Ex Parte Mathie et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201813735736 (P.T.A.B. Feb. 6, 2018) Copy Citation 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. 13/735,736 01/07/2013 Craig M. Mathie 83233736 6017 28866 7590 02/08/2018 MACMILLAN, SOBANSKI & TODD, LLC - FORD ONE MARITIME PLAZA - FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604 EXAMINER FERGUSON, MICHAEL P ART UNIT PAPER NUMBER 3679 NOTIFICATION DATE DELIVERY MODE 02/08/2018 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 @ mstfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG M. MATHIE, SHAILESH S. KOZAREKAR, JAMES G. BUVALIC, and NORMAN J. BIRD Appeal 2017-002597 Application 13/735,736 Technology Center 3600 Before STEFAN STAICOVICI, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Craig M. Mathie et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Action (dated Aug. 18, 2015, hereinafter “Final Act.”) rejecting claims 1-6. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 Ford Global Technologies LLC is the applicant as provided in 37 C.F.R. § 1.46 and is identified as the real party in interest in Appellants’ Appeal Brief (filed Feb. 18, 2016, hereinafter “Appeal Br.”). Appeal Br. 1. Appeal 2017-002597 Application 13/735,736 SUMMARY OF DECISION We REVERSE. INVENTION Appellants’ invention relates “to a connection between two rotating components made by mating spline teeth formed on the components.” Spec. 1,11. 7-8. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A mechanical connection, comprising: first and second components supported for rotation, the first component formed with first spline teeth, the second component formed with second spline teeth meshing with the first spline teeth; a damper fitted in a groove formed in one of the first and second components, including an extension secured to the damper, contacting and extending between at least some of the first and second spline teeth. REJECTIONS I. The Examiner rejected claims 1 and 3 under 35 U.S.C. § 102(b) as being anticipated by Heinrich et al. (US 2009/0203453 Al, pub. Aug. 13, 2009, hereinafter “Heinrich”). II. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as being unpatentable over Heinrich and Sagady (US 4,514,108, iss. Apr. 30, 1985). 2 Appeal 2017-002597 Application 13/735,736 III. The Examiner rejected claims 2, 5, and 6 under 35 U.S.C. § 103(a) as being unpatentable over Heinrich and Grimm (US 4,990,122, iss. Feb. 5, 1991). ANALYSIS Rejection I The Examiner finds that Heinrich discloses a mechanical connection including first component 15 with spline teeth 90, second component 17 with spline teeth 91, and a damper ring 92 having extension 89 “contacting and extending between at least some of the first and second spline teeth.” Final Act. 2 (citing Heinrich, Figs. 1-3, 10-15). The Examiner further finds that damper 92 is fitted inherently in a groove located within first component 15 “defined by the annular void adjacent inwardly projecting spline teeth 90.” Id. (emphasis added). Appellants argue that, although Heinrich discloses a ring 92 having spring plates 89 extend therefrom, Heinrich fails to disclose a groove in which ring 92 fits. See Appeal Br. 5. Appellants note the Examiner cites to Figures 3 and 10-15 of Heinrich, but none of these figures show a groove, as called for by independent claim 1. Id. Appellants further contend that not even Heinrich’s Figures 8 and 16, which show components 15, 17 assembled, show a damper fitted in a groove, as recited in claim 1. Id. Rather, in Heinrich’s Figures 8 and 16, rings 92, 94 from which spring plates 89, 104 extend “rest against an end face of the first shaft 17, not in a groove,” and, thus, “it is not inherent that the damper ring 92 in Heinrich is received within a groove.” Id. at 6. 