Ex Parte M¿rklDownload PDFPatent Trial and Appeal BoardMay 10, 201612439550 (P.T.A.B. May. 10, 2016) Copy Citation 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 2 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 3 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 4 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. 5 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 6 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 7 Copy with citationCopy as parenthetical citation