2020001960 (P.T.A.B. Dec. 7, 2020)

Robert Bosch GmbH

Patent Trials and Appeals BoardDec 7, 2020

2020001960 (P.T.A.B. Dec. 7, 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. 14/818,423 08/05/2015 Eberhard Ruhs 2179-0333 5838 10800 7590 12/07/2020 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 EXAMINER KOTIS, JOSHUA G ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 12/07/2020 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 EBERHARD RUHS and ANDREAS SCHARFENBERG __________ Appeal 2020-001960 Application 14/818,423 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, 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, 2, and 4–10, which constitute all of the pending claims. Appeal Br. 1; Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejection of the claims before us but not on those grounds specifically reversed. See 37 C.F.R. § 41.50(a). 1 We use the word “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 2020-001960 Application 14/818,423 2 CLAIMED SUBJECT MATTER The claimed subject matter “relates to a tool appliance, and in particular to a screwdriver, or blind-rivet setting device.” Spec. 1:6–7. Apparatus claim 1 is the sole independent claim on appeal, is representative of the claimed subject matter, and is reproduced below. 1. An electrically operated tool appliance, comprising: a housing including: at least one inlet opening; and at least one outlet opening; a rotatable tool head; an electric motor drive positioned in the housing, configured to drive the rotatable tool head, and including a drive shaft; a first control system configured to control the electric motor drive; an energy supply configured to supply the electric motor drive with electrical energy, wherein the at least one inlet opening is located in a region of the energy supply; at least one flow channel that extends through the housing so as to fluidically connect the at least one inlet opening with the at least one outlet opening, that extends through the electric motor drive at least partially transversely with respect to the drive shaft, and that extends through the first control system; and a first cooling mechanism operatively positioned in the at least one flow channel downstream of and directly adjacent to the electric motor drive, and configured to cool at least one of the electric motor drive and the first control system, wherein the first cooling mechanism is operable independently of the electric motor drive such that a cooling capacity of the first cooling mechanism is mechanically independent of a rotational speed of the electric motor drive. Appeal 2020-001960 Application 14/818,423 3 REFERENCES Name Reference Date Yahnker et al. (“Yahnker”) US 2005/0202310 A1 Sept. 15, 2005 Lau et al. (“Lau”) US 2009/0145621 A1 June 11, 2009 Oomori et al. (“Oomori”) US 2013/0087355 A1 Apr. 11, 2013 Hirabayashi et al. (“Hirabayashi”) US 2013/0284475 A1 Oct. 31, 2013 THE REJECTIONS ON APPEAL Claims 1, 2, 4, 5, and 8 are rejected under 35 U.S.C. § 102(a)(1) and (a)(2) as anticipated by Lau. Final Act. 3. Claims 1, 2, and 6–10 are rejected under 35 U.S.C. § 103 as unpatentable over Hirabayashi and Lau. Final Act. 6. Claims 1, 2, and 4–10 are rejected under 35 U.S.C. § 103 as unpatentable over Yahnker and Lau. Final Act. 10. Claims 1, 2, 4, 5, and 8–10 are rejected under 35 U.S.C. § 103 as unpatentable over Oomori and Lau. Final Act. 14. Claims 6 and 7 are rejected under 35 U.S.C. § 103 as unpatentable over Oomori, Lau, and Yahnker. Final Act. 17. ANALYSIS The rejection of claims 1, 2, 4, 5, and 8 as anticipated by Lau Independent claim 1 recites “an electric motor drive” and a “flow channel . . . that extends through the electric motor drive.” Claim 1 further recites, “a first cooling mechanism operatively positioned in the at least one flow channel downstream of and directly adjacent to the electric motor drive.” Appeal Br. 11 (Claims App.). Claims 2, 4, 5, and 8, due to their Appeal 2020-001960 Application 14/818,423 4 dependency, incorporate this language as well. The Examiner references different embodiments of Lau to reject different limitations of these claims. See Final Act. 3–5 (referencing “Figure 1,” “see Fig. 10 or Fig. 5,” and “Figures 2, and 7–9” when addressing different limitations). These referenced figures, i.e., figures 1, 2, 5, and 7– 10 of Lau illustrate five different embodiments of Lau’s invention. See Lau ¶¶ 25–34. In the Examiner’s Answer, the Examiner references Figures 2, 3, and 6–9 (six different embodiments) as support when addressing the different limitations. See Ans. 4–8. We have been instructed that “rejections under 35 U.S.C. § 102 are proper only when the claimed subject matter is identically disclosed or described ‘in the prior art,’” and it is not enough that the prior art reference includes multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention. In re Arkley, 455 F.2d 586, 587 (1972). “Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection, . . . but it has no place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at 587–8; see also Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Appellant addresses figures 2, 3, and 6–9 of Lau concluding that these various embodiments “do[] not disclose or suggest each and every limitation of claim 1” for different reasons. Appeal Br. 5–6. To more fully explain our analysis, we address each embodiment relied upon by the Examiner as depicted in figures 1–3 and 5–10. Figure 1 of Lau fails to disclose “a first cooling mechanism . . . downstream of and directly adjacent to the electric motor drive” which is “operable independently of the electric motor drive” and “mechanically Appeal 2020-001960 Application 14/818,423 5 independent of a rotational speed of the electric motor drive.” Thus, the Examiner’s reliance on this embodiment is problematic. Figure 2 of Lau, unlike Figure 1, illustrates “flow induction device 23 in the form of a separate fan 23 located behind the motor 12.” Lau ¶ 39. However, this same paragraph explains that even without fan 23, air is still “sucked in through” the recited flow channel “as a result of suction induced by the power tool motor” itself. Hence, there are two causes of air flow through Lau’s tool, one arising from the motor’s suction and the other arising from fan 23. Paragraph 39 of Lau explains that flow through the tool’s channel “may be enhanced” by fan 23, but Lau is unclear whether this fan-induced “enhanced” flow has any effect on the air already being “sucked in” by the motor. This is because there is no indication in Lau whether any of this “enhanced” flow travels through the motor, or bypasses it, which already receives a flow stream due to the motor’s “suction.” Both parties speculate as to what effect the “enhanced” flow has on the air flow patterns within the tool’s housing. See Appeal Br. 4; Ans. 5. However, a rejection (and especially one under anticipation) is not to be premised on speculation. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Hence, the Examiner’s reliance on this Figure 2 embodiment to show anticipation is problematic. The embodiment depicted in Figure 3 of Lau locates fan 23 exterior the housing. See Lau ¶ 40 (“an external flow induction device 23 may be located outside the rear end of the housing 11”). Thus, the fan of this embodiment is not “positioned in the at least one flow channel” as claimed. This is because the Examiner correlates Lau’s flow channel to the internal passage that connects “the at least one inlet opening (18) with the at least Appeal 2020-001960 Application 14/818,423 6 one outlet opening (13: Para. 0037).” Final Act. 3. As such, the Examiner does not explain how Figure 3’s external fan is “positioned in” this internal “flow channel.” See Appeal Br. 5. Figure 6 of Lau also pertains to “an external flow induction device” (Lau ¶ 43) but here, fan 23 is located upstream the motor. Thus, this embodiment has the same deficiencies as the Figure 3 embodiment above, and additionally lacks the limitation that the cooling mechanism is positioned “downstream of and directly adjacent to the electric motor drive.” See Appeal Br. 5. Figure 7 of Lau, like the Figure 3 and 6 embodiments, also depicts “external flow induction device 23.” Lau ¶ 44. As such, the Examiner does not explain how this embodiment meets the limitation of the flow device being “positioned in” the flow channel as the Examiner has identified it above. Final Act. 3; see also Appeal Br. 5. Figure 8 of Lau depicts tube 30 passing through the Examiner’s flow channel and supplying air to flow induction device 23. More specifically, Lau teaches that in this embodiment, “vacuum device 23 . . . draw[s] cooling air through the motor as well as the cooling passage 16.” Lau ¶ 56. However, as indicated above, cooling passage 16 in this embodiment employs a tube extending directly to vacuum device 23, while bypassing motor 12. See Lau Fig. 8. Thus, the Examiner does not make clear how this (now tubed) flow channel “extends through the electric motor drive” as recited. Alternatively, if air flow via tube 30 and vacuum device 23 is to thereafter flow into the adjacent motor, then it is not made clear how this vacuum device 23 can be said to be “downstream” the motor as recited. See also Appeal Br. 5. The embodiment of Figure 9 has the same deficiency, Appeal 2020-001960 Application 14/818,423 7 i.e., the flow through the motor and the flow through pipe 39 would indicate separate, distinct flow channels. This is contrary to the limitation that the recited flow channel (i.e., inlet 18 to outlet 13) “extends through the electric motor drive.” We further note the Examiner’s assertion that the fans of any of the embodiments of Lau would be capable of cooling the motor and/or drawing air through the motor, especially, if the motor is not running or is running at a low speed in which the suction force of the fan/cooling mechanism (23) would overpower that of the fan motor and therefore draw air from the motor. Ans. 8; emphasis added. However, Lau does not disclose the speed of either motor 12 or flow induction device 23. As such, the relative speed of these devices, and what may occur, is not dispositive that “each and every” limitation recited is disclosed. Thus, the Examiner has not shown that any single embodiment of Lau discloses, whether expressly or inherently, the various limitation of claim 1. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631(Fed. Cir. 1987). For these reasons, we do not sustain the Examiner’s rejection of claims 1, 2, 4, 5, and 8 as anticipated by Lau. The rejection of claims 1, 2, and 6–10 as obvious over Hirabayashi and Lau Appellant argues claims 1, 2, and 6–10 as a group. Appeal Br. 6–7, 10. We select claim 1 for review, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)(2019). The Examiner relies on Hirabayashi for all the limitations of claim 1, but acknowledges that “Hirabayashi fails to explicitly disclose the at least one flow channel extends through the first control system.” The Examiner Appeal 2020-001960 Application 14/818,423 8 states that “assuming arguendo” that Hirabayashi fails to teach the inlet opening “in a region of the energy supply” and also “the first cooling mechanism is not positioned downstream and directly adjacent to” the motor, then the “Examiner points attention to the teachings of Lau.” Final Act. 7. Appellant does not challenge the Examiner’s reliance on Hirabayashi for disclosing a flow channel, or on Lau’s teaching of extending the flow channel through a control system or having its inlet near the energy supply.2 See Appeal Br. 6. Instead, Appellant contends that “Lau does not disclose or suggest ‘a first cooling mechanism operatively positioned in the at least one flow channel downstream of and directly adjacent to the electric motor drive,’” as recited in claim 1. Appeal Br. 6. This argument is unpersuasive because it does not address the Examiner’s rejection. The Examiner relied on Hirabayashi for disclosing the cooling mechanism positioned in the flow channel and, perhaps redundantly, on Lau for disclosing the mechanism’s location downstream and adjacent the motor. See Final Act. 7–8. Appellant does not explain how Lau’s cooling mechanism (23) is not located downstream and adjacent the motor, or how Lau’s downstream/adjacent location cannot be incorporated into Hirabayashi’s flow channel. Accordingly, we sustain the Examiner’s rejection of claims 1, 2, and 6–10 as obvious over Hirabayashi and Lau. 2 Appellant contends that Hirabayashi does not disclose air being “routed from an inlet opening ‘located in a region of the energy supply.’” Appeal Br. 7. But, as noted above, the Examiner identified Lau as clearly disclosing this “in a region of the energy supply” location. See Final Act. 7–8. Appeal 2020-001960 Application 14/818,423 9 The rejection of claims 1, 2, and 4–10 as obvious over Yahnker and Lau Appellant only addresses the rejection of claim 1 contending that dependent claims 2 and 4–10 are allowable “for at least the same reasons as given above for claim 1.” See Appeal Br. 7–8, 10. We select claim 1 for review, with claims 2 and 4–10 standing or falling with claim 1. The Examiner primarily relies on Yahnker for teaching the limitations of claim 1, including a flow channel, but acknowledges that “Yahnker fails to explicitly disclose” that the cooling mechanism is positioned “downstream of and directly adjacent to the electric motor drive.” Final Act. 12. The Examiner relies on Lau for this. See Final Act. 12. Similar to the above arguments made with respect to Hirabayashi, Appellant contends that Lau does not disclose the cooling mechanism “downstream of and directly adjacent to the electric motor drive.” Appeal Br. 8. We disagree with Appellant’s assessment of the teachings of Lau for the same reasons discussed above. Thus, we sustain the Examiner’s rejection of claims 1, 2, and 4–10 as being unpatentable over Yahnker and Lau. The rejection of claims 1, 2, 4, 5, and 8–10 as obvious over Oomori and Lau Like that discussed above, Appellant only addresses the rejection of claim 1 contending that dependent claims 2 and 4–10 are allowable “for at least the same reasons as given above for claim 1.” See Appeal Br. 8–10. We select claim 1 for review, with claims 2 and 4–10 standing or falling with claim 1. Appeal 2020-001960 Application 14/818,423 10 The Examiner primarily relies on Oomori for teaching the limitations of claim 1, including a flow channel, but acknowledges that “Oomori does not disclose that the mechanism is downstream of the motor drive.” Final Act. 15. The Examiner relies on Lau for this. See Final Act. 15. Similar to that discussed above, Appellant contends that Lau does not disclose the cooling mechanism “downstream of and directly adjacent to the electric motor drive.” Appeal Br. 9. We disagree with Appellant’s assessment of the teachings of Lau for the same reasons discussed above. Thus, we sustain the Examiner’s rejection of claims 1, 2, and 4–10 as being unpatentable over Oomori and Lau. The rejection of claims 6 and 7 as obvious over Oomori, Lau, and Yahnker Appellant does not argue this rejection. See Appeal Br. 10. We sustain the Examiner’s rejection of these claims. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 8 102(a)(1) Lau 1, 2, 4, 5, 8 1, 2, 6–10 103 Hirabayashi, Lau 1, 2, 6–10 1, 2, 4–10 103 Yahnker, Lau 1, 2, 4–10 1, 2, 4, 5, 8–10 103 Oomori, Lau 1, 2, 4, 5, 8– 10 6, 7 103 Oomori, Lau, Yahnker 6, 7 Appeal 2020-001960 Application 14/818,423 11 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome3 1, 2, 4–10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 3 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.”