Ex Parte Pellenc

Patent Trial and Appeal Board

Apr 26, 2017

12527656 (P.T.A.B. Apr. 26, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/527,656 12/07/2009 Roger Pellenc 1811-273 6977
24106 7590 04/28/2017
Fahert T aw Offices PT T C EXAMINER
1001 Texas Ave., Suite 1250
HOUSTON, TX 77002
NGUYEN, PHONG H
ART UNIT PAPER NUMBER
3724
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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):
MAIL @EGBERTLAWOFFICES .COM
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER PELLENC
Appeal 2015-004824
Application 12/527,656
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Roger Pellenc (Appellant)1 appeals under 35U.S.C. § 134 from the
Examiner’s March 19, 2014 final decision (“Final Act.”) rejecting claims 17
and 19—32.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is PELLENC (Societe
Anonyme). Br. 5.
2 Claims 1—16 and 18 are canceled. Id. at 8, 23 (Claims App.).
Appeal 2015-004824
Application 12/527,656
SUMMARY OF THE INVENTION
Appellant’s disclosure is directed to “a static cooling electric chain
saw.” Spec. 11.3 Claim 17, reproduced below from page 23 (Claims
Appendix) of the Appeal Brief, is illustrative of the claimed subject matter:
17. An electric chain saw apparatus comprising:
a guide bar of an oblong shape;
a cutting chain fitted around said guide bar;
a drive sprocket drivingly connected to said cutting chain
as to rotate said cutting chain around said guide bar;
a housing formed of a light metallic alloy, said housing
having a first component and a second component;
a brushless direct current motor enclosed in said housing,
said motor drivingly connected to said drive sprocket, said
motor being in direct contact with a surface of said housing so
as to provide static cooling of said motor; and
an electronic control card cooperative with said motor,
said electronic control card positioned in said housing such that
a surface of said housing is in direct contact with a
commutation component of said electronic control card.
REJECTIONS
Claims 17, 19—22, and 26—32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jong (US 2003/0088987 Al, pub. May 15, 2003),
Sandvik (EP 0 024 268 Al, pub. Feb. 25, 1981),4 Lui (US 7,109,613 B2, iss.
Sept. 19, 2006),5 Tasaki (US 5,212,886, iss. May 25, 1993), andNozaki
(US 2004/0089260 Al, pub. May 13, 2004).
3 Citations herein to the Specification refer to the Substitute Specification
filed on Aug. 18, 2009.
4 Although the first-named inventor of this application is John E. Jones, we
refer to it herein as “Sandvik” in keeping with the Examiner’s nomenclature.
5 We note that both the Examiner and Appellant mistakenly refer to this
reference as “Liu” throughout the record. We further note that Appellant
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Appeal 2015-004824
Application 12/527,656
Claims 23—25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jong, Sandvik, Lui, Tasaki, Nozaki, and Siede
(US 4,964,217, iss. Oct. 23, 1990).
ANALYSIS
Rejection Based on Jong, Sandvik, Lui, Tasaki, and Nozaki
Regarding independent claim 17, the Examiner finds that Jong
discloses a chainsaw having a cutting chain fitted to rotate around a drive
sprocket and a guide bar, and an electric motor (including a stator) enclosed
within a housing. Final Act. 2. The Examiner determines that it is inherent
that the stator is mounted to the housing. Id. The Examiner finds that Jong
does not disclose the motor being a brushless motor, but finds that Sandvik
teaches such a motor being “advantageous for chainsaws because of the
varying load and frequent need to operate on battery power alone.” Id.
at 2—3. The Examiner reasons that it would have been obvious to one of
ordinary skill to use a brushless motor with Jong’s chainsaw “because the
brushless direct current motor works well with the chainsaw.” Id. at 3. The
Examiner determines that “the brushless direct current motor inherently has
an electric control card.” Id. The Examiner further determines that “it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to mount the electronic control card to the housing,
since it has been held that rearranging parts of an invention involves only
routine skill in the art.” Id. (citing In reJapikse, 181 F.2d 1019 (CCPA
1950)).
references the published application version of this reference in the
Specification. See Spec. 1 6.
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Appeal 2015-004824
Application 12/527,656
Alternatively, the Examiner reasons that “because the control card is
outside of the motor, the card must be secured to the housing.” Id. The
Examiner finds that Lui teaches using high thermal conductivity material for
cooling a motor, and that Tasaki and Nozaki teach making the bodies of the
chainsaw housings of light metallic alloys having high thermal
conductivity—namely, magnesium alloy and aluminum alloy, respectively.
Id. at 3^4. The Examiner reasons that it would have been obvious to one of
ordinary skill “to use light metallic alloy such as magnesium alloy or
aluminum for making the housing of the chainsaw due to its light weight and
quick cooling property.” Id. at 4.
Appellant traverses, arguing that “the devices of the cited prior art do
not utilize static cooling.” Br. 15. Appellant explains that “static cooling is
accomplished by ... a brushless direct current motor ... in direct contact
with the surface of the housing.” Id. Appellant argues that “because the
