Ex Parte Dismon et al

Board of Patent Appeals and Interferences

Mar 14, 2012

11089106 (B.P.A.I. Mar. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HEINRICH DISMON and ANDREAS KOESTER
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Appeal 2010-003165
Application 11/089,106
Technology Center 3600
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Before: PHILLIP J. KAUFFMAN, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003165
Application 11/089,106
2
STATEMENT OF CASE
Appellants seek review of the Examiner’s rejection of claims 1-8
under 35 U.S.C. § 102(b) as anticipated by Wayama (US 6,626,143 B1; iss.
Sep. 30, 2003).1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

THE INVENTION
Appellants’ claimed invention “relates to a gearbox for a gear to be
connected to an electric motor.” Spec. 1:6-7. Claim 1, reproduced below, is
the sole independent claim on appeal (emphasis added):
1. An actuator for motor vehicles, comprising:
a gear and a gear box for the gear,
an electric motor being coupled to the gear,
a gear box cover including a holding portion for an
output shaft bearing for an output shaft of the gear,
a gear box body closed by the gear box cover, and
electric connectors provided at the gear box body for
electric connection of the electric motor,
wherein electric feed lines connected to the electric
connectors are arranged within walls of the gear box body.

ISSUE
The issue presented by this appeal is whether Wayama discloses
electric feed lines as claimed.

1 Appellants sought to amend the claims to incorporate the limitations of
claims 4 and 5 into claim 1 and to cancel claims 4 and 5. Br. 8. The
Examiner denied entry of this amendment. Office Action of May 1, 2009.
Thus, the claims on appeal are those shown in the appendix of Appellants’
Brief. Br. 12-13.
Appeal 2010-003165
Application 11/089,106
3
ANALYSIS
Claim 1 calls for electric feeds lines connected to the electric
connectors “arranged within the walls of the gear box body.” Claim 5
contains this limitation by virtue of its dependence from claim 1 See 35
U.S.C. § 112, fourth paragraph.
Appellants contend the claimed electric motor (36) is indirectly
electrically connected to the gear box cover (12) via electric connectors (46),
first electric feed lines (48), and an electric connection element (50). Br. 9;
see also Spec. fig. 2. Appellants contrast that Wayama’s electric motor
(motor 5) is directly electrically connected to the gear box cover (gear cover
103) obviating the need for an indirect electrical interconnection as claimed
(i.e., electric connectors, first electric feed lines, and an electric connection
element). Br. 9-10 (“no electrical interconnection inside the gear box is
necessary”). Thus, Appellants argue, inter alia, that Wayama does not
disclose electric feed lines as claimed. Br. 10.
The Examiner found that Wayama discloses electric feed lines (ends
81a, 81b of four conductors 81) arranged within the walls of the gear box
body. Ans. 3 citing Wayama, fig. 22. Wayama’s conductor 81 with ends
81a and 81a’ and conductor 81 with ends 81b and 81b’ are each embedded
by molding into the gear box cover (gear cover 103), not the gear box body
(motor casing 110). Col. 4, l. 47; col. 13, ll. 14-22, 52-59; fig. 22 (plan view
of gear box cover). Consequently, we agree with Appellants that Wayama
does not disclose electric feed lines as called for in independent claim 1.
We are mindful that Appellants specifically argued patentability for
claim 5. See, e.g., Br. 10. However, Appellants appealed the rejection of
Appeal 2010-003165
Application 11/089,106
4
claims 1-82, and presented an argument that applies to a limitation recited in
independent claim 13. For these reasons, we cannot say Appellants
withdrew claims 1-4 and 6-8 from the appeal. Accordingly, claims 1-8 are
before us on appeal, and we consider Appellants’ argument applicable to
independent claim 1.4
5 As such, we cannot sustain the rejection of independent claim 1 and
its dependent claims 2-8.

CONCLUSION
Wayama does not disclose electric feed lines as claimed.

DECISION
We reverse the Examiner’s decision to reject claims 1-8.6
REVERSED
nlk

2 Br. 1 (“[t]his is an appeal from the rejection of claims 1-8”); 4 (stating that
the rejection of claims 1-8 is under appeal); 7 (identifying the grounds of
rejection as that of claims 1-8).
3 See analysis of Appellants’ argument, supra.
4 The case at hand is distinguishable from Ex parte Ghuman, where the
appellant expressly identified a subset of the rejected claims to pursue on
appeal, and made no arguments applicable to the claims outside of that
subset. Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008)
(precedential)). See also Manual of Patent Examining Procedure § 1215.03
(8th ed., Rev. 8, July 2008).
5 The proposed amendment referred to supra, did not seek to cancel any of
the other dependent claims 2, 3, and 6-8, further evidencing Appellants’
desire to pursue the appeal of claims 1-8.
6 Appellants ask that if the Board agrees regarding the patentability of claim
5, the Board enter the proposed amendment and allow claim 5. Allowing
claims and entering amendments are not within the power of the Board.
Rather, the Board’s duty is to review adverse decisions of examiners. See 35
U.S.C. § 6(b); 37 C.F.R. § 41.50.