Ex Parte NewmanDownload PDFPatent Trial and Appeal BoardSep 15, 201713681984 (P.T.A.B. Sep. 15, 2017) Copy Citation 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. 13/681,984 11/20/2012 Robert C. Newman JR. P/10-1725 CONT 2380 2352 7590 09/19/2017 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER MITCHELL, KATHERINE W ART UNIT PAPER NUMBER 3634 NOTIFICATION DATE DELIVERY MODE 09/19/2017 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): pat @ ostrolenk.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT C. NEWMAN, JR. Appeal 2015-008018 Application 13/681,984 Technology Center 3600 Before EDWARD A. BROWN, MICHELLE R. OSINSKI, and ERIC C. JESCHKE, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Robert C. Newman, Jr. (Appellant)1 appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1—26 and 28, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellant, the real party in interest is Lutron Electronics Co., Inc. Appeal Br. 1. Appeal 2015-008018 Application 13/681,984 THE CLAIMED SUBJECT MATTER Claims 1, 8, 9, 10, 11, and 20 are independent. Claim 1 is reproduced below and is illustrative of the claimed subject matter on appeal. 1. The process of operating a motorized roller tube system for reeling and unreeling a flexible member on a roller tube between a fully open and wound condition and a fully closed unwound condition with a minimized sound pressure level; motorized roller tube system comprising: a rotatably supported roller tube, a flexible member having one end fixed to the surface of said roller tube and winding onto or unwinding off of said rotatable tube in response to the rotation direction of said roller tube, a DC' motor having an output shaft connected to said rotatable tube through a gear reduction assembly to rotate said roller tube, and a controller for energizing said motor for driving said motor output shaft at a controllable RPM; said motor a motor speed versus available torque characteristic extends substantially linearly from a high maximum RPM value and low minimum torque value, to a low' minimum RPM value and high maximum torque value and having a peak efficiency at a given RPM value; the process comprising: controlling said motor by said controller in at least two operating modes comprising a first mode and a second mode, each mode providing for movement of said flexible member at a predetermined linear speed; wherein said linear speed for each one of said operating inodes is different from the linear speeds for the others of said modes; energizing said motor in the second mode to move said flexible member between its said fully open and fully closed positions always at a motor speed which is less than said given RPM at its said peak efficiency and always less than 50% of its said high maximum RPM, and at a motor efficiency which is always less than. 25% of said peak efficiency, whereby said motor, when energized, is always intentionally operated in a high torque and low efficiency manner in said second mode; the second mode comprising a normal mode for operation of said motor to reel and unreel the flexible member; 2 Appeal 2015-008018 Application 13/681,984 said first mode operating at a higher motor speed than said second mode and being employed to set up the motorized roller tube system, EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Lagarde US 5,429,558 Jacobs US 5,467,266 Vafaie US 6,082,433 Azar US 6,497,267 B1 Baldor Motion Products (“Baldor”) THE REJECTIONS I. Claims 1, 3—13, 18—20, 24—26, and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA,2 Vafaie, and Baldor. Final Act. 2-A. II. Claims 2, 14, 17, and 21—23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, Baldor, and either Lagarde or Azar. Id. at 4—5. III. Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, Baldor, and Jacobs. Id. at 5—6. OPINION Rejection I Claims 1 and 3—10 Appellant presents arguments for the rejected process claims 1 and 3— 10 as a group. Appeal Br. 9-23. We select independent claim 1 as the July 4, 1995 Nov. 14, 1995 July 4, 2000 Dec. 24, 2002 March 2002 2 The Examiner refers to Figures 1—3 of the Specification as AAPA. Final Act. 2. 3 Appeal 2015-008018 Application 13/681,984 representative claim, and claims 3—10 stand or fall therewith. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that AAPA teaches a motorized roller tube system including, inter alia, a roller tube, a flexible member, a motor having an output shaft, a gear assembly having a plurality of gear stages, and a controller. Final Act. 2. The Examiner acknowledges that AAPA does not teach the controller operating in two operating modes of different linear speeds. Id. The Examiner finds that Vafaie teaches a motorized roller tube system including a controller that “operates in a plurality of modes including that of differing speeds.” Id. (citing Vafaie, 6:13—23; 9:6—38). The Examiner concludes that it would have been obvious to modify AAPA to incorporate the teaching of a plurality of modes of differing speeds in order “to accommodate particular applications.” Id. The Examiner further determines that selecting a speed for