Joachim Nikola et al.

Patent Trials and Appeals Board

Dec 15, 2020

2019006026 (P.T.A.B. Dec. 15, 2020)

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.
14/007,231 09/24/2013 Joachim Nikola 2915-102 9538
31554 7590 12/15/2020
CARTER, DELUCA & FARRELL LLP
576 BROAD HOLLOW ROAD
MELVILLE, NY 11747
EXAMINER
CHAN, KAWING
ART UNIT PAPER NUMBER
2846
NOTIFICATION DATE DELIVERY MODE
12/15/2020 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):
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOACHIM NIKOLA, HANS JUERGEN KOLLAR,
ROLF JANZER, JUERGEN MAUCHER, and THOMAS WETZEL1
____________

Appeal 2019-006026
Application 14/007,231
Technology Center 2800
____________

Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY,
and JANE E. INGLESE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 14, 16–22, and 24–26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as SEW-
EUDRODRIVE GmbH & Co. KG. Appeal Br. 2.
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BACKGROUND
The subject matter on appeal relates to converter assemblies. E.g.,
Spec.2 1:2–4; Claim 14. Claim 14 is reproduced below from the Claims
Appendix of the Appeal Brief:
14. A converter assembly, comprising:
a base module including power electronics and control
electronics, the base module having a housing or a housing part
completely or at least partially forming a housing for the power
electronics and control electronics,
wherein the base module includes an electrical and mechanical
interface, via which signal electronics are joinable to the base
module with form-locking and/or force-locking, in order to form
the converter assembly,
wherein the signal electronics includes a housing such that after
being joined, the housing of the signal electronics and the
housing of the base module together form a housing of the
converter assembly,
wherein a setpoint value for speed and/or torque is transmittable
electrically via the interface, the signal electronics having means
for receiving, determining and/or inputting the setpoint value;
and
wherein:
(a) the signal electronics includes an automatic control unit
which, based on a deviation between a setpoint value of a
variable of a position, and an actual value, determines a
manipulated value which is transmitted as the setpoint value
for speed and/or torque via the interface to the control
electronics; and/or
(b) the signal electronics includes a positioning control which
determines an instantaneous manipulated value as controlled

2 Our citations to “Spec.” are to the Specification dated September 24, 2013,
that is labeled “Substitute Specification” in the lower right corner of each
page.
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variable that is transmitted as the setpoint value for speed
and/or torque via the interface to the control electronics; and
the control electronics consists of an automatic control unit
which, based on a deviation between the setpoint value
transmitted by the signal electronics and an actual value for
speed and/or torque, generates pulse-width-modulated
driving signals to supply to the power electronics.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claims 14, 16–22, and 24–26 under 35 U.S.C. § 112, ¶ 1, for
failure to comply with the written description requirement.
2. Claims 14, 16–22, and 24–26 under 35 U.S.C. § 112, ¶ 2, for
indefiniteness.
3. Claims 14, 16–22, and 24–26 under 35 U.S.C. § 103(a) as
unpatentable over Rouvelin (US 2006/0136622 A1, published June 22,
2006), Wieloch (US 5,764,023, issued June 9, 1998), and Rozman
(US 2007/0216343, published Sept. 20, 2007).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections
under 35 U.S.C. § 112, ¶ 1 and 35 U.S.C. § 103. Accordingly, we affirm
those rejections for reasons set forth below, in the Final Action dated
October 12, 2018 (“Office Act.”), and in the Examiner’s Answer. However,
as set forth below, we reverse the rejection under 35 U.S.C. § 112, ¶ 2.
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Rejection 1
“[T]he test for [compliance with the written description requirement]
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.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010). “The invention claimed does not
have to be described in ipsis verbis in order to satisfy the description
requirement of § 112.” In re Lukach, 442 F.2d 967, 969 (CCPA 1971).
As to claim 14, the Examiner finds that the term “the control
electronics consists of an automatic control unit” (emphasis added) lacks
written description support because the written description states only that
“[t]he control electronics may have an automatic control unit,” Spec. 3:15,
and, according to the Examiner, “nowhere in the specification clearly
describes the control electronic consists of automatic control unit, but rather
includes automatic control unit,” Final Act. 4.
The Appellant argues that support for the disputed term can be found
in the Specification’s disclosure that “a base module . . . represents a
converter of limited functionality, namely, only the closed-loop control to
the torque setpoint value or speed setpoint value.” Appeal Br. 4 (citing
Spec. 2:17–28).
The Appellant’s argument fails to persuasively identify reversible
error in the Examiner’s rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections . . . .”). The written
description discloses that “[t]he control electronics may have an automatic
control unit,” Spec. 3:15, and that “[c]ontrol electronics 2 have an automatic
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control unit,” id. at 7:25. Those descriptions are open-ended and permit the
control electronics to have components other than an automatic control unit.
The disputed limitation, “the control electronics consists of an
automatic control unit,” excludes the “control electronics” from having any
component other than an automatic control unit. Effectively, it is a negative
limitation that is equivalent to reciting that the control electronics includes
an automatic control unit, but does not include anything else.
“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.” See
Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir.
2012). The Appellant has not persuasively identified a reason in the
Specification for excluding everything from the control electronics except an
automatic control unit. As set forth above, the Specification does not
provide express support for the disputed term, and the Specification’s
reference to a “limited functionality” embodiment, on which the Appellant
relies, see Appeal Br. 4, says nothing about an automatic control unit and
does appear to otherwise provide adequate disclosure to show possession of
an embodiment in which the control electronics consists only of an
automatic control unit. Cf. ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
F.3d 1368, 1377 (Fed. Cir. 2009) (to show possession, specification “must
do more than merely disclose that which would render the claimed invention
obvious”).
The Appellant’s limited discussion of that disclosure, see Appeal
Br. 4, fails to persuade us that the relied-upon disclosure shows possession
of the disputed limitation, see Jung, 637 F.3d at 1365. We affirm the
Examiner’s § 112, ¶ 1 rejection of claim 14. Claims 16–22, 24, and 25
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include the same limitation through claim dependency. The Appellant raises
no separate arguments as to those claims. Accordingly, consistent with the
provisions of 37 C.F.R. § 41.37(c)(1)(iv), those claims fall with claim 14.
Claim 26 recites, “the controller unit of the controller3 electronics
consisting of a torque and/or speed controller.” The Examiner finds that,
“[t]hroughout the disclosure of the instant application, the control electronic
[is] only being described as ‘includes a torque and/or speed controller,’” and
thus fails to support the “consisting of” language of claim 26. Final Act. 4–
5.
In opposition to the Examiner’s position, the Appellant relies on the
same disclosure described above regarding the “limited functionality”
embodiment of the Specification. Appeal Br. 4. As above, however, that
disclosure says nothing about a controller unit or about a controller unit
being limited to a torque and/or speed controller. Our analysis above applies
equally to this disputed term. The Appellant’s limited discussion of the
relied-upon disclosure, see id., fails to persuade us that the relied-upon
disclosure shows possession of the disputed limitation, see Jung, 637 F.3d at
1365. We affirm the Examiner’s § 112, ¶ 1 rejection of claim 26.
Rejection 2
Claim 14 recites, “the control electronics consists of an automatic
control unit.” Claim 18 recites, “the automatic control unit includes a linear

3 The term “the controller electronics” in claim 26 lacks antecedent basis. It
appears that the Appellant may have intended to recite “the control
electronics.” In the event of further prosecution of the application on appeal,
the Appellant and the Examiner may wish to address that apparent
discrepancy.
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controller, or a PI controller with or without pre-control.” Claim 25 recites
“each automatic control unit includes a linear controller, P controller, PI
controller, or PID controller, with or without pre-control.” The Examiner
determines that the foregoing terms “render the claims indefinite because the
phrase ‘consists of’ and ‘includes’ are used to describe the ‘automatic
control unit.’” Final Act. 5.
The Examiner’s position is not persuasive for reasons consistent with
the Appellant’s arguments. See Appeal Br. 5–6; Reply Br. 4–5. Namely,
the fact that claim 14 recites that the control electronics “consists of” an
automatic control unit is not inconsistent with the use of “includes” in claims
18 and 25 because claims 18 and 25 are simply specifying subcomponents of
the automatic control unit itself; claims 18 and 25 are not specifying
additional required components of the control electronics.
The Examiner also finds that the terms are “expansive.” Final Act. 5.
Breadth, however, does not necessarily lead to indefiniteness, see In re
Miller, 441 F.2d 689, 693 (CCPA 1971) (“[B]readth is not to be equated
with indefiniteness . . . .”), and the Examiner’s position concerning the
interplay of the “consists of” and “includ[ing]” language of the claims is not
persuasive, as set forth above.4 On this record, the Examiner has not
adequately established that any of claims 14, 18, or 25 is indefinite.

4 We observe that the Examiner did not determine that any of the disputed
terms invokes § 112, ¶ 6, under Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1347–51 (Fed. Cir. 2015). In the event of further examination of the
application on appeal, the Examiner and the Appellant may wish to consider
whether the terms “unit” and “controller,” used throughout the claims, might
be “nonce” words that invoke § 112, ¶ 6. Cf., e.g., Diebold Nixdorf, Inc. v.
ITC, 899 F.3d 1291, 1296–98 (Fed. Cir. 2018) (considering whether the
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Claim 26 recites, “the controller unit of the control electronics
consisting of a torque and/or speed controller.” The Examiner states that the
limitation is “unclear and so expansive that persons skilled in the art cannot
determine the metes and bounds of the claimed invention.” As above,
however, other than a conclusory assertion that the limitation is “unclear,”
the Examiner’s primary concern appears to be breadth, but the Examiner
does not adequately explain how the breadth leads to indefiniteness. The
Examiner does not determine that any of the terms in the limitation recited in
claim 26 invokes § 112, ¶ 6. See supra n.3. On this record, the Examiner
has not adequately established that claim 26 is indefinite merely because it is
broad.
All other claims subject to this ground of rejection depend from claim
14, discussed above, and the Examiner does not identify any other limitation
as being indefinite. Accordingly, we reverse the Examiner’s rejection of
claims 14, 16–22, and 24–26 under 35 U.S.C. § 112, ¶ 2.

word “unit” is a “nonce word”); Aristocrat Techs. Australia Pty Ltd. v.
Multimedia Games, Inc., 266 F. App'x 942, 945–46 (Fed. Cir. 2008)
(unpublished) (construing “control means” as a means-plus-function
limitation); Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361,
1363–64 (Fed. Cir. 2012) (“The recitation of ‘control device’ provides no
more structure than the term ‘control means’ itself, rather it merely replaces
the word ‘means’ with the generic term ‘device.”’); Fiber, LLC v. Ciena
Corp., 792 F. App'x 789, 2019 WL 6216149, at *4 (Fed. Cir. 2019)
(unpublished) (construing the term “control” as a means-plus-function
limitation).
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Rejection 3
The Appellant argues the claims subject to Rejection 3 as a group.
We select claim 14 as representative, and the remaining claims will stand or
fall with claim 14. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s statement of the rejection appears at pages 7–10 of
the Final Action. Of particular relevance to the issues on appeal, the
Examiner finds that Rouvelin teaches a converter assembly comprising most
of the limitations of claim 14, including control electronics, but the
Examiner does not find that Rouvelin teaches that the control electronics
consists of an automatic control unit. Final Act. 7–8. The Examiner finds
that Rouvelin discloses a “user interface for parameter entry,” i.e., entry of a
setpoint value, but that Rouvelin “fails to explicitly disclose the parameter is
a setpoint value for speed and/or torque (although obvious in motor control
application).” Id.
As to the setpoint value, the Examiner finds that Wieloch “teaches a[]
user interface for transmitting a setpoint value for speed.” Id. at 8. The
Examiner determines that it would have been obvious to input a setpoint
value for speed in Rouvelin in view of Wieloch because “it is known in the
art to input command speed for controlling motor operation via user
interface so as to control the motor at a desired speed.” Id.
As to control electronics consisting of an automatic control unit, the
Examiner finds that Rozman teaches a controller with signal electronics,
control electronics, and power electronics, and that Rozman’s “control
electronics consists of an automatic control unit (Fig. 3: 120, 106) which,
based on a deviation between the setpoint value transmitted by the signal
electronics and an actual value for speed and/or torque (Fig. 3: 118, 102),
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generates pulse-width-modulated driving signals (92) to supply to the power
electronics (94).” Id. at 9. The Examiner determines that it would have
been obvious “to have modified the teachings of Rouvelin and Wieloch with
the teachings of Rozman,” i.e., to provide control electronics consisting of
an automatic control unit operating as disclosed by Rozman, “since it is
known in the art to determine a desired speed for motor operation according
to the position of the motor so as to provide accurate control of the motor.”
Id. at 9–10.
The Appellant first argues that Rouvelin’s control electronics “does
not consist of an automatic control unit” as recited by claim 14. App. Br. 7;
Reply Br. 6–7.
That argument is not persuasive because the Examiner relies on
Rozman, not Rouvelin, for the disclosure of control electronics consisting of
an automatic control unit. See Final Act. 9; see also In re Keller, 642 F.2d
413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking
references individually where, as here, the rejections are based on
combinations of references.”).
As noted above, the Examiner specifically identifies elements 120 and
106 of Rozman Figure 3 as corresponding to the claimed automatic control
unit. The Appellant argues that “there is no disclosure by Rozman of control
electronics that consists of PI block 120 and PI control 106.” App. Br. 8.
The Appellant argues that inverter controller 22, previously identified by the
Examiner as corresponding to “control electronics,” consists of more than
only elements 120 and 106, and includes, e.g., summer blocks 104, 110, 114;
PI block 112; voltage requirement block 108; and other elements. Id. The
Appellant’s position is that, if Rozman’s inverter controller 22 corresponds
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to the claimed control electronics, it does not “consist of” automatic control
unit 106/120 because it contains structural features other than elements 106
and 120. Id. Relatedly, the Appellant argues that Rozman does not disclose
that elements 106 and 120, in and of themselves, perform the function of the
automatic control unit recited by claim 14, i.e., “based on a deviation
between the setpoint value transmitted by the signal electronics and an actual
value for speed and/or torque, generates pulse-width modulated driving
signals to supply to the power electronics.” Id. 9–10.
We agree with the Appellant that the Examiner has not established
that Rozman’s elements 106 and 120, in and of themselves, perform the
function of the automatic control unit recited by claim 14. However,
although the Appellant is correct that, in certain portions of the Final Action,
the Examiner expressly identifies elements 106 and 120 of Rozman’s
Figure 3 as corresponding to the claimed automatic control unit, see Final
Act. 9, it is not reasonable to read the Examiner’s rejection so narrowly
