Ex Parte Blum et al

Patent Trial and Appeal BoardAug 7, 2017

12969902 (P.T.A.B. Aug. 7, 2017)

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. 12/969,902 12/16/2010 Jens BLUM BOSC.P6758US/11602959 5112 24972 7590 08/09/2017 NORTON ROSE FULBRIGHT US LLP 1301 Avenue of the Americas NEW YORK, NY 10019-6022 EXAMINER LONG, ROBERT FRANKLIN ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 08/09/2017 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): nyipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JENS BLUM, DIETMAR SAUR, and TOBIAS HERR Appeal 2015-008055 Application 12/969,902 Technology Center 3700 Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and MATTHEW S. METERS, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1—30. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appellants identify the real party in interest as “Robert Bosch GmbH.” (Appeal Br. 1.) Appeal 2015-008055 Application 12/969,902 STATEMENT OF THE CASE The Appellants’ invention relates to “a handheld machine tool” having “a gear unit and a cooling air unit.” (Spec. 1,11. 10-12.) Illustrative Claim 1. A handheld machine tool, which is battery-driven, comprising: a gear unit; an electromotor unit, which includes at least one rotor, at least one stator, and at least one commutator; and a fan wheel of a cooling air unit located behind the at least one rotor and the at least one stator and in front of the at least one commutator; wherein the cooling air unit is configured to route a flow of cooling air for cooling the gear unit past at least one gear element of the gear unit and perpendicular to a main extension direction of the handheld machine tool. References Wang US 4,763,031 Aug. 9, 1988 Sistare US 4,827,616 May 9, 1989 Voigt US 2004/0263008 A1 Dec. 30, 2004 Yamada US 6,971,456 B2 Dec. 6, 2005 Faatz US 2008/0092363 A1 Apr. 24, 2008 Rejections I. The Examiner rejects claims 1—30 under 35 U.S.C. § 112, second paragraph, as indefinite. (Final Action 2.) II. The Examiner rejects claims 1, 2, 4, 5, 8—13, 16—27, and 30 under 35 U.S.C. § 103(a) as unpatentable over Voight, Yamada, and Faatz. (Final Action 3.) III. The Examiner rejects claims 3, 6, 7, 14, 15, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable over Voigt, Yamada, Faatz, Sistare, and Wang. (Final Action 9.) 2 Appeal 2015-008055 Application 12/969,902 ANALYSIS Claims 1,12, and 13 are the independent claims on appeal, with the rest of the claims on appeal (i.e., claims 2—11 and 14—30) depending therefrom. (See Appeal Br., Claims App.) Independent claims 1, 12, and 13 recite “[a] handheld machine tool” comprising a “gear unit” and a “cooling air unit.” (Id.) Rejection I— 35 U.S.C. §112 Claims 1—30 Independent claims 1, 12, and 13 recite limitations involving “a main extension direction.” (Appeal Br., Claims App.) The Examiner maintains that this direction is “unclear without claimed relative structure or a claimed axis to establish a clear direction/origin.” (Answer 2, emphasis omitted.) The Appellants indicate that they “are willing to amend the claims to overcome [this] rejection, once the rejections under 35 U.S.C. § 103(a) are resolved.” (Reply Br. 1.) As our review of this rejection is confined to the claims as currently presented, the Appellants do not persuasively challenge the Examiner’s determination of indefiniteness. Thus, for the purposes of this appeal, we must affirm the Examiner’s rejection of claims 1—30 under 35 U.S.C. § 112, second paragraph. Rejection II— 35 U.S.C. §103 Independent Claim 1 As indicated above, independent claim 1 recites a “gear unit” and a “cooling air unit.” (Appeal Br., Claims App.) Independent claim 1 also recites that the cooling air unit is configured “to route a flow of cooling air for cooling the gear unit past at least one gear element of the gear unit” and “to route the flow of cooling air perpendicular to a main extension direction 3 Appeal 2015-008055 Application 12/969,902 of the handheld machine tool.” (Id. ) The Examiner finds that Voight discloses a tool comprising a gear box and a cooling air unit; and the Examiner determines that Voight, Yamada and Faatz together teach the claimed configuration of the cooling unit. (See Final Action 2—3.) Insofar as the Appellants argue that Voight’s disclosure regarding its gearbox and/or the cooling thereof is insufficient (see Appeal Br. 5), we are not persuaded by this argument. Voight discloses a handheld tool that “is air-cooled” and includes a fan “for cooling electric motor 12 and gear box.” (Voight 125.) Voight also explains that “said fan draws in air through air inlet slits 18 that are formed in the rear region of machine housing 11, and blows air out through air outlet openings 19 that are formed in the front region of machine housing 11.” (Id.) As for Voight and/or Faatz not disclosing “what type of gearbox” is used in their respective tools (see Appeal Br. 5), we note that independent claim 1 does not specify any particular type of gear unit. Insofar as the Appellants advance arguments premised upon the Examiner relying solely upon Faatz to teach the claimed configuration of the cooling unit (see Appeal Br. 5), we are not persuaded by these arguments. As indicated above, the Examiner’s rejection relies upon the combined teachings of Voight, Yamada, and Faatz for this limitation. (See Final Action 3.) Moreover, independent claim 1 does not require the cooling air to flow in the recited perpendicular direction when passing the gear element; and Voight shows cooling air flowing in a perpendicular direction relative to the rotational axis of the tool (see Voight, Fig. 6, especially arrows just upstream of fan wheel 21). 4 Appeal 2015-008055 Application 12/969,902 Independent claim 1 further requires a “fan wheel” that is “located behind” a rotor and a stator, and which is located “in front of’ a commutator. (Appeal Br., Claims App.) In Voight, “[the] fan wheel 21 is positioned between electric motor 12 and [the] gearbox on the side furthest from the commutator 37.” (Voight 125; see also Fig. 6.) The Examiner determines that it would have been obvious to relocate Voight’s fan wheel 22 to the opposite side of the electric motor 12. (See Final Action 5.) The Appellants argue that the claimed arrangement of the fan wheel is not shown or suggested by the prior art. (See Appeal Br. 4—5; see also Reply Br. 1—2.) We are persuaded by this argument because relocating Voight’s fan wheel 22 to the opposite side of the electric motor 12 may result in the relocated fan wheel being situated “behind” Voight’s stator 30 and rotor 32. (See Vought, Fig. 6.) However, the Examiner does not sufficiently explain why Voight’s relocated fan wheel 22 would also be situated “in front of’ Voight’s commutator 37 as required by independent claim 1. Thus, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Voight, Yamada, and Faatz. Rejection II— 35 U.S.C. §103 Independent Claim 12 The Appellants advance the same arguments for independent claim 12 as they do for independent claim 1. (See Appeal Br. 6, see also Reply Br. 3.) However, unlike independent claim 1, independent claim 12 does not require a fan wheel, much less a particular location of a fan wheel relative to a rotor, a stator, and a commutator. As for other limitations recited in independent claim 12, as discussed above, we are unpersuaded by the Appellants’ arguments regarding Voight’s allegedly insufficient disclosure of a gearbox 5 Appeal 2015-008055 Application 12/969,902 and the cooling thereof; and we are unpersuaded by the Appellants’ arguments premised upon the Examiner relying solely upon Faatz to teach a cooling unit with the claimed configuration. Thus, we sustain the Examiner’s rejection of independent claim 12 under 35 U.S.C. § 103(a) as unpatentable over Voight, Yamada, and Faatz. Rejection II— 35 U.S.C. §103 Independent Claim 13 Independent claim 13 requires the gear unit to be “configured as a planetary gear.” (Appeal Br., Claims App.) As noted by the Appellants (see Appeal Br. 5), the Examiner’s findings and determinations with respect to independent claim 13 do not identity where the claimed planetary-gear configuration is taught by the prior art of record; and the Examiner does not sufficiently explain why such a configuration would have otherwise been obvious to one of ordinary skill in the art (see Final Action 4—6). Thus, we do not sustain the Examiner’s rejection of independent claim 13 under 35 U.S.C. § 103(a) as unpatentable over Voight, Yamada, and Faatz. Rejections II and III—35 U.S. C. § 103 Dependent Claims The dependent claims on appeal all depend (directly or indirectly) to either independent claim 1 or independent claim 13. (See Appeal Br., Claims App.) The Examiner’s further findings and determinations with respect to these claims (see Final Action 3—10) do not compensate for the above-discussed shortcomings regarding the Examiner’s proposed relocation of Voight’s fan wheel and the Examiner’s failure to address a planetary-gear configuration for the gear unit. 6 Appeal 2015-008055 Application 12/969,902 Thus, we do not sustain the Examiner’s rejection of dependent claims 2, 4, 5, 8—11, 16—27, and 30 under 35 U.S.C. § 103(a) as unpatentable over Voight, Yamada, and Faatz; and we do not sustain the Examiner’s rejection of dependent claims 3, 6, 7, 14, 15, 28, and 29 under 35 U.S.C. § 103(a) as unpatentable over Voight, Yamada, Faatz, Sistare, and Wang. DECISION We AFFIRM the Examiner’s rejection of claims 1—30 under 35 U.S.C. § 112. We REVERSE the Examiner’s rejections of claims 1—11 and 13—30 under 35 U.S.C. § 103. We AFFIRM the Examiner’s rejection of claim 12 under 35 U.S.C. §103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7