3 Appeal 2017-002597 Application 13/735,736 In response, the Examiner asserts that the rejection does not rely on the embodiments of Figures 8 and 16, but rather on the embodiments of Figures 3, 10, and 11. Examiner’s Answer 9 (dated Sept. 19, 2016, hereinafter “Ans.”). According to the Examiner, [Fjirst and second shafts 15, 17 comprising male and female teeth 90, 91 of the embodiment of Figures [10] and 11 are the same as shafts 15, 17 as shown in Figure 3 (paragraph [0088]). Accordingly, it is inherent that damper ring 92 is received within a groove A within female shaft 15 defined by an annular void or gap adjacent inwardly projecting spline teeth 90 in order to enable ring plate 92 to bear against the internal toothing (paragraph [0089]). Ans. 8-9. The Examiner contends that “inherency requires only that such is more likely than not [and] thus it is inherent that such [a] gap must be present in order to enable the ring plate to seat between the female spline teeth within the intermediate portion of the female shaft, as shown in Figure 3.” Id. at 9 (emphasis added). The Examiner concludes that “clearly the ring plate could not be disposed within the female shaft in such intermediate portion and bear against the female spline teeth, as shown in Figures 3 and 11 and recited in paragraph [0089], if a gap or groove was not present.” Id. The Examiner misstates the requirements for an inherency teaching. Inherency does not require that the missing descriptive material be present “more likely than not,” but rather that it “is ‘necessarily present.’” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)). More specifically, under the principles of inherency, the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to 4 Appeal 2017-002597 Application 13/735,736 establish the inherency of that result or characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). Here, Figure 3 of Heinrich discloses double S-shaped leaf spring 81 as inserted into internal and external toothing of shafts 15 and 17, respectively. See Heinrich, paras. 75, 76. Heinrich further discloses that each end of leaf spring 81 is located in a groove in shaft 15 and 17, respectively. Id. at para. 77, Fig. 6. However, Heinrich’s double S-shaped leaf spring 81 does not constitute a “damper . . . including an extension secured to the damper,” as called for by claim 1. In contrast to the embodiment of Heinrich’s Figure 3, in the embodiment of Figure 9, multiple leaf springs 89, 95, and 96 are elastically pressed into a gap along the flank of internal and external toothing 91, 90 of shafts 15 and 17, respectively. Id. at paras. 89-91. In other words, leaf springs 89, 95, and 96 are fixed by virtue of their elasticity and the gap located between the flanks of internal and external toothing. A similar situation is present in the embodiment of Figures 10 and 11a, where four spring plates located on a common ring plate 92 are inserted together into the toothing and fixed therein by the same mechanism as described above with respect to the embodiment of Figure 9. See Heinrich, para. 93. Specifically, Heinrich discloses that ah spring plates of ring 92 “bear on [the] flanks of the internal toothing” and when ring 92 is turned circumferentially ah spring plates are released from the toothing. Id. at para. 94, Figs. 1 la, 1 lb. As such, because the spring plates of ring 92 are fixed by virtue of their elasticity and the gap located between the flanks of internal and external toothing, ring 92 (damper) is not necessarily fitted into a groove formed in either of shafts 15, 17, as called for by claim 1. Rather, as 5 Appeal 2017-002597 Application 13/735,736 Appellants correctly state, “common ring (e.g. ring 92, 93 or 94) is mounted adjacent to the shafts (15, 17), as shown in figure 16.” Reply Brief 8 (dated Nov. 21, 2016, hereinafter “Reply Br.”). In conclusion, as Heinrich fails to disclose explicitly or inherently “a damper fitted in a groove formed in one of the first and second components,” we do not sustain the anticipation rejection of claims 1 and 3. Rejections II and III The Examiner’s use of the Sagady and Grimm disclosures does not remedy the deficiency of Heinrich discussed supra. See Final Act. 3-6. Accordingly, for the same reasons as discussed above, we likewise do not sustain the rejections under 35 U.S.C. § 103(a) of claim 4 as unpatentable over Heinrich and Sagady and of claims 2, 5, and 6 as unpatentable over Heinrich and Grimm. SUMMARY The Examiner decision to reject claims 1-6 under 35 U.S.C. §§ 102 and 103 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation