Per Mattsson et al.

Patent Trials and Appeals Board

Sep 13, 2019

14325442 - (D) (P.T.A.B. Sep. 13, 2019)

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.
14/325,442 07/08/2014 Per MATTSSON 000009-582.1 8266
51707 7590 09/13/2019
WRB-IP LLP
801 N. Pitt Street
Suite 123
ALEXANDRIA, VA 22314
EXAMINER
HANSEN, COLBY M
ART UNIT PAPER NUMBER
3655
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
HARRY@WRB-IP.COM
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PER MATTSSON, ANDREAS NORDSTRAND,
and RIKARD MÄKI
____________

Appeal 2017-009615
Application 14/325,4421
Technology Center 3600
____________

Before STEFAN STAICOVICI, MEREDITH C. PETRAVICK, and
LYNNE H. BROWNE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Mar. 11, 2016, hereinafter “Final
Act.”) rejecting claims 20–22, 25–29, and 32.2
Appellant’s representative presented oral argument on August 20,
2019. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).

1 Volvo Construction Equipment AB is identified as the Applicant and the
real party in interest in Appellant’s Appeal Brief (filed Dec. 19, 2016,
hereinafter “Appeal Br.”). Appeal Br. 1.
2 Claims 1–19, 23, 24, 30, 31, and 33–38 were canceled. Appeal Br. 1.
Appeal 2017-009615
Application 14/325,442
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SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention is directed to a working machine having a prime
mover, which can be an internal combustion engine, arranged in parallel with
an electric machine with respect to a transmission line. Spec. paras. 1, 9.3
Claim 20, the sole independent claim, is representative of the claimed
invention and reads as follows:
20. A working machine comprising
a prime mover for supplying torque to driving wheels of
the working machine, and
a transmission line arranged between the prime mover and
the driving wheels for transmitting torque from the prime mover
to the driving wheels, the transmission line comprising
a gearbox arranged between the prime mover and the wheels,
at least one hydraulic machine in a hydraulic system for
moving an implement arranged on the working machine and/or
steering the working machine, and
an electric machine for driving or braking the driving
wheels and/or for driving or braking the at least one hydraulic
machine, the electric machine being arranged in parallel with
the prime mover with respect to the transmission line such that
torque can be provided to the wheels by either one or both of the
prime mover and the electric machine, and being mechanically
connected to the transmission line between the prime mover and
the gearbox,
wherein the transmission line comprises a transmission
component for engagement and disengagement of the prime
mover relative to the driving wheels, the transmission

3 We refer to the Substitute Specification, filed July 8, 2014, and
entered by the Examiner in the Advisory Action, dated September 29,
2015.
Appeal 2017-009615
Application 14/325,442
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component being arranged between the prime mover and the
electric machine, the hydraulic machine is mechanically
connected to the transmission line between the prime mover and
the gearbox, and the gearbox is a continuously variable
transmission having a variator unit, and the gearbox has an
operation mode where the rotation speed of an output shaft of
the gearbox is zero or close to zero independently of the
rotation speed of an input shaft of the gearbox at the same time
as torque can be transmitted from the input shaft to the output
shaft.

REJECTIONS
I. The Examiner rejects claims 20–22 under 35 U.S.C. § 103(a) as
being unpatentable over Friesen et al. (DE 10 2007 019 156 A1,
published Oct. 23, 2008, hereinafter “Friesen ‘156”)4 and Zhu
(US 2009/0055061 A1, published Feb. 26, 2009).
II. The Examiner rejects claim 32 under 35 U.S.C. § 103(a) as
being unpatentable over Friesen ‘156, Zhu, and Ericson et al.
(US 2008/0264051 A1, published Oct. 30, 2008).
III. The Examiner rejects claims 20–22, 25–29, and 32 under 35
U.S.C. § 103(a) as being unpatentable over Friesen ‘156 and
Roethler et al. (US 2006/0148609 A1, published July 6, 2006).

4 Like the Examiner, we derive our understanding of this reference from the
English language publication US 2010/0210409 A1, published Aug. 19,
2010 (hereinafter “Friesen ‘409”). See Examiner’s Answer (dated June 13,
2017, hereinafter “Ans.”) 2. All references to Friesen ‘156 are to portions of
Friesen ‘409.
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ANALYSIS
Rejections I and III
Independent claim 20 requires, inter alia, “a transmission component
for engagement and disengagement of the prime mover relative to the driving
wheels, the transmission component being arranged between the prime mover
and the electric machine.” Appeal Br. 10 (Claims App.).
The Examiner finds that Friesen ‘156 discloses a working machine
including a prime mover 1 (internal combustion engine “ICE”)5 for supplying
torque to wheels 11 and an electric machine 2 (electric motor) arranged in
parallel with prime mover 1 with respect to a transmission line located
between prime mover 1 and wheels 11. Final Act. 4 (citing Friesen ‘409,
paras. 9, 28). However, the Examiner finds that Friesen ‘156 does not
explicitly disclose “a transmission component for engagement and
disengagement of the prime mover between said prime mover” and the
electric machine. Id. at 5.
Hence, in a first instance, the Examiner finds that because Friesen ‘156
discloses a parallel arrangement between internal combustion engine 1 and
electrical machine 2, Friesen ‘156 “may inherently include a clutch between”
them. Id. at 10 (emphasis added). In the alternative, the Examiner finds that
even if Friesen ‘156 does not inherently disclose a clutch, Zhu discloses
“transmission component 101a” and Roethler discloses “transmission
component 34” between a prime mover and an electric machine for
engagement and disengagement of the prime mover. Id. at 5 (citing Zhu, Fig.
11), 8 (citing Roethler, Fig. 5). As such, the Examiner concludes that it
would have been obvious to a person of ordinary skill in the art to provide the

5 Parenthetical nomenclature refers to Friesen ‘409.
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transmission component of either Zhu or Roethler to the working machine of
Friesen ‘156 “in order to have greater control and increased torque transfer to
the wheels of a working machine while accommodating for permissible space
of the housing” or “to control motion of a vehicle with increase torque
capabilities and decreased fuel consumption.” Id.
Appellant first argues that it is not inherent to provide a clutch between
internal combustion engine 1 and electric motor 2 of Friesen ‘156 as a clutch
is not a necessary structure. Appeal Br. 6. According to Appellant, the
disclosure in Friesen ‘156 of electric motor 2 being “coupled directly” to the
crankshaft of internal combustion engine 1 “would preclude an intervening
structure such as a clutch.” Reply Brief (dated June 29, 2017, hereinafter
“Reply Br.”) 4.
We agree with Appellant’s position because “[t]o establish inherency,
the extrinsic evidence ‘must make clear that the missing descriptive matter is
necessarily present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.’ ‘Inherency, however, may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.’” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). In this
case, the Examiner’s position that Friesen ‘156 “may inherently include a
clutch between the ICE [1] and [the] electric motor [2]” because they are
arranged in parallel is not a sufficient showing that a clutch is necessarily
present between them. See Final Act. 10. Furthermore, as Friesen ‘156
explicitly discloses that electric motor 2 is “coupled directly” to the
crankshaft of internal combustion engine 1, a person of ordinary skill in the
art would not recognize that a clutch is necessarily present between internal
combustion engine 1 and electrical motor 2. See Friesen ‘409, para. 37. In
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other words, even though a parallel arrangement of internal combustion
engine 1 and electric motor 2 in Friesen ‘156 may include a clutch, as the
Examiner finds, this does not mean that a clutch is necessarily positioned
between them when electric motor 2 is “coupled directly” to the crankshaft of
internal combustion engine 1. Therefore, the Examiner’s finding that Friesen
‘156 inherently includes a clutch between internal combustion engine 1 and
electric motor 2 is mere speculation based on an unfounded assumption that a
parallel arrangement of internal combustion engine 1 electric motor 2
necessarily includes a clutch between them. Accordingly, we agree with
Appellant that the Examiner has not adequately explained why a clutch is
necessarily present between internal combustion engine 1 and electrical
motor 2 of Friesen ‘156. Reply Br. 3.
We further agree with Appellant that because Friesen ‘156 discloses
internal combustion engine 1 and electric motor 2 as “coupled directly,” it
would not have been obvious for a person of ordinary skill in the art to
modify Friesen ‘156, according to Zhu or Roethler, “to provide a
transmission component between a prime mover and an electric machine.”
Appeal Br. 7. Appellant notes that providing a clutch between internal
combustion engine 1 and electric motor 2 of Friesen ‘156 “would interfere
with the ability of the electric motor [2] to immediately start the internal
combustion engine [1] upon actuation of an operating component by an
operator.” Id. According to Appellant, the objective of Friesen ‘156 is to
have no delay when electric motor 2 starts internal combustion engine 1,
whereas providing a clutch, as taught by Zhu or Roethler, between internal
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combustion engine 1 and electric motor 2 “would add a delay as the clutch
engages.” Reply Br. 4 (citing Friesen ‘409, paras. 11–13).6
We understand Appellant’s arguments to aver that upon modifying
Friesen ‘156 to include the clutch of either Zhu or Roethler between internal
combustion engine 1 and electric motor 2, Friesen ‘156 would no longer
operate as intended in the automatic start/stop operating mode as the
additional clutch engaging time would render the automatic start/stop
operating mode inoperable.
The Examiner’s response does not provide findings or reasoning
rebutting Appellant’s arguments. See Ans. 8–10. Therefore, as the Examiner
has not adequately explained how Friesen ‘156 would still operate in the
automatic start/stop operating mode when the clutch of either Zhu or
Rotheler is added between internal combustion engine 1 and electric motor 2,
we essentially are left with an unrebutted (and as far as we can see, correct)
statement. As such, on the record before us, weighing the Examiner’s reasons
for combining the teachings of the references against Appellant’s arguments
supported with evidence from Friesen ‘156 and unrebutted by the Examiner, we
do not agree with the Examiner’s conclusion of obviousness.
Accordingly, for the foregoing reasons, we do not sustain the rejections
under 35 U.S.C. § 103(a) of claims 20–22 as unpatentable over Friesen ‘156
and Zhu and of claims 20–22, 25–29, and 32 as unpatentable over Friesen
‘156 and Roethler. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If

6 In paragraphs 11–13, Friesen ‘409 discloses using electric motor 2 as a
starter motor to achieve an automatic start/stop function where internal
combustion engine 1 is “started within a very short time (<200 ms)” and “is
only operated when it is actually needed” such that an “operator notices
practically no delay” when re-starting internal combustion engine 1 after
being switched off.
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an independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious).

Rejection II
The Examiner’s use of Ericson to disclose a wheel loader does not
remedy the deficiency of the Friesen ‘156 and Zhu combination discussed
supra. See Final Act. 6–7. Accordingly, for the same reasons discussed
above, we also do not sustain the rejection of claim 32 as unpatentable over
the combined teachings of Friesen ‘156, Zhu, and Ericson.

SUMMARY
The Examiner’s decision to reject claims 20–22, 25–29, and 32 under
35 U.S.C. § 103(a) is reversed.

REVERSED