Ex parte Deynet

Board of Patent Appeals and Interferences

Sep 29, 2000

08303115 (B.P.A.I. Sep. 29, 2000)

Application for patent filed September 8, 1994. 1
-1-
The opinion in support of the decision being
entered today is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROLF DEYNET
____________
Appeal No. 1998-0089
Application No. 08/303,1151
____________
ON BRIEF
____________
Before KRASS, MARTIN, and BARRY, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
21, all of the pending claims, under 35 U.S.C. § 103. We
reverse.
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A. The invention
The invention is a motor-pump unit suitable for use in a
motor vehicle anti-lock braking system. Referring to
appellant's Figure 1, a pump housing 2 is located between a
motor housing 1 and an electronic housing 3. Spacers 6 (Fig.
2) extend axially through the abutting end surfaces of the
three housings and carry conducting lines 6.1 and 6.2, which
provide an electrical connection between circuit board 3.1 in
electronic housing 3 and brush plate 1.2 in motor housing 1
(Spec. at 5, line 21 to p. 6, line 4). Circumferential
packings 9 and 9.1 are located between the abutting end walls
to protect the conductors from external moisture (Spec. at 6,
lines 4-8).
B. The claims
The independent claims are claims 1 and 21, of which
claim 1, the broader claim, reads as follows:
A motor-pump unit, comprising:
a pump housing including a first end surface and a second
end surface;
a motor housing including an end surface located in front
of the first end surface of the pump housing;
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an electronic housing including an end surface located in
front of the second end surface of the pump housing; and
electrical connecting lines extending through the end
surfaces of the pump housing, motor housing and electronic
housing and extending through the pump housing between an
inside of the motor housing and an inside of the electronic
housing.
C. The references and rejections
The examiner's rejections are based on the following
U.S. patents:
Iwai et al. (Iwai) 4,619,591 Oct. 28, 1986
Henein et al. (Henein) 5,360,322 Nov. 1,
1994
Claims 1-5, 12, 13, 17, and 20 stand rejected under § 103
for obviousness over Henein.
Claims 6-11, 14-16, 18, 19, 21 stand rejected under § 103
for obviousness over Henein in view of Iwai.
D. The merits of the rejections
Henein shows various embodiments of motor-driven
hydraulic pumps. Referring to Figure 1, a housing 1
consisting of several interconnected housing elements contains
a motor 2 located between an electronic control apparatus 3
and a hydraulic section or pump 4. This Figure shows an
unnumbered line (partly solid and partly dashed) apparently
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representing one or more conductors running between motor
brushes 11 and control apparatus 3, which is depicted as a
printed circuit board.
In neither the Figure 1 embodiment nor the other
illustrated embodiments is the hydraulic section (i.e., pump)
located between the motor and the electronic control
apparatus, as required by claims 1 and 21. Specifically, in
the Figure 2 embodiment, the electronic control apparatus 3 is
located between motor 2 and hydraulic section 4. In the
embodiments of Figures 3 to 6, the motor is located between
the control apparatus and the hydraulic section.
The examiner's argument for the obviousness of the
subject matter of claims 1-5, 12, 13, 17, and 20 is that
Henein
discloses the claimed invention except for the
parts' locations. It would have been obvious to . .
. relocate the extant parts of Henein's invention
since it has been held that rearranging parts of an
invention involves only routine skill in the art.
In re Japikse, 86 USPQ 70 [CCPA 1950]. Note also
that it is an obvious matter of design choice to
insulate components in an electronic device such as
a pump in order to prevent corrosion and electrical
short circuits. [Answer at 4.]
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We assume that the examiner's reliance on Japikse is based on
the fact that it is cited under the heading "C. Rearrangement
of Parts" in Manual of Patent Examining Procedure (M.P.E.P.)
§ 2144.05 at page 2100-106 (7th ed. July 1998, rev. 1,
Feb. 2000). However, this M.P.E.P. section further explains
that "[t]he mere fact that a worker in the art could
arrange the parts of the reference device to
meet the terms of the claims on appeal is not by
itself sufficient to support a finding of
obviousness. The prior art must provide a
motivation or reason for the worker in the art,
without the benefit of appellant's
specification, to make the necessary changes in
the reference device." Ex parte Chicago Rawhide
Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. &
Inter. 1984).
This is in accord with numerous Federal Circuit decisions,
including In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316 (Fed. Cir. 2000), which states:
Most if not all inventions arise from a
combination of old elements. See In re Rouffet,
149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir.
1998). Thus, every element of a claimed invention
may often be found in the prior art. See id.
However, identification in the prior art of each
individual part claimed is insufficient to defeat
patentability of the whole claimed invention. See
id. Rather, to establish obviousness based on a
combination of the elements disclosed in the prior
art, there must be some motivation, suggestion or
teaching of the desirability of making the specific
combination that was made by the applicant. See In
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re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637
(Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). Even when
obviousness is based on a single prior art
reference, there must be a showing of a suggestion
or motivation to modify the teachings of that
reference. See B.F. Goodrich Co. v. Aircraft
Breaking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d
1314, 1318 (Fed. Cir. 1996). [Emphasis added.]
The examiner has not explained why the artisan would have
been motivated to rearrange Henein's disclosed parts to
produce the claimed structure. While we agree that it would
have been obvious to insulate the components in an electronic
device such as a pump in order to prevent corrosion, that
consideration does not amount to a suggestion to rearrange the
order of Henein's pump, motor, and electronic control
apparatus in such a way as to
satisfy claim 1. The rejection of claims 1-5, 12, 13, 17, and
20 based on Henein is therefore reversed.
As the foregoing deficiency in Henein is not remedied by
Iwai, the rejection of claims 6-11, 14-16, 18, 19, and 21
based on Henein in view of Iwai is also reversed.
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Application No. 08/303,115
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REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JOHN C. MARTIN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
JCM:lmb
Appeal No. 1998-0089
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KENYON AND KENYON
ONE BROADWAY
NEW YORK, NY 10004