Ex parte Younger

Board of Patent Appeals and Interferences

Oct 17, 2001

09314618 (B.P.A.I. Oct. 17, 2001)

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written for publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GILBERT W. YOUNGER
____________
Appeal No. 2000-1743
Application No. 09/314,618
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8. Claims 21 through 24, the
only other claims remaining in the application, have been
withdrawn from further consideration as being directed to a
non-elected invention. Claims 9 through 20 have been
canceled.
Appeal No. 2000-1743
Application No. 09/314,618
In the advisory action mailed September 3, 1999 (Paper1
No. 6), the examiner has withdrawn the rejection of claim 7
under
35 U.S.C. § 102(b) based on Bouda and also the rejection of
2
Appellant's invention relates to a method for modifying
hydraulic circuitry of an automotive transmission
(specifically a Hydramatic 4L80E General Motors transmission)
so as to enable a user to select first gear at any time,
thereby enabling the driver to obtain a "first" gear ratio
whenever the gear selector lever is placed in the "1" position
without regard to the actual vehicle speed or engine
rotational speed. Independent claim 1 is representative of
the subject matter on appeal and a copy of that claim can be
found in the Appendix to appellant's brief.
The sole prior art reference relied upon by the examiner
in rejecting the appealed claims is:
Bouda 4,858,498 Aug.
22, 1989
Claims 1 through 6 and 8 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bouda.1
Appeal No. 2000-1743
Application No. 09/314,618
claims 1 through 8 under 35 U.S.C. § 112, second paragraph.
While the examiner has not expressly repeated each of2
these rejections in the examiner's answer (Paper No. 9), it is
clear from a review of the final rejection, appellant's brief
(Paper No. 8) and the totality of the examiner's answer that
the double patenting rejections based on the judicially
created doctrine of obviousness-type double patenting are
still valid rejections and, given appellant's Notice of
Appeal, are before us in this appeal.
3
As stated in the final rejection (Paper No. 3, mailed
July 16, 1999) and the advisory action (Paper No. 6), claims 1
through 8 also stand rejected under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over the claims of several different prior U.S.
patents. See pages 6 through 8 of the final rejection for the
details.2
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the final
rejection (Paper No. 3) and the examiner's answer (Paper No.
9, mailed December 30, 1999) for the reasoning in support of
the rejections, and to appellant's brief (Paper No. 8, filed
Appeal No. 2000-1743
Application No. 09/314,618
The record indicates that appellant filed new drawings3
(Figs. 1A-1D) on August 9, 1999 as an attachment to Paper No.
4. However, no such drawings are to be found in the file.
Appellant and the examiner should resolve this problem during
any further prosecution of the application. As a further
point, we note that the examiner (in Paper No. 6) indicates
that the new drawings were not approved, however, the examiner
approved amendments to the specification contained in Paper
No. 4 which specifically relate to new drawing Figures 1A-1D,
thus creating an inconsistency between the specification and
the single drawing figure originally filed with the
application.
4
November 22, 1999) and reply brief (Paper No. 10, filed
January 27, 2000) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art reference, and to the respective
positions articulated by appellant and the examiner. As a3
consequence of our review, we have made the determinations
which follow.
Looking at pages 3, 4 and 6 of the brief, we note that
appellant has indicated with regard to the rejections based on
Appeal No. 2000-1743
Application No. 09/314,618
5
obviousness-type double patenting that a terminal disclaimer
will be filed to obviate these rejections upon final
disposition of the instant appeal. Given that no such
terminal disclaimer has as of yet been filed by appellant and
no argument made with respect to these grounds of rejection,
and the fact that appellant has indicated that he "does not
contest the obviousness-type double patenting rejections
raised against claims 1-8 in the final action," we summarily
sustain the examiner's rejections of claims 1 through 8 based
on obviousness-type double patenting.
Regarding the examiner's rejection of claims 1 through 6
and 8 under 35 U.S.C. § 102(b) based on the Bouda patent, we
note that claim 1 on appeal sets forth a method for modifying
hydraulic circuitry of an automotive transmission comprising
the step of
providing a fluid flow path from said manual valve
to a predetermined end of said "1 - 2" shift valve
for applying a fluid pressure to said predetermined
end of said "1 - 2" shift valve sufficient to
maintain said "1 - 2" shift valve in a downshifted
position whenever said gear selector is in a first
gear position without regard to the actual speed of
a vehicle in which said transmission is installed.
Appeal No. 2000-1743
Application No. 09/314,618
6
Claim 3 adds the limitation that the hydraulic circuitry
includes means for urging the 1-2 shift valve into an
upshifted position, and that the method includes
applying said fluid pressure to said predetermined
end of said 1 - 2 shift valve sufficient to overcome
said means for urging said 1 - 2 shift valve into
said upshifted position to maintain said 1 - 2 shift
valve in said downshifted position when said gear
selector is in said first gear position.
In the examiner's view (final rejection, page 5), Bouda
discloses an automotive transmission that includes a manual
valve (61) coupled to a gear selector and operatively
associated with a 1-2 shift valve (63), "wherein a fluid flow
path/passageway (102, 102a) is provided from the manual valve
to a predetermined end (i.e., right-hand end in the drawings)
of the 1-2 shift valve for applying a fluid pressure thereto
sufficient to maintain . . . the 1-2 shift valve in a
downshifted position (i.e., "1st FIX") without regard to
vehicle speed when the gear selector is in a first gear
position (1-range)." As for the means for urging the 1-2
shift valve into an upshifted position as set forth in claim
3, the examiner indicates that when the gear selector of Bouda
is in the first gear position "the fluid pressure overcomes a
Appeal No. 2000-1743
Application No. 09/314,618
7
spring (no reference numeral) which is provided at an end of
the 1-2 shift valve opposite the predetermined end for urging
the 1-2 shift valve into an upshifted position."
Having carefully reviewed the disclosure of the Bouda
patent and appellant's arguments in the brief and reply brief,
we must agree with appellant that the Bouda patent does not
anticipate the method as set forth in claims 1 through 8 on
appeal. More particularly, we observe that the factual
findings made by the examiner (as noted above) relative to the
operation of the 1-2 shift valve of the transmission in the
Bouda patent are incorrect. In discussing the "HYDRAULIC
CONTROL CIRCUIT" in columns 3 and 4, the Bouda patent makes
clear that port (a) of select valve (61) is communicated with
the pressure line (101) from the pump (50) when the gear
selector lever is in the "1" position and that port (a) is
further connected to the line (111) which is branched at an
end portion thereof into a first pilot line (102), a second
pilot line (103) and a third pilot line (104). The Bouda
patent goes on to indicate that
Appeal No. 2000-1743
Application No. 09/314,618
8
[t]he line 102 is provided with a 1-2 shift solenoid
valve 51 for controlling the operation of a 1-2
shift valve 63 and a flow restriction 86. The line
103 is provided with a 2-3 shift solenoid valve 52
for controlling the operation of a 2-3 shift valve
64 and a flow restriction 87. The line 104 is
provided with a 3-4 shift solenoid valve 53 for
controlling the operation of 3-4 valve 65 and a flow
restriction 88. The solenoid valves 51, 52 and 53
function to close drain lines 105, 106 and 107 for
the lines 102, 103 and 104, respectively, when
energized to produce pilot pressures in the
respective lines 102, 103, and 104. The pressures
in the lines 102, 103 and 104 function to move the
shift valves 63, 64 and 65 from right positions to
left positions to effect shift operations.

Comparing the above-noted disclosure of the Bouda patent
with the factual findings made by the examiner reveals that
Bouda does not disclose or teach a fluid flow path/passageway
(111, 102, 102a) from the manual valve (select valve 61) to a
predetermined end (i.e., right-hand end in the drawings) of
the 1-2 shift valve (63) "for applying a fluid pressure
thereto sufficient to maintain . . . the 1-2 shift valve in a
downshifted position (i.e., "1st FIX") without regard to
vehicle speed when the gear selector is in a first gear
position (1-range)," as urged by the examiner. To the
contrary, it is clear from the disclosure noted above in the
Appeal No. 2000-1743
Application No. 09/314,618
9
Bouda patent that the 1-2 shift valve (63) is maintained in a
downshifted position (1st gear) when there is little or no
fluid pressure being applied to line (102a) or to the right-
hand end of the valve as seen in Figure 1B (i.e., when the
solenoid valve 51 is deenergized and the fluid exits at drain
line 105). When the solenoid valve (51) is energized it
closes drain line (105) and produces pilot pressure in the
line (102, 102a) to move the shift valve (63) from its right
position to its left position to thereby effect shift
operations (i.e., to allow an upshift of the transmission from
1st gear to 2nd gear). In this regard, the method as
disclosed in Bouda is completely different than that set forth
in appellant's claim 1 on appeal.
As for the means for urging the 1-2 shift valve into an
upshifted position as set forth in appellant's claim 3 and the
method step therein, we again note that the operation of the
transmission in Bouda regarding the 1-2 shift valve is
entirely different than that required in appellant's claim 3
on appeal. See pages 3-5 of appellant's reply brief for the
detailed reasoning. For similar reasons, we also agree with
Appeal No. 2000-1743
Application No. 09/314,618
10
appellant's position (reply brief, pages 5-9) regarding
dependent claims 5, 6 and 8 on appeal.
In view of the foregoing, the examiner's rejection of
claims 1 through 6 and 8 under 35 U.S.C. § 102(b) will not be
sustained.
To summarize: the examiner's decision rejecting claims 1
through 6 and 8 of the present application under 35 U.S.C.
§ 102(b) is reversed; however, the decision to reject claims 1
through 8 under the judicially created doctrine of
obviousness-type double patenting is affirmed. Since at least
one rejection of each of the claims on appeal has been
affirmed, the decision of the examiner is affirmed.
Appeal No. 2000-1743
Application No. 09/314,618
11
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
CEF/LBG
Appeal No. 2000-1743
Application No. 09/314,618
12
MARK P. STONE
1100 HIGH RIDGE ROAD
STAMFORD, CT 06905
Lesley
Appeal No. 2000-1743
Application No. 09/314,618
APJ FRANKFORT
APJ STAAB
APJ COHEN
DECISION: AFFIRMED

Prepared: June 27, 2002
Draft Final
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