Ex Parte Fluhrer et al

Patent Trial and Appeal Board

Jan 24, 2018

13528625 (P.T.A.B. Jan. 24, 2018)

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.
2179-0094 8769
EXAMINER
TECCO, ANDREW M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
13/528,625 06/20/2012
10800 7590 01/24/2018
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
Andreas Fluhrer
01/24/2018 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 ANDREAS FLUHRER, MANUEL RIEGER, and
ACHIM KUGLER
Appeal 2016-008543
Application 13/528,625
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andreas Fluhrer et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—7 and 10—15.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Robert Bosch GmbH as the real party in interest.
Appeal Br. 2.
Appeal 2016-008543
Application 13/528,625
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A portable tool, comprising:
an electric motor drive;
an output body configured to be rotated about a predefined
axis;
a detection device configured to detect at least one
physical measured value which is characteristic of the operation
of the tool with the output body; and
a transmission device configured to contactlessly transmit
the physical measured value from a rotating region of the tool to
a stationary region of the tool, the transmission device having a
concentric rotor coil and a stator coil, and the rotor coil rotating
with respect to the stator coil,
wherein the stator coil is arranged on a former that is
configured without material of the former in a region between
the stator coil and the rotor coil.
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Appeal 2016-008543
Application 13/528,625
REJECTIONS2
1) Claims 1—7 and 10-15 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.3
2) Claims 1, 7, 10, 11, and 15 are rejected under 35 U.S.C. § 102(b)
as anticipated by Kipfelsberger (DE4307131 (Al), published Aug.
9, 1994).4
3) Claims 1—3, 6, 7, and 10-15 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kipfelsberger and Yokota (US 2006/0125344
Al, published June 15, 2006).
4) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kipfelsberger, Yokota, and Kobayashi
(US 2004/0010908 Al, published Jan. 22, 2004).
DISCUSSION
Rejection 1
The Examiner rejects independent claims 1,10, and 15 because,
according to the Examiner, the limitation “the stator coil is arranged on a
2 In the Answer, the Examiner withdrew a rejection of claims 1,7, 10, and
11 as anticipated by Zebisch (CN101875191 (A), published Mar. 11, 2010).
Ans. 2.
3 The caption for this rejection states that “Claims 1—11 are rejected.” Final
Act. 3. This appears to be a typographical error because a rejection of claim
15 is stated in the body of the rejection. Id. Claims 11—14 depend from
claim 10 and, thus, suffer from the same perceived defects as claim 10. See
Appeal Br. 14 (Claims App.); Final Act. 4 (stating that any claims not
specifically mentioned “are rejected for incorporating the errors of their
respective base claims by dependency”). Finally, claims 8 and 9 are
canceled. Id. at 13—14; Amendment dated June 12, 2015.
4 All citations to this document are to the English-language translation
entered November 13, 2015, in the electronic file of the present application.
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Appeal 2016-008543
Application 13/528,625
former that is configured without a material of the former in a region
between the stator coil and the rotor coil” is unclear. Final Act. 3. The
Examiner asserts this limitation is unclear “because most rotors within
stators will have a region between the stator coil and the rotor coil without a
former material.” Id.
Appellants contend that the claims are not indefinite and “define the
former of the stator as being configured so that there is no material of the
former in the region between the stator coil and the rotor coil.” Appeal Br.
6. Appellants direct us to Figure 1 of the application which Appellants
argue illustrates a former configured as recited with “no material of the
former (16) in the gap [(S)] between the two coils.” Id.
“[W]e apply the approach for assessing indefmiteness approved by the
Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.”’ Ex parte McAward, No. 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(quoting/;? re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). The
language in 35 U.S.C. § 112, second paragraph, “of ‘particularity]’ and
‘distinctness]’ indicates[] claims are required to be cast in clear — as
opposed to ambiguous, vague, indefinite —terms.” In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014).
Appellants’ Specification describes “the stator coil is configured
without a former in a region between the stator coil and the rotor coil.”
Spec. 2:19—20. Further, “no former is provided which carries the coil from
the radial inner side.” Id. at 3:2—3, Fig. 1 (former 16, stator coil 14, rotor
coil 12). Based on this disclosure in the Specification, we determine that
one of ordinary skill in the art would reasonably be able to determine the
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Appeal 2016-008543
Application 13/528,625
scope of the claim limitation “the stator coil is arranged on a former that is
configured without a material of the former in a region between the stator
coil and the rotor coil.” We, thus, do not sustain the rejection of claims 1,
10, and 15 as indefinite under 35 U.S.C. § 112, second paragraph.
The Examiner additionally rejects claim 10 because the preamble
term “the wireless transmission” lacks antecedent basis, and the limitation
“substantially without material of the former” is indefinite because “[i]t is
unclear if Applicant is claiming with material of the former or without
material of the former.'1'’ Id.
Appellants contend the preamble “language ‘for the wireless
transmission’ is a recitation of the general function or intended use of the
claimed invention,” “is an adjective modifying the ‘transmission device’”
and “does not run afoul of the antecedent basis requirements of 35 U.S.C.
§ 112.” Appeal Br. 7. With respect to whether “substantially without
material of the former” is indefinite, Appellants argue this limitation is not
indefinite because one of ordinary skill in the art would readily understand
that the claim covers a circumstance resulting from “the reality of production
of stator coils [where] some material of the former might leak around the
edges of the coil.” Id. Appellants’ argument that the preamble language
“for the wireless transmission” generally states the intended use of the
claimed transmission device and does not raise an antecedent basis issue is
persuasive. With respect to the second issue, Appellants’ arguments are
persuasive and we do not sustain this rejection of claim 10 under 35 U.S.C.
§112, second paragraph.
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Appeal 2016-008543
Application 13/528,625
Rejection 2
The Examiner finds that Kipfelsberger discloses all the limitations of
claim 1 including a “stator coil (15) arranged on a former (Fig. 1) that is
configured without a material of the former in a region between the stator
coil and the rotor coil.” Final Act. 4—5. The Examiner explains that “stator
coils in motors have a region without material of a former as commonly seen
in the air gap between the stator coil and rotor coil and are well known in
motors.” Id.
Appellants contend that Kipfelsberger does not anticipate claim 1
because it “does not provide any information about the stator (15) so there is
no basis to conclude that the coil in stator (15) is arranged on a former
without any material of the former in the region between the stator and rotor
coils” and “there is nothing in Kipfelsberger to even determine that the stator
(15) includes a former.” Appeal Br. 8. For the following reasons, we do not
sustain the rejection of claim 1.
Kipfelsberger discloses a power screwdriver with electronic torque
limiting. Kipfelsberger 1. Kipfelsberger discloses stator coil 15 and rotor
coil 16. Id. at 10. Figure 1 of Kipfelsberger illustrates a space between the
stator coil 15 and rotor coil 16. Id. at Fig. 1. However, Figure 1 illustrates
stator coil 15 as a rectangular box with section lines and no visible
representation of the coils. Id. The Examiner does not direct us to any
disclosure in Kipfelsberger concerning the configuration of a former
associated with the stator coil or adequately explain how one of ordinary
skill in the art would discern from Figure 1 “a former that is configured
without material of the former in a region between the stator coil and the
rotor coil” as recited in claim 1. We, thus, do not sustain the rejection of
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Appeal 2016-008543
Application 13/528,625
claim 1 as anticipated by Kipfelsberger. We also do not sustain the rejection
of claim 7, which depends from claim 1 for the same reason.
Claim 10 requires that “a former of the stator coil is configured in
such a way that a space between the rotor coil and stator coil remains
substantially without material of the former.” Appeal Br. 14 (Claims App.).
The Examiner rejects claim 10 based on substantially the same findings as
for claim 1. Final Act. 5—6. We do not sustain the rejection of claim 10 and
claim 11, which depends from claim 10, as anticipated by Kipfelsberger, for
the same reasons as stated above for claim 1.
Claim 15 requires “the stator coil and rotor coil are each arranged on a
respective former that is configured without material of the former in a
region between the stator coil and the rotor coil.” Appeal Br. 15 (Claims
App.). The Examiner rejects claim 15 based on substantially the same
findings as for claim 1. Final Act. 6. We do not sustain the rejection of
claim 15 as anticipated by Kipfelsberger because the Examiner does not
explain how one of ordinary skill in the art would discern from Figure 1 of
Kipfelsberger, the configuration of the rotor coil or the stator coil.
Rejection 3
As an alternative to the anticipation rejection, the Examiner rejects
claims 1,10, and 15 based on a combination of Kipfelsberger and Yokota.
Final Act. 9. The Examiner finds that “Kipfelsberger does not expressly
disclose a stator coil arranged on a former without material of the former
between the stator coil and [the] rotor coil.” Id. The Examiner finds that
Yokota discloses a stator coil (21, 22A) arranged on a former 21 where the
former 21 is configured without material of the former in a region 21A
between the stator coil (21, 22A) and the rotor coil (25, 33). Id. at 10 (citing
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Appeal 2016-008543
Application 13/528,625
Yokota, Figs. 2, 3). The Examiner concludes that because “Kipfelsberger
and Yokota are both directed to electric motors,” it would have been obvious
to modify Kipfelsberger with Yokota to provide “a former without material
of the former between stator and rotor” to improve the cooling performance
of the rotor.” Id. (citing Yokota 110).
Appellants contend that Yokota discloses that “the stator core (21) is
between the stator coils (22A, 22B) and the rotor.” Id. at 11. We do not
sustain this rejection for the following reasons.
Yokota discloses an electric motor 20 with “a stator core 21 formed
with a hollow area 21 a, stator coils 22A and 22B wound on the stator core
21, and a rotor 24 having a rotor shaft 23.” Yokota 127, Fig. 2. As
illustrated in Figure 2, Yokota’s rotor 24 is in the center of the housing with
stator core 21 surrounding rotor 24. Stator coils 22 A and 22B are mounted
on stator core 21. Figure 2 of Yokota shows that stator coils 22 A and 22B
are connected to stator core 21 at the side but the exact placement of the
coils on the stator core 21 is unclear from Yokota. Consequently, the
Examiner’s finding that Yokota discloses a former that is configured without
material of the former in a region between the stator coil and rotor coil is not
supported by a preponderance of the evidence. As the rejection is based on
an erroneous factual finding, the conclusion of obviousness cannot stand.
See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he
legal conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”). We, thus, do not
sustain the rejection of claims 1,10, and 15 and claims 2, 3, 6, 7, and 11—14
which depend from claim 1 or claim 10 under 35 U.S.C. § 103(a).
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Appeal 2016-008543
Application 13/528,625
Rejection 4
The Examiner rejects claims 4 and 5, which depend from claim 1,
based on the combination of Kipfelsberger and Yokota with additional
disclosure from Kobayashi. Final Act. 11—12. The Examiner does not rely
on the additional disclosure from Kobayashi to cure the deficiencies in the
combination of Kipfelsberger and Yokota discussed above. Id. We, thus, do
not sustain the rejection of claims 4 and 5.
DECISION
The Examiner’s decision rejecting claims 1—7 and 10—15 under 35
U.S.C. § 112, second paragraph is reversed.
The Examiner’s decision rejecting claims 1,7, 10, 11, and 15 under
35 U.S.C. § 102(b) is reversed.
The Examiner’s decision rejecting claims 1—7 and 10—15 under 35
U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
REVERSED
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