Merlin Technology, Inc.

Patent Trials and Appeals Board

May 21, 2020

15010982 - (D) (P.T.A.B. May. 21, 2020)

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.
15/010,982 01/29/2016 John E. Mercer DCI-38C5 1947
21833 7590 05/21/2020
PRITZKAU PATENT GROUP, LLC
16162 Olive St
Brighton, CO 80602
EXAMINER
FLUHART, STACEY A
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
05/21/2020 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):
USPTO@dockettrak.com
mpritz@msn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN E. MERCER
____________

Appeal 2019-003623
Application 15/010,982
Technology Center 3600
____________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
JAMES A. WORTH, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–5, 7, and 8.2 We have jurisdiction under 35
U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Merlin
Technology, Inc. Appeal Br. 3.
2 Claim 6 is objected to. Final Act. 1.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the sole independent claim on appeal:
1. An apparatus for use in a drive train at least including an
input shaft and an output shaft, said apparatus comprising:
a gear configured to rotate about an axis of rotation;
a traveling shaft supporting said gear for rotation about
said axis of rotation and having a pair of opposing ends and
said traveling shaft further supported for lateral movement
along said axis of rotation such that the gear is movable to a
first lateral position to rotate the output shaft responsive to
rotation of the input shaft and movable to a second lateral
position such that rotation of the input shaft does not rotate the
output shaft and wherein one end of the opposing ends of the
traveling shaft is a free end; and
a permanent magnet that is fixedly mounted on the free
end of said traveling shaft for movement with the traveling
shaft to move the gear between the first lateral position and the
second lateral position responsive to exposure of the permanent
magnet to an external magnetic field.

Appeal Br. 20 (Claims App.).

REJECTIONS3
Claims 3 and 5 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
Claims 3, 5, and 7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.

3 The rejection of claims 1–3, 5, and 8 under 35 U.S.C. § 103(a) as
unpatentable over Barinaga (US 2007/0140772 A1, published June 21,
2007) and Heinemann (US 2,962,144, issued Nov. 29, 1960) has been
withdrawn. Ans. 3; Final Act. 15.
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Claims 1–3 and 8 are rejected under 35 U.S.C. § 102(b) as anticipated
by Itoh (US 5,967,279, issued Oct. 19, 1999).4
Claims 1, 3, 4, and 8 are rejected under 35 U.S.C. § 102(b) as
anticipated by Endo (US 5,765,671, issued June 16, 1998).

ANALYSIS
Non-Enablement
According to 35 U.S.C. § 112, first paragraph, the specification must
describe “the manner and process of making and using the invention, . . . in
such full, clear, concise, and exact terms as to enable any person skilled in
the art to which it pertains . . . to make and use the same.” To satisfy this
requirement, the as-filed disclosure must be sufficiently complete to enable a
person of ordinary skill in the art at the time of the invention to make and
use the claimed invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988).
The Examiner rejects claims 3 and 5 as being non-enabled. Final Act.
2. The Specification includes the following description pertaining to the
subject matter of claim 3:
Generally, magnet 90 can be located to provide for balanced
rotation by shaft 74 when the magnet rotates in unison with the
clutch shaft. In this regard, magnet 90 can be positioned to
compensate for an unbalanced condition of clutch shaft 74 and
other components rotatably supported thereby.
See Spec. ¶ 24 (emphasis added), Fig. 1. The Examiner acknowledges this
disclosure, but determines that the Specification fails to describe how the
magnet may be used to balance the shaft. Final Act. 3. According to

