Mark Spickard

Patent Trials and Appeals Board

Feb 2, 2021

2020000763 (P.T.A.B. Feb. 2, 2021)

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.
15/213,157 07/18/2016 Mark A. Spickard 510962 7389
53609 7590 02/02/2021
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
CARRASQUILLO, JORGE L
ART UNIT PAPER NUMBER
2846
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. SPICKARD
Appeal 2020-000763
Application 15/213,157
Technology Center 2800
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–25. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Woodward, Inc. Appeal Br. 2.
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Application 15/213,157
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CLAIMED SUBJECT MATTER
The claims are directed to an actuator such as that depicted in Figure 1
at 10. See, e.g., claims 2, 8, 14, and 20; Spec. ¶ 24. The actuator includes a
motor (e.g., Fig. 4 at 22) and a switching array (e.g., Fig. 4 at 46). Claims 2,
8, 14, and 20; Spec. ¶ 32. The switching array includes a first set of switches
and a second set of switches, each set for a different function. Claims 2, 8,
14, and 20. Claim 2, reproduced below, is illustrative of the claimed subject
matter:
2. An actuator, comprising:
a motor with a configurable topology; and
a switching array operably coupled to the motor, the
switching array adapted to configure the topology of the motor;
wherein the switching array includes a first set of
switches for configuring the topology of the motor to a Y-
configuration or a Δ-configuration and a second set of switches
for configuring the topology of the motor, the motor having a
number of active stator poles, to eliminate half of the active
stator poles of the motor.
Appeal Br. App’x 1.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Takata ’242 US 4,644,242 Feb. 17, 1987
Takata ’340 US 4,770,340 Sept. 13, 1988
Satake US 4,785,213 Nov. 15, 1988
Shlien US 4,949,023 Aug. 14, 1990
Das US 6,493,924 B2 Dec. 17, 2002
Jeong US 2004/0021389 A1 Feb. 5, 2004
Fuchs US 2010/0019714 A1 Jan. 28, 2010
Hao US 2014/0239876 A1 Aug. 28, 2014
Kawashima JP 3215191 A Sept. 20, 1991

REJECTIONS
Claims 2–25 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Non-Final Act. 3.
Claims 2–20, 24, and 25 are rejected under 35 U.S.C. § 103 as being
unpatentable over Das in view of Kawashima, Takata ’340, Takata ’242,
Fuchs, Jeong, Shlien, Hao and/or Satake. Non-Final Act. 5–6.
OPINION
Indefiniteness
The Examiner opens the indefiniteness rejection with a paragraph
directed to all the claims. Non-Final Act. 3. Appellant contends that the
Examiner failed to identify the claim or specific limitation being rejected,
failed to read the claim limitations as a whole, and failed to identify any
essential element that is missing from the claims. Appeal Br. 7.
Although we have sympathy for the Appellant’s argument given the
Examiner’s listing of all the claims rather than the specific ones quoted, we
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Application 15/213,157
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do not find a reversible error based on this first argument of Appellant. Our
reasons follow.
First, we consider the law. In the prosecution of a patent, the initial
burden falls on the Examiner to set forth the basis for any rejection. In
setting forth the basis, the Examiner must adequately explain the rejection so
that the applicant is properly notified and able to respond. Hyatt v. Dudas,
492 F.3d 1365, 1369–70 (Fed. Cir. 2007). It is proper to “uphold a decision
of less than ideal clarity if the agency’s path may reasonably be
discerned.” In re Applied Materials, Inc., 692 F.3d 1289, 1294 (Fed. Cir.
2012) (quoting Bowman Transp., Inc. v. Arkansas–Best Freight Sys.,
Inc., 419 U.S. 281, 285–86 (1974)).
We are able to reasonably discern the Examiner’s reasoning here.
Although the opening paragraph of the rejection refers to all the claims, it is
evident that the specific limitations discussed are found in claims 2 and 20.
Thus, Appellant was given notice of the rejection in a way that meets the
requirements of 35 U.S.C. § 132 for those claims and the claims depending
therefrom. We thus consider the rejection as it relates to those claims. In re
Ludtke, 441 F.2d 660, 662 (CCPA 1971).
We select claim 2 as representative for resolving the issues presented
by the Examiner’s determination of indefiniteness for these limitations. We
discuss the indefiniteness problem in terms of representative claim 2 below.
Claim 2: “topology”
The Examiner determines that “[i]t is unclear and vague what the
second set of switches for configuring the topology of the motor is for,” that
“the last limitation is not a complete idea,” “the claims lack essential
information for [performing] the claims results,” “[t]he claims attempt to
perform a change multiple parts the motor topology in term of a generic
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result from multiple undefined array without important steps to perform it,”
and “[t]here is not a process to perform said multiple changes or a structure
correlation to configure the motor is the claimed result.” Non-Final Act. 3.
Appellant responds by pointing out that “claim 2 is explicit that the
second set of switches ‘eliminate half of the active stator poles of the
motor.’” Appeal Br. 8. That is true. That is how the claim reads. We also
agree with Appellant that claim 2 recites that the second set of switches is
“for configuring the topology of the motor, the motor having a number of
active stator poles . . . to eliminate half of the active stator poles of the
motor.” Appeal Br. 8. That is also how the claim reads. But the problem is,
as we discuss below, in the use of fuzzy terms and functional language.
First, we consider the scope of “topology,” a word used in the phrase
the Examiner rejects as well as throughout the claims and discussed by the
Examiner and Appellant in relation to claims 24 and 25. Non-Final Act. 4–5;
Appeal Br. 11, 15–18; Reply Br. 9–12.
In so far as “topology” is defined as the electrical connections
required to accomplish a Y-configuration, Δ-configuration, pole elimination,
and winding ratio adjustment (Spec. ¶ 23), the scope of “topology” is
reasonably precise. The word “topology” covers a genus of electrical
connections. But the meaning becomes fuzzy when one considers claims 24
and 25. Those claims recite that the topology includes set speeds. We
explain why this creates indefiniteness below.
As the law requires, we must consider the claim language in light of
the Specification and give terms the meaning that is consistent with the
Specification. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
2017) (the “broadest reasonable interpretation . . . [is] an interpretation that
is ‘consistent with the specification’”). Appellant’s Specification defines
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Application 15/213,157
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“topology” as “the electrical connections between the windings of the stator
poles and/or parts of the windings of the stator poles.” Spec. ¶ 23. According
to the Specification, the switching array configures the topology (electrical
connections) between the windings or parts of windings. Id. We interpret the
topology as the map of the electrical connections within the electrical circuit
leading to a specific configuration (e.g., Y-configuration, Δ-configuration,
pole elimination, and winding ratio adjustment) of the motor circuit. In
claims 24 and 25, set speeds are said to be “the maximum, no-load speed of
the motor for a given applied voltage.” Spec. ¶ 47. It is not clear how set
speed can be part of the electrical connections between the windings or parts
of the windings. Speed is a measurement of distance over time. Thus, the
language of claims 24 and 25 calls into question the scope of “topology” and
makes the term indefinite.
All the claims contain, or depend from a claim containing, the
topology limitation. Because “topology” is indefinite, we sustain the
Examiner’s rejection of claims 2–25.
Claims 2 and 20: “for configuring”
Next we turn to the language “for configuring” in the phrase “a
second set of switches for configuring the topology of the motor . . . to
eliminate half of the active stator poles of the motor.” That limitation is
found in claims 2 and 20. We select claim 2 as representative for discussing
the issue arising from Appellant’s arguments regarding this limitation.
In essence, the “configured for” language of claim 2 recites a function
or intended use for the switches. The switches are used to configure the
topology, i.e., change the electrical connections, of the motor. This
interpretation assumes “topology” refers to electrical connections and
ignores for the moment the fuzziness caused by claims 24 and 25.
