SEW-EURODRIVE GMBH & CO. KGDownload PDFPatent Trials and Appeals BoardAug 20, 20212020005272 (P.T.A.B. Aug. 20, 2021) Copy Citation 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. Appeal 2020-005272 Application 15/577,737 2 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. Appeal 2020-005272 Application 15/577,737 3 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. Appeal 2020-005272 Application 15/577,737 4 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 Appeal 2020-005272 Application 15/577,737 5 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 Appeal 2020-005272 Application 15/577,737 6 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 Appeal 2020-005272 Application 15/577,737 7 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 Appeal 2020-005272 Application 15/577,737 8 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 Appeal 2020-005272 Application 15/577,737 9 “[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 Appeal 2020-005272 Application 15/577,737 10 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. Appeal 2020-005272 Application 15/577,737 11 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; Appeal 2020-005272 Application 15/577,737 12 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 Appeal 2020-005272 Application 15/577,737 13 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. Appeal 2020-005272 Application 15/577,737 14 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. Appeal 2020-005272 Application 15/577,737 15 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 Copy with citationCopy as parenthetical citation