4 We note the rejection of claim 5 has been withdrawn. Ans. 3.
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Examiner, “there are endless possibilities as to what shapes and types of
magnets to use, and the possible positions to place the magnet(s) so as to
attempt to provide balance and therefore the amount of experimentation
would be great.” Id. The Examiner submits that the Specification “leaves
the method of balancing open to a wide range of possible options such that it
is unclear how the magnet is supposed to be used to balance the shaft.” Id.
at 4.
Appellant contends that the Examiner fails to take into account the
level of skill of one of ordinary skill in the art. Appeal Br. 7. Appellant
contends that, in view of paragraph 24 of the Specification and Figure 1, one
of ordinary skill in the art would have known of concerns about unbalanced
rotation about a shaft, and of using a weight to compensate for an
unbalanced condition. Id. Appellant contends that a skilled artisan would
understand that magnet 90 can be attached to shaft 74 such that the magnet’s
weight compensates for the imbalance. Id. at 8.
In response, the Examiner also raises “the avenue of the magnetic
field affecting balance” as “a possibility requiring exploration.” Ans. 4–5.
According to the Examiner, “[s]ince it is not even clear what type of
balancing is occurring, it is impossible for someone to make the invention
without undue experimentation.” Id. at 5. Appellant replies that one of
ordinary skill in the art would understand that the rotational balance of the
traveling shaft can be adjusted by changing the position of the biasing
magnet on the free end of the traveling shaft, irrespective of the magnet’s
shape, that is, how to make the claimed subject matter. Reply Br. 2.
Appellant’s contentions are persuasive. The Specification discloses
that the permanent magnet can be located or positioned on the traveling shaft
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to provide for balanced rotation. See Spec. ¶ 24. Appellant has explained
that the weight of the magnet is utilized to compensate for an imbalanced
condition of the shaft. Appellant disputes that the magnetic field would even
be capable of affecting such balance, and the Examiner has provided no
contrary evidence. Reply Br. 2. Claim 3 incorporates from claims 1 and 2
the respective requirements that the permanent magnet is fixedly mounted
on the free end of the traveling shaft, and the traveling shaft supports the
permanent magnet with one of the north and south poles facing outward with
respect to the free end and the other one of these poles confronting the free
end. Appeal Br. 20 (Claims App.). With these requirements, and in view of
Appellant’s disclosure, the Examiner does not explain adequately why one
of ordinary skill in the art would, nonetheless, need to conduct undue
experimentation to make and use the apparatus as recited in claim 3.
Accordingly, we disagree that claim 3 is not adequately enabled.
As to claim 5, Appellant’s Specification describes:
It should be appreciated that the magnetic biasing force can be
achieved so long as one pole of the actuator magnet is relatively
closer to one of the poles of the biasing magnet. That is, if the
north and south poles of the biasing magnetic are not aligned on
the axis of rotation of shaft 74, the actuator magnet can produce
a biasing force so long as the north and south poles of the
biasing magnet project onto the axis of rotation of clutch shaft
74 at some offset distance from one another.
Spec. ¶ 25 (emphasis added). The Examiner determines that the
Specification does not describe the type of “offset” or how one would
determine an offset, and the drawings do not illustrate this offset. Final Act.
4–5.
Appellant contends that, according to paragraph 25 of the
Specification, a biasing force is produced as long as one of the poles (N, S)
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of permanent magnet 90 shown in Figure 1 is closer to actuator magnet 92
than the other pole (of permanent magnet 90). Appeal Br. 9. Appellant
explains that Figure 1 illustrates the offset as essentially the full length of
permanent magnet 90 with the north and south poles aligned along the axis
of rotation. Id. Appellant contends that this disclosure would enable one of
ordinary skill in the art to arrange the permanent magnet to produce the
recited offset. Id.
Appellant’s contentions are persuasive. Paragraph 25 discloses that
the “offset” is the distance between the projections of the north and south
poles along the axis of rotation of shaft 74. The Examiner does not explain
adequately why one of ordinary skill in the art would be unable to determine
the claimed “offset,” or have to conduct undue experimentation to make and
use the claimed apparatus in which the projected north and south pole
positions are “offset” (i.e., separated) from each other along the axis of
rotation, in view of Appellant’s disclosure. Accordingly, we disagree that
claim 5 is not adequately enabled.
Thus, we do not sustain the rejection of claims 3 and 5 under 35
U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.

Indefiniteness
Claims 3, 5, and 7 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 5–6. As to claim 3, the Examiner
determines that the meaning of “said permanent magnet is positioned to
compensate for an unbalanced condition of the traveling shaft to provide for
balanced rotation of the traveling shaft” is unclear. Final Act. 6; Appeal Br.
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20 (Claims App.) (emphasis added). Particularly, the Examiner questions
what “type” of balancing is involved, and what the terms “balanced” and
“unbalanced” mean. Id.; Ans. 7.
Appellant contends that claim 3 is explicitly directed to balanced
rotation of the traveling shaft provided by the permanent magnet being
positioned on the free end of the traveling shaft. Appeal Br. 9. The
Examiner responds that “the claimed invention compensates for an
unbalanced condition of the shaft, which can be any type of unbalancing
including end-to-end, wherein compensation of any type of unbalanced
condition would promote balanced rotation, including balancing an end-to-
end imbalance.” Ans. 7 (emphasis added). The Examiner maintains that
there are numerous possibilities as to how an unbalanced condition of the
shaft could be compensated, making the metes and bounds of the claim
unclear. Id.
Appellant’s contentions are persuasive. Claim 1 recites that the
permanent magnet is fixedly mounted on the free end of the traveling shaft in
the apparatus. Claim 3 recites that the (fixedly mounted) permanent magnet
is positioned on the free end for balanced rotation of the traveling shaft.
That is, in the claimed apparatus, the traveling shaft is rotationally balanced.
Claim 3 does not recite that the traveling shaft is in an unbalanced condition.
Nor is claim 3 directed to a method of positioning the permanent magnet to
compensate for an unbalanced condition. Further, claim 3 does not recite
“end-to-end balancing” of the traveling shaft, which is consistent with
Appellant’s position that the recited balanced rotation does not involve end-
to-end rotation. Appeal Br. 9. Accordingly, we disagree with the Examiner
that claim 3 lacks sufficient clarity.
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As to claim 5, the Examiner determines that the limitation “said
permanent magnet includes a north pole and a south pole that are arranged
such that a projection of the north and south poles onto said axis of rotation
results in an offset along said axis between projected north and south pole
positions” is unclear. Final Act. 6; Appeal Br. 21 (Claims App.) (emphasis
added). The Examiner questions the meaning of the term “offset.” Final
Act. 6.
Appellant contends that “claim 5 requires no more than a resulting
offset between projected positions of the north and south poles of the
permanent magnet onto the axis of rotation.” Appeal Br. 10. The Examiner
responds, “the figures do not appear to illustrate an arrangement where the
poles are not aligned with the axis of the shaft. In all of the figures, the
magnet 90 is centered on the shaft and does not appear to have an offset.”
Ans. 8.
Appellant’s contentions are persuasive. Appellant explains that
Figure 1 shows an offset of essentially the full length of permanent magnet
90. Appeal Br. 9. The Examiner does not explain adequately why magnet
90 shown in Figure 1 cannot have a separation between respective
projections of the north pole (N) and south pole (S) onto the axis of rotation
of traveling shaft 74, that is, an “offset,” or explain adequately why a skilled
artisan would not understand the meaning of “offset” in view of paragraph
25 of the Specification and the drawing figures. Accordingly, the Examiner
has not provided sufficient reasoning as to why the meaning of the term
“offset” recited in claim 5 is unclear in view of the disclosure.
Claim 7 recites “said actuator is configured to rotate the actuator
permanent magnet to selectively present a like pole and an opposite pole to
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the permanent magnet to generate the external magnetic field in one
orientation and the opposite second orientation.” Appeal Br. 21 (Claims
App.) (emphasis added). The Examiner determines there is improper
antecedent basis for “the opposite second orientation,” but concedes there is
proper antecedent basis for “the opposite orientation.” Final Act. 6.
We agree with Appellant that the term “opposite second orientation”
“cannot reasonably be interpreted as anything other than the opposition [sic]
orientation based [on] the claim reciting presenting a like pole and an
opposite pole.” Appeal Br. 10. The Examiner appears to understand that the
claimed “opposite second orientation” means the opposite orientation to the
“one orientation.” We agree with Appellant that the meaning of the
“opposite second orientation” is sufficiently clear despite the lack of strict
antecedent basis in claim 7. See Energizer Holdings, Inc. v. Int’l Trade
Comm’n, 435 F.3d 1366, 1370–71 (Fed. Cir. 2006).
For the above reasons, we do not sustain the rejection of claims 3, 5,
and 7 under 35 U.S.C. § 112, second paragraph, as being indefinite.

