Ex Parte Lewis

Board of Patent Appeals and Interferences

Aug 18, 2009

11115939 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
____________________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
____________________ 6
7
Ex parte LEIF LEWIS 8
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10
Appeal 2008-004012 11
Application 11/115,939 12
Technology Center 3600 13
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Decided: August 18, 2009 16
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Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and 19
FRED A. SILVERBERG, Administrative Patent Judges. 20
21
SILVERBERG, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL25
26
STATEMENT OF THE CASE 27
Leif Lewis (Appellant) seeks our review under 35 U.S.C. § 134 of the 28
final rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b) 29
(2002). 30
31
32
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SUMMARY OF DECISION 1
We AFFIRM. 2
3
THE INVENTION 4
The Appellant’s claimed invention is directed to a multi-plate clutch 5
to interruptably transfer torque between an engine and a transmission (Spec. 6
1, 6: ¶¶ [0001] and [0024]). 7
The invention is readily understood by reference to Figure 1, and 8
Claim 1. 9
Figure 1 is reproduced below: 10
11
Figure 1 shows an exploded view of a multi-plate clutch 12 including 12
a stabilizer plate 20 (Spec. 5-6: ¶¶ [0017] and [0024]). 13
Claim 1, reproduced below, is representative of the claimed subject 14
matter on appeal: 15
1. A multi-plate clutch for interruptably 16
transferring torque between a first and second 17
rotatable component, comprising: 18
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an internal shaft rotationally coupled to said 1
first component; 2
a plurality of first plates each concentrically 3
arranged along said shaft and rotationally coupled 4
thereto; 5
a cylindrical shell rotationally coupled to 6
said second rotatable component and 7
concentrically arranged around said first plates and 8
shaft; 9
a plurality of second plates concentrically 10
arranged along said shaft in an alternating 11
sequence relative to said first plates and 12
rotationally coupled to said shell so as to provide 13
for a first amount of rotational play relative to said 14
shell; 15
a third plate concentrically arranged along 16
said shaft and rotationally coupled to said shell so 17
as to provide for a second amount of rotational 18
play relative to said shell, wherein said second 19
amount of play is less than said first amount of 20
rotational play; and 21
means for compressing said first, second and 22
third plates against one another to enable a transfer 23
of torque between said first and second 24
component. 25
26
THE REJECTION 27
The Examiner relies upon the following as evidence of 28
unpatentability: 29
Matsumoto (as translated1) JP 10-89381 Apr. 7, 1998 30

1 The Examiner’s Answer makes references to a Translation performed by
the USPTO dated October 2007 (Ans. 5), while the Appeal Brief makes
reference to another Translation, which does not appear to be certified (App.
Br. 11). Appellant has not contested the Examiner's use of the Translation
performed by the USPTO. Accordingly, we rely on he Translation
performed by the USPTO.
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(hereinafter referred to as “JP 10-89381”) 1
2
Appellant’s Admitted Prior Art (AAPA) in the Specification (e.g., Spec. 1-2: 3
¶¶ [0003] and [0005]). 4
5
The following rejection by the Examiner is before us for review: 6
Claims 1-26 are rejected under 35 U.S.C. § 103(a) as being 7
unpatentable over AAPA in view of JP 10-89381. 8
9
ISSUE 10
The issue before us is whether the Examiner has articulated a reason 11
with rational underpinning to combine the teachings of AAPA and JP 10-12
89381 as called for in claim 1. 13
14
FINDINGS OF FACT 15
We find that the following enumerated findings are supported by at 16
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 17
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for 18
proceedings before the Office). 19
20
21
The Examiner’s Findings 22
1. The Examiner finds that AAPA describes all of the limitations 23
called for in claim 1, except that AAPA does not describe a third 24
plate concentrically arranged along the shaft and rotationally 25
coupled to the [cylindrical] shell so as to provide for a second 26
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amount of rotational play relative to the shell, wherein the second 1
amount of rotational play is less than a first amount of rotational 2
play as called for in claim 1 (e.g., Spec. 1-2: ¶¶ [0003] and [0005]) 3
(Ans. 4-5). 4
2. The Examiner finds that JP 10-89381 describes a multi-plate clutch 5
having first and second plates 101, 201, an intermediate plate 202, 6
and a cam actuator for compressing the plates to engage the clutch. 7
The intermediate plate 202 is spline-engaged to a second member 8
with a play smaller than a second clutch member (Ans. 5) 9
(emphasis added). 10
3. The Examiner concludes that it would have been obvious to 11
combine the teachings of AAPA and JP 10-89381 by providing 12
AAPA with a third plate rotationally coupled to the shell with less 13
play than the other plates as taught by JP for shifting smoothly 14
