Ex Parte Kimes

Patent Trial and Appeal Board

Oct 23, 2017

14037430 (P.T.A.B. Oct. 23, 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.
14/037,430 09/26/2013 John W. Kimes MEII0314PUSP 9512
22045 7590 10/25/2017
RROOKS KTTSHMAN P C EXAMINER
1000 TOWN CENTER DANG, TINH
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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 JOHN W. KIMES
Appeal 2016-007290
Application 14/037,43c1
Technology Center 3600
Before JOHN A. EVANS, JOHN P. PINKERTON, and
SCOTT B. HOWARD, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of Claims 2—5, 9—11, and 25—32. App. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.2
1 The Appeal Brief identifies Means Industries, Inc. as the real party in
interest. App. Br. 1.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (filed May 16, 2016, “App. Br.”), the Reply Brief
(filed July 21, 2016, “Reply Br.”), the Examiner’s Answer (mailed June 29,
2016, “Ans.”), the Final Action (mailed March 31, 2016, “Final Act.”), and
the Specification (filed April 28, 2015, “Spec.”) for their respective details.
Appeal 2016-007290
Application 14/037,430
STATEMENT OF THE CASE
The Invention
The claim relates to a vehicle drive system including a transmission.
See Abstract.
Claims 2, 3, and 4 are independent. An understanding of the
invention can be derived from a reading of Claim 2, which is reproduced
below:
2. A vehicle drive system including a transmission, the
system comprising:
a gear set including first, second, third and fourth
elements, the second element connecting with an output shaft of
the transmission;
a transmission housing;
a first electric motor having an output shaft connecting
with the first element for driving the first element in response to
a first electrical signal;
a second electric motor having an output shaft connecting
with the fourth element for driving the fourth element in
response to a second electrical signal wherein the motors are
actuatable to cause transmission ratios to change steplessly
without the need for an engine output shaft of the vehicle to be
connecting with any of the elements; and
a non-friction controllable brake assembly having a
coupling state for coupling the fourth element to the
transmission housing and an uncoupling state for uncoupling
the fourth element from the transmission housing, the brake
assembly being non-hydraulically controlled to change state to
maintain a desired transmission ratio.
2
Appeal 2016-007290
Application 14/037,430
Holmes
Tuckfield, et al.,
Oba
References and Rejection
US 7,128,680 B2 Oct 31, 2006
US 7,695,387 B2 Apr. 13, 2010
US 2012/0270691 Al Filed Mar. 23, 2012
Claims 2—5, 9—11 and 25—32 stand rejected under 35 U.S.C. § 103(a),
as unpatentable over Holmes, Oba, and Tuckfield. Final Act. 5—8.
We have reviewed the rejection of Claims 2—5, 9—11 and 25—32 in
light of Appellant’s arguments that the Examiner erred. We are persuaded
of error.
Appellant argues independent Claims 2, 3, and 4 as a group in view of
the limitations of Claim 2. App. Br. 15.
Appellant contends the primary reference, Holmes, is not concerned
with the “torque hole” problem that is solved by the present invention. Id.
The Examiner finds “torque hole” is not recited in the claims. We agree
with the Examiner that Appellant’s arguments respecting a torque hole are
not commensurate in scope with the claims.
The Examiner finds the modified drive system of Holmes and Oba
teaches the claimed invention, except Holmes and Oba, as modified, fails to
ANALYSIS
Claims 2-5,9-11 and 25-32: Obviousness over
Holmes, Oba, and Tuckfield.
Torque hole.
Internal combustion engine.
3
Appeal 2016-007290
Application 14/037,430
teach the motors operate together without connecting the engine shaft. Final
Act. 7. The Examiner finds Tuckfield teaches a drive system wherein the
motors operate together to cause transmission ratios to change steplessly
without a need to connect to an engine output shaft. Id.
Appellant contends that the present claims are limited to all-electric
embodiments in response to the Restriction Requirement issued November
11, 2014. App. Br. 13. Appellant argues the Examiner’s prima facie case is
flawed because it modifies Holmes and Obo to be compatible with the
hybrid (electric motors and internal combustion engine). Id. Appellant
argues the Examiner’s prima facie case is invalid because internal
combustion engines have been restricted from the claims. Id.
The Examiner finds the proposed modification of Holmes is proper
because it “is a basic construction of a vehicle electric system or an
operation of an electric vehicle mode (EV) in a hybrid vehicle that include
an internal combustion engine.” Ans. 9 (emphasis added).
Tuckfield teaches “[a] hybrid powertrain for a vehicle having a
disconnect clutch located between an internal combustion engine, or other
power source, and a hybrid transmission.” Tuckfield, Abstr. We fail to see
why it would have been obvious to one of ordinary skill in the automotive
arts to modify a transmission to accommodate an internal combustion engine
when such engine is explicitly excluded from the claimed design. We
disagree that any such motivation exists.
The principles of operation of the prior art must be changed.
Appellant argues “[i]f the proposed modification or combination of
the prior art would change the principle of operation of the prior art
invention being modified, then the teachings of the references are not
4
Appeal 2016-007290
Application 14/037,430
sufficient to render the claims prima facie obvious.” Id. at 16 (citing MPEP
2143.01, VI) (quoting In reRatti, 270 F .2d 810, 813, (CCPA 1959)).
Appellant argues the system architecture and principle of operation of
Holmes’ transmission are materially different from those of independent
claims 2—\. Id. Appellant argues Holmes teaches a “dual power path”
transmission which requires five gear elements operatively interconnected to
permit two countershafts to be selectively connectable to an output shaft. Id.
Appellant maintains the Examiner deconstructs Holmes to omit the second
of five gear rings and the two countershafts. Id. Appellant argues without
the two countershafts and the second gear ring that Holmes could not
function. Id.
The Examiner finds the system architecture of Holmes, and that of the
present invention, each disclose the operation of an electric vehicle mode “in
a hybrid vehicle that include [sic, “includes”] an internal combustion
engine.” Ans. 9.
Appellant re-iterates his argument that the Examiner’s selective
culling of various parts of Holmes’ transmission requires hindsight in view
of Appellant’s Specification. Reply Br. 5. We agree with Appellant.
The Examiner acknowledges Holmes’ additional gear elements are
not required by the claims and consequently, the Examiner finds it would not
change the principle of operation of a transmission to only consist of the
parts as set forth in the claims. Ans. 9. We disagree.
If the proposed modification or combination of the prior art would
change the principle of operation of the prior art invention being modified,
then the teachings of the references are not sufficient to render the claims
prima facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959). To function as
5
Appeal 2016-007290
Application 14/037,430
Holmes teaches, the reference transmission requires five gear rings (of
which the Examiner selects only four) and two countershafts (which the
Examiner omits entirely). The Examiner does not explain how Holmes
would function with various of its pieces missing.
Where, as here, the degree of modification that would have been
required is significant, then proposed modification would not have been a
“mere substitution of one element for another known in the field.” See KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Rather, the Examiner’s
reasoning will appear to demonstrate little more than “that each of [the
elements of the claimed subject matter] was, independently, known in the
prior art,” Id. at 418. “A patent composed of several elements is not proved
obvious merely by demonstrating that each element was, independently,
known in the prior art.” Id. at 401.
In view of the foregoing, we decline to sustain the rejection of
independent Claims 2, 3, and 4, or of claims dependent therefrom.
DECISION
The rejection of Claims 2—5, 9—11, and 25—32 under 35 U.S.C.
§ 103(a) is REVERSED.
REVERSED
6