Ex Parte 8111028 et al

Patent Trial and Appeal Board

Jun 29, 2015

95002286 (P.T.A.B. Jun. 29, 2015)

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.
95/002,286 09/14/2012 8111028 2021_001 6583
15204 7590 06/29/2015
Harris Beach/Syracuse
333 West Washington Street
Suite 200
Syracuse, NY 13202
EXAMINER
MENEFEE, JAMES A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/29/2015 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
____________

BALDOR ELECTRIC COMPANY
Requester, Respondent, and Cross-Appellant

v.

PRIME DATUM, INC.
Patent Owner, Appellant, and Cross-Respondent
____________

Appeal 2015-001464
Reexamination Control 95/002,286
Patent 8,111,028 B2
Technology Center 3900
____________

Before DENISE M. POTHIER, ANDREW J. DILLON, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL

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BACKGROUND
Third Party Requester, Baldor Electric Company (“Requester”), filed
a Request for Inter Partes Reexamination (“Request”) of United States
Patent 8,111,028 (hereinafter the “’028 patent”)1 on September 14, 2012.
The ’028 patent includes claims 1–11. During reexamination, the Examiner
rejected original claims 1–11 and rejected new claims 12–24, which Patent
Owner added by amendment. See PO Resp. and Amend., Feb. 11, 2013, 5–
9.
Patent Owner, Prime Datum, Inc. (“Patent Owner”), appeals under
35 U.S.C. §§ 134 and 315 the Examiner’s decision to reject claims 1–22 and
24. PO App. Br. 7–30.2 Requester appeals under 35 U.S.C. §§ 134 and 315
the Examiner’s decision not to reject claims 1–22 and 24 on different
grounds. TPR App. Br. 6–14. The Examiner’s rejection of new claim 23 is
not on appeal. An oral hearing was conducted on May 13, 2015.3
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm the
Examiner’s decision to reject claims 1–22 and 24.

1 The ’028 patent issued to Rollins, et al., on February 7, 2012, from
Application 12/524,198 having a PCT filing date of September 23, 2008.
2 Throughout this opinion, we refer to (1) the Right of Appeal Notice
mailed September 13, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief filed
March 3, 2014 (“PO App. Br.”); (3) Requester’s Respondent Brief filed
March 4, 2014 (“TPR Resp. Br.”); (4) the Examiner’s Answer mailed April
1, 2014 (“Ans.”) (incorporating the RAN by reference); (5) Requester’s
Appeal Brief filed February 4, 2014 (“TPR App. Br.”); (6) Patent Owner
Respondent’s Brief filed March 4, 2104 (“PO Resp. Br.”); Patent Owner’s
Rebuttal Brief filed May 1, 2014 (“PO Reb. Br.”); and Action Closing
Prosecution mailed April 24, 2013 (“ACP”).
3 A transcript of the oral argument will be added to the record in due course.
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RELATED PROCEEDINGS
We are informed of no proceedings related to this appeal.

STATEMENT OF THE INVENTION
The ’028 patent describes an integrated fan drive for a cooling tower.
The drive includes a high torque, low speed permanent magnet motor, and a
variable frequency drive. See generally ’028 patent, Abstract.
Claim 1 is illustrative:
1. A drive system for driving a fan in a cooling
tower, the fan comprising a fan hub and fan blades attached to
the fan hub, the drive system comprising:
a high-torque, low speed permanent magnet motor
comprising a motor casing, a stator and a rotatable shaft, the
rotatable shaft being configured for connection to the fan hub,
the motor further comprising a dual bearing system consisting
of a pair of radial bearings that locate and support the rotatable
shaft relative to the motor casing; and
a variable frequency drive device to generate electrical
signals that effect rotation of the rotatable shaft of the motor at
a rotational speed in order to rotate the fan.

