Ex Parte Bena et al

Board of Patent Appeals and Interferences

May 4, 2012

11714935 (B.P.A.I. May. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MAIRE-PIERRE BENA,
MICKAEL LEBOURGEOIS, and
LAURENT ROBIN

Appeal 2010-0034351
Application 11/714,935
Technology Center 2800
____________________

Before JEAN R. HOMERE, GREGORY J. GONSALVES, and ANDREW
J. DILLON, Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is ArvinMeritor Light Vehicle Systems - France.
(App. Br. 1.)
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Application 11/714,935

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-18. (App. Br. 2.) We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
Appellants’ Invention
Appellants invented a printed circuit board (PCB) for an electric
motor (Fig. 1). In particular, the PCB (10) includes an upper surface (12)
containing electrical components (24) arranged thereupon, and a lower
surface (14) on the opposite side thereof. The two opposite sides of the PCB
have extended therebetween a plurality of outer lateral faces (16, 18, 20, 22),
one of which being provided with a metallization (26) connected to a ground
conductor (32) on the PCB. ( Spec. ¶¶ [0010]-[0012].)

Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A printed circuit board (PCB) for an electric motor
comprising:

two opposite main surfaces wherein at least one of the
two opposite main surfaces carries electrical components; and

a plurality of outer end faces that extend between the two
opposite main surfaces, one of the plurality of outer end faces
being provided with a metallization that is connected to a
ground conductor on the PCB.
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Application 11/714,935

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Prior Art Relied Upon
Kukkonen US 5,044,963 Sep. 3, 1991
Patyk US 5,932,942 Aug. 3, 1999
Bagung US 6,201,710 B1 Mar. 13, 2001
Hamlet US 6,285,548 B1 Sep. 4, 2001

Rejections on Appeal
The Examiner rejects claims the claims on appeal as follows:
1. Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § 102 (b) as being
anticipated by Hamlet.
2. Claims 1 and 3-5 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Kukkonen.
3. Claims 6, 8-12, 14, 15, 17, and 18 stand rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over the combination of Patyk and
Kukkonen.
4. Claims 7, 13, and 16 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over the combination of Patyk, Kukkonen, and Bagung.
ANALYSIS
We consider Appellants’ arguments seriatim as they are presented in
the principal Brief, pages 3-13
Representative Claim 1
Dispositive Issue 1: Have Appellants shown that the Examiner erred in
finding that Hamlet’s disclosure describes a PCB for an electric motor
having an outer face being provided with a metallization, as recited in
independent claim 1?
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Hamlet
Appellants argue that Hamlet does not anticipate claim 1 because the
disclosed PCB is not used for an electric motor, nor does it include a face
plate with a materialization (i.e. a conductive layer of material), as required
by the claim. (App. Br. 3-5, Reply Br. 2-3.) In response, the Examiner finds
that because the claimed recitation (the PCB is used for an electric motor) is
a statement of intended use, which is held in the preamble of the claim, it
cannot be properly relied upon distinguish the claim over Hamlet. Further,
the Examiner finds that because Hamlet discloses a conductive metallic
layer that is applied onto the PCB, Hamlet’s disclosure describes a PCB that
includes a metallization. (Ans. 8.)
Based upon our review of the record, we agree with the Examiner’s
underlying factual findings and ultimate determination of anticipation
regarding claim 1. First, we find that Hamlet’s disclosure of a PCB (42)
being extended between a plurality of face plates (20), each accepting a
metallic seal (114) for engaging the face plate to the PCB via a groove (112)
on the right side thereof (Fig. 2, col. 5, ll. 6-19) describes an end surface of a
PCB being a provided with a metallization.
Second, we agree with the Examiner that the recitation a PCB ‘for an
electric motor’ is a mere statement of intended use. Our reviewing Court
has held that a statement of intended use in an apparatus claim cannot
distinguish over a prior art apparatus that discloses all the recited limitations
and is capable of performing the recited function. See In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). We also note that “[a]n intended use or
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purpose usually will not limit the scope of the claim because such statements
usually do no more than define a context in which the invention operates.”
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003). Although “[s]uch statements often . . . appear
in the claim's preamble,” a statement of intended use or purpose can appear
elsewhere in a claim. In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987).
Even if we were to consider the statement of intended use, we find
that it is fully met by an equivalent prior art structure disclosed by Hamlet,
which appears to be capable of performing the recited function. In
particular, we find that Hamlet’s disclosed PCB is used in conjunction with
an electric fan (82). (Fig. 2.) Further, we have not found on the record
before us any evidence, nor have Appellants shown,2 that Hamlet’s PCB is
incapable of being used for an electric motor. Consequently, because
Hamlet’s PCB is structurally identical to that in the claimed invention, we
find that absent any evidence to the contrary, it is similarly capable of being
used for an electric motor. It follows that Appellants have not shown error
in the Examiner’s anticipation rejection of claim 1.

2 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Jung argues that the
Board gave improper deference to the examiner’s rejection by requiring
Jung to ‘identif[y] a reversible error’ by the examiner, which improperly
shifted the burden of proving patentability onto Jung. Decision at 11. This
is a hollow argument, because, as discussed above, the examiner established
a prima facie case of anticipation and the burden was properly shifted to
Jung to rebut it. . . . ‘[R]eversible error’ means that the applicant must
identify to the Board what the examiner did wrong . . . .”).

