the middle wall of Appellant’s
claimed construction, may be welded to either support bracket 28 or support
bracket 29, but “nowhere does Kuhn teach that there is one unified support
bracket (one piece or multiple pieces put together) that mounts a pair of
support plates and has a mounting portion for mounting a middle wall.”
(Id.).
We disagree. The embodiment illustrated in Figure 3C of Kuhn
shows that support brackets 28, 29 abut one another and are joined by the
right-hand weld joint 29A. (FF 1). That joined, single support bracket,
supports or mounts support plates as well as mounts a middle wall. (FF 2).
The alleged shortcoming of the combination of the teaching of Kobayashi
and Kuhn is belied by the construction illustrated in Figure 3C.
Accordingly, we are not persuaded that error exists in the Examiner’s
rejection of claim 1 over Kobayashi in view of Kuhn. Claims 2 and 3, as
noted previously, stand or fall with claim 1. We will affirm the rejection as
to all claims.
CONCLUSION
We conclude that Appellant has failed to establish that reversible error
exists in the rejection of claims 1-3 under 35 U.S.C. § 103(a).
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ORDER
The decision of the Examiner to reject claims 1-3 under 35 U.S.C.
§ 103(a) 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).

AFFIRMED

vsh

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