SEW-EURODRIVE GMBH & CO. KG

Patent Trials and Appeals Board

Aug 20, 2021

2020005272 (P.T.A.B. Aug. 20, 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.
15/577,737 11/28/2017 Waldemar Becker 2915-162 1013
31554 7590 08/20/2021
CARTER, DELUCA & FARRELL LLP
576 BROAD HOLLOW ROAD
MELVILLE, NY 11747
EXAMINER
ANDREWS, MICHAEL
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
08/20/2021 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):
docket@carterdeluca.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WALDEMAR BECKER,
DOMENIK HETTEL, THOMAS RUNG,
and JENS SCHILLINGER
____________

Appeal 2020-005272
Application 15/577,737
Technology Center 2800
____________
Before JEFFREY T. SMITH, GEORGE C. BEST, and
DEBRA L. DENNETT Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–32 of Application 15/577,737. Final
Act. (September 25, 2019). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm in part.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies SEW-EURODRIVE GmbH & Co. KG as the real party in interest.
Appeal Br. 1.
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I. BACKGROUND
The ’737 Application describes a drive device comprising a gear unit
and an electric motor. Spec. 1. In particular, the drive device as described in
the Specification is said to be useful in the food industry. Id. The drive
device is said to use a particular air flow pattern that provides improved heat
dissipation, allowing the drive device to be surrounded by a housing. Id. at
1–2.
Claim 16 represents the ’737 Application’s claims and is reproduced
below from the Appeal Brief’s Claims Appendix.
16. A drive device, comprising:
a gear unit; and
an electric motor adapted to drive the gear unit, the electric
motor including a laminated stator core which has stator
windings and is accommodated in a stator housing;
wherein the stator housing includes recesses that are axially
uninterrupted, the stator housing being surrounded and/or
radially surrounded by a housing, a tubular housing, and/or a
cup -shaped housing of the drive device, the housing being set
apart from the stator housing, such that an air flow and/or a
circulating air flow is generatable within the housing, the
recesses adapted to guide the air flow through in an axial
direction, the air flow returnable in an opposite direction in a
set-apart region between the stator housing part and the
housing.
Appeal Br. Claims App. 1.
II. REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 23, 24, and 32 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
Final Act. 6.
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2. Claims 23–32 are rejected under 35 U.S.C. § 112(b) as
indefinite. Final Act. 7.
3. Claims 16–22, 25, and 27 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Di Pietro2 and Pal.3 Final
Act. 9.
III. DISCUSSION
A. Rejection of claims 23, 24, and 32 as lacking written description
support
The Examiner rejected claims 23, 24, and 32 as allegedly containing
subject matter lacking written description support. Final Act. 6–7.
To satisfy the written description requirement, an applicant’s
specification must convey with reasonable clarity to a person of ordinary
skill in the art that, as of the filing date, the applicant was in possession of
the claimed invention. Carnegie Mellon Univ. v. Hoffmann-LaRoche Inc.,
541 F.3d 1115, 1122 (Fed. Cir. 2008).
1. Claim 23
For ease of reference, we reproduce claim 23 below, with the disputed
limitations italicized.
23. The drive device according to claim 16, wherein (a) the
stator housing includes a first coating on a surface facing the
housing and or [sic] on an external surface, to increase emitted
heat output, and/or (b) the housing includes a second coating

2 US 5,682,074, issued October 28, 1997.
3 US 2014/0292122 A1, published October 2, 2014.
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on a surface facing the stator housing and/or on an internal
surface, to increase absorbed heat output.
Appeal Br. Claims Appendix 2 (emphasis added).
The Examiner rejected claim 23 as lacking written description
support. Final Act. 6. In particular, the Examiner found that the limitations
reciting “a first coating” and “a second coating” were not supported by the
Specification. Id.
In the Appeal Brief, Appellant argues that the mere appearance of the
claim language in the Specification means that the written description
requirement is satisfied. Appeal Br. 4. This argument is not necessarily
correct.
As the Federal Circuit has explained, the mere appearance of a claim’s
language in the specification in ipsis verbis does not guarantee that the
written description requirement is satisfied, see, e.g., Enzo Biochem, Inc. v.
Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002), nor does a failure to
meet that standard require a finding that a claim does not comply with the
written description requirement, In re Edwards, 568 F.2d 1349, 1351‒52
(Fed. Cir. 1987).
Thus, we consider each of the limitations identified by the Examiner
separately.
First, the Examiner found that the limitation includes “a first coating
on a surface facing the housing and or [sic] on an external surface, to
increase emitted heat output” lacks written description support. Final Act. 6.
Appellant argues that the written description requirement is satisfied
because the Specification describes the claim limitations forming the basis
for the rejection. Appeal Br. 4; Reply Br. 1–4. In particular, Appellant points
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to passages in the Specification that state the claim language essentially
verbatim. E.g., Appeal Br. 4 (citing Spec. 4).
The Examiner responds that the Specification lacks any description of
the recited coating or its structure. Final Act. 6; see also Answer 3–4.
According to the Examiner, this means that the limitation lacks written
description. Final Act. 6.
We agree with the Examiner that the Specification’s disclosure is
insufficient to demonstrate that, at the time of filing, Appellant had
possession of the recited coating. To demonstrate possession, the inventor
must provide enough description in the specification to demonstrate that he
or she actually invented what has been claimed—a “‘mere wish or plan’ for
obtaining the claimed invention” is not enough. Centocor Ortho Biotech,
Inc. v. Abbott Labs., 636 F.3d 1341, 1348 (Fed. Cir. 2011) (citation omitted).
Appellant’s briefing has not explained how the Specification’s
disclosure demonstrates possession beyond the mere appearance of the claim
language in the Specification. For example, Appellant has not argued that a
person having ordinary skill in the art at the time of filing would have
known what types of coating perform the recited function of increasing the
emitted heat output. Nor has Appellant directed us to any evidence—e.g., in
the form of a declaration, affidavit, or documents—showing that such
coatings were known to persons having ordinary skill in the art at the time of
filing.
In view of the foregoing, we agree with the Examiner that the
Specification does not demonstrate possession of the recited stator housing
coating at the time of filing.
Second, the Examiner found that the limitation reciting that the
housing includes “a second coating on a surface facing the stator housing
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and/or on an internal surface, to increase absorbed heat output” lacked
written description support. Final Act. 6. For the following reasons, we
determine that the Examiner erred regarding this limitation.
As the Appellant points out, Reply Br. 3–4, the Specification states
that “the radial inner wall of housing 4 is blackened, i.e.[,] painted or coated
by a dark or black color, for instance. In this way[,] a radiation transport for
a portion of the heat flow from the motor to the environment is additionally
able to take place.” Spec. 12.
In view of the foregoing, we determine that the Specification
demonstrates possession of the claimed “second coating . . . to increase
absorbed heat output.”
For the reasons set forth above, we affirm the rejection of claim 23 for
lack of written description support.
2. Claim 24
For ease of reference, we reproduce claim 24 below, with the disputed
limitations italicized.
24. The drive device according to claim 16, wherein the
airflow is driven convectively and/or solely convectively.
Appeal Br. Claims Appendix 2 (emphasis added).
The Examiner rejected claim 24 for lack of written description
support. Final Act. 7. In particular, the Examiner found that the limitation
“the airflow is driven convectively and/or solely convectively” lacks written
description support because the Specification does not describe how the
airflow is or can be driven convectively. Id.
We reverse because the Examiner is incorrect. As Appellant points
out, the Specification contains a description of convection-driven airflow
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within the drive device. See Spec. 11. Thus, the Specification shows that
Appellant was in possession of the claimed invention time of filing.
For the reasons set forth above, we reverse the written description
rejection of claim 24.