body of [Jong’s chain] saw is made of a polymeric material, including the
engine compartment, there would be little need for cooling of the engine by
static cooling with contact between the motor and the light metallic alloy
housing.” Id. at 16. Appellant also argues that none of the other cited
references disclose static heating. Id. at 17.
Similarly, Appellant argues that “the prior art combination fails to
show or suggest that the motor of the chain saw is in direct contact with the
housing to establish heat exchange.” Id. at 18. Appellant argues that,
contrary to the Examiner’s findings, Jong Figure 1 does not show “an
electric motor in direct contact with the surface of the body of the chain
saw.” Id.
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Appeal 2015-004824
Application 12/527,656
Initially, we construe the term “static cooling.” During examination
of a patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Am. Acad, of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Therefore, we construe “static
cooling” to mean heat transfer by conduction, convection, and/or radiation
without the use of a fan (forced convection) or other supplemental heat
transfer components. See, e.g., Spec. Tfl[ 9, 25, 40, 42. For example, claim
17 requires the motor to be in direct contact with the housing (Br. 23
(Claims App.)), so heat is transferred (via conduction) directly from the
motor to the housing and dissipated therefrom (via convection and/or
radiation).
We are persuaded of error in the Examiner’s determination that Jong
discloses “[the] motor being in direct contact with a surface of [the] housing
so as to provide static cooling of said motor” as required by claim 17. In
support of this contention, the Examiner determines that Jong’s “motor case
is mounted directly to a housing of a device by a bracket to provide a proper
alignment between the output shaft and the gear.” Ans. 8 (emphasis added);
see also id. at 10. We find error in this interpretation because the Examiner
has not given appropriate consideration to the requirement that the motor be
in direct contact with the housing. Connection of the motor to the housing
via a bracket does not constitute the motor being in direct contact with the
housing. We further note that the Specification differentiates Appellant’s
apparatus from such an indirect motor-housing connection. See Spec. 1 6
(discussing Lui’s bracket 240); see also In re Man Mach. Interface Techs. LLC,
822 F.3d 1282,1286 (Fed. Cir. 2016) (“The broadest reasonable interpretation
of a claim term cannot be so broad as to include a configuration expressly
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Appeal 2015-004824
Application 12/527,656
disclaimed in the specification.”). We further disagree with the Examiner’s
unsupported contention that “[t]he brackets are a part of the motor.” Ans. 11; see
also id. at 8 (setting forth that “[i]t is well known in the art that the basic
components of a motor comprise a motor case, a stator and a rotor having an
output shaft,” but not brackets). The Examiner does not rely on any of Sandvik,
Lui, Tasaki, or Nozaki in any manner that would remedy the deficiencies
noted above.
Accordingly, we do not sustain the rejection of claim 17 nor of its
dependent claims 19-22,26,27,29,6 or 30 as being unpatentable over Jong,
Sandvik, Lui, Tasaki, and Nozaki.
Similarly to claim 17, independent claim 28 recites “said motor being in
direct contact with a surface of said housing so as to provide static cooling of said
motor.” Br. 24—25 (Claims App.). According, for the same reasons as discussed
above with respect to the rejection of claim 17, we do not sustain the rejection of
claim 28 as being unpatentable over Jong, Sandvik, Lui, Tasaki, and Nozaki.
Similarly to claim 17, independent claim 31 recites “placing said motor in
said housing such that said motor has a surface in direct contact with at least one
surface of said housing” and “statically cooling said motor by heat conductance to
the surface of said housing.” Id. at 25 (Claims App.) (underlining omitted).
Accordingly, for the same reasons as discussed above with respect to the
rejection of claim 17, we do not sustain the rejection of claim 31 nor of its
6 We note that claim 29 contains a typographical error in that the claim
depends from canceled claim 18. Br. 25 (Claims App.). We assume that it
was intended that claim 29 depend from claim 17 (see Amendment 8—9
(filed Dec. 23, 2013)) and consider this oversight to be harmless error. In
the event of further prosecution of this application, Appellant and the
Examiner may wish to consider taking appropriate action to correct this
informality.
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Appeal 2015-004824
Application 12/527,656
dependent claim 32 as being unpatentable over Jong, Sandvik, Lui, Tasaki, and
Nozaki.
Rejection Based on Jong, Sandvik, Lui, Tasaki, Nozaki, and Siede
Claims 23—25 depend from claim 17. Br. 24 (Claims App.). The
Examiner does not rely on Siede in any manner that would remedy the
deficiencies noted above with respect to the proposed combination of Jong,
Sandvik, Lui, Tasaki, and Nozaki. Thus, for the same reasons as discussed
above with respect to the rejection of claim 17, we do not sustain the rejection of
claims 23—25 as being unpatentable over Jong, Sandvik, Lui, Tasaki, Nozaki, and
Siede.
DECISION
The Examiner’s decision to reject claims 17 and 19—32 is reversed.
REVERSED
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