Ex Parte Sommerfeld

Board of Patent Appeals and Interferences

Mar 31, 2008

10733110 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOWARD SOMMERFELD
____________

Appeal 2008-0301
Application 10/733,110
Technology Center 3600
____________

Decided: March 31, 2008
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

Appeal 2008-0301
Application 10/733,110
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 (2002) from a final
rejection of claims 1 to 21. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
Appellant invented a draft gear assembly (Specification 1).
Claim 1 under appeal reads as follows:
1. A friction clutch mechanism for use in a friction clutch
type draft gear assembly, said friction clutch mechanism
comprising:

(a) a pair of outer stationary plate members,
each of said pair of outer stationary plate
members having an inner and an outer surface,
said outer surface being engageable with a
respective radially opposed portion of an inner
surface of a draft gear housing member adjacent a
open end of such housing member;

(b) a pair of movable plate members, each of
said movable plate members having at least a
predetermined portion of an outer surface thereof
frictionally engageable with a respective said
inner surface of said pair of outer stationary plate
members for absorbing at least a first portion of
heat energy generated during closure of such
friction clutch type draft gear assembly;

(c) a pair of inner stationary plate members,
each of said inner stationary plate members
having an outer surface thereof frictionally
engageble with at least a portion of a respective
inner surface of said pair of movable plate
2
Appeal 2008-0301
Application 10/733,110
members for absorbing at least a second portion
of such heat energy generated during closure of
such friction clutch type draft gear assembly, an
inner surface of said each of said inner stationary
plate members being tapered at a first
predetermined angle;

(d) a pair of wedge shoe members, each of said
wedge shoe members including

(i) a tapered outer surface frictionally
engageable with a respective said inner surface of
said tapered stationary plate members for
absorbing a third portion of heat energy generated
during closure of such friction clutch type draft
gear assembly,

(ii) an upper surface tapered from a point
disposed inwardly from said tapered outer surface
inwardly toward and at an acute angle relative to a
longitudinal axis of said friction clutch
mechanism, said tapered upper surface being
tapered at an angle of between about 49.0° and
about 50.0°, and

(iii) a bottom surface tapered from a point
disposed inwardly from said tapered outer surface
inwardly toward and at an acute angle relative
perpendicularly to said longitudinal axis of said
friction clutch mechanism; and

3
Appeal 2008-0301
Application 10/733,110
(e) a center wedge member, said center wedge
member including a pair of correspondingly
tapered surfaces frictionally engageable with an
upper tapered surface of a respective one of said
pair of wedge shoe members for absorbing at least
a fourth portion of such heat energy generated
during closure of such friction clutch type draft
gear assembly.

The Examiner rejected claims 1 to 17 under the judicially created
doctrine of double patenting over claims 1, 3, 5, 7 to 10 and 12 of Duffy,
U.S. Patent No. 5,590,797.
The Examiner rejected claims 1 to 21 under 35 U.S.C. § 103(a) as
being unpatentable over Duffy.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Duffy 5,590,797 Jan. 7, 1997
Appellant contends that the Examiner erred in rejecting claims 1 to
17 under the judicially created doctrine of double patenting.
Appellant also contends that the Examiner erred in holding that it
would have been obvious to a person of ordinary skill in the art to modify
the friction clutch disclosed in Duffy so as to include a wedge shoe member
having an upper surface tapered at an angle between 49 and about 50
degrees and a lubricating insert member formed of a mixture of a pre-
selected lubricating metal and at least 2% graphite.

4
Appeal 2008-0301
Application 10/733,110
ISSUES
The first issue is whether the Appellant has shown that the Examiner
erred in rejecting claims 1 to 17 under the judicially created doctrine of
double patenting.
The second issue is whether the Appellant has shown that the
Examiner erred in finding that it would have been obvious to modify the
device disclosed in Duffy so as to include a wedge shoe member having an
upper surface tapered at an angle between about 49 and about 50 degrees
and a first lubricating insert member formed of a mixture of a pre-selected
lubricating metal and at least 2% graphite.

