Ex Parte Feliss et al

Board of Patent Appeals and Interferences

Jun 3, 2010

10995613 (B.P.A.I. Jun. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORBERT A. FELISS, KARL A. FLECHSIG,
DONALD R. GILLIS, and SYLVIA L. LEE
____________

Appeal 2009-007420
Application 10/995,613
Technology Center 3600
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Decided: June 4, 2010
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007420
Application 10/995,613
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STATEMENT OF THE CASE
Norbert A. Feliss et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-14 and 25-30. Claims
15-24 are withdrawn. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellants’ claimed invention is a hybrid drive system. Spec. 1, para.
[0001]. Claim 25, reproduced below, is representative of the subject matter
on appeal.
25. A hybrid drive system for integrated stability control,
comprising:
a drop-in electric drive motor adapted to independently
drive a wheel on a multi-wheeled vehicle, said multi-wheeled
vehicle configured for propulsion using an internal combustion
engine; and
a master controller for controlling a speed of said wheel
using said drop-in electric drive motor for propulsion and
stability management of said multi-wheeled vehicle.
THE REJECTIONS
Appellants seek review of the following rejections by the Examiner:
1. Rejection of claim 11 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
2. Rejection of claims 1-6, 8-10, 25-28, and 30 under 35 U.S.C. § 103(a)
as unpatentable over Shimada (US 6,453,228 B1) and Harshbarger (US
6,022,048).
3. Rejection of claims 7, 14, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Shimada, Harshbarger, and Pecnik (US 6,880,664 B2).
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4. Rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Shimada, Harshbarger, and Vaughn (US 5,238,077).
5. Rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Shimada, Harshbarger, and Arnot (US 3,608,661).
§ 112 ISSUE
Claim 11 depends from claim 1 and adds the limitation that the drop-
in electric motor is adapted to drive wheels on the same axle in opposite
directions. The Examiner found claim 11 does not comply with the
enablement requirement because in Appellants’ Specification, “no gear box
is shown or claimed, and as such it is not possible to use the drive motor to
drive the two wheels, mounted on the same axle, in opposite directions.”
Ans. 3.
Appellants contend the Specification complies with the enablement
requirement. App. Br. 8-9; Reply Br. 4-5.
The issue before us is:
Has the Examiner demonstrated that the disclosure, as filed, is not
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation?
§ 112 ANALYSIS
The proper test for compliance with the enablement requirement is
whether the disclosure, as filed, is sufficiently complete to enable one of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The
Examiner, who bears the initial burden, failed to adequately explain why the
disclosure, as filed, is not sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
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experimentation. See In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)) (The PTO
bears the initial burden when rejecting claims for lack of enablement.). The
rejection before us does not include any discussion as to any of the Wands
factors to provide the Appellants or the Board with an indication as to why
one would have to engage in undue experimentation to practice the claimed
invention. Although the Examiner is not required to provide a discussion as
to every Wands factor, it is not apparent from the Examiner’s Answer that
any of these factors has been considered or that the Examiner has relied on
any evidence sufficient to support the conclusion of lack of enablement. In
re Wands, 858 F.2d at 737 (“Whether undue experimentation is needed is
not a single, simple factual determination, but rather is a conclusion reached
by weighing many factual considerations.”). As such, we reverse the
Examiner’s decision to reject claim 11 under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
§ 103(a) ISSUE
The Examiner found that Shimada discloses all aspects of the
invention of claims 1-6, 8-10, 25-28, and 30, except for the electric motor
being a drop-in configuration. Ans. 4. The Examiner found that it is well
known in the vehicle art for electric motors to have a drop-in configuration
as evidenced by Harshbarger. Id. The Examiner concluded that it would
have been obvious to modify Shimada’s device to provide the electric motor
with a drop-in configuration, as is well known in the art and evidenced by
Harshbarger, to reduce manufacturing costs. Id.
Appellants argue claims 1-6, 8-10, 25-28, and 30 as a group. App. Br.
10-13. We select independent claim 25 as the representative claim, and
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claims 1-6, 8-10, 26-28, and 30 stand or fall with claim 25. See 37 C.F.R.
§ 41.37(c)(1)(vii). Appellants contend that a person of ordinary skill in the
art would not combine Shimada and Harshbarger as articulated by the
