10916506 (B.P.A.I. Nov. 28, 2007)

Ex Parte Huang et al

Board of Patent Appeals and InterferencesNov 28, 2007

10916506 (B.P.A.I. Nov. 28, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WEN-SHI HUANG and SHUN-CHEN CHANG ____________ Appeal 2007-2505 Application 10/916,506 Technology Center 2800 ____________ Decided: November 28, 2007 ____________ Before KENNETH W. HAIRSTON, ANITA PELLMAN GROSS, and MAHSHID D. SAADAT, Administrative Patent Judges. HAIRSTON, Administrative Patent Judge. REMAND TO THE EXAMINER Appeal 2007-2505 Application 10/916,506 2 A preliminary review of the record before us leads us to conclude that this case is not in condition for a decision on appeal. The record is not clear as to which figure of Takahashi, JP 409037504 A, the Examiner intended to address with respect to the moisture proof device of the cited Abstract, since Figure 5 (referenced by the Examiner) addresses the prior art and not the improvement shown in Figures 1, 2, and 3 (Ans. 5). The Examiner is directed to address Figures 1, 2 and/or 3 of Takahashi, especially for the monolithic covering member and for the reduction of occupied space. It appears that the part of the single insulated case which covers the circuit board qualifies as the first covering part, and the part of the single insulated case which covers the coil and the core of the stator qualifies as the second covering part (Takahashi, Figures 1 and/or 3). The Examiner must determine whether or not the first and second covering parts as claimed are met by the single insulated case of Figures 1 and/or 3 of Takahashi. In addition, it appears that Takahashi teaches the reduction in occupied space due to the particular arrangement of the coils with respect to the circuit in a single insulated case as evidenced by the comparison of Figures 1 and/or 3 to the prior art of Figure 5. In addition, the alternative embodiment of Figure 2 appears to teach an even further reduction in occupied space/size. The Examiner must determine whether or not it does. Furthermore, it appears that the claimed language of “reducing the occupied space of said fan” does not comply with the enablement requirement, since the Appeal 2007-2505 Application 10/916,506 3 Specification does not describe how the improvement of Appellants' Figure 3 reduces the occupied space of the fan as compared to the prior art in Appellants' Figures 1 and 2. The Examiner must consider whether the specification enables the claimed reduction of the occupied space of the fan. The attention of the Examiner is also directed to Figure 3 of Takahashi, which appears to teach a dented hole in the covering member between the stator and the hub (in Figure 3, where the element 30 is indicated, there appears to be a dented hole on the separating lid 201 which is telescoped to the shaft 22/protrusion inside the hub of the rotor (22a)). The Examiner must determine whether or not it does. The Examiner articulated as a motivation for modifying Takahashi the teaching that it is well known to enclose covered electronic components (318) within or inside a hub (328), as shown by Vollmer (Ans. 10); however, a different motivation was provided in the Final Rejection (i.e., mainly reduction of noise) (Final Rejection 5). The Examiner must determine which one of the two motivational statements supports the legal conclusion of obviousness. It also appears that claim 6 does not further limit independent claim 4 given the definition of monolithic in the record. The Examiner must determine whether or not claim 6 further limits the claimed invention. In view of the foregoing, clarification of the record is required. We note that the Appellants were aware that Figures 1-4 in Takahashi best describe the improvements over Takahashi's prior art Figure 5 (Reply Br. 1). However, the Appellants were not given the opportunity to fully address the Appeal 2007-2505 Application 10/916,506 4 corresponding appropriate figures in responses submitted prior to the Reply Brief. Thus, the application is hereby remanded to the Examiner for further consideration and clarification as the appeal as presently presented with arguments directed to Figure 5 of Takahashi, as opposed to Figures 1, 2, and 3, is not ripe for a decision on appeal. This remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)) is made for further consideration of a rejection. Accordingly, 37 C.F.R. § 41.50(a)(2) applies if a Supplemental Examiner's Answer is written in response to this remand by the Board. 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)(1)(iv) (2006). REMANDED tdl/gvw BIRCH STEWART KOLASCH & BIRCH PO BOX 747 FALLS CHURCH, VA 22040-0747