Ex Parte Lein et al

Patent Trial and Appeal Board

Feb 27, 2013

11440765 (P.T.A.B. Feb. 27, 2013)

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.
11/440,765 05/25/2006 Lars Lein LUKP:212US 7882
7590 02/27/2013
Robert P. Simpson, Esq.
Simpson & Simpson, PLLC
5555 Main Street
Williamsville, NY 14221
EXAMINER
KNIGHT, DEREK DOUGLAS
ART UNIT PAPER NUMBER
3655
MAIL DATE DELIVERY MODE
02/27/2013 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 LARS LEIN, JAN GUNNAR ROYLAND,
OLE ANDRE GJERPE, CHRISTER SVENKERUD,
OLE JONNY WAERP, and VIGGIO L. NORUM
____________________

Appeal 2010-010993
Application 11/440,765
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, BRETT C. MARTIN, and
BEVERLY M. BUNTING, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010993
Application 11/440,765
2
STATEMENT OF CASE
Lars Lein et al. (Appellants) appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-4 and 61. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

THE INVENTION
Appellants’ claims are directed generally to a method and device for
controlling a gearshift mechanism. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for controlling a gearshift mechanism, said
gearshift mechanism having at least one shifting element, a gear
release element, a shift actuator and a selector actuator, in
which the shifting element is movable by the selector actuator
along a selector track, and is movable from the selector track at
sites spaced from each other into shift tracks by means of the
shift actuator for engagement of a gear, and the gear release
element is coupled to the shifting element, so that during
engagement of the gear, the gear release element disengages a
previously engaged gear, comprising the step of moving the
shifting element by the shift actuator, after engagement of the
gear, in the direction toward the selector track into a rest
position located adjacent to the intersection of the shift track
and the selector track, in which rest position the shifting
element remains, until the shifting element is moved for
engagement of a new gear, wherein moving the shifting element
into the rest position after engagement of the gear significantly

1 Claim 5 was originally rejected as both obvious and indefinite, but
Appellants cancelled claim 5 via an Amendment dated June 4, 2010. This
cancellation also effectively withdraws the rejection of claim 5 under 35
U.S.C. § 112, second paragraph because it was the only claim subject to this
ground of rejection. Therefore, we do not address the rejections of claim 5.
See Reply Br. 1-2; see also Ans. 3.
Appeal 2010-010993
Application 11/440,765
3
shortens a first path the shifting element must travel between
the gear and the new gear during engagement of the new gear.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Norum
Zimmermann
US 2004/0112158 A1
US 2004/0129100 A1
Jun. 17, 2004
Jul. 8, 2004

THE REJECTION ON APPEAL
The Examiner made the following rejection:
Claims 1-4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Norum and Zimmermann. Ans. 3.

ANALYSIS
The Examiner finds that Zimmermann teaches a shift position 676 in
which a shift element resides after a shift. Ans. 4. The Examiner refers to
this as a rest position “located adjacent to the intersection of the shift and the
selector track” and also finds that this movement occurs “after engagement
of the gear.” Ans. 4-5.
Appellants challenge the rejection of independent claims 1 and 3,
from which claims 2, 4, and 6 variously depend, because the cited references
fail to teach or suggest all of the elements of the claimed invention. See
App. Br. 14-18. Appellants specifically argue that
[i]n particular, the Examiner has failed to identify a gear
mechanism in which, after engagement of a gear, a shift
element is moved to a rest position adjacent to an intersection
of a shift track with a selector track, wherein movement of the
shifting element to the rest position significantly shortens a path
the shifting element must travel to engage a new gear.
Appeal 2010-010993
Application 11/440,765
4
App. Br. 14. Both claim 1 and claim 3 make it clear that the rest position is
a distinct position into which the shifting element moves after engagement
of the gear. The claims also make it clear that this resting position is
intended to “significantly shorten[] a first path the shifting element must
travel” and that the rest position be “adjacent to the intersection of the shift
track and the selector track.” See App. Br. 27-28. Appellants’ Figure 1
shows that, in one embodiment, this rest position T lies at a position fairly
close to selector track W and substantially opposite from end stop SII, which
is near gear position PII, along shift track S2.2 Spec. para. [0020].
Appellants argue that Zimmerman teaches that “[w]hen the gears are
engaged, the selector fork is positioned in predetermined selector fork
positions” and that this “strongly implies that the selector forks are already
in the predetermined positions, such as position 676, before and during
engagement of the gear.” App. Br. 17 (emphasis removed). Appellants
further argue that Zimmermann, thus, fails to teach “moving the shifting
element…into a rest position…wherein moving the shifting element into the
rest position…significantly shortens a first path the shifting element must
travel between the gear and the new gear.” App. Br. 18. As we understand
Zimmermann’s teaching of position 676, engagement of the gear is
associated with position 676 so the engagement of the gear in position 676
cannot properly be considered a rest position as claimed in each of claims 1
and 3. The Examiner refers to Zimmermann at paragraph [0350], which
makes clear that “[w]hen the gears are engaged, the selector fork is
positioned in predetermined selector fork positions 672, 674, 676, 678, 680,
682, which are assigned to the respective gears, in accordance with a
predetermined coding characteristic.” Accordingly, position 676 is not a rest

2 Referring to Figure 1 as amended July 7, 2008.
Appeal 2010-010993
Application 11/440,765
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position as claimed (one that is distinct from a position associated with
engagement of the gear) because position 676 is the position associated with
engagement of the gear. Thus, we do not see a teaching in Zimmermann
that involves moving the shifting element into a rest position after
engagement of the gear, as claimed in both of claims 1 and 3. As such, we
do not sustain the Examiner’s rejection of claims 1-4 and 6 as obvious over
Norum and Zimmermann.

DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1-4 and 6.

REVERSED

mls