Mark Spickard

Patent Trials and Appeals Board

Apr 21, 2021

2020000763 (P.T.A.B. Apr. 21, 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.
15/213,157 07/18/2016 Mark A. Spickard 510962 7389
53609 7590 04/21/2021
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
CARRASQUILLO, JORGE L
ART UNIT PAPER NUMBER
2846
NOTIFICATION DATE DELIVERY MODE
04/21/2021 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. SPICKARD
Appeal 2020-000763
Application 15/213,157
Technology Center 2800
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
LILAN REN, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant requests rehearing of our Decision of February 2, 2021. See
Request for Rehearing of April 2, 2021 (“Request”). In our Decision, we
affirmed the rejection of claims 2–25 under 35 U.S.C. § 112(b) and
procedurally reversed the rejection under 35 U.S.C. § 103.
Because we do not modify our Decision, the Request is DENIED.
OPINION
A request for rehearing must state, with particularity, the points
Appellant believes the Board misapprehended or overlooked. Arguments not
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raised in the briefs before the Board and evidence not previously relied on in
the briefs are not permitted in a request for rehearing except as permitted by
37 C.F.R. §§ 41.52(a)(2) through (a)(4). 37 C.F.R. § 41.52(a)(1) (2014).
Appellant contends we misapprehended various items. Request 2. We
address each of Appellant’s contentions below.
I. Rejection of claims 2–25 as Indefinite
A. Topology
1. Claims 2–23
In our Decision, we determined that the term “topology” is indefinite
because of the way it is used in claims 24 and 25. Decision 5–6. In reaching
to this conclusion we stated that:
In so far as “topology” is defined as the electrical connections
required to accomplish a Y-configuration, Δ-configuration, pole
elimination, and winding ratio adjustment (Spec. ¶ 23), the
scope of “topology” is reasonably precise. The word “topology”
covers a genus of electrical connections. But the meaning
becomes fuzzy when one considers claims 24 and 25. Those
claims recite that the topology includes set speeds.
Decision 5. Appellant states that our interpretation of topology “as the
electrical connections required to accomplish a Y-configuration, Δ-
configuration, pole elimination, and winding ratio adjustment” is correct and
they point out that this is how the term is used in claims 2, 8, 14, and 20.
Request 2. But Appellant faults us for not limiting the rejection to claims 24
and 25, which recite that topology includes set speeds. Id.
Appellant has not identified a point of misapprehension in our
Decision. In fact, Appellant’s argument is based on a misapprehension of the
law. Appellant states that “[t]he caselaw and MPEP do not provide that the
claims are construed in light of each other.” Request 3. That statement
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overlooks well-founded principles of claim construction. “[C]laim terms are
to be construed consistently throughout a patent.” Phil-Insul Corp. v. Airlite
Plastics Co., 854 F.3d 1344, 1359 (Fed. Cir. 2017). The term “topology”
must be interpreted consistently throughout the claims. Because the
boundaries of what “topology” covers is unclear when given a meaning that
encompasses set speeds, the term “topology” is rendered indefinite in every
claim in which the term is used.
True, if claims 24 and 25 didn’t exist, claim 2 would not be indefinite.
But claims 24 and 25 do exist. Because claims 24 and 25 attempt to include
set speed as part of “topology,” the meaning of “topology” becomes unclear
across all the claims.
2. Claims 24 and 25
Appellant further contends that “topology” is not indefinite as used in
claims 24 and 25. Request 3. Claims 24 and 25 recite that motor topology
includes various set speeds. For instance, claim 24 recites that:
the motor topology includes at least a first set speed in a first
topology, a second set speed in a second topology, and a third
set speed in a third topology, each of the set speeds being a no-
load, maximum speed of the motor for each of the respective
topologies, the first set speed being the slowest set speed and
providing the highest torque of the motor topology, the second
set speed providing the fastest set speed of the motor topology,
and the third set speed being faster than the first set speed.
As we point out above, Appellant agrees that the term “topology”
refers to “the electrical connections required to accomplish a Y-
configuration, Δ-configuration, pole elimination, and winding ratio
adjustment.” Request 2. Appellant explains that “‘[s]peed’ when used in
relation to a motor refers to rotational speed, i.e., the rate at which a rotor
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rotates within the stator” and the topology influences speed. Request 4. We
agree. We further agree that, as stated in the Specification, the “topology”
(i.e., the electrical connections between the windings of the stator poles
and/or parts of the windings of the stator poles) can be adjusted to produce a
different configuration of the stator pole windings and an accompanying
change in torque and/or speed of the motor’s operation.” Id. (Appellant’s
emphasis omitted, italics added). Thus, the topology does not include the
speed, the topology changes the speed. Speed is not an electrical connection.
Speed is a measurement of distance over time. In our Decision, we explained
the indefiniteness problem as follows:
Appellant’s Specification defines “topology” as “the electrical
connections between the windings of the stator poles and/or
parts of the windings of the stator poles.” Spec. ¶ 23. According
to the Specification, the switching array configures the topology
(electrical connections) between the windings or parts of
windings. Id. We interpret the topology as the map of the
electrical connections within the electrical circuit leading to a
specific configuration (e.g., Y-configuration, Δ-configuration,
pole elimination, and winding ratio adjustment) of the motor
circuit. In claims 24 and 25, set speeds are said to be “the
maximum, no-load speed of the motor for a given applied
voltage.” Spec. ¶ 47. It is not clear how set speed can be part of
the electrical connections between the windings or parts of the
windings. Speed is a measurement of distance over time. Thus,
the language of claims 24 and 25 calls into question the scope
of “topology” and makes the term indefinite.
Decision 5–6.
Appellant contends that “the motor topology ‘includes’ a set speed as
a property of the topology” and “the motor topology includes a first set
speed’ can be read as ‘the motor topology is characterized by a first set
speed.’” Request 4. We decline to accept such lingual gymnastics. Although
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each topology may be associated with a set speed, it is the motor that has a
set speed. See Spec. ¶ 12 (“Each of the set speeds are a no-load, maximum
speed of the motor for each of the respective topologies.” (emphasis added)).
A topology may be associated with a set speed, but it does not include a set
speed. The language is not as reasonably precise as the subject matter
permits and is, thus, indefinite. In re Packard, 751 F.3d 1307, 1313 (Fed.
Cir. 2014).
35 U.S.C. § 112(b) “puts the burden of precise claim drafting squarely
on the applicant.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997); see
Packard, 751 F.3d at 1314 (Affirming an indefiniteness rejection because
Packard had been given the opportunity to bring clarity to his claim
language stating that “[i]n some cases it is difficult enough for courts to
construe claims when the draftsperson has made every effort to be clear and
concise, let alone when the claims have readily observable ambiguities or
incoherencies within them.”); see also Halliburton Energy Servs. v. M-L
LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that “the patent drafter is
in the best position to resolve the ambiguity in the patent claims, and it is
highly desirable that patent examiners demand that applicants do so in
appropriate circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in litigation”).
Appellant has not persuaded us that we misapprehended any point in
our Decision that would have led to a difference in outcome as to the
Examiner’s rejection of “topology” as indefinite.
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B. For Configuring
1. Claims 2 and 20
In our Decision we sustained the Examiner’s determination that the
phrase “a second set of switches for configuring the topology of the
motor . . . to eliminate half of the active stator poles of the motor” as recited
in claims 2 and 20 is indefinite, selecting claim 2 as representative. Decision
6. Appellant reads “for configuring” as stating the capabilities of the set of
switches. Request 5–6. We agree. As we stated in our Decision, “the ‘[for
configuring]’[1] language of claim 2 recites a function or intended use for the
switches.” Decision 6.
We further agree with Appellant that “[e]lectrical connections
between the wire windings are created by the switches in the switching
array” and “[i]n a simple single pole, single throw switch, closing the switch
creates an electrical connection, and opening the switch breaks the electrical
connection,” and “individually toggling sets of switches creates different
combinations of electrical connections.” Request 5. Claim 2 requires “a
second set of switches for configuring the topology of the motor,” i.e., a
second set of switches for configuring a combination of electrical
connections, “to eliminate half of the active stator poles of the motor.”
Although each switch makes, breaks, or changes an electrical connection,
the second set of switches collectively are “for configuring the topology,”
i.e., for configuring the plural electrical connections created by the set of

1 Our statement included an error. Specifically, we misquoted “for
configuring” as “configured for.” Decision 6. We use the correct
terminology on the next page in the statement “[t]he language ‘for
configuring’ modifies the noun “a second set of switches.” Decision 7. We
apologize for the error and hereby correct it.
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switches to eliminate half the active stator poles. To accomplish the intended
use, more than just the switches are required. The set of switches must be
arranged within the circuitry in a particular manner such that half the
electrical connections can be eliminated. The claim language merely sets
forth a capability for the second set of switches. What the claim language
does not do is affirmatively limit the specific arrangement of the second set
of switches in the circuitry. Thus, the effect of this capability language on
the scope of the claim is unclear.
Appellant contends that we incorrectly implied a distinction between
“electrical connections” and “switches.” Request 5. We have not. Although
each switch makes, breaks, or changes an electrical connection, it is the
overall arrangement of the second set of switches within the circuity that
makes it possible to create a topology. Because the claim limits only the
capability of the second set of switches rather than affirmatively limiting the
switch arrangement within the circuitry, it is unclear how the language is to
limit the claim.
Appellant contends that we conflated “for configuring” with
“configured for.” Request 5–6. Although our Decision misquoted “for
configuring” as “configured for” in two locations, we did not conflate the
two phrases. Decision 6, 8. As Appellant states, “unlike ‘configured for,’
which reflexively implies structure to the object preceding it, ‘for
configuring’ is a prepositional phrase stating the capabilities of the set of
switches.” Request 5–6. We read “for configuring” in the same manner as
Appellant, i.e., as a prepositional phrase stating the capabilities of the set of
switches. As we stated, “[i]n essence, the ‘[for configuring]’ language of
claim 2 recites a function or intended use for the switches.” Decision 6. It is
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precisely because the claim recites this prepositional phrase that the claim
becomes indefinite.
Again, we emphasize that 35 U.S.C. § 112(b) “puts the burden of
precise claim drafting squarely on the applicant.” Morris, 127 F.3d at 1056;
see Packard, 751 F.3d at 1314; see also Halliburton Energy Servs. v. M-L
LLC, 514 at 1255. The USPTO, in examining an application, is obliged to
test the claims for reasonable precision, i.e., with language as precise as the
subject matter permits. Packard, 751 F.3d at 1313. Here, it is possible to
craft more reasonably precise claims and, thus, the claims before us are
indefinite.
2. Claims 8 and 14
As we stated in our Decision, claims 8 and 14 have analogous “for
configuring” limitations and are indefinite for reasons analogous to those
discussed above. Decision 8.
C. A First Part and a Second Part and the First Number and the
Second Number Being Different
As Appellant points out (Request 6–7), we held that claims 6, 7, 9, l 0,
15, and 16 were indefinite because “it is not clear what distinguishes the
parts of ‘the number of windings’ from the ‘first number of windings’ and
the ‘second number of windings.’” Decision 9–10. The offending language
is found in claims 6 and 7.
Appellant responds with two pages explaining the meaning of the
phrases and how they are distinguished from each other. The problem is that
the Specification does not refer to the phrases in the manner claimed. Here
as in Hammack, “the appealed claims serve as a shadowy framework upon
which are located words lacking in precise referents in the specification and
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requiring elaborate explanations extraneous to both the specification and the
claims.” See In re Hammack, 427 F.2d 1378, 1381–82 (CCPA 1970)
(internal quotation marks omitted). Again, the claims are not as reasonably
precise as the subject matter permits.
Appellant explains the limitations in relation to Figure 5. Appellant
states that Figure 5 “closely and clearly tracks the claim language of claims
6 and 7, which depend further upon claim 5.” Request 7. We disagree.
We do not agree because the Specification uses different terminology
than claims 5–7 and Appellant’s deviating terminology renders the claims
indefinite. We further discuss this below.
We first consider claim 5. Claim 5 introduces “a number of windings
on each of a plurality of stator poles.” Looking to the Specification, we see it
refers to a “number of windings through which current flows in the phase
coils wrapped around the stator poles” when discussing “winding ratio
adjustment.” Spec. ¶¶ 34, 36. Figure 5 depicts these phase coils as a1 and a2.
The Specification describes “the number of windings” as the windings in
both phase coils a1 and a2. See Spec. ¶ 36 (“The total number of wire
windings having N number of turns wrapped around the stator poles is
comprised of the number of turns N1 in the phase coil a1 and the number of
turns N2 in the phase coil a2.”). So far, this reading of claim 5 comports
with Appellant’s explanation. Request 7.
Second, we turn to claim 6. Claim 6 requires “the number of windings
on each of the plurality of stator poles” include “a first part and a second
part.” But the Specification does not use this “part” terminology. Instead, the
Specification refers to coils a1 and a2. Spec. ¶¶ 34–36. From Appellants
explanation, it is clear that Appellant intends “first part” and “second part”
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to refer to coils a1 and a2, respectively, Request 7, although this is not
abundantly clear from a reading of the claim in light of the Specification
without the benefit of Appellant’s explanation.
Claim 7 depends from claim 6 and further recites that the “first part”
includes “a first number of windings” and the “second part” includes “a
second number of windings.” The Specification refers to coils (a1, a2) and
turns (N1, N2).
