MAUCH, FRANK et al.

Patent Trials and Appeals Board

Dec 26, 2019

14206187 - (D) (P.T.A.B. Dec. 26, 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.
14/206,187 03/12/2014 FRANK MAUCH FDST-P110540 1258
24131 7590 12/26/2019
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
MATES, ROBERT E
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK MAUCH, TOBIAS OTT, THOMAS SCHENCK,
ARTUR SCHMIDT, HERMANN SCHULZ, JAN GWOZDZ,
THOMAS ZIEGLER, and THOMAS HUSSY
____________

Appeal 2019-002827
Application 14/206,187
Technology Center 2800
____________

Before CHRISTOPHER C. KENNEDY, MONTÉ T. SQUIRE, and
AVELYN M. ROSS, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4, 6–11, 13, 15, and 16, which are all of the

1 In this Decision, we refer to the Specification filed Mar. 12, 2014
(“Spec.”); Final Office Action dated May 21, 2018 (“Final Act.”); Advisory
Action dated Aug. 31, 2018 (“Advisory Act.”); Appeal Brief filed Oct. 31,
2018 (“Appeal Br.”); Examiner’s Answer dated Dec. 28, 2018 (“Ans.”); and
Reply Brief filed Feb. 28, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
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claims pending in this application.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to an electric motor, in particular, a
brushless electric motor with an inner rotor. Spec. ¶ 2. According to the
Specification, the electric motor is preferably a radiator fan motor of a motor
vehicle, contains a rotor which is mounted rotatably with respect to a stator,
and contains a motor mount. Id. ¶¶ 2, 6; Abstract.
Claim 1 illustrates the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. An electric motor, comprising:
a stator;
a converter electronics system;
a rotor mounted rotatably with respect to said stator;
a motor mount including an electronics compartment
accommodating said converter electronics system, said
electronics compartment having a peripheral edge with a sealing
web, said motor mount further having an electronics
compartment cover with a peripheral sealing groove with which
said peripheral edge of said electronics compartment engages via
said sealing web, said motor mount being formed by a one-piece
die-cast part made of aluminum, said motor mount formed with
a plurality of fixing openings; and

37 C.F.R. § 1.42(a). Appellant identifies “BROSE FAHRZEUGTEILE
GMBH & CO. KOMMANDITGESELLSCHAFT,” as the real party in
interest. Appeal Br. 1.
3 See Appeal Br. 17–20. Claims 3, 5, 12 and 14 are cancelled. Final Act. 2.
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a plastic casing having a plurality of caulking nubs
integrally formed thereon, said plurality of caulking nubs passing
through said plurality of fixing openings in said motor mount and
deformed to join said motor mount and said stator;
said plurality of caulking nubs corresponding with said
plurality of fixing openings, and said stator being over-molded
by said plastic casing.
Appeal Br. 17 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Edick et al. (“Edick”) US 4,110,676 Aug. 29, 1978
Cyphers US 5,059,099 Oct. 22, 1991
Doi et al. (“Doi”) US 6,753,629 B2 June 22, 2004
Hofmann et al. (“Hofmann”) US 2006/0006094 A1 Jan. 12, 2006
Sears et al. (“Sears”) US 2009/0324435 A1 Dec. 31, 2009
El Barak et al. (“El Baraka”) US 2010/0141065 A1 June 10, 2010
Best et al. (“Best”) US 2010/0187920 A1 July 29, 2010
Dautel et al. (“Dautel”) US 2010/0264762 A1 Oct. 21, 2010
Hartmann CH 676627 A5 Feb. 15, 1991
Genz DE 4217142 A1 Nov. 25, 1993
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1, 6, 15, and 16 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Doi in view of Edick, Sears,
Hofmann, and Cyphers (“Rejection 1”). Final Act. 6.
2. Claims 2 is rejected under 35 U.S.C. § 103 as being
unpatentable over Doi, Edick, Sears, Hofmann, and Cyphers as applied to
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claim 1 above, and further in view of El Baraka and Genz4 (“Rejection 2”).
Id. at 15.
3. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Doi, Edick, Sears, Hofmann, and Cyphers as applied to
claim 1 above, and further in view of Hartmann (“Rejection 3”). Id. at 17.
4. Claims 7–10 and 13 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Doi, Edick, Sears, Hofmann,
and Cyphers as applied to claim 6 above, and further in view of Best
(“Rejection 4”). Id. at 19.
5. Claim 11 is rejected under 35 U.S.C. § 103 as being
unpatentable over Doi, Edick, Sears, Hofmann, and Cyphers as applied to
claim 1 above, and further in view of Dautel (“Rejection 5”). Id. at 25.
OPINION
Rejection 1
The Examiner rejects claims 1, 6, 15, and 16 under § 103 as obvious
over the combination of Doi, Edick, Sears, Hofmann, and Cyphers (Final
Act. 6–15), which we refer to as Rejection 1.
The Examiner determines that the combination of Doi, Edick, Sears,
Hofmann, and Cyphers suggests an electric motor satisfying all of the
limitations of claim 1 and concludes the combination would have rendered
the claim obvious. Final Act. 6–12. Regarding the “motor mount” recitation
of claim 1, the Examiner relies on Doi for disclosing that element of the

4 The Examiner refers and cites to the English language translation of the
Genz reference included in the record.
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claim. Id. at 6–7. In particular, the Examiner identifies element 94 of
Figure 1 of Doi as corresponding to the “motor mount” recitation of the
claim. Id. at 7 (citing Doi, Fig. 1, 6:34–58).
Appellant argues the Examiner’s rejection of claim 1 should be
reversed because the cited art does not disclose or suggest a “motor mount,”
as recited in the claim. Appeal Br. 4–9; Reply Br. 1–5. In particular,
Appellant contends the Examiner reversibly erred by identifying Doi’s first
casing 94 as corresponding to the claimed motor mount. Appeal Br. 6.
Appellant contends that, in contrast to the claimed motor mount, Doi does
not teach or suggest that casing 94 functions to mount the motor and thus,
would not have been considered by the ordinarily skilled artisan to be a
motor mount in view of the Specification and plain language of the claim.
Id. at 6 (citing Spec. ¶ 41).
Appellant’s argument is persuasive because the Examiner has not
established by a preponderance of the evidence that Doi teaches or suggests
a “motor mount,” as recited in the claim. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (holding the examiner bears the initial burden of
establishing a prima facie case of obviousness).
During prosecution, claims are given their broadest reasonable
interpretation consistent with the specification. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must
be read in light of the specification, as they would have been interpreted by
one of ordinary skill in the art at the time of the invention. Id.
As Appellant points out (Appeal Br. 6), the Specification explicitly
teaches that the motor mount functions to fasten (mount) the motor to the
vehicle (see Spec. ¶ 41 (disclosing “[t]he motor 5 and therefore the entire fan
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1 is fastened to the vehicle via the motor mount 13”)), which we find is
consistent with the broadest reasonable interpretation in light of the
Specification.
None of the portions of Doi the Examiner cites and relies upon in the
rejection teaches or suggests that casing 94 is or corresponds to a “motor
mount,” as recited in the claim. See Final Act. 7 (citing Doi, Fig. 1,
6:34–58). Rather, as Appellant points out (Appeal Br. 6), Doi teaches that
casing 94 of Figure 1 is actually a first casing, which stores the control
circuit section 40 and serves as a partition between the motor 30 and the
control circuit section. Doi 5:64, 6:8–15. Although Doi teaches that the
control section 40 is stored in the first casing 94 and serves as a partition
between the motor (Doi 6:8–13) and may include, for example, other
electronics components, there is no teaching or suggestion in Doi that the
first casing 94 is a motor mount or functions in any way to fasten the motor
to the vehicle.
The Examiner also does not identify sufficient evidence or
persuasively explain how or why one of ordinary skill in the art would have
considered Doi’s first casing 94 to be or function as a motor mount as
recited in the claim. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (requiring “reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)). The Examiner’s comments at pages 3–5 of the Answer
are not well-taken because they are inconsistent with the broadest reasonable
interpretation of the term “motor mount” and do not meaningfully address
Appellant’s principal argument that Doi does not teach or suggest that
element of the claim.
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Thus, for principally the same reasons provided by Appellant at pages
4–9 of the Appeal Brief and pages 1–5 of the Reply Brief, and in light of the
claim language and the Specification’s disclosure regarding the claimed
motor mount (Spec. ¶ 41), we are not persuaded the Examiner has
established by a preponderance of the evidence that the first casing 94
disclosed by Doi falls within the scope of a “motor mount” as claimed.
We, therefore, do not sustain the Examiner’s rejection of claim 1.
Because claims 6, 15, and 16 depend from claim 1, we also do not sustain
the Examiner’s rejection of these claims.
Accordingly, we reverse the Examiner’s rejection of claims 1, 6, 15,
and 16 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination
of Doi, Edick, Sears, Hofmann, and Cyphers.
Rejections 2, 3, 4, and 5
The Examiner rejects claim 2 as obvious over the combination of Doi,
Edick, Sears, Hofmann, Cyphers, El Baraka, and Genz, which we refer to as
Rejection 2; claim 4 as obvious over the combination of Doi, Edick, Sears,
Hofmann, Cyphers, and Hartmann, which we refer to as Rejection 3; claims
7–10 and 13 as obvious over the combination of Doi, Edick, Sears,
Hofmann, Cyphers, and Best, which we refer to as Rejection 4; and claim 11
as obvious over the combination of Doi, Edick, Sears, Hofmann, Cyphers,
and Dautel, which we refer to as Rejection 5.
The foregoing deficiencies in the Examiner’s findings and analysis
regarding the Doi reference and “motor mount” recitation of claim 1
discussed above in reversing the Examiner’s Rejection 1 are not remedied by
the Examiner’s findings regarding the additional references or combination
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of references cited in support of the second, third, fourth, and fifth grounds
of rejection.
Accordingly, for principally the same reasons stated above for
reversing Rejection 1, we reverse the Examiner’s Rejections 2, 3, 4, and 5
stated above.
CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 6, 15, 16 103(a)
Doi, Edick, Sears,
Hofmann, Cyphers

1, 6, 15, 16
2 103(a)
Doi, Edick, Sears,
Hofmann, Cyphers,
El Baraka, Genz
2
4 103(a)
Doi, Edick, Sears,
Hofmann, Cyphers,
Hartmann
4
7–10, 13 103(a)
Doi, Edick, Sears,
Hofmann, Cyphers,
Best
7–10, 13
11 103(a)
Doi, Edick, Sears,
Hofmann, Cyphers,
Dautel
11
Overall
Outcome
1, 2, 4,
6–11, 13,
15, 16

REVERSED