Ex Parte Schaefer et al

Patent Trial and Appeal Board

Nov 22, 2016

13058622 (P.T.A.B. Nov. 22, 2016)

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.
13/058,622 02/11/2011 Michael Wilhelm Schaefer 50092/DKT08120B 2690
57726 7590 11/25/2016
MILLER, MATTHIAS & HULL LLP
ONE NORTH FRANKLIN STREET
SUITE 2350
CHICAGO, IL 60606
EXAMINER
FLUHART, STACEY A
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
bmatthias @ millermatthiashull. com
mloye @ millermatthiashull. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL WILHELM SCHAEFER,
HOLGER MEUB, MARC SAGRAUSKE, and
MICHAEL RITSCHEL
Appeal 2014-009092
Application 13/058,622
Technology Center 3600
Before: MICHAEL L. HOELTER, JEFFREY A. STEPHENS, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants1 appeal under 35U.S.C. § 134 from a rejection of claims
16—31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Borg Warner, Inc.
Appeal 2014-009092
Application 13/058,622
CLAIMED SUBJECT MATTER
The claims are directed to a frictionally acting device. Claim 16,
reproduced below, illustrates the claimed subject matter:
16. A frictionally acting device having a rotational axis,
a first plate set rotationally fixedly connected to a first plate
carrier, and having a second plate set rotationally fixedly
connected to a second plate carrier and which individual plates
of the second plate set are interleaved with individual plates of
the first plate set in an axial direction;
wherein the first and second plate sets rotate
independently of the other,
wherein one of the first or second plate sets has n plates
including left and right end plates, with at least n-2 plates being
undulating plates situated between the left and right end plates;
wherein the left and right end plates comprise the-non-
undulating plates; and
wherein at least one of the left and right end plates is
supported in the axial direction on one of an actuating element
and stop element for said one plate set; and
wherein the left and right end plates and each of the
undulating plates situated between the end plates comprise one
of the first or second plate sets configured for rotation about the
rotational axis.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Harwood
Sand
Crawford
Suzuki
US 2,135,126
US 2,927,673
US 4,821,860
US 7,165,664 B2
Nov. 1, 1938
Mar. 8, 1960
Apr. 18, 1989
Jan. 23, 2007
REJECTIONS
The Examiner made the following rejections:
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Application 13/058,622
Claims 16—19, 22, 24, 28, 29, and 32 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Sand or in the alternative under 35 U.S.C.
§ 103(a) as being unpatentable over Sand.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sand and Crawford.
Claims 21, 23, 25, 30, and 31 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sand and Harwood.
Claims 26 and 27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sand and Suzuki.
OPINION
Appellants argue claims 16—19, 22, 24, 28, 29, and 32 as a group.
Appeal Br. 6-8. We select claim 16 as representative, and claims 17-19, 22,
24, 28, 29, and 32 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants’ specification describes a multi-plate clutch.
Specification 8. Independent claim 16 describes a device with first and
second plate carriers (Fig. 1, items 18 and 20, respectively) and a first set of
plates (24, 26) and a second set of plates, 28, that are carried by a respective
one of the carriers. Appeal Br. 13 (Claims App.). The first and second set
of plates are interleaved, and torque is transmitted from one to the other and
thus between the two plate carriers when actuator 38 squeezes the plates
against each other and stop element 40. The first set of plates includes two
end plates 26, and these are non-undulating (i.e. flat), while the remaining
plates of the first set are undulating. Id.
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Application 13/058,622
The Examiner finds that Sand discloses every limitation found in
claim 16. Final Act. 3^4. Sand discloses a multi-plate clutch with an inner
carrier 30, which Sand terms the driving member, and an outer carrier 22,
which Sand terms the driven member. Sand 2:51—72. Sand includes non­
undulating end plates 40 and 42 carried by the driving member 30. Fig. 1;
3:5—8. The driving member also carries driving plates 34. Driven plates 26
are carried by the driven member 22. Sand 2:65—72. The driving plates 34
and driven plates 26 are interleaved, and when the opposed pressure
members 40 and 42 move toward each other, the plates are squeezed and
torque is transmitted from the driving member to the driven member. Sand,
Figs. 1-3; 3:14—37.
Sand initially describes the driven plates 26 as being “undulated or
waved in shape” (Sand 2:56—57) and the driving plates 34 as “flat” (3:58);
the opposed end plates 40 are shown as flat-faced. Sand, Fig. 1. Sand
specifically states that “the disposition of driving and driven plates may be
reversed if desired.” Sand, 3:51—52. Sand makes no such explicit
suggestion concerning the mounting of the opposed pressure members 40
and 42. They are only shown and described as being mounted on the driving
member 30. In the Final Action the Examiner states, “it is noted that [Sand]
column 3, lines 50—52 referenced in the rejection points out that the driving
and driven plates can be switched with one another[.] In other words, the
plates 34, 38 may be the undulating plates and plates 26 may be the flat
plates.” Final Act. 3^4. If the undulating plates and flat plates of Sand are
reversed so that the undulating plates are the driving plates and the flat plates
are the driven plates, as explicitly suggested by Sand, the device meets the
two limitations critical in claim 16:
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Appeal 2014-009092
Application 13/058,622
wherein one of the first or second plate sets has n plates
including left and right end plates, with at least n-2 plates being
undulating plates situated between the left and right endplates;
wherein the left and right end plates comprise the non­
undulating plates;
Appeal Br. 13 (Claims App.). See Final Act. 3^4; Ans. 2—3.
Appellants argue that Sand teaches only sets that are either all
undulating or non-undulating, and therefore does not meet the above quoted
claim limitations. Appeal Br. 6. We disagree. Appellants are arbitrarily
grouping Sand’s pressure members with a set of plates (the non-undulating
plates) and arguing that if “the disposition of driving and driven plates [is]
reversed” (Sand 3:51—52), the requirement in claim 16 that one of the plate
carriers include both undulating and non-undulating plates is “absolutely not
satisfied”. Reply 3. But Sand does not describe his structure using
Appellants’ grouping. Instead, Sand speaks of pressure members 40 and 42
(3:5—8) and driven and driving plates 26 and 34 (2:55, 68). ft is the
disposition of the driving and driven plates that may be reversed, according
to Sand. 3:50-53. Sand does not say that the disposition of the opposed
pressure members can also be reversed. Because Appellants have
misinterpreted Sand, we are not persuaded by their argument.
The Examiner also found claim 16 obvious in view of Sand. Final
Act. 4. “Though it is never necessary to so hold, a disclosure that anticipates
under § 102 also renders the claim invalid under § 103, for ‘anticipation is
the epitome of obviousness,’ In re Fracalossi, 681 F.2d 792 (CCPA 1982).”
Connell v. Sears, Roebuck & Co., 722 F. 2d 1542, 1548 (Fed. Cir. 1983).
Because we find that Sand anticipates claim 16, we also find claim 16
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Application 13/058,622
obvious in view of Sand. Appellants’ arguments (Appeal Br. 7—8; Reply
2—5) challenging the Examiner’s obviousness finding based on Sand are the
same as made to challenge the rejection of claim 16 as anticipated by Sand.
For the reasons stated above, we are not persuaded the Examiner erred.
Appellants present the same arguments in connection with the
rejection of claim 20 over Sand and Crawford (Appeal Br. 8—9; Reply 5), in
connection with claims 21, 23, 25, 30, and 31 over Sand in view of Harwood
(Appeal Br. 9; Reply 5), and in connection with claims 26 and 27 over Sand
and Suzuki (Appeal Br. 10; Reply 5—6), and add that the additional
references fail to cure the alleged deficiency of Sand. Because we find no
deficiency in Sand, on the record presented we are not persuaded the
Examiner erred.
DECISION
For the above reasons the Examiner’s rejection of claims 16—31 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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