EVIDENCE RELIED ON
Schwedler et al. US 5,600,960 Feb. 11, 1997
(hereinafter “Schwedler”)
Hartman US 6,257,007 July 10, 2001
Discenzo et al. US 7,949,483 May 24, 2011
(hereinafter “Discenzo”)
Rollins et al. US 8,111,082 Feb. 7, 2012
(hereinafter “APA”)4

4 APA stands for Admitted Prior Art.
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Applegate US 2006/0197394 Sept. 7, 2006
Facão et al., Thermal Behaviour of Closed Wet Cooling Towers For
User With Chilled Ceilings, Applied Thermal Engineering 20 pp. 1225–1236
(2000) (hereinafter “Facão”).
Smith, Variable Frequency Drives & Cooling Towers, Joliet
Technologies, http://www.joliettech.com/variable-frequency-
drives_and_cooling-towers.htm (last visit May 27, 2015).
ABB Catalogue GB-05-2004, DriveIT Permandent Magnet Motors
(hereinafter “ABB Motor”).
ABB Technical Note, Drive IT Low Voltage Permanent Magnet
Motors for Low Speed Applications, TM13 EN REVB (2003) (hereinafter
“ABB Motor”).
Ikaheimo, Permanent Magnet Motors Eliminate Gearboxes, ABB
Review, pp.22–25 (2002) (hereinafter “ABB Motor”).
Ikaheimo, New Roles for Permanent Magnet Technology, ABB
Review Special Report, pp. 37–40 (2004) (hereinafter “ABB Motor”).5
ABB Review, Compact and Complete, DriveIT Low Voltage AC
Drive, ACS 800, pp. 16–21 (Apr. 2002) (hereinafter “ACS 800”).
Firmware Manual, IGBT Supply Control Program 7.x, No.
3AFE68315735 REV C (Mar. 28, 2006) (hereinafter “ACS 800”).
Supplemental to Firmware Manuel for ACS800 Standard Application
Program 7.x, Permanent Magnet Synchronous Machine Drive Application

5 The above four citations are Exhibits 9A-D and are called collectively
ABB Motor. Ans. 2.
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Program, No. 3AFE68437890 REV B (Jan. 19, 2005) (hereinafter “ACS
800”).
Firmware Manual, ACS 800 Pump and Fan Control (PFC)
Application Program 7.x, No. 3AFE64649337 REV A (July 22, 2002)
(hereinafter “ACS 800”)
Hardware Manual, ACS800-02 Drives (45 to 560 kW) ACS800-U2
Drives (60 to 600 HP), No. 3AFE64567373 REV F (Aug. 8, 2007)
(hereinafter “ACS 800”).6
Specification Sheet, ControlIT AC 800C Controller the Compact and
Cost-effective Process Controller (2002) (hereinafter “AC800 Controller”).
Product Brochure, ControlIT Control Software and Tools for AC
800m and AC 800C With Everything You Need to Keep Production at Peak
Level (2002) (hereinafter “AC800 Controller”).
Data Sheet, ControlIT Control Software and Tools for AC 800m and
AC 800C (2004) (hereinafter “AC800 Controller”).
Product Guide, Industrial Compact Control Builder AC 800M Version
5.0 Product Guide (June 2006) (hereinafter “AC800 Controller”).
User Guide, Industrial IT Compact Control Builder AC 800 M
Version 5.0 Basic Control Software Introduction and Configuration (June
2006) (hereinafter “AC800 Controller”).
Data Sheet, S200 I/O Systems Units (May 2002) (hereinafter “AC800
Controller”).

6 The above five citations are Exhibits 10A-E and are called collectively
ACS800. Ans. 3
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Manuel, IndustrialIT Compact Control Builder AC 800M Version 5.0
Extended Control Software Binary and Analog Handling (June 2006)
(hereinafter “AC800 Controller”).7

THE REJECTIONS AND PROPOSED REJECTIONS
Patent Owner Appeals the Examiner rejecting the claims as follows:
1) Claims 12–22 and 24 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, for failing to comply with the enablement
requirement because the claims contains subject matter which was not
described in the specification in such a way as to enable one skilled in the art
to which it pertains, or with which it is most nearly connected, to make
and/or use the invention. RAN 8–9.
2) Claims 1–3 and 10 under 35 U.S.C. § 103(a) as unpatentable
over Smith, ABB Motor, and ACS800. Id. at 11.
3) Claims 5–7 under 35 U.S.C. § 103(a) as unpatentable over
APA, ABB Motor, and Smith. Id. at 12.
4) Claim 8 under 35 U.S.C. § 103(a) as unpatentable over APA,
ABB Motor, Smith, and ACS800. Id.
5) Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Smith,
ABB Motor, ACS800, and AC800 Controller. Id.
6) Claims 9 and 11 under 35 U.S.C. § 103(a) as unpatentable over
Smith, ABB Motor, ACS800, and Facão. Id.

7 The above seven citations are Exhibits 11A-G and are called collectively
ACS800 Controller. Ans. 3
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7) Claims 1–3 and 10 under 35 U.S.C. § 103(a) as unpatentable
over Hartman, ABB Motor, and ACS800. Id. at 12–13.
8) Claims 5–7 under 35 U.S.C. § 103(a) as unpatentable over
APA, ABB Motor, and Hartman. Id. at 13.
9) Claim 8 under 35 U.S.C. § 103(a) as unpatentable over APA,
ABB Motor, Hartman, and ACS800. Id.
10) Claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Hartman, ABB Motor, ACS800, and AC800 Controller. Id.
11) Claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Hartman, ABB Motor, ACS800, Facão, and Schwedler. Id.
12) Claim 11 under 35 U.S.C. § 103(a) unpatentable over Hartman,
ABB Motor, ACS800, and Facão. Id. at 14.
13) Claims 12 and 14–24 under 35 U.S.C. § 103(a) as unpatentable
over Smith, ABB Motor, ACS800, AC800 Controller, and Facão. Id. at 14–
19.
14) Claims 12 and 14–24 under 35 U.S.C. § 103(a) as unpatentable
over Hartman, ABB Motor, ACS800, AC800 Controller, Facão and
Schwedler. Id. at 19–23.

Requester appeals the Examiner not rejecting the claims as follows:
A) Claims 1–22 and 24 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, for failing to describe the best mode
contemplated by the inventors. RAN 7–8.
B) Claims 1, 2, 5, 8, and 10 under 35 U.S.C. § 102(b) as
anticipated by Applegate. Id. at 10.
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C) Claims 3, 4, 6, and 7 under 35 U.S.C. § 103(a) as unpatentable
over Applegate and Discenzo. Id.
D) Claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Applegate, Discenzo, Facão, and Schwedler. Id.
E) Claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Applegate, Discenzo, and Facão. Id. at 11.
F) Claims 12–22 and 24 under 35 U.S.C. § 103(a) as unpatentable
over Applegate, Discenzo, Facão, and Schwedler. Id. at 14.
G) Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Smith,
ABB Motor, ACS800, AC800 Controller, and Facão. Id. 14, 17.

THE NON-ENABLEMENT REJECTION
The Examiner rejected new claims 12–22 and 24, finding that, in view
of Patent Owner’s statement that undue experimentation was required to
make changes so that known parts would work in the invention (Rollins
Decl.8 ¶¶ 35–38), Patent Owner’s failure to describe the steps in the undue
experimentation render claims 12–22 and 24 non-enabled. RAN 8–9.
Patent Owner argues that “Patent Owner’s explanation of shortcomings of
the particular references cited by Requestor and adopted by the Examiner,
which shortcomings made them non-obvious to combine, is not an
admission that undue experimentation was required once one read the
disclosure in the ’028 Patent.” PO App. Br. 9–10. Patent Owner asserts that
“[o]nly routine selection or design of components was necessary once one
learned, from the disclosure in the ’028 Patent, of the use of a high-torque,

8 Declaration of Patrick Rollins Under 37 CFR § 1.132, dated Feb. 11, 2013.
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low speed permanent magnet motor adapted to directly drive a cooling tower
fan, with the motor mounted within a wet cooling tower.” Id. at 10; see also
PO Reb. Br. 11–13.

Patent Owner’s argument raises the following issue:
Under 35 U.S.C. § 112, first paragraph, did the Examiner provide a
reasonable basis, that has not been overcome sufficiently, for determining
that the full scope of new claims 12–22 and 24 is not enabled adequately by
the Specification of the ’028 patent?