Examiner because Harshbarger, as a series-type hybrid electric vehicle,
teaches away from such a combination with Shimada’s parallel-type hybrid
vehicle. App. Br. 10-13. Appellants also contend that a modification of
Shimada with respect to Harshbarger would fundamentally change the
method of operation of Shimada. App. Br. 12.
The issues before us are:
Does Harshbarger teach away from the proposed modification to
Shimada’s parallel-type hybrid electric vehicle?
Would modification of Shimada’s electric motor to include modular
drop-in mounting as taught by Harshbarger so change the basic operating
principle of Shimada as to prevent a person of ordinary skill from combining
the references?
§ 103(a) FINDINGS OF FACT
1. Harshbarger discloses a drive motor mounting module for a series-
type hybrid electric vehicle that permits three point mounting to
the chassis of the vehicle. Harshbarger, col. 1, ll. 5-6, 57-60;
fig. 2.
2. Harshbarger discloses that in series-type hybrid electric vehicles,
the internal combustion engine does not have mechanical
engagement to the drive-line, but rather drives an electric generator
to supply electricity to the vehicle’s electrical system (the battery
and electric distribution system). Harshbarger, col. 1, ll. 20-27.
3. Harshbarger discloses that series-type hybrid electric vehicles lend
themselves to modular electric motor installation because the
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electric motor need not be mounted near or in line with the internal
combustion engine and the generator. Harshbarger, col. 1,
ll. 34-39.
4. Harshbarger discloses that parallel-type hybrid electric vehicles
may have a single drive-line driven by both the internal
combustion engine and the electric motor, in which the engine is
mechanically engaged with the single drive-line. Harshbarger, col.
1, ll. 23-27.
5. Shimada discloses a drive force control system of an automobile
having an engine 10 transmitting power to the front left and right
wheels 22FL, 22FR, and an electric motor 28 transmitting power to
the rear left and right wheels 34RL, 34RR. Shimada, col. 1, ll. 13-
17; col. 4, ll. 4-14, 25-33; fig. 1.
6. Harshbarger does not discuss, discourage, or discredit the notion of
using a modular electric motor configuration in parallel-type
hybrid electric vehicles having separate drive-lines (versus a single
drive-line) for the internal combustion engine and the electric
motor. Harshbarger, passim.
§ 103(a) ANALYSIS
Rejection of claims 1-6, 8-10, 25-28, and 30 under 35 U.S.C. § 103(a) as
unpatentable over Shimada and Harshbarger
We first dispense with Appellants’ argument related to claim
construction. Appellants argue that the Examiner’s interpretation that claim
25 positively claims only a drop-in drive motor and a master controller with
the remainder of the claim consisting of intended use limitations, is in error
because claim 25 contains other positive limitations. Reply Br. 1. More
specifically, Appellants argue claim 25 positively recites that the electric
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motor must be “adapted to independently drive a wheel on a multi-wheeled
vehicle,” and that the master controller has a limitation of “controlling a
speed of said wheel using said drop-in electric drive motor for propulsion
and stability management of said multi-wheeled vehicle.” Reply Br. 1-2
(quoting from claim 25).
Although the Examiner states that these limitations are intended uses,
the Examiner actually gave weight to each of these limitations, finding that
Shimada discloses “an electric motor (28) for independently driving at least
a first and second of the remaining wheels,” and “a master controller (48) for
stability management.” Ans. 4, 7. Consequently, the limitations Appellants
contend should be given weight, were in fact given weight. Appellants’
simple recitation of the claim language fails to convincingly explain why the
Examiner’s claim construction is in error.
Appellants’ claim construction argument is also unpersuasive for the
reason that it attacks the claim construction without tying the purportedly
erroneous claim interpretation to how this alters any of the Examiner’s
findings of fact relating to the references. In other words, Appellants assert
an alternative claim construction without explaining how the proposed
combination fails to meet a limitation of that alternative claim construction.
See In re Schreiber, 128 F.3d 1474, 1478 (Fed. Cir. 1997) (Once a finding
has been made that the prior art structure would be capable of performing all
of the functions claimed, the burden shifts to the applicant to show that this
is not the case.)
We are also unpersuaded by Appellants’ assertion that Harshbarger
teaches away from the combination as articulated by the Examiner. App. Br.
10-13. Harshbarger discloses a drive motor mounting module for a series-
type hybrid electric vehicle (Fact 1). Harshbarger discloses that a series-
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type hybrid vehicle has a configuration lending itself to modular electric
motor installation because the internal combustion engine does not have
