Ex Parte Knowles

Patent Trial and Appeal Board

Apr 30, 2014

11823956 (P.T.A.B. Apr. 30, 2014)

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.
11/823,956 06/29/2007 Shaun G. Knowles 81162305 3643
28866 7590 04/30/2014
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
DODD, RYAN P
ART UNIT PAPER NUMBER
3655
MAIL DATE DELIVERY MODE
04/30/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHAUN G. KNOWLES
____________

Appeal 2012-000082
Application 11/823,956
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
NEIL T. POWELL, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000082
Application 11/823,956
2
STATEMENT OF THE CASE
Shaun Knowles (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. §§ 102(a) and (e) claims 1-4,
7-11, 14, 15, and 17 as anticipated by Enström (US 7,631,739 B2, iss. Dec.
15, 2009) and under 35 U.S.C. § 103(a) claims 6 and 13 as unpatentable
over Enström; claims 5, 12, and 18 as unpatentable over Enström and Janson
(US 2006/0144665 A1, publ. Jul. 6, 2006)1; and claim 16 as unpatentable
over Enström and Schneider (US 2006/0196751 A1, publ. Sep. 7, 2006).
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to “an assembly for transmitting rotating
power produced by two power sources to an automotive power
transmission.” Spec. 1, ll. 8-10 and fig. 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A drive apparatus, comprising:
first and second power sources;
first and second transmission input shafts;
a hub secured to the power sources, and supported on
bearings at opposite axial ends thereof;
a first clutch connecting the first input shaft and the hub;
a second clutch connecting the second input shaft and the
hub;
a sealed chamber containing the clutches, the hub and
one of the power sources.

1 In the Final Rejection, mailed December 22, 2010, the Examiner cited
to Janson ´637 (see page 9), while in the Examiner’s Answer, the Examiner
cited to Janson ´665 (see page 14). The Examiner explains that these
references are equivalent documents. See Miscellaneous Communication to
Applicant, mailed September 8, 2011. Appellant has not come forth with
any evidence to show otherwise and as such, we adopt the Examiner’s
position.
Appeal 2012-000082
Application 11/823,956
3

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The anticipation rejections based upon Enström
Claims 1-4, 7-11, and 14
Independent claim 1 requires, inter alia, “a sealed chamber containing
the clutches, the hub and one of the power sources.” App. Br., Claims
App’x. Similarly, independent claim 8 recites “a sealed chamber containing
the clutches, the hub and the electric machine.” Id.
The Examiner found that the elements shown in annotated Figure 2 of
Enström below, namely, an outer seal, an inner seal, and a bearing, shown
from top to bottom, seal a chamber to form a “sealed chamber,” as called for
by each of independent claims 1 and 8. See Ans. 8, 23. According to the
Examiner, “[e]ach of the elements in the Figure below serve to close the
chamber of Enstr[ö]m ‘739 and as such block liquid, gas, from flowing
freely into or out of the chamber.” Ans. 21.
The Examiner’s annotated Figure 2 of Enström is reproduced below:

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Appeal 2012-000082
Application 11/823,956
5
At the outset, we note that claims are to be given their broadest
reasonable interpretation consistent with the specification, reading claim
language in light of the specification as it would be interpreted by one of
ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). An ordinary and customary meaning of the term
“seal” is “a tight and perfect closure (as against the passage of gas or
water).” Merriam Webster’s Collegiate Dictionary (10th Ed. 1997).
Appellant’s Specification describes a “sealed chamber” 98 hydraulically
isolated from damper/flywheel assembly 82 by lip seal 58 and adapter
housing 38. Spec. 5, ll. 11-13 and 24-29; Spec. 8, ll. 23-26; and fig. 1. We
thus interpret the term “sealed chamber” to be a chamber that forms a tight
closure, that is, a hydraulically isolated chamber.
While the Examiner is correct that the components shown in the
Examiner’s annotated Figure 2 of Enström may constitute sealing elements,
this in no way demonstrates that Enström’s device forms a “sealed
chamber,” as called for by independent claims 1 and 8. For example, the
inner seal seals a chamber that does not include electric machine 21, 23. See
Enström, fig. 2. Furthermore, with respect to the bearing element, we agree
with Appellant that a bearing does not necessarily constitute a sealing
element, but could also form a supporting element for damper 39. App. Br.
10. Lastly, we note that although the Examiner interprets the outer seal also
as an adapter housing, the Examiner has not come forth with any persuasive
evidence that this component acts as both an adapter housing and a sealing
element. See Ans. 10-11. As such, although Enström’s components may
constitute sealing elements, they do not necessarily form a “sealed
chamber.” Therefore, the Examiner’s finding that Enström’s components
form a “sealed chamber” is mere speculation and conjecture. Accordingly,
Appeal 2012-000082
Application 11/823,956
6
for the foregoing reasons, we do not sustain the rejection of independent
claims 1 and 8, and their respective dependent claims 2-4, 7, 9-11, and 14 as
anticipated by Enström.

