INTERNATIONAL POWER COMPONENTS SRL

Patent Trials and Appeals BoardNov 17, 2021

2020005838 (P.T.A.B. Nov. 17, 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. 15/215,673 07/21/2016 Giovanni D'AMBROSIO Q227984 3465 23373 7590 11/17/2021 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 9000 WASHINGTON, DC 20006 EXAMINER TRUONG, THOMAS ART UNIT PAPER NUMBER 2834 NOTIFICATION DATE DELIVERY MODE 11/17/2021 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GIOVANNI D'AMBROSIO and ROBERTO ITALO BIANCHI Appeal 2020-005838 Application 15/215,673 Technology Center 2800 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and BRIAN D. RANGE, Administrative Patent Judges. TIMM, 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 1–15. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 International Power Components SRL. Appeal Br. 3. Appeal 2020-005838 Application 15/215,673 2 CLAIMED SUBJECT MATTER The claims are directed to a brushed electric motor. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A brushed electric motor (10) comprising: an outer case (11), two brushes (44) and a rotor (30) having a first inner end (31) and a second outer end (32) which is inserted within said outer case (11), characterized by comprising a grounding electric connection (13) and a first closure element (12) and a second closure element (14) for closing said outer case (11) and for closing two corresponding open ends of said outer case (11), and also comprising at least one filler element (20) made with a polymer based material which is positioned internally to said outer case (11) of said brushed electric motor (10), for minimizing the free volume within said brushed electric motor (10) and for allowing at the same time to maintain a high power and high performance characteristics of said brushed electric motor (10), so minimizing the possibility of trigger of a burst or fire, and said outer case (11) is a metallic outer case (11) having a cylindrical shape which allows in part to absorb any possible electric strokes through said grounding electric connection. Appeal Br. 26 (Claims Appendix). Appeal 2020-005838 Application 15/215,673 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Horne US 4,342,929 Aug. 3, 1982 Ozaki US 4,587,450 May 6, 1986 Baines US 4,728,835 Mar. 1, 1988 Baines ’254 US 4,829,254 May 9, 1989 Wille US 5,602,957 Feb. 11, 1997 Volz US 5,801,467 Sept. 1, 1998 Skofljanec US 6,927,522 B2 Aug. 9, 2005 McFarland US 2006/0028088 A1 Feb. 9, 2006 Fischer US 2015/0104339 A1 Apr. 16, 2015 Lai US 2016/0043618 A1 Feb. 11, 2016 Schmiederer DE 10 2013 224 458 A12 May 28, 2015 Stahr WO 03/007458 A23 Jan. 23, 2003 REJECTIONS Claim 7 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre- AIA), first paragraph, as failing to comply with the written description requirement. Final Act. 3. Claims 6 and 11–13 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Final Act. 4. 2 The Examiner relies on the English Equivalent US 2017/0163126 A1, published June 8, 2017. Appellant does not object. 3 As translated. Appeal 2020-005838 Application 15/215,673 4 Claims 1, 2, 5, 6, 8, and 12 are rejected under 35 U.S.C. § 103 as being unpatentable over Lai in view of Stahr, Horne, and Baines. Final Act. 5. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Lai in view of Stahr, Horne, and Baines, and further in view of McFarland. Final Act. 10. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Lai in view of Stahr, Horne, and Baines, and further in view of Schmiederer. Final Act. 11. Claims 7 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Lai in view of Stahr, Horne, and Baines, and further in view of Skofljanec. Final Act. 12. Claims 10 and 11 are rejected under 35 U.S.C. § 103 as being unpatentable over Lai in view of Stahr, Horne, and Baines, and further in view of Volz. Final Act. 14. Claims 1, 12, and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Fischer in view of Baines, Lai, and Ozaki. Final Act. 18. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Fischer in view of Baines, Lai, and Ozaki, and further in view of Baines ’254. Final Act. 20. Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Fischer in view of Baines, Lai, and Ozaki, and further in view of Wille. Final Act. 21. Appeal 2020-005838 Application 15/215,673 5 OPINION Written Descriptive Support Claim 7 requires the printed circuit board (40) required by claim 2 include a central through hole (42) and further requires that the two brushes (44) recited in claim 1 “include corresponding ends which protrude inside said through hole (42).” Appeal Br. 28 (Claims Appendix) (emphasis added). The Examiner finds that the written description of the Specification fails to reasonably convey that the brush ends protrude inside through holes (42). Final Act. 3. Appellant contends that “[a]mended FIG. 3 clearly shows two brushes (44) mounted on said printed circuit board (40) and also the two brushes (44) include corresponding ends which protrude over said through hole (42) and are preferably diametrically opposed one to another with respect to said central through hole (42).” Appeal Br. 8; Reply Br. 4. Appellant has not identified a reversible error in the Examiner’s rejection of claim 7. As Appellant acknowledges, the written description and amended Figure 3 reasonably convey that the brush ends of brushes (44) protrude over the through hole, i.e., into a space outside the through hole delimited by the circuit board (40), not inside. This is evident from Appellant’s enlarged Figure 3 