Sven Hartmann et al.

Patent Trials and Appeals Board

Jul 24, 2019

13140948 - (D) (P.T.A.B. Jul. 24, 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.
13/140,948 09/07/2011 Sven Hartmann 212574-1348-US01 1302
34044 7590 07/24/2019
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN AVENUE
MILWAUKEE, WI 53202
EXAMINER
ZALESKAS, JOHN M
ART UNIT PAPER NUMBER
3747
NOTIFICATION DATE DELIVERY MODE
07/24/2019 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SVEN HARTMANN, JUERGEN GROSS, and
STEFAN TUMBACK
____________

Appeal 2017-011375
Application 13/140,9481
Technology Center 3700
____________

Before JAMES P. CALVE, GEORGE R. HOSKINS, and
ERIC C. JESCHKE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner’s
decision, as set forth in the Final Office Action dated November 22, 2016,
rejecting claims 1 and 3–19. Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify Robert Bosch GmbH as the real party in interest.
Appeal Br. 3.
Appeal 2017-011375
Application 13/140,948

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BACKGROUND
The claims recite a method for starting internal combustion engines in
motor vehicles by meshing a starter pinion with a still-rotating ring gear at
the beginning of a stop operation. Spec. ¶¶ 1, 5.2 Claim 1, the sole
independent claim, is reproduced below with emphasis on elements at issue.
1. A starting method for an internal combustion engine (15)
in a motor vehicle, with an automatic start-stop system, a starter
motor (11) of which drives a pinion (13) via a free wheel (23)
to engage with a ring gear (14) of the internal combustion
engine (15) in order to start the internal combustion engine
(15), the method comprising:
at the beginning of a stop phase of the internal
combustion engine (15) that is automatically initiated by the
start-stop system, and while the ring gear (14) is still rotating
after the internal combustion engine (15) is switched off and
before the internal combustion engine (15) comes to a
standstill, moving the pinion (13) axially by means of an
engagement device (12, 20), through an axial pressure spring
(25), to mesh in the ring gear (14) of the internal combustion
engine (15);
engaging the pinion (13) with the still rotating ring gear
(14) by means of the axial pressure spring (25) such that the
pinion (13) is partially meshed with the still rotating ring gear
(14) and carried along with the ring gear (14) only via
correspondingly small contact surfaces (35a, 35b) of the tooth
flanks (13b, 14b) of the pinion (13) and ring gear (14), the
pinion (13) being pushed out of meshed engagement with the
ring gear (14) at least once due to an excessive difference
between the circumferential speed of the ring gear (14) and that
of the pinion (13); and

2 Citations to the Specification refer to the version filed on June 20, 2011,
identified as “SUBSTITUTE SPECIFICATION CLEAN COPY” and as
amended on December 5, 2014.
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Application 13/140,948

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re-engaging the pinion (13) to a greater axial extent in the
ring gear (14) before fully engaging the ring gear (14) when a
reduced difference exists in the circumferential speeds of the
pinion (13) and the ring gear (14).

REJECTIONS
Claims 1 and 13–15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kassner (US 2007/0137602 A1, pub. June 21, 2007) and
Tsukada (DE 10 2005 057 532 A1 and machine translation, pub. July 6,
2006).
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kassner, Tsukada, and Sugai (US 2007/0233357 A1, pub. Oct. 4, 2007).
Claims 4–6 and 9–12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsukada and Kassner.
Claims 7, 8, and 16–19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsukada, Kassner, and Meeder (US 1,889,995, iss. Dec. 6,
1932).
ANALYSIS
Claims 1 and 13–15
As Unpatentable Over Kassner and Tsukada
Regarding claim 1, the Examiner relies on Kassner to teach a starting
method for an internal combustion engine in which a starter motor drives a
pinion gear to engage a ring gear of the internal combustion engine at the
beginning of a stop phase of the engine by moving the pinion to mesh with
the ring gear as claimed. Final Act. 14–16. The Examiner relies on Tsukada
to teach a starter motor with a pinion gear 6 that engages a ring gear 38 of an
internal combustion engine without rotating the starter motor. Id. at 16.
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Application 13/140,948

