Ex Parte Sheridan et al

Patent Trial and Appeal Board

Nov 14, 2017

13359552 (P.T.A.B. Nov. 14, 2017)

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.
13/359,552 01/27/2012 William G. Sheridan 61260US01; 6562
67097-1715PUS1
54549 7590 11/16/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
PETERS, BRIAN O
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM G. SHERIDAN and
MICHAEL E. MCCUNE1
Appeal 2016-002700
Application 13/359,552
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1—14 and 16—22.2 Ans. 2; Reply Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is identified as United Technologies Corp. App.
Br. 1.
2 “Claim 15 is objected to as being dependent upon a rejected base claim, but
would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims.” Ans. 2.
Appeal 2016-002700
Application 13/359,552
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a clutch and, more
particularly, to a mechanical clutch that limits relatively high-speed,
unlubricated turbomachine fan operation.” Spec. 11. Claims 1, 10, and 16
are independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A turbomachine clutch assembly, comprising:
a clutch that moves from a first position to a second
position in response to rotation of a turbomachine fan at a speed
greater than a threshold speed, wherein the clutch permits
rotation of the turbomachine fan in a first direction whether the
clutch is in the first position or the second position, and
the clutch limits rotation of the turbomachine fan in an
opposite, second direction when the clutch is in the first
position.
THE REJECTION ON APPEAL3
Claims 1—14 and 16—22 are rejected under 35 U.S.C. § 112, first
paragraph, because the specification, while being enabling for its disclosure
of a clutch, does not reasonably provide enablement for every clutch that is
able to provide the functions articulated in the claims. Final Act. 8; see also
Ans. 2, Reply Br. 1.
ANALYSIS
Appellants address all claims (i.e., claims 1—14 and 16—22) together.
App. Br. 3—6. We select independent claim 1 for review with the remaining
claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
3 “All art rejections have been withdrawn by the Examiner.” Ans. 3.
2
Appeal 2016-002700
Application 13/359,552
The Examiner states, “[t]he specification does not enable any person
skilled in the art to which it pertains, or with which it is most nearly
connected, to make the invention commensurate in scope with these
structurally-unlimited claims without undue experimentation.” Final Act. 8.
To reach this conclusion, the Examiner states, “the full scope of Appellant's
clutch and/or mechanical clutch is a broad term that covers any and every
clutch structure,” such as “mechanical clutches, fluid clutches (typically
hydraulic fluid), and hybrids such as electro-mechanical clutches.” Ans. 4.
Appellants acknowledge, “Appellants’] claims ‘covers a wide range of
different clutches.’” Reply Br. 2. There is also no dispute that Appellants’
Specification only addresses one type of clutch, i.e., a mechanical type
“ramp/roller clutch.” Spec. 1 57; see also Ans. 6; App. Br. 4; Reply Br. 3
(“Appellant has, in detail, explained a ramp-roller type clutch as an example
clutch”). The Examiner summarizes that “[t]he issue is not enablement of
the structure that has been disclosed but rather the enablement of the
structures within the scope of the claims that have no written descriptions.”4
Ans. 3.
MPEP § 2164.05 provides the following guidance:
Once the examiner has weighed all the evidence and established
a reasonable basis to question the enablement provided for the
claimed invention, the burden falls on applicant to present
persuasive arguments, supported by suitable proofs where
necessary, that one skilled in the art would be able to make and
use the claimed invention using the application as a guide. In re
4 After discussing the Wands factors {In re Wands, 858 F.2d 731, 737 (Fed.
Cir. 1988)), the Examiner states, “[providing a single description of a
specific roller/ramp type of clutch cannot possibly be a disclosure of every
other mechanical type, hydraulic type, electro-mechanical type or other
hybrid type of clutch sufficient to support their enablement.” Ans. 5—6.
3
Appeal 2016-002700
Application 13/359,552
Brandstadter, 484 F.2d 1395, 1406-07, 179 USPQ 286, 294
(CCPA 1973). The evidence provided by applicant need not be
conclusive but merely convincing to one skilled in the art.
Concerning the breadth of a claim relevant to enablement, the relevant
concern is whether the scope of enablement provided to one skilled in the art
by the disclosure is commensurate with the scope of protection sought by the
claims. AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003)
(citing In re Wright, 999 F.2d 1557, 1561 (Fed.Cir.1993) andMPEP
§ 2164.08); see also In re Moore, 439 F.2d 1232, 1236 (CCPA 1971); Plant
Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339-40 (Fed.
Cir. 2003) (citing In re Fisher, 427 F.2d 833, 839 (1970)). Thus, “[t]he focus
of the examination inquiry is whether everything within the scope of the
claim is enabled.” MPEP § 2164.08 (cited at Ans. 3).
We are of the opinion that the Examiner has, as required, “established
a reasonable basis to question the enablement” of the entire scope of the
claimed invention. In rebuttal, Appellants also address the Wands factors
and state, “clutches would be well understood by a person having skill in
this art.” App. Br. 4—5; see also Reply Br. 3. Appellants explain, “[a]
person having a basic grasp of engineering concepts and structure would be
able to make and use a clutch without undue experimentation.” App. Br. 4;
see also Reply Br. 2. Although a skilled person is presumably able to
understand a clutch, such statements by Appellants do not explain how a
skilled person, using Appellants’ Specification as a guide, would understand
how to make and use the recited invention with respect to other clutch types
4
Appeal 2016-002700
Application 13/359,552
not discussed therein yet encompassed by claim 1,5 For example,
Appellants rely solely on the knowledge of one skilled in the art for enabling
claim 1 with respect to hydraulic clutches, but provide no basis as to how
this is to be accomplished, other than that clutches are “well understood” or
that a skilled person “would certainly be able to make and use the claimed
clutch without undue experimentation.” App. Br. 4; Reply Br. 2. Appellants
have not provided any evidence in support of these allegations (i.e.,
“arguments, supported by suitable proofs where necessary” (see MPEP
§ 2164.05)), and such conclusions by Appellants are not otherwise self-
evident from the record. In short, Appellants do not indicate how such
statements might be “convincing to one skilled in the art” (MPEP § 2164.05)
or would not involve undue experimentation.6 We further note that when a
dependent claim is narrowed to pertain to the type of clutch actually
described in Appellants’ Specification (i.e., a “ramp/roller clutch” (Spec. 1
57)), the Examiner has found sufficient enablement therefor (Ans. 5) and
indicates that that dependent claim (i.e., claim 15) “would be allowable if
rewritten in independent form” (Ans. 2). See also Reply Br. 1.
Accordingly, and based on the record presented, Appellants have not
presented “persuasive arguments” sufficient to rebut the Examiner’s
5 “The record must be clear so that the public will have notice as to the
patentee’s scope of protection when the patent issues. If a reasonable
interpretation of the claim is broader than the description in the
specification, it is necessary for the examiner to make sure the full scope of
the claim is enabled.” MPEP § 2164.08.
6 “The propriety of a rejection based upon the scope of a claim relative to the
scope of the enablement concerns ... (2) whether one skilled in the art could
make and use the entire scope of the claimed invention without undue
experimentation.” MPEP § 2164.08.
5
Appeal 2016-002700
Application 13/359,552
“reasonable basis to question the enablement” of the entire scope of claim 1.
MPEP § 2164.05. We are not persuaded of Examiner error. We sustain the
Examiner’s rejection of claim 1, and claims 2—14 and 16—22 argued
therewith.
DECISION
The Examiner’s rejection of claims 1—14 and 16—22 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).
AFFIRMED
6