located on page 9 of the Appeal Brief. Indefiniteness The Examiner rejects claims 6 and 11–13 under 35 U.S.C. § 112(b) as indefinite. Final Act. 4; see also Ans. 3 (stating that “[e]very ground of rejection set forth in the Office action dated 05/15/2019 from which the appeal is taken is being maintained by the examiner except for the grounds of rejection (if any) listed under the subheading ‘WITHDRAWN Appeal 2020-005838 Application 15/215,673 6 REJECTIONS’” and failing to list the rejection as withdrawn). Appellant has not addressed this rejection. Thus, we summarily affirm it. Obviousness The Examiner maintains two lines of obviousness rejections. One line starts with a rejection of claims 1, 2, 5, 6, 8, and 12 as obvious over Lai in view of Stahr, Horne, and Baines. Final Act. 5. The other line starts with a rejection of claims 1, 12, and 15 as obvious over Fischer in view of Baines, Lai, and Ozaki. Final Act. 18. Appellant’s arguments focus on the rejection of claim 1 over Lai, Stahr, Horne, and Baines. Appeal Br. 10–25. Thus, our focus will be on that rejection. Because Appellant does not address the rejections relying on the combination of Fischer, Baines, Lai, and Ozaki and that combination with further prior art references, those rejections are summarily affirmed. After reviewing Appellant’s arguments against the Examiner’s rejection of claim 1 as obvious over the combination of Lai, Stahr, Horne, and Baines, we determine the disposition of this rejection turns on claim interpretation and, particularly, on the manner in which the functional language of claim 1 limits the closure elements and filler element of the claim. Compare Final Act. 5–8, and Ans. 7–14, with Appeal Br. 10–25, and Reply Br. 4–27. The functional language of interest is contained within the “characterized by” portion of claim 1. We reproduce that portion while highlighting functional limitations: characterized by comprising a grounding electric connection (13) and a first closure element (12) and a second closure element (14) for closing said outer case (11) and for closing two corresponding open ends of said outer case (11), and also comprising at least one filler element (20) made with a polymer Appeal 2020-005838 Application 15/215,673 7 based material which is positioned internally to said outer case (11) of said brushed electric motor (10), for minimizing the free volume within said brushed electric motor (10) and for allowing at the same time to maintain a high power and high performance characteristics of said brushed electric motor (10), so minimizing the possibility of trigger of a burst or fire and said outer case (11) is a metallic outer case (11) having a cylindrical shape which allows in part to absorb any possible electric strokes through said grounding electric connection. Appeal Br. 26 (Claims Appendix) (emphases added). Unpacking the “characterized by” recitation, we note that it requires the electric motor be characterized by comprising (a) a grounding electric connection, (b) first and second closure elements, (c) at least one filler element, and (d) a cylindrical metallic outer case. As to the functional limitations, we first consider the one starting with the words “for minimizing.” This clause reads “for minimizing the free volume within said brushed electric motor (10) and for allowing at the same time to maintain a high power and high performance characteristics of said brushed electric motor (10), so minimizing the possibility of trigger of a burst or fire.” It follows the recitation of the “at least one filler element” but is separated from it by a comma. There is some confusion over what structures are modified by the “for minimizing” functional recitation. It is unclear whether the “for minimizing” functional limitation is intended to limit just the “at least one filler element” or whether it is to limit the combination of features in the “characterized by” clause, or the structure as a whole. Appellant’s arguments in the Appeal Brief imply that the “for minimizing” clause is intended to limit the “at least one filler element,” (Appeal Br. 18–19), but Appellant’s Reply Brief seeks a Appeal 2020-005838 Application 15/215,673 8 different interpretation, one that interprets the functional language as modifying all the previous features. Reply Br. 6. The problem here is that Appellant has failed to make their intended meaning explicitly clear. Although the claim was not rejected on the ground of indefiniteness, that section of the statute, i.e., 35 U.S.C. § 112(b), puts the burden of precise claim drafting squarely on Appellant. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). That the meaning is unclear is evidenced by Appellant’s own shifting interpretation. Although the claim is unclear on its face, we can rely on guidance in the written description to interpret it. The Specification describes the at least one filler element 20 as having a function similar to the “for minimizing” function recited in claim 1. Spec. 2:25–3:10. Given that “a proper claim construction analysis endeavors to assign a meaning to a disputed claim term ‘that corresponds with . . . how the inventor describes [their] invention in the specification,’” In re Power Integrations, Inc., 884 F.3d 1370, 1377 (Fed. Cir. 2018) (quoting In re Smith Int'l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017)), we interpret the “for minimizing” functional limitation as modifying the “at least one filler element” recited in claim 1. Should Appellant desire a different meaning, Appellant is free to amend the claims during further prosecution. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant.”). The Examiner finds that Lai’s insulating bracket 41 is a filler element having the structure required by claim 1. Final Act. 6. We agree. Lai’s injection molded plastic insulating bracket 41 has an outer diameter substantially equal to the inner diameter of housing 12, such that insulating Appeal 2020-005838 Application 15/215,673 9 bracket 41 can be inserted into the open end of housing 12. Lai ¶ 38. Figure 2 depicts the insulating bracket 41 as part of brush assembly 40. Id. This brush assembly 40, with brushes 46, fills space within housing 12 as shown in Figure 7. Thus, Lai’s insulating bracket 41 is positioned internally of outer case (housing 12). Because it takes up space within the outer case, insulating bracket 41 reduces the free volume within the motor. According to the Specification, reducing the free volume to less than 100 cm3 “drastically reduce[s]” the probability of fire and/or explosion. Spec. 5. How much of a reduction in free volume minimizes “the possibility of trigger of a burst or fire” is unclear. Nor is it clear what structure allows “at the same time to maintain a high power and high performance characteristics of said brushed electric motor.” This language is not precise enough to structurally distinguish Lai’s insulating bracket 41 from the at least one filler element of claim 1. As stated in In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007), “[t]he Supreme Court has defined the term ‘machine’ as ‘a concrete thing, consisting of parts, or of certain devices and combination of devices.’” (quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570, 17 L.Ed. 650 (1863)). For this reason, it has long been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). Thus, the patentability of the structure cannot turn on the use or function of the structure. In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function.”). Appellant’s functional “for minimizing” limitation does not structurally distinguish the filler element of claim 1 from Lai’s insulating bracket 41. Appeal 2020-005838 Application 15/215,673 10 Next, we consider the first and second closure elements of claim 1. These closure elements are recited in terms of their function of “for closing said outer case (11) and for closing two corresponding open ends of said outer case (11).” As found by the Examiner and shown in Lai’s Figure 7, Lai’s outer case (housing 12) surrounds rotor shaft 21 at one end (lower end shown in Figure 7) and has a first closure element (end cap 31) at the other end. Final Act. 6. The Examiner finds a suggestion within Stahr for including two closure elements rather than just one. Final Act. 7. Stahr’s closure elements 17, 19 have vent holes 87, 89 for cooling air. Stahr 6. Appellant contends that the “for closing” recitations exclude the vent holes of Stahr. Appeal Br. 22; Reply Br. 7–8. We do not agree. “Closing” is a verb. The act of closing something does not preclude holes in that something. For instance, the act of closing a screen door is still an act of closing even though the screen has holes. Thus, the closure elements 17, 19 of Stahr are still “for closing said outer case,” and “for closing two corresponding open ends of said outer case” even though the closure elements 17, 19 have vent holes. The functional recitations do not distinguish the first and second closure elements of claim 1 from the closure elements suggested by the prior art. Even if we were to interpret the “for minimizing” functional limitations as modifying the closure elements as well as the filler element, we would not determine that those limitations structurally distinguish the closure elements of claim 1 from the vented closure elements of the prior art. This is because the “for minimizing” language does not clearly exclude vent holes. The Specification uses language such as “hermetically close” and talks of annular gaskets that prevent entry of fluids, moisture, and gas. Spec. 10–11. Claim 1 does not require “hermetically” closing, nor does the Appeal 2020-005838 Application 15/215,673 11 claim language clearly limit the closure element to ones preventing entry of fluids, moisture, and gas. The “for minimizing” function is too vague to limit the claim in that manner. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). “It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal quotations omitted). And sometimes functional language will sweep in the prior art. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); Hiniker, 150 F.3d at 1369. It is Appellant’s burden to claim their invention with reasonable precision. Morris, 127 F.3d at 1056. Appellant has not done so here. CONCLUSION The Examiner’s decision to reject claims 1–15 is AFFIRMED. Appeal 2020-005838 Application 15/215,673 12 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7 112(a) Written Description 7 6, 11–13 112(b) Indefiniteness 6, 11–13 1, 2, 5, 6, 8, 12 103 Lai, Stahr, Horne, Baines 1, 2, 5, 6, 8, 12 3 103 Lai, Stahr, Horne, Baines, McFarland 3 4 103 Lai, Stahr, Horne, Baines, Schmiederer 4 7, 9 103 Lai, Stahr, Horne, Baines, Skofljanec 7, 9 10, 11 103 Lai, Stahr, Horne, Baines, Volz 10, 11 1, 12, 15 103 Fischer, Baines, Lai, Ozaki 1, 12, 15 13 103 Fischer, Baines, Lai, Ozaki, Baines ’254 13 14 103 Fischer, Baines, Lai, Ozaki, Wille 14 Overall Outcome 1–15 RESPONSE 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. § 1.136(a)(1)(iv). AFFIRMED