Ex parte Shultz

Board of Patent Appeals and Interferences

Jun 27, 2001

08601724 (B.P.A.I. Jun. 27, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DUANE E. SHULTZ
__________
Appeal No. 1999-0365
Application 08/601,724
___________
HEARD: May 22, 2001
___________
Before JERRY SMITH, RUGGIERO and DIXON, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-20, 29, 31, 38-47,
49, 59, 61, 63-68 and 72-77. Claims 23-28, 32-37, 48, 52-58
and 62 have been cancelled. Claims 21, 22, 30, 50, 51, 60 and
69-71 have been indicated to contain allowable subject matter.

The disclosed invention pertains to a transmission
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tester for testing any type of vehicular transmission.
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Representative claim 1 is reproduced as follows:
1. A transmission tester for testing vehicular
transmissions, the transmission tester comprising:
(a) a main frame;
(b) a prime mover, for providing driving energy to a
transmission to be tested;
(c) a headstock plate adapted to receive thereon a
transmission to be tested, said headstock plate being
supported from said main frame by a support, said support
being mounted for povitation about a first axis, to thereby
pivot said headstock plate about said first axis; and
(d) loading and braking apparatus, supported from said
main frame, said loading and braking apparatus including a
shaft journalled for rotation about a second axis
substantially perpendicular to said first axis, and extending
generally toward said headstock plate, for engaging an output
shaft of the transmission to be tested, and for thereby
applying braking energy to the transmission.
The examiner relies on the following references:
Weeder 4,732,036 Mar. 22, 1988
Sano et al. (Sano) 5,144,834 Sep. 08, 1992
Kuwahara 5,154,623 Oct. 13, 1992
The following rejections are on appeal before us:
1. Claims 1-10, 13-18, 38-44, 47, 63 and 72-77 stand
rejected under 35 U.S.C. § 103 as being unpatentable over the
teachings of Weeder taken alone.
2. Claims 11 and 12 stand rejected under 35 U.S.C. §
103 as being unpatentable over the teachings of Weeder in view
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of Kuwahara.
3. Claims 19, 20, 29, 31, 45, 46, 49, 59, 61 and 64-68
stand rejected under 35 U.S.C. § 103 as being unpatentable
over the teachings of Weeder in view of Kuwahara and further
in view of Sano.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
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set forth in claims 1-20, 29, 31, 38-47, 49, 59, 61, 63-68 and
72-77. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984). These showings by the
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examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
We consider first the rejection of claims 1-10, 13-18,
38-44, 47, 63 and 72-77 based on the teachings of Weeder taken
alone. With respect to independent claims 1 and 38, the
examiner acknowledges that Weeder does not teach the support
for supporting the headstock plate from the main frame being
pivotable about a first axis which is perpendicular to the
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claimed second axis. Nevertheless, the examiner asserts that
such an arrangement would have been obvious to the artisan
[answer, pages 3-4]. With respect to independent claim 72,
the examiner asserts that it would have been obvious to the
artisan to modify the tester of Weeder so that it could test
transmissions having longitudinally mounted transaxles as
recited in claim 72 [id., page 5].
With respect to independent claim 1, appellant argues
that the examiner has provided no legitimate reason or
motivation for the artisan to modify the device of Weeder.
Appellant argues that since Weeder did not intend to test
longitudinally mounted transaxle transmissions, there would be
no reason to provide a pivoting headstock plate as claimed
[brief, pages 6-8].
We agree with the position argued by appellant. The
examiner’s proposed modification of Weeder is based on pure
speculation and does not come from the teachings of the
reference. The mere fact that the prior art may be modified
in the manner suggested by the examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d
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1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). There is no suggestion within Weeder that the
examiner’s proposed modification should be made. Therefore,
we do not sustain the examiner’s rejection of independent
claim 1 or of the claims which depend therefrom and are
rejected on Weeder taken alone.
With respect to independent claim 38, appellant again
argues that the examiner has admitted that Weeder does not
teach the first and second axes as recited in claim 38.
Appellant again argues that there is no motivation for the
examiner’s proposed modification of Weeder [brief, pages 9-
11].
We again agree with appellant for the same reasons
discussed above. Therefore, we do not sustain the rejection
of independent claim 38 or of the claims which depend
therefrom and are rejected on Weeder taken alone.
With respect to independent claim 72, appellant argues
that the tester of Weeder does not have a support and a
headstock plate having adjustable elements which enable
adjustment of the headstock plate such that longitudinally
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mounted transaxles can be tested [brief, pages 12-13].
We again agree with the position argued by appellant.
The examiner’s proposed modification of Weeder so that Weeder
can work with longitudinally mounted transaxles does not come
from Weeder. The only basis on this record to modify Weeder
in the manner proposed by the examiner would be to improperly
create appellant’s invention in hindsight. Therefore, we do
not sustain the rejection of independent claim 72 or of claims
73-77 which depend therefrom.
We now consider the rejection of claims 11 and 12
based on the teachings of Weeder and Kuwahara. These claims
depend from claim 1 and additionally recite an eddy current
device. Kuwahara was cited by the examiner only to meet the
claim limitations related to the eddy current device.
Kuwahara does not overcome the basic deficiencies of Weeder
discussed above. Therefore, we do not sustain the examiner’s
rejection of claims 11 and 12.
We now consider the rejection of claims 19, 20, 29,
31, 45, 46, 49, 59, 61 and 64-68 based on the teachings of
Weeder, Kuwahara and Sano. In addition to the teachings of
Weeder and Kuwahara discussed above, the examiner cites Sano
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as applying a range of resistance loads to simulate dynamic
driving conditions. The examiner finds that it would have
been obvious to the artisan to vary the resistance loads of
Weeder by applying a range of such loads as taught by Sano
[answer, pages 6-7].
With respect to independent claims 19 and 49,
appellant argues that the claimed application of a plurality
of resistance loads to the output element of the transmission
being tested is not taught or suggested by any of the art of
record. Specifically, appellant argues that dynamic driving
conditions at the output element of the transmission cannot be
simulated as claimed by the applied prior art [brief, pages
15-19].
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We agree with appellant that a range of resistance
loads to simulate dynamic driving conditions as recited in
claims 19 and 49 is not taught or suggested by the applied
prior art for the reasons set forth by appellant in the main
brief. Therefore, we do not sustain the rejection of
independent claims 19 and 49 or of the claims which depend
therefrom.
In summary, we have not sustained any of the
examiner’s rejections of the appealed claims. Therefore, the
decision of the examiner rejecting claims 1-20, 29, 31, 38-47,
49, 59, 61, 63-68 and 72-77 is reversed.
REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
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JOSEPH L. DIXON )
Administrative Patent Judge )
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Application 08/601,724

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JEFFREY D. HARTY, ESQ.
ZARLEY, MCKEE, THOMTE, VOORHEES
& SEASE
801 GRAND AVENUE, SUITE 3200
DESMOINES, IA 50309-2721
JS:caw