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As to claims 2 and 4, Appellants reiterate substantially the same
arguments raised for patentability of claim 1. (App. Br. 5, Reply Br. 3-4.)
We found those arguments unpersuasive for the same reasons set forth for
claim 1 above. Therefore claims 2 and 4 fall with claim 1. See 37 C.F.R. §
41.37(c)(1)(vii).
As to claim 5, Appellants argue that Hamlet does not describe that a
groove is formed in the PCB. (App. Br. 6, Reply BR. 4.) This argument is
unavailing because Hamlet’s disclosure of a groove (112) formed in the face
plate (20), which is affixed to the PSB (40) (col. 10-19) describes that the
PCB includes a groove when it forms a single unit with the face plate. It
follows that Appellants have not shown error in the rejection of claim 5.
Kukkonen
Appellants argue that that Kukkonen does not render claims 1, 3-5
unpatentable because the PCB disclosed therein is for transmitting radio
signals, and it could not be modified with additional electrical components
to be used for an electric motor. (App. Br. 6-7, Reply Br. 5.) We do not
agree with Appellants. As discussed above, we find that the recited use of
the PCB set forth in the preamble of the claim is a statement of intended use,
which cannot be properly relied upon to distinguish the claim over
Kukkonen. Further, we agree with the Examiner that the proposed
modification of Kukkonen’s PCB would have been obvious to the ordinarily
skilled artisan because it would only require routine skills to add electrical
components to the PCB in order to use it for an electrical motor. It follows
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that Appellants have not shown error in the Examiner’s rejection of claims 1,
3-5.
Representative Claim 6
Patyk and Kukkonen
Dispositive Issue 2: Have Appellants shown that the Examiner erred in
finding that the combined disclosures of Patyk and Kukkonen teach or
suggest an electric motor having a PCB with an outer end face provided with
a metallization that is connected to a ground conductor on the PCB, as
recited in independent claim 6?
Appellants argue that Patyk’s disclosure of a DC motor with a PCB is
directed away from Kukkonen’s disclosure of a PCB for transmitting
frequency signals, and would not therefore be properly combinable as
suggested by the Examiner. Appellants reiterate that Kukkonen’s disclosure
has nothing to do with an electric motor that includes a metallization. (App.
Br. 7-8, Reply Br. 5-6.) In response, the Examiner finds that Kukkonen’s
disclosure of a PCB having and end face with a metallization connected to a
conductor would have complemented Patyk’s PCB to teach the disputed
limitations. (Ans. 5-6.) We agree with the Examiner. In particular, we find
that the ordinary skilled artisan would have found it obvious to modify
Patyk’s PCB by incorporating therein Kukkonen’s teaching of adding a
metallization to one of the outer ends of the PCB as a way to complete the
circuit. It follows that Appellants have not shown error in the Examiner’s
rejection of claim 6. Claims 11 and 12 (not argued separately) fall with
claim 6. See 37 C.F.R. § 41.37(c)(1)(vii).
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As to claim 8, Appellants argue that Patyk does not disclose a holder
into which the PCB can be slidingly inserted. (App. Br. 8-9, Reply Br. 6-7.)
This argument is not persuasive. We agree with the Examiner that Patyk’s
disclosure of a holder (20) into which the PCB (76) is slidingly inserted (Fig.
4) teaches the disputed limitations. Consequently, Appellants have not
shown error in this rejection.
As to claims 9 and 10, Appellants reiterate substantially the same
arguments raised for patentability of claims 1 and 6 respectively. (App. Br.
9.) We found those arguments unpersuasive for the same reasons set forth
for claims 1 and 6 above. Therefore claims 9 and 10 fall with claims 1 and 6,
respectively. See 37 C.F.R. § 41.37(c)(1)(vii).
Patyk, Kukkonen and Bagung
As to claims 7 and 13, Appellants argue that Patyk’s disclosure of a
fastened connection between a PCB and an end cap teaches away from
Bagung’s disclosure of a metallic housing formed as an elastic tab between
the PCB and the motor. (App. Br. 11-12, Reply Br. 10.) This argument is
unpersuasive. It has been held that “[w]hat the prior art teaches and whether
it teaches toward or away from the claimed invention … is a determination
of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d
1085, 1088 (Fed. Cir. 1995.) “A reference may be said to teach away when
a person of ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994.) Teaching an alternative or
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equivalent method, however, does not teach away from the use of a claimed
method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965.)
Contrary to Appellants’ position, we find that while the cited
description of Kukkonen discloses a fixed and rigid contact between the
motor ground contact and the PCB, Kukkonen does not discourage the use
of an elastic contact therebetween. Rather Kukkonen proposes another
alternative as opposed to criticism, a discredit, or otherwise a
discouragement from using the elastic tab. In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004.) Consequently, Appellants have not shown that
Kukkonen’s disclosure teaches away from the claimed invention. On this
record, we find Appellants have failed to show error in the Examiner’s
conclusion that the proffered combination renders claims 7 and 13
unpatentable.
As to claim 14, Appellants reiterate substantially the same arguments
raised for patentability of claims 8 and 13 above. (App. Br. 10, Reply Br. 8.)
We have already addressed those arguments, and we found them
unpersuasive. Consequently, Appellants have not shown error in the
rejection of claim 13 for the reasons set forth in our discussion of claims 8
and 13.
As to claim 15, Appellants argue that while Patyk discloses a housing
for a stator and a motor as well as a PCB inserted within an end cap, it does
not teach an electrical ground connection between the stator and the PCB
where the ground contact is held fixed by a housing. (App. Br. 10, Reply Br.
8-9.) In response, the Examiner indicated that the disputed limitations are
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taught by Bagung (Ans. 6, 9) without pointing out where in the reference
such limitations are particularly disclosed. In light of the Examiner’s failure
to respond to Appellants’ specific arguments, we pro forma reverse the
rejection of claim 15 as well as claims 16-18 depending therefrom.

DECISION
We affirm the Examiner’s rejection of claims 1-14. However, we
reverse the Examiner’s rejection of claims 15-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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