Ex Parte Joschko et al

Patent Trials and Appeals Board

Aug 29, 2018

13979377 - (D) (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/979,377 09/27/2013 Witold Joschko
96897 7590 08/29/2018
PA TENT LAW OFFICES OF DR. NORMAN B. THOT
POSTFACH 10 17 56
RATINGEN, 40837
GERMANY
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TS/PIEP 1308 US-PAT 7036
EXAMINER
TREMARCHE, CONNOR J.
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
08/29/2018 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 WITOLD JOSCHKO and THOMAS JOACHIM GIBAT
Appeal2018-000860
Application 13/979 ,3 77 1
Technology Center 3700
Before LINDA E. HORNER, EDWARD A. BROWN, and
LISA M. GUIJT, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Witold Joschko and Thomas J. Gibat ("Appellants") appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 6-11 and 13-
18, which are all the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The Appeal Brief identifies the real party in interest as Pierburg Pump
Technology GmbH. Br. 2.
Appeal2018-000860
Application 13/979,377
CLAIMED SUBJECT MATTER
Appellants' disclosure "relates to an electric motor vehicle coolant
pump for supplying coolant to an internal combustion engine, wherein the
brushless electromotor is commutated electronically." Spec. ,r 2.
Claims 6, 13, and 16 are independent. Claim 6 is illustrative of the
subject matter on appeal, and reads:
6. An electric coolant pump for a motor vehicle, the electric
coolant pump comprising:
a wet section in which is arranged an impeller and a
permanently magnetized motor rotor of an electronically
commutated electromotor;
a dry section in which is arranged an electric circuit board
compnsmg,
a plurality of power semiconductors which each
comprise a cooling lug, and
electric controls configured to drive the plurality of
power semiconductors; and
a partition wall lying in a traverse plane, the partition wall
being arranged to separate the wet section and the dry section,
wherein,
the plurality of power semiconductors are each arranged
on a proximal side of the electric circuit board facing the partition
wall,
the electric controls are each arranged on a distal side of
the circuit board averted from the partition wall,
each of the plurality of power semiconductors comprises a
connection consisting of the cooling lug being arranged on or
soldered to a cooling lug conductor strip, and
on a side of the partition wall facing the electric circuit
board, the partition wall comprises a heat conductor which is
configured to be electrically non-conductive, the heat conductor
being arranged to rest directly on a respective cooling lug
conductor strip.
Br. 18 (Claims App.).
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Application 13/979,377
REJECTIONS
1. Claims 6-11 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 6-10, 13, 14, 16, and 17 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Nakanishi (US 2008/0118380 Al, published
May 22, 2008), Morozumi (US 2009/0289344 Al, published Nov. 26,
2009), and Hajicek (US 6,377,462 Bl, issued Apr. 23, 2002).
3. Claims 11, 15, and 18 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Nakanishi, Morozumi, Hajicek, and Mateme (US
6,445,098 Bl, issued Sept. 3, 2002).
ANALYSIS
Rejection 1: Written Description
Initially, the meaning of the limitation, "each of the plurality of power
semiconductors comprises a connection consisting of the cooling lug being
arranged on or soldered to a cooling lug conductor strip,"2 (Br. 18 (Claims
App. (emphasis added)), as recited in claim 6, is at issue for this rejection.
The term "comprises" is open-ended and does not exclude additional,
unrecited elements. See Mars, Inc. v. HJ. Heinz Co., 377 F.3d 1369, 1376
(Fed. Cir. 2004). In contrast, use of the phrase "consisting of' to set off a
claim element "creates a very strong presumption that that claim element is
'closed' and therefore 'exclude[s] any elements ... not specified in the
claim."' See Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics
Corp., 831 F.3d 1350, 1358 (Fed. Cir. 2016) (citation omitted). Where both
2 Herein, we also refer to this limitation as the "connection limitation."
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Application 13/979,377
terms "comprising" and "consisting of' are recited in a claim, the term
"consisting of' does not narrow the entire claim:
The reasonable interpretation of the claims contammg
both of the terms "comprising" and "consists" is that the term
"consists" limits the "said portion" language to the subsequently
recited [material], but the earlier term "comprising" means that
the claim can include that portion plus other [elements].
In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004). Accordingly, we
construe the connection limitation to require each power semiconductor to
have "a connection consisting of the cooling lug being arranged on or
soldered to a cooling lug conductor strip," wherein the connection itself
includes only the structures of a cooling lug being arranged on or soldered to
a cooling lug conductor strip, but not to preclude each power semiconductor
from having additional "connections" or any other structures.
The Examiner finds that claim 6 fails to comply with the written
description requirement of§ 112, first paragraph, because the connection
limitation is "new matter." Final Act. 3. According to the Examiner, the
Specification "does not provide support for a connection only of the cooling
lug being arranged or soldered to a cooling lug conductor strip." Id. at 3--4.
The Examiner explains that the lack of a "positive recitation" of the
connection limitation in the Specification "leaves the possibility that other
materials or components may be in the connection due to the figures alone
not being enough to support the claimed limitation." Id. at 4.
Appellants contend that the Specification and drawings provide
sufficient support for the connection limitation. Br. 8. As for the
Specification, Appellants submit that support is provided in the following
paragraphs: 5 ("the cooling lugs of the power semiconductors are contacted
directly with a conductor strip on the circuit board"); 6 ("[ e Jach cooling lug
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Application 13/979,377
is arranged on a cooling lug conductor strip"); 13 ("[ e Jach of the cooling
lugs of the power semiconductors is arranged on a respective individual
conductor strip and is soldered thereto"); 14 ("[t]he conductor strip onto
which the cooling lug is soldered must thus have a larger surface area than
the cooling lug itself and/or than the area of the cooling lug connected with
the conductor strip"); 15 ("the cooling lugs of the power semiconductors are
each still electrically connected or soldered to an individual conductor strip
of the circuit board"); and 18 ("the size of the surface area of the respective
cooling lug by which the same is fixed or soldered to the conductor strip").
Id. at 9--10 ( emphases added). Appellants contend these disclosures make
clear that the cooling lug "is always connected to the cooling lug conductor
strip," and that the connection can occur via a soldering. Id. at 10.
Appellants submit that the Specification nowhere states that "the cooling lug
(as part of the power semiconductor) is attached to anything other than the
cooling lug conductor strip." Id. As for the drawings, Appellants submit
Figure 1 shows that cooling lug 34 of power semiconductor 30 is only
connected to cooling lug conductor strip 42, and Figure 2 shows that cooling
lug 34' of power semiconductor 30' is only connected to cooling lug
conductor strip 42, with the connection occurring via solder 35. Id. at 10-11
(showing Appellants' annotated versions of Figs. 1 and 2).
The Examiner responds that Figure 2 "does not show elements that
must be there such as wiring for the stator as well as additional circuitry and
therefore cannot be relied upon to support the consisting of language in the
claim." Ans. 17 ( emphasis added). The Examiner submits, "[ t ]he cited
paragraphs from the specification ... do not clarify that the claimed
connection consists only of these elements." Id. at 18. The Examiner
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further submits, "in Figure 2 there appears to be a wire (unlabeled wire on
the right hand semiconductor 32) connected to a power semiconductor
which would show that a connection to the semiconductor is more than the
cooling lug and the cooling lug conductor strip." Id.
The test for sufficiency under the written description requirement of
§ 112 "is whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date." See Ari ad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). As discussed
above, we construe the connection limitation to not require each power
semiconductor to have only "a connection consisting of the cooling lug
being arranged on or soldered to a cooling lug conductor strip," but rather, to
require each power semiconductor to have at least this connection. Figure 2
depicts a connection where cooling lug 34' is "soldered to" cooling lug
conductor strip 42' via solder 35, without showing any other structures as
part of the connection, as required by the "consisting of' language of claims.
We note that "under proper circumstances, drawings alone may provide a
'written description' of an invention as required by§ 112." Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991) (emphasis added).
Paragraphs 13-15 and 18 of the Specification describe such soldering of
cooling lugs to conductor strips, as shown in Figure 2. Paragraph 6 of the
Specification describes cooling lugs "arranged on" cooling lug conductor
strips, and paragraph 5 describes that the cooling lugs can be "contacted
directly with" conductor strips. Accordingly, the Specification and drawings
provide an adequate disclosure with regard to the connection limitation that
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would reasonably convey to one of ordinary skill in the art that the inventors
had possession of the claimed subject matter as of the filing date.
Regarding the Examiner's positions that Figure 2 "does not show
elements that must be there," and appears to show an additional connection
to the semiconductor (Ans. 17), the Examiner does not establish, with
evidence, that Figure 2 fails to show any additional elements that must be
present with regard to the connections between elements 34 and 42 or
elements 34' and 42'. And, Figure 2 shows the "unlabeled wire" being
connected to semiconductor 32 and a portion of conductor strip 42, but not
as providing a connection between cooling lug 34 and conductor strip 42.
Moreover, even if the "wire" provides an additional connection to power
semiconductor 30, our construction of the connection limitation does not
preclude this connection.
For the foregoing reasons, we do not sustain the rejection of claims 6-
11 as failing to comply with the written description requirement of 35 U.S.C.
§ 112.
Rejection 2: Obviousness of Claims 6-10, 13, 14, 16, and 17
Appellants present argument only for claim 6. Br. 13-16.
Accordingly, we select claim 6 as representative of the group. Claims 7-10,
13, 14, 16, and 17 stand or fall with claim 6. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
For claim 6, the Examiner finds that Nakanishi discloses a fluid pump
comprising, inter alia, a circuit board (i.e., circuit substrate 23) and a
plurality of semiconductors (i.e., "semiconductor devices" 25). Final Act.
4--5 (citing Nakanishi, Figs. 1-3). The Examiner finds that Nakanishi does
not disclose that each semiconductor comprises a cooling lug. Id. at 5.
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The Examiner finds that Morozumi teaches a semiconductor device
10 including a cooling lug (i.e., heat radiator 13) on the semiconductor. Id.
( citing Morozumi, Fig. 1, ,r,r 24, 27). The Examiner determines it would
have been obvious to modify the semiconductor in Nakanishi with the
cooling lug taught by Morozumi to increase thermal diffusion from the
semiconductor so that it will not be damaged by excess heat. Id. The
Examiner finds that Nakanishi as modified by Morozumi does not disclose
the claimed connection limitation. Id. at 6.
The Examiner relies on Hajicek to disclose components using a
cooling lug conductor strip (i.e., trace 14). Final Act. 6 (citing Hajicek, Fig.
1 ). The Examiner explains that the combination of Nakanishi, Morozumi,
and Hajicek results in the cooling lug conductor strip of Hajicek placed on
the circuit board of Nakanishi such that a connection consisting of the
cooling lug of Morozumi is arranged on the cooling lug conductor strip for
heat conduction. Id.; see also Ans. 19.
Appellants contend that the applied combination of references fails to
teach or suggest the connection limitation. Br. 15. According to Appellants,
this limitation makes clear, via the phrase "consisting of," "that the
connection is exclusively via 'the cooling lug being arranged on or soldered
to a cooling lug conductor strip."' Id. at 14. Appellants submit, "the
connection of the power semiconductors to the cooling lug conductor strip
consists of the cooling lug being arranged on the cooling lug conductor strip
or the cooling lug being soldered to a cooling lug conductor strip." Id. at 15.
Appellants assert that, in contrast, Hajicek teaches that the power
semiconductors (i.e., heat-generating electronic components 20) are (i)
arranged on traces 14 ("cooling lug conductor strip") and (ii) also connected
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to metal plate 22 via solder bridge 30. Id. (showing annotated version of
Fig. 2 of Hajicek).
Appellants' contentions are not persuasive. First, the contention that
each of Nakanishi, Morozumi, and Hajicek individually fails to teach or
suggest the connection limitation does not consider the totality of the
teachings of the references, in combination, and, consequently, is not
responsive to the rejection set forth by the Examiner. Br. 13. Regarding the
combination, the Examiner explains that Nakanishi teaches power
semiconductors, which would be connected to the cooling lug of Morozumi
to facilitate heat transfer from the semiconductors, and the cooling lug
would be connected to the cooling lug conductor strip of Hajicek, resulting
in the semiconductors of Nakanishi comprising a connection consisting of
the cooling lug of Morozumi arranged on the cooling lug conductor strip of
Hajicek. Ans. 19. The combination would place the cooling lug of
Morozumi between the semiconductor of Nakanishi and the cooling lug
conductor strip of Hajicek. Id.
Second, although Hajicek depicts a solder connection between heat
generating electronic component 14 and metal plate 22 in Figures 1 and 2,
the Examiner does not rely on Hajicek for teaching this connection.
Accordingly, Appellants' contention does not address the Examiner's use of
Hajicek in the combination, or explain persuasively why the solder
connection of Hajicek would be necessary in the proposed modification of
the semiconductors of Nakanishi.
Thus, we sustain the rejection of claim 6 as unpatentable over
Nakanishi, Morozumi, and Hajicek. Claims 7-10, 13, 14, 16, and 17 fall
with claim 6.
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Re} ection 3: Obviousness of Claims 11, 15, and 18
Appellants elected to not submit arguments against this rejection. Br.
16. Accordingly, we sustain the rejection of claims 11, 15, and 18 as
unpatentable over Nakanishi, Morozumi, Hajicek, and Mateme.
DECISION
We reverse the rejection of claims 6-11 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
We affirm the rejection of claims 6-10, 13, 14, 16, and 17 under 35
U.S.C. § 103(a) as unpatentable over Nakanishi, Morozumi, and Hajicek.
We affirm the rejection of claims 11, 15, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Nakanishi, Morozumi, Hajicek, and Mateme.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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