Ex Parte 6557686 et al

Board of Patent Appeals and Interferences

Nov 2, 2010

90008275 (B.P.A.I. Nov. 2, 2010)

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.
90/008,275 10/02/2006 6557686 RBI-1Z 1278
7590 11/02/2010
Thomas N. Young
YOUNG & BASILE PC
3001 West Big Beaver Road
Suite 624
Troy, MI 48084
EXAMINER
RIMELL, SAMUEL G
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
11/02/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Pontiac Coil, Inc.
Appellant
____________

Appeal 2010-011805
Reexamination Control 90/008,275
Patent 6,557,686
Technology Center 3900
____________

Before, SALLY C. MEDLEY, SCOTT R. BOALICK and STEPHEN SIU,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Pontiac Coil, Inc. (“Pontiac”), the owner of the patent under
reexamination, appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306. We AFFIRM-IN-PART.
BACKGROUND
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Ellen E. Fielitz (Request for Ex Parte
Reexamination, filed 2 Oct. 2006). Patent 6,557,686 issued with 16 claims.
Pontiac added claim 17.
Pontiac’s invention is related to an electro-magnetic actuator for
actuating and deactuating a viscous fluid clutch associated with an engine
cooling fan. Col. 5, ll. 10-18. Referring to figure 3 below, the electro-
magnetic actuator [110] includes a shaft [116], a nut [118], a bearing [122],
an electrical coil [124] and a ferromagnetic can [126] having a peripheral
surface [146], [152], [154], [156] that partitions the coil [124] inside the can
[126] and the bearing [122] outside of the can [126]. Col. 3, ll. 41-col. 4, l.
30.
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Pontiac’s figure 3 is below:

Figure 3 depicts an electro-magnetic actuator.
Claim 17 is representative:
17. An electromagnetic actuator for controlling a clutch in
an automotive vehicle comprising as a unitary assembly:
a shaft having a first end portion and second end portion;
a nut having an inner peripheral surface and an outer
peripheral surface, said inner peripheral surface coupled with
said first end portion of said shaft;
a bearing disposed around the second end said portion of
said shaft for rotatably supporting said shaft;
a molded housing, said bearing being insert molded into said
housing such that the housing supports said shaft second end;
an electrical coil disposed around said shaft between said nut
and said bearing for receiving electrical current and producing
magnetic flux; and
a ferromagnetic can disposed around said shaft and within
said housing and having a peripheral surface extending between
said shaft and said outer peripheral surface of said nut for
establishing a path for magnetic flux flow therebetween, said
peripheral surface of said can interposed between said electrical
coil and said bearing partitioning said electrical coil inside said
can with said bearing outside of the interior volume of said can.
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The Examiner relies on the following prior art references:
Admitted Prior Art (“APA”)
Dieckermann 4,106,602 Aug. 15, 1978
Lear 2,481,028 Sep. 06, 1949

Pontiac appeals the following rejections:
claim 17 under 35 U.S.C. § 112, 1st paragraph;
claim 17 under 35 U.S.C. § 112, 2nd paragraph;
claims 1-6, 8-14 and 16 under 35 U.S.C. § 103(a) over the APA
and Lear;
claims 7, 15 and 17 under 35 U.S.C. § 103(a) over the APA, Lear
and Dieckermann.
ISSUES
1. Does the claim recitation of a “unitary assembly” render claim 17
indefinite and is “unitary assembly” described in the specification in
accordance with the written description requirement?
2. Did the Examiner incorrectly determine that the claimed invention
would have been obvious over the APA and Lear and improperly
discount Pontiac’s evidence of secondary considerations?
3. Did the Examiner incorrectly determine that the claimed invention
would have been obvious over the APA, Lear and Dieckermann?
FINDINGS OF FACT
1. Unitary is defined as: (1) “of or relating to a unit”; and (2) “having the
character of a unit”. Merriam-Webster Online Dictionary, available at
http://www.merriam-webster.com/dictionary/unitary (last visited Oct.
20, 2010).
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2. Unit is defined as: (1) “a single thing, person, or group that is a
constituent of a whole”; and (2) “a piece or complex of apparatus
serving to perform one particular function”. Merriam-Webster Online
Dictionary, available at http://www.merriam-
webster.com/dictionary/unit (last visited Oct. 20, 2010).
3. Assembly is defined as: (1) “the fitting together of manufactured parts
into a complete machine, structure, or unit of a machine”; and (2) “a
collection of parts so assembled”. Merriam-Webster Online
Dictionary, available at http://www.merriam-
webster.com/dictionary/assembly (last visited Oct. 20, 2010).
Admitted Prior Art (“APA”)
4. The APA describes, referring to Pontiac’s figure 1 below [numbers
from figure 1 inserted], an electro-magnetic actuator [10] including a
housing [14], a rotary shaft [16], a nut [18], an electrical coil [24], a
ferromagnetic can [26] and a bearing [22] disposed around the shaft
[16] and adapted to rotatably support the shaft [16]. Pontiac col. 1, ll.
28-33; col. 1, ll. 54-56.
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Pontiac’s figure 1 is below:

Figure 1 depicts the APA electro-magnetic actuator.
5. The ferromagnetic can [26] has a peripheral surface [46] that encases
both the electrical coil [24] and the bearing [22] inside the can [26].
Pontiac col. 1, ll. 60-67.
Pontiac’s Patent
6. Pontiac discloses that the APA actuator has several shortcomings, one
of which is that the magnetic flux flow loop is relatively long, which
reduces the strength of the clutch actuation force and overall electrical
efficiency of the actuator. Col. 2, ll. 41-46.
7. Pontiac discloses, referring to Pontiac’s figure 3 above [numbers from
figure 3 inserted] an electro-magnetic actuator [110] for actuating or
deactuating a clutch [112] associated with an engine cooling fan
including a housing [114], a rotary shaft [116], a nut [118], a bushing
[120], a bearing [122], a coil [124] and ferromagnetic can [126] which
are fitted together. Col. 3, ll. 34-46; col. 5, ll. 10-18; fig. 3.
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8. The difference between Pontiac’s disclosed actuator and the APA
actuator is that Pontiac’s bearing [122] is located outside of the
ferromagnetic can [126] while the APA bearing [22] is located within
the ferromagnetic can [26]. Figs. 1, 3.
Lear
9. Lear describes, referring to figure 1 below [numbers from figure 1
inserted], an electromagnetic clutch including a motor housing [22], a
motor armature shaft [11], and a clutch housing [34] that includes a
magnetic tubular housing [35], a magnetic annular plate [36], and a
magnetizing winding [38] supported on a cylindrical magnetic
winding support [37]. Col. 2, ll. 8-48.
Lear’s figure 1 is below:

Figure 1 depicts an axially engaging electromagnetic clutch.
10. A bearing [21] supports the shaft [11] in the motor housing [22] which
is located outside of the confines of the magnetic housing [35] and
magnetic annular plate [36]. Col. 2, ll. 20-21.
11. A magnetic clutch driving member [14], including a disk [23] is
secured for rotation with the shaft [11] and arranged to cooperate with
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a magnetic clutch driven member [24] including a disk [26]. Col. 2,
ll. 13-19, 24-26.
12. The driven member [24] is normally biased away from the driving
member [14] by a coil spring [41]. Col. 2, ll. 49-53.
13. The magnetic housing [35] surrounds the disks [23], [26] of the
driving member [14] and driven member [24] and a magnetic annular
plate [36] engages the inner end of housing [35]. Col. 2, ll. 36-42.
14. When the magnetic winding [38] is energized, a magnetic circuit is
established drawing coil spring biased driven member [24] into
frictional and magnetic coaction with driving member [14]. Col. 3, ll.
22-32.
Dieckermann
15. Dieckermann describes, referring to figure 1 below [numbers from
figure 1 inserted], a free-wheel clutch [1] having inner [3] and outer
[2] clutch members with gripping elements [6] located therebetween
and retained in specially positioned segmental cage members [7].
Col. 3, ll. 48-61.
Dieckermann’s figure 1 is below:

Figure 1 depicts a free-wheel clutch.
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16. It is well-known to provide annular disc bearings to aid in maintaining
concentricity between inner and outer clutch members, but the use of
annular disk bearings for large diameter clutches is disadvantageous
because a considerable amount of bearing material is wasted during
manufacturing. Col. 1, ll. 9-18.
17. To overcome the disadvantage of wasting bearing material and reduce
the cost of centering aids it is known in the prior art to insert molded
bearing blocks in the cage in positions similar to those occupied by
the gripper elements. Col. 1, ll. 19-22, 24-25.
ANALYSIS
Claim 17
Independent claim 17 recites “a unitary assembly”. The Examiner
rejects claim 17 as indefinite under 35 U.S.C. §112, 2nd paragraph, finding
that “it is unclear how the invention as disclosed can be considered ‘unitary’
(i.e., one single piece) since it is formed from multiple distinct components.”
Ans. 3. The Examiner also rejects claim 17 for failing to comply with the
written description requirement under 35 U.S.C. § 112, 1st paragraph,
finding that “unitary assembly” is not supported by the written description
because the original disclosure does not set forth forming the invention as
one single piece. Ans. 4.
Pontiac argues that the meaning the Examiner accorded “unitary
assembly” ignores the word “assembly” and only considers the word
“unitary”. Br. 5.
Contrary to the Examiner’s findings, the meaning of “unitary
assembly” is not limited to one single piece. An inventor is free to be their
own lexicographer, but must set out their definition within the patent
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disclosure. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1995). Absent
claim language carrying a narrow meaning, the broadest reasonable meaning
applies and claims should only be limited based on the specification when
the specification expressly disclaims the broader definition. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (citation omitted). Pontiac’s Specification
does not provide an express definition for “unitary assembly.” Therefore,
the claim terms are given the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary skill in
the art. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also in re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
ordinary meaning of claim terms may be established by dictionary
definitions. CCS Fitness Inc. v. Brunswick Corp., 288 F.3d 1359, 1366
(Fed. Cir. 2002).
Based on the dictionary definitions of “unitary,” “unit” and
“assembly,” the broadest reasonable meaning of “unitary assembly” includes
(1) the fitting together of a group of manufactured parts into a unit of a
machine and (2) a collection of assembled parts serving to perform one
particular function. Claim 17 is neither indefinite nor does it fail to comply
with the written description requirement because Pontiac discloses a unitary
assembly that includes a group of manufactured parts (i.e., shaft [116], nut
[118], bushing [120], bearing [122], coil [124] and ferromagnetic can [126])
that are fit together into a unit and perform the particular function of electro-
magnetically actuating the clutch. Col. 3, ll. 34-46; col. 5, ll. 10-18; fig. 3.
For all these reasons we do not sustain the rejections of claim 17 as
failing to particularly point out and distinctly claim the invention and for
failing to meet the written description requirement.
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Obviousness of Claims 1-6, 8-14 and 16
Claim 1 recites: “an electro-magnetic actuator . . . comprising: a
shaft . . . a bearing disposed around . . . said shaft . . . ; an electrical coil
disposed around said shaft . . . ; and a ferromagnetic can disposed around
said shaft having a peripheral surface . . . interposed between said electrical
coil and said bearing positioning said electrical coil inside said can and said
bearing outside said can.”
Scope and content of the prior art
The Examiner finds that the APA describes an electro-magnetic
actuator [10] including a shaft [16]; a nut [18]; a bearing [22] disposed
around the shaft [16]; an electrical coil [24] disposed around the shaft [16]
between the nut [18] and bearing [22]; and a ferromagnetic can [26]
disposed around the shaft [16] and having a peripheral surface [46]
extending between the shaft [16] and the peripheral surface of the nut [18].
Ans. 4-6, citing Pontiac fig. 1; col. 1, ll. 15-16, 29-30, 38-39, 42-44, 55-65.
The Examiner finds that Lear describes a device in which the peripheral
surface of the can (i.e., magnetic housing [35]) has a longitudinal end (i.e.,
magnetic annular plate [36]) interposed between the coil [38] (i.e.,
magnetizing winding) and the bearing [31] which partitions the coil [38]
inside the can and the bearing [31] outside the can. Ans. 6, citing Lear fig.
1; col. 2, ll. 36-37.
Pontiac argues that Lear is non-analogous art. Specifically Pontiac
argues that the inventor’s field of endeavor is the improvement of a small,
unitary electromagnetic actuator for an automotive clutch while Lear’s field
of endeavor is aggregative mechanical systems for the transmission of rotary
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energy from an electric motor to a driven load. Br. 8, citing Kalia Dec. ¶¶ 3-
5.
Pontiac’s argument that the Lear device is not related to Pontiac’s
field of endeavor is unpersuasive since there is no steadfast requirement for
the prior art to be in the same field of endeavor in order to be utilized in a 35
U.S.C. § 103 rejection. Rather “[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field of endeavor or a different one. If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)
(emphasis added). The Court further instructed that if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve a similar device in the same way, using the
technique is obvious unless its actual application is beyond that person’s
skill. Id.
In KSR, the Court instructed that the person of ordinary skill in the art
can look to other areas of technology to come up with a solution unless the
application is beyond that person’s skill. Based on the record before us,
Pontiac has not sufficiently demonstrated that the application of Lear’s
teachings related to an electromagnetic clutch to the APA’s electro-magnetic
actuator would be beyond the ordinary person’s skill. Neither Pontiac, nor
paragraphs 3-5 of the Kalia Declaration (“Kalia Dec.”), sufficiently address
whether applying the teachings of Lear’s electromagnetic clutch to the APA
electro-magnetic actuator would have been beyond the skill level of one with
ordinary skill in the art.
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Even considering Pontiac’s argument that Lear is not in the same field
of the inventor’s endeavor, we are not persuaded by the argument. Pontiac’s
patent discloses under the heading “Field of Invention” that the invention is
related to an electro-magnetic actuator having a shortened magnetic flux
flow loop. Col. 1, ll. 9-12. Contrary to Pontiac’s argument, Pontiac’s patent
does not explicitly disclose the field of endeavor as “the improvement to
unitary actuator devices suitable for use in automotive accessory
applications”. Br. 9, citing in re Bigio 381 F.3d 1320 (Fed. Cir 2004).
Pontiac’s characterization of the field of endeavor is too narrow.
A reference is within the same field of an inventor’s endeavor if it has
essentially the same function and structure. Bigio, 381 F.3d at 1325, citing
In re Deminski, 796 F.2d 436, 442 (Fed Cir. 1986). Pontiac’s disclosed
electro-magnetic actuator [110] has a structure that includes a coil [124]
around a shaft [116] inside a ferromagnetic can [126] and a bearing [122]
disposed around the shaft [116] and located outside of the can [126] which
functions to pull a spring-loaded armature plate [142] inward when the coil
[124] is energized. Col. 4, ll. 25-27, 31-32; Col. 4, l. 62-col. 5, l. 4.
Therefore, the appropriate field of endeavor, to the extent it is relevant, is
electro-magnetic structures which include a coil that forms a ring around a
shaft inside a magnetic can and functions to pull a spring-loaded plate
inward when the coil is energized.
Lear’s device is within the same field of the inventor’s endeavor
because Lear describes an electromagnetic structure that includes a portion
which has essentially the same function and structure as Pontiac’s electro-
magnetic actuator. Referring to Lear’s figure 1 above, Lear describes a
portion of an electromagnetic clutch that includes a winding [38] (i.e., a coil)
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around a rotary shaft [11] that is enclosed by magnetic surfaces [13], [14],
[23] [35], [36] (i.e., a magnetic can) which functions to draw a spring-loaded
[41] member [24] (i.e., a plate) inward into frictional and magnetic co-action
with member [14] when the winding [38] is energized. Col. 2, ll. 13-23, 36-
45; col. 3, ll. 22-32.
We have considered those paragraphs of the Kalia Declaration to
which Pontiac directs attention, but find such evidence lacking. Kalia does
not provide a credible factual basis for the assertions made. For example,
Kalia characterizes Pontiac’s disclosed invention and Lear’s described
device and testifies that “[i]n my experience the device of the Reexamination
Patent and the torque transmitting systems of the Lear . . . patent[] are not in
the same field of endeavor . . . .” Kalia Dec. ¶5. Kalia goes on to testify that
as set forth in an attached report, “an experienced engineer skilled in the art
of electromagnetic devices would not be likely to perform research in
transmission systems of the type represented by the Lear . . . patent[] if he or
she were to be looking for ways to optimize the APA device . . . .” Id.
Kalia’s testimony is insufficient because it is conclusory. Kalia does
not explain why Pontiac’s patented device and Lear’s device are not in the
same field of endeavor or why an experienced engineer would not look to
Lear. Moreover, the attached “Technical Report” (“Tech. Report”)
describes clutches as so different from actuators that “an experienced
engineer would likely not search under the category clutches if he is trying
to look up info in order to optimize the original actuator.” Tech. Report p. 1,
¶ 3. The assertion is not supported by a sufficient factual basis. There is not
an explanation for why an experienced engineer would not look to clutches
