Timan, Peter Edward. et al.

Patent Trials and Appeals Board

Oct 24, 2019

14420144 - (D) (P.T.A.B. Oct. 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.
14/420,144 04/13/2015 Peter Edward Timan 2258-152177 6551
28289 7590 10/24/2019
THE WEBB LAW FIRM, P.C.
ONE GATEWAY CENTER
420 FT. DUQUESNE BLVD, SUITE 1200
PITTSBURGH, PA 15222
EXAMINER
KUHFUSS, ZACHARY L
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
patents@webblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PETER EDWARD TIMAN, HANS PETER TROTSCH,
MARTIN BAZANT, DANIEL MARTINEZ-ANON-PEREZ, and
ALEXANDER BAUER

____________

Appeal 2019-001917
Application 14/420,144
Technology Center 3600
____________

Before MICHAEL L. HOELTER, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–4, 6, 7, 9, 10, 12–14, and 16–37. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Bombardier Transportation GmbH as
the real party in interest. Appeal Br. 2.
Appeal 2019-001917
Application 14/420,144
2
THE INVENTION
Appellant’s invention relates to drive units for monorail trains.
Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A monorail vehicle comprising:
a chassis supporting a vehicle body that includes spaced sides
and a passenger floor, wherein a length direction, a height
direction and a width (or side-to-side) direction of the vehicle
body respectively correspond to X, Y and Z axes of a Cartesian
coordinate system, the X and Y axes defining a vertical imaginary
plane bisecting the vehicle body in two halves, and the X and Z
axes defining a horizontal imaginary plane extension of the
passenger floor;
two bogies, each one of the two bogies supporting the chassis
at a different end of the chassis, each one of the two bogies
comprising:
a drive unit comprising a housing, an electric motor received
within the housing, and a planetary gear assembly coupled to a
rotor of the electric motor, the planetary gear assembly comprising
at least 3 planet gears coupled between a sun gear and a ring gear
surrounding the planet gears, the planet gears rotatable within the
ring gear in response to rotation of the sun gear by the electric
motor, the housing being coupled to its respective bogie; and
at least one drive wheel coupled to the rotor via the planetary
gear assembly, the at least one drive wheel being laterally centered
on the vertical imaginary plane, the at least one drive wheel
having a rotation axis substantially coaxial with the rotor axis,
wherein the electric motor resides within the drive wheel and in
one of the halves of the vehicle body, and wherein the at least one
drive wheel, the electric motor and the gear assembly reside on
both sides of the horizontal imaginary plane extension of the
passenger floor; and
a shell covering the at least one drive wheel and the drive unit,
the shell being integral to one side of the vehicle body and
defining a space between the other side of the vehicle body and a
portion of the drive wheel and drive unit residing above the
horizontal imaginary plane extension of the passenger floor.
Appeal 2019-001917
Application 14/420,144
3
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Name Reference Date
Holmquist

US 3,216,371

Nov. 9, 1965
Sherman

US 3,770,074

Nov. 6, 1973
Schoon

US 2011/0130238 A1

June 2, 2011
Deller DE 1123692 Feb. 15, 1962
The following rejections are before us for review:
1. Claims 1, 6, 9, 10, 13, 14, 16–27, and 29–35 are rejected under 35
U.S.C. § 103 as being unpatentable over Deller and Sherman.
2. Claims 2, 3, 4, 7, 12, and 28 are rejected under 35 U.S.C. § 103 as
being unpatentable over Deller, Sherman, and Schoon.
3. Claims 36 and 37 are rejected under 35 U.S.C. § 103 as being
unpatentable over Deller, Sherman, and Holmquist.
OPINION
Unpatentability of Claims 1, 6, 9, 10, 13, 14, 16–27, and 29–35
over Deller and Sherman
Claims 1, 6, 9, and 25
Appellant argues claim 1, but raises no separate arguments for the
patentability of claims 6, 9, and 25. Appeal Br. 6–16. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Deller discloses the invention substantially as
claimed except for a coaxial electric motor and planetary gear assembly, for
which the Examiner relies on Sherman. Final Action 3–4. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
Appeal 2019-001917
Application 14/420,144
4
art at the time of the invention to use Sherman’s drive unit, including the
electric motor and planetary gear assembly, in Deller’s monorail vehicle to
achieve the claimed invention. Id. at 4. According to the Examiner, a
person of ordinary skill in the art would have done this to provide an
efficient, self-contained electric drive system. Id. The Examiner further
finds that Deller does not specifically teach two bogies, but that it would
have been obvious to place one of Deller’s bogies at each end of the chassis
to properly support the vehicle and as matter of mere duplication of essential
working parts of a device involving only routine skill in the art. Id. citing St.
Regis Paper Co. v. Bemis Co., Inc., 549 F.2d 833 (7th Cir. 1977).
Appellant first raises a series of arguments concerning whether Deller
implicitly discloses a motor. Appeal Br. 6–10. In a related argument,
Appellant interprets the Examiner’s proposed combination as comprised of
two motors, a first motor from Deller and a second motor from Sherman. Id.
at 13. In such regard, Appellant asks: “are the two motors run together or
separately?” Id. There is no need for us to discuss each of these arguments
in detail. The Examiner’s rejection relies on Sherman as supplying an
electric motor that is in coaxial arrangement with a planetary gear assembly.
Final Action 4. At no time does the Examiner intimate that the proposed
combination of Deller and Sherman includes two motors as imagined by
Appellant. Ans. 4. The Examiner makes it abundantly clear that
“Sherman’s drive unit is replacing Deller’s drive unit.” Id. (emphasis
added). It is well settled that the obviousness inquiry does not ask “whether
the references could be physically combined but whether the claimed
inventions are rendered obvious by the teachings of the prior art as a whole.”
In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also In re
Appeal 2019-001917
Application 14/420,144
5
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (explaining that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements). Thus, we find
Appellant’s arguments concerning Deller’s implicit disclosure of a motor
and the prospect that the Examiner’s rejection would result in a vehicle with
two motors unpersuasive.2
Appellant next questions whether there is sufficient room to mount
Sherman’s drive unit on the same side of Deller’s drive wheel. Appeal
Br. 11.
Given this lack of space disclosed or hinted at in the prior
art, it cannot be obvious to include Sherman’s electric motor
and gear assembly on the same side of Deller’s drive wheel 1 as
the transmission 4 and brake 5 . . . without substantial
reconstruction and redesign. Indeed, given this lack of space,
the addition of Sherman’s electric motor between Deller’s
wheels 1 and the left side wall proximate brake 5 in Figs. 1
and 2 of Deller may not be possible at all because of
insufficient space or, at least, would further reduce this space
and an undesirably cramped arrangement of elements.
Id.
In response, the Examiner maintains that, although some redesign
would be required to replace Deller’s transmission and brake with
Sherman’s drive unit, such would have been within the capabilities of one of
ordinary skill in the art. Ans. 5.
We find the Examiner’s position on the “insufficient space” issue
more persuasive. Appellant’s insufficient space argument is speculative at

2 In particular, Appellant’s argument based on Karsten Mfg. Corp. v.
Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed. Cir. 2001) is inapposite.
Contrary to Appellant’s position, the teachings of Deller and Sherman are
not in conflict. Appeal Br. 10.
Appeal 2019-001917
Application 14/420,144
6
best and is not supported by evidence or sound technical reasoning. There is
no underlying factual basis to support a contention that Sherman’s drive
unit, appropriately modified using no more than ordinary skill, would not fit
within the volume represented by almost one-half of the width of a monorail
vehicle. Appellant’s entire case on the insufficient space issue amounts to
unsworn attorney argument. However, unsworn attorney argument is not
evidence. See Estee Lauder, Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997) (explaining that attorney argument cannot take the place of
evidence in the record).
Next, Appellant argues that Deller fails to disclose a floor that defines
a horizontal plane as claimed. Appeal Br. 10–12. According to Appellant:
“absent Deller expressly disclosing what is a floor, the Examiner’s allegation
that that one or both of these surfaces in Deller is/are a passenger floor
amounts to speculation and conjecture.” Id. at 12.
In response, the Examiner interprets the lowermost surface of Deller’s
vehicle as a passenger floor. Ans. 5. According to the Examiner, “the
location of this surface relative to the passenger vehicle body suggests that
the surface is a passenger floor.” Id. at 5–6. The Examiner’s position is
augmented by an annotated version of Deller, Figure 1, marked with an
annotation of what the Examiner finds to be a passenger floor. Id. at 6. We
have reviewed Figure 1 of Deller and determine that the Examiner’s finding
is supported by a preponderance of the evidence.
Appellant next argues that positioning Sherman’s drive unit as
proposed by the Examiner would adversely affect the ability to pivot axle 6
about bolt 12 as shown in Figure 2 of Deller. Appeal Br. 12.
Deller’s transmission 4 and brake 5 provide a designed degree
of counterweight to Deller’s wheels 1 that enables pivoting of
Appeal 2019-001917
Application 14/420,144
7
axle 6, as shown in Deller’s Fig. 2, with a certain (implicitly
designed) degree of effort. Including Sherman’s electric motor
and gear assembly between bearing 7 and the left drive wheel 1,
absent other redesigns to Deller’s arrangement, would, at least,
change (increase) the amount of effort required to pivot axle 6,
if not make pivoting axle 6 infeasible.
Id.
In response, the Examiner contends that it would have been within the
capabilities of one of ordinary skill in the art to replace Deller’s drive unit
with Sherman’s drive unit while maintaining the ability of the axle to pivot
about bolt 12 of Deller. Ans. 6. According to the Examiner, merely moving
bearings and components such as motors and gearing relative to the drive
axle is within the ordinary skill in the art. Id.
In reply, Appellant argues that the Examiner is proposing yet another
redesign of Deller. Reply Br. 5.
there is only so much space to move Deller’s pivot about bolt
12 in order to accommodate Sherman’s drive unit which
includes a motor which a PSA would understand is heavy.
Accordingly, it is speculation and conjecture to allege that the
ability to pivot Deller’s axle 6 could be retained when
Sherman’s drive unit is mounted to said axle 6. To this end,
there is no reasonable expectation of success in being able to
maintain the ability to pivot Deller’s axle 6 in the manner
disclosed in Deller if Sherman’s drive unit were mounted to
said axle 6.
Reply Br. 5.
Deller is directed to improving the manner in which monorail support
wheels are installed and removed for maintenance purposes. Deller ¶¶ 2–3.
To that end, Deller provides for axle 6 to pivot about travel bolt 12. See
Deller, Figs. 1, 2. However, Deller acknowledges that other methods and
Appeal 2019-001917
Application 14/420,144
8
means for removing and re-installing support wheels were known in the
prior art. Id. ¶ 2.
There is no analogous teaching or claim language in Appellant’s
disclosure or claims regarding pivoting an axle to facilitate maintenance
access. See generally Spec., Claims App. Consequently, Deller’s teaching
about a pivoting axle is superfluous to the issues before us in the instant
appeal. It is well settled that omitting an element and its function in a
combination where the remaining elements perform the same functions as
before involves only routine skill. In re Karlson, 311 F.2d 581, 584
(CCPA 1963). That is the case here. Once the pivoting axle feature of
Deller is omitted, the remaining elements of Deller and Sherman perform the
same functions and Appellant’s argument about counterbalancing is
irrelevant. Thus, for purposes of the instant appeal, we need not decide any
issue regarding counterbalancing Sherman’s drive unit about pivot 12.3
Next, Appellant argues that it is unclear how Sherman’s drive unit can
be physically located between Deller’s bearing 7 and drive wheel 1 without
substantial reconstruction. Appeal Br. 12. Similarly, Appellant argues that
it is unclear how Sherman’s drive unit could be held in place on Deller’s
axle. Id. at 13. “As can be seen, Sherman’s electric motor and gear
assembly cannot simply be added on the same side of Deller’s drive wheel 1
as the transmission 4 and brake 5 without substantial reconstruction and
redesign of the arrangement disclosed in Deller to compensate for such

