Robert D. Hall et al.

Patent Trials and Appeals Board

Sep 17, 2020

2019001789 (P.T.A.B. Sep. 17, 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.
14/665,750 03/23/2015 Robert D. Hall 25517US02 1615
23446 7590 09/17/2020
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
ANDREWS, MICHAEL
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT D. HALL, MICHAEL J. HANCHETT, and
ANDREW CAWSE
Appeal 2019-001789
Application 14/665,750
Technology Center 2800
Before DONNA M. PRAISS, CHRISTOPHER L. OGDEN, and
SHELDON M. McGEE, Administrative Patent Judges.
OGDEN, 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 21–29, 31, and 32. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Prestolite Electric
Inc. Appeal Br. 2.
Appeal 2019-001789
Application 14/665,750
2
e appeal record includes the following: Specification, March 23,
2015 (“Spec.”); Final Office Action, Mar. 9, 2018 (“Final Action”); Appeal
Brief, Sept. 7, 2018 (“Appeal Br.”); Examiner’s Answer, Oct. 29, 2018
(“Answer”); and Reply Brief, Dec. 27, 2018 (“Reply Br.”).
CLAIMED SUBJECT MATTER
e claims are directed to an apparatus “for cooling a drive end
bearing in an alternator.” Spec. ¶ 4. Independent claim 21, which we
reproduce below, is representative of the subject matter:
21. An alternator comprising:
a drive end;
a rear end opposite the drive end;
a drive end bearing;
a drive end fan at the drive end, the drive end fan
comprising:
an outer edge,
an inner edge forming a shaft aperture,
a fan hub between the inner edge and the outer edge, and
a plurality of auxiliary air flow inlet apertures positioned
circumferentially around the shaft aperture between the fan
hub and the outer edge; and
a front housing face adjacent to the drive end fan, the front
housing face between the drive end fan and the drive end
bearing, the front housing face comprising a plurality of
auxiliary fins coupled to the drive end bearing, the plurality of
auxiliary fins protruding from the front housing face, and the
plurality of auxiliary fins arrayed axially on the front housing
face.
Appeal Br. 21 (emphasis of key portions added). Claims 22–29, 31, and 32
depend directly or indirectly from claim 21. Id. at 21–23.
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e Examiner rejects claims 21–29, 31, and 32 under 35 U.S.C.
§ 103(a) as being unpatentable over the Applicant’s admitted prior art
(“AAPA”) in view of Matson.2 Final Action 5.
OPINION
“The front housing face comprising a plurality of
auxiliary fins coupled to the drive end bearing”
e Examiner’s rejection of claim 21 relies primarily on Figure 1 of
the Specification, which the Examiner identifies as AAPA. Figure 1 is
reproduced below:

2 Matson et al., US 5,214,325 (issued May 25, 1993) (“Matson”).
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Application 14/665,750
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Figure 1 “is a vertical cross-sectional view, taken along the longitudinal axis
of a rotor assembly shaft 130, of an exemplary alternator 100 as is known in
the art.” Spec. ¶ 5. Alternator 100 includes drive end 101, rear end 102, sides
103, conventional main air flow paths 104, drive end fan 110, drive end
bearing 120, and front housing face 160. Id. According to the Specification,
“front housing face 160 may comprise conventional fins 161.” Id.
e Examiner finds that “conventional fins 161” corresponds to the
limitation “the front housing face comprising a plurality of auxiliary fins
coupled to the drive end bearing” as recited in claim 21. See Final Action 6.
In response, Appellant argues that the “conventional fins” in Figure 1
are a different set of fins, and not the “auxiliary fins coupled to the drive end
bearing” as recited in claim 21. Appeal Br. 9–10. To illustrate the difference,
Appellant points to non-AAPA Figure 3, which is reproduced below:

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Figure 3 “is a partially exploded perspective view of an exemplary drive end
fan [110] and front housing face [160] of an exemplary alternator.”
Spec. ¶ 15. According to the Specification, “front housing face 160 may
comprise conventional fins 161 and auxiliary fins 162.” Id. ¶ 26. Although
not clearly shown in Figure 3, auxiliary fins 162 are coupled to drive end
bearing 120. Id. ¶ 23. e Specification teaches that these auxiliary fins serve
to cool drive end bearing 120 “as the drive end fan 110 rotates to pull
ambient temperature air through the auxiliary air flow inlet apertures 114
and across the auxiliary fins 162.” Id. ¶ 39; see also id. ¶ 24 (“ e method
. . . may comprise pulling . . . the air across a plurality of auxiliary fins 162
arrayed axially on a front housing face 160 to transfer drive end bearing heat
to the air.”).
Appellant argues that “conventional fins 161 are different than the
claimed plurality of auxiliary fins 162. Nowhere in the AAPA is there any
disclosure of a plurality of auxiliary fins coupled to the drive end bearing.”
Appeal Br. 10. Further, Appellant argues that it “does not admit that the
claimed plurality of auxiliary fins is prior art.” Reply Br. 4.
In the Answer, the Examiner reproduces Figure 1 of the Specification,
with an annotation indicating a part that the Examiner identifies as an
auxiliary fin. See Answer 3. According to the Examiner, this part of Figure 1
“clearly shows the auxiliary fins having an identical structure to those
described later in the application” such as in Figure 2. Id.
In determining the scope of an applicant’s admission of what is prior
art, “it is necessary to consider everything that has been said about what is
prior art.” Aktiebolaget Karlstads Mekaniska Werkstad v. U.S. Int’l Trade
Comm’n, 705 F.2d 1565, 1574 (Fed. Cir. 1983) (citing In re Nomiya, 509
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Application 14/665,750
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F.2d 566, 571 (CCPA 1975)). is includes Figure 1 itself, the explanatory
text of the Specification, and what Appellant has said during prosecution.
e unlabeled part that the Examiner identifies as an auxiliary fin in
Figure 1 has a similar shape to a part in Figure 2 labeled as auxiliary fin 162.
But this alone is not determinative of an admission, because Figure 1 is a
cross-sectional view, so the three-dimensional structure of the unlabeled part
is ambiguous. Also, the air flow shown by arrows in Figure 1 does not pass
near this unlabeled structure, so it is not clear that a person of ordinary skill
in the art would interpret this structure as the recited auxiliary fin.
e Specification also makes a clear distinction between
“conventional fins” 161, which were known in the art, and “auxiliary fins”
162, which the Specification characterizes as part of the inventive subject
matter. See Spec. ¶¶ 38–39. e Examiner does not point to any statement in
the Specification’s explanatory text or elsewhere in the prosecution record
suggesting that Figure 1 contains such an auxiliary fin, or that such a fin was
known in the art.
In light of everything that has been said in the prosecution record
about what is prior art, we find that the Examiner has not shown, by a
preponderance of the evidence, that Appellant has admitted that the recited
auxiliary fins are part of the prior art.
“[B]etween the fan hub and the outer edge”
e Examiner states that “[t]he AAPA does not disclose a plurality of
auxiliary air flow inlet apertures positioned circumferentially around the
shaft aperture.” Final Action 6. erefore, the Examiner cites Matson as
teaching this limitation.
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Figure 2 of Matson is reproduced below:

Figure 2 is “an end view of the fan blade carrier” 24 in an electrical
machine. Matson 2:3–7. Fan carrier 24 contains a ring of openings 37. Id. at
2:51–54. e Examiner identifies these openings as the “plurality of
auxiliary air flow inlet apertures [37] positioned circumferentially around the
shaft aperture.” Final Action 6–7 (alteration in original).
As Appellant points out, the Examiner did not initially explain how
these openings are “between the fan hub and the outer edge” as recited in
claim 21. See Appeal Br. 11. But in the Answer, the Examiner elaborated by
providing the following annotated version of Figure 2:

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Ans. 5. e Examiner’s annotated version of Figure 2, above, includes an
arrow pointing to the large interior opening at the center of fan carrier 24,
labeled as “[i]nner edge of hub (i.e. shaft aperture).” Another arrow
identifies a series of concentric dashed lines between the interior opening
and the ring of apertures 37 as “[o]uter edge of [the] hub (i.e. dashed lines).”
In the Reply Brief, Appellant argues that the Examiner’s explanation
in the Answer provides no “rationale as to why one of ordinary skill in the
art would understand that only an arbitrary amount of the dashed lines of the
fan carrier 24 of Matson is the claimed fan hub, and not the fan carrier 24 in
its entirety, for example.” Reply Br. 9.
We find this argument persuasive. Matson does not appear to explain
what the dashed lines are, and neither does the Examiner adequately explain
what the dashed lines are, or why they represent the outer edge of a “fan
hub” as recited in claim 21.
For the above reasons, the Examiner’s decision is reversed.
DECISION SUMMARY
In summary,
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
21–29, 31, 32 103(a) AAPA, Matson 21–29, 31, 32

REVERSED