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The Examiner determines it would have been obvious “to replace the
generic starter of Kassner with the particular starter of Tsukada because the
starter of Tsukada beneficially enables meshing between the pinion and the
ring gear to occur more reliably and with reduced collision, and without
requiring rotation of the starter motor to resolve a tooth-to-tooth state.” Id.
at 17; Ans. 19–20. The Examiner also determines that this modification of
Kassner would be a simple substitution of one known element for another
for predictable results. Final Act. 17. The Examiner finds that combining
the process shown in Figure 6 of Kassner with the starter of Tsukada would
cause the non-rotating teeth of the pinion to reach a partially meshed state
with the still-rotating ring gear followed by a fully meshed state with the
still-rotating ring gear, at times. Id. at 17–18; Ans. 24–29. The Examiner
explains that the method of Kassner as modified by Tsukada’s starter would
not necessarily perform the method of claim 1 every time the automatic start-
stop system of Kassner attempts to engage the pinion of Tsukada’s starter
motor, but the modified Kassner system would be capable of performing the
method of claim 1 when Kassner teaches that the pinion and ring gears meet
on top of each other when attempting to re-engage as the ring gear is rotating
after the internal combustion engine shuts off. Ans. 29–31; Final Act. 18.
Appellants argue that the Examiner’s reasoning is based on hindsight
and inferences of what could happen because Tsukada rotates pinion gear 6
on an end face of non-rotating ring gear 38 to allow gentle engagement and
reduced impact forces so the pinion can be made of a low hardness material.
Appeal Br. 7–8. Appellants argue that Tsukada’s pinion gear 6 is rotated to
a specific position where its teeth align between the teeth of a stationary ring
gear 38, but Kassner engages the starter while the engine rotates. Id. at 8.
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Application 13/140,948

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Appellants argue that Kassner and Tsukada teach separate and
contradictory starter engagement methods that are incongruent with the
claimed method and with each other. Id. at 9, 11. Appellants argue that
Tsukada performs an engagement when the engine is stopped by precisely
positioning the pinion relative to the ring gear, but Kassner teaches a skilled
artisan that comfortable engagement occurs at engine speeds of 50–100 rpm.
Id. at 12. Appellants argue that Kassner performs a single engagement at
low engine speed to ensure minimal stress and to provide driver comfort and
thus leads away from performing unsuccessful engagements where the gears
mesh partially, disengage, and re-engage, as claimed, because this operation
increases the potential for additional noise. Id. at 13. Appellants argue that
Kassner’s low speed meshing range means the ring gear oscillates forward
and backward. Thus, an unsuccessful attempt to engage the pinion gear and
ring gear means any follow-up engagement may not be successful, because
the ring gear may be rotating in the reverse direction instead of forward as
needed for engagement. Reply Br. 5; Appeal Br. 8; see Kassner ¶ 27, Fig. 5.
We determine that the Examiner’s reason for modifying Kassner to
include Tsukada’s starter motor as a simple substitution to mesh the pinion
and ring gears more reliably with reduced collision, and without rotation of
the starter motor to resolve a tooth-to-tooth state, thereby resulting in the
claimed invention, is not supported by a rational underpinning. See Final
Act. 17; Ans. 17–19. We agree that Tsukada’s starter engages a pinion with
a ring gear in a way that reduces collisions and impact forces between the
gears so a low-hardness material can be used for the pinion gear 6. Tsukada
¶ 64. It is not clear, however, that the benefits of Tsukada’s starter would be
realized in Kassner’s system to render the claimed method obvious.
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Application 13/140,948

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Tsukada achieves these benefits without rotating ring gear 38. See
Final Act. 16; Ans. 23 (“Appellant points out that the disclosure of Tsukada
appears to only disclose operation of engaging a pinion of the starter motor
with a ring gear of an internal combustion engine at times when the ring gear
is stopped, and the examiner does not disagree.”), 24 (Tsukada is silent
about engaging the pinion with the ring gear when the ring gear is still
rotating). Thus, Tsukada reduces collisions and impact by meshing pinion
gear 6 with stationary ring gear 38, whereas Kassner engages a pinion gear
with a rotating ring gear at low speeds to reduce noise and jerking.
Tsukada also moves pinion gear 6 toward a stationary ring gear 38
while rotating pinion gear 6 via spline-clutch 22, 24 until the end face of
pinion gear 6 engages the end face of ring gear 38. Tsukada ¶¶ 43, 44, 49,
63. Compression spring 25 holds the end faces in contact with one another
as pinion gear 6 rotates along the end face 38a of ring gear 38 until the teeth
of pinion gear 6 align between those of ring gear 38. Id. ¶ 64, Figs. 7(a)–(c).
Then, pinion gear 6 is meshed completely with ring gear 38 by compression
spring 25. Id. ¶ 65, Fig. 7(d). Contrary to the claimed method, Tsukada thus
rotates pinion gear 6 against ring gear 38 without any partial meshing until
pinion gear 6 can mesh completely with ring gear 38. Id. ¶¶ 64, 65.
The Examiner’s apparent finding that contact between end faces of
Tsukada’s pinion gear 6 and ring gear 38 is “partially meshed” (see Ans. 18,
27–28; Reply Br. 4) is inconsistent with the claim language that requires the
pinion to be carried along by the ring gear via small contact surfaces on the
tooth flanks of those gears. The Specification also describes bevels 35a, 35b
on tooth flanks 13a, 14a that contact one another upon meshing of pinion
gear 13 with still-rotating ring gear 14. Spec. ¶ 24.
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Application 13/140,948

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In contrast to Tsukada, Kassner engages a pinion gear with a ring gear
when the engine is operating in a low speed range of 50 to 100 rpms so the
ring gear is rotating. Kassner ¶¶ 4, 6–8, 11, Figs. 5, 6. This method reduces
noise and jerking stresses by engaging the pinion with a ring gear rotating at
a low speed when the engine is rotating in a forward direction. See id. ¶ 4.
Even if a skilled artisan combined Tsukada’s starter with Kassner’s
system, we are not persuaded that the modified Kassner system would
perform the claimed method as the Examiner determines. Ans. 25–31. The
Examiner finds that Tsukada teaches a starter motor with the same structure
as the claimed starter motor. Id. at 18, 29–30. The Specification describes
the claimed starter motor as causing low-mass pinion 13 to mesh completely
in ring gear 14 “[d]uring slow rotation of the ring gear 14.” Spec. ¶ 28.
Only at greater rotation speeds of ring gear 14 with pinions of larger mass
does pinion 13 not mesh completely with the ring gear. Id. Based on this
disclosure, a skilled artisan would have expected Tsukada’s starter and low
hardness pinion gear to mesh completely with a ring gear rotating at low
engine speeds, as taught by Kassner, without disengaging and re-engaging as
claimed. See Appeal Br. 10–11. Thus, we do not sustain the rejection of
claim 1 or dependent claims 13–15.
Claim 3
As Unpatentable Over Kassner, Tsukada, and Sugai
The Examiner’s reliance on Sugai to teach features of claim 3 does
not overcome the deficiencies of Kassner and Tsukada as to claim 1 from
which claim 3 depends. See Final Act. 20. Thus, we do not sustain the
rejection of claim 3.

Appeal 2017-011375
Application 13/140,948

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Claims 4–6 and 9–12
As Unpatentable Over Tsukada and Kassner
The Examiner’s findings that Tsukada and Kassner teach or suggest
the features recited in claims 4–6 and 9–12 does not cure the deficiency of
these references as to claim 1 from which these claims depend. Id. at 20–24.
Thus, we do not sustain the rejection of claims 4–6 and 9–12.
Claims 7, 8, and 16–19
As Unpatentable Over Tsukada, Kassner, and Meeder
The Examiner’s reliance on Meeder and Tsukada to teach features
recited in claims 7, 8, and 16–19 does not cure the deficiency of Tsukada
and Kassner as to claim 1 from which these claims all depend. Thus, we do
not sustain the rejection of claims 7, 8, and 16–19.
DECISION
We reverse the rejections of claims 1 and 3–19.

REVERSED