Ex Parte Horiuchi et al

Patent Trial and Appeal Board

Jun 21, 2017

12882636 (P.T.A.B. Jun. 21, 2017)

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.
12/882,636 09/15/2010 Makoto HORIUCHI 023484-0359 3298
22428 7590 06/23/2017
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
TORCHINSKY, EDWARD
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
06/23/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing @ foley. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAKOTO HORIUCHI and KOHTARO SHIINO
Appeal 2015-000147
Application 12/882,636
Technology Center 3600
Before WILLIAM A. CAPP, JAMES J. MAYBERRY, and
SEAN P. O’HANLON, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.
DECISION ON APPEAL
Makoto Horiuchi and Kohtaro Shiino (“Appellants”) seek our review
under 35 U.S.C. § 134(a) of a rejection of claims 1, 4—11, 14—16, 19, and 20.
We conducted an oral hearing for this appeal on April 12, 2017. A transcript
of that hearing (“Tr.”) has been placed into the record. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-000147
Application 12/882,636
BACKGROUND
The claims are directed to a power steering apparatus. Spec. 11.
Claims 1,11, and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A power steering apparatus comprising:
a main housing including:
a motor housing section; and
an electrical control unit housing section coupled
to the motor housing section;
a driven-device housing coupled to the motor housing
section;
a brushless motor including:
a drive shaft housed in the motor housing section,
the drive shaft including a motor-side connecting portion at an
axial end portion of the drive shaft;
a rotor coupled to the drive shaft;
a coil disposed around the rotor, and adapted to be
energized to generate a magnetic field; and
a rotation sensor arranged to measure a rotation
angle of the rotor;
an electrical control unit housed in the electrical control
unit housing section, the electrical control unit including:
a memory circuit section configured to memorize a
correction value for correction to a measured value of the
rotation angle obtained by the rotation sensor; and
a motor drive circuit section configured to drive
the brushless motor based on a corrected measured value of the
rotation angle that is obtained by correcting the measured value
with the correction value;
a first electrical wiring connecting the coil and the
electrical control unit;
a second electrical wiring connecting the rotation sensor
and the electrical control unit; and
a driven device including:
a driven shaft housed in the driven-device housing
and adapted to receive torque from the drive shaft,
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Application 12/882,636
wherein the driven shaft includes at an axial end
portion of the driven shaft a driven-side connecting portion
connected to the motor-side connecting portion of the drive
shaft; and
an output section adapted to transmit torque as an
assist steering effort to steered wheels;
wherein the correction value is set based on a measured
value of the rotation angle that is obtained by the rotation
sensor when the rotor is rotated to a predetermined reference
angular position by energization of the coil when the coil and
the electrical control unit are connected by the first electrical
wiring, and the rotation sensor and the electrical control unit are
connected by the second electrical wiring,
wherein the correction value is set when the driven
device is separated from the brushless motor, the coil and the
electrical control unit are connected by the first electrical wiring
and the rotation sensor and the electrical control unit are
connected by the second electrical wiring;
wherein the electrical control unit housing section
includes a board accommodation portion housing the electrical
control unit, and an opening through which the electrical
control unit is inserted into the board accommodation portion,
and
wherein the power steering apparatus further includes a
cover provided separately from the driven-device housing, the
cover closing the opening.
Appeal Br. 49-50, Claims App.
REJECTION
Claims 1, 4—11, 14—16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sekine (PCT/JP2007/058007, published
Oct. 25, 2007)1 and Hill (US 7,279,859 B2, issued Oct. 9, 2007).
1 In citing to the disclosure of Sekine, the Examiner cites to the equivalent
US 8,102,138 B2. See Final Act. 4.
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Application 12/882,636
DISCUSSION
Claims 1 and 8—10
With respect to the rejection of claims 1 and 8—10, Appellants contend
that a person having ordinary skill in the art would not have been motivated
to combine the teachings of Sekine and Hill. Appeal Br. 13. With respect to
claims 1 and 8, the Examiner concludes that “[i]t would have been obvious
to one of ordinary skill in the art, at the time of invention, to incorporate
Hill’s motor position calibration methods with Sekine’s power steering
system to improve the accuracy of Sekine’s motor drive control.” Final
Act. 7—8. The Examiner further reasons that “both Sekine and Hill teach
calibrating individual system components before assembling the whole
system.” Id. at 8. With respect to claims 9 and 10, the Examiner further
reasons that “[i]t would have been obvious to one of ordinary skill in the art
to rotate the motor in both directions because it is common knowledge in the
art that electric motors can be controlled to spin in both directions.” Id. at 9—
10. The Examiner adds that “it is a matter of common sense that vehicle
wheels need to be steered in both directions.” Id. at 10.
Teaching Away
First, Appellants contend that Sekine teaches away from combining
with Hill. Appeal Br. 14. Appellants argue that Sekine teaches calibrating
torque sensor 15 installed in reduction gear box 4 and connected to control
unit 19, but not connected to electric motor 5. Id.', see also id. at 15 (“Sekine
specifically teaches that the electric motor 5 should not be connected with
the reduction gear box 4 when calibrating the torque sensor.”). That is,
Appellants argue that Sekine teaches away from the combination because it
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Application 12/882,636
discloses calibrating a torque sensor before the electric motor is assembled
to the reduction gear box.
Appellants further argue that “Hill’s approach contradicts the
teachings of Sekine. Hill’s calibration is performed in connection with a
motor in isolation,” that is, without consideration of a driven device. Appeal
Br. 15. Appellants also argue that the Examiner improperly interprets
Sekine as generally disclosing calibration of components prior to assembly,
rather that the specific disclosure of calibrating a torque sensor prior to
connecting the electric motor. Id. at 17.
Appellants’ arguments do not inform us of Examiner error. “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.” In re Haruna, 249 F.3d 1327, 1335 (Fed.
Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353,
1360 (Fed. Cir. 1999)); see, e.g.,In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (holding that, to teach away, the prior art must “criticize,
discredit, or otherwise discourage the solution claimed”). Appellants fail to
identify any language in Sekine that criticizes, discredits, or discourages
calibrating a rotation sensor connected to an electric motor but not
connected to the driven device, as required in claim 1. Similarly, Appellants
do not identify any disclosure in Hill that criticizes, discredits, or
discourages applying its calibration scheme for an electric motor ultimately
attached to a driven device. See, e.g., Answer 3 (“Appellants are] ignoring
the fact that Sekine and Hill teach calibration of different types of sensors,
which do not depend on each other’s calibration methods.”).
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Application 12/882,636
Motivation to Combine
Appellants further argue that the Examiner’s reason for modifying
Sekine with Hill’s teaching is flawed. Appeal Br. 16. Appellants argue that
Sekine achieves an accurate calibration of its torque sensor, so there would
be no reason to modify Sekine with Hill’s calibration process. Id.
Appellants reiterate that a person having ordinary skill would not have
looked to Hill even if there was a motivation to modify Sekine, as Sekine
teaches away from calibrating a sensor when attached to an electric motor.
Id.
Appellants’ arguments do not inform us of Examiner error. We
recognize that “[Rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner
finds that a person having ordinary skill in the art would have been
motivated to modify Sekine with HilEs teachings of motor position
calibration methods to improve the accuracy of Sekine’s motor drive control.
Final Act. 7—8. Appellants fail to address this reasoning, directed to
calibrating a rotation sensor to improve the accuracy of motor drive control.
Instead, Appellants appear to focus on Sekine’s calibration of a torque
sensor. See, e.g., Tr. 7 (acknowledging that the Examiner’s rejection is
based on calibrating a rotation sensor based on Hill’s teaching, but arguing
that Appellants are not aware of a reason to treat a torque sensor different
from a rotational sensor). Appellants fail to persuasively argue that Sekine’s
teachings with respect to a torque sensor would govern how a rotation sensor
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would be calibrated. See Answer 3 (“[A person having ordinary skill in the
art] reading Sekine’s teachings on torque sensors and seeking to calibrate a
position sensor in an electric motor would have to seek another reference to
teach a method of position sensor calibration.”).
Principle of operation
Appellants contend that calibrating a rotation sensor with the motor
connected would defeat Sekine’s principle of calibrating a torque sensor
without the motor connected. Appeal Br. 19. Appellants argue that “in
Sekine’s device, the torque sensor is intricately integrated with Sekine’s
driven device. Sekine would therefore require an entire reconstruction in
order to instead calibrate the sensor while connecting the motor and not the
driven device.” Id. Appellants continue that “[a] power steering apparatus
according to modified Sekine would be calibrated to account for the effects
of a motor (but not a driven device), whereas Sekine’s calibration is based
on the principle that adjustment of the torque sensor should not be ‘affected
by the electric motor.’” Id. at 20 (quoting Sekine, 46:35—39).
Appellants’ argument does not inform us of Examiner error. Even if a
person having ordinary skill in the art would have to entirely reconstruct the
assembly order of Sekine’s power steering unit, such a reconstruction would
not alter Sekine’s principle of operation—Sekine would still operate as an
electric power steering apparatus. Further, as the Examiner finds, a torque
sensor and a rotation sensor “can be calibrated by different methods and at
different times during the assembly of a power steering system, so [Hill’s
and Sekine’s] methods will not conflict with each other and not change the
principle of operation of the prior inventions.” Answer 4.
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Missing limitations
Appellants argue that Sekine fails to disclose a number of claim
elements of claim 1:
• a brushless motor including a rotor, a coil disposed around
the rotor, and a rotation sensor;
• an electrical control unit including a memory circuit section
configured to memorize a correction value for correction to
a measured value of the rotation angle obtained by the
rotation sensor; and a motor drive circuit section configured
to drive the brushless motor based on a corrected measured
value of the rotation angle that is obtained by correcting the
measured value with the correction value;
• a first electrical wiring connecting the coil and the electrical
control unit;
• a second electrical wiring connecting the rotation sensor and
the electrical control unit;
• a correction value set based on a measured value of the
rotation angle that is obtained by the rotation sensor when
the rotor is rotated to a predetermined reference angular
position by energization of the coil when the coil and the
electrical control unit are connected by the first electrical
wiring, and the rotation sensor and the electrical control unit
are connected by the second electrical wiring; and
• the correction value is set when the driven device is
separated from the brushless motor, the coil and the
electrical control unit are connected by the first electrical
wiring and the rotation sensor and the electrical control unit
are connected by the second electrical wiring.
Appeal Br. 20-21.
Appellants’ argument does not inform us of Examiner error.
Appellants fail to articulate why the Examiner’s identification of where
these elements are disclosed in Sekine or Hill is in error. See Final Act. 4—8.
Merely reciting the language of the claim and asserting that the cited prior
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Application 12/882,636
art references do not disclose each claim limitation is insufficient to identify
an Examiner error. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
An apparatus combining Sekine and Hill would not be configured and
calibrated as is the apparatus of claim 1
Appellants argue that Sekine discloses a torque sensor and does not
contemplate calibrating a rotation sensor or calibrating the torque sensor
when it is rotating. Appeal Br. 22. This argument ignores the Examiner’s
reliance on Sekine’s disclosure of a rotation sensor (resolver 5h) and Hill’s
teaching of calibrating a rotation sensor. See Final Act. 5—8. Appellants fail
to persuasive explain why Sekine’s resolver, as modified by Hill’s teaching,
“would still fail to include a rotation sensor calibrated when the rotation
sensor is rotated along with the rotor of the motor.” Appeal Br. 22.
Appellants argue that “[njeither Sekine nor Hill teaches, in the context
of a power steering apparatus, having a memory circuit section.” Appeal Br.
23. This argument fails to consider the Examiner’s combination. The
Examiner relies on Sekine for disclosing the power steering apparatus and
Hill for teaching the memory circuit section. See Final Act. 4—8.
Combination does not realize the advantages of the claimed apparatus
Appellants point to a number of advantages of its apparatus. See
Appeal Br. 23—24. Appellants’ assertions do not inform us of Examiner
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error, however, as Appellants fail to identify specific claim elements that are
not present in the Examiner’s proposed combination, such that these
advantages would not be realized. See Answer 5.
Conclusion
For the reasons above, we sustain the Examiner’s rejection of
independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Sekine
and Hill. Further, Appellants fail to provide any arguments in support of the
separate patentability of claims 8—10. See Appeal Br. 25. Accordingly, we
also sustain the Examiner’s rejection of claims 8—10 as unpatentable under
35 U.S.C. § 103(a) over Sekine and Hill.
Claims 11 and 15
Independent claim 11 recites similar subject matter to claim 1. See
Appeal Br. 52—53, Claims App. Appellants repeat their arguments made for
claim 1 in traversing the rejection of claim 11. See id. at 27—36. Further,
Appellants do not argue the patentability of claim 15 separate from claim 11.
See id. at 37. Accordingly, for the reasons discussed above in connection
with our analysis of claims 1 and 8—10, we sustain the Examiner’s rejection
of independent claim 11 and dependent claim 15 as unpatentable under
35 U.S.C. § 103(a) over Sekine and Hill.
Claims 4—7, and 14
Claim 4 depends from claim 1 and further recites “wherein the
electrical control unit housing section is arranged between the motor housing
section and the driven-device housing.” Appeal Br. 50, Claims App.
Appellants argue that “it is apparent from Sekine’s disclosure that” the
structure identified by the Examiner as the electronic control unit housing
section “are not ‘arranged between’ a housing for Sekine’s motor 5 and the
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reduction gear box 4 including the worm housing unit 12 in the manner of’
Appellants’ structure. Appeal Br. 25—26. Appellants’ argument appears to
implicitly interpret the claim term “is arranged between” to require a
straight-line arraignment of the motor housing, electronic control unit, and
driven device housing. See Tr. 11—14.
Appellants’ argument does not inform us of Examiner error. We
conclude that the Examiner properly construed the term “is arranged
between” to encompass an arrangement where the motor housing, electronic
control unit, and driven device housing are arranged in an “L”-shaped
configuration, with the motor housing and driven device housing forming
the legs of the “L” and the electronic control unit in between the legs, as
found by the Examiner and seen in Sekine’s Figure 5. See Final Act. 8;
Sekine, Fig. 5.
For the reasons above, we sustain the Examiner’s rejection of
dependent claim 4 as unpatentable under 35 U.S.C. § 103(a) over Sekine and
Hill. Further, Appellants fail to provide any arguments in support of the
separate patentability of claims 5—7, which depend, directly or indirectly,
from claim 4. See Appeal Br. 26. Also, Appellants rely on their same
argument made in traversing the rejection of claim 4 for the patentability of
claim 14, which depends from claim 11 and recites similar subject matter to
claim 4. Id. at 53, Claims App. Accordingly, we also sustain the
Examiner’s rejection of claims 5—7 and 14 as unpatentable under 35 U.S.C.
§ 103(a) over Sekine and Hill.
Claims 16, 19, and 20
Independent claim 16 recites similar subject matter to claim 1. See
Appeal Br. 54—55, Claims App. Appellants repeat their arguments made for
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claim 1 in traversing the rejection of claim 16. See id. at 38-47. Further,
Appellants do not argue the patentability of claims 19 and 20 separate from
claim 16. See id. at 47. Accordingly, for the reasons discussed above in
connection with our analysis of claims 1 and 8—10, we sustain the
Examiner’s rejection of independent claim 16 and dependent claims 19 and
20 as unpatentable under 35 U.S.C. § 103(a) over Sekine and Hill.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 4—11, 14-
lb, 19, and 20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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