We are unpersuaded of error in the Examiner’s rejection. “Although
not explicitly stated in section 112, to be enabling, the specification of a
patent must teach those skilled in the art how to make and use the full scope
of the claimed invention without ‘undue experimentation.’” In re Wright,
999 F.2d 1557, 1561 (Fed. Cir. 1993) (internal citations omitted).
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application . . . . If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.

Wright, 999 F.2d at 1561–62 (internal citation omitted).
Here, Rollins, the inventor of the ’028 patent, testified as follows:
Once we created a prototype permanent magnet motor (“the
beta-test motor”) meeting all of our design criteria, we tried
using the ABB ACS-800 VFD [Variable Frequency Drive] to
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drive the beta-test motor as now suggested in the Request.
However, our experience indicated that the ACS800 Drive was
not readily combinable with a permanent magnet motor. We
experienced several problems with the ACS-800, specifically:
the switching frequency of the drive required us to unduly
experiment to mitigate the voltage spikes created by the ACS-
800. Ultimately, we had to insert a load reactor into the
ACS800 Drive to resolve the problems. Despite the fact that
ABB instructed us that a load reactor was not necessary, after
several weeks of experimentation, we found a workable
solution using a load reactor.

Rollins Decl. ¶ 35 (emphasis added). Hence, because Patent Owner stated
that undue experimentation was required, at least to “mitigate the voltage
spikes” created by the drive’s switching frequency, we find the Examiner
met the burden of putting forth a reasonable explanation why “the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the application.”
Wright, 999 F.2d at 1561–62. Specifically, the rejected independent claims
recite both “a variable frequency drive device” and a “permanent magnet
motor,” but the ’028 Patent does not explain the selection criteria for a
variable frequency drive and/or selection criteria for a permanent magnet
motor usable with the selected variable frequency drive so as to avoid the
undue experimentation necessary to “mitigate the voltage spikes.”
Further, while we note that our reviewing court has outlined “undue
experimentation” factors to be considered when evaluating whether a
disclosure is enabling (see In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)),
we agree with the Examiner (ACP 6) that the inventor’s admission of undue
experimentation is sufficient, at least for shifting the burden to Patent Owner
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“to provide suitable proofs indicating that the specification is indeed
enabling.” Wright, 999 F.2d at 1561–62.
Patent Owner argues that “there is simply no evidence in the record
that a VFD made by anyone other than ABB would necessitate undue
experimentation.” PO App. Br. at 9. This argument, however, is unavailing
because it is not supported by sufficient persuasive evidence that, after
reading the disclosure of the ’028 patent, one skilled in the art would be able
to avoid the admitted undue experimentation that would flow from selecting
an unworkable VFD such as the ACS800 VFD. We disagree with Patent
Owner that the inventor’s having encountered problems that resulted in
undue experimentation specific to the ACS800 VFD “does not mean that the
disclosure of the ’028 Patent was insufficient, or that it would lead to undue
experimentation, simply because it failed to warn away from use of the
ACS800 VFD.” Id. To the contrary, in this case, the failure to warn (i.e.,
the failure to provide sufficient selection criteria to enable one skilled in the
art to avoid selecting an unworkable VFD), absent guidance to, for example,
what sort of VFD would work, leads directly into the situation that requires
undue experimentation. We do not otherwise find “suitable proofs
indicating that the specification is indeed enabling,” (Wright, 999 F.2d at
1561–62) at least with respect to this specific technical hurdle. As such,
Patent Owner has not overcome the Examiner’s reasoning that the
Specification is non-enabling for the full scope of claims 12–22 and 24.
Because the Examiner reasonably determined, based on the inventor’s
testimony, that the Specification failed to enable the new claims, and
because Patent Owner failed to put forth sufficient, persuasive, and contrary
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evidence, on the record before us, the Examiner did not err in rejecting
claims 12–22 and 24 as unpatentable under 35 U.S.C. § 112 for failing to
comply with the enablement requirement.

THE ART REJECTIONS
Patent Owner first argues that it has been prejudiced because the
rejections fail to specify in reasonable detail where teachings are purportedly
found in the cited references. PO App. Br. 10–12. Patent Owner argues that
the Request’s failing to specify particular motors from ABB Motors, the
Request’s “cherry pick[ing] some aspects of the motor designs without
reference to any particular motor,” and “The Order Granting Reexamination
Request adopt[ing] the proposed rejections without providing any further
specificity,” “deprived Patent Owner of an opportunity to propose new
claims in light of, or offer amendments to avoid, Requestor’s proposed
specific combinations before prosecution was closed.” Id. at 10–11 (citing
Request 29, 33; Order 8–9).
The issue raised by these arguments is not properly before us. Such
matters are to be addressed via petition. 37 C.F.R. § 1.181. To the extent
Patent Owner argues specific shortcomings in the pending rejections, we
address those arguments infra.
Patent Owner also argues that the Examiner erred by improperly
combining the teachings of ABB Motor, Hartman, Smith, and/or Facão for
various reasons. PO App. Br. 10–21, 23–24, 27–30; PO Reb. Br. 4–11.
Patent Owner also argues (1) that ABB does not teach or suggest “the
rotatable shaft being configured for connection to the fan hub” (PO App. Br.
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21–23), (2) that Hartman does not teach or suggest a motor directly driving a
cooling tower fan, a motor shaft connect to a fan hub, or a permanent
magnet motor mounted within a cooling tower (id. at 24–27), (3) that Smith
does not teach or suggest a permanent magnet motor, locating a motor
within a cooling tower, monitoring a cooling tower air flow to implement a
closed-loop control system, or replacement of a gearbox with a motor that
directly drives a cooling tower fan (id. at 27–28), and (4) that Facão does not
teach or suggest closed loop control of a motor speed based on feedback
from an airflow sensor (id. at 28–30).

Patent Owner’s argument raises the following issues:
Under 35 U.S.C. § 103:
1) Did the Examiner err by finding that:
a) ABB Motor teaches or suggests a rotatable shaft
configured for connection to a fan hub;
b) Hartman teaches or suggests a motor directly driving a
cooling tower fan, a motor shaft connected to a fan hub, and a
permanent magnet motor mounted within a cooling tower;
c) Smith teaches a permanent magnet motor, locating a
motor within a cooling tower, monitoring a cooling tower air flow to
implement a closed-loop control system, and replacement of a
gearbox with a motor that directly drives a cooling tower fan; and
d) Facão teaches closed loop control of a motor speed based
on feedback from an airflow sensor;
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2) Is the Examiner’s reason to combine the teachings of the cited
references supported by articulated reasoning with some rational
underpinning to justify the Examiner’s obviousness conclusion?

Rejections Over ABB Motor
Patent Owner argues the Examiner erred in rejecting all claims as
obvious over ABB Motor because the motors disclosed in ABB Motor are
not suitable for wet cooling tower applications due to height and weight
constraints, inadaptability for driving a cooling tower fan, low torque,
loading limitations, and the like. PO App. Br. 12–20. All pending
obviousness rejections include ABB Motor. Rejections 2–14 supra.
Patent Owner argues also that “[c]ommon sense counseled against
using ABB motors listed in the ABB Motor references in a wet cooling
tower” and that “one skilled in the art would have been dissuaded from using
them and would not have expected success using any of the combinations
that included the ABB Motor reference.” PO App. Br. 20–21; see also PO
Reb. Br. 9–10.
The Examiner cites ABB Motor for teaching that “direct drive
permanent magnet motors are known and can replace traditional indirectly
driven gearbox-type motors in any application.” RAN 28. Patent Owner’s
argument that ABB’s motors in particular are not suitable for “typical” or
even “most” cooling tower applications fails to persuasively rebut this
finding. PO Reb. Br. 9–10. That is, on this record, we are unpersuaded that
the shortcomings Patent Owner experienced using specifically ABB’s
motors in “typical” wet cooling tower applications, necessarily would be
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present in “all” wet cooling tower applications that are encompassed by
Patent Owner’s claims, broadly construed. Namely, the disclosure of the
’028 patent does not exclude or discourage particular motors from being
used in all cooling tower application.
Moreover, we do not find that the recitation of “cooling tower” or
“wet cooling tower” in the claims, often located in the preamble only,
necessarily constrains the obviousness analysis to the full range of design
considerations specific to Patent Owner’s particular problem. In other
words, we do not find sufficient persuasive evidence that we should import
into the recited terms “cooling tower” and “wet cooling tower” the full range
of design constraints Patent Owner would have us read into them (see PO
App. Br. 12–20), even to the extent those constraints are discussed in Patent
Owner’s Specification. “Though understanding the claim language may be
aided by the explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the claim. For
example, a particular embodiment appearing in the written description may
not be read into a claim when the claim language is broader than the
embodiment.” Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004).
To the extent Patent Owner argues that flaws in the motors described
in ABB Motor made them so unsuitable for use in a cooling tower and that
the reference teaches away from the use of permanent magnet motors in
such applications (PO Reb. Br. 11), we are unpersuaded of error. A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
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in the reference, or would be led in a direction divergent from the path that
was taken by the applicant. In re Gurley, 27 F.3d 551, 53 (Fed. Cir. 1994).
Patent Owner’s arguments do not persuade us that ABB Motor would have
discouraged one skilled in the art from attempting to use permanent magnet
motors in all wet cooling tower applications or would have led the skilled
artisan on a divergent path from such as solution.
We also are unpersuaded of error based on Patent Owner’s arguments
that one skilled in the art would not have had a reasonable expectation of
success when combining the motors disclosed in ABB Motor with other
references. PO App. Br. 12–21; PO Reb. Br. 9–11. “Obviousness does not
require absolute predictability of success.” In re O’Farrell, 853 F.2d 894,
903 (Fed. Cir. 1988). “For obviousness under § 103, all that is required is a
reasonable expectation of success.” Id. at 904. (citing In re Longi, 759 F.2d
887, 897 (Fed. Cir. 1985); and In re Clinton, 527 F.2d 1226, 1228 (CCPA
1976)). Patent Owner attests to numerous challenges it faced in adapting the
ABB ACS800 VFD to its “beta-test motor.” Rollins Decl. ¶ 35. The
Examiner’s rejection, however, proposes combining ABB’s motors with
ABB’s VFD, not Patent Owner’s beta-test motor. Even Patent Owner states
that the “ACS800 VPD was designed for use with ABB’s particular motors.”
PO App. Br. 9. We do not otherwise find sufficient persuasive argument or
evidence that one skilled in the art would not have had a reasonable
expectation of success combining the teachings of ABB Motor with the
teachings of the other references to make the claimed invention.
Patent Owner also argues error because the rejections involving ABB
Motor improperly rely on the reference for teaching the limitation “the
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rotatable shaft being configured for connection to the fan hub,” as recited in
claim 1 and commensurately recited in the other independent claims. PO
App. Br. 21–23. Patent Owner asserts that “the shafts of the ABB motors
would require significant modification to fit a cooling tower fan hub.”
We are unpersuaded of error, at least because the rejections using
ABB Motor are not based on the teachings of the single reference but rather
on what the combined teachings of multiple references would have taught or
suggested to one skilled in the art. See, e.g., RAN 11–23. One cannot show
nonobviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). “The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references.” Keller, 642 F.2d at 425. “Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Id.
While we agree with Requester that ABB Motors discloses motors
that are inherently configured for connection to some load, even if that load
is not specifically identified, (TPR Resp. Br. 9), we also note that Smith and
Hartman, one of which is also cited in each pending rejection, both at least
suggest motors “configured for connection” to fan hubs. See, e.g., Smith
(Figure 1); Hartman (Figs. 1–5). Accord TPR Resp. Br 9. Hence, we are
not persuaded that the combined teachings of the references fail to teach or
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suggest a rotatable shaft configured for connection to a fan hub as recited in
claim 1, or commensurately recited in other independent claims.

