Ex Parte Phillips et al

Patent Trial and Appeal Board

Sep 28, 2016

13447938 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/447,938 04/16/2012 Andrew W. Phillips
76438 7590 09/28/2016
VIV ACQUA LAW, PLLC
3101 East Eisenhower Parkway
Suite 1
ANN ARBOR, MI 48108
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.
P001316-DIV-PTT-DLT 1031
EXAMINER
BISHOP, ERIN D
ART UNIT PAPER NUMBER
3655
MAILDATE DELIVERY MODE
09/28/2016 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 ANDREW W. PHILLIPS, SCOTT H. WITTKOPP,
CLINTON E. CAREY, and JAMES M. HART
Appeal2013-010780
Application 13/447,938
Technology Center 3600
Before LINDA E. HORNER, CHARLES N. GREENHUT, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andrew W. Phillips et al. (Appellants)1 seek our review under
35 U.S.C. § 134 of the Examiner's decision rejecting claims 1 and 3-8.
Claim 2 is canceled. Claims 9-19 are pending but not rejected. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as General Motors, Inc. Br. 1.
Appeal2013-010780
Application 13/447,938
CLAIMED SUBJECT MATTER
Appellants' claimed subject matter relates to "a multiple speed
transmission having a plurality of planetary gear sets and a plurality of
torque transmitting devices." Spec., para. 2. Claim 1 is the sole independent
claim on appeal and is reproduced below.
1. A transmission comprising:
an input member;
an output member;
first, second, third and fourth planetary gear sets each
having first, second and third members;
a first interconnecting member continuously
interconnecting the first member of the first planetary gear set
with the second member of the second planetary gear set;
a second interconnecting member continuously
interconnecting the second member of the first planetary gear set
with the third member of the second planetary gear set;
a third interconnecting member continuously
interconnecting the first member of the second planetary gear set
with the second member of the third planetary gear set;
a fourth interconnecting member continuously
interconnecting the first member of the third planetary gear set
with the first member of the fourth planetary gear set; and
a plurality of torque transmitting devices each selectively
engageable to interconnect one of the first members, second
members, and third members of the planetary gear sets with at
least one other of the first members, second members, third
members of the planetary gear sets, and a stationary member; and
wherein the torque transmitting devices are selectively
engageable in combinations of at least two to establish at least
eight forward speed ratios and at least one reverse speed ratio
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Application 13/447,938
between the input member and the output member, and a first of
the plurality of torque transmitting devices is selectively
engageable to directly connect the second member of the fourth
planetary gear set with the third member of the third planetary
gear set.
REJECTIONS
The Final Action, dated December 13, 2012 ("Final Act."), from
which this appeal is taken, included five grounds of rejection. Final Act. 2-
11. The Examiner withdrew three of these grounds of rejection in the
Examiner's Answer, dated July 10, 2013 ("Ans."). Ans. 11-17.2 The
remaining rejections before us in this appeal are:
1. Claims 1 and 3-8 under 35 U.S.C. § 112, first paragraph, for lack
of enablement. 3
2. Claims 1 and 8 under 35 U.S.C. § 102(b) as anticipated by
Winzeler (US 6,976,930 B2, issued December 20, 2005).
2 The Examiner withdrew rejections under 35 U.S.C. § 102(b) of: (1) claims
1, 3-7, 9-13, 15, and 17 as anticipated by Ziemer (US 6,960,149 B2, issued
November 1, 2005); (2) claims 9, 10, 14, and 15 as anticipated by Thomas
(US 6,955,627 B2, issued October 18, 2005); and (3) claims 9-11, 15, and
16 as anticipated by Klemen (US 4,683,776, issued August 4, 1987).
Ans. 11-17. Thus, claims 9-19 have no outstanding rejections before us on
appeal.
3 Although the Examiner did not reproduce this first ground of rejection in
the Answer, the Examiner also did not explicitly withdraw it. Ans., passim.
The Answer states that "[ e ]very ground of rejection set forth in the Office
action dated 12/13/2012 from which the appeal is taken is being maintained
by the examiner except for the grounds of rejection (if any) listed under the
subheading 'WITHDRAWN REJECTIONS."' Ans. 2. We understand that
claims 1 and 3-8 remain subject to the first ground of rejection.
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First Ground of Rejection
ANALYSIS
Appellants sought to amend claim 1 after the Final Action in an effort
to overcome the first ground of rejection. See Amendment After Final,
dated February 13, 2013, at 2-3, 10 (proposing to amend claim 1 "as
suggested by the Examiner" to overcome the enablement rejection). The
Examiner refused entry of this amendment. See Advisory Action, dated
February 25, 2013. Appellants thereafter filed a Notice of Appeal appealing
from "the last decision of the examiner." Notice of Appeal, dated March 13,
2013, at 1. The Appeal Brief, however, does not present any arguments
contesting the first ground of rejection.
"An appeal, when taken, is presumed to be taken from the rejection of
all claims under rejection unless cancelled by an amendment filed by the
applicant and entered by the Office." 37 C.F.R. § 41.3 l(c).
Filing a Board appeal does not, unto itself, entitle an appellant to
de novo review of all aspects of a rejection. If an appellant fails
to present arguments on a particular issue - or, more broadly, on
a particular rejection - the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.
Ex parte Frye, 94 USPQ2d 1072, 107 6 (BP AI 2010) (precedential) (holding
that the Board reviews a rejection for error "based upon the issues identified
by appellant, and in light of the arguments and evidence produced thereon").
Having no arguments of error presented by Appellants in this appeal as to