3. Claim 32
For ease of reference, we reproduce claim 32 below, with the disputed
limitations italicized.
32. The drive device according to claim 19, wherein
the second housing part has pocket-type depressions at a
surface along which the airflow flows, so that the dirt and/or
dust from the airflow is depositable in the pocket-type
depressions and/or in air chambers of the second housing part,
a connection element and/or a screw connecting the first
housing part to the second housing part, and
a space region required to operate the connection element
using a tool is provided by the depression.
Appeal Br. Claims Appendix 3 (paragraphing and emphasis added).
The Examiner rejected claim 32 as lacking written description
support. Final Act. 7. In particular, the Examiner found that the Specification
lacks any description of how dust can be deposited in the depressions or air
chambers of the second housing part and does not describe the air chambers.
Id. The Examiner also found that the Specification lacks a description of the
recited tool or how an open space is required to operate the connection
element. Id.
First, the Examiner erred by finding that the Specification lacks a
description of dust deposition in the pocket-type depressions and/or air
chambers of the second housing part. See Spec. 7–8. Thus, the Specification
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shows that Appellant was in possession of this claim limitation at the time of
filing.
Second, the Examiner erred by finding that the Specification lacks a
description of the space region required to operate the connection element
using a tool. As the Specification states, “the pocket-type depressions are not
only implemented as dust or dirt traps also offer a free operating space for
the implementation of the screwed connection between housing parts of the
gear unit, and especially between the first and second housing part of the
gear unit.” Id. at 8. Thus, the Specification shows that Appellant was in
possession of this claim limitation at the time of filing.
For the reasons set forth above, we reverse the written description
rejection of claim 32.
B. Rejection of claims 23–32 as indefinite
A rejection for indefiniteness is appropriate if, after the broadest
reasonable interpretation has been applied to the claims, the metes and
bounds of the claimed invention are not clear. In re Packard, 751 F.3d 1307,
1310 (Fed. Cir. 2014) (“A claim is indefinite when it contains words or
phrases whose meaning is unclear.” (citation omitted)). Claim “breadth is
not to be equated with indefiniteness.” In re Miller, 441 F.2d 689, 693
(CCPA 1971).
1. Claim 23
The Examiner rejected claim 23 as indefinite, concluding that the
meaning of the claim limitations reciting the first coating and second
coating. Final Act. 7–8. The Examiner reached this conclusion because
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“[t]he [S]pecification lacks any description of said coatings or their
respective structures/materials.” Id. at 8.
The Examiner’s rejection is based upon an erroneous premise. A
claim limitation may lack written description support and still be definite.
Rather, as set forth above, a claim should only be rejected as indefinite if it
contains “words or phrases whose meaning is unclear.” Packard, 751 F.3d at
1310 (citation omitted).
In this case, we have considered the claim language “a first coating
. . . to increase emitted heat output” and “a second coating . . . to increase
absorbed heat output.” We conclude that meaning of these claim limitations
would have been sufficiently clear to a person having ordinary skill in the art
and that the indefiniteness rejection of claim 23 is erroneous.
2. Claim 24
The Examiner rejected claim 24, concluding that the limitation “the
airflow is driven convectively and/or solely convectively” is indefinite. Final
Act. 8. The Examiner reasoned that the meaning of this limitation is unclear
because the Specification lacks any description of how the airflow is or can
be driven convectively. Id.
We reverse this rejection for three reasons. First, the Examiner’s
rejection is based upon the erroneous premise that a claim limitation that
lacks written description support necessarily also is indefinite. As discussed
above, this is incorrect. Second, even if the Examiner were correct, the
Specification does contain a description of convectively driven airflow. See
Spec. 11. Third, we have considered the claim language and conclude that
the meaning of this claim limitation would have been sufficiently clear to a
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person having ordinary skill in the art at the time of filing and that the
indefiniteness rejection is erroneous.
