Ex Parte Narula et al

Patent Trial and Appeal Board

Feb 27, 2019

14853101 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/853,101 09/14/2015
113600 7590 03/01/2019
Brooks Kushman P.C. / Meritor
Twenty Second Floor
1000 Town Center
Southfield, MI 48075
FIRST NAMED INVENTOR
Prashant Narula
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.
MERIT 130091 PUSA 8231
EXAMINER
NGUYEN, XUAN LANT
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRASHANT NARULA, BRIAN WIGGINS, and
DIETMAR KNOOP 1
Appeal2018-004229
Application 14/853,101
Technology Center 3600
Before WILLIAM A. CAPP, JILL D. HILL, and JEFFREY A. STEPHENS,
Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge JILL D. HILL.
Opinion Dissenting filed by Administrative Patent Judge JEFFREY A.
STEPHENS.
DECISION ON APPEAL
STATEMENT OF THE CASE
Prashant Narula et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 3, 5, and 7-17. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as the Applicant and Assignee,
Meritor Heavy Vehicle Braking Systems (UK) Limited. Appeal Br. 1.
Appeal2018-004229
Application 14/853,101
BACKGROUND
Independent claims 8, 14, and 16 are pending. Independent claim 8,
reproduced below, with emphases added, illustrates the claimed invention.
8. A brake assembly comprising:
a brake housing;
an adjuster mechanism received within the brake
housing; and
a module that is at least partially received in the brake
housing and is operable to adjust the adjuster mechanism, the
module including:
a module housing that is at least partially received
in the brake housing;
an electric motor that is enclosed within the
module housing, wherein the electric motor is rotatable
about a first axis and drives a first gear that is rotatable
about the first axis, the first gear being in meshing
engagement with a second gear that is rotatable about a
second axis that differs from the first axis, wherein the
first and second gears are contained within the module
housing and the first gear rotates faster than the second
gear;
a shaft that is at least partially received in the
module housing and that is rotatable about the second
axis;
an output element that is mounted on the shaft
externally of the module housing, the output element
being operably coupled to the electric motor;
an electrical interface for electrically coupling the
electric motor to one or more components mounted
externally of the module housing; and
an integrated electronic unit that is enclosed in the
module housing, the integrated electronic unit including
one or more of a PCB, a processor, memory, a motor
driver, a CAN transmitter, and a CAN reader.
2
Appeal2018-004229
Application 14/853,101
REJECTION
Claims 3, 5, and 7-17 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Baumgartner (US 2005/0241894 Al, pub. Nov. 3, 2005)
and Poertzgen (US 2013/0180811 Al, pub. July 18, 2013). Final Act. 2.
ANALYSIS
The Examiner finds that Baumgartner discloses, inter alia, a brake
assembly comprising (1) a brake housing 3, (2) an adjuster mechanism 15
received in the brake housing 3, and (3) a module at least partially received
in the brake housing, operable to adjust the adjuster mechanism 15, the
module including an electric motor 37 enclosed within a module housing,
and an output element 44 mounted externally of the module housing and
operably coupled to the electric motor 37. Final Act. 2-3, 6-7, 8. The
Examiner finds that Baumgartner does not disclose the "gear arrangement"
as claimed, but finds that Poertzgen discloses, inter alia, an electric motor 26
enclosed within a module housing 12, the electric motor 26 driving a first
gear 66 along a first axis ( of shaft 28), the first gear being in meshing
engagement with a second gear 70 rotatable about a second axis ( of shaft 46)
that differs from the first axis. Id. at 3, 7, 9.
Claims 8 and 12-17
Appellants argue, regarding independent claims 8, 14, and 16, that the
Examiner erred in finding that Poertzgen discloses an electric motor driving
"a first gear that is rotatable about a first axis, the first gear being in meshing
engagement with a second gear that is rotatable about a second axis that
differs from the first axis." Appeal Br. 9 (emphasis omitted). According to
Appellants, Poertzgen's toothed wheel 66 is not in meshing engagement
3
Appeal2018-004229
Application 14/853,101
with its toothed wheel 70, because a toothed wheel 68 lies therebetween,
such that Poertzgen's toothed wheel 66 is in meshing engagement with its
toothed wheel 68, rather than its toothed wheel 70. Id. at 6.
