Ex Parte Hir et al

Board of Patent Appeals and Interferences

Mar 4, 2005

09760017 (B.P.A.I. Mar. 4, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHEL LE HIR
and
ALAIN JEUSSET
____________
Appeal No. 2005-0618
Application No. 09/760,017
____________
ON BRIEF
____________
Before COHEN, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1, 4, 5
and 8. Claims 2, 3, 6 and 7, which are all of the other claims pending in this application,
have been withdrawn from consideration.
We REVERSE and REMAND.
Appeal No. 2005-0618
Application No. 09/760,017
Page 2
1 In determining the teachings of Schechinger, we will rely on the translation of
record provided by the USPTO.
BACKGROUND
The appellants' invention relates to a motorized reduction gear intended for
functional equipment of a vehicle, such as a window lifter, sunroof, etc. (specification, p.
1). A copy of the claims under appeal is set forth in the appendix to the appellants'
brief.
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
Schechinger et al. FR 2 663 798 - A11 Dec. 27, 1991
(Schechinger)
Claims 1, 4, 5 and 8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schechinger.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejection, we make reference to the answer
(mailed August 7, 2003) for the examiner's complete reasoning in support of the
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Application No. 09/760,017
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rejection, and to the brief (filed May 22, 2003) and reply brief (filed October 7, 2003) for
the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art reference to
Schechinger, and to the respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the determinations which follow.
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth by the court in Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
Appeal No. 2005-0618
Application No. 09/760,017
Page 4
Claim 1, the only independent claim on appeal, reads as follows:
A motorized reduction gear comprising:
a rotor provided with a rotor shaft bearing a commutator including a body
having an inner surface mounted on said shaft and an opposing outer surface,
and a reduction gearbox containing a gearwheel engaged with a worm of said
shaft, and a magnetic ring mounted on said shaft in order that a number of
rotations of said shaft can be counted, and wherein said magnetic ring is
attached on said outer surface of said body of said commutator.
Schechinger's invention is directed to an electromotive drive device, in particular
for a motor vehicle, with a commutator motor and a drive shaft, with which at least one
Hall sensor and a magnet wheel arranged on the drive shaft cooperate in order to
detect the speed and direction of rotation. Figure 1 shows electromotive drive 10
having a stator housing 12, at least one permanent magnet 13 and drive shaft 14. Shaft
14 carries a commutator 15 and an armature 16, which can turn in the magnetic field of
permanent magnet 13. Brush contacts 17 slide against commutator 15 by which means
a current flows in the direction of the winding. A pulse output device 30 is attached to
the drive shaft 14 between commutator 15 and structure 20, and is actively connected
to a Hall switch 31. Hall switch 31 is connected to structure 20 by means of support 32.
Pulse output device 30 consists of spacing bushing 33, which is rigidly attached to drive
shaft 14 and magnet wheel 34 fitted on spacing bushing 33 by clnmping or adhesion.
Spacing bushing 33 operates as a short-circuit ring for the magnetic circuit, which is
used to amplify the magnetic field. Figure 2 of Schechinger illustrates a modification of
Appeal No. 2005-0618
Application No. 09/760,017
Page 5
the electromotive drive 10 in which the magnet wheel 34a mounted on spacing bushing
33 is pressed against commutator 15 by means of a safety ring 40 mounted on drive
shaft 14.
The appellants argue (brief, pp. 3-5; reply brief, p. 2) that Schechinger does not
disclose a commutator having a magnetic ring attached to an outer surface of the
commutator, the outer surface being opposite to the inner surface of the commutator
that is mounted on the shaft as recited in claim 1. The appellants point out that Figure 2
of Schechinger does not disclose that the magnetic wheel 34a is attached on an outer
surface of a commutator 15 as required by claim 1. In Schechinger, the inner surface of
the commutator 15 is mounted on the shaft 14, and nothing is illustrated or described as
being attached to the opposing outer surface of the commutator 15. The magnetic
wheel 34a of Schechinger is not attached on the outer surface of the commutator 15,
nor does the magnetic ring 34a even contact the outer surface of the commutator 15.
Rather, the magnetic wheel 34a is pressed against a side of the commutator 15, so that
the commutator 15 can act as a stop.
The examiner's response to this argument (answer, p. 5) is that claim 1 does not
structurally define the body of the commutator as a single, unitarily formed body.
Therefore, the claimed commutator is readable on a commutator unit formed by
Appeal No. 2005-0618
Application No. 09/760,017
Page 6
Schechinger's commutator 15, spacing bushing 33 and the safety ring 40 taken
together. As such, the outer surface of the spacing bushing 33, on which the magnetic
wheel 34a is attached, is an outer surface of the commutator unit.
It is our opinion, that a person of ordinary skill in the art would not consider
Schechinger's spacing bushing 33 to be a part of a commutator. In our view, the
examiner's interpretation as to the scope of the term "commutator" set forth in the
answer is not reasonable. The United States Patent and Trademark Office (USPTO)
applies to the verbiage of the claims before it the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of ordinary skill
in the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the appellants'
specification. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1997) and In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
Thus, Schechinger does not disclose a commutator having a magnetic ring attached to
an outer surface of the commutator, the outer surface being opposite to the inner
surface of the commutator that is mounted on the shaft as recited in claim 1.
Appeal No. 2005-0618
Application No. 09/760,017
Page 7
For the reasons set forth above, the decision of the examiner to reject claim 1,
and claims 4, 5 and 8 dependent thereon, under 35 U.S.C. § 102(b) is reversed.
REMAND
On page 6 of the answer, the examiner refers to Japanese reference 11-308812
and German reference 198 11 424 (both of record) that have not been applied in the
rejection under appeal. These references have been given no consideration. See Ex
parte Raske, 28 USPQ2d 1304, 1305 (Bd. Pat. App. & Int. 1993). However, since the
examiner noted that a magnet mounted on the outer surface of a commutator is shown
in both references, we remand this application to the examiner to consider if the
pending claims are patentable over each of these references alone or in combination
with other prior art.
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Application No. 09/760,017
Page 8
CONCLUSION
To summarize, the decision of the examiner to reject claims 1, 4, 5 and 8 under
35 U.S.C. § 102(b) is reversed.
REVERSED; REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2005-0618
Application No. 09/760,017
Page 9
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