the rejection of claims 1 and 3-8 under 35 U.S.C. § 112, first paragraph, for
lack of enablement, we summarily sustain the first ground of rejection.
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Application 13/447,938
Second Ground of Re} ection
Appellants argue claims 1 and 8 as a group. Br. 34. We select claim
1 as the representative claim, and claim 8 stands or falls with claim 1.
37 C.F.R. § 41.37(c)(l)(iv). Claim 1 recites, in pertinent part, "a third
interconnecting member continuously interconnecting the first member of
the second planetary gear set with the second member of the third planetary
gear set." Br. 36 (Claims App.).4
The Examiner found that Winzeler anticipates claim 1, and, in
particular, Figure 4 of Winzeler shows a third interconnecting member
(intermediate coupling member 66) continuously interconnecting the first
member (planet carrier 126) of the second planetary gear set (planetary gear
assembly 102) with the second member (ring gear 88) of the third planetary
gear set (planetary gear assembly 64) via the gears (sun gear 84 and planet
carrier 86) in gear set 64. Final Act. 10. The Examiner further explains that
"[ m ]ember 66 operatively interconnects carrier 126 with ring gear 88 via
gear set 64. That is, carrier 126 is operatively connected with ring gear 88
for power transmission (Winzeler: fig. 4)." Ans. 19.
4 Appellants sought to amend this limitation, in an Amendment filed after
the Examiner's Answer, to read "a third interconnecting member
continuously interconnecting the first member of the second planetary gear
set directly with the second member of the third planetary gear set." After
Final Amendment and Request For Consideration Under the After Final
Consideration Pilot Program 2.0, dated July 18, 2013, at 2. The Examiner
denied entry of this Amendment. Advisory Action, dated September 17,
2013.
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Application 13/447,938
Appellants argue that the Examiner's anticipation finding is in error
because "Winzeler does not teach ... the third interconnecting member
continuously interconnecting the first member of the second planetary gear
set directly with the second member of the third planetary gear set, either
explicitly or impliedly." Br. 29 (emphasis added). Appellants and the
Examiner do not disagree about the structure and interconnections shown in
Figure 4 of Winzeler. See, e.g., Br. 32 (Appellants "assert that member 66
interconnects carrier member 126 with ring gear 84, which meshes with a set
of pinion gears (supported by carrier member 86), which mesh with the ring
gear 88."). Rather, Appellants contend that the Examiner's interpretation of
"interconnecting" is unreasonably broad because it encompasses a
connection that is not direct. Id. at 33 (arguing that "the broadest reasonable
interpretation of 'interconnecting' is 'to connect with one another"'). The
issue before us is whether the claim term "interconnecting" requires a direct
connection between the first member of the second planetary gear set and
the second member of the third planetary gear set, or whether the claim term
is broad enough to encompass an indirect connection via intervening
members.
Appellants admit that "interconnecting" is not "given a specific
definition within the specification of the present application." Br. 33.
Appellants rely on the ordinary meaning of "interconnect" as "to connect
with one another." Id. (citing Merriam-Webster's Collegiate Dictionary,
Eleventh Ed. (2005) (http://www.merriam-webster.com/dictionary/
interconnect)). The Examiner does not contest the definition proffered by
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Application 13/447,938
Appellants. Rather, the Examiner determined that the finding of anticipation
is consistent with the definition proffered by Appellants, i.e., "to connect
with one another." Ans. 19.
In the absence of an express definition of a claim term in an
underlying specification, the claim term is given its broadest reasonable
meaning in its ordinary usage as the term would be understood by one of
ordinary skill in the art. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
("the PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification").
Limitations not explicit or inherent in the language of a claim cannot be
imported from the specification. E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003). "It is the applicants' burden to precisely
define the invention, not the PTO's." Morris, 127 F.3d at 1056.
We agree with the Examiner that Appellants' proffered definition of
"interconnect" to mean "to connect with one another" is broad enough to
encompass both direct and indirect connections. See Ullstrand v. Coons,
147 F.2d 698, 700 (CCPA 1945) (finding that "the accepted definition of the
term 'connected' is restricted to neither a direct nor an indirect connection").
We find no definition or description in the Specification of
"interconnecting" or of "a third interconnecting member" that would call for
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a narrower interpretation, and Appellants' point to no such description. As
such, Appellants have not demonstrated error in the Examiner's
determination that Winzeler discloses the claimed "third interconnecting
member" as called for in claim 1. As noted by the Examiner, Winzeler' s
member 66 operatively interconnects carrier 126 with ring gear 88 via gear
set 64, and because there is no clutch or other element that interrupts power
transmission between carrier 126 and ring gear 88, these elements are
continuously interconnected. Ans. 19; Winzeler, Fig. 4. For these reasons,
we sustain the rejection of claim 1 and claim 8, which falls with claim 1,
under 35 U.S.C. § 102(b) as anticipated by Winzeler.
DECISION
The decision of the Examiner to reject claims 1 and 3-8 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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