Claim 15
The Examiner found that Enström teaches a motor 2 (engine) attached
to a crankshaft, an electromotor 22 (electric machine), first and second input
shafts 4, 5 (transmission shafts), a hub 11, 16 driveably connected to motor 2
and electromotor 22, a first clutch 7 for connecting input shaft 4 and hub 11,
16, and a second clutch 8 for connecting second input shaft 5 and hub 11,
16. Ans. 6-7.
Appellant argues that “Enström’s clutch hub is not secured or
driveably connected to motor [2]” and “[b]earings 24 do not secure or
driveably connect clutch hub 11 to the electric motor 22, as the Examiner
states.” App. Br. 12. Thus, according to Appellant, “Enström’s clutch hub
11 is secured to only one of the power sources, engine 2, but not to rotor
21.” App. Br. 13; see also Reply Br. 2-3.
We are not persuaded by Appellant’s position because claim 15 does
not require that the hub be secured to the motor and electric motor, as
Appellant argues. As stated by our reviewing court in In re Hiniker Co., 150
F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is
well established that limitations not appearing in the claims cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 15 merely requires a “hub . . . driveably connected to the electric
machine and to the engine.” We agree with the Examiner’s findings that
Enström’s clutch hub 11 and coupling portion 16/cylinder shaped portion 18
together constitute a “hub,” as called for by claim 15, because clutch hub 11
Appeal 2012-000082
Application 11/823,956
7
is driveably connected to the crankshaft of motor 2 through clutch cup 12
and damper 39 and coupling portion 16 is driveably connected to
electromotor 22. See Ans. 17-18; see also Enström, fig. 1.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 15 as anticipated by Enström.

Claim 17
Claim 17, which depends from independent claim 15, adds the
limitations of a “boundary of a sealed chamber,” a “second boundary of the
chamber,” and a “third boundary of the chamber.” Id. (emphasis added).
However, for the reasons set forth supra, the Examiner’s finding that
Enström’s components form a “sealed chamber” is mere speculation and
conjecture. See Ans. 10. We thus do not sustain the rejection of claim 17 as
anticipated by Enström.

The obviousness rejections
Claims 5, 6, 12, and 13
The Examiner’s proposed modification of Enström does not remedy
the deficiencies of Enström vis-à-vis the subject matter of claims 1 and 8 as
discussed supra. See Ans. 15-16. The Examiner’s use of Janson’s teachings
likewise does not remedy the deficiencies of Enström. See Ans. 14-152.
Accordingly, for the same reasons, we also do not sustain the rejections
under 35 U.S.C. § 103(a) of claims 6 and 13 as unpatentable over Enström
and of claims 5 and 12 as unpatentable over Enström and Janson.

2 The Examiner used Janson to show a resolver (sensor wheel 46) and a
header (sensor 44) located in a chamber.
Appeal 2012-000082
Application 11/823,956
8
Claim 16
Claim 16, which depends from independent claim 15, adds the
limitation of a “sealed chamber containing the clutch, the hub and the
electric machine.” App. Br., Claims App’x (emphasis added). For the
reasons set forth supra, the Examiner’s finding that Enström’s components
form a “sealed chamber” is mere speculation and conjecture. See Ans. 10.
Furthermore, the Examiner’s use of Schneider’s teachings do not remedy the
deficiencies of Enström as described above. See Ans. 16-173. We thus do
not sustain the rejection of claim 16 under 35 U.S.C. § 103(a) as
unpatentable over Enström and Schneider.

Claim 18
Appellant argues that, “[n]either Enström nor Janson discloses a
resolver or a header located in a hydraulically sealed chamber, as claim 18
recites.” App. Br. 15. We are not persuaded by Appellant’s argument
because claim 18, which depends from independent claim 15, does not
require a “hydraulically sealed chamber.” Claim 18 merely requires a
“resolver” and a “header” that are located within a “chamber.” The
Examiner correctly found that Janson discloses a sensor wheel 46 (resolver)
and a sensor 44 (header) located in a chamber. Ans. 15. Appellant has not
shown error in the Examiner’s findings. Accordingly, we sustain the
rejection of claim 18 over the combined teachings of Enström and Janson.

3 The Examiner used Schneider to show a damper located outside a
chamber containing a hub and two clutches.
Appeal 2012-000082
Application 11/823,956
9
SUMMARY
The Examiner’s decision is affirmed as to claims 15 and 18 and
reversed as to claims 1-14, 16, and 17.
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).

AFFIRMED-IN-PART

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