3 In any event, we find Appellant’s reasonable expectation of success
argument on the counterbalance issue unpersuasive. Reply Br. 5. Children
playing on a see-saw quickly learn to counterbalance weights and moment
arms about a pivot point. The Examiner’s determination that only ordinary
skill is required to counterbalance about Deller’s pivot 12 is well founded.
Appeal 2019-001917
Application 14/420,144
9
addition.” Id. This is another bodily incorporation argument that runs
counter to prevailing case law. “The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference . . . .” In re Keller, 642 F.2d 413, 425
(CCPA 1981); Mouttet, 686 F.3d at 1332. A person of ordinary skill in the
art would have known how to mount a drive unit, such as Sherman, on a
vehicle frame at the time of the invention.
Next, Appellant argues that the proposed combination fails to disclose
a shell as claimed. Appeal Br. 15. In response, the Examiner states that
Deller’s housing located over transmission 4 and brake 5 is reasonably
interpreted as part of Deller’s shell. Ans. 8. We have reviewed the Figures
of Deller and determine that the Examiner’s findings that Deller satisfies the
shell limitation of claim 1 to be supported by a preponderance of the
evidence.
Finally, Appellant argues that the Examiner’s rejection lacks
sufficient underlying rationale and demonstrates impermissible hindsight.
Appeal Br. 13–14. This argument is not persuasive. The Examiner’s stated
reason, namely, providing an efficient, self-contained drive system, is
sufficient to support the rejection. Final Action 4, see In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness conclusion to be
based on explicit articulated reasoning with rational underpinning) cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellant’s accompanying hindsight argument is without merit. See In re
Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (explaining that a
hindsight argument is of no moment where the Examiner provides a
sufficient, non-hindsight reason to combine the references).
Appeal 2019-001917
Application 14/420,144
10
We have considered Appellant’s remaining arguments and find them
to be without merit. Accordingly, we sustain the Examiner’s unpatentability
rejection of claim 1. For lack of separate argument, claims 6, 9, and 25 fall
with claim 1.
Claims 10, 19, and 26
In traversing the rejection of independent claims 10, 19, and 26,
Appellant just reiterates essentially the same arguments that we have
previously considered and found unpersuasive with respect to claim 1 and
find equally unpersuasive here. Appeal Br. 16–18. We sustain the rejection
of claims 10, 19, and 26.
Claims 13, 14, 16–18, 21–24, 27, and 29–35
Claims 13, 14, and 16–18 depend, directly or indirectly, from
claim 10. Claims App. Claims 20–24 depend, directly or indirectly, from
claim 19. Id. Claims 29–35 depend, directly or indirectly, from claim 26.
Id. These claims are not argued separately and, therefore, fall with
claims 1, 10, 19, and 26. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to
separately argue claims).
Unpatentability of Claims 2, 3, 4, 7, 12, and 28
over Deller, Sherman, and Schoon
Appellant does not argue for the separate patentability of these claims
apart from arguments presented with respect to claim 1, which we have
previously considered. Consequently, we sustain the Examiner’s rejection
of claims 2, 3, 4, 7, 12, and 28. 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2019-001917
Application 14/420,144
11
Unpatentability of Claims 36 and 37
over Deller, Sherman, and Holmquist
Appellant does not argue for the separate patentability of claims 36
and 37 apart from arguments presented with respect to claim 1, which we
have previously considered. We sustain the Examiner’s rejection of
claims 36 and 37. 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Aff’d Rev’d
1, 6, 9, 10, 13,
14, 16-27, 29-
35
103 Deller, Sherman 1, 6, 9, 10, 13,
14, 16-27, 29-
35

2, 3, 4, 7, 12,
28
103 Deller, Sherman,
Schoon
2, 3, 4, 7, 12,
28

36, 37 103 Deller, Sherman,
Holmquist
36, 37
Overall
Outcome
1-4, 6, 7, 9,
10, 12-14, 16-
37

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED