Ex parte Eisele

Board of Patent Appeals and Interferences

Aug 26, 1999

08157050 (B.P.A.I. Aug. 26, 1999)

Application for patent filed December 2, 1993. 1
According to appellant, this application is a National stage
application under 35 U.S.C. § 371 of PCT/EP92/01174, filed May
25, 1992.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not
written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MAX EISELE
____________
Appeal No. 97-0210
Application No. 08/157,0501
____________
ON BRIEF
____________
Before BARRETT, FLEMING and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
Appeal No. 97-0210
Application No. 08/157,050
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 11 through 24, which are all of the claims
pending in this application.
The appellant's invention relates to a pole-changing
asynchronous fan motor with a continuously adjustable speed of
rotation. Claim 11 is illustrative of the claimed invention,
and it reads as follows:
11. A device comprising:
a) a pole-changing asynchronous motor for driving a fan; and
b) a regulating device coupled with said motor and adapted
to continuously adjust a speed of rotation of said motor,
within a predetermined speed range by decreasing a
voltage supplied to said motor.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Demeter et al. (Demeter) 4,928,051 May 22, 1990
Viandon FR 2,607,187 May 27, 1988
(French patent application)
Claims 11 through 21, 23, and 24 stand rejected under
35 U.S.C. § 112, second paragraph, as omitting essential
elements or steps.
Appeal No. 97-0210
Application No. 08/157,050
3
Claim 11 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Demeter or Viandon.
Claims 12 through 24 stand rejected under 35 U.S.C. § 103
as being unpatentable over Demeter.
Reference is made to the Examiner's Answer (Paper No. 13,
mailed February 7, 1996) for the examiner's complete reasoning
in support of the rejections, and to the appellant's Brief and
Supplemental Brief (Paper Nos. 12 and 17, filed November 8,
1995 and April 7, 1999, respectively) and Reply Brief (Paper
No. 14, filed April 2, 1996) for the appellant's arguments
thereagainst.
OPINION
As a preliminary matter, we note that appellant indicates
on page 4 of the Brief and page 2 of the Reply Brief that the
claims do not stand or fall together but rather fall into
three groups, (1) claim 1, (2) claims 2 through 21, 23, and
24, and (3) claim 22. Appellant's arguments are consistent
with this grouping except as to claims 23 and 24, which do not
include the limitation argued for group 2. As appellant has
not separately argued the limitations of claims 23 and 24, we
will treat them as standing or falling with claim 1.
Appeal No. 97-0210
Application No. 08/157,050
4
Accordingly, we will consider claims 1, 2, and 22 as
representative of the three groups, respectively, with claims
23 and 24 standing or falling with claim 1 and claims 3
through 21 standing or falling with claim 2.
We have carefully considered the claims, the applied
prior art references, and the respective positions articulated
by the appellant and the examiner. As a consequence of our
review, we will reverse the indefiniteness rejection of claims
11 through 21, 23, and 24; the anticipation rejection of claim
11 over Viandon; and the obviousness rejection of claims 12
through 22; and affirm the anticipation rejection of claim 11
over Demeter and the obviousness rejection of claims 23 and 24
over Demeter.
Claim 11 recites "a regulating device . . . adapted to
continuously adjust a speed of rotation of said motor, within
a predetermined speed range by decreasing a voltage supplied
to said motor." The examiner rejects the claims as being
indefinite, stating (Answer, page 6) that "the claims omits
[sic] essential elements or steps" because "one can not solely
operate a motor speed device by only 'decreasing a voltage
supplied to said motor.' One must recite the ability to
Appeal No. 97-0210
Application No. 08/157,050
5
increase voltage or the motor could never run." The examiner
also explains (Answer, page 6-7), that the "difference of
interpretation [as to whether the speed is continuously
adjusted in part or all of the predetermined speed range] may
have be [sic] the source of the above 112 rejection as well."
In response to the examiner's allegation of
indefiniteness, appellant contends (Brief, page 5) that
"[c]laim 11 is directed to the feature of continuous
adjustability based on reducing the voltage below a certain
level." Appellant points to the specification, stating
(Brief, page 5) that the scope of the claims is "clear when
interpreted in light of the specification." The claims,
however, read that the regulating device adjusts the speed by
decreasing the voltage, or rather that the speed changes with
the voltage, not that the continuous adjustability results
once the voltage is reduced below a certain level.
The difference between the claims and the specification,
along with appellant's argument and the examiner's reference
to a "difference of interpretation" (see above), indicate to
us that the claims are not indefinite, as asserted by the
examiner, but rather are misdescriptive, as the specification
Appeal No. 97-0210
Application No. 08/157,050
6
does not support what is actually claimed. As explained
above, appellant discloses that the speed becomes continuously
adjustable once the voltage is decreased below a certain
level, whereas the claims recite that the speed continuously
adjusts while lowering the voltage. Accordingly, we reverse
the rejection under 35 U.S.C. § 112, second paragraph, and
enter a new ground of rejection below under 35 U.S.C. § 112,
first paragraph.
The examiner further asserts that claim 11 is anticipated
by either Viandon or Demeter. The examiner states (Final
Rejection, page 3):
Applicant also argues that '187 [Viandon] only
teaches step-wise adjustment. Claim 2 [sic, 12] as
