Ex Parte Wahler

Board of Patent Appeals and Interferences

Apr 14, 2011

10537905 (B.P.A.I. Apr. 14, 2011)

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.
10/537,905 05/30/2006 Torsten Wahler 2002P16790WOUS 9223
27799 7590 04/14/2011
COHEN, PONTANI, LIEBERMAN & PAVANE LLP
551 FIFTH AVENUE
SUITE 1210
NEW YORK, NY 10176
EXAMINER
PANG, ROGER L
ART UNIT PAPER NUMBER
3655
MAIL DATE DELIVERY MODE
04/14/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TORSTEN WAHLER
____________________

Appeal 2009-012235
Application 10/537,905
Technology Center 3600
____________________

Before: STEVEN D.A. MCCARTHY, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012235
Application 10/537,905
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1
and 4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The claims are directed to gearing. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A gearing comprising:
a fixed, internally toothed internal gear;
an annular, flexible toothed band arranged so as to
engage with the toothing of the internal gear, the toothed band
having fewer teeth than the internal gear;
a rotatable wave generator arranged to transmit a force to
the toothed band via a tappet gear such that a relative motion of
the toothed band with respect to the internal gear results from a
rotation of the wave generator,
a mating gear; and
driving pins shaped on a lateral face of the toothed band
and arranged to engage in recesses in the mating gear,
wherein axes of the wave generator and of the mating
gear are parallel,
wherein the recesses in the mating gear are radially
extending grooves,
wherein each groove has an outer edge and an inner edge,
wherein a difference between the outer edge and the
inner edge on a circular arc does not equal zero, and
wherein the difference is selected so that an outer
distance between opposing outer edges of a groove is larger
than an inner distance between opposing inner edges of a
groove.

Appeal 2009-012235
Application 10/537,905
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Stall
Hirn
US 5,779,551
US 6,220,115 B1
Jul. 14, 1998
Apr. 24, 2001
Fischer
1
DE 4038555 A1 Jun. 11, 1992

REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fischer and Stall. Ans. 3.
Claim 4
2
stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fischer, Stall, and Hirn. Ans. 4.

OPINION
Regarding claim 1, the Examiner correctly found that Fischer
discloses the basic device claimed except for the specific geometry of the
mating gear grooves. Ans. 3. The Examiner correctly concluded that
modifying Fischer’s groove geometry to have the claimed shape would have
been obvious to one of ordinary skill in the art. Ans. 4, 10.
The description of the mating gear grooves in claim 1 amounts to one
of a finite number of possibilities for using, for example, a trapezoidal tooth
shape. See, e.g., Spec. fig. 5. Although Fischer does not specifically discuss

1
References to “Fischer” are to the translation entered into the record on
June 12, 2009.
2
Claim 4, as set out in Appellant’s Claims Appendix, does not indicate the
claim from which it depends. This appears to be a typographical error. See
Amendment (Mar. 4, 2008) (identifying claim 1 in dependent claim 4).
Clarification should be considered in any further prosecution. We presume
for purposes of this appeal that claim 4 depends from claim 1.
Appeal 2009-012235
Application 10/537,905
4
groove profiles for the clutch disk 4, read as the claimed “mating gear,”
Fischer demonstrates that trapezoidal tooth shapes are known alternatives to
flat or acute shapes in transmission components. Fischer 5:11-12. Fischer
also notes that the groove width influences the play in the gear. Fischer 4:23-
25. Stall depicts a trapezoidal tooth profile. Stall, fig. 4a. Substituting Stall’s
profile for Fischer’s amounts to the simple substitution of known elements
and would yield the predictable result of altering the contact angle, and/or
play, between components. Such a substitution would therefore have been
obvious to one of ordinary skill in the art.
Appellant and the Examiner are in agreement that Fischer does not
specifically disclose the claimed profile on Fischer’s clutch disk 4. App.
Br. 5; Ans. 9. Fischer does not specifically describe the profile depicted in
figure 4, but appears to regard this profile as “flat” and not “trapezoidal.”
Fischer 4:22-23; contra App. Br. 6 and Reply Br. 2. In any case, the
Examiner correctly points out that, unless otherwise noted, patent drawings
are typically not to scale. Ans. 3; see Hockerson-Halberstadt, Inc. v. Avia
Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000).
Appellant’s argument that Stall fails to demonstrate the claimed
groove structure on a “mating gear” (App. Br. 6-7; Reply Br. 2-3) is an
argument that no single reference discloses the claimed structure. The test
for obviousness is not whether the claimed invention is expressly suggested
in any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). To the extent Appellant is arguing the radial direction of
Stall’s grooves precludes them from being applied to a “mating gear,” we
agree with the Examiner that this is not precluded by the claim. Ans. 10; See
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Application 10/537,905
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In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in
the claims cannot be relied upon for patentability).
Regarding Appellant’s argument that Stall lacks an “inner edge,”
(App. Br. 7) we agree with the Examiner that it is reasonable to characterize
the boundary between the linear and curvilinear portions of the gear tooth as
an “edge” (Ans. 8, 11). Furthermore, the term “trapezoidal” would have
suggested a shape whose edges are formed by the intersection of two lines.
Appellant has not provided sufficient support to establish that the
Examiner erred by interpreting Fischer’s clutch disk 4 as the claimed
“mating gear.” App. Br. 5. To the extent that Appellant argues that it was
unreasonable to characterize Fischer’s clutch members 6 as “pins,” we agree
with the Examiner that such an interpretation is not precluded by the claim.
Ans. 9-10. Furthermore, Fischer expressly suggests replacing this structure
with “bolts,” which are also reasonably read as the claimed “pins.” See
Fischer 4:26-27.
Regarding claim 4, Appellant argues that the tertiary reference Hirn
fails to cure the deficiency in the rejection of independent claim 1, from
which claim 4 depends, and that there is no reason to modify the primary
and secondary references to arrive at the subject matter of claim 1 . App. Br.
7-8. For the reasons discussed above, these arguments are not persuasive.
Appellant also asserts that “because of the additional inventive features
recited in dependent claim 4 that depends from claim 1, Appellant submits
that dependent claim 4 is patentable.” Id. This conclusory argument does not
address with any specificity the Examiner’s findings or reasoning regarding
claim 4 (Ans. 4), and therefore does not persuade us of error in the rejection.

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DECISION
For the above reasons, the Examiner’s rejections of claims 1 and 4 are
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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