Ex Parte Mueller et al

Patent Trial and Appeal Board

Mar 19, 2018

13628798 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/628,798 09/27/2012
34044 7590 03/21/2018
MICHAEL BEST & FRIEDRICH LLP (Bosch)
100 EAST WISCONSIN A VENUE
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Andreas Mueller
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
022862-1571-usoo 4480
EXAMINER
DOYLE, BENJAMIN C
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS MUELLER, ANDREAS SCHIEL,
LUDGER ADRIAN, HARALD EISENHARDT,
BERND KILAST, CHRISTIAN FRANZ, and
MATTHIAS LUDWIG
Appeal2016-006397 1
Application 13/628,798
Technology Center 3700
Before JOSEPH A. FISCHETTI, MICHAEL W. KIM, and
TARA L. HUTCHINGS, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1-13. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates, generally, to a fan unit of an air conditioning
system, where a fan wheel is disposed together with an electric motor in an
air-guiding region delimited by a fan housing. Spec. i-f 1.
1 The Appellants identify Robert Bosch GmbH as the real party in interest.
App. Br. 2.
Appeal 2016-006397
Application 13/628,798
Independent claim 1 is illustrative:
1. A fan unit (1 ), comprising an electric motor (2) for driving a
fan wheel (3), an electronic device (7) which generates waste
heat and provides electrical current to the electric motor (2) and
a fan housing ( 6), wherein the fan wheel (3) is disposed together
with said electric motor (2) in an air guiding region (5) delimited
by the fan housing ( 6), wherein the electronic device (7) is
fastened to a side of the fan housing ( 6) facing away from the air
guiding region ( 5) in a heat transferring manner so that a heat
transfer connection is formed between said electronic device (7)
and said air guiding region ( 5), and further wherein a plurality of
electrical contact elements is provided between the electronic
device and the electric motor, each electrical contact element
passing through a fastening element extending into the air
guiding region, wherein the fastening elements are configured to
fasten the electric motor to the fan housing and concurrently
electrically contact the electric motor and the electronic device.
Claims 1-3 and 5-13 are rejected under 35 U.S.C. § 103(a) as being
obvious over Noda et al. (US 2006/0192449 Al, pub. Aug. 31, 2006) and
Shih (US 4,515,538, iss. May 7, 1985).
Claim 4 is rejected under 35 U.S.C. § 103(a) as being obvious over
Noda, Shih, and Lopatinsky et al. (US 7,237,599 B2, iss. July 3, 2007).
We REVERSE.
PRIOR ART
Noda discloses a motor assembly for a vehicle air conditioner. Noda
i-f 2. Figure 1 of Noda is reproduced below.
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Application 13/628,798
Fig. 1
As shown above, Figure 1 of Noda depicts a fan unit that includes electric
motor 1, fan wheel 9, fan housing 11 and 13, electronic device 14, and air
guide region 12. Noda i-f 21-24.
Shih discloses an electric ceiling fan. Shih 2:40-42. Figure 3 of Shih
is reproduced below.
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Application 13/628,798
Fig. 3.
Figure 3, as set forth above, depicts a side view of a ceiling fan. Shih 8:54--
56. The ceiling fan includes motor assemblies 60 and 80 connected to
electronic device 100 via electrical contact elements 131 a and 13 1 b. Shih
7 :48-57. Electronic contact elements 131 a and 131 b pass through metal
reinforcing channel member 710 of spoke 708. Shih 7:33-57.
ANALYSIS
The Examiner finds that Noda teaches all of the elements of claim 1
except
a plurality of electrical contact elements is provided between the
electronic device and the electric motor, each electrical contact
element passing through a fastening element extending into the
air guiding region, wherein the fastening elements are configured
to fasten the electric motor to the fan housing and concurrently
electrically contact the electric motor and the electronic device.
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Application 13/628,798
Final Act. 2--4. The Examiner finds that contact elements 131 a and 131 b of
Shih correspond to the recited plurality of electrical contact elements, in that
they provide electrical connection between electronic device 100 and electric
motor 60 and 80. Id. The Examiner further finds that electrical contact
elements 131 a and 131 b of Shih pass through reinforcing channel member
710 of spoke 708 (i.e., the recited fastening element), where spoke 708
extends into an air guide region (i.e., between the outer circumferences of
rear fan guard 40 and fan blade assembly 50) and fastens electric motor 60,
80 to fan housing 40 while electrically contacting electric motor 60, 80 and
electronic device 100. Id. The Examiner concludes that a person of
ordinary skill in the art would have been motivated to incorporate the
teachings of Shih into Noda "for the purpose of providing electrical
commands from the control mechanism to the motor." Id. at 4. The
Examiner further concludes that the proposed modification is a simple
substitution of one control mechanism for another control mechanism that
would yield predictable results. Id.
Generally, the Appellants assert that the Examiner's proffered
rationale to combine is inadequate, in that it is against the weight of the
evidence. As part of that assertion, the Appellants assert that the Examiner
has not set forth an adequate articulated reasoning with sufficient rationale
underpinning to support the legal conclusion of obviousness. App. Br. 7-8.
Further, the Appellants argue that "one of ordinary skill in the art would not
have been motivated to make such a combination, at least because both
Noda and Shih, independently as disclosed, already provide electrical
connection between an electronic control device and an electronic motor."
Id. at 7. Finally, the Appellants argue that the structural differences between
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Application 13/628,798
Shih and Noda "are so significant that not only would one of ordinary skill
not modify the controls of Noda by substituting any features of Shih, upon
inspection of the configuration of Noda there is no such substitution that
could even be made." Id. at 8. The Appellants consider the above-described
arguments as evidence that the Examiner has engaged in hindsight
reconstruction to arrive at the claimed invention. Id.
We are persuaded by the Appellants' argument that the proffered
rationale to combine is inadequate, in that it is against the weight of the
evidence. The Examiner's proposed modification of Noda by Shih
incorporates Shih's fastening element 708 and electrical contact elements
13 la and 13 lb between Noda's motor holder 11 and armature 5. Ans. 11.
The Examiner concludes that modifying Noda in this manner would be
beneficial "for the purpose of providing electrical commands from the
control mechanism to the motor," and "allows the end user of the fan the
ability to operate the fan giving the electronic device 100 and on/off switch,
a timer and a four way switch for different operational speeds." Ans. 9. As
noted by the Appellants, however, "both Noda and Shih, independently as
disclosed, already provide electrical connection between an electronic
control device and an electronic motor." App. Br. 7 (citing Noda i-f 24).
Noda independently discloses a connection between control circuit 14 and
motor/armature 1 and 5 such that control circuit 14 controls the rotation
speed of the fan. Noda i-f 24. In other words, Noda already includes a
control device providing electrical connection to a motor that affords on/off
control and operational speed control. Id. Hence, we are persuaded that the
Examiner has not shown sufficiently that a person of ordinary skill in the art
would have considered Shih's method of providing electrical commands
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Application 13/628,798
from a control mechanism to a motor as a beneficial to Noda, as proposed by
the Examiner.
We also are persuaded that the Examiner has not shown adequately
that the proffered modification is a matter of simple substitution of one
control mechanism for another control mechanism with predictable results as
asserted by the Examiner. Final Act. 4. The Examiner characterizes the
modification as a routine and a simple substitution of elements, as follows:
The structural differences would not be beyond one of
ordinary skill in the art running electrical wire and between a
motor and controller, which is routine to one of ordinary skill in
the art. The act of adding one known control system to a system
that is lacking the control system for the ability to have an on/off
switch is also routine to one of ordinary skill in that art.
Ans. 11. The Examiner's proposed modification, however, goes beyond
simply "running electrical wire and between a motor and controller," and
replacing one known control system for another. Id. Instead, the Examiner
proposes incorporating Shih's fastening element 708 and electrical contact
elements 13 la and 13 lb between Noda's motor holder 11 and armature 5.
Ans. 11. Shih's fastening element 708 is a portion of a spoked wheel ceiling
fan, and defined as spokes that are "upwardly or rearwardly open, channel-
shaped cross-section for the reception of elongated metal reinforcing
members." Shih 7:35-37. Noda's cylindrically shaped motor holder 11
holds motor 1 and associated armature 5. Noda i-f 23. We are persuaded that
the Examiner has not shown adequately that adding Shih's fastening element
708 through Noda's cylindrical motor holder 11 is a matter of simple
substitution of one control element for another, or a routine change in
wiring. App. Br. 8. Most prominently, independent claim 1 recites
"wherein the fastening elements are configured to fasten the electric motor
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to the fan housing." The substitution would appear to be for substituting
some aspect ofNoda's cylindrically shaped motor holder 11, which already
holds motor 1, for fastening element 708 of Shih, and we are persuaded that
the Examiner has not explained adequately how such a substitution is
"simple."
Given the aforementioned evidence of record, we do not sustain the
rejection of independent claim 1, or claims 2-13 dependent therefrom.
DECISION
We REVERSE the rejection of claims 1-13 under 35 U.S.C. § 103(a).
REVERSED
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