mechanical engagement to the drive-line, but rather drives an electric
generator that supplies electricity to the vehicle’s electrical system, so that
the electric drive motor need not be mounted near or in line with the internal
combustion engine or the generator (Facts 2, 3). Shimada discloses a
parallel-type hybrid electric vehicle having separate drive-lines for the
internal combustion engine and the electric motor (Fact 5). As such, a
person of ordinary skill in the art would recognize that similar to
Harshbarger’s series-type hybrid electric vehicle, in Shimada’s vehicle, the
electric motor need not be mounted near or in line with the internal
combustion engine or the generator (Facts 2-5). Given this fact, we find
Harshbarger’s contrast of its series-type hybrid electric vehicle to a parallel-
type hybrid electric vehicle in which the internal combustion engine and the
electric motor are connected to the same drive line (Fact 4), would not have
led a person of ordinary skill in the art away from modifying Shimada’s
parallel-type vehicle with a drop in motor as taught by Harshbarger. In other
words, we find nothing in Harshbarger that would have led a person of
ordinary skill in the art in a direction divergent from that chosen by
Appellants. In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference would be led in a direction divergent from the path that
was taken by the applicant.” (citation omitted)).
The combined teachings of Shimada and Harshbarger do not teach
away from the proposed combination
We also disagree with Appellants’ contention that modification of
Shimada’s electric motor to have a modular drop-in configuration as taught
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by Harshbarger would change the method of operation of Shimada. App.
Br. 12. A change in the method or principle of operation of the primary
reference can, in some circumstances, render a modification nonobvious.
For example, in In re Ratti, the modification suggested by the Examiner
changed the basic principle of sealing from attaining sealing through a rigid,
press-fit, interface between the components, to attaining sealing by
providing a resilient interface between the components. 270 F.2d 810, 811-
813 (CCPA 1959) (“This suggested combination of references would require
a substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
the [primary reference] construction was designed to operate.” (emphasis
added)). The modification in Ratti fundamentally changed the technical
basis of how a seal performed its sealing function and how a sealed interface
was attained. Such is not the case here.
As the Examiner points out, modification of Shimada’s electric motor
to include a modular drop-in configuration will not alter how Shimada’s
motor operates. Ans. 9. We fail to see, and Appellants have failed to
explain, how modification of Shimada’s electric motor to include modular,
drop-in mounting is a “change in the basic principles” of operation of
Shimada’s device. Rather, this modification to Shimada’s device is an
improvement specifically taught by Harshbarger that a person of ordinary
skill in the art would recognize would improve Shimada’s electric motor in
the same way as in Harshbarger. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007).
Modification of Shimada’s electric motor to include modular drop-in
mounting as taught by Harshbarger would not so change the basic operating
principle of Shimada as to prevent a person of ordinary skill from combining
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the references. Accordingly, we agree with the Examiner’s conclusion that
the subject matter of claim 25 would have been obvious to a person having
ordinary skill in the art at the time of the invention in view of Shimada and
Harshbarger. Claims 1-6, 8-10, 26-28, and 30 fall with claim 25.
Rejection of claims 7, 14 and 29 under 35 U.S.C. § 103(a) as unpatentable
over Shimada, Harshbarger, and Pecnik; rejection of claim 12 under
35 U.S.C. § 103(a) as unpatentable over Shimada, Harshbarger, and
Vaughn; and rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Shimada, Harshbarger, and Arnot
The Examiner rejected claims 7, 12-14, and 29 over the proposed
combination of Shimada and Harshbarger as used to reject independent
claims 1 and 25 with further modifications based on Pecnik, Vaughn, or
Arnot. Claims 7 and 12-14 depend from independent claim 1, and claim 29
depends from independent claim 25. Appellants repeat the arguments used
against the proposed combination of Shimada and Harshbarger to rebut the
Examiner’s conclusions of obviousness. App. Br. 13. For the reasons
explained in the analysis of claims 1 and 25, supra, we find those arguments
unconvincing here as well.
DECISION
We REVERSE the Examiner’s decision to reject claim 11 under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.
We AFFIRM the Examiner’s decision to reject claims 1-10, 12-14 and
25-30 under § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART
Appeal 2009-007420
Application 10/995,613
11

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