Ex Parte Borroni-Bird et al

Board of Patent Appeals and Interferences

Jan 22, 2009

10309786 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER E. BORRONI-BIRD, ADRIAN B. CHERNOFF,
MOHSEN D. SHABANA, ROBERT LOUIS VITALE, and BRUCE
EDWARD ZEMKE
____________

Appeal 2008-4636
Application 10/309,786
Technology Center 3600
____________

Decided: January 22, 2009
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and STEFAN
STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appeal 2008-4636
Application 10/309,786

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Christopher E. Borroni-Bird et al. (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision rejecting claims 1-10. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellants’ invention is drawn towards a wheel module 2 for a
vehicle including a rotatable wheel 4 controllably connected to a non-
rotating structural unit, i.e., motor housing 26 (¶ 15 and fig. 1) or second
stationary structural unit 80 (¶ 23 and fig. 3). The wheel module 2 further
includes chassis components, such as, a brake system 9 (disc 8, brake caliper
6, brake actuator 36, and brake hydraulic line 34) (¶¶ 15, 17 and fig. 1), a
suspension system 28 (¶ 16 and fig. 1), a steering system 44 (¶ 18 and fig.
2), and a motor 50 (¶ 19 and fig. 2). The wheel module 2 and the second
stationary structural unit 80 are operatively connected to the vehicle chassis
81 (¶ 24 and fig. 4). The chassis 81 includes a frame 82, a motor control
unit 108, a steering control unit 110, a suspension control unit 112, and a
braking control unit 114, each of which are operatively connected to the
frame 82 (¶ 24 and fig. 4). The chassis 81 further includes a wheel module
retention coupling 86, a control signal port 88, and a sensor connector port
90 (¶ 24 and fig. 4). The control signal connector port 88 is operatively
connected to the control signal receiver 38 (¶ 24 and fig. 4). In use, for
example, the braking control unit 114 transmits a control signal to the brake
system 9 through the brake control unit connector wire 98, the control signal
connector port 88, the control signal receiver 38, the brake system connector
wire 40, the brake system actuator 36, and the brake system hydraulic line
34 (¶ 25 and fig. 4).
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Claim 1 is representative of the claimed invention and reads as
follows:
1. A wheel module for a vehicle comprising:

at least one non-rotating structural unit;

a rotatable wheel controllably connected to said at least
one non-rotating structural unit;

a vehicle attachment interface operatively connected to
said at least one non-rotating structural unit, the vehicle
attachment interface including a load-bearing vehicle
retention coupling and a control signal receiver; and

chassis components including at least one of a brake
system, steering system, motor and suspension system
operatively connected to said at least one non-rotating
structural unit and to the wheel, and operatively
connected to the control signal receiver for controlling
the wheel in response to non-mechanical control signals
received through the control signal receiver.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Zetterström WO 00/38939 Jul. 6, 2000

The Appellants seek review of the Examiner’s rejections of claims 1-
10 under 35 U.S.C. § 103(a) as unpatentable over Zetterström.1

1 We refer herein to the Appeal Brief (“App. Br.”), filed September 1,
2006, the Reply Brief (“Reply Br.”), filed March 1, 2007, and the
Examiner’s Answer (“Ans.”), mailed January 3, 2007.
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Application 10/309,786

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THE ISSUE
Have the Appellants shown that the Examiner erred in concluding that
Zetterström discloses (a) a “control signal receiver” (as required by claims 1
and 4-8; (b) a “second non-rotating structural unit located axially inward of
said suspension system” (as required by claims 2 and 3); and (c) a “control
signal connector port” (as required by claims 9 and 10)?

SUMMARY OF DECISION

We AFFIRM-IN-PART.

FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 848 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Zetterström discloses an integrated wheel-suspension unit (wheel
module) for steering, braking, and driving of each individual wheel
(Page 2, ll. 25-27 and fig. 1) that does not require a conventional
combustion engine, gearbox, or any drive shaft connecting the
individual wheel with a propulsion device fitted to the chassis (Page 3,
ll. 27-31).
2. The advantage of Zetterström’s wheel-suspension system is that
mechanical connections are not required to be made at the factory,
thereby providing for a simple and cost-effective production process
(Page 3, ll. 31-33).
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3. Zetterström’s wheel-suspension system 1 includes a tire 3, a hub 4,
and a propulsion device, integrated into each wheel, having an electric
motor 9 with an armature 10 fixedly attached to an outer, stationary
ring 7, and a rotor 11 enclosed by the armature 10 and connected to
planetary gears 12 by way of rings 14 (Page 5, ll. 1 and 13-22; Page 6,
l. 1; and fig. 1).
4. Zetterström’s wheel-suspension system 1 further includes a braking
system, for each wheel, having a braking actuator 21 and a
displaceable braking rod 22 which abuts a pivoting member 23 that
forces a brake shoe 24 against the rotor 11 (Page 7, ll. 9-16 and fig. 1).
5. In use, the braking system of Zetterström’s wheel-suspension system
1 is activated by an actuator 21 (Page 7, ll. 14-16).
6. Zetterström further discloses a steering system for each wheel
including, two steering link arms 16 and 16’, each having an actuator
activated displaceable rod 17 that is rotationally connected to the
armature 10 via a pivoting joint 18 (Page 6, ll. 10, 22-24, and 27-28,
and figs. 1-2).
7. Zetterström’s steering system is attached to the body 19 through two
rubber bushes 20 and 20’ (Page 9, l. 33 through Page 10, l. 2 and fig.
2).
8. In use, the steering system of Zetterström’s wheel-suspension system
1 is activated by an actuating device (actuator) including an electrical
axial motor composed as an integral component of each steering link
arm 16 (Page 6, ll. 22-28).
9. Zetterström discloses a suspension system for each wheel including, a
second link arm 25 which connects at attachment point 26 to the
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armature 10, a torsion spring unit 27 which is “arranged around a
through axle 28, defining an attachment into the vehicle body 19,” and
a control lever 29 connected to the link arm 25 (Page 7, l. 33 through
Page 8, l. 7, Page 8, l. 31, and figs. 1-2).
10. Zetterström’s suspension system is attached to the body 19 using
rubber bushes (Page 8, ll. 8-9) and an additional pivoting joint 32
(Page 8, l. 31 through Page 9, l. 3 and figs. 1-2).
11. In use, the suspension system of Zetterström’s wheel-suspension
system 1 is activated by an actuating device (actuator) including an
electrical axial motor (Page 8, ll. 30-34).
12. Zetterström’s wheel-suspension system 1 further includes a control
system including a controller 36 and a plurality of sensors 37-46 that
provide independent control of each wheel of the vehicle with regard
to propulsion, angular alignment, steering, and braking (Page 11, ll. 5-
15 and fig. 3)
13. The control system of Zetterström’s wheel-suspension system 1
controls the electric motor 9, the steering actuators of the steering link
arms 16 and 16’ (Page 6, ll. 22-27), the suspension actuator of the
control lever 29 (Page 8, ll. 32-34), and the braking actuator 21 (Page
7, ll. 11-13).
14. Zetterström specifically refers to element 19 as the “vehicle chassis”
(Page 7, l. 5).

Appeal 2008-4636
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PRINCIPLES OF LAW
Claim construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language 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).

Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, _,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
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While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
127 S. Ct. at 1741.
When 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 or a different one. If a person of
ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.
For the same reason, 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 similar devices in the same
way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id.

Inherency
Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that
it would be so recognized by persons of ordinary skill. Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).

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OPINION
The Appellants argue the rejection under 35 U.S.C. § 103(a) of claims
1 and 4-8 together as a group. Therefore, in accordance with 37 C.F.R.
§ 41.37(c)(1)(vii) (2008), we have selected claim 1 as the representative
claim to decide the appeal, with claims 4-8 standing or falling with claim 1.
In view of the Appellants’ arguments, we will address the rejection of claims
2, 3, 9, and 10 separately.

Claims 1 and 4-8
The Appellants first argue that Zetterström does not disclose the
limitation of a “vehicle attachment interface including…a control signal
receiver” (App. Br. 8). Although the Examiner agrees that “Zetterström is
silent regarding how signals are transmitted between a controller on the
vehicle and the motors mounted on the wheel module” (Ans. 3), the
Examiner takes “Official Notice” that it is “well known to provide electrical
connections at mechanical interfaces” (Ans. 3). The Examiner then
concludes that, “it would have been obvious to provide the signal
connections at the mechanical connection between the wheel module and the
chassis, in order to avoid tangling of wires and to facilitate the electrical
connection” (Ans. 3-4). Finally, the Examiner explains that because
Zetterström “teaches constructing the steering/suspension/drive and power
unit as a module,” which is not attached to the vehicle in the factory,
Zetterström “suggests connecting mechanical and control components to a
chassis as a unit and at the same time, at or near the same location” (Ans. 5).
In contrast to the Examiner’s reading of the teachings of Zetterström
the Appellants argue that Zetterström “deals only with fitting mechanical
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connections that the wheels” and “suggests nothing regarding the
connection of control components, such as a control signal receiver to form
part of the vehicle attachment interface” (App. Br. 10) (Bold original). That
is, according to the Appellants, if “Zetterström has a control signal receiver
on the wheel module, it could just as easily be embedded in the wheel
module, and not part of any attachment interface with the vehicle” (Reply
Br. 6).
In this case, Zetterström discloses a wheel-suspension unit (wheel
module) for steering, braking, and powering of each individual wheel (FF 1).
Each wheel includes a motor (FF 3), a braking system (FF 4), a steering
system (FF 6), and a suspension system (FF 9). Each of the braking system,
the steering system, and the suspension system are operated by actuators (FF
5, 8, and 11). Each of the motor and the actuators of the braking system, the
steering system, and the suspension system are individually controlled by a
central controller and a plurality of sensors (FF 12 and 13). Hence, a person
of ordinary skill in the art would have readily appreciated that the central
controller of Zetterström communicates with each wheel-suspension unit
(wheel module), hence that control signals are passed from the controller to
each of the motor, the braking system, the steering system, and the
suspension system. We note that the advantage of Zetterström’s wheel-
suspension system is that mechanical connections are not required to be
made at the factory, thereby providing for a simple and cost-effective
production process (FF 2). Since mechanical connections are no longer
required to be made at the factory, and the propulsion, the steering, the
suspension, and the braking systems of the vehicle of Zetterström’s are each
contained within each wheel module, it stands to reason that a person of
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ordinary skill in the art would reasonably understand that the electrical
connections are made during Zetterström’s assembly process of the vehicle.
At this point, we note that neither the Appellants nor the Examiner have
construed the meaning of a “control signal receiver.” In the broadest
reasonable interpretation, a “control signal receiver” is a component that
merely receives a “control signal” and then transfers it to another
component. Hence, as far as we understand, in this case a “control signal
receiver” is merely a “connector” that forms a connection between the
controller and the wheel module. Therefore, in view of Zetterström’s
teachings that electrical connections are made during Zetterström’s assembly
process of the vehicle, we find that a person of ordinary skill in the art would
have readily appreciated that the central controller of Zetterström is mounted
on the vehicle and, in order to connect with the wheel-suspension unit
(wheel module), a control signal receiver (connector) connecting the wires
from the controller and the wheel module would desirably be operatively
connected to the vehicle body (chassis). After all, “[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. at _, 127 S. Ct. at 1742 (2007). Otherwise, the
wires from the central controller would have to be directly connected to each
of the motor and the actuators of the braking system, the steering system,
and the suspension system of each wheel-suspension unit (wheel module).
This would require a higher degree of difficulty because the operator would
have to physically connect the wires to the electrical ports of each of the
motor and the actuators of the braking system, the steering system, and the
suspension system of each wheel-suspension unit (wheel module).
Therefore, we agree with the Examiner that providing a control signal
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receiver (connector) would have been obvious “in order to avoid tangling of
wires and to facilitate the electrical connection” (Ans. 4).
In light of the above, the Appellants’ arguments fail to demonstrate
error in the Examiner’s rejection of claim 1. We thus sustain the rejection of
claim 1 and claims 4-8 standing or falling with claim 1.

Claims 2 and 3
With respect to claims 2 and 3, the Appellants argue that Zetterström
does not disclose a “second non-rotating structural unit located axially
inward of said suspension system” such that the “vehicle attachment
interface is mounted with respect to [the] second structural unit” (App. Br.
12). The Examiner explains that the armature 10 of Zetterström, which is
fixedly attached to an outer, stationary ring 7 (FF 3), satisfies the limitation
of a first “non-rotating structural unit” (Ans. 6). Further, the Examiner takes
the position that the rubber bush 20, the axle 28, and the pivot joint 32 form
a “vehicle attachment interface” (Ans. 3). The Examiner also asserts that the
element 19 (vehicle body) is a “discrete element that is connectable to a
main body or chassis configuration of the vehicle” (Ans. 3). Finally, the
Examiner concludes that,
“[t]he second structural unit is shown in Figure
1 of Zetterstrom as unnumbered elements,
axially inwardly (toward the vehicle body) on
the suspension system 25-29, and that connect
the suspension at 20 and 28 to the body 19”
(Ans. 6).

We find the Examiner’s position untenable for the following reasons.
First of all, we disagree with the Examiner’s assertion that element 19
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(vehicle body) is a “discrete element that is connectable to a main body or
chassis configuration of the vehicle” (Ans. 3). Zetterström specifically
refers to element 19 as the “vehicle chassis” (FF 14). Secondly, Zetterström
discloses attaching the steering system to the vehicle chassis (body) 19 using
rubber bushes 20 and 20’ (FF 7). Zetterström also discloses attaching the
suspension system to the vehicle chassis (body) 19 using rubber bushes and
an additional pivot joint 32 (FF 10). Moreover, Zetterström teaches that the
suspension system including the torsion spring unit 27 is “arranged around a
through axle 28, defining an attachment into the vehicle body 19” (FF 9).
Hence, a person ordinarily skilled in the art would reasonably understand
that both the suspension system and the steering system of Zetterström are
directly attached to the vehicle chassis. The Examiner has not shown, and
we could not find any teaching in Zetterström that would be understood by a
person of ordinary skill in the art to encompass a “second non-rotating
structural unit” that connects the suspension system or the steering system to
the vehicle chassis. As such, we find that Zetterström does not disclose a
“second non-rotating structural unit,” as required by claim 2. Therefore, the
rejection of claim 2 cannot be sustained. Similarly, the rejection of claim 3,
which depends from claim 2, cannot likewise be sustained.

Claims 9 and 10
With respect to claim 9, the Appellants argue that Zetterström does
not disclose the limitation of a “wheel module [attachment] interface
including a control signal connector port” where a “control signal receiver is
operatively connected to the control signal connector port” (App. Br. 13-14).
Relying on the principle of inherency, the Examiner takes the position that a
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connection port must be provided in the wheel-suspension unit (wheel
module) of Zetterström in order to transfer the signal (Ans. 7). In other
words, it appears the Examiner is reasoning that, if a controller is present in
the teachings of Zetterström, then necessarily a control signal port must also
exist in order to transfer the signal. While we fully appreciate the
Examiner’s position, nonetheless, we note that the Examiner took a similar
position with respect to the claimed “control signal receiver.” According to
the Examiner, because Zetterström discloses a “single, central controller 36
that communicates with each wheel unit…some mechanism for receiving the
signal[]…is required to make [the] connection” (Ans. 4). Hence, it appears
that to the Examiner, both the “control signal receiver” and the “control
signal connector port” perform the same function of transferring a signal in
the wheel-suspension system of Zetterström between the controller and the
wheel module. Hence, we find the Examiner’s interpretation of a “control
signal connector port” to render meaningless, or superfluous, the limitation
of a “control signal receiver.” Claims are construed with an eye toward
giving effect to all terms in the claim. Bicon Inc. v. Straumann Co., 441
F.3d 945, 950 (Fed. Cir. 2006). Moreover, even assuming arguendo that
Zetterström discloses a “control signal receiver” and a “control signal
connector port,” we do not find that the “control signal connector port” is
necessarily a part of the “vehicle attachment interface” in the wheel-
suspension system of Zetterström. For example, we agree with the
Appellants that the “control signal connector port” could be part of the
wheel-module itself, in the case of a remote connection (Reply Br. 8). In
conclusion, we find that Zetterström does not disclose explicitly or
inherently a “wheel module interface including a control signal connector
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port,” where a “control signal receiver is operatively connected to the
control signal connector port,” as required by claim 9. Therefore, the
rejection of claim 9 cannot be sustained. Similarly, the rejection of claim
10, which depends from claim 9, cannot likewise be sustained.

DECISION
The decision of the Examiner to reject claims 1-10 under 35 U.S.C.
§ 103(a) as unpatentable over Zetterström is affirmed as to claims 1 and 4-8,
and reversed as to claims 2-3 and 9-10.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2008).

AFFIRMED-IN-PART

hh

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