Rejections Over Hartman
Patent Owner argues against the rejections that include Hartman
(rejections 7–12 and 14) because Hartman fails to teach or suggest a motor
directly driving a cooling tower fan, a motor shaft connected to a fan hub,
and a permanent magnet motor mounted within a cooling tower. PO App.
Br. 24–27. Patent Owner also argues one skilled in the art would not have
an expectation of success combining Hartman with ABB Motor based on
ABB Motor’s unsuitability for cooling towers, which is Hartman’s focus.
Id. at 25. Patent Owner also argues an absence of reasons to combine
Hartman with the other references.
We see no error in the Examiner’s reliance on the teachings of
Hartman, either alone or in combination with the teachings of the other
references, for at least the reasons stated by the Examiner (RAN 27) and
Requester (TPR Resp. Br. 11). Hartman depicts a motor shaft connected to
a fan hub and directly driving the fan. Hartman Figs. 1–5. Hartman further
discloses that the invention is used with cooling towers. Hartman, Title.
The pending rejections do not rely solely on Hartman for the teaching of
permanent magnet motors in a cooling tower (Request 51–69; RAN 21–23.
Accord RAN 27), and we do not find persuasive argument or evidence that
the combined teachings of the references do not teach or suggest a
permanent magnet motor within a cooling tower. See Keller, 642 F.2d at
426. We address Patent Owner’s arguments that there is no reason to
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combine the references, including Patent Owner’s arguments specific to
combinations that include Hartman, infra.

Rejections Over Smith
Patent Owner argues error in the rejections that include Smith
(rejections 2–6 and 13) for reasons similar to those discussed supra. App.
Br. 27–28. We are unpersuaded of error at least for the reasons stated by the
Examiner (RAN 26) and Requester (TPR Resp. Br. 11). In particular, Patent
Owner’s argument that “Smith does not disclose monitoring of cooling
tower air flow to implement a closed-loop control system” (App. Br. 27) is
unavailing because it fails to consider what the combined teachings of the
reference would have taught or suggested to one skilled in the art. See
Keller, 642 F.2d at 426. At least Facão is also cited for claim limitations
relating to monitoring air flow. See, e.g., Request 44.

Rejections Over Facão
Patent Owner argues against rejections that include Facão (rejections
6 and 11–14) because Facão does not teach or suggest closed loop control of
the motor speed based on feedback from an airflow sensor. App. Br. 28–30.
We are unpersuaded of error because Patent Owner’s arguments fail to
consider what the combined teachings of the references would have taught
or suggested to one skilled in the art (see Keller, 642 F.2d at 426) and for the
additional reasons stated by the Requester (TPR Resp. Br. 12).

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Reasons to Combine
To the extent we have not addressed specifically Patent Owner’s
numerous arguments that the Examiner erred by improperly combining the
teachings of the various references (PO App. Br. 10–21, 23–24, 27–30; PO
Reb. Br. 4–11), we find the arguments unavailing for at least the reasons
stated by the Examiner (see, e.g., RAN 16, 22, 23, 28–29) and articulated
throughout the Request (see, e.g., Request 30–32, 51). We do not find
sufficient persuasive argument or evidence that Patent Owner’s claimed
invention is more than the predictable use of prior art elements according to
their established functions—an obvious improvement. See KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 417 (2007).
Accordingly, we are unpersuaded of error in the Examiner’s rejections
based on obviousness. Supra, Rejections 2–14.

CONCLUSIONS
We are unpersuaded of error in the Examiner’s decision to reject
claims 12–22 and 24 under 35 U.S.C. § 112, first paragraph, for not
complying with the enablement requirement (rejection 1), and claims 1–12,
14–22, and 24 as obvious under 35 U.S.C. § 103 over various references
(rejections 2–14).
In view of our decision that all claims on appeal stand properly
rejected, it is unnecessary to reach the remaining issues. Cf. In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness
rejections).
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DECISION
Based on the record before us, we sustain the Examiner’s decision to
reject claims 1–22 and 24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

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Patent Owner:

HARRIS BEACH/SYRACUSE
333 West Washington Street
Suite 200
Syracuse, NY 13202

Third Party Requester:

ABB INC. LEGAL DEPARTMENT-4U6
29801 Euclid Avenue
Wickliffe, OH 44092