Ex Parte Reik et al

Board of Patent Appeals and Interferences

Feb 24, 2009

09982136 (B.P.A.I. Feb. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WOLFGANG REIK, CARSTEN BÜNDER,
and ROBERT FISCHER
____________________

Appeal 2008-5607
Application 09/982,136
Technology Center 3600
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Decided:1 February 24, 2009
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-5607
Application 09/982,136

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STATEMENT OF THE CASE
Wolfgang Reik et al. (Appellants) seek our review under 35 U.S.C.
§ 134 from the final rejection of claims 1-5 and 7-16. Claim 6 has been
canceled. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention pertains to a vehicle with a clutch that
may be actuated automatically. (Spec. 1, ll. 3-6.) Claim 1, reproduced
below with paragraphing added, is representative of the subject matter on
appeal.
1. A motor vehicle comprising
an engine with an engine block;
a clutch with a clutch-actuator device including at least
one element from the group of hydraulic, mechanical and
electronic elements, the clutch actuator device including a
clutch-release device with at least one clutch-release drive
source;
a transmission adjacent to the clutch;
a transmission housing surrounding the transmission;
a clutch bell housing surrounding the clutch;
a control device;
and a carrier element;
wherein the transmission housing is connected to the
clutch bell housing and the latter is, in turn, connected to the
engine block;
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Application 09/982,136

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the control device is operable to control at least the clutch
in an automated mode;
at least portions of at least one of the clutch-actuator
device and the control device are integrated in the carrier
element; and
said carrier element is arranged in an intermediate area
between the clutch bell housing and the transmission housing.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Machida US 4,719,812 Jan. 19, 1988
Hardeman US 5,267,488 Dec. 7, 1993
Burkett US 5,566,591 Oct. 22, 1996
The following rejections are before us for review:
1. Claims 1-5, 7-8, and 12-162 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hardeman and Machida; and
2. Claims 9-11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hardeman, Machida, and Burkett.

2 The statement of the ground of rejection in the Final Rejection identifies
claims 1-5, 7-8, and 6-12, but the Examiner’s explanation of the bases for
the rejection discusses claims 1-5, 7-8, and 12-16. (Final Rej. 2-4.)
Appellants understand that claims 13-16 are the subject of this first ground
of rejection, even though those claims were not included in the Examiner’s
statement of the rejection. (App. Br. 8.)
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Application 09/982,136

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ANALYSIS
The Rejection of Claims 1-5, 7-8, and 12-16 Under 35 U.S.C. § 103(a) as
Being Unpatentable Over Hardeman and Machida
Appellants challenge, inter alia, the Examiner’s reasoning as to why
one of ordinary skill in the art would combine the cited references in the
claimed manner. (See App. Br. 7.) Appellants incorrectly focus on the
space limitation problem that they addressed. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, ___, 127 S. Ct. 1727, 1741-42 (2007) (“neither the particular
motivation nor the avowed purpose of the [Appellants] controls” in an
obviousness analysis). Nonetheless, we find the Examiner’s proffered
reasoning underlying the conclusion of obviousness to be deficient in this
case.
The Examiner found that Hardeman discloses a carrier element
arranged in an intermediate area between the clutch bell housing and the
transmission housing. (Final Rej. 2.) The Examiner also found that
Hardeman does not disclose a clutch automation device integrated in the
carrier element. (Id.) The Examiner relied on Machida for the teaching of
certain clutch automation devices integrated into a carrier element (Ans. 4),
and identified Machida’s transmission case cover 29 as that carrier element
(Ans. 4; see also Machida, col. 3, ll. 38-42 (identifying item 29)).
Machida’s cover 29 is located on the side of the transmission case, not
between the transmission and clutch housings. (See Machida, col. 1, ll. 62-
63; Fig. 3.) The Examiner reasoned that:
[I]t would have been obvious to one of ordinary skill in the art
in view of the teachings of Machida et al. to include portions of
at least one of the clutch actuator device and the control device
in the carrier element of Hardeman et al. in order to automate
actuation of the clutch.
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(Ans. 4.) This reasoning is based on an erroneous interpretation of
Hardeman. The Examiner identified Hardeman’s item 28 as the clutch bell
housing, item 12 as the clutch, and item 10 as the carrier element. (Final
Rej. 2.) Claim 1 requires that the clutch bell housing surrounds the clutch.
However, Hardeman’s item 28 is the torque converter housing (Hardeman,
col. 3, ll. 50-51), and item 10 is an adapter housing which houses the clutch
12 (id., col. 3, ll. 29-30, 41-42; Fig. 3). Therefore, Hardeman discloses a
transmission housing 46 (see id., col. 3, l. 64) bolted to the clutch housing
10, with no carrier element arranged between the two as recited in
Appellants’ claim 1. (See id., Fig. 3.)
Because the Examiner has not pointed to a structure in Hardeman that
corresponds to the claimed carrier element and because Machida’s cover is
located on the side of the transmission housing, it is unclear as to why one of
ordinary skill in the art would have been led to the claimed arrangement of a
carrier element between the clutch bell housing and the transmission
housing. Consequently, we are constrained to reverse the rejection of
independent claim 1. We also reverse the rejection of claims 2-5, 7-8, and
12-16, which depend directly or indirectly from claim 1.

The Rejection of Claims 9-11 Under 35 U.S.C. § 103(a) as Being
Unpatentable Over Hardeman, Machida, and Burkett
Appellants contend that claims 9-11, which depend from claim 1, are
patentable over the cited art because Burkett does not cure the deficiencies
of the rejection of independent claim 1. (App. Br. 8.) As discussed above,
the combination of Hardeman and Machida would not have led one of
ordinary skill in the art to a carrier element arranged between the clutch bell
housing and the transmission housing. Claims 9-11 pertain to the specifics
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of the manufacturing and the material of the carrier element. The Examiner
relied on Burkett for teaching these aspects, but has failed to show where
Burkett cures the inadequacies of the Hardeman and Machida combination.
(See Final Rej. 4.) Thus, we do not sustain the rejection of claims 9-11.

CONCLUSIONS
We conclude that the Examiner erred in rejecting claims 1-5, 7-8, and
12-16 under 35 U.S.C. § 103(a) as being unpatentable over Hardeman and
Machida, and in rejecting claims 9-11 under 35 U.S.C. § 103(a) as being
unpatentable over Hardeman, Machida, and Burkett.

DECISION
The decision of the Examiner to reject claims 1-5 and 7-16 is
reversed.
REVERSED

hh

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