or why clutches are so different from actuators. As explained above, we find
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that a portion of Lear’s electromagnetic clutch is structurally and
functionally similar to the APA electro-magnetic actuator. We further note
that the claimed invention recites both an actuator and a clutch in the
preamble of claim 1. Even Pontiac, in its brief, seems to suggest that the
two are related (“the recitation of the clutch clearly infers the type of
actuator embodied by the claims.”). Br. 9, ¶ 4. Therefore, clutches and
actuators would appear to be related.
The Board has broad discretion to accord little weight to declarations
expressing an opinion as to fact when there is a lack of factual support for
the opinions expressed. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004). For the reasons provided, we accord little weight to
the Kalia Declaration.
Differences Between the Prior Art and the Claimed Invention
The Examiner finds that the APA describes all of the claim limitations
with the exception of the peripheral surface of the ferromagnetic can
interposed between the electrical coil and the bearing positioning the
electrical coil inside the can and the bearing outside the can. Ans. 4-6.
Level of Ordinary Skill in the Art
Neither Pontiac nor the Examiner has addressed the level of ordinary
skill in the art. A “person of ordinary skill in the art is a hypothetical person
who is presumed to know the relevant prior art.” In re GPAC, 57 F.3d 1573,
1579 (Fed. Cir. 1995) (quoting Custom Accessories, Inc. v. Jeffrey-Allan
Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). Accordingly, we consider
the cited prior art representative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).
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Prima Facie Case
In view of the underlying factual inquiries discussed before, we
review the prima facie case of obviousness. The Examiner determined that
it would have been obvious to one with ordinary skill in the art at the time
the invention was made to modify the APA to partition the bearings from the
ferromagnetic can so as to reduce magnetic air gaps in the flux path, which
reduces reluctance in the flux path. Ans. 6, citing Lear col. 1, ll. 28-30, 36-
39, 42-43.
Pontiac argues that the invention would not have been obvious
because Lear does not teach how to improve the APA device to reach the
claimed invention and that the APA device was not ready for or in need of
improvement. Br. 7-10. In support of its argument that the APA was not
ready for improvement, Pontiac directs attention to the Kalia Declaration.
Br. 7, 10. Pontiac’s arguments and supporting evidence are misplaced
because Pontiac does not direct us to persuasive authority demonstrating that
the applied prior art must be deemed ready for improvement in order to
properly support a prima facie case of obviousness. Rather, the Court in
KSR set forth that the question to be answered is: “whether the improvement
is more than the predictable use of prior art elements according to their
established functions”, and acknowledged that “[f]ollowing these principles
may be difficult if the claimed subject matter involves more than . . . the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. at 401. Moreover, as pointed out by the Examiner and
contrary to Pontiac’s arguments and evidence, Pontiac’s disclosure indicates
that the APA actuator has several shortcomings and therefore would appear
to be “ready for improvement.” Col. 2, ll. 41-46.
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Pontiac’s argument that Lear does not teach how to improve the APA
device and the Declarations of Kalia and Moody2 (“Moody Declaration” or
“Moody Dec.”) to which Pontiac directs attention in support of its arguments
are also misplaced. Br. 8-10. Kalia and Moody’s testimony that Lear does
not teach how to redesign the APA to achieve Pontiac’s invention (Moody
Dec. ¶ 6; Kalia Dec. ¶ 6; Tech. Report p. 1, ¶ 6-p. 2, ¶ 3) is of no
consequence because it is not necessary to find precise teachings directed to
the specific subject matter claimed, because inferences and creative steps
that a person of ordinary skill in the art would employ can be taken into
account. KSR, 550 U.S. at 418. “A person of ordinary skill in the art is also
a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
Lear implicitly teaches a structure that functions as an electro-
magnetic actuator which has a relatively short magnetic flux flow path since
the magnetic surfaces [13], [14], [23], [35], [36] that enclose the winding
[38] do not enclose any unnecessary or extraneous components. Lear further
teaches that some of the objects of the invention are to provide a device with
improved design, increased efficiency and simplified construction. Col. 1,
ll. 49-50. At the time the invention was made, one with ordinary skill in the
art would have readily appreciated that Lear’s structure resulting in a
relatively short magnetic flux flow path by excluding extraneous
components would be beneficial in other electro-magnetic structures to
provide a device with improved design, increased efficiency and simplified
construction. “[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve

2 Refers to the Declaration of John Moody first filed 28 Aug. 2007.

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similar devices in the same way, using the technique is obvious unless its
actual application is beyond that person's skill.” KSR, 550 U.S. at 417. It
would have been obvious to one with ordinary skill in the art at the time the
invention was made to modify the APA device to exclude the bearings from
inside of the ferromagnetic can in order to have a shorter flux flow path and
thereby provide a device with improved design, increased efficiency and
simplified construction. The portions of the Moody and Kalia Declarations
to which Pontiac refers in its Brief have been considered, but are of
insufficient weight to demonstrate that the application of Lear’s teachings to
the APA electro-magnetic actuator would have been beyond the skill level of
one with ordinary skill in the art.
Pontiac’s additional argument that the APA and Lear do not address
Pontiac’s problem and solution of bearing placement (Br. 10) is
unpersuasive because one of ordinary skill in the art need not see the
identical problem addressed in a prior art reference to be motivated to apply
its teachings. Cross Medical Products, Inc. v. Medtronic Sofamor Danek,
Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005).
Similarly, Pontiac’s argument regarding how the APA bearing would
be remounted once it is removed from the can (Br. 10) is unpersuasive.
Kalia’s testimony regarding Lear’s attachment of the bearing to the shaft
(Kalia Dec. ¶ 6; Tech. Report p. 2, ¶¶ 1-2) is misplaced. The Examiner need
not and does not rely on Lear for teaching the attachment of the bearing to
the shaft. Ans. 6. Rather, the Examiner relies on the APA for describing the
attachment of the bearing [22] to the shaft [16] (Ans. 5; col. 1, ll. 54-56) and
relies upon Lear for teaching partitioning (i.e., separating) the coil, which is
inside the can, from the bearing, which is outside the can (Ans. 6).
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Last, Pontiac argues that the Examiner determined that the claimed
invention is obvious only by hindsight reference to Pontiac’s patent. Br. 10.
We recognize that any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but is proper so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from disclosure. In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971). Here, the determination of obviousness was based on
Lear’s implicit teaching of a structure which has a relatively short magnetic
flux flow due to the exclusion of unnecessary components from the magnetic
enclosure and the recognition by one with ordinary skill in the art that Lear’s
structure provides a device with improved design, increased efficiency and
simplified construction which could be used to improve similar devices.
Pontiac does not otherwise argue that the determination of obviousness was
based on knowledge gained only from Pontiac’s patent disclosure.
For all these reasons, the Examiner did not incorrectly determine that
claims 1-6, 8-14 and 16 are prima facie obvious over the APA and Lear.
Since Pontiac directs us to arguments and evidence of secondary
considerations to rebut the prima facie case for obviousness, we now turn to
consider the arguments and evidence.
Secondary Considerations
Secondary considerations may include any of the following: long-felt
but unsolved needs, failure of others, unexpected results, commercial
success, copying, licensing, and praise. Pontiac argues commercial success.
Br. 7-8. In support of Pontiac’s arguments that the claimed invention would
not have been obvious based on secondary considerations, Pontiac relies on
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a second Declaration made by John Moody3 (“Supplemental Moody
Declaration” or “Supp. Moody Dec.”). Br. 7-8.
We recognize that evidence of secondary considerations must always
be considered en route to the determination of obviousness, but its existence
alone does not control the conclusion of obviousness. Richardson-Vicks v.
Upjohn Co., 122 F.3d 1476, 1483 (Fed. Cir. 1997). The weight given to
evidence of secondary considerations is dependent upon whether there is a
nexus between the merits of the claimed invention and the evidence offered.
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983).
The claimed invention, as illustrated by claim 1, is an electro-
magnetic actuator including a shaft, a bearing, an electrical coil, and a
ferromagnetic can which is disposed between the electrical coil and the
bearing thereby partitioning the coil inside the can and the bearing outside of
the can.
For the reasons that follow, the evidence of nonobviousness that
Pontiac directs us to is not entitled to substantial weight because the
evidence is not commensurate in scope with the invention claimed.
Pontiac argues that its invention achieved commercial success and
directs attention to column 4, lines 27-28 and column 5, lines 22-25 of its
patent disclosure and paragraphs 10-12 of the Supplemental Moody
Declaration in support of its arguments. Br. 7-8. Pontiac argues that the
APA device was deemed commercially satisfactory until the present
invention completely replaced it. Br. 7. Pontiac also argues that the
immediate and substantial commercial success was due to shortened flux

3 Refers to the Supplemental Declaration of John Moody first filed 19 Nov.
2008.
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path enabling the device to be either more powerful or lighter and smaller in
size along with the overmolding construction that makes the device less
expensive. Br. 7-8. Paragraphs 10-12 of the Supplemental Moody
Declaration are as follows:
10. I am familiar with the APA. It is an actuator
manufactured prior to 2000 by a German company named
Swoboda and sold to Behr American for use in controlling the
operation of a viscous clutch in an automotive cooling system.
11. In or immediately prior to the year 2000, Pontiac Coil
was given the opportunity to bid against Swoboda for the Behr
American actuator business. The inventors Budd, Hojnacki and
Dolinshek, all of who were personally known to me, were
coinventors in design of the device which is patented in the
‘686 by patent and, as a company, we submitted their new
design to our prospective customer Behr American. Based on
the improved performance and higher efficiency of the ‘686
patent design, Pontiac Coil was awarded 100% of the market
for the Behr actuator and Pontiac Coil became the sole supplier
of the actuator device patented in the ‘686 by patent used by
Behr.
12. From the facts, it is clear that the commercial success of the
‘686 device is the direct result of the patented features.

As an initial matter, Pontiac’s arguments that commercial success is
due to the “shortened flux path” and “overmolding construction” are not
commensurate in scope with the claim limitations. Rather, Pontiac’s claims
recite “for establishing a path for magnetic flux flow”, “said bearing is an
insert molded bearing fixed inside the actuator”, and “a molded housing,
said being insert molded into said housing such that the housing supports
said shaft second end . . . .”
The evidence to which Pontiac directs us in support of its arguments is
not factually commensurate in scope with the invention claimed by Pontiac
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and therefore insufficient to show that the claimed invention achieved
commercial success. Although Moody concludes that it is clear that the
commercial success of the ‘686 device is the direct result of the patented
features (Supp. Moody Dec. ¶ 12), the evidence does not clearly connect the
alleged commercial success to the merits of the claimed invention. Pontiac’s
invention is broadly characterized as, for example, the “design of the device
which is patented in the ‘686 by patent”, “the ‘686 patent design” and “the
‘686 device”. Supp. Moody Dec. ¶¶ 11-12. These broad and general
characterizations do not provide a sufficient connection between the features
of the claimed invention (i.e., an electro-magnetic actuator including a shaft;
a bearing, an electrical coil, and a ferromagnetic can in which a peripheral
surface of the can is disposed between the electrical coil and the bearing
thereby partitioning the coil inside the can and the bearing outside of the
can) to the alleged commercial success. In addition, Moody’s statement that
commercial success is due to “the improved performance and higher
efficiency of the ‘686 patent design” (Supp. Moody Dec. ¶ 11) is insufficient
to show that the improved performance and higher efficiency is due to the
merits of the claimed invention rather than due to outside considerations
such as the choice in materials used for construction. For all these reasons,
Pontiac does not meet its burden of showing a nexus.
In any event, even if Pontiac had shown a nexus between the evidence
of commercial success and the claimed invention, which it did not, Pontiac’s
evidence of commercial success is also insufficient because it does not
provide an appropriate context for the Behr actuator market. Even assuming
Pontiac Coil was the sole provider of actuators for Behr (Supp. Moody Dec.
¶ 11) Behr’s share in the overall market for electro-magnetic actuators for
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automotive cooling fans is unknown. Furthermore, based on the evidence, it
is unknown whether Behr’s market share increased after Pontiac became its
sole supplier of actuators. Without the appropriate context, the fact that a
single supplier awarded 100% of its market to a particular producer is of
little probative value, when that supplier’s share of the overall market is
unknown.
Conclusion of Obviousness/Non-Obviousness
We have carefully weighed and evaluated the evidence supporting
obviousness and the objective evidence of non-obviousness provided by
Pontiac. Upon careful consideration of the evidence as a whole, and
weighing it anew, the evidence supporting the conclusion of obviousness
outweighs the evidence of non-obviousness. For these reasons, we sustain
the rejection of claims 1-6, 8-14 and 16 as obvious over the APA and Lear.
Claims 7, 15 and 17
Claim 7 is dependent on claim 1 and is representative of the group.
37 C.F.R. § 41.37(c)(1)(vii). Claim 7 recites: “said bearing is an insert
molded bearing . . . .”
The Examiner finds that APA and Lear do not describe a bearing that
is an insert molded bearing. Ans. 13. The Examiner finds that Dieckermann
teaches that insert molded bearings in clutches are known in the art and
directs attention to column 1, lines 19-24 of Dieckermann’s description.
Ans. 13. Dieckermann describes that in order to reduce the cost of centering
aids, it is known in the prior art to insert molded bearing blocks in positions
similar to those occupied by gripper elements. Col. 1, ll. 19-24. The
Examiner finds that the combination of APA and Lear places the bearings
and supporting bearing blocks outside the ferromagnetic can [26], but inside
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the actuator housing [14]. Ans. 13. The Examiner determined that, based on
Dieckermann’s teachings, it would have been obvious to one of ordinary
skill in the art to modify the APA and Lear device to insert mold the bearing
blocks supporting the bearings within the actuator housing. Ans. 14. The
Examiner determined that the combination reduces the cost of centering aids
(i.e., the bearing blocks and bearing construction) in a manner known in the
prior art. Ans. 14.
Pontiac’s arguments that there is insufficient evidence to support the
Examiner’s determination that the combination of APA, Lear and
Dieckermann would have been obvious (Br. 12-13) are persuasive. The
examiner bears the initial burden of presenting a prima facie case of
obviousness and must supply the requisite factual basis to support the
conclusion of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Contrary to the
Examiner’s findings, Dieckermann does not describe that the reduced cost of
centering aids is due to the use of insert molded bearings. Instead,
Dieckermann describes that for the purpose of reducing the cost of centering
aids, it is known to insert (i.e., place) molded bearing blocks in spaced apart
positions in the annular space between inner and outer clutch members as a
centering aid instead of using annular disk bearings, the manufacture of
which wastes a large amount of bearing material. Col. 1, ll. 9-25.
The Examiner has not sufficiently provided an articulated reasoning
with some rational underpinning to support the conclusion that the claimed
invention would have been obvious. In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006). Based on Dieckermann’s teachings, it is not readily apparent
why one with ordinary skill in the art at the time of the invention would
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modify the APA and Lear device to use insert molded bearings within the
actuator housing. Dieckermann’s teaching that placing spaced apart molded
bearing blocks in the annular space between the inner and outer clutch
members instead of an annular disk bearing to reduce cost is immaterial to
an insert molded bearing or to insert molded bearing blocks that support
bearings within an actuator housing.
For all these reasons, we do not sustain the rejection of claims 7, 15
and 17 as obvious over APA, Lear and Dieckermann.
DECISION
We REVERSE the rejection of claim 17 under 35 U.S.C. § 112, 1st
paragraph.
We REVERSE the rejection of claim 17 under 35 U.S.C. § 112, 2nd
paragraph.
We AFFIRM the rejection of claims 1-6, 8-14 and 16 under
35 U.S.C. § 103(a) as unpatentable over the APA and Lear.
We REVERSE the rejection of claims 7, 15 and 17 under
35 U.S.C. § 103(a) as unpatentable over the APA, Lear and Dieckermann.
ORDER
AFFIRMED-IN-PART

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Thomas N. Young
YOUNG & BASILE PC
3001 West Big Beaver Road, Suite 624
Troy, MI 48084

Third Party Requester:

Ellen Fielitz
Volpe and Koenig, P.C.
United Plaza, Suite 1600
30 South 17th Street
Philadelphia, PA 19103-4009

yrt