3. Claims 25 and 27
The Examiner rejected claim 25 as indefinite.4 Final Act. 8. For ease
of reference, we reproduce claim 25 below.
25. The drive device according to claim 16, further
comprising at least one fan and/or two fans, adapted to drive
the airflow, disposed on a bearing flange of the motor.
Appeal Br. Claims Appendix 2 (emphasis added).
The Examiner rejected claim 25 as indefinite, concluding that the
limitation “at least one fan and/or two fans” is unclear. Final Act. 8. In
particular, the Examiner states that “[i]t is unclear whether this phrase is
intended to limit the minimum number of fans only, or also limit the
maximum number of fans (i.e.[,] should it be read as ‘at least one fan and/or
at least two fans’).” Id.
According to Appellant, the ordinary meaning of the phrase in
question encompasses three alternatives: (a) at least one fan, (b) two fans,
and (c) two or more fans. Appeal Br. 9.
The Examiner’s Answer does not respond to this argument. See
Answer 6.
While we agree with Appellant that the phrase “at least one fan and/or
two fans” is definite, we disagree on the three alternative means

4 Although the Examiner’s summary statement of the rejection includes
claim 27, the detailed statement of the rejection does not provide any
specific reason for rejecting claim 27. See Appeal Br. 7–9. We assume that
the Examiner intended to reject claim 27 due to its dependence from claim
25.
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encompassed by the phrase. In our view, claim 25 encompasses a drive
device comprising (a) at least one fan, (b) two fans, or (c) at least three fans
(at least one fan and two additional fans). At the end of the day, however,
this slight difference does not matter; under either reading, the broadest
reasonable interpretation of claim 25 is that it encompasses a drive device
comprising at least one fan. Thus, the broadest reasonable interpretation of
claim 25 is clear and is not indefinite.
For the reasons set forth above, we reverse the indefiniteness rejection
of claims 25 and 27.
4. Claims 26, 28–31
The Examiner rejected claim 26 as indefinite. Final Act. 8. Claims
28–31 are rejected as indefinite based upon their dependency from claim 26.
Id. For ease of reference, we reproduce claim 26 below.
26. A drive device, comprising:
a gear unit; and
an electric motor adapted to drive the gear unit, the electric
motor including a laminated stator core which has stator
windings and is accommodated in a stator housing;
wherein the stator housing includes recesses that are axially
uninterrupted, the stator housing being surrounded and/or
radially surrounded by a housing, a tubular housing, and/or a
cup-shaped housing of the drive device, the housing being set
apart from the stator housing, such that an airflow and/or a
circulating airflow is generatable within the housing, the
recesses adapted to guide the airflow through in an axial
direction, the airflow returnable in an opposite direction in a
set-apart region between the stator housing part and the
housing;
the drive device further comprising two fans and/or at least one
fan, adapted to drive the airflow, disposed on a bearing flange
of the motor;
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wherein the bearing flange includes a circular base plate section
and a separating wall section that is disposed on the base plate
section, the separating wall section adapted to separate the
airflow from a space region that surrounds a B-side axial end
region of a rotor shaft facing away from the gear unit and/or
that at least partially surrounds an angle sensor disposed in the
B-side axial end region.
Appeal Br. Claims Appendix 2 (emphasis added).
The Examiner concluded that claim 26 was indefinite because it
recites a drive device comprising “two fans and/or at least one fan.” Final
Act. 8. According to the Examiner, “[i]t is unclear whether this phrase is
intended to limit the minimum number of fans only also limit the maximum
number of fans (i.e.[,] should it be read as ‘at least two fans and/or at least
one fan’).” Id.
Our analysis of this rejection parallels that of indefiniteness rejection
of claim 25. For the same reasons, we also reverse the indefiniteness
rejection of claim 26 and claims 28–31.
5. Claim 32
The Examiner rejected claim 32 because the Specification allegedly
lacks a description of how dirt or dust can be deposited in the depressions or
air chambers recited in the claim and lacks a description of the tool or how
an open space is to operate the connection recited in the claim. Final Act. 8–
9.
We reverse this rejection for three reasons. First, the Examiner’s
rejection is based upon the erroneous premise that a claim limitation that
lacks written description support necessarily also is indefinite. As discussed
above, this is incorrect. Second, even if the Examiner were correct, the
Specification does contain a description of convectively driven airflow. See
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Spec. 7–8. Third, we have considered the claim language and conclude that
the meaning of these claim limitations would have been sufficiently clear to
a person having ordinary skill in the art at the time of filing and that the
indefiniteness rejection is erroneous.
For the reasons set forth above, we reverse the indefiniteness rejection
of claim 32.
C. Rejection of claims 16–22, 25, and 27 as unpatentable over the
combination of Di Pietro and Pal
The Examiner rejected claims 16–22, 25, and 27 as obvious over the
combination of Di Pietro and Pal. Final Act. 9–14.
Appellant argues for reversal of the rejection of this group of claims
on the basis of limitations present in independent claim 16. Appeal Br. 10–
14. Dependent claims 17–22, 25 and 27 are said to be patentable by virtue of
their dependence from claim 16. Id. at 14. Thus, we limit our discussion to
claim 16, which represents the claims subject to this ground of rejection. 37
C.F.R. § 41.37(c)(1)(iv) (2017).
In rejecting claim 16, the Examiner found that Di Pietro describes a
drive device for an electric vehicle that satisfies each of claim 16’s
limitations except that Di Pietro’s cooling fluid is oil rather than air. Final
Act. 9–11. The Examiner also found that Pal describes a drive device for an
electric vehicle that is cooled by circulating an airflow through the electric
motor’s housing. Id. at 11. The Examiner concluded that it would have been
obvious to a person having ordinary skill in the art to modify Di Pietro’s
drive device to use air as the cooling fluid, as taught by Pal, to take
advantage of the airflow caused by the motion of the electric vehicle,
thereby improving the efficiency of the device. Id.
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Appellant argues that the rejection of claim 16 should be reversed
because the Examiner has not established a prima facie case of
unpatentability. Appeal Br. 11–14. Appellant’s principal argument is that the
Examiner erred by finding that a person having ordinary skill in the art
would have modified Di Pietro’s drive device to make it air-cooled. Id.
According to Appellant, Di Pietro describes the use of oil to cool and
lubricate its drive device. Appellant argues that switching to air as a cooling
fluid would alter Di Pietro’s principle of operation and render it unsuitable
for its intended purpose. Id. at 13. Appellant argues that the Examiner’s
proposed change would make Di Pietro’s drive device less efficient. Id.
The Examiner responds that Appellant has not demonstrated that
replacing Di Pietro’s cooling oil with air would be detrimental. Answer 6–7.
The Examiner essentially argues that a drive device with air flow is
necessarily equivalent to using oil. Id. at 6–9.
We are persuaded by Appellant’s arguments. In particular, we agree
with Appellant that Di Pietro describes the importance of spraying cooling
oil on ball bearings disposed on the rotor shaft, thereby lubricating the ball
bearings. Di Pietro 3:61–66. As Appellant points out, Appeal Br. 13,
directing cooled air flow onto the ball bearings would not provide the
necessary lubrication. In the absence of lubrication, the ball bearings would
generate additional heat and might fail. Thus, the Examiner erred by finding
that a person having ordinary skill in the art would have considered air
cooling equivalent to oil cooling of a drive device.
In view of the foregoing, we reverse the rejection of claim 16. Thus,
we also reverse the rejection of claims 17–22, 25, and 27.
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IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
23, 24, 32 112 Written description 23 24, 32
23–32 112 Indefiniteness 23–32
16–22, 25, 27 103 Di Pietro, Pal 16–22, 25, 27
Overall Outcome 23 16–22, 24–32
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED IN PART