because, in other portions of the Final Action and the Answer, the Examiner
makes clear that the Examiner also relies on other elements of Figure 3.
E.g., id. at 9 (relying on elements 118, 102, 92, and 94 of Figure 3); Ans. 7
(relying on elements 120, 106, 118, 102, 104, 118, 92, and 94 of Figure 3).
As the Examiner explains, Final Act. 9; Ans. 7, Rozman teaches or suggests
that inverter controller 22 as a whole does perform the function recited by
claim 14.
In particular, Rozman discloses a “desired position of the rotor
(expressed as position reference pos_ref) is used as an input to control PM
motor 24.” Rozman ¶ 40. The Examiner finds that the position reference,
i.e., desired position, constitutes a setpoint value as recited by claim 14.
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Final Act. 9. Rozman discloses that “[t]he position reference input is
compared with the estimated position of PM motor 24 (shown as
pos_fdbk_est).” Rozman ¶ 40. The Examiner finds that the estimated
position constitutes an actual value as recited by claim 14. Final Act. 9. As
the Examiner explains, id., Rozman discloses that the difference between the
desired position (setpoint value) and the actual position is “provided to PI
block 124, which determines the desired speed or speed reference
(spd_ref),” Rozman ¶ 40. Rozman discloses that, “[a]fter determining the
speed reference required to place PM motor 24 in the desired position, the
PWM inverter controller 22 operates as discussed above,” i.e., “generates
the currents and voltages (and ultimately modulation pulses) [i.e., signals]
required to generate the required speed in the PM motor 24.” Id. ¶ 39–40.
In view of those disclosures and the Examiner’s discussion of them,
we determine that the record supports the Examiner’s finding that Rozman
teaches or suggests a controller that generates pulse-width-modulated
driving signals based on a deviation between setpoint value and actual value
for speed and/or torque. The Appellant’s argument that Rozman does not
teach or suggest an automatic control unit that performs the recited function
isolates a single sentence from the Examiner’s analysis (that the automatic
control unit consists of elements 106 and 120, Final Act. 9) and does not
meaningfully address critical aspects of the Examiner’s analysis of Rozman.
See Final Act. 9 (relying on Rozman ¶¶ 35–40); see Jung, 637 F.3d at 1365
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”).
Additionally, we observe that the Appellant itself describes the
claimed “automatic control unit” as a broad term, see App. Br. 5, 6, and the
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Appellant fails to identify any specific structure required by the term that
might exclude Rozman’s inverter controller 22—or even just the specific
components of inverter controller 22 required to perform the function
described above—from being defined both as the control electronics and as
the automatic control unit, see Reply Br. 4–5. On the record before us, we
are not persuaded of reversible error in the Examiner’s determination that
the prior art teaches or suggests control electronics and an automatic control
unit that fall within the scope of claim 14. See Jung, 637 F.3d at 1365.
The Appellant also argues that “there is no motivation or other tenable
rationale for combining Rouvelin, Wieloch, and Rozman,” and that the
Examiner “impermissibly cherry picks isolated disclosures from disparate
documents.” Final Act. 10. The Appellant further argues that the mere fact
that it was allegedly known in the art “to determine a desired speed for
motor operation according to the desired speed of the motor so as to provide
accurate control of the motor” “does not provide a motivation to combine”
the prior art.” Id.
Those arguments are not persuasive of reversible error in the
Examiner’s rejection. In the Answer, the Examiner explains that all three
references concern related subject matter. Ans. 7. The Examiner further
explains that, similar to Rozman, “Rouvelin discloses the use of torque
feedback . . . to control a motor application,” but that Rouvelin does not
specifically disclose motor control by a PWM driving signal based on a
deviation between a setpoint value and an actual value. Id. The Examiner
explains that Rozman teaches motor control by PWM driving signals based
on such a deviation. Id. The Examiner’s proposed combination is the use of
a known element (i.e., motor control by a PWM driving signal based on a
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deviation between a setpoint value and an actual value) according to its
established function (i.e., maintaining motor operation at desired speed or
torque). Such combinations typically do not result in nonobvious subject
matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”); see also id.
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”). As
set forth above, we are not persuaded that the Appellant has shown
reversible error in the Examiner’s findings and conclusions in this case.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 16–
22, 24–26 112, ¶ 1
Written
Description
14, 16–22,
24–26
14, 16–
22, 24–26 112, ¶ 2 Indefiniteness
14, 16–22,
24–26
14, 16–
22, 24–26 103(a)
Rouvelin, Wieloch,
Rozman
14, 16–22,
24–26
Overall
Outcome
14, 16–22,
24–26
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED