Steffen Hummel

Patent Trials and Appeals Board

Nov 19, 2019

14778853 - (D) (P.T.A.B. Nov. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/778,853 09/21/2015
20151 7590 11/22/2019
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
35 West 35th Street
SUITE 900
NEW YORK, NY 10001
FIRST NAMED INVENTOR
STEFFEN HUMMEL
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.
HUMMEL 1084
EXAMINER
BROWN, JOSEPH HENRY
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
11/22/2019 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):
INFO@FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFFEN HUMMEL
Appeal2018-003537
Application 14/778,853
Technology Center 3600
BEFORE DANIEL S. SONG, ANNETTE R. REIMERS, and JILL D. HILL,
Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 11, 13-15, 17, 18, 20, and 21, claims 12
and 16 having been withdrawn. App. Br. 2. An oral hearing was conducted
via video with the Appellant's legal representative on November 7, 2019, a
transcript of which will be entered into the electronic record in due course.
We have jurisdiction under 35 U.S.C. § 6(b).
1 We use the word Appellant to refer to "applicant" as defined in 37 C.F.R.
§ l.42(a). Appellant identifies the real party in interest as Audi AG. Appeal
Br. 2.
Appeal2018-003537
Application 14/778,853
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to an actuator for a gearbox of a motor vehicle
having selector shafts that are displaceable in a first direction (i.e, an axial
direction) to selection positions, and in a second direction (i.e., a
circumferential or rotational direction) to shifting positions. Title; Spec. ,r,r
1, 13. Claim 11, reproduced below, is illustrative of the claimed subject
matter:
11. An actuator device for a transmission of a motor vehicle,
compnsmg:
a plurality of selector shafts displaceable into a first
direction between multiple selection positions and in a second
direction between multiple shifting positions, each said selector
shafts having a connecting element, which in at least one of the
selection positions is operatively connected with at least one
selector rail of the transmission for transmitting a movement of
the selector shaft in the second direction to the selector rail,
wherein the selector shafts are mounted relative to each other
so as to be movable relative to each other in the first direction
and to be fixed relative to each other in the second direction;
a plurality of first setting devices, wherein the selection
positions of the selector shafts are settable independent of each
other by the first setting devices; and
a second setting device, wherein the selector shafts are
displaceable together between the shifting positions by the
second setting device, so that all selector shafts are always
present in the same shifting position, and wherein the selector
shafts are operatively connected with the second setting device
via an intermediate shaft.
App. Br. 11 (Claims App'x, emphasis added).
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Application 14/778,853
REJECTION
The Examiner rejects claims 11, 13-15, 17, 18, 20, and 21 under 35
U.S.C. § 103 as being unpatentable over Brdjanin2 (DE 10205689, pub. July
10, 2003) in view of Ogami (US 7,240,578, iss. July 10, 2007).
OPINION
We initially note that only those arguments actually made by
Appellant have been considered in this decision. Arguments not made are
deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv); see also In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011); Ex Parte Frye, 94 USPQ2d 1072,
1075-76 (BPAI 2010, precedential). Moreover, the Appellant argues all of
the rejected claims together as a group. Therefore, we select independent
claim 11 as representative, the remaining claims standing or falling with
claim 11.
In rejecting independent claim 11, the Examiner finds that the
embodiment of Brdjanin shown in Figure 6 discloses an actuator device for a
transmission of a motor vehicle substantially as claimed. Final Act. 2. The
Examiner concedes that Brdjanin:
fails to disclose the selector shafts to be fixed relative to each
other in the second direction and a second setting device,
wherein the selector shafts are displaceable together between
the shifting positions by the second setting device, so that all
selector shafts are always present in the same shifting position,
and wherein the selector shafts are operatively connected with
the second setting device via an intermediate shaft.
Final Act. 2-3 (formatting omitted).
To remedy the deficiencies of Brdjanin, the Examiner finds that
Ogami:
2 A machine translation is of record.
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Application 14/778,853
teaches the selector shafts (18A, 18B) to be fixed relative to
each other in the second direction and a second setting device
(controller and pinion gear not shown connected to gear 13),
wherein the selector shafts are displaceable together between
the shifting positions by the second setting device (see Fig. 2),
so that all selector shafts (18A, 18B) are always present in the
same shifting position, and wherein the selector shafts are
operatively connected with the second setting device via an
intermediate shaft (12).
Final Act. 3 (formatting omitted).
Based on the above findings of Ogami, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art to have modified
Brdjanin:
with selector shafts fixed relative to each other in a second
direction, a second setting device, and the selector shafts
operatively connected with the second setting device, as taught
by Ogami, to operate a selected fork head in a shift direction
which is engaged with a gear at one side, engaged with a gear at
the other side, or a neutral position in which neither gear is
engaged with the selected fork head.
Final Act. 3 ( citing Ogami, col. 10, 11. 10-40).
There is no dispute between the Appellant and the Examiner as to
what Brdjanin and Ogami disclose, but the Appellant disputes the
Examiner's conclusion of obviousness. In that regard, the Appellant points
out that Brdjanin discloses a first embodiment (Figure 2) wherein "the two
selector shafts '14' and '16' [are] always in the same selection position," but
"can be moved independently between the shifting positions," such
independent movement in the rotational directions between the shifting
positions being contrary to the claimed invention. App. Br. 7; see also App.
Br. 6. The Appellant also points out that the second embodiment of
Brdjanin shown in Figure 6 allows for "[t]he independent movement of the
selector shafts '14' and '16' both between selection positions and shifting
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Application 14/778,853
positions," such independent rotational movement also being contrary to the
claimed invention. App. Br. 7.
The Examiner explains that the rejection relies on the second
embodiment of Brdjanin shown in Figure 6, in which the first and second
selector shafts 14', 16' "are operated in two directions (axially and
rotationally; WI, W2 and SI, S2) independently," in combination with
Ogami in which "two shift and select members 18A, 18B, connected by a
shift and select shaft 12, [] are operated in the axial direction dependently,
and in the rotational direction dependently." Ans. 5-6. Accordingly, the
Examiner explains that the rejection "combines the teaching of Ogami,
specifically the operation of 18A and 18B in the rotational direction
together, with the teaching of Brdjanin, specifically the operation of selector
shafts 14', 16' in the axial direction are independent, to reject Appellant's
claim 11 and claim 21 invention as being obvious." Ans. 6; see also Ans. 9.
As to the combination of Brdjanin and Ogami, the Appellant argues
that in Ogami, movement of the selector shafts only together "stands in
complete contrast to that shown in Brdjanin, where the selector shafts can be
moved independently from each other." App. Br. 8. The Appellant asserts
that the rejection:
selects a single arbitrary feature from Ogami and applies it to
the actuator device according to Brdjanin, namely the feature
that the selector shafts are always present in the same shifting
position. However, this feature as such, is not disclosed by
Ogami ... the selector shafts according to Ogami [being]
coupled to each other in both directions, namely in axial as well
as in circumferential direction.
App. Br. 8.
The Appellant further argues that when Ogami is applied to Brdjanin,
"this would simply result in an actuator device in which the selector shafts
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Application 14/778,853
are moved together both in selection direction and shifting direction," and
"would lack the feature that the selection positions can be selected
independently from each other." App. Br. 8-9.
We are not persuaded by the Appellant's arguments. We agree with
the Examiner that a one of ordinary skill in the art would have understood
Ogami as providing teachings as to movement of the selector shafts in the
axial direction as well as the rotational direction. Ans. 9 ("two separate
teachings of Ogami ... include[] (a) the selector shafts are coupled to each
other in the rotational direction, and (b) the selector shafts are coupled to
each other in the axial direction."). A person of ordinary skill would have
known that the axial and rotational movements of the selector shafts are
necessary for operation of dual clutch transmissions of the type disclosed in
Ogami, and would have understood that Ogami provides a solution for such
movements by having the two selector shafts move axially and rotationally
together. Such understanding of one of ordinary skill is also evidenced by
Brdjanin that provides a solution to the required axial and rotational
movement of the selector shafts in two different embodiments, one with
common axial movement but independent rotational movement, and another
embodiment with independent axial and rotational movements.
Accordingly, we agree with the Examiner that a person of ordinary skill in
the art would have understood "the teaching of Ogami, [that] the selector
shafts are coupled to each other in the rotational direction, and the teaching
of Brdjanin, the operation of selector shafts 14', 16' in the axial direction are
independent." Ans. 10.
Based on the above, the Examiner is correct that there are only four
possible solutions (i.e., four possible combinations) for addressing the
required axial and rotational movements of the selector shafts, and three of
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the four solutions are disclosed in the prior art Brdjanin (Figs. 2 and 6) and
Ogami (Fig. 1). Ans. 7. Specifically, the four possible combinations are:
(i) the two select shafts shift axially together and rotate together
[as in Ogami]; (ii) the two select shaft[s] shift axially
independently and rotate independently [as in Brdjanin, Fig. 6];
(iii) the two select shafts shift axially together and rotate
independently [as in Brdjanin, Fig. 2]; and (iv) the two select
shaft[ s] shift axially independently and rotate together.
Ans. 7.
In the above regard, the outer bounds of the possible combinations in
which the movements are only together in both directions or move entirely
independently in both directions, are already disclosed the prior art of record
( combinations "(i)" and "(ii)"), and the prior art also discloses one other
combination within these bounds ( combination "(iii)"). Accordingly, as the
Examiner explains, the claimed invention is directed to "[t]he last solution,
(iv) [in which] the two select shafts shift axially independently and rotate
together" but "choosing from a finite number of identified, predictable
solutions, with reasonable expectation of success" would have been obvious
to a person of ordinary skill in the art. Ans. 7; see KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398,421 (2007)("[w]hen there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense. In that instance the fact that a combination was
obvious to try might show that it was obvious under§ 103.").
