Robert Bosch GmbH

Patent Trials and Appeals Board

Mar 16, 2021

2020004637 (P.T.A.B. Mar. 16, 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.
15/558,292 09/14/2017 Frank Baehrle-Miller 2178-1750 1597
10800 7590 03/16/2021
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
MUSTAFA, IMRAN K
ART UNIT PAPER NUMBER
3668
MAIL DATE DELIVERY MODE
03/16/2021 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 FRANK BAEHRLE-MILLER, EDITH MANNHERZ,
ANDREAS ENGLERT, and TOBIAS PUTZER
Appeal 2020-004637
Application 15/558,292
Technology Center 3600
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
BRANDON J. WARNER, Administrative Patent Judges.
GREENHUT, 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 1–12. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Robert Bosch GmbH.
Appeal Br. 2.
Appeal 2020-004637
Application 15/558,292
2
CLAIMED SUBJECT MATTER
The claims are directed to a method for providing a brake force in a
vehicle. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for providing a braking force in a vehicle that
includes a hydraulic vehicle brake and an electromechanical
brake device, the electromechanical brake device including an
electric brake motor configured to displace a brake piston against
a brake disk, the method comprising:
determining a position of the brake piston at a brake
contact point in which the brake piston is in contact with the
brake disk with no air gap, the position of the brake piston
determined from an electric motor state variable of the electric
brake motor during the releasing of the electromechanical brake
device; and
moving the brake piston to a braking start point in a
positioning process carried out before the generation of braking
force, the braking start point lying between a starting position of
the brake piston that is free of braking torque and the brake
contact point, but at a distance from the brake contact point.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lu US 2005/0206231 A1 Sept. 22, 2005
Nohira US 2014/0069750 A1 Mar. 13, 2014
Baehrle-Miller2 US 2014/0076674 A1 Mar. 20, 2014
Berger US 2014/0202801 A1 July 24, 2014

2 Unless otherwise indicated references to Baehrle-Miller are directed to
US 2014/0076674 A1, as opposed to the named inventor of the present
application.

Appeal 2020-004637
Application 15/558,292
3
REJECTIONS
Claims 1–6, 8, and 10–12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Baehrle-Miller and Nohira. Final Act. 2.
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over
Baehrle-Miller, Nohira, and Berger. Final Act. 5.
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over
Baehrle-Miller, Nohira, and Lu. Final Act. 6.
OPINION
Each of the independent claims before us, claims 1, 11, and 12,
contains some form of the claim 1 limitations calling for “determining a
position of the brake piston at a brake contact point . . . from an electric
motor state variable . . . during the releasing of the electromechanical brake
device,” which Appellant argues is neither found in, nor obvious in view of,
either, or the combination of Baehrle-Miller’s and Nohira’s teachings cited
by the Examiner.
In the Final Action, the Examiner cites, and reproduces portions of,
paragraphs 5–7 of Baehrle-Miller without further explanation to address the
argued claim limitations. Final Act. 3. As the Examiner does not identify
with specificity the particular subject matter in Baehrle-Miller relied upon to
satisfy the specific aspects of the claims, the Examiner has not addressed the
claim language in a sufficiently articulate and informative manner so as to
meet the notice requirements of 35 U.S.C. § 132. See In re Jung, 637 F. 3d
1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2) (“When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be designated as
nearly as practicable. The pertinence of each reference, if not apparent, must
Appeal 2020-004637
Application 15/558,292
4
be clearly explained and each rejected claim specified.”); Gechter v.
Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (PTO must create a record
that includes “specific fact findings for each contested limitation and
satisfactory explanations for such findings.”).
Appellant seeks to maintain this appeal under 37 C.F.R. § 41.40(a)
despite the fact that in the Examiner’s Answer, the Examiner, apparently
recognizing the position taken in the Final Action as wanting, sets forth
several new grounds for rejecting the claims before us without complying
with the notice requirements set forth in 37 C.F.R. § 41.39(a)(2). Reply Br.
3; MPEP § 1207.03. First, the Examiner states, “the features upon which
Appellant relies (i.e., electric motor state variable is used to determine the
position of the brake piston) are not recited in the rejected claim(s).” Ans. 3.
The Examiner does not explain this conclusion further and it seems
inconsistent with the language of claim 1 quoted above.
Next, the Examiner points out, based on dependent claim 4, that the
recited variable may be motor speed and motor speed is determined
according to paragraph 14 of Baehrle-Miller, as cited by Appellant. Ans. 3–
4; Appeal Br 7. The inventors named in Baehrle-Miller are also inventors in
the present application, which is commonly owned. Appellant cited to
paragraph 14 of Baehrle-Miller to demonstrate that, although Baehrle-Miller
assesses the speed of the motor, that variable is only used in their prior
device to determine the duration of braking but not the piston position as
required by the claims now before us. The Baehrle-Miller arrangement
enables braking to be discontinued after a pre-defined time period. Baehrle-
Miller paras. 14–15. Although speed is reasonably regarded as “an electric
motor state variable” according to the claims, the Examiner does not identify
any disclosure in Baehrle-Miller showing “the position of the brake piston at
Appeal 2020-004637
Application 15/558,292
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a brake contact point . . . [is] determined from” such speed as required by the
claims.
Next, the Examiner appears to take a position founded on inherency:
“It is hard to imagine that the brake motor is applied to the brake pad by
only taking the ‘duration’ of motor operation into account and not the
position of the piston.” Ans. 4. As explained in greater detail in MPEP
§ 2112, when relying on a theory of inherency the examiner must provide
sufficient evidence or scientific reasoning to establish there is a sound basis
for the examiner’s belief that the supposedly inherent subject matter is
necessarily present in the prior art subject matter. See, e.g., In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990). The fact that a certain result or characteristic
may occur or be present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534
(Fed. Cir. 1993). Inherency may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient. In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999). In relying upon a theory of inherency, the examiner must provide a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art. Ex parte Levy, 17 USPQ2d 1461,
1464 (BPAI 1990). This has not been done here.
Finally, the Examiner presents new findings and analysis relying
heavily on Nohira, which was not relied upon for the subject matter in
question in the action from which this appeal was taken. Ans. 5–8. It is true
that Nohira articulates certain goals concerning optimizing the starting point
of an electromechanical brake actuator (Nohira paras. 7, 10) that are similar
to those of Appellant (Spec. 3–4). It is also true that the end result of
Appeal 2020-004637
Application 15/558,292
6
Nohira’s optimization is similar to Appellant’s (Spec. 2–3; Fig. 3) in that
Nohira sets a gap position or range for the piston 69 (Nohira Fig. 7; para.
101). The Examiner equates Nohira’s “origin position” to that of the recited
contact point (Ans. 5), despite Appellant’s argument that Nohira’s origin is
the point when there is no contact. Reply Br. 4 (citing Nohira paras. 12, 98).
Even if Nohira’s origin point could reasonably be considered the “brake
contact point” (i.e., if there existed no meaningful distinction between the
position where contact begins and where it ceases), the Examiner does not
provide any evidence or explanation as to how Nohira determines such a
point “from an electric motor state variable” as required by the claims. If it is
instead the Examiner’s position that the origin position in Nohira could be
determined somehow using the state variable, the speed, identified by the
Examiner in Baehrle-Miller, there is no indication in the record as to how
that would be achieved and why it would have been obvious to do so.
Baehrle-Miller and Nohira each bear certain similarities with the
subject matter presently claimed. However, there is no legally recognizable
essential gist or heart of the invention. W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1548 (Fed. Cir. 1983). All words in a claim must be
considered in judging the obviousness of the claimed subject matter. See In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). The Examiner has failed to
sufficiently articulate the reasons why the claimed subject matter would
have been obvious in view of the cited prior art. Accordingly, the
Examiner’s rejections cannot be sustained on the grounds presently set forth
by the Examiner. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. v. Teleflex, 550 U.S. 398, 418 (2007).

Appeal 2020-004637
Application 15/558,292
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CONCLUSION
The Examiner’s rejections are REVERSED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8, 10–
12
103 Baehrle-Miller,
Nohira
1–6, 8, 10–
12
7 103 Baehrle-Miller,
Nohira, Berger
7
9 103 Baehrle-Miller,
Nohira, Lu
9
Overall
Outcome
1–12

REVERSED