Ex Parte Pardee

Patent Trial and Appeal Board

Nov 8, 2013

12048638 (P.T.A.B. Nov. 8, 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.
12/048,638 03/14/2008 James A. Pardee 065175-0239 5269
26127 7590 11/08/2013
DYKEMA GOSSETT PLLC
39577 WOODWARD AVENUE
SUITE 300
BLOOMFIELD HILLS, MI 48304-5086
EXAMINER
SCOTT, JACOB S
ART UNIT PAPER NUMBER
3655
MAIL DATE DELIVERY MODE
11/08/2013 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 JAMES A. PARDEE
____________________

Appeal 2012-000998
Application 12/048,638
Technology Center 3600
____________________

Before ANTON W. FETTING, JOHN W. MORRISON, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000998
Application 12/048,638

2
STATEMENT OF THE CASE
James A. Pardee (Appellant) appeals under 35 U.S.C. § 134 the
rejection of claims 3, 31, and 32 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement and the rejection
of claims 13, 18, 27 and 28 under 35 U.S.C. § 103(a) as unpatentable over
the Appellant’s own admission and Mina (US 6,106,187; iss. Aug. 22,
2000).1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claim 27, reproduced below, is illustrative of the claimed subject
matter:
27. A rotational coupling device, comprising:
a rotor disposed about an input shaft, said input shaft
disposed about a rotational axis and said rotor and said input
shaft defining opposed keyways;
a key disposed within said opposed keyways of said rotor
and said input shaft, said key separable from said rotor and
rotatably coupling said rotor and said input shaft;
an armature disposed about said axis, said armature
coupled to an output member and configured for selective
engagement with said rotor;
wherein said key and said rotor are shaped
complementary to one another to limit radial movement of said
key relative to said rotor in a first radial direction away from
said rotor.

1 The Examiner withdraws the rejection of claims 10 and 11 under 35 U.S.C.
§ 112, first paragraph and the rejection of claim 14 under 35 U.S.C. §
103(a). Ans. 4.
Appeal 2012-000998
Application 12/048,638

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ANALYSIS
Written Description
The Examiner finds that, because claim 1 recites “wherein said key
and said first support member are shaped complementary to one another to
limit radial movement of said key relative to said first support member in a
first radial direction and in a second radial direction opposite said first
direction . . . ,” claim 3’s recitation of “wherein said first support member is
a hub disposed about said input shaft” is not disclosed in the Specification.
Final Rej. 3 (mailed Jan. 21, 2011). In particular, the Examiner states that
“hub 32 described in the [S]pecification at least at paragraph [0032] and
shown in Figs. 1 and 3 does not describe or show features which are capable
of limiting radial movement of the key 18 in a first direction and second
direction radially” and that “the corresponding abutting shoulders 112 and
114 of key 18 and hub 32 respectively are only capable of limiting inward
radial movement of the key 18.” Id. The Examiner also finds that claims 31
and 32 recite new matter not supported by the Specification and the
drawings for at least the same reasons. Id. at 5.
The Appellant argues paragraphs [0015], [0031], and [0032] and
Figures 1, 3, and 4 provide support for limiting radial movement of the key.
App. Br. 6-9 and Reply Br. 2-4. The Appellant particularly points to
paragraph [0032] which states that “[i]t should again be understood that key
18 and hub 32 . . . are shaped in a complementary fashion to limit radial
movement of key 18 relative to hub 32 in at least one radial direction . . .
.” App. Br. 8, 9 and Reply Br. 2-3. The Examiner responds that the
Appellant’s drawings and detailed description do not provide support for
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complementary shaped hub and key that would limit radial movement of the
key in both radial directions. Ans. 5-12.
The Appellant’s arguments are persuasive. Although the Appellant’s
figures do not appear to show a hub 32 that can limit a key 18 in first and
second radial directions, paragraph [0032] of the Appellant’s Specification
does indicate that the hub 32 and key 18 “can be shaped in a complementary
fashion to limit radial movement of key 18 relative to hub 32 in at least one
radial direction,” as required by claims 1 and 3. See App. Br., Claims
App’x.
Claims 31 and 32 depend from claim 29, and claim 29 recites that
“wherein said key and said first support member are shaped complementary
to one another to limit radial movement of said key relative to said first
support member in one of said first radial direction and a second radial
direction opposite said first radial direction.” App. Br., Claims App’x.
Claim 31 recites that the “first support member is a hub,” and claim 32
recites that the “device of claim 29, further compris[es] a second support
member . . . to limit radial movement of said key relative to said second
support member in one of said first radial direction and said second radial
direction” Id. Thus, the hub of claim 31 and the second support of claim 32
each need only limit radial movement of a key in one of a first and second
radial directions. See id. As discussed supra, paragraph [0032] of the
Appellant’s Specification provides support for the limitation of claim 31.
Paragraph [0031] states that a “spacer 30 is shaped in a complementary
fashion relative to key 18 to limit radial . . . movement of key 18 relative to
spacer 30” and that
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[i]t should be understood that the key 18 or 18' and
spacer 30 or 30' could be shaped in a plurality of ways provided
that key 18 or 18' and spacer 30 or 30' are shaped in a
complementary fashion to limit radial movement of key 18 or
18' relative to spacer 30 or 30' in at least one radial direction . . .
.

Spec. 10. Thus, paragraph [0031] of the Appellant’s Specification provides
support for the limitation of claim 32.
Accordingly, we do not sustain the Examiner’s rejection of claims 3,
31, and 32 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
Unpatentability
The Examiner’s statements that
[Appell]ant admits at least at paragraphs [0002] and [0003] and
by the incorporation of U.S. Patent Nos. 5,119,918, 5,285,882
and 5,971,121, that it [is] known and conventional in the art to
configure a rotational coupling device comprising:
a rotor disposed about an input shaft (paragraph [0002]),
said input shaft disposed about a rotational axis and said rotor
and said input shaft defining opposed keyways (“the key is
formed as a separate component that extends into opposed
keyways in the rotor and the input shaft”, paragraph [0003]);
a key disposed within said opposed keyways of said rotor
and said input shaft, said key separable from said rotor and
rotatably coupling said rotor and said input shaft (“[t]he rotor in
. . . rotational coupling devices is generally coupled to the input
shaft using a key [and] [i]n some conventional devices, the key
is formed as a separate component that extends into opposed
keyways in the rotor and the input shaft”, paragraph [0003]);
an armature disposed about said axis, said armature
coupled to an output member and configured for selective
engagement with said rotor (paragraph [0002]).

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are the Appellant’s admission. Final Rej. 6. The Examiner finds that the
Appellant’s admission does not explicitly disclose that “said key and said
rotor are shaped complementary to one another to limit radial movement.”
Id. The Examiner finds that Mina discloses “a key (i.e. pin 12) separable
from a rotor (body 3), said key and said rotor are shaped complementary to
one another to limit radial movement of said key relative to said rotor in a
first radial direction away from said rotor.” Id. at 6-7 (citing Mina, figs. 1
and 2). The Examiner concludes that it would have been obvious
to make the key and rotor of the conventional rotational
coupling device described by [A]pp[ell]ant with a keyway in
the rotor complementary to a key which limits radial movement
of the key radially inward away from the rotor because Mina
discloses and discusses the advantages of using a
complementary key and keyway which limits inward radial
movement of the key in a rotational torque transmitting device.

Id. at 7.
The Appellant argues that “Mina does not disclose or discuss the
advantages of using a complementary key and keyway for any purpose much
less the purpose identified by the Examiner and achieved by the claimed
invention” and that “Mina does not describe the shape or interface between
the key 12 and rotor 3 nor ascribe any particular purpose to it.” App. Br. 15
and Reply Br. 7. The Examiner responds that Mina discloses “advantages of
a complementary key and keyway because defining a shaft coupling without
play to overcome concentricity errors is an advantage.” Ans. 14 (citing
Mina, col. 1, ll. 34, 35, and 41-47 and Abstr.). The Examiner also states that
“Figures 1 and 2 of Mina explicitly discloses cross-sectional views of a
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shaft, a body, and a key coupled with the shaft and body in complementary
shaped keyways.” Id. at 13-14.
The Appellant’s arguments are not persuasive. We agree with the
Examiner that at least Figures 1 and 2 show a pin 12 in complementary
shaped recesses 11' and 13'' in the shaft 1 and body 3 respectively.
Moreover, Mina states that “the pin is received in two mutually
complementary recesses 11' and 13", with the 30 recesses being formed in
mutually confronting manner in shaft 1 and the bore 3', respectively, of the
body 3 coupled with the shaft.” Mina, col. 2, ll. 28-32. We also agree with
the Examiner that Mina discloses advantages of its key and keyway.
Column 1, lines 41- 47, of Mina states that “the present invention . . .
eliminates the transverse play of the coupling,” and thus, Mina discloses
advantages of using its key and keyway. Furthermore, the Appellant has not
persuasively explained why the arrangement of Mina’s pin 12, shaft 1, and
body 12, as shown by Mina’s Figures 1 and 2, would fail to limit radial
movement of the key, as reasoned by the Examiner.
The Appellant does not provide separate arguments for claims 13, 18,
and 28, which depend from claim 27. See App. Br. 14-18 and Reply Br. 7-9.
Accordingly, we sustain the Examiner’s rejection of claims 13, 18, 27, and
28 under 35 U.S.C. § 103(a) as unpatentable over the Appellant’s own
admission and Mina.

DECISION
The Examiner’s rejection of claims 3, 31, and 32 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is reversed.
Appeal 2012-000998
Application 12/048,638

8
The Examiner’s rejection of claims 13, 18, 27 and 28 under 35 U.S.C.
§ 103(a) as unpatentable over the Appellant’s own admission and Mina is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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