The Examiner responds that "the claims require the first and second
gears to be in meshing engagement," but "do not restrict the meshing
engagement to be a direct contact," and "Poertzgen shows clearly that
gear 70 is in meshing engagement with gear 66 via gear 68 because all three
gears are in meshing engagement with each other." Ans. 2.
We agree with the Examiner that the claims, as recited, do not restrict
"meshing engagement" to require direct gear-to-gear contact. Despite the
presence of gear 68 between gear 66 and gear 70, the Examiner is correct
that gear 66 is in indirect meshing engagement with gear 70.
Appellants also argue, regarding independent claims 8 and 14, that the
Examiner erred in finding that the combination of Baumgartner and
Poertzgen discloses a module housing that is at least partially received in a
brake housing. Appeal Br. 7, 9. According to Appellants, although the
Examiner indicates that Baumgartner's caliper 3 is a brake housing,
Baumgartner's module housing was not identified. Id. at 6.
The Examiner responds that Poertzgen discloses a module housing 12,
and Baumgartner could be modified according to Poertzgen to include the
module housing 12, because a skilled artisan would understand from
Poertzgen that the module housing 12 "enables the module to be an
independent unit that can be installed or withdrawn from the brake housing
as one unit," to simplify the repair process by facilitating replacement of the
module as "a whole unit without having to remove many small parts."
Ans. 3.
4
Appeal2018-004229
Application 14/853,101
We agree with the Examiner's finding that Poertzgen includes a
module housing, and find no error in the Examiner's reasoning that it would
have been obvious to employ Poertzgen's module housing in Baumgartner's
device, because Poertzgen's module housing enables the module to be an
independent unit that can be installed or withdrawn from the brake housing
as a unit to simplify the repair process. Further, Baumgartner discloses that
"it should be possible to fasten the housing together with the motor in a
module type manner to the caliper" so that, when servicing the brakes, "a
complete exchange of the electronic system with the motor and the control
components becomes possible by merely releasing a few fastening
elements." Baumgartner ,r,r 19, 109.
Regarding independent claim 16, Appellants additionally argue that
the Examiner erred in finding that Baumgartner discloses a motor electrical
interface received in a brake housing. Appeal Br. 10 (referring to Final
Act. 8).
The Examiner finds that Baumgartner discloses an electrical interface,
"shown as electrical plug on the right side of figure 2, for electrically
coupling the electric motor to one or more components mounted externally
of the module housing." Final Act. 3, 6.
Regarding the electrical interface, Baumgartner discloses that the
motor 37 for driving its adjusters 15/17 can be located outside of the
caliper 3, and that a "constructional unit" (shown in Baumgartner's Figure 2)
including a PCB 36, a motor 37, and a cover 38 can accommodate electrical
connections for the motor, the constructional unit being fastened to an
outside of the caliper 3. Baumgartner ,r,r 106, 107, 109. Baumgartner' s
constructional unit can be considered a module housing affixed to an outside
5
Appeal2018-004229
Application 14/853,101
of the caliper (brake housing), but Baumgartner also contemplates provision
of its electric motor within the caliper. Id. ,r 106 ("arranged between the
rotating screws"). In such a case, a skilled artisan would understand that
Baumgartner's electrical interface for its motor 37 would be received in its
brake housing (caliper 3).
For the reasons set forth above, we sustain the rejection of
independent claims 8, 14, and 16. Claims 12, 13, 15, and 17 depend directly
or indirectly from one of claims 8, 14, and 16. Appellants make no
argument that claims 12, 13, 15, and are independently patentable. We
therefore sustain the rejection of claims 8 and 12-17.
Claim 3
Claims 3 depends from claim 8, and recites a planetary gear
operatively coupling the electric motor to the output element,
wherein an axis of rotation of the sun gear is coincident with
the second axis, the sun gear rotates at a same speed as the
second gear when the module is in use, and wherein the at least
one planet gear is mounted on a planet carrier and, in use, the
planet carrier rotates at a same speed as the output element.