any particular application is a result- effective variable. Id. at 2—3. The Examiner turns to Baldor’s teaching of “a process of operating a motorized system and setting] forth a detailed analysis of selecting a motor based upon its suitability for a desired use.” Id. at 3. The Examiner finds that the particular values for the parameters of motor speed and motor efficiency “may be readily ascertained” in view of the teachings of Baldor. Id. at 4. The Examiner concludes it would have been obvious to one of ordinary skill in the art “to have applied the teachings of Baldor in selecting a desired motor and operating characteristics for the Prior Art roller tube system, as modified by Vafaie . . ., for such a selection is to have been made and to have done so yields nothing more than predicable results.” Id. See also Final Act. 3 (“The determination of the optimum or workable ranges of 4 Appeal 2015-008018 Application 13/681,984 a result-effective variable involves nothing more than routine experimentation.”). As to operating such a modified motorized roller tube system “at a motor speed which is less than [a] given RPM value at its . . . peak efficiency and . . . less than 50% of its . . . high maximum RPM value, and at a motor efficiency which is . . . less than 25% of. . . peak efficiency,” as set forth in claim 1, the Examiner points to a manufacturer-supplied motor curve, exemplified by the motor curve of Baldor,3 “which explicitly sets forth what one is to expect when a motor is operated inefficiently... that of achieving a motor speed less than a given RPM' value at its peak efficiency and less than its high maximum RPM value such that the motor is operated in a high torque and low efficient manner.” Ans. 4. The Examiner finds that “[fjollowing the teachings afforded by a motor eurve[,] such that the motor is operating inefficiently^] is nothing more than applying a known technique to a known device with the expectations that is operating inefficiently.” Id, As to low-efficiency operation of the motor in accordance with the particular values for motor speed and motor efficiency set forth in claim 1, the Examiner finds that motor speed and motor efficiency are result- effective variables and that selecting particular values for motor speed and motor efficiency so as to correspond to the limitations of claim 1 “involves nothing more than routine experimentation.” Ans. 7—8. According to the Examiner, “[t]o have determined a desirable workable range of the variable 3 See also Spec. 113 (referring to Figure 3 and explaining that “[gjraphs of this type [which show graphically the performance characteristics of a motor] are referred to as ‘motor curves’”). 5 Appeal 2015-008018 Application 13/681,984 using a known controller involves nothing more than a matter of routine experimentation providing a predictable result.” Id. at 10. As to operating the motor so that the motor speed and motor efficiency are always at the claimed values, the Examiner indicates that “[i]n the absence of a defined meaning for ‘always’ as claimed[,] this limitation has been given its broadest reasonable interpretation including that of an evident observation of the operating motorized roller tube system of the prior art since it is the purpose of the motorized roller tube system to operate consistently and reliably.” Ans. 2—3; see also Final Act. 4 (“While the claims have been amended to state that the energizing of the motor i[s] ‘always’ at a specified motor speed, RPM value, and motor efficiency, it is clear that this is an evident observation of the operating [of] motorized roller tube systems of the Prior Art motorized roller tube and Vafaie . . . since it is the purpose of the motorized roller tube systems to operate consistently and reliably.”). We determine the scope of the claims in patent applications by giving claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). The Examiner notes correctly that the Specification does not use the term “always.” See Ans. 2. The Specification describes that typical motorized roller tube systems “are not ordinarily operated in a continuous fashion,” but may instead be used to adjust positions of a window shade (e.g., raise or lower) “at infrequent intervals.” Spec. 138. In the absence of any discussion in the Specification outlining clearly what constitutes “always” energizing the motor in the 6 Appeal 2015-008018 Application 13/681,984 second mode in accordance with certain motor speed and motor efficiency parameters, we determine that the Examiner’s interpretation of “always,” which covers energization of the motor at all times during a single adjustment of a window shade (e.g., raising or lowering) in a second mode, is reasonable and comports with the broadest reasonable interpretation in view of the Specification. Moreover, the adjustment of the window shade does not have to be necessarily from a fully open condition to a fully closed condition, but can be any amount of movement between those two opposing conditions, in that the claim merely requires “energizing said motor in the second mode to move said flexible member between its said fully open and fully closed positions.” Corrected Claims App. 2 (emphasis added). Thus, we interpret the process comprising “energizing said motor in the second mode to move said flexible member . . . always at a motor speed which is less than [a] given RPM at its . . . peak efficiency and always less than [a certain value] of its . . . high maximum RPM, and at a motor efficiency which is always less than [a certain value] of. . . peak efficiency, whereby said motor, when energized, is always intentionally operated in a high torque and low efficiency manner in said second mode,” as set forth in claim 1, to require only that the motor speed and motor efficiency always be within the claimed values during a process of operating a motorized roller tube system that consists of a single instance of adjusting window shade position in the second mode. In light of this interpretation, we note that the Examiner finds that “Baldor . . . [teaches] that a motor may be operated inefficiently for short durations of time and defines this area on the motor curve as the Intermittent Operation Area.” Final Act. 9; Ans. 4 (citing Baldor, J-13). The Examiner 7 Appeal 2015-008018 Application 13/681,984 additionally finds that Baldor teaches that “[d]uty cycles less than 100% allow time for a motor to cool and lower duty cycle time allows motors to be run with more than three times their continuous current rating for a short period of time and thus can produce higher forces than when run continuously.” Ans. 5 (citing Baldor, J-17). In other words, the Examiner finds that Baldor teaches that “duty cycles less than 100% allow time for a motor to cool and provide[] for short durations of inefficient operation.” Id. Appellant argues that even assuming arguendo that Baldor’s region of intermittent operation is equivalent to the claimed low-efficiency region of operation, Baldor does not suggest that a motor should always be operated in the intermittent operation area. Appeal Br. 15. Appellant asserts that Baldor actually teaches away from always operating in the intermittent area because “by its very definition, one cannot always operate in a mode that is intermittent” and that “Baldor assumes the motor will normally be used in the continuous region.” Id. We are not persuaded by Appellant’s argument in that Baldor explicitly recognizes that given duty cycles less than 100%, a motor has time to cool and can be “run with more than three times their continuous current rating for a short period of time.” Ans. 5 (citing Baldor, J-17). Accordingly, as found by the Examiner (see, e.g., Final Act. 7—8), the applied combination of prior art teaches one can always energize the motor from the controller at low motor speed and low motor efficiency when the duration of each period of energization is short (i.e., operation is intermittent). Here, where we have interpreted the claim to require only that the motor speed and motor efficiency always be at the claimed values during a single instance of operating the motor to adjust window shade position in the second mode, we 8 Appeal 2015-008018 Application 13/681,984 find such operation to have sufficiently short period to sustain inefficient operation of the motor, as recognized by Baldor. As to Appellant’s teaching away argument, this argument is not persuasive because it is premised on the claimed process occurring over a long period of time, whereas we have construed the claimed process to require only a single instance of adjusting window shade position in the second mode (i.e., a short period of time which corresponds to Baldor’s intermittent operation teaching). Appellant argues that “Baldor’s intermittent region defines a region of operation, wherein, for example, the motor is operated at peak torque, i.e., during acceleration” and that “[njothing in Baldor suggests operating the motor always in that region.” Appeal Br. 16. In other words, Appellant argues that “the mere fact that it is known that an electric motor can be operated for reduced periods of time at higher currents does not suggest always operating an electric motor, when energized at low efficiency, low speed, and high torque.” Id. at 22. As described above, we find that Baldor teaches one of ordinary skill in the art that one can always energize the motor from the controller at a low motor speed and low motor efficiency when the duration of each period of energization is short (i.e., operation is intermittent). We further find that (in accordance with our interpretation of the process claims) a process made up of a single instance of operating the motor in the second mode to adjust a window shade position would require only a short period of energization. The Examiner finds that “it is the purpose of the motorized roller tube systems to operate consistently and reliably.” Final Act. 4. Based on these findings, we agree with the Examiner that one of ordinary skill in the art would be led to operate the motor consistently in accordance with parameters in the Intermittent 9 Appeal 2015-008018 Application 13/681,984 Operation Area of the motor at all times during a single instance of adjusting a window shade position in the second mode. See, e.g., Ans. 8—9. Appellant also argues that “[t]he present invention claims the process of operating a motor in this way to achieve a particular result, i.e., to obtain a low noise operation” and that “[njothing in Baldor suggests this.” Appeal Br. 16; see also id. at 14 (“the prior art never suggests operating a roller tube system in the way claimed to achieve low noise operation”); see also id. at 17 (“Baldor is absolutely silent with respect to motor noise. Accordingly, one seeking to realize a quiet motorized roller tube system would find no reason to combine Baldor with the other references cited.”). Although Baldor fails to specifically suggest that the reason for operating always in the intermittent area of operation is to obtain low noise, the reason to modify a reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem; it is not necessary that the prior art suggest the modification to achieve the same advantage or result discovered by an applicant. See, e.g., In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“Although the motivation to combine here differs from that of the applicant, the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.”)). Here, the Examiner has explained that motor speed and motor efficiency can vary anywhere along a manufacturer-supplied motor curve to achieve any number of different desired results and that these results would be predictable to one of ordinary skill in the art. The Examiner has further 10 Appeal 2015-008018 Application 13/681,984 explained that the prior art teaches duty cycles less than 100% and that inefficient operation of a motor for short durations of time in an intermittent operation area on a motor curve are possible. The Examiner has additionally explained that one of ordinary skill in the art would expect the motor operation to be consistent during one instance of operation of the motor to adjust window shade position. Together, this explanation constitutes reasoning with rational underpinnings that would have led one of ordinary skill in the art to the claimed invention from the combination of cited prior art. Appellant urges that “there is nothing in Baldor that suggests that an electric motor should always be operated in a low efficiency region.” Appeal Br. 18. More particularly, Appellant argues that Baldor makes “no reference to motor efficiency” (id. at 17) and that there is nothing in Baldor that “even suggests a low efficiency region of operation and, to the extent that the Examiner is equating the intermittent operation area with an area of low efficiency operation, there is nothing to establish such equivalence” (id. at 18). See also id. at 23. Appellant maintains that there is no way to determine the efficiency at which a motor is operating from Baldor and that all one of skill in the art can discern from Baldor is that operating a certain motor within the area identified as “Continuous Torque at Speed for the Application” will prevent the motor from overheating. Id. at 17. We are not persuaded of Examiner error. Appellant has recognized that a characteristic shared by all DC motors is that “motor efficiency will generally reach peak efficiency under light-duty conditions (i.e., relatively low torque capability at a motor speed greater than 50 percent of maximum motor speed).” Spec. 115. These light duty conditions are present in 11 Appeal 2015-008018 Application 13/681,984 Baldor’s “Continuous Operation Area,” whereas Baldor’s “Intermittent Operation Area” includes portions of the motor curve that operate at the opposite conditions of high torque and low speed. Baldor, J-13. The Examiner finds that “[t]he area defined as [the] Continuous Operation Area is that for which the torque will not overheat the motor[,] [and] [i]t is axiomatic that the area which is not within the area defined as Continuous Operation Area is that for which the torque will overheat the motor which is indicative of an inefficient operation of the motor.” Ans. 4. The Examiner finds that Prior Art Figures 1—3 “establish[] motor efficiency in relation to a speed-torque curve” (Final Act. 8) and that motor efficiency can be ascertained in view of the teachings of Baldor (Ans. 7), and we agree. Accordingly, we see no error in the Examiner equating at least some portion of Baldor’s Intermittent Operation Area (at higher torque and lower speeds) with an area of low-efficiency operation. Appellant also argues that “[a] designer would not think to operate an electric motor always in this way for consistency and reliability, contrary to the Examiner’s unsupported conclusion.” Appeal Br. 19. Appellant maintains that, in particular, the possibility of premature motor failure would prevent a designer from this type of operation. Id. Again, we are not persuaded by this argument because it is premised on long periods of operation of the motor, whereas we have construed the claimed process to encompass a single instance of adjusting window shade position in the second mode, in which consistency and reliability in the manner of operation for such a short period of time would be expected. Appellant argues for the first time in the Reply Brief that Vafaie does not suggest “having a first mode operating a higher speed than the second 12 Appeal 2015-008018 Application 13/681,984 mode, wherein the first mode is ‘employed to set up the motorized roller tube system,’ as claimed.” Reply Br. 8. The Examiner made findings that Vafaie teaches opening and closing a roll-up door at selected speeds to accommodate particular applications, and any particular speed is a result- effective variable. Final Act. 2—3. Appellant did not present any arguments in the Appeal Brief as to Vafaie. In the Answer, the Examiner does not present any new findings relative to Vafaie. Appellant has not presented any arguments in the Reply Brief attempting to demonstrate good cause for why this argument was not raised earlier. Further, upon our review of the record, we find the new argument raised in the Reply Brief is not responsive to a new argument raised in the Examiner’s Answer. Without the benefit of having the Examiner’s response to this argument, we decline to consider it. 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, . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). For the foregoing reasons, we are not persuaded that the Examiner erred in concluding that the subject matter of claim 1 is unpatentable over AAPA, Vafaie, and Baldor. We sustain the rejection of claim 1, and claims 3—10, which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, and Baldor. Claims 11—IS, 18—20, 24—26, and 28 Independent claim 11 recites a “controller [that] is configured to operate the motor when the motor is energized to rotate always at an operating speed that is less than 50 percent of a maximum motor speed of which the motor is capable when the motor operates in the second mode and 13 Appeal 2015-008018 Application 13/681,984 at an efficiency less than 25% of the peak efficiency.” Corrected Claims App. 6. Independent claim 20 similarly recites a “controller [that] is configured to operate the motor when the motor is energized to move the flexible member at the second predetermined linear speed to rotate always at an operating speed that is less than 50 percent of a maximum motor speed of which the motor is capable when the flexible member moves at the second predetermined linear speed and at an efficiency less than 25% of the peak efficiency.” Id. at 9. The Examiner asserts that, “[w]ith respect to claims 11—26, 28 drawn to the apparatus of the motorized roller tube system, the functional language as it pertains to the apparatus does not have patentable weight if the claimed structure of the motorized roller tube system is already known, regardless of whether the structure has actually been used as claimed.” Ans. 10 (citing In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). The Examiner determines that “the apparatus of the prior art meets the recited intended use or functionally defined limitation if it merely is capable of the recited use or function, as is the case here.” Id. Appellant argues that “the known operation at low efficiency of the prior art does not allow the Examiner to reject claims directed to a controller configured to operate always at low efficiency as claimed. This claimed configuration structurally defines the controller and does not allow the Examiner to reject the claims, as he has done, based on knowledge of a known controller.” Appeal Br. 17; see also id. at 20 (“the claims are directed to ... a controller that is configured to operate in a certain way that structurally defines the controller, i.e., such that the motor always operates in the low efficiency region.”); see also id. at 20 (the known controller “is 14 Appeal 2015-008018 Application 13/681,984 being used in way it has never been used before by configuring the controller to control the motor always in the low efficiency region, never in any other region of possible operation.”). Even if the device of AAPA, as modified by Vafaie and Baldor, may be capable of being modified (e.g., programmed) to perform the functions of the “controller” as required in independent claims 11 and 20, such a disclosure fails to satisfy the “capable of’ test, which requires that the prior art structure be capable of performing the function without further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the functional language is associated with programming or some other structure required to perform the function, that programming or structure must be present in order to meet the claim limitation. Id. Here, the Examiner has not shown by a preponderance of the evidence that the device of AAPA, as modified by Vafaie and Baldor, has programming or structure to operate the motor always at a motor efficiency and motor speed in accordance with the claimed limitations.4 4 The Examiner’s rejection of the apparatus claims appears to be based solely on the capability of the applied prior art to perform the recited function (Ans. 10), and not also on the obviousness of modifying a controller so as to be configured to always operate at motor speed and motor efficiency in accordance with the claimed limitations. To the extent that the Examiner may have intended such an alternative rejection based on the statement that “[ujsing a prior art controller in the manner claimed for its intended purpose would have been obvious because ‘a person of ordinary skill has good reason to pursue the known options within his or her technical grasp’” (Final Act. 7 (quoting KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)), such rejection is not clearly stated and we also do not see where 15 Appeal 2015-008018 Application 13/681,984 For the foregoing reasons, we find that the Examiner erred in concluding that the subject matter of claims 16 and 25 is unpatentable over AAPA, Vafaie, and Baldor. We do not sustain the rejection of claims 11 and 20, and claims 12, 13, 18, 19, 24—26 and 28, which depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, and Baldor. Rejections II—III The Examiner rejects, under 35 U.S.C. § 103(a), claims 2, 14, 17, and 21—23 as unpatentable over AAPA, Vafaie, Baldor, and either Lagarde or Azar; and claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, Baldor, and Jacobs. Final Act. 4—6. the Examiner has articulated reasoning with some rational underpinning to explain why one of ordinary skill in the art would have been led to program a controller to constrain a motor’s operability. That is, even if Baldor teaches one of ordinary skill in the art that one can utilize a portion of the speed-torque curve in the Intermittent Operation Area for intermittent operation, the Examiner has not adequately explained why one of ordinary skill in the art would be led to constrain the controller to only be able to operate within a portion of this Intermittent Operation Area during energization of the motor, rather than retain the ability to operate anywhere along the torque-speed curve. Moreover, the Examiner appears to rely on an “obvious to try” rationale that, on the record here, is unavailing to support a conclusion of obviousness. This rationale of KSR is based on choosing from “a finite number of identified, predictable solutions,” “[wjhen there is a design need or market pressure to solve a problem.” KSR, 550 U.S. at 421. Here, the Examiner does not offer any evidence or reasoning to show that there are only a finite number of identified, predictable solutions to solve a problem evidenced by a design need or market pressure. Rather, the Examiner has only explained that one of ordinary skill in the art could use any motor parameters along the torque-speed curve of a particular motor, but not why one would try to program a controller to use only a certain subset of motor parameters along the torque-speed curve because of any particular design need or market pressure. 16 Appeal 2015-008018 Application 13/681,984 Appellant’s arguments in support of the patentability of claim 2 relate to the perceived deficiencies in AAPA, Vafaie, and Baldor in connection with independent claim 1. Appeal Br. 23—24. Because we are not apprised of such deficiencies in AAPA, Vafaie, and Baldor with respect to independent claim 1, we are not persuaded of error in the Examiner’s rejection of dependent claim 2. Accordingly, we sustain the rejection of dependent claim 2 under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, Baldor, and either Lagarde or Azar. The rejections of claims 14—17 and 21—23, however, rely on the Examiner’s erroneous finding that the device of AAPA, as modified by Vafaie and Baldor, is capable of operating the motor always at a motor efficiency and motor speed in accordance with the claimed limitations and/or the Examiner’s erroneous conclusion that the combination of AAPA, Vafaie, and Baldor renders obvious programming a controller to constrain a motor’s operability to only a certain portion of its available operating capability. Final Act. 4—6. The Examiner does not explain how Lagarde, Azar, or Jacobs cures these underlying deficiencies. Accordingly, for the reasons discussed above, we do not sustain the Examiner’s rejection, under 35 U.S.C. § 103(a), of: claims 14, 17, and 21—23 as unpatentable over AAPA, Vafaie, Baldor, and either Lagarde or Azar; and claims 15 and 16 as unpatentable over AAPA, Vafaie, Baldor, and Jacobs. DECISION The Examiner’s rejection of claims 1 and 3—10 under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, and Baldor is affirmed. 17 Appeal 2015-008018 Application 13/681,984 The Examiner’s rejection of claims 11—13, 18—20, 24—26, and 28 under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, and Baldor is reversed. The Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, Baldor, and either Lagarde or Azar is affirmed. The Examiner’s rejection of claims 14, 17, and 21—23 under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, Baldor, and either Lagarde or Azar is reversed. The Examiner’s rejection of claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over AAPA, Vafaie, Baldor, and Jacobs is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 18 Copy with citationCopy as parenthetical citation