Ex Parte Swank et al

Patent Trials and Appeals Board

May 21, 2019

14481212 - (D) (P.T.A.B. May. 21, 2019)

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
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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.
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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.
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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
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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.
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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
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