According to the Examiner,
Poertzgen shows the output element is operably coupled to the
electric motor by a planetary gear box 24 having a sun gear 72,
at least one planet gear 48, and a ring gear 44, wherein an axis
of rotation of the sun gear is coincident with the second axis,
see figure 2, the sun gear rotates at a same speed as the second
gear when the module is in use, and wherein the at least one
planet gear is mounted on a planet carrier and, in use, the planet
carrier rotates at a same speed as the output element, see figure
2.
Final Act. 5.
6
Appeal2018-004229
Application 14/853,101
Appellants argue that Poertzgen does not disclose that its planet wheel
carrier 50 rotates at the same speed as any output element, because
Poertzgen's "planet wheel carrier 50 is fixed to another sun wheel ... that is
connected to additional planet wheels 52," so that Poertzgen's planet wheel
carrier 50 "will not rotate at the same speed as another component, such as
output side journal 57, due to the differing gear ratios between the gears and
between the two gear stages of the planet gear 45." Appeal Br. 11-12.
Appellants' argument is not persuasive, because a skilled artisan
would have understood that Poertzgen's planet wheel carrier 50 must rotate
at the same speed as whatever element it drives in the remaining gearing
(i.e., its output), whether that element is/drives the carrier of planets 52 or a
sun gear that drives planets 52.
Claim 5 depends from claim 3, and Appellants make no argument that
claim 5 is independently patentable. We, therefore, sustain the rejection of
claims 3 and 5 for the reason explained above.
Claim 7
Claim 7 recites the output element being positioned on a side of the
first and second gears opposite the integrated electronic unit. According to
the Examiner, Poertzgen discloses an output element 57 positioned on a first
side of the first and second gears 66, 70, and on a first side of the planetary
gear box 24, and Baumgartner's integrated electronic unit 36 is at least
partially received in a recess of the cover 38. The Examiner reasons that, in
the proposed combination of Baumgartner and Poertzgen, the output element
would be positioned on a side of the first and second gears opposite the
integrated electronic unit.
7
Appeal2018-004229
Application 14/853,101
Appellants argue that Baumgartner's circuit board 36 "is disposed on
an opposite side of the motor 37 from its shaft 43 and transmission shaft 44,"
and that Poertzgen lacks an integrated electronic unit, such that replacing
Baumgartner's motor with Poertzgen's would cause Baumgartner's circuit
board 36 to be positioned on the side of the electric motor 26 disposed
opposite the drive shaft 28 of the electric motor 26. Appeal Br. 12.
Therefore, Baumgartner's circuit board 36 and its output side journal 57
would be "positioned on the same side of the planet gear 45," which is
contrary to claim 7 's recitation that these elements are positioned on
opposing first and second sides of the planetary gear box. Id. at 12-13.
Appellants are correct that, contrary to the recitation of claim 7,
Baumgartner's circuit board and output side journal would be positioned on
the same side of its planet gear 45. We do not sustain the rejection of
dependent claim 7.
Claim 9
Claims 9 depends from 8 and recites the output element and the
electrical interface being received in the brake housing. Appellants argue
that the Examiner erred in finding that Baumgartner' s plug or "electrical
interface," located in the upper right-hand comer of Baumgartner's Figure 2,
is received within its caliper or "brake housing" 3.
As explained above in our analysis of independent claim 16, a skilled
artisan would understand that Baumgartner' s electrical interface for its
motor 37 would be received in its brake housing (caliper 3). We, therefore,
sustain the rejection of dependent claim 9.
8
Appeal2018-004229
Application 14/853,101
Claims 10 and 11
Claim 10 depends from claim 9 and recites:
the electrical interface includ[ing] a first electrical connector
and a second electrical connector distinct from the first
electrical connector, wherein the module housing is a sealed
housing, wherein the module housing includes a body and a
cover that closes an opening of the body and the electric motor
is enclosed within the body and wherein the first electrical
connection is received within the brake housing and the second
electrical connector is mounted externally of the brake housing,
and the brake assembly includes a sensor received within the
brake housing and being electrically coupled to the first
electrical connector.
The Examiner finds this disclosure in Baumgartner. Final Act. 4.