FINDINGS OF FACT
The Duffy patent discloses a friction clutch which includes a wedge
shoe member having an upper surface tapered at an angle of between 46.5
and 48.5 degrees (col. 5, ll. 48 to 49).
Duffy discloses a lubricating insert member 28 formed from a
lubricating metal which is preferably a brass alloy (col. 8, ll. 25 to 27).
Claims 1, 3, 5, 7 to 10 and 12 of the Duffy patent do not recite a
clutch which includes a wedge shoe member having an upper surface
tapered at an angle between 49 and 50 degrees or a lubricating member
formed of a pre-selected lubricating metal and at least 2% graphite.

5
Appeal 2008-0301
Application 10/733,110
ANALYSIS
Double patenting
The Examiner’s reason for making this rejection is the Examiner’s
belief that the decision of In re Schneller, 397 F.2d 350 (CCPA 1968) is
applicable to the facts present in this appeal. However, this is not the case.
The Schneller court cautioned “against the tendency to freeze into rules of
general application what, at best, are statements applicable to particular fact
situations.” Schneller, 397 F.2d at 355. As such, the Schneller court did
not establish a rule of general application and its application is limited to
the particular set of facts set forth in that decision. Those facts were: (1) the
Schneller application was a continuation of an intermediate application
which was a divisional of the application for which the Schneller patent
issued from and (2) everything disclosed in the Schneller application was
disclosed in the Schneller patent and the Schneller patent disclosed
additional matter. Id. at 352. This particular set of facts does not appear to
be present within the record of this appeal. Therefore, we will not sustain
this rejection.
Obviousness
Duffy discloses a wedge shoe member having an upper surface
tapered at an angle between 46.5 and 48.5 degrees. Appellant’s claim 1
recites a wedge shoe member having an upper surface that is tapered at an
angle of 49 to 50 degrees.
We are not persuaded by the Appellant’s argument that the Examiner
erred in rejecting claim 1 because Duffy does not disclose or suggest the
6
Appeal 2008-0301
Application 10/733,110
claimed taper angle for the upper surface of the wedge shoe member. We
note that the discovery of an optimum value of a result effective variable (in
this case, the optimum angle for taper of the upper surface of the wedge
shoe) is ordinarily within the skill of the art. See In re Boesch, 617 F.2d
272, 276 (CCPA 1980) and In re Aller, 220 F.2d 454, 456 (CCPA 1955).
As stated in In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996):
This court and its predecessors have long held,
however, that even though applicant's
modification results in great improvement and
utility over the prior art, it may still not be
patentable if the modification was within the
capabilities of one skilled in the art, unless the
claimed ranges "produce a new and unexpected
result which is different in kind and not merely in
degree from the results of the prior art."

Additionally, as stated in In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990):
The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims. . . . These cases have consistently held
that in such a situation, the applicant must show
that the particular range is critical, generally by
showing that the claimed range achieves
unexpected results relative to the prior art range
[citations omitted].

In the present case, however, the Appellant has not even alleged,
must less established, that the claimed produces unexpected results.
7
Appeal 2008-0301
Application 10/733,110
Therefore, we are of the opinion that it would have been obvious to one of
ordinary skill in the art at the time of Appellant’s invention to optimize the
angle of the wedge shoe upper surface. Accordingly, the Examiner's
rejection of claim 1 under 35 U.S.C. § 103 as being unpatentable over
Duffy is sustained. We will also sustain the rejection of claims 2, 3, 5, 7, 9
to 14, and 16 because the Appellant has not argued the separate
patentability of these claims.
We will not sustain this rejection as it is directed to claims 4, 6, 8, 15,
and 17. Claims 4, 6, 8, 15, and 17 recite that the lubricating insert member
is formed of a pre-selected lubricating metal and at least 2% graphite.
There is no disclosure or suggestion in Duffy of a lubricating insert member
comprised of a pre-selected lubricating metal and at least 2% graphite. We
are not persuaded by the Examiner’s argument that the recitation of a
lubricating insert member formed of a pre-selected lubricating metal
suggests a lubricating insert member formed of a pre-selected lubricating
metal and at least 2% graphite. No such suggestion of 2% graphite is found
in Duffy.
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)(1)(iv) (2006).

AFFIRMED-IN-PART

8
Appeal 2008-0301
Application 10/733,110

jlb

James Ray & Associates
2640 Pitcairn Road
Monroeville, PA 15146

9