ABB Research Ltd.

Patent Trials and Appeals Board

May 22, 2020

2018009246 (P.T.A.B. May. 22, 2020)

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.
13/892,715 05/13/2013 Yujing Liu 04189-P0138A 7779
137670 7590 05/22/2020
ABB - Whitmyer IP Group LLC
600 Summer Street
Stamford, CT 06901
EXAMINER
MATES, ROBERT E
ART UNIT PAPER NUