Ex Parte Klippert

Patent Trial and Appeal Board

Jun 17, 2013

10939106 (P.T.A.B. Jun. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte UWE KLIPPERT
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Appeal 2011-005247
Application 10/939,106
Technology Center 3600
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Before: JAMES P. CALVE, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005247
Application 10/939,106

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
52-73. Claims 52 and 67 are independent. We have jurisdiction under 35
U.S.C. § 6(b).
The claims are directed to a gear unit for a cable window lift system.
Claim 67, reproduced below, is illustrative of the claimed subject matter:
67. A cable window lift system for mounting
inside a door of a motor vehicle, comprising:
a gear mechanism and
a rotatably mounted cable drum for winding
and unwinding a cable of the cable window lift
system,
wherein said gear mechanism includes a
worm gear and a worm wheel coupled to the worm
gear and coupled to said rotatably mounted cable
drum whereby rotation of the worm gear rotates
the worm wheel and the cable drum, and wherein
a diameter of the cable drum is in a range from 22
mm to 30 mm and a gear ratio of the gear
mechanism is in a range from 1 :38 to 1 :55.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Becker
Adam
Uchimura
Bong
US 4,428,250
US 5,040,430
US 6,408,572 B1
US 6,668,902 B2
Jan. 31, 1984
Aug. 20, 1991
Jun. 25, 2002
Dec. 30, 2003

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REJECTIONS
The Examiner made the following rejections:
Claims 52-54, 57-61 and 67-69 stand rejected under 35 U.S.C §103(a)
as being unpatentable over Bong. Ans. 3-4.
Claims 55 and 56 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Bong and Uchimura. Ans. 6.
Claims 62, 64 and 65 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Bong and Adam. Ans. 6-7.
Claim 63 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Bong Adam and Becker. Ans. 7.
Claim 66 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Bong . Ans. 8.
Claims 67-70 and 72 stand rejected under 35 U.S.C §103(a) as being
unpatentable over Adam. Ans. 8.
Claim 71 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Adam and Becker. Ans. 10.
Claim 73 stands rejected under 35 U.S.C §103(a) as being
unpatentable over Adam. Ans. 10.

ANALYSIS
Appellant argues claims 52-66 and claims 67-73 as separate groups,
where claims 52 and 67 are the only independent claims and claim 52 is
rejected as obvious in view of Bong, and claim 67 is rejected as obvious in
view of either Bong or Adam. Both independent claims include the same
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specific ranges argued by Appellant as nonobvious.1 App. Br. 8-18. No
other arguments aside from the non-obviousness of the claimed ranges with
respect to Bong and Adam are presented for either claim 52 or 67, or their
respective dependent claims 53-66, and 68-73. See Id.
Regarding claims 52 and 67, the Examiner found that Bong and Adam
each disclose a gear unit for operating a cable window lift system having a
drive, a gear mechanism, and a cable drum which winds, and unwinds a
cable actuating the cable window lift system. Ans. 3, 8. The Examiner also
found that the cable drum was disclosed as a single, unitary element directly
connected to a worm wheel of the gear mechanism without use of additional
damping elements as recited in claim 52. Ans. 4. The Examiner found that
Bong and Adam are silent as to particular dimensions of the cable drum, as
well as to the gear ratio of the gear mechanism but determined that the gear
ratio, cable drum diameter and the power output of the motor are result
effective variables, and as such reasoned that one of ordinary skill in the art
could experiment to ascertain other workable ranges diameter and respective
gear ratio, and that the claimed ranges were an obvious matter of
engineering design choice. Ans. 5-6, 10.
Appellant argues that the Examiner has not provided sufficient
evidence that the ranges as claimed would be an obvious matter of design
choice and argues that contrary to the Examiner’s position, one of ordinary
skill in the art would not routinely experiment with the cable drum and gear
mechanism parameters to ascertain workable ranges due to specific technical

1 Both independent claims 52 and 67 recite the same range limitations
wherein the cable drum has a diameter in a range from about 22 mm to about
30 mm; and the gear mechanism has a gear ratio in a range from about 1:38
to 1:55.
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constraints in the structural design of cable window lift systems and
standardization in the industry. App. Br. 10-11. Appellant provides a
Declaration from inventor Uwe Klippert, including evidence of prior patents
disclosing conventional parameters for the cable drum and gear mechanism
and points out that the claimed range for the drive gear is well outside the
conventional ranges of around 1:62 to 1:84. Decl. of Uwe Klippert pg. 1.
Appellant specifically asserts that the Examiner has not identified any
evidence or rationale which supports the position that one of ordinary skill in
the art would routinely experiment with the parameters of the cable drum
and gear mechanism outside of the known ranges. App. Br. 12.
“[T]he discovery of an optimum value of a variable in a known
process is normally obvious.” Exceptions to this rule include (1) the results
of optimizing a variable were unexpectedly good and (2) the parameter
optimized was not recognized in the prior art as one which would affect the
results. In re Antonie, 559 F.2d 618, 620 (CCPA 1977). We agree with the
Examiner’s fact finding, statement of the rejection and responses to
Appellant’s arguments as set forth in the Answer. We find that the
Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comments.
Appellant does not contest that the cable drum diameter and gear ratio
of the gear mechanism are result effective variables in that the prior art
recognized gear ratios and cable drum diameters as design parameters to
vary to affect the operation of window lift systems. Appellant essentially
argues two points, first, that a person of skill in the art of vehicle window
would not deviate from the known ranges, nor undertake routine
experimentation to determine optimal cable drum diameters and gear ratios
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different from those conventionally used. App. Br. 10-11, Reply Br. 3.
Second, Appellant contends that persons of skill in the art generally work in
the conventional ranges for cable drum diameter and gear ratio because
deviations from the standardized range are very difficult based on the narrow
design constraints for vehicle doors, window-lift friction, window travel,
cable strength, vehicle power output, electric motor power for example.
App. Br. 11-12, citing Spec. 1, l.9 – 2, l. 22 and Decl. of Uwe Klippert, pg.
3, section II.
Addressing the first argument, while one of skill may generally use
the known ranges for cable drum diameters and respective gear ratios, this
does not mean that vehicle door and window design constraints could not
arise with which the standard ranges would not be compatible or that a
skilled artisan would not have been motivated to experiment with ranges
beyond such known design parameters to seek further improvement in
known or new window lift systems. Thus, it is quite reasonable for a
designer of window cable lift systems to contemplate other cable drum
diameters, e.g. smaller or larger, or a different gear ratio outside of the
known ranges, which would be compatible with the particular vehicle door
and window lift designs. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
Secondly, we are not persuaded that determining different cable drum
diameters and relative gear ratios to drive the cable drum outside the
conventional ranges is particularly difficult for one of ordinary skill in the
art. As the Examiner points out, despite the various static, dynamic and
power constraints listed in Appellant’s Specification, the ability to change
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either the cable drum diameter, or the gear ratio, and the resultant effect of
this change being applied to the corresponding gear ratio or cable drum
diameter respectively, in order to achieve effective lowering and raising of a
vehicle window, would be within the skill of any mechanical engineer. Ans.
12.
Appellant argues also that the Examiner has not properly considered
Appellant’s evidence of standard industry window lift design parameters and
arguments explaining why one of skill in the art would not design a drum
diameter and gear ratio outside of the standard ranges, and “thus failed to
rebut the reasons Appellant described on the record for why the ordinarily-
skilled person would not have designed a gear unit with the claimed drum
diameters and gear ratios.” Reply Br. 4. Appellant’s successful
development of a working window lift system with certain parameters
outside of the generally accepted range, and which system is to some extent
commercially successful does not provide evidence that the particular ranges
are critical or achieve unexpected results relative to the prior art range. See
Decl. of Uwe Klippert, pg. 5, section VI. “The law is replete with cases in
which the difference between the claimed invention and the prior art is some
range or other variable within the claims. . . . In such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.1990); see
also In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (“This court and its
predecessors have long held, however, that even though applicant's
modification results in great improvement and utility over the prior art, it
may still not be patentable if the modification was within the capabilities of
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one skilled in the art, unless the claimed ranges ‘produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art.’”) (citations omitted).
Appellant’s attorney arguments and evidence do not apprise us that
these parameters optimized were not recognized in the prior art as one which
would affect the results, nor that one of ordinary skill in the art could not
have optimized the cable drum diameter and respective gear ratio outside of
the conventional parameters given design constraints which could not
accommodate the standard cable drums and gear ratios. Accordingly, we
sustain the Examiner’s rejection of claims 52 and 67 as unpatentable over
Bong, or Adam, and claims 53-66 and 68-73 fall therewith.
DECISION
For the above reasons, the Examiner’s rejection of claims 52-73 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)(1)(iv) (2009).

AFFIRMED

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