Ex Parte Zwickler et al

Patent Trial and Appeal Board

Aug 26, 2016

13102491 (P.T.A.B. Aug. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/102,491 05/06/2011
71599 7590 08/30/2016
LKGlobal (GME)
7010 E. COCHISE ROAD
SCOTTSDALE, AZ 85253
FIRST NAMED INVENTOR
Georg ZWICKLER
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.
060.0424US 7222
EXAMINER
HOLBROOK, TEUTABAJRAMOVIC
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
08/30/2016 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):
docketing@lkglobal.com
PTOL-90A (Rev. 04/07)
U-NITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORG ZWICKLER, WOLF-DIETRICH BICKLER,
and MANFRED HOLZHAEUSER
Appeal2014-008996
Application 13/102,491
Technology Center 3700
Before LINDA E. HORNER, JEFFREY A. STEPHENS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Office Action ("Final Act.") rejecting claims 1-8 and
10-12, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
1 The real party in interest is identified as GM Global Technology
Operations LLC. (Appeal Br. 2.)
Appeal2014-008996
Application 13/102,491
Claimed Subject Matter
The claimed invention generally relates to an oil pump module having
an oil pump module housing. (Spec. Title.) Claim 1, reproduced below, is
illustrative:
1. An oil pump module, comprising:
an oil pump module housing;
an oil pan of an internal combustion engme below a
crankshaft;
an oil pump;
a plurality of moving parts of the oil pump situated in the
oil pump module housing;
an angular momentum balance shaft situated in the oil
pump module housing;
a rotor shaft that is separate from the angular momentum
balance shaft;
a rotor of the oil pump that is situated on the rotor shaft in
the oil pump module housing; and
a spur gear transmission in the oil pump module housing
mechanically connecting the rotor shaft to the angular
momentum balance shaft.
Rejections
Claims 1, 2, 3, 5-8, and 10-12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Pascoe et al. (US 7,364,018 B2, issued Apr.
29, 2008) and Endo et al. (US 6,758,183 B2, issued July 6, 2004). (Final
Act. 3-6.)
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Pascoe, Endo, and Kopec (US 6,161,515, issued Dec. 19, 2000). (Final Act.
6-7.)
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Appeal2014-008996
Application 13/102,491
ISSUE2
The issue raised by Appellants' contentions is whether the Examiner
errs in finding the combination of Pascoe and Endo teaches that the angular
momentum balance shaft, the rotor of the oil pump, and the spur gear
transmission are in the oil pump module housing, as recited in claim 1.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Br. 9-12; Reply Br. 4-5). We concur with Appellants'
argument (Appeal Br. 10) that the Examiner erred in finding that Pascoe
teaches the balance shaft, oil pump rotor, and spur gear transmission are all
located within a single housing.
As Appellants point out (Appeal Br. 10), Pascoe refers to two
housings - housing 11 and pump housing 58. Pascoe teaches that "pump
housing 58 is secured to the upper end 42 of the pump side 40 of the housing
11" (col. 3, 11. 11-12) and "pump 20 is enclosed in the pump housing 58
which is attached to the housing 11" (col. 3, 11. 16-17). (See also Pascoe
Fig. 3.) "The balance shaft 24 is journaled to the housing 11." (Pascoe col.
2, 11. 31-32.)
Claim 1 provides an oil pump module housing, and recites, among
other things, an angular momentum balance shaft situated in the oil pump
module housing, a rotor of the oil pump that is situated on the rotor shaft in
the oil pump module housing, and a spur gear transmission in the oil pump
module housing. In view of the language of the claim, we interpret claim 1
2 Because this issue is dispositive, we need not reach additional issues raised
by Appellants' arguments.
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Appeal2014-008996
Application 13/102,491
to require that the angular momentum balance shaft, the rotor of the oil
pump, and the spur gear transmission are all enclosed within a single
housing. Although Pascoe's two housings are attached to one another, the
Examiner has not shown Pascoe teaches that the three recited components
are located within a single housing. Thus, we do not sustain the Examiner's
rejection of claim 1under35 U.S.C. § 103(a). For the same reasons, we do
not sustain the rejections of dependent claims 2-8 and 10-12.
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claim 1 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Pascoe, Endo, and Applicants' Admitted Prior Art
("AAP A"). We incorporate the Examiner's rejection of claim 1 (Final Act.
3), except we find that, although Pascoe shows the angular momentum
balance shaft 24 and the spur gear transmission 22, 30 located in a single
housing 11, Pascoe does not show the rotor of the oil pump also located in
this same housing. Appellants' Specification admits "it is known from US
6,205,970 B 1 that the oil pump housing can be formed together with the
housing of angular momentum balance shafts, in order to thus reduce the
number of the components and the production time of the assembly." (Spec.
,-i 3, referring to Figs. 3 and 4.) In view of the teachings of Pascoe, Endo,
and AAP A, one of ordinary skill in the art would have recognized the
benefit of containing Pascoe's angular momentum balance shaft, rotor of the
oil pump, and spur gear transmission within a single oil pump module
housing "in order to thus reduce the number of the components and the
production time of the assembly" (Spec. ,-i 3). Accordingly, we conclude
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Appeal2014-008996
Application 13/102,491
claim 1 is unpatentable under 35 U.S.C. § 103(a) as obvious over Pascoe,
Endo, and AAP A.
Appellants have not contested the Examiner's findings as to: ( 1) the
disclosure of the claim limitations of dependent claims 2, 3, 5-8 and 10-12
in Pascoe and/or Endo, as set forth on pages 3-6 of the Final Action, or (2)
the findings as to the disclosure of the claim limitation of dependent claim 4
in Kopec and the proposed modification of Pascoe with the teachings of
Kopec as set forth on page 7 of the Final Action. (Appeal Br. 11.) For
purposes of the treatment of these dependent claims, we adopt the findings
and reasoning of the Examiner as set forth in the Final Action, and conclude
that: (1) claims 2, 3, 5-8, and 10-12 are unpatentable under 35 U.S.C.
§ 103(a) over Pascoe, Endo, and AAPA, and (2) claim 4 is unpatentable
under 35 U.S.C. § 103(a) over Pascoe, Endo, AAPA, and Kopec.
DECISION
We reverse the Examiner's decision to reject claims 1-8 and 10-12.
We enter a new ground of rejection of claims 1-8 and 10-12 under
35 U.S.C. § 103(a), pursuant to our authority under 37 C.F.R. § 41.50(b).
"A new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review." 37 C.F.R. § 41.50(b). Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
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Appeal2014-008996
Application 13/102,491
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
REVERSED;
37 C.F.R. § 41.50(b)
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