13641702 (P.T.A.B. Jun. 28, 2018)

Ex Parte Teubel et al

Patent Trial and Appeal BoardJun 28, 2018

13641702 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/641,702 10/17/2012 Jens Teubel 96897 7590 06/28/2018 PA TENT LAW OFFICES OF DR. NORMAN B. THOT POSTFACH 10 17 56 RATINGEN, 40837 GERMANY 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. TS/PIEP 1209 US-PAT 1430 EXAMINER HERRMANN, JOSEPH S ART UNIT PAPER NUMBER 3746 MAIL DATE DELIVERY MODE 06/28/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JENS TEUBEL, RONALD RATHKE, MARTIN FIEDLSCHUSTER, MICHAEL WEINERT, NORERT WEBER, PIETRO GIANNICO, and FRIEDEL SCHLUSNUS Appeal2017-007069 Application 13/641,702 1 Technology Center 3700 Before LINDA E. HORNER, BRETT C. MARTIN, and LISA M. GUIJT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 12-14, 17-19, and 21-24. Final Office 1 Jens Teubel et al. ("Appellants") identify Kolektor Magnet Technology GmbH and Pierburg Pump Technology GmbH as the real parties in interest. Appeal Brief (September 30, 2016) (hereinafter "Br.") at 2. Appeal2017-007069 Application 13/641,702 Action (May 4, 2016) (hereinafter "Final Act."). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). The claimed subject matter relates to "an electrically driven motor vehicle coolant pump for a motor vehicle driven by an internal combustion engine." Substitute Specification (October 17, 2012) (hereinafter "Spec."), ,r 2. 3 The Examiner rejected the claims as obvious over the prior art. For the reasons explained below, Appellants have demonstrated error in the rejection. Accordingly, we REVERSE. CLAIMED SUBJECT MATTER Claims 12 and 24 are the independent claims on appeal. Claim 12 is illustrative of the subject matter on appeal and is reproduced below. 12. An electric motor vehicle coolant pump for cooling an internal combustion engine of a motor vehicle, the electric motor vehicle coolant pump comprising: a pump housing; and a rotor rotatably supported in the pump housing, the rotor compnsmg: a motor rotor configured to be substantially pot-shaped, the motor rotor comprising a pot bottom and a ferromagnetic substance so as to be magnetized in at least a bipolar manner, the ferromagnetic substance being homogenously dispersed throughout the motor rotor, and 2 Claims 1-11 are canceled. Br. 20 (Claims Appendix). Claims 15, 16, and 20 are pending and not rejected, and claim 25 is allowable. Advisory Action (July 22, 2016) (hereinafter "Adv. Act.") at 2 (stating that claim 25 is allowable); Examiner's Answer (November 1, 2016) (hereinafter "Ans.") at 14-15 (withdrawing the obviousness rejection of claims 15, 16, and 20 and stating that the written description rejection of claims 12-24 is overcome). 3 Citations herein to the Substitute Specification or "Spec." refer to the clean copy of the Substitute Specification. 2 Appeal2017-007069 Application 13/641,702 a pump rotor comprising a plurality of rotor blades and an annular cover ring arranged on distal ends of the plurality of rotor blades, the plurality of rotor blades being configured to stand directly on the pot bottom of the motor rotor, wherein, the pump rotor and the motor rotor are each integral plastic material parts separately produced by an injection molding, the pump rotor and the motor rotor are made from different materials, and the pump rotor is not ferromagnetic. Br. 20 (Claims Appendix). Weigold et al. Felton Nakanishi et al. Homg et al. EVIDENCE US 2004/0062664 Al US 2006/0051217 Al US 2006/0057002 Al US 2006/0273677 Al REJECTI0NS 4 Apr. 1, 2004 Mar. 9, 2006 Mar. 16,2006 Dec. 7, 2006 The following rejections under pre-AIA 35 U.S.C. Â§ I03(a) are before us on appeal: 1. Claims 12-14, 17-19, 23, and 24 stand rejected as unpatentable over Nakanishi, Homg, and Weigold. 4 After the Final Office Action, the Examiner entered an amendment to the claims that overcame a rejection of claims 12-24 under pre-AIA 35 U.S.C. Â§ 112, first paragraph, for failing to comply with the written description requirement. Adv. Act. 2. The Examiner also withdrew a rejection of claims 15, 16, and 20 under pre-AIA 35 U.S.C. Â§ I03(a) as unpatentable over Nakanishi, Homg, Weigold, and Obara (US 2001/0036416 Al, published November 1, 2001). Ans. 14-15. 3 Appeal2017-007069 Application 13/641,702 2. Claims 21 and 22 stand rejected as unpatentable over Nakanishi, Homg, Weigold, and Felton. ISSUES Independent claims 12 and 24 recite a motor rotor having a ferromagnetic substance and a pump rotor that is not ferromagnetic, where the pump rotor and the motor rotor are made from different materials. Br. 20, 22 (Claims Appendix). The Examiner found that Nakanishi discloses rotor 43 comprising a motor rotor (magnetic portion 45) and a pump rotor (impeller 44). Final Act. 4-5 (claim 12), 11-12 (claim 24). The Examiner found that Nakanishi describes rotor 43 is made of a resin material ( e.g., plastic), and motor rotor 45 contains a ferromagnetic substance. Id. The Examiner found that Nakanishi does not teach that the pump rotor and the motor rotor are made from different materials. Id. at 5, 12. The Examiner found that Homg teaches motor rotor 30 is an integral plastic part produced by injection molding and that magnetic hub 31 of motor rotor 30 has a ferromagnetic substance. Id. at 6, 13. The Examiner determined that it would have been obvious to make the motor rotor of Nakanishi, in accordance with the teaching of Homg, such that the pump rotor and the motor rotor would be made of different materials. Id. Appellants argue that the teachings of Homg would not have led one having ordinary skill in the art to modify the rotor of Nakanishi to make the motor rotor and the pump rotor of different materials. Br. 13. Appellants contend that Figure 6 of Homg depicts "a classic rotor where a plurality of blades or vanes 33 are integrally formed on the outer circumference 312 of the magnetic hub 31 of the rotor 30." Id. (citing Homg, para. 29). Appellants assert that a person having ordinary skill in the art, reviewing 4 Appeal2017-007069 Application 13/641,702 Homg, would have been led to "provide an integral rotor which is entirely consistent with the teaching of Nakanishi." Id. In response, the Examiner finds for the first time in the Examiner's Answer that paragraph 33 of Nakanishi describes the pump rotor and the motor rotor of Nakanishi are made from different materials. Id. (finding impeller 44 is made of plastic and magnet portion 45 is made of plastic and a magnetic powder). The issues before us are: (1) whether Nakanishi discloses that impeller 44 and magnet portion 46 are made from different materials, and (2) whether the teachings of Homg would have led one having ordinary skill in the art to modify the rotor of Nakanishi to make the pump rotor and the motor rotor from differential materials. ANALYSIS As to the first issue, the disclosure in paragraph 33 of Nakanishi is scant. Nakanishi describes: Rotor 43 is disposed inside the pump chamber. Rotor 43 is made of resin material ( e.g., plastic), and comprises a substantially cylindrical magnet portion 45 and an impeller 44. The magnet portion 45 may contain magnetic powder. Nakanishi, para. 33. The components described in paragraph 33 are shown in Figure 1 of Nakanishi, which is reproduced below (with rotor 43 highlighted in blue). 5 Appeal2017-007069 Application 13/641,702 FIG. 1 49 Â·, 48 \ \ \ i I / [ 24 14 51 Figure 1, shown above, depicts a longitudinal cross-section of electric pump 10. Nakanishi ,r 14. As is visible in Figure 1, the cross-section of rotor 43, including cylindrical magnet portion 45 and impeller 44, is cross-hatched in the same manner throughout, suggesting that rotor 43 is formed as an integral component and magnet portion 45 and impeller 44 are made of the same material. It is unclear from this scant disclosure and depiction whether Nakanishi's description that magnet portion 45 may contain magnetic powder would result in the entire rotor 43 containing magnetic powder or only a portion of rotor 43 containing magnetic powder. In other words, Nakanishi leaves the reader to speculate as to how to implement such a modification. Further, as noted by Appellants, Homg depicts, in the embodiment of Figure 6, a rotor 30 comprised of a cylindrical portion or magnetic hub 31 and vanes or blades 33. Figure 6 from Homg is reproduced below (with rotor 30 highlighted in blue). 6 Appeal2017-007069 Application 13/641,702 Figure 6, shown above, depicts a sectional view of a motor including rotor 30. Homg ,r 20. Homg describes that both magnetic hub 31 and vanes 33 are made of a plastic matrix and magnetic powders and that vanes 33 are "integrally formed on the outer circumference 312 of the magnetic hub 31 of the rotor 30." Id. ,r,r 23, 29. Thus, Homg shows that it was known in the art to form both the hub and vanes to include magnetic powders. Based on this evidence, it is equally likely that if one having ordinary skill in the art were to include magnetic powder in the cylindrical magnet portion 45 of Nakanishi, the entire rotor 43, including impellers 44, also would contain the magnetic powder. In other words, the evidence is in equipoise. Thus, we do not find sufficient disclosure in paragraph 33 of Nakanishi to support the Examiner's finding that Nakanishi discloses a motor rotor and a pump rotor made from different materials. As to the second issue, because the hub and blades of Homg' s rotor are integrally formed of the same material, we also agree with Appellants that a person having ordinary skill in the art, upon reading Homg, would not 7 Appeal2017-007069 Application 13/641,702 have been led modify Nakanishi's rotor 43 such that the pump rotor and the motor rotor are made from different materials. For these reasons, the Examiner's determination of obviousness of the subject matter of claims 12 and 24 is not supported by a preponderance of the evidence. The rejections of dependent claims 13, 14, 17-19, and 21-23 suffer from the same deficiency. 5 DECISION The decision of the Examiner rejecting claims 12-14, 17-19, and 21- 24 is reversed. REVERSED 5 The Examiner did not rely on either Weigold or Felton to cure the above-noted deficiency in Nakanishi and Homg. Final Act. 6, 19. 8