Anticipation by Itoh
The Examiner determines that Itoh discloses all limitations of claims
1–3 and 8. Final Act. 7–11. As for claim 1, the Examiner finds that Itoh
discloses, inter alia, a traveling shaft (slider 36, inner ring 9a, slider 36 and
inner ring 9a, inner ring 9, slide ring 99, or slider 127), and a permanent
magnet (magnet 45, 93, or 133) fixedly mounted on the free end of the
traveling shaft for movement with the traveling shaft to move the gear
between the recited first and second lateral positions responsive to exposure
of the permanent magnet to an external magnetic field, as claimed. Final
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Act. 7–8. Regarding the claimed external magnetic field, the Examiner finds
that, in Itoh:
The traveling shaft moves due to exposure to the external
magnetic field created by the magnetic element (end of 9, 34,
88, 96, or 126). The fact that the movement is also affected by
other external forces, i.e., the fluid force and the spring force,
does not change the fact that the shaft moves between the two
positions responsive to exposure to an external magnetic field,
as well as the other forces.
Id. at 8 (emphasis added).
First, Appellant contests the Examiner’s finding that Itoh discloses a
traveling shaft, as claimed. Final Act. 9–10. Appellant contends that slider
36 is supported on a shaft 49, which is evidence that Itoh uses the term
“shaft” consistent with its ordinary meaning by referring to element 49 as a
shaft and not using this term for slider 36. Id.
Itoh discloses that “[t]he slider 36 fits on the cylindrical shaft 49
through a seal ring 51 provided on its inner periphery for sliding contact
with the cylindrical shaft 49.” See Itoh, col. 5, ll. 21–24 (emphasis added),
Fig. 3. We note, “[p]rior art references may be ‘indicative of what all those
skilled in the art generally believe a certain term means . . . [and] can often
help to demonstrate how a disputed term is used by those skilled in the art.’”
In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (quoting Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir. 1996)).
“Accordingly, the PTO’s interpretation of claim terms should not be so
broad that it conflicts with the meaning given to identical terms in other
patents from analogous art.” Id. We agree with Appellant that Itoh’s
description of element 49 as a shaft is indicative of what those of ordinary
skill in the art of vehicle clutch assemblies generally believe this term
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means, and is thus pertinent as to whether a skilled artisan would also
consider slider 36 to be a shaft.
Appellant also contends that none of Itoh’s other elements 9a, 36 and
9a, 9, 99 or 127 identified by the Examiner serve as a traveling shaft.
Appeal Br. 11. Particularly, Appellant contends that element 9 is an inner
ring which does not appear to move; element 9a is an inner ring that mounts
onto a front wheel axle 2, that is, a shaft (citing Itoh, col. 7, ll. 48–55, Fig.
11); and element 99 is a slide ring that likewise mounts onto the front wheel
axle 2 (citing Itoh, col. 10, ll. 36–42) and it is unreasonable to interpret slide
ring 99 as a shaft. Appeal Br. 11.
We note Itoh describes, “[n]umeral 2 indicates a front wheel axle of a
four-wheel drive vehicle. It is actually a shaft of a homokinetic joint 3
coupled to a drive train of the vehicle.” See Itoh, col. 3, ll. 30–33 (emphasis
added). As such, Itoh again uses the term “shaft” in describing element 2,
but does not use this term for element 9a or element 99.
Second, even assuming that Itoh discloses a traveling shaft, Appellant
contests the Examiner’s finding that Itoh discloses an external magnetic
field, as claimed. Appeal Br. 12. Rather, Appellant contends, “[m]agnet 45
merely sticks to another component.” Id.
Itoh describes:
When the slider 36 is moved backward until its gear teeth
42 get out of mesh with the gear teeth 40, 41 of the large-
diameter retainer 18 and the lid 34, the magnet 45 attracts the
inner ring 9 overcoming the force of the spring 44 to keep the
gear teeth 42 out of mesh with the gear teeth. For this purpose,
the magnet 45 is set to have a larger magnetic force than the
spring force of the compressed spring 44.
Itoh, col. 60–67 (emphasis added).
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Itoh also describes:
A magnet 93 is fixed through a case 92 to the inner surface of
the lid portion 86 at its center. When the inner ring 9 is in the
forward position, the magnet 93 is adapted to attract fixing
washer 88 of the diaphragm 87, keeping the external gear 81
separated from the internal gear.
Id. at col. 8, l. 67–col. 9, l. 3 (emphasis added).
Itoh further describes:
When the slider 127 is moved outward until the external
gear 124 gets out of mesh with the internal gear 125, the
magnet 133 is attracted to the lid 126 overcoming the force of
the spring 131 to keep the gears 124 and 125 out of mesh 35
with each other. For this purpose, the magnet 133 is set to have
a larger magnetic force than the spring force of the compressed
spring 131.
Id. at col. 11, ll. 32–38 (emphasis added).
These passages in Itoh do not describe inner ring 9, fixing washer 88,
or lid 126 as a magnet, or imply that these elements generate an external
magnetic field. Rather, these elements are attracted to, or attract, the
associated magnet. The Examiner’s finding that “[t]he traveling shaft moves
due to exposure to the external magnetic field created by the magnetic
element (end of 9, 34, 88, 96, or 126)” is not supported by a preponderance
of the evidence.
The Examiner also finds that “the magnetic field surrounding the
permanent magnet is an external magnetic field.” Ans. 11. We agree that a
permanent magnet produces a magnetic field that extends external to the
magnet. However, claim 1 requires that the permanent magnet, which
produces such a magnetic field, is exposed to an external magnetic field, that
is, another magnetic field that is different from the magnetic field produced
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by the permanent magnet. Furthermore, claim 1 requires that the exposure
of the permanent magnet to the external magnetic field moves the gear
supported by the traveling shaft between the first and second lateral
positions. Even if one of slider 36, inner ring 9a, slider 36 and inner ring 9a,
inner ring 9, slide ring 99, or slider 127 can be considered a traveling shaft,
as claimed, Itoh still does not disclose that magnet 45, 93, or 133 is fixedly
mounted on the traveling shaft for movement with the traveling shaft
responsive to exposure of magnet 45, 93, or 133 to an external magnetic
field, as required by claim 1.
Accordingly, we do not sustain the rejection of claim 1, or dependent
claims 2, 3 and 8, as anticipated by Itoh.

Anticipation by Endo
The Examiner finds that Endo discloses all limitations of claims 1, 3,
4, and 8. Final Act. 12–14. As for claim 1, the Examiner finds that Endo
discloses, inter alia, a gear (projections 32a), a traveling shaft (clutch
movable portion 32 or permanent magnet 34), and a permanent magnet
(yokes 34a) fixedly mounted on the free end of the traveling shaft for
movement with the traveling shaft to move the gear between the recited first
and second lateral positions responsive to exposure of the permanent magnet
to an external magnetic field (“field created via elements [excitation coils]
35”). Final Act. 12.
Appellant contends that Endo’s permanent magnet 34 is part of clutch
movable portion 32 fitted onto motor output shaft 7a, which is evidence that
elements 32 and 34 are not shafts. Appeal Br. 13–14 (citing Endo, col. 10,
ll. 52–59). Appellant also contends that permanent magnet 34 cannot itself
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be a shaft that supports a permanent magnet on its free end. Reply Br. 8.
Appellant further contends that, even assuming clutch movable portion 32 is
a shaft, permanent magnet 34 is not mounted on a free end of clutch
movable portion 32. Id. Rather, Appellant contends, Figure 8 of Endo
shows that teeth 32a are formed on the free end of clutch movable portion
32. Id.
Appellant’s contentions are persuasive. First, we agree with
Appellant that Endo’s description of element 7a as a shaft is indicative of
what those of ordinary skill in the art of vehicle clutch assemblies generally
believe this term means, which is pertinent to whether a skilled artisan
would consider clutch movable portion 32 or permanent magnet 34 to also
be a shaft.
Second, even assuming Endo’s clutch movable portion 32
corresponds to the claimed traveling shaft, as found by the Examiner, it is
not apparent how permanent magnet 34 is “fixedly mounted on the free end
of” clutch movable portion 32, as required by claim 1. Rather, Figure 8 of
Endo shows that projections 32a are formed on the free end of clutch
movable portion 32, and that permanent magnet 34 is housed inside of clutch
movable portion 32. Alternatively, assuming permanent magnet 34
corresponds to the claimed traveling shaft, as also found by the Examiner,
then Endo lacks a permanent magnet “fixedly mounted on the free end of”
permanent magnet 34, as required by claim 1. Also, it is not apparent how
permanent magnet 34 can be considered as “supporting” projections 32a,
which are formed on the free end of clutch movable portion 32, as also
required by claim 1. Accordingly, the Examiner’s finding that Endo
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discloses all limitations of claim 1 is not supported by the preponderance of
the evidence.
Thus, we do not sustain the rejection of claim 1, or dependent claims
3, 4, and 8, as anticipated by Endo.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
3, 5, 7 112, first
paragraph
Enablement 3, 5, 7
3, 5 112,
second
paragraph
Indefiniteness 3, 5
1–3, 8 102(b) Itoh 1–3, 8
1, 3, 4, 8 102(b) Endo 1, 3, 4, 8
Overall
Outcome
1–5, 7, 8

REVERSED