from a connection position to a disconnection position (Ans. 5; 15
Final Rejection 4:1-4). 16
The Board’s Findings 17
4. JP 10-89381 describes a transmission case 100, a cam member 18
109, a hub 200, first clutch members 101, second clutch members 19
201 and an intermediate plate 202 (Translation 7-8: ¶¶ [0006], 20
[0008]). The transmission case 100 is spline-connected to the first 21
clutch members 101. The hub 200 is spline-connected to the 22
second clutch members 201 and to the intermediate plate 202. 23
(Translation 7: ¶ [0006]; fig. 7) 24
5. JP 10-89381 further describes that “the play of the spline 25
engagement between the first clutch member (201) and hub (200) 26
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is larger than that of the spline engagement between intermediate 1
plate (202) and hub (200) ….” (Translation 10: ¶ [0015]; fig. 7) 2
(emphasis added). 3
6. JP 10-89381 still further describes “that transition from the state 4
with generation of the cam force to the state without generation of 5
the cam force can be performed quickly and smoothly.” 6
(Translation 12: ¶ [0018]). 7
7. Appellant has not contested the Examiner’s findings as to 8
teachings of the AAPA (App. Br. 8). 9
8. Additional findings as necessary appear in the Analysis portion of 10
this opinion. 11
12
PRINCIPLES OF LAW 13
Appellant’s Burden 14
Appellant has the burden on appeal to the Board to demonstrate error 15
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 16
2006) (“On appeal to the Board, an applicant can overcome a rejection 17
[under § 103] by showing insufficient evidence of prima facie obviousness 18
or by rebutting the prima facie case with evidence of secondary indicia of 19
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 20
1998)). See also Ex parte Yamaguchi, 88 USPQ2d 1606, 1614 (BPAI 2008) 21
[burden on appeal] (on appeal, applicant must show examiner erred); Ex 22
parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83 23
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509, 24
1519 (BPAI 2007). 25
26
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Obviousness 1
“Section 103 forbids issuance of a patent when ‘the differences 2
between the subject matter sought to be patented and the prior art are such 3
that the subject matter as a whole would have been obvious at the time the 4
invention was made to a person having ordinary skill in the art to which said 5
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 6
(2007). The question of obviousness is resolved on the basis of underlying 7
factual determinations including (1) the scope and content of the prior art, 8
(2) any differences between the claimed subject matter and the prior art, (3) 9
the level of skill in the art, and (4) where in evidence, so-called secondary 10
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See 11
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions 12
might be reordered in any particular case, the [Graham] factors continue to 13
define the inquiry that controls.”). 14
In KSR, the Supreme Court held that “[i]f a technique has been used to 15
improve one device, and a person of ordinary skill in the art would recognize 16
that it would improve similar devices in the same way, using the technique is 17
obvious unless its actual application is beyond his or her skill.” Id. at 417. 18
In KSR, the Supreme Court stated that: 19
Often, it will be necessary for a court to look to 20
interrelated teachings of multiple patents; the 21
effects of demands known to the design 22
community or present in the marketplace; and the 23
background knowledge possessed by a person 24
having ordinary skill in the art, all in order to 25
determine whether there was an apparent reason to 26
combine the known elements in the fashion 27
claimed by the patent at issue. 28
29
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KSR, 550 U.S. at 418. The Court noted that “[t]o facilitate review, this 1
analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 2
(Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained 3
by mere conclusory statements; instead, there must be some articulated 4
reasoning with some rational underpinning to support the legal conclusion of 5
obviousness.”)). However, “the analysis need not seek out precise teachings 6
directed to the specific subject matter of the challenged claim, for a court 7
can take account of the inferences and creative steps that a person of 8
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. 9
In KSR, the Supreme Court stated that: 10
Helpful insights, however, need not become rigid 11
and mandatory formulas; and when it is so applied, 12
the TSM test is incompatible with our precedents. 13
… There is no necessary inconsistency between 14
the idea underlying the TSM test and the Graham 15
analysis. But when a court transforms the general 16
principle into a rigid rule that limits the 17
obviousness inquiry, as the Court of Appeals did 18
here, it errs. 19
Id. at 419. 20
21
Limitations Not Claimed 22
It is well established that limitations not appearing in the claims 23
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 24
(CCPA 1982). 25
26
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ANALYSIS 1
Appellant argues claims 1-26 as a group (App. Br. 8). As such, we 2
select claim 1 as representative of the group, and claims 2-26 will stand or 3
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007). 4
Appellant contends that there is no teaching, suggestion or motivation 5
for combining the teachings of AAPA and JP 10-89381 in the manner called 6
for in claim 1 (Reply Br. 3-4; App. Br. 9-10). To the extent that the 7
Appellant is arguing for a rigid application of the teaching-suggestion-8
motivation test, this argument is not persuasive in light of the Court’s 9
decision in KSR, 550 U.S. at 419 (holding that it is error to apply the 10
teaching-suggestion-motivation test as a rigid formula to limit the 11
obviousness inquiry). 12
Appellant contends that his invention reduces wear and tear, and 13
reduces the noise generated by the keys of the clutch plate (Reply Br. 4, 14
App. Br. 10). The reduced wear and tear, and the reduced noise generated 15
by the keys of the clutch plate are not called for in the claims. Therefore, 16
they cannot be relied upon for patentability. See Self, 671 F.2d at 1348. 17
Appellant contends that the modification of AAPA by the teachings of 18
JP 10-89381 does not yield the clutch as called for in claim 1 (App. Br. 9-19
10). Appellant further contends that although JP 10-89381 teaches a 20
variation of rotational play amongst a set of clutches, such variation is 21
specified relative to an internal shaft rather than relative to an external shell 22
(App. Br. 9). 23
The Examiner found that AAPA describes all of the limitations called 24
for in claim 1, except that AAPA does not describe a third plate 25
concentrically arranged along the shaft and rotationally coupled to the 26
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cylindrical shell so as to provide for a second amount of rotational play 1
relative to the shell, wherein the second amount of rotational play is less 2
than a first amount of rotational play as called for in claim 1 (Fact 1). 3
Appellant has not contested the Examiner’s findings as to teachings of the 4
AAPA (Fact 7). 5
The Examiner further found that JP 10-89381 describes a clutch 6
having an intermediate plate 202 that is spline-engaged to a second member 7
with a play smaller than a second clutch member (Fact 2). In particular, JP 8
10-89381 describes a hub (internal member) 200 spline-connected to the 9
second clutch members 201 and to the intermediate plate 202 (Fact 4). JP 10
10-89381 further describes that “the small play that exists in the spline 11
connection between the first clutch member 201 and the hub 200 is greater 12
than the play that exists between the intermediate plate 202 and the hub 13
200.” (Fact 5). JP 10-89381 still further describes that the clutch device 14
“allows … smooth transfer from the engagement condition to the 15
disengagement condition.” (Fact 6). 16
Appellant has not provided any reason why the spline-engagement 17
between the intermediate plate 202 and the hub (internal member) 200 as 18
described by JP 10-89381 would not operate in a similar manner on the 19
cylindrical (outer) shell. Further, we see so no reason why the spline-20
engagement between the intermediate plate 202 and the hub (internal 21
member) 200 as described by JP 10-89381 would not operate in a similar 22
manner on the cylindrical (outer) shell. 23
We see no error in the Examiner’s analysis (Fact 3) and conclude that 24
it would have been obvious to a person having ordinary skill in the art to 25
combine the teachings of AAPA and JP 10-89381 by providing AAPA with 26
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a third plate rotationally coupled to the cylindrical shell with less play than 1
the other plates connected to the cylindrical shell as taught by JP 10-89381 2
at 200, 202. 3
We find that providing a third plate connected to a cylindrical shell 4
with less play than the second plate connected to the cylindrical shell could 5
have been reasonably predicted to yield the result of allowing the clutch to 6
shift smoothly from a connection position to a disconnection position. See 7
KSR, 550 U.S. at 417 (holding that “[i]f a technique has been used to 8
improve one device, and a person of ordinary skill in the art would recognize 9
that it would improve similar devices in the same way, using the technique is 10
obvious unless its actual application is beyond his or her skill.”) 11
Therefore, we conclude that the Appellant has not demonstrated that 12
the Examiner erred in rejecting claim 1 over AAPA in view of JP 10-89381. 13
The Appellant has likewise not demonstrated error in the Examiner’s 14
rejection of claims 2-26, which stand or fall with claim 1. 15
16
CONCLUSION OF LAW 17
Appellant has not established that the Examiner erred in articulating a 18
reason with rational underpinning to combine the teachings of AAPA and JP 19
10-89381 as called for in claim 1. 20
21
DECISION 22
The decision of the Examiner to reject claims 1-26 over AAPA in 23
view of JP 10-89381 is affirmed. 24
No time period for taking any subsequent action in connection with 25
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 26
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AFFIRMED 2
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FULWIDER PATTON LLP 15
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LOS ANGELES, CA 90045 18