Ex Parte Swank et alDownload PDFPatent Trials and Appeals BoardMay 21, 201914481212 - (D) (P.T.A.B. May. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/481,212 09/09/2014 141227 7590 05/23/2019 Schaeffler Group USA, Inc. 1750 E. Big Beaver Intellectual Property Department Troy, MI 48083-2010 FIRST NAMED INVENTOR Michael G. Swank 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Pl30659 5622 EXAMINER HANSEN, COLBYM ART UNIT PAPER NUMBER 3655 NOTIFICATION DATE DELIVERY MODE 05/23/2019 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): cpmali07@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL G. SWANK and MARKUS STEINBERGER1 Appeal2018-007270 Application 14/ 481,212 Technology Center 3600 Before JENNIFER D. BAHR, JEFFREY A. STEPHENS, and ALYSSA A. FINAMORE, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 103 as unpatentable over Jawalkar Nagaraj et al. (US 8,608,604 Bl, issued Dec. 17, 2013, hereinafter "Jawalkar Nagaraj"). We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Schaeffler Technologies AG & Co. KG (Appellant) is the applicant as provided in 37 C.F.R. § 1.46 and is identified as the real party in interest. Br. 2. Appeal2018-007270 Application 14/ 481,212 THE CLAIMED SUBJECT MATTER Appellant's invention "relates to a torque transmission apparatus including a torque converter with a planetary gear set and a vibration damper in an input torque path for the torque converter." Spec. ,r 2. In accordance with Appellant's invention, "[i]nput torque for the torque converter is split at the vibration damper to increase absorber mass and vibration damping for the apparatus." Id. Claims 1, 11, and 15 are independent. Br. 23-27 (Claims App.). Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A torque transmission apparatus, comprising: a first vibration damper including: a first input part arranged to receive torque from an engme; a first output part; and, at least one first spring engaged with the first input and output parts; and, a torque converter including: a cover non-rotatably connected to the first output part; an impeller with at least one first blade and an impeller shell non-rotatably connected to the cover; a turbine with at least one second blade and a turbine shell; an output hub; and, a planetary gear set including: a first component non-rotatably connected to the turbine shell; or, a second component non-rotatably connected to the output hub. DISCUSSION Each of Appellant's independent claims 1, 11, and 15 recites, in relevant part, a vibration damper including an input part arranged to receive 2 Appeal2018-007270 Application 14/ 481,212 torque from the engine, an output part, and at least one spring engaged with the input and output parts, and a torque converter "cover non-rotatably connected to" the output part of the vibration damper. Br. 23, 25, 26 (Claims App.). The Examiner finds that Jawalkar Nagaraj discloses a torque transmission apparatus comprising a vibration damper having an input part arranged to receive torque from the engine and an output part, with at least one spring engaged with the input part and output part. Final Act. 2-3 (referring to an annotated version of Figure 2 of Jawalkar Nagaraj, with an arrow pointing to the structure the Examiner considers to be the vibration damper). The Examiner finds that Jawalkar Nagaraj "does not disclose the first vibration damper with its input[2J non-rotatably connected to the cover, and interceding spring," as required in claims 1, 11, and 15. Id. at 4. The Examiner also finds that Jawalkar Nagaraj does not disclose a second vibration damper as additionally called for in claim 15. Id.; see Br. 26-27 ( Claims App.). The Examiner determines that it would have been obvious to use Jawalkar Nagaraj's disclosed vibration damper "between the turbine shell and ring gear, since it has been held that rearranging of parts of an invention involves only routine skill in the art" and, additionally, to use "a second vibration damper between the cover and the sun gear, since it has been held 2 Notably, Appellant's claims require the first vibration damper output, not input, to be non-rotatably connected to the cover. The Examiner's reference to Jawalkar Nagaraj's vibration damper lacking an "input non-rotatably connected to the cover" (Final Act. 4 (emphasis added)), rather than an output non-rotatably connected to the cover, appears to be an inadvertent error. 