Application of Hengehold

• Decision Date: 29 April 1971
• Docket Number: Patent Appeal No. 8345.
• Citation: 440 F.2d 1395,169 USPQ 473
• Parties: Application of Leo L. HENGEHOLD.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

169 USPQ 473, 440 F.2d 1395 (1971)

Application of Leo L. HENGEHOLD.

Patent Appeal No. 8345.

United States Court of Customs and Patent Appeals.

April 29, 1971.

Roy F. Schaeperklaus, Pearce & Schaeperklaus, Cincinnati, Ohio, attorney of record for appellant. William A. Smith, Jr., Smith, Michael, Bradford & Gardiner, Washington, D. C., James W. Pearce, Pearce & Schaeperklaus, Cincinnati, Ohio, of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.

Before RICH, ALMOND, BALDWIN and LANE, Judges, and McMANUS, Judge, Northern District of Iowa, sitting by designation.

BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claim 17¹ as unpatentable in view of a patent to Haxton,² and refusing to review a requirement for restriction made by the examiner under 35 U.S.C. § 121.

The Invention

The invention relates to a feed turret and speed reduction gear train. Appellant's feed turret arrangement includes a driving gear, a plurality of compound gears each having a large and small gear in axially spaced relationship and idler gears disposed on individual shafts between a pair of end plates, which serve as a turret frame. The compound gears are mounted for rotation on shafts spaced along the circumference of a circle which has the axis of the driving gear as its center. The idler gears are arranged to couple the driving gear to a compound gears and to intercouple the compound gears so that each large gear on the compound gears is driven in the same direction. The plates are disposed in a main frame for rotary adjustment about an axis coinciding with the axis of the driving gear so that the plate assembly may be adjusted within the main frame to bring the large gear of any selected compound gear into driving engagement with a driven or output gear mounted in a fixed location on the frame.

The claim, which recites the output gear and its shaft as a "second gear" and a "second shaft", respectively, is reproduced below with the recitations principally in controversy emphasized:

17. A feed turrent comprising a main frame, a turret frame supported by the main frame for rotation about an axis, a second shaft supported by the main frame adjacent the turret frame and for rotation about an axis parallel to the axis of turret frame rotation, a second gear supported by said shaft for rotation in unison therewith, a plurality of compound gears each having two sets of teeth respectively on a large pitch circle and a small pitch circle, said compound gears being supported in spaced relation for rotation about parallel axes such that the teeth on the large pitch circle thereof are engageable with said second gear, a first shaft supported by coaxial rotation in said turret frame, a first gear secured to said first shaft, gear means coupling the teeth of said first gear and one set of teeth on one compound gear, a plurality of idler gears each meshing with teeth on the small pitch circle of a respective adjacent compound gear and drivingly meshing with teeth on the large pitch circle of a second respective adjacent compound gear, said compound gears being coupled in train by said idler gears for simultaneous like directed rotation at respective unlike speeds, means for indexing said turret frame in said main frame to place the axes of rotation of the first gear, second gear, and a desired one of the compound gears in coplanar relation whereby the first and second gears are connected by turret frame supported gears for predetermined related rotation at a ratio of rotation corresponding to the compound gear engaging the second gear.

THE PRIOR ART REJECTION

The examiner rejected claim 17, along with claim 2, as "fully met by the patent to Haxton under 35 U.S.C. § 102."

The pertinent disclosure of Haxton can perhaps be best understood from Fig. 7 of that reference which shows a non-planar cross-sectional plan view of the gears in a circular gear turret:

This apparatus includes a turret made up of circular end plates 12 and 13 with gearing disposed therebetween. The turret is rotatable about the axis of input shaft 16 to selectively bring any one of circumferentially displaced gears 26, 32, 40, 45 and 50, each driven at a different speed, into engagement with a driven gear 27 on shaft 28. A gear 21 on input shaft 16 operates through an idler gear 23 to drive gear 24 on shaft 25, which shaft also carries the first output gear 26 and a small gear 29. The latter gear drives an idler gear 30 on shaft 31 to drive gear 33 and shaft 35 and output gear 32 on the shaft, the latter gear rotating at a speed lower than that of gear 26. Other idler arrangements operate between each pair of the remaining output gears 40, 45 and 50 to drive them at progressively reduced speeds.

The Board of Appeals stated the rejection as it was made by the examiner, but in affirming as to claim 17 said the following:

We have reviewed the stated rejection in the light of appellant\'s arguments as presented in the briefs and at the hearing and agree with appellant that as to claim 2, the subject matter thereof is not made obvious by the prior art but find the converse true as to claim 17.

The solicitor would have us find from this statement and one other³ that the board was relying on 35 U.S.C. § 103 in its treatment of the subject matter of this claim. We decline to so find. This is not one of those situations where the record compels a finding that the applicant was adequately apprised of the grounds on which the board's decision was based. Compare In re Jacobson, 407 F.2d 890, 56 CCPA 982 (1969). Accordingly, we will treat the rejection as it was stated by the board, i. e., as being under 35 U.S.C. § 102. Cf., In re Hughes, 345, F.2d 184, 52 CCPA 1355 (1965).

Appellant contended below, as he does here, that Haxton does not respond to the recitation of the compound gears as set out in italics in the claim reproduced above. In response to this argument, the board stated:

The Examiner has called attention to the fact that "gears 24, 26 and 29 are fast on shaft 25, thus forming a compound gear within the general meaning of the term." Gears 24, 26 are to all intents and purposes a single gear of a relatively large pitch circle which engages idlers as well as a second (driven) gear 27.

We find no error in the board's position. The recitation of each compound gear as having "two sets of teeth respectively on a large pitch circle and a small pitch circle" does not distinguish over the reference disclosure. A compound gear that has three sets of teeth, at least one of which is on a large pitch circle, fully meets the requirements of this limitation. Specifically, the gears 24, 26 and 29 on shaft 25 of Haxton constitute one such "compound gear" and the gears 32, 33 and 35 on shaft 34 constitute another.

Before us, appellant also argues that none of gears 26, 32, 40, 45 and 50, which are engageable with the driven gear 27, "has a set of teeth which is on a large pitch circle of a `* * * compound gear having two sets of teeth respectively on a large pitch circle and a small pitch circle'". We do not agree. The gears 26 and 32 are each part of a "compound gear" as required by the claim for the reasons set forth above, and each of these gears 26 and 32 has its teeth "on a large pitch circle." The gear 26, although shown in the drawings as not being as large as the gear 24 on the same shaft with it, is nevertheless on a pitch circle which is "large" with respect to the much smaller gear 29 on the same shaft.

The decision of the board sustaining the rejection of claim 17 on Haxton is therefore affirmed.

THE RESTRICTION REQUIREMENT

Appellant has devoted the major portion of his brief to a discussion of the propriety of the board's denial of jurisdiction to review an examiner's requirement for restriction. The issue presented, as far as we are aware, is one of first impression under the 1952 Patent Act. There has been no challenge to our jurisdiction to review whether the board properly determined the scope of its jurisdiction in the present circumstance. The following background information will facilitate resolution of that issue.

The record shows that the examiner, in his initial office action and acting pursuant to 35 U.S.C. § 121 and power delegated him by Patent Office Rule 142,⁴ required appellant's application to be restricted to one of the six inventions he found to be recited in appellant's sixteen original claims. So far as is relevant here, the examiner placed claims 1 and 3 in "Group III" directed to one invention, and claims 2 and 9-11 in "Group IV" directed to a second invention. In response, appellant traversed the requirement for restriction, provisionally elected the invention of the claims in "Group IV" for action on the merits, and requested "the claims of Group III be included in Group IV". On reconsideration, the examiner modified his restriction requirement by placing claim 9 in "Group III" rather than "Group IV", made that requirement final, and additionally acted on the merits of the claims remaining in "Group IV" by rejecting them on the aforementioned patent to Haxton. Appellant's response to that action included addition of claim 17 to his application and another traversal of the restriction requirement, with objections particularly directed to the regrouping of claim 9 in "Group III". Subsequently, after the examiner had amplified his reasons for the regrouping of claim 9 and had both placed and rejected claim 17 with the other claims of "Group IV" earlier rejected in view of Haxton, appellant petitioned the Commissioner under Rule 144,⁵ protesting the examiner's "arbitrary, unreasonable, and unnecessary" refusal to place claims 1, 3 and 9 in "Group IV". On even date therewith, appellant also appealed to the board from the examiner's final rejection of claims 2, 10, 11 and 17, as well as his...