well as many others of the present claims clearly
teaches that applicant's control is also stepwise.
Thus the examiner believes that this reference
clearly anticipates claim 11. . . . Demeter et al.
also teaches a step wise control however once again
so does applicant. In claim 1 [sic, 11], it is
recited that within a first speed range the
adjustment is continuous. In claim 2 [sic, 12] it
is recited that [sic, for] part of the speed range
stepwise adjustment is performed. Therefor [sic] it
is clear that continuous adjustment can be said to
be performed by stepwise adjustment.
In other words, the examiner states that neither reference
teaches continuous adjustment of the speed. The examiner
Appeal No. 97-0210
Application No. 08/157,050
7
instead relies on an interpretation of the claims that is both
contrary to the normal meanings of the terms therein and also
contrary to the specification to conclude that the stepwise
adjustment in each of the references meets the claim
limitation of continuous adjustment. We disagree with the
examiner's reasoning, and thus address the specifics of the
two references below.
Viandon is directed to an electric cooling fan for a
thermal engine, the fan being controlled by an asynchronous
motor. Viandon teaches (page 6) that "to obtain the range of
lower speeds, all of the terminals [of the three-phase
electric motor] are connected to the network in the
appropriate order, in order to utilize the six poles of the
motor." However, Viandon shows in Figure 2 a three-phase
alternator and an invertor for changing the connections to
power three poles (for high speeds) or six poles (for low
speeds). Viandon clearly shows a stepwise adjustment of the
speed of the fan. Nowhere does Viandon disclose or illustrate
a regulator for controlling the voltage of the motor to
continuously adjust the speed of the fan. Accordingly, we
cannot sustain the rejection of claim 11 over Viandon.
Appeal No. 97-0210
Application No. 08/157,050
8
With respect to the second part of the examiner's
anticipation rejection, Demeter discloses (column 4, lines 1-
14):
The method further allows the motor to be
operated as a variable speed induction motor. This
may be accomplished by ... short-circuiting the
windings in either the rotor or the stator upon
interruption of the operation of the corresponding
inverter. The motor may operate as an induction
motor upon such interruption.
Appeal No. 97-0210
Application No. 08/157,050
9
The method may additionally comprise the step of
maintaining the voltages of the currents
proportional to the rotational speed of the rotor.
This enables the motor to more readily develop and
maintain torque.
By short-circuiting the windings, the motor becomes
asynchronous. Further, decreasing the voltages decreases the
rotational speed of the rotor, as the speed of the rotor is
proportional to the voltages of the currents. As claim 11
does not preclude additional factors for adjusting the speed
of the motor, and Demeter teaches a step of maintaining
voltages proportional to the rotor speed, Demeter meets the
limitation of adjusting the speed of rotation of a pole-
changing asynchronous motor by decreasing the voltage
supplied. Accordingly, we find that Demeter does anticipate
claim 11. In addition, since claims 23 and 24 stand or fall
with claim 11, we also affirm the obviousness rejection of
claims 23 and 24.
Claims 2 through 21 each require two speed ranges, one in
which the speed is adjusted stepwise, and the other in which
the speed is adjusted continuously. Demeter discloses a
stepwise increase in speed when the motor is synchronous, and
a continuous adjustment in the speed when the motor is
Appeal No. 97-0210
Application No. 08/157,050
10
asynchronous, but Demeter does not disclose two speed ranges,
one with a continuous change in the speed and the other with a
stepwise change in the speed, both for an asynchronous motor.
Accordingly, we must reverse the obviousness rejection of
claims 2 through 22.
Similarly, claim 22 recites an upper speed range in which
the speed is adjusted stepwise and a lower speed range in
which the speed is adjusted continuously. As previously
stated, Demeter does not disclose a continuous and a stepwise
speed range for an asynchronous motor. Therefore, we cannot
sustain the rejection of claim 22.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection against appellant's claims
11 through 21, 23, and 24:
Claims 11 through 21, 23, and 24 are rejected under
35 U.S.C. § 112, first paragraph, for the reasons explained
above.
CONCLUSION
The decision of the examiner rejecting claims 11 through
21, 23, and 24 under 35 U.S.C. § 112, second paragraph; claim
Appeal No. 97-0210
Application No. 08/157,050
11
11 under 35 U.S.C. § 102(b) over Viandon; and claims 2 through
22 under 35 U.S.C. § 103 is reversed. The decision of the
examiner rejecting over Demeter claim 11 under 35 U.S.C. §
102(b) and claims 23 and 24 under 35 U.S.C. § 103 is affirmed.
A new ground of rejection of claims 11 through 21, 23, and 24
under 35 U.S.C.
Appeal No. 97-0210
Application No. 08/157,050
Appellant should note that the new ground of rejection2
can be overcome fairly easily by amending the language of
claim 1. For example, appellant could change "by decreasing a
voltage supplied to said motor" to "once a voltage supplied to
said motor is decreased below a certain level."
12
§ 112, first paragraph, has been added pursuant to provisions
of 37 CFR § 1.196(b). 2
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, "[a] new ground of rejection shall not
be considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-0210
Application No. 08/157,050
13
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 196(b)
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
APG:clm
Appeal No. 97-0210
Application No. 08/157,050
14
KENYON & KENYON
One Broadway
New York, NY 10004