3 Appeal2018-007270 Application 14/ 481,212 that mere duplication of the essential working parts of a device involves only routine skill in the art." Final Act. 4--5. The Examiner further "gives Official Notice that the use of dedicated bushings for rotational support, impeller/turbine blades, and multiple vibration dampers between rotation transmitting elements in a torque converter is old and well known," and reasons that it would have been obvious to use a dedicated bushing to allow replacement, impeller/turbine blades to transmit fluidic torque, and vibrations dampers with an input, intermediate spring, and output between the cover and sun gear, and the turbine shell and ring gear, respectively, in order to reduce vibrations in a rotation transmitting element thereby reducing mechanical fatigue and uncomfortable vibrations. Id. at 5. The Examiner also states that one of ordinary skill in the art would have combined the elements of Jawalkar Nagaraj "as claimed by known methods with no change in their respective functions, and the combination yield[ s] nothing more than predictable results to one of ordinary skill in the art." Id. In the Answer, 3 the Examiner further explains that "the Examiner ... means to modify Jawalkar Nagaraj ... such that an additional vibration damper (or merely move the damper) be placed anywhere on the '98' before the lockup clutch." Ans. 4 (referring to an annotated version of Figure 1 of 3 Any references to the "Answer" or "Ans." herein are to the Answer dated January 12, 2017. The Examiner reissued the Answer on April 25, 2018, after a Decision on Petition granting a petition to revive the present application, dated February 23, 2018, and after an Order remanding the present appeal to the Examiner to clarify the status of amendments filed by Appellant. Although the font size and pagination are different, the content of the reissued Answer dated April 25, 2018, is identical to that of the Answer dated January 12, 2017. 4 Appeal2018-007270 Application 14/ 481,212 Jawalkar Nagaraj showing proposed locations of the vibration dampers). According to the Examiner, this "modification would result in a cover non- rotatably connected to a first output part ... wherein any portion of 94 directly connected with the spring is the first output part and the rest of 94 is considered the cover." Id. In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). 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 (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 (1966), viz., (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the art. In addition to these factual determinations, the examiner must also provide "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398,417 (2007). Only if this initial burden is met does the burden of coming forward with evidence or argument shift to the appellant. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. Obviousness is then determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki, 745 F.2d at 1472. Appellant argues, and we agree, that neither the broad concept that it is known to place a vibration damper between rotation-transmitting elements 5 Appeal2018-007270 Application 14/ 481,212 in a torque converter, nor Jawalkar Nagaraj's general teaching of placing a damper within a torque converter, is sufficient to establish an apparent reason why a person of ordinary skill in the art would have been prompted to place a vibration damper with an input part arranged to receive torque from an engine and an output part non-rotatably connected to the torque converter cover (i.e., Jawalkar Nagaraj's rotating housing 178), as required in claims 1, 11, and 15. See Br. 13-14; see also id. at 14 (asserting that the Examiner has resorted to impermissible hindsight in reaching the conclusion of obviousness). Providing a vibration damper with its input arranged to receive torque from an engine and its output non-rotatably connected to Jawalkar Nagaraj's rotating housing 178, either in addition to, or in place of the vibration damper illustrated in Figure 2 of Jawalkar Nagaraj (see Final Act. 3), or to place the damper "anywhere on the '98' before the lockup clutch," as proposed by the Examiner (Ans. 4), would change the dynamics of the system (see Spec. ,r,r 2--4), and, thus, amounts to more than a mere re- arrangement or duplication of parts. The Examiner does not provide sufficient explanation, supported by technical reasoning or objective evidence, as to why a person having ordinary skill in the art would have been prompted to make such a modification to Jawalkar Nagaraj. The Examiner's finding that Jawalkar Nagaraj discloses a vibration damper arranged differently than that claimed, 4 and Official Notice that it is generally known to place vibration dampers between rotation transmitting elements in a torque converter, does not adequately explain why it would have been obvious to one of ordinary skill in the art to place a vibration damper in the particular arrangement specified in claims 1, 11, and 15. 4 See Final Act. 4. 6 Appeal2018-007270 Application 14/ 481,212 For the above reasons, the Examiner fails to articulate reasoning with rational underpinning to support the conclusion of obviousness of the subject matter of claims 1, 11, and 15, or their dependent claims 2-10, 12-14, and 16-20. Accordingly, we do not sustain the rejection of claims 1-20 under 35 U.S.C. § 103. DECISION The Examiner's decision rejecting claims 1-20 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation