Ex Parte M¿rkl

Patent Trial and Appeal Board

May 10, 2016

12439550 (P.T.A.B. May. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/439,550 0613012009
77407 7590 05/12/2016
Novak Drnce Connolly Bove+ Quigg LLP
1875 Eye St NW
Suite 1100
Washington, DC 20006-5409
FIRST NAMED INVENTOR
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8369.115.USOOOO 4970
EXAMINER
VANAMAN, FRANK BENNETT
ART UNIT PAPER NUMBER
3618
NOTIFICATION DATE DELIVERY MODE
05/12/2016 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):
Peter.Lalos@novakdrnce.com
DCDocket@novakdrnce.com
re nee.tisdale@novakdrnce.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANN MAERKL
Appeal2014-004098
Application 12/439,550
Technology Center 3600
Before JOHN C. KERINS, WILLIAM A. CAPP, and LEE L. STEPINA,
Administrative Patent Judges.
CAPP, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the non-final
rejection of claims 13-20 under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-004098
Application 12/439,550
THE INVENTION
Appellant's invention relates to a hybrid drive apparatus for a motor
vehicle. Spec. 1. Claim 13, reproduced below, is illustrative of the subject
matter on appeal.
13. A hybrid drive assembly for a motor vehicle,
compnsmg:
an internal combustion engine provided with a
longitudinally disposed output shaft;
an electric drive motor provided with a first rotor mounted
on said engine output shaft and a second rotor having a
rearwardly projecting, tubular output shaft disposed coaxially
with said engine output shaft and receiving said engine output
shaft therethrough;
a front wheel differential having an input shaft spaced
laterally to a side of and parallel to said engine output shaft;
a single clutch displaced rearwardly of said second rotor
and laterally to said differential side of said engine output
shaft, provided with first and second input gears and means for
selectively connecting one of said input gears to an output shaft
spaced laterally of the said engine output shaft;
a first gear set drivingly interconnecting said engine output
shaft and said first input gear of said clutch;
a second gear set drivingly interconnecting said rotor output
shaft and said second input gear of said clutch; and
means drivingly interconnecting a clutch output shaft and
said differential input shaft.
OPINION
The Examiner rejected claims 13-20 under 35 U.S.C. § 112, first
paragraph, accompanied by the following explanation.
Claims 13-20 are rejected under 35 U.S.C. 112, first paragraph,
as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in
the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor( s ), at the time the
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Appeal2014-004098
Application 12/439,550
application was filed, had possession of the claimed invention.
In claim 1, line 4, the recitation of the second rotor having a
rearwardly projecting output shaft is not supported by the
application as filed, in claim 1, line 8, the recitation of the
clutch being displaced rearwardly of the second rotor is not
supported by the application as filed, and in claim 15, line 7-8,
the recitation of the front wheel differential having an input
shaft both laterally to a side of the first rotor output shaft and
also forwardly of the electric motor is not supported by the
application as filed. Note that the specification and drawings as
filed fail to set forth specific direction data (see figures 1, 2; see
specification page 3, lines 11-14; page 4, lines 14-18; and page
6, lines 1-4) to support the limitations as now claimed.
Final Action 2
Written Description Rejection of Claim 13
Second rotor having a rearwardly projecting output shaft
Appellant contends that written description support for the claimed
subject matter can be found on page 3 of the Specification which states that
Figure 1 shows a "top view of a hybrid drive apparatus of a front wheel
drive vehicle.'' Appeal Br. 4--5 (citing Spec. 3). It is asserted that additional
support may be found where the Specification explains that Figure 2 shows
an alternative hybrid drive vehicle with an electric drive motor axially offset
of the internal combustion engine and a transmission connected upstream
from the electric drive motor. Id. Appellant contends that additional
support may be found in the Specification where it explains that the
apparatus of Figure 1 is composed of an engine 10, an electric motor 14 and
an axial differential 16 located in between for driving the front wheels of the
motor vehicle. Id. at 5 (citing Spec. 3, 4). According to Appellant,
additional written description support may be found in the Specification
where it states that "the axle differential 16 drives the front wheel" of the
motor vehicle. Appeal Br. 5 (citing Spec. 4). Appellant also cites to page 6
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Appeal2014-004098
Application 12/439,550
of the Specification at line 1 where it states that the "described hybrid drive
apparatus is designed for front-side longitudinal installation in a motor
vehicle." Id. (emphasis omitted.)
The Examiner responds that a clear definition of the meaning of
"upstream" is not set forth, and in view of the arrangement being a power
transmission, this may be understood to refer to a mechanical location
further away in the flow of energy in the power train from the driven wheels,
or it may be used to refer to a direction more forwardly on the vehicle.
Ans. 3. The Examiner states that the Specification as filed provides no
guidance on this matter. Id. The Examiner contends that no specific
definition of upstream or downstream is presented in the Specification and,
therefore, it is not clear whether this term refers to a mechanical hierarchy or
a position. Id. at 4.
The Examiner interprets a disclosure in the Specification regarding
shaft 40 running "forwardly" of the engine as an indication that the direction
from left to right in Figure 1 could be the "forward " direction of the vehicle.
Ans. 4. Based on this interpretation, the Examiner concludes that shaft 28
cannot properly be characterized as extending rearwardly from the rotor. Id.
Whether a claim satisfies the written description requirement is a
question of fact. Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180,
1190 (Fed. Cir. 2014). The written description requirement is met when the
disclosure "allow[ s] one skilled in the art to visualize or recognize the
identity of the subject matter purportedly described." Enzo Biochem, Inc. v.
Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002). The proper inquiry is
whether the patentee has provided an adequate description that "in a definite
way identifies the claimed invention" in sufficient detail such that a person
of ordinary skill would understand that the inventor had made the invention
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Appeal2014-004098
Application 12/439,550
at the time of filing. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1352 (Fed. Cir. 2010) (en bane). That assessment "requires an objective
inquiry into the four comers of the specification," as "the hallmark of written
description is disclosure." Id. at 1351.
In the instant case, we think a person of ordinary skill in the art would
have no difficulty in recognizing that the inventor had possession of the
claimed subject matter. Figure 1 is described as a "top view." Spec. 3.
Figure 1 is best understood as the left to right direction of the figure
representing the vehicle from front to rear. Thus, the top to bottom direction
of the figure represents the vehicle from right to left. With that orientation
in mind, drive shaft 28 projects from second rotor 24 in a rearward direction.
See Spec., Fig. 1.
Clutch displaced rearwardly of the second rotor
In view of the foregoing discussion with respect to rearward
projection of drive shaft 28, it is readily apparent from viewing Figure 1 that
Appellant possesses an invention in which the clutch is displaced rearwardly
of the second rotor. See Spec., Fig. 1.
Accordingly, we do not sustain the written description rejection of
claim 13.
Claims depending from Claim 13
Claims 14, 18, and 19 depend from claim 13. Claims App. In view of
our decision not to sustain the rejection of claim 13 and, for the same
reasons, we do not sustain the rejection of claims 14, 18, and 19.
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Appeal2014-004098
Application 12/439,550
Written Description Rejection of Claim 15
Front wheel differential having an input shaft both laterally to a side of the
first rotor output shaft and also forwardly of the electric motor
With respect to the written description rejection of claim 15,
Appellant directs our attention to Figure 2 and accompanying descriptive
support in the Specification. Appeal Br. 5. The Specification describes the
embodiment depicted in Figure 2 in the following manner.
As shown in FIG. 2, the drive shaft 18 is divided into a drive
shaft segment 18a and a drive shaft segment 18b which are
positioned axially offset to one another with the interposition of
a spur gear set 60, 62. The offset of the drive shaft segment 18b
is both down and to the side, from which with respect to the
arrangement of the electric drive motor 14 and of the axle
differential 64 the mechanical degrees of freedom are larger and
the given installation conditions in the motor vehicle can be
increasingly taken into account. FIG. 2 does not show the entire
offset, for the sake of clarity.
The additional constant gear formed by the gears 50, 52 and
the clutch 54 is connected upstream from the electric drive
motor 14 or is located between the internal combustion
engine 10 and the electric drive motor 14. Furthermore, the
rotor 24 by way of the drive shaft 28 forward by way of the
gears 30, 32 drives the driven shaft 40 which is not located
laterally, but in front of the electric drive motor 14.
Spec. 6, see also Fig. 2. Appellant argues that a person having ordinary skill
in the automotive field would readily understand the construction and
operation of the claimed invention from the Specification including the
drawings as originally filed. Appeal Br. 5.
A review of Figure 2 shows axle differential 64 in the lower left hand
comer of the drawing, which is described as a "side view" of a hybrid drive
apparatus. Spec. 3. Figure 2 depicts driven shaft 40 as an input to axle
differential 64. Id. at Fig. 2. Driven shaft 40 is interposed between electric
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Appeal2014-004098
Application 12/439,550
motor 14 on the right side of Figure 2 and axle differential 64 on the left side
of the Figure. Id. The Specification further explains that rotor 24 drives the
driven shaft 40 by way of drive shaft 28. Spec. 6, Fig. 2. The two shafts, 28
and 40, are not in co-axial alignment and, therefore, may be considered to be
disposed laterally with respect to each other.
As with Figure 1, we think that a person of ordinary skill in the art
would interpret Figure 2 as being oriented with the left to right direction of
the figure representing the front to back directional orientation of the
vehicle. With that understanding in mind, Appellant has adequately
demonstrated possession of the subject matter claimed in claim 15.
We do not sustain the rejection of claim 15.
Claims depending from Claim 15
Claims 16, 17, and 20 depend from claim 15. Claims App. In view of
our decision not to sustain the rejection of claim 15 and, for the same
reasons, we do not sustain the rejection of claims 16, 17, and 20.
DECISION
The decision of the Examiner to reject claims 13-20 is reversed.
REVERSED
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