Ex Parte Rote et al

Patent Trial and Appeal Board

Apr 29, 2016

12985090 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/985,090 01/05/2011
23494 7590 05/03/2016
TEXAS INSTRUMENTS IN CORPORA TED
P 0 BOX 655474, MIS 3999
DALLAS, TX 75265
FIRST NAMED INVENTOR
John K. Rote
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TI-68486 3600
EXAMINER
IP, SHIK LUEN PAUL
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
uspto@ti.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN K. ROTE and SEIL OH
Appeal2014-007196
Application 12/985,090
Technology Center 2800
Before CARLA M. KRIVAK, JEFFREY S. SMITH, and
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SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-007196
Application 12/985,090
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-19, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Illustrative Claim
1. A method comprising:
sensing a phase of a coil current of a brushless direct current
(DC) motor; and
adjusting a phase and frequency of an applied voltage for the
brushless DC motor based at least in part on the phase of the coil
current to substantially maintain a predetermined phase difference
between the phase of the applied voltage and a phase of a back
electromotive force (back-EMF) voltage.
Hirono
Mir
Prior Art
US 2004/0104704 Al
US 2006/0176059 Al
Examiner's Rejections
June 3, 2004
Aug. 10, 2006
Claims 1-19 stand rejected under 35 U.S.C. § 112(b) for omitting
essential elements.
Claims 1-5, 7, 8, and 13-17 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Hirono.
Claims 6, 9-12, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hirono and Mir.
2
Appeal2014-007196
Application 12/985,090
ANALYSIS
Section 112(b) rejection of claims 1-19
The Examiner finds independent claims 1, 7, and 13 do not include
the most important subject matter of the invention. Final Act. 3. Appellants
contend the claim recites what is meant to be claimed. App. Br. 24.
We agree with Appellants. The Examiner has not persuasively
established that claims 1, 7, and 13 omit any essential elements. See MPEP
§§ 2172, 2172.01. We do not sustain the rejection of claims 1-19 under 35
U.S.C. § 112(b).
Section 102 rejection of claims 1-5, 7, 8, and 13-17
Appellants contend Hirono does not disclose substantially maintaining
"a predetermined phase difference between the phase of the applied voltage
and a phase of a back electromotive force (back-EMF) voltage" through
"adjusting a phase and frequency of an applied voltage for the brushless DC
motor based at least in part on the phase of the coil current," as recited in
claim 1. App. Br. 30-34; Reply Br. 5-7. Appellants' contention is based on
the premise Hirono does not disclose the claimed back-EMF voltage. See
App. Br. 30-31. The Examiner finds the scope of the claimed back-EMF
voltage encompasses the detected voltage of the motor disclosed by Hirono.
Ans. 38--44, citing Hirono Figs. 1 and 2, i-f 11, and col. 5. Appellants reply
that the Abstract of Hirono is not enabling. Reply Br. 5-6.
Appellants have not provided persuasive evidence or argument to
rebut the Examiner's finding that the scope of the claimed "back-EMF
voltage" encompasses the detected voltage of Hirono shown in Figures 1 and
2 and discussed in paragraph 11 and column 5.
3
Appeal2014-007196
Application 12/985,090
We sustain the rejection of claim 1 under 35 U.S.C. § 102. Appellants
do not present arguments for separate patentability of claims 2-5, 7, and 8,
which fall with claim 1.
For claims 13-1 7, Appellants contend the Examiner has performed an
inadequate means plus function analysis of claim 13 (App. Br. 35-39), and
the means plus function analysis is a new ground of rejection (Reply Br. 6-
7). 1 "[A ]ll that is required of the [Patent] [O]ffice to meet its prima facie
burden of production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of [35 U.S.C.] § 132."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). We find that the
Examiner has met this burden. The Examiner explains how the findings
from Hirono disclose the disputed limitations under 35 U.S.C. § 102. See
Ans. 4--7 and 45. Because Appellants have not identified any specific
deficiencies in the Examiner's findings showing Examiner error, Appellants
have not provided persuasive evidence or argument to rebut the Examiner's
prima facie case. See Jung, 637 F.3d at 1365---66 (citing Ex Parte Frye, 94
USPQ2d 1072 (BPAI 2010) (precedential)).
We sustain the rejection of claims 13-17 under 35 U.S.C. § 102.
1 The Board normally only considers matters affecting the merits of the
invention, i.e., rejections of claims. See 37 C.F.R. § 41.31(c) (2011).
Matters not affecting the merits of the invention, such as whether the
Examiner made a new ground of rejection, are to be raised by petition to the
Director. See 37 C.F.R. §§ 1.181-183; MPEP §§ 1002, 1207.03 (IV) (8th
Ed., Rev. 8, July 2010); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002).
Further, claim construction is an issue of law reviewed de novo. Cordis
Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009). We do not
address whether the Examiner made a new ground of rejection.
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Appeal2014-007196
Application 12/985,090
Section 103 rejection of claims 6, 9--12, 18, and 19
Appellants do not present arguments for separate patentability of
claims 6, 9--12, 18, and 19, which fall with claim 1.
DECISION
The rejection of claims 1-19 under 35 U.S.C. § 112(b) is reversed.
The rejection of claims 1-5, 7, 8, and 13-17 under 35 U.S.C. § 102(b)
is affirmed.
The rejection of claims 6, 9--12, 18, and 19 under 35 U.S.C. § 103 is
affirmed.
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.
§ 41.50(±).
AFFIRMED
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