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Although there is nothing intrinsically wrong with the use of
functional claiming in drafting patent claims, In re Swinehart, 439 F.2d 210,
212 (CCPA 1971), a context-specific inquiry into whether particular
functional language actually provides the required reasonable certainty may
uncover an indefiniteness problem. BASF Corp. v. Johnson Matthey Inc.,
875 F.3d 1360, 1366 (Fed. Cir. 2017). That is the case here.
The language “for configuring” modifies the noun “a second set of
switches.” “A claim must be read in accordance with the precepts of English
grammar,” In re Hyatt, 708 F.2d 712, 714 (Fed. Cir. 1983), so “for
configuring” must be read as limiting only the switches. Yet the
Specification depicts all the switches as simple switches that toggle between
electrical connections. Thus, the Specification does not inform us how the
“for configuring” function narrows the structure of the switches. It is the
combination of the electrical connections and switches that performs the
topology change. See, e.g., Spec. ¶ 31 (“The electrical connections between
the windings of the phase coils al, a2, bl, b2, cl, c2 are configured to switch
between a Y-configuration and a Δ-configuration.” (emphasis added)).
We are cognizant that breadth is not indefiniteness. The claim could
be read as encompassing all switching arrays with two sets of switches. But
the question is what further structural limitation is imposed by the “for
configuring” limitations, which recite functional intended use limitations,
and only limit the switches themselves and are not directed to the electrical
connections containing the switches. It is unclear.
The claim language is not as reasonably precise as the circumstances
permit and the Examiner’s rejection has given Appellants an opportunity to
bring the necessary clarity to the claim language. Thus, the rejection is
proper. See In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (affirming
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an indefiniteness rejection because Packard had been given the opportunity
to bring clarity to his claim language stating that “[i]n some cases it is
difficult enough for courts to construe claims when the draftsperson has
made every effort to be clear and concise, let alone when the claims have
readily observable ambiguities or incoherencies within them”).
Thus, we sustain the rejection as to claims 2 and 20 as well as the
claims depending therefrom, i.e., claims 3–7 and 21–23, on this second basis
regarding the “for configuring” language.
Claims 8 and 14
Turning to claims 8 and 14, these claims have analogous “for
configuring” limitations. These “configured for” limitations are indefinite
for reasons analogous to those we discussed above for claim 2.
We sustain the rejection as to claims 8 and 14 as well as the claims
depending therefrom, i.e., claims 9–13 and 15–19 for reasons analogous to
those discussed above for claim 2.
Claims 2, 3, 12–15 and 17: “eliminate half of the active poles”
Turning to the Examiner’s rejection of the language “eliminate half of
the active stator poles,” as recited in claims 2, 3, 12–15 and 17, we agree
with Appellant that the Examiner reversibly erred in determining this
language is indefinite on its own apart from the rest of the “for configuring”
phrase.
The Examiner rejects this “eliminate half” language because it
requires “a more than 4 poles and always to be pair to eliminate just the half,
however, the claims do not provide details of the amount of poles and thus
leading the claims to be indefinite and lack of sense when poles are less than
four and no in an even number.” Non-Final Act. 3.
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To be definite, the claims need not include details of the amount of
poles. The language “eliminate half of the active stator poles” itself limits
the number of stator poles to an even number of four or greater. Any
structure that creates stator poles that cannot be halved does not meet the
requirements of the claim.
We agree with Appellant that “a person of ordinary skill in the art
knows that a motor, meeting all the other claim limitations, that is
configured to eliminate half the active stator poles will infringe the claim of
the patent” and “[i]f the motor is designed in such a way that half the stator
poles cannot be eliminated, e.g., based on the number or oddness/evenness
of poles, then one of ordinary skill in the art knows how to avoid
infringement of this claim.” Appeal Br. 10. In other words, the scope of this
language in terms of the number of poles present in the structure is
reasonably precise. The test for determining the question of indefiniteness
may be formulated as whether the claims “set out and circumscribe a
particular area with a reasonable degree of precision and particularity.” In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971).
We do not sustain the rejection as to the “eliminate half” language.
Claims 6, 7, 9, 10, 15, and 16: “a first part and a second part” and
“the first number and the second number being different”
Turning to claims 6, 7, 9, 10, 15, and 16, we agree with the Examiner
that these claims are indefinite. We select claims 6 and 7 as representative
for discussing the issues.
The Examiner determines that the parts of claim 6 and the number of
windings of claim 7 are not sufficiently described as different in the
Specification and it is unclear if the claims refer to different parts and
windings or to the same. Non-Final Act. 4.
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The problem is an inconsistency in claim language. Claim 6 requires
“the number of windings on each of the plurality of stator poles include a
first part and a second part.” Claim 7 requires the first part–which is defined
by claim 6 as a first part of the number of windings–include “a first number
of windings” and the second part–which is defined by claim 6 as a second
part of the number of windings–include “a second number of windings, the
first number being different than the second number.” The “number of”
language in claim 6 makes claims 6 and 7 confusing because it is not clear
what distinguishes the parts of “the number of windings” from the “first
number of windings” and the “second number of windings” and they must
be different for the claims to make sense.
We sustain the Examiner’s rejection of claims 6, 7, 9, 10, 15, and 16
as indefinite.
Claims 24 and 25: multiple speed sets
Claims 24 and 25 purport to further limit the motor topology. Claim
24 is representative. It requires that “for a given voltage, the motor topology
includes at least a first set speed in a first topology, a second set speed in a
second topology, and a third set speed in a third topology.” The Examiner
determines that claims 24 and 25 are indefinite because they “recite multiple
speed sets in multiple topologies without structural correlation and essential
claim steps to reach the different speed in the basis of the multiple
topologies.” Non-Final Act. 4.
As we discussed above, the phrase “the motor topology includes at
least a first set speed in a first topology” is not consistent with the
Specification. It is not clear how speed can be part of the electrical
connections between the windings or parts of the windings, i.e., the
connections within the electrical circuit. Speed is a measurement of distance
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over time. Thus, the language of claims 24 and 25 calls into question the
scope of “topology” and makes the term indefinite.
We sustain the Examiner’s rejection of claims 24 and 25 on this basis.
We do not sustain the reasoning found in the paragraph bridging pages 4 and
5 of the Non-Final Action directed to the no-load aspect of these claims. The
language “each of the set speeds being a no-load, maximum speed of the
motor for each of the respective topologies” merely limits the speed to the
maximum measured under no load. The Examiner’s rejection is based on a
misreading of this claim limitation. Non-Final Act. 5.
Obviousness
The Examiner rejects claims 2–20, 24, and 25 as obvious over Das in
view of Kawashima, Takata ’340, Takata ’242, Fuchs, Jeong, Shlien, Hao,
and/or Satake. Non-Final Act. 5–6.
Because the claims are indefinite, we do not reach the obviousness
rejection. To review a rejection for obviousness, “it is essential to know
what the claims do in fact cover.” In re Steele, 305 F.2d 859, 862 (CCPA
1962). Here, because the claims are indefinite, we do not know what they
cover. Thus, we procedurally reverse the obviousness rejection as it relies on
speculative assumptions. We do not reach the merits of the rejection.
CONCLUSION
The Examiner’s decision to reject claims 2–25 is AFFIRMED.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–25 112(b) Indefiniteness 2–25
2–20, 24, 25 103 Das, Kawashima,
Takata ’340,
Takata ’242,
Fuchs, Jeong,
Shlien, Hao,
Satake
2–20, 24, 25
Overall
Outcome
2–25

RESPONSE
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).
AFFIRMED