Ex Parte Meyer

Board of Patent Appeals and Interferences

Nov 25, 2009

10495024 (B.P.A.I. Nov. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTIAN MEYER
__________

Appeal 2009-006083
Application 10/495,024
Technology Center 2800
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Decided: November 25, 2009
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Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1, 3-5, and 7-11. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appellant describes a fastening device for fastening a component to a
brush holder for an electrical machine (Spec. 1). The fastening device is
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said to include a “pot-shaped recess 7”, which tapers toward the bottom of
the pot (Spec. 5; Fig. 4).
Claims 1 and 7 are illustrative:
1. A fastening device for fastening a component (4; 15) to a brush
carrier (1) for an electrical machine, wherein the fastening device has
fastening means formed as one piece with the brush carrier (1) and
configured as at least one continuous tapered region (7; 25, 26) against
which an outer surface of the component (4; 15) bears when installed.

The Examiner relies on the following prior art references as evidence
of unpatentability:

Burgess 5,942,819 Aug. 24, 1999
Uchida 6,104,110 Aug. 15, 2000

Appellant appeals the following rejections:
1. Claims 1, 3, 4, 8-11, and 12 are rejected under 35 U.S.C. § 102(b) as
being unpatentable over Burgess.
2. Claims 5 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burgess in view of Uchida.
With regard to rejection (1), Appellant separately argues claim 1 only.
Appellant’s broad allegation that claim 11 patentably distinguishes over the
art does not amount to a separate argument because it fails to set forth any
specific argument regarding the Examiner’s findings with respect to claim
11. Therefore, we select claim 1 as a representative claim on which to
render our decision, with the remaining claims standing or falling therewith.
37 C.F.R. § 41.37(c)(1)(vii).
With regard to rejection (2), Appellant separately argues claim 7, but
advances no arguments regarding claim 5.

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REJECTION (1): § 102(b) over Burgess
ISSUE
Has Appellant shown that the Examiner reversibly erred in finding
that Burgess teaches a “fastening means formed as one piece with the brush
carrier and configured as at least one continuous tapered region against
which an outer surface of the component bears when installed” as recited in
claim 1? We decide this issue in the negative.

PRINCIPLES OF LAW
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently. In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Claims directed to an apparatus or device must be distinguished from
the prior art in terms of structure. See In re Danly, 263 F.2d 844, 848
(CCPA 1959) (“Claims drawn to an apparatus must distinguish from the
prior art in terms of structure rather than function”); In re Gardiner, 171
F.2d 313, 315-16 (CCPA 1948) (“It is trite to state that the patentability of
apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof.”).
A patent applicant is free to recite features of an apparatus
either structurally or functionally. See In re Swinehart, 58
C.C.P.A. 1027, 439 F.2d 210, 212, 169 USPQ 226, 228 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining
something by what it does rather than what it is] in drafting
patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our
predecessor court stated in Swinehart, 439 F.2d at 213, 169
USPQ at 228: where the Patent Office has reason to believe that
a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
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inherent characteristic of the prior art, it possesses the authority
to require the applicant to prove that the subject matter shown
to be in the prior art does not possess the characteristic relied
on.

Schreiber, 128 F.3d at 1478.
Absence of a prior art disclosure relating to function does not defeat a
finding of anticipation. Schreiber, 128 F.3d at 1477. Applicant has the
burden of showing that the prior art apparatus or device does not inherently
possess the functionally defined limitations of the claimed apparatus. Id.
During examination, claim terms are given their broadest reasonable
interpretation consistent with the Specification. In re Am. Acad. of Science
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Patent and Trademark
Office applies to the claim terms 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 applicant's Specification. In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).

FACTUAL FINDINGS (FF)
1. The Examiner determines that the “when installed” language of the
claim does not require that the component is part of the fastening
device (Ans. 5-6). In other words, the Examiner determines that the
claimed structure is directed to a fastening device having fastening
means formed as one piece with the brush carrier and configured as at
least one continuous tapered region. Appellant does not challenge this
claim construction.
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2. The Examiner further finds that Burgess’ Figure 5 demonstrates that
coil 20c bears against the fastening means when the component is
installed (Ans. 3 and 6).
3. Burgess’ Figure 5 embodiment appears to show a cross-section of the
coil 20c and its receiving hole taken along a line that intercepts the
receiving hole at a position that would correspond to a chord of the
circular receiving hole but is not aligned with the diameter of the
receiving hole (i.e., a portion forward of the coil) (col. 5, ll. 8-18).
However, Burgess’ receiving hole in Figure 5 shows a tapered region
which the coil 20c appears to bear against. Similarly, Burgess’ Figure
4 embodiment shows a similar chord-like cross-section of the
receiving hole and coil 20b taken along line 3-3 of Figure 2.

ANALYSIS
Appellant argues that Burgess’ coils 20a to 20c do not bear against the
tapered walls of the receiving hole (i.e., fastening means) when installed
such that the claim feature is missing (Br. 4-6). However, the Examiner
properly construes the fastening device of claim 1 such that the component
is not structurally part of the claimed fastening means (FF 1 and Ans. 5-6).
Appellant does not contest this claim construction.
Claim 1 structurally recites that the fastening device has fastening
means formed as one piece with the brush carrier and configured as at least
one continuous tapered region. The component is a part that is installed in
the fastening means and is not part of the fastening means. Stated
differently, Burgess discloses an identical structure to that claimed such that
it is inherently capable of performing the claimed function (i.e., having a
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component bear against the tapered region) when an appropriately sized
component is installed. Appellant has not satisfied the burden of showing
that Burgess’ receiving hole is not capable of performing the claimed
function. Schreiber, 128 F.3d at 1478.
Regarding the Examiner’s finding that Burgess’ Figure 5 shows the
coil 20c bearing against the tapered region of the receiving hole, Appellant
argues that Figure 5 shows a cross-section located forwardly of the coil such
an improper impression is created that the rearwardly positioned coil bears
against the tapered receiving wall (Br. 5). Appellant contends that Figure 2
“clearly shows that the component does not bear against the fastening
means” (Br. 5).
Contrary to Appellant’s argument, we agree with the Examiner that
Figure 5 provides a reasonable basis for finding that the rearwardly
positioned coil bears against the tapered region. Even if the cross-section is
positioned forwardly of the coil as argued, it appears that Figure 5 shows
that the coil bears against the walls of the receiving hole, including the
tapered regions. We have reviewed Burgess’ Figure 2 and do not find that it
shows coils 20a to 20c do not bear against the tapered regions as argued by
Appellant. Figure 2 is a top view and it does not show how the lower
portions of the coils interact with the tapered region of the receiving hole
(i.e., fastening means).
For the above reasons, we determine that Appellant has not shown
reversible error in the Examiner’s finding that Burgess discloses the argued
feature. Specifically, the Examiner’s determination that Burgess teaches the
structural features of claim 1, or that Burgess’ structure is capable of
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performing the claimed function (i.e., bearing against the fastening means
when the component is installed).
We affirm the Examiner’s § 102(b) rejection of claims 1, 3, 4, and 8-
12 over Burgess.

35 U.S.C. § 103 REJECTION: BURGESS IN VIEW OF UCHIDA
ISSUE
Has Appellant shown that the Examiner reversibly erred in
determining that the subject matter of claim 7 would have been obvious over
the combined teachings of Burgess and Uchida? We decide this issue in the
affirmative.
PRINCIPLE OF LAW
The Examiner bears the initial burden of establishing a prima facie
case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

FACTUAL FINDINGS (FF)
4. Though claim 7 is rejected over the combination of Burgess in view of
Uchida, the Examiner’s analysis regarding claim 7 is directed to
Burgess’ teachings alone (Ans. 5). The Examiner’s findings that
Burgess teaches coils 20a-c fail to indicate where the claim limitation
“additional recess is formed at the edge of the recess” is taught or
suggested by Burgess (Ans. 5).
5. The Examiner further finds that Uchida teaches a recess 26 next to
recess 25 for guiding an electrical terminal connection (21d) of
component 20 either upwardly or downwardly (Ans. 7). However, the
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Examiner fails to explain how Uchida’s teaching would have been
combined with Burgess (Ans. generally).
ANALYSIS
The Examiner fails to explain how the combined teachings of Burgess
and Uchida would have rendered obvious the subject matter of claim 7. The
Examiner has merely indicated what the individual references teach, but
does not explain how their teachings would have been combined to render
the claimed invention obvious. The Examiner has not satisfied the initial
burden of establishing a prima facie case with regard to the rejection of
claim 7. Oetiker, 977 F.2d at 1445.
For the above reasons, we reverse the Examiner’s § 103 rejection of
claim 7 over Burgess in view of Uchida.
Because Appellant does not contest the Examiner’s § 103 rejection of
claim 5 over Burgess in view of Uchida, we summarily affirm that rejection.

DECISION
We affirm the Examiner’s § 102(b) rejection of claims 1, 3, 4, and
8-12 over Burgess.
We affirm the Examiner’s § 103(a) rejection of claim 5 over Burgess
in view of Uchida.
We reverse the Examiner’s § 103(a) rejection of claim 7 over Burgess
in view of Uchida.
ORDER
AFFIRMED-IN-PART
cam
Appeal 2009-006083
Application 10/495,024

9

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