The Examiner also provides a reason with rational underpinnings as to
why a person of ordinary skill would have pursued such an option relative to
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the second embodiment of Brdjanin, explaining that a person of ordinary
skill in the art would have recognized that using a triple electric motor would
have provided certain advantages including reduction in the number of parts,
space requirements, weight, and cost. Ans. 6. KSR, 550 U.S. at 418, (citing
In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006) ("there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness")). Therefore, we agree with the Examiner that
"[g]iven the prior art of Brdjanin and Ogami, the last solution, (iv) the two
select shafts shift axially independently and rotate together, would have been
obvious to one having ordinary skill in the art to pursue." Ans. 7.
The Appellant asserts that "[t]he fourth potential solution was not at
hand for someone of ordinary skill in the art at the time of the invention"
(Reply Br. 2), but does not provide any basis for this assertion. In that
regard, we observe that although claim 11 recites various components
common to actuator devices for dual clutch transmissions, the claim is
broadly directed to the general relationship of the selector shafts in how they
move relative to one another. As discussed above, the art already discloses
three of the four potential solutions, and we agree with the Examiner that a
person of ordinary skill would have found the last combination of axial and
rotational movements of the selector shafts obvious.
The Appellant also argues that "Brdjanin already teaches two possible
solutions [but] does not envision any other solutions," and this "implies that
the possible fourth solution is not considered or perhaps [is] inferior to both
solutions taught by Brdjanin, and would thus not be considered as feasible
by someone skilled in the art at the time of the invention." Reply Br. 3.
However, the fact that Brdjanin does not anticipate the claim is not
dispositive as the rejection is that of obviousness based also on Ogami.
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Application 14/778,853
Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller,
642 F.2d 413,425 (CCPA 1981). In addition, Brdjanin's silence as to other
solutions does not imply inferiority or infeasibility, and is not dispositive
because such alternative solutions may not have occurred to Mr. Brdjanin.
Obviousness determination is based on the skill and knowledge of one of
ordinary skill in the art, who is aware of all of the teachings in the art,
including the teachings of Ogami. See Standard Oil Co. v. American
Cyanamid Co., 774 F.2d 448,454 (Fed. Cir. 1985) ("The issue of
obviousness is determined entirely with reference to a hypothetical 'person
having ordinary skill in the art.' It is only that hypothetical person who is
presumed to be aware of all the pertinent prior art."); see also Custom
Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962 (Fed.
Cir. 1986) ("The person of ordinary skill is a hypothetical person who is
presumed to be aware of all the pertinent prior art."). Moreover, "[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton."
KSR, 550 U.S. at 421.
As to the Appellant's assertion that when Ogami is applied to
Brdjanin, the result would be "an actuator device in which the selector shafts
are moved together both in selection direction and shifting direction" (App.
Br. 8-9), we agree with the Examiner that the Appellant's argument is based
on bodily incorporation. Ans. 9. See In re Keller, 642 F.2d 413, 425
(CCP A 1981) ("The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
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combined teachings of the references would have suggested to those of
ordinary skill in the art"); In re Nievelt, 482 F.2d 965, 968 (CCP A 1973)
("Combining the teachings of references does not involve an ability to
combine their specific structures.").
Related thereto, the Appellant further argues that:
the mechanical structures of the apparatus according to
Brdjanin and Ogami are very different from each other.
Modifying one apparatus to reflect the fourth potential solution
is no trivial matter and involves redesigning the apparatus,
which would not be obvious to one of ordinary skill in the art at
the time of the invention. Modifying Brdjanin using the Ogami
disclosure would change the principle of operation of Brdjanin
and thus would require reconstruction and redesign of the
switching device of Brdjanin.
Reply Br. 3.
However, these arguments are also unpersuasive in that they are
principally based on bodily incorporation. See Ans. 9; see also Ans. 10.
Moreover, we again refer to the above discussion that claim 11 is broadly
directed to the general relationship of the selector shafts in how they move
relative to one another, and that three of the four possible combinations of
these movements are already explicitly disclosed in the art. Although the
suggested combination would require modification to Brdjanin structurally
and in terms of programming for the control strategy associated with moving
the selector shafts during operation of Brdjanin's shifting device, such
modifications do not appear to be beyond the skill of those of ordinary skill
based on the level of skill evidenced by Brdjanin and Ogami references
themselves. Finally, although the Appellant asserts that the suggested
modification would change the principle of operation, the Appellant
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provides no evidence, analysis or reasoning in support. Such unsupported
assertions are not persuasive.
In view of the above, the Examiner's rejection of independent claim
11 is affirmed. In addition, as noted above, the Appellant argued all of the
rejected claims together, and thus, the remaining claims fall with claim 11.
CONCLUSION
The Examiner's rejection is Affirmed.
In summary:
11, 13-15,
17, 18, 20,
21
103
DECISION SUMMARY
Brdjanin, Ogami 11, 13-15,
17, 18, 20,
21
TIME PERIOD FOR RESPONSE
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)(l )(iv).
AFFIRMED
11