The similarity of the “number of windings” language in the three
claims, plus the fact that the claim language strays from that of the written
description, causes the claims to become indefinite. The meaning becomes
lost in the obtuse nature of the claim language. As in Hammack, “the
appealed claims serve as ‘a shadowy framework’ upon which are located
words ‘lacking in precise referents in the specification’ and requiring
‘elaborate explanations extraneous to both the specification and the claims.’”
Hammack, 427 F.2d at 1381–82. Such claims do not serve the notice
function for which claims are designed.
Appellant has not persuaded us that we misapprehended any point in
our Decision that would have changed the outcome of our determination as
to the language of claims 6 and 7.
II. Rejection of Claims 2–20, 24, and 25 as Obvious
Appellant also takes issue with our procedural reversal of the rejection
of claims 2–20, 24, and 25 as obvious. Our procedural reversal was on the
basis that, because the claims are indefinite, we do not know what they cover
and “[t]o review a rejection for obviousness, ‘it is essential to know what the
claims do in fact cover.’” Decision 11 (quoting In re Steele, 305 F.2d 859,
862 (CCPA 1962)).
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Appellant urges reconsideration of this treatment of the claims for two
reasons: (1) because “the rejection is an impermissible omnibus rejection
that fails to meet the legal standard of demonstrating obviousness” and (2)
because “the claims are not indefinite (or at least so indefinite) to make
consideration of the claim limitations on the merits unduly speculative.”
Request 9.
As to the first point, because of the indefiniteness issue, we need not
reach the question of whether the obviousness rejection fails for another
reason.
As to the second point, we have determined that the claims are
indefinite. Appellant interprets Steele as setting forth a “considerable
speculation” standard, and argues that “the claims are not so indefinite as to
require ‘considerable speculation’ as to the meaning of the claims terms.”
Request 10. There is no such “considerable speculation” standard
permeating the caselaw. Steele merely stated that under the facts of that case
considerable speculation was required. Steele, 305 F.2d at 862–63.
In order to review the obviousness rejection we would have to
speculate as to the meaning of “topology” and how the intended
use/capability language in the “for configuring” clauses limit the actuator of
the claims. And while examiners are directed to enter obviousness rejections
over claims also determined to be indefinite, see MPEP § 2173.06(II), our
reviewing court has admonished us for reviewing obviousness rejections
when we uphold the examiner’s indefiniteness rejection. Steele, 305 F.2d at
862–63 (“We think the examiner and the board were wrong in relying on
what at best are speculative assumptions as to the meaning of the claims and
basing a rejection under 35 U.S.C. § 103 thereon.”).
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Here, the claim language is indefinite. We may not simply ignore the
indefinite language and proceed to review the obviousness rejection. In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably definite
meaning can be ascribed to certain terms in the claim, the subject matter
does not become obvious— the claim becomes indefinite.”). Courts have
long refused to consider alternative grounds of rejection when claims are
indefinite. See, e.g., United Carbon Co. v. Binney & Smith Co., 317 U.S.
228, 236 (1942) (“We are of opinion that the claims in litigation are bad for
indefiniteness, and have no occasion to consider questions of novelty,
invention, and infringement.”); Enzo Biochem, Inc. v. Applera Corp., 599
F.3d 1325, 1332 (Fed. Cir. 2010) (“If a claim is indefinite, the claim, by
definition, cannot be construed. Without a discernable claim construction, an
anticipation analysis cannot be performed.”); Packard, 751 F.3d at 1314 (“In
view of our judgment upholding the Board’s determination that the applied-
for patent claims are invalid for failure to comply with the requirements of
§ 112(b) . . ., we need not address the further issue of the problems with the
written description under § 112(a).”).
Appellant has not convinced us that we misapprehended any point in
deciding the appeal as to the obviousness rejection.
CONCLUSION
Appellant’s request for rehearing is DENIED.
More specifically,
OUTCOME OF DECISION ON REHEARING
Claims 35 U.S.C § Reference(s)/Basis Denied Granted
2–25 112(b) Indefiniteness 2–25
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2–20, 24, 25 103 Das, Kawashima,
Takata ’340,
Takata ’242,
Fuchs, Jeong,
Shlien, Hao, Satake
2–20, 24,
25

Overall
Outcome 2–25
FINAL OUTCOME OF APPEAL AFTER REHEARING
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–25 112(b) Indefiniteness 2–25
2–20, 24, 25 103 Das, Kawashima,
Takata ’340,
Takata ’242,
Fuchs, Jeong,
Shlien, Hao,
Satake
2–20, 24, 25
Overall
Outcome
2–25

DENIED