Ex Parte O et al

Patent Trials and Appeals Board

May 31, 2018

14230856 - (D) (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/230,856 03/31/2014
68459 7590 05/31/2018
MARSHALL & MELHORN, LLC
FOUR SEA GA TE
8THFLOOR
TOLEDO, OH 43604
FIRST NAMED INVENTOR
Thomas M. O'Neil
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.
1-23484/8444-1 UJ 2529
EXAMINER
BINDA, GREGORY JOHN
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
05/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS M. O'NEIL, JEFFREY ALLAN DUTKIEWICZ,
and JOHNNY NEAL SMITH
Appeal2017-008980
Application 14/230,856 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellants appeal from the
Examiner's decision rejecting claims 1-3, 6, 8, 13, 14, and 20-23. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to the Appellants, "[t]he real party in interest is Dana
Automotive Systems Group, LLC, of the United States of America, which is
a wholly owned subsidiary of Dana, Inc., of the United States of America."
Appeal Br. 3.
Appeal2017-008980
Application 14/230,856
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below with minor changes to the format.
1. A driveshaft assembly comprising:
(a) a tubular shaft comprising:
(i) at least a first receiving end portion with an
opening disposed therein, wherein the receiving end
portion has a receiving end portion inner diameter,
(ii) a center portion, wherein the center portion
has a center portion inner diameter, and
(iii) a hollow interior with a shaft inner surface,
(b) a driveshaft end component comprising an insert
end portion and an attachment end portion; and
( c) an annular anti-fretting spacer comprising:
(i) a first outer diameter, wherein the first outer
diameter of the spacer is substantially equal to the
receiving end portion inner diameter
(ii) a second outer diameter, and
(iii) an outer surface, wherein at least a portion of
the outer surface is in contact with the shaft inner
surface,
wherein the spacer is disposed on the insert end portion of
the driveshaft end component, wherein the insert end portion of
the driveshaft end component, including the spacer, is disposed
within the receiving end portion of the shaft with an interference
fit, and wherein the shaft is rigidly coupled to the driveshaft end
component.
2
Appeal2017-008980
Application 14/230,856
Rejections2
Claims 1, 2, 6, 8, 13, 14, and 20-23 stand rejected under (pre-AIA)
35 U.S.C. § 102(b) as anticipated by Kai et al. (US 7,442,127 B2, iss.
Oct. 28, 2008) ("Kai").
Claims 1-3, 6, 8, 13, 14, and 20-23 stand rejected under (pre-AIA)
35 U.S.C. § 102(b) as anticipated by Gaukel (US 5,902,186, iss. May 11,
1999).
ANALYSIS
Anticipation by Kai
The Appellants contend that Kai does not disclose "the recitation of a
separate 'anti-fretting spacer' ... as recited in claim 1" because Kai
discloses short pipe bodies 16 and 1 7 as nothing more than a thickened
section of a shaft wall formed by additional winding resin fibers around a
mandrel. Appeal Br. 8 ( citing Kai, col. 8, 1. 40 - col. 9, 1. 27, Fig. 6). The
Appellants' contention is not persuasive.
Independent claim 1 does not require the "annular anti-fretting
spacer" to be a separate component rather than a thickened section of
another component. Additionally, the Specification instructs that the spacer
may be a thickened section of another component. For example, the
Specification describes that "the spacer may comprise a pliable substrate
wrapped around at least a portion of the driveshaft end component 108."
Spec. 12: 18-20. Additionally, the Specification discloses that the spacer
2 The Examiner has withdrawn the rejection of claims 1-3, 6, 8, 13, 14, and
20-23 under (pre-AIA) 35 U.S.C. § 102(b) as anticipated by MacDonald et
al. (US 3,584,473, iss. June 15, 1971). Ans. 4.
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Appeal2017-008980
Application 14/230,856
may be a coating that is sprayed on a driveshaft assembly component ( e.g., a
portion of driveshaft end component 108 or the inner surface 114 of the
receiving end portion 110) and cured with UV light. See Spec. 12:23 - 13:2;
see also Spec. 12:20-23. We fail to understand how a pliable substrate
wrapped around at least a portion of a component (i.e., a thickened section
of another component) or a coating sprayed on a component would be a
separate component.
Turning to the Examiner's rejection, the Examiner finds that Kai's
short pipe body 17 corresponds to the claimed "spacer." Final Act. 3. The
Appellants point out that short pipe body 17 "is unitary and formed as one
with the [tubular] shaft [ (i.e., right end portion 12 of front pipe member
10)]." Appeal Br. 7 (citing col. 8, 1. 40- col. 9, 1. 27); Reply Br. 3-5 (citing
Kai, col. 6, 11. 3-8, col. 8, 11. 40-65). However, one of ordinary skill in the
art upon reading claim 1-giving the claim the broadest reasonable
interpretation consistent with the Specification - would not understand the
claim to require that the spacer is a separate structure from the shaft. As
such, the Appellants' point is not persuasive of Examiner error.
The Appellants contend that Kai does not disclose "the recitation of
a[n] ... 'interference fit' as recited in claim 1." Appeal Br. 8; see Reply
Br. 5---6. The Appellants' contention is based on a construction of claim 1
that requires an "interference fit is between the driveshaft and the spacer."3
Reply Br. 6. We disagree with the Appellants' construction and determine
that the Appellants' contention is not persuasive of Examiner error.
3 We understand the Appellants' reference to the "driveshaft" as the tubular
shaft. See Appeal Br. 12-13 (Claims App.).
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Appeal2017-008980
Application 14/230,856
Claim 1 recites, in relevant part, "wherein the insert end portion of the
driveshaft end component, including the spacer, is disposed within the
receiving end portion of the shaft with an interference fit." Appeal Br. 12-
13 (Claims App.). This recitation of claim 1 recites: first, the insert end
portion of the driveshaft end component ( e.g., insert end portion 164 of
driveshaft end component 108); second, the spacer (e.g., spacer 106); and
third, the receiving end portion of the tubular shaft (e.g., receiving end
portion 110 of shaft 104). The claim also requires the insert end portion of
the driveshaft end component and the spacer to be "disposed within" the
receiving end portion of the tubular shaft. This sets forth the positioning of
the insert end portion of the driveshaft end component and the spacer with
respect to the receiving end portion of the tubular shaft. We construe the
claim to require an "interference fit" situated between the insert end portion
of the driveshaft end component, the spacer, or the receiving end portion of
the tubular shaft, but not necessarily between the "driveshaft" (i.e., the
tubular shaft) and the spacer as advanced by the Appellants.
Our understanding of claim 1 is consistent with the Specification's
discussion of the driveshaft assembly at page 15, line 8 through page 16,
line 2. Here, the Specification describes three instances of an interference fit
between the insert end portion of the driveshaft end component, the spacer,
or the receiving end portion of the tubular shaft: first, between spacer 106
and shaft 104 (Spec. 15:8-11); second, between spacer 106 and spacer
mounting seat 170 of insert end portion 164 of driveshaft end component
108 (Spec. 15: 16-20); and third, between spacer 106 and main insert portion
176 of insert end portion 164 of driveshaft end component 108 (Spec. 15:21
- 16:2). See Spec. Figs. 2, 3.
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Appeal2017-008980
Application 14/230,856
Turning to the Examiner's rejection, the Examiner finds that Kai's
fitting portion 33 of second yoke 30, short pipe body 17, and right end
portion 12 correspond, respectively, to the claimed "insert end portion of the
driveshaft end component," "spacer," and "the receiving end portion of the
[tubular] shaft." Final Act. 3--4; Ans. 2-3. The Examiner relies on Kai's
disclosure of a press-fit between short pipe body 17 (i.e., spacer) and fitting
portion 33 of second yoke 30 (i.e., insert end portion of the driveshaft end
component). See Ans. 3 (citing Kai, col. 6, 11. 52-53); see also Reply Br. 5-
6 (quoting Kai, col. 6, 11. 49-58). The Appellants acknowledge that Kai
teaches an interference fit between short pipe body 17 and insert end portion
33 of the driveshaft end component 30. Reply Br. 6 ("KAI is teaching a
press-fit (i.e., interference fit) between the driveshaft end component
('fitting portion 33') and the short pipe bodies (16 and 17)."). The foregoing
corresponds to an interference fit between a spacer and an insert end portion
of the driveshaft end component. Based on the broadest reasonable
interpretation of the claim language as understood by one of ordinary skill in
the art in light of the Specification, as discussed above, we agree with the
Examiner's finding that fitting portion 33 of second yoke 30, including short
pipe body 17, is disposed within right end portion 12 with an interference fit.
Thus, we sustain the Examiner's rejection of independent claim 1 as
anticipated by Kai. We likewise sustain the rejection of dependent claims 2,
6, 8, 13, 14, and 20-23, which were not separately argued. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Appeal2017-008980
Application 14/230,856
Anticipation by Gaukel
The Appellants contend that Gaukel' s invention is directed to a
steering column and not a "driveshaft assembly" as claimed. Appeal Br. 10;
Reply Br. 8. The Appellants also contend that the inner tube of a steering
column, e.g., Gaukel's inner tube 60, does not correspond to the claimed
"driveshaft end component" under the broadest reasonable interpretation of
the claimed term. See Appeal Br. 1 O; Reply Br. 8-9.
At the outset, the term "driveshaft" is not defined by the Specification.
The Examiner and the Appellants do not provide a definition of the term
"driveshaft."4 An ordinary definition of "driveshaft" is "a shaft that
transmits mechanical power." Driveshaft definition, MERRIAM-
WEBSTER.COM, https://www.merriam-webster.com/dictionary/driveshaft
(last visited May 22, 2018). We determine that this definition is consistent
with the broadest reasonable interpretation of the claimed term in light of the
Specification as it would be interpreted by one of ordinary skill in the art.
See also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). For example, the Specification describes that the field of invention
"relates to a spacer disposed between mechanically associated components"
and "[ m Jore particularly, ... to a spacer disposed between rigidly coupled
4 In the Reply Brief, the Appellants provide new evidence, i.e., Exhibits "1"
and "2." Reply Br. 9. Exhibit "1" appears to be a portion of a Googleâ„¢
search for the term "driveshaft" and includes a portion of a description of the
term from the free encyclopedia Wikipedia.org. Exhibit "2" appears to be
the complete description of the term "driveshaft" from the free encyclopedia
Wikipedia.org. However, for the purpose of this appeal, the new evidence is
not admitted pursuant to 37 C.F .R. § 41.41 (b )(1) ("A reply brief shall not
include any new or non-admitted amendment, or any new or non-admitted
affidavit or other Evidence.").
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Appeal2017-008980
Application 14/230,856
mechanically associated components, such as those in a driveshaft
assembly." Spec. 1: 14--17. Here, the Appellants' field of invention is
related to mechanically associated components, such as a shaft that transmits
mechanical power, but not specifically to a shaft that transmits mechanical
power to a powertrain. But see Reply Br. 9 ("It is common knowledge that
the term driveshaft is used in the art to describe part of a powertrain, not a
steering column."). As such, the ordinary definition of "driveshaft," i.e., "a
shaft that transmits mechanical power," is consistent with the Specification
and how one of ordinary skill in the art would understand the term.
The Examiner finds that the purpose of Gaukel' s shaft assembly 20 is
to transfer torque. Ans. 5 ( citing Gaukel, col. 1, 11. 24--26, col. 6, 11. 50-52).
Also, the Examiner finds that "inner member ( 60) of Gaukel is an end
component of the shaft assembly (20)." Ans. 5; see Gaukel, col. 4, 1. 10,
Fig. 3. Further, Gaukel's "invention relates generally to steering column
assemblies," but also "has applications elsewhere, including rotary actuators
or drive assemblies." Gaukel, col. 1, 1. 67, col. 3, 11. 4--6. In view of the
foregoing, we agree with the Examiner that Gaukel' s shaft assembly 20,
which includes inner member 60, is a shaft that transmits mechanical power.
Additionally, we agree with the Examiner that Gaukel's shaft assembly 20
and inner member 60 corresponds to the "driveshaft assembly" and
"driveshaft end component," respectively, as claimed.
The Appellants provide an additional argument that "the pending
claims recite the spacer is disposed on the insert end portion of the driveshaft
end component" and that "G[aukel] does not teach, however, that the first
end (62) of the inner tube (60) has a spacer on it." Reply Br. 9, 10. This
argument is provided for the first time in the Reply Brief and is not
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Appeal2017-008980
Application 14/230,856
responsive to an argument raised in the Examiner's Answer. The Appellants
have not shown good cause for not presenting this argument in the opening
brief. As such, we will not consider the Appellants' added argument. See
37 C.F.R. § 41.41(b)(2) ("Any argument raised in the reply brief which was
not raised in the appeal brief, or is not responsive to an argument raised in
the examiner's answer, including any designated new ground of rejection,
will not be considered by the Board for purposes of the present appeal,
unless good cause is shown.").
Thus, we sustain the Examiner's rejection of independent claim 1 as
anticipated by Gaukel. We likewise sustain the rejection of dependent
claims 2, 3, 6, 8, 13, 14, and 20-23, which were not argued separately. See
37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We AFFIRM the Examiner's decision rejecting:
claims 1, 2, 6, 8, 13, 14, and 20-23 under (pre-AIA) 35 U.S.C.
§ 102(b) as anticipated by Kai; and
claims 1-3, 6, 8, 13, 14, and 20-23 under (pre-AIA) 35 U.S.C.
§ 102(b) as anticipated by Gaukel.
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
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