MAUCH, FRANK et al.Download PDFPatent Trials and Appeals BoardDec 26, 201914206187 - (D) (P.T.A.B. Dec. 26, 2019) 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. 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 Appeal 2019-002827 Application 14/206,187 2 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. Appeal 2019-002827 Application 14/206,187 3 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 Appeal 2019-002827 Application 14/206,187 4 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. Appeal 2019-002827 Application 14/206,187 5 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 Appeal 2019-002827 Application 14/206,187 6 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. Appeal 2019-002827 Application 14/206,187 7 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 Appeal 2019-002827 Application 14/206,187 8 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 Copy with citationCopy as parenthetical citation