According to the Examiner, Baumgartner's Figure 2 "shows several
connectors for the various electric components 40," and that, of
Baumgartner's "several connectors," a first electrical connector "is received
within the brake housing" and a second electrical connector "is mounted
externally of the brake housing." Id. The Examiner then contends that
Baumgartner's brake assembly includes a sensor 66, 47 that is "electrically
coupled to the first electrical connector."
Appellants argue that the Examiner's rejection of claim 10 fails to
"point with particularly to" the claim elements. Appeal Br. 13. According
to Appellants, the Examiner designated Baumgartner's caliper 3 as the brake
housing and cover 38 closes the opening of the caliper 3. Id.
Although, as explained above, the Examiner proposes to modify
Baumgartner to include Poertzgen's module housing 12, it is unclear to us
what structure in Baumgartner ( 1) corresponds to the first electrical
connector that is received within the brake housing and is coupled to the
9
Appeal2018-004229
Application 14/853,101
sensor 66, 47, and (2) corresponds to the second electrical connector that is
mounted external to the brake housing. For this reason, we do not sustain
the rejection of claim 10. Claim 11 depends from claim 10, and we
therefore do not sustain the rejection of claim 11 for at least the same reason.
DECISION
We AFFIRM the rejection of claims 3, 5, 8, 9, and 12-17 as
unpatentable over Baumgartner and Poertzgen.
We REVERSE the rejection of claims 7, 10, and 11 as unpatentable
over Baumgartner and Poertzgen.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
10
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRASHANT NARULA, BRIAN WIGGINS, and
DIETMAR KNOOP
Appeal2018-004229
Application 14/853,101
Technology Center 3600
Before WILLIAM A. CAPP, JILL D. HILL, and JEFFREY A. STEPHENS,
Administrative Patent Judges.
STEPHENS, Administrative Patent Judge, dissenting.
I respectfully dissent from the decision of the majority to affirm the
Examiner's rejection of independent claims 8, 14, and 16, and the rejection
of claims depending therefrom. The Examiner's interpretation of the first
gear being "in meshing engagement" with the second gear, as recited in the
claims, is unreasonably broad. Because the rejection is premised on an
incorrect claim construction, it should be reversed.
The decision of the Board agrees with the Examiner that the claims do
not restrict "meshing engagement" to require direct gear-to-gear contact.
Maj. Op. 5. Under this interpretation, Poertzgen's gear 66 is considered to
be in "indirect meshing engagement" with gear 70, because both gears are in
meshing engagement with Poertzgen's intermediate gear 68. See id.
Appeal2018-004229
Application 14/853,101
I would interpret a first gear in "meshing engagement" with a second
gear to require that the two gears directly contact each other. Although one
gear may be indirectly driven by another gear, to say that a first gear is in
meshing engagement with another gear that it does not mesh with or that it
does not contact, stretches the ordinary meaning of "meshing engagement."
There is also no indication that the Specification uses the term
"meshing engagement" to include an "indirect" meshing engagement. For
example, in describing planetary gear box 60 shown in Figure 3, the
Specification specifically states that "[ e Jach planet gear meshes with the sun
gear and the ring gear," rather than that all of these gears are in meshing
engagement with each other. Spec. ,r 69; see also Spec. ,r 81 ("Once the first
gear 62 and second gear 64 are assembled as described above into the further
recess 94 the teeth 62B and 64 B will be in meshing engagement with each
other."). Even if the Specification does not expressly exclude interpreting
"meshing engagement" to apply to gears that do not directly interact, "[t]he
correct inquiry in giving a claim term its broadest reasonable interpretation
in light of the specification is not whether the specification proscribes or
precludes some broad reading of the claim term adopted by the examiner."
In re Smith Int 'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017). "Instead, a
proper claim construction analysis endeavors to assign a meaning to a
disputed claim term 'that corresponds with ... how the inventor describes
his invention in the specification."' In re Power Integrations, Inc., 884 F .3d
1370, 1377 (Fed. Cir. 2018) (quoting Smith, 871 F.3d at 1383). Here, in
light of the ordinary meaning and the description in the Specification, a first
gear in "meshing engagement" with a second gear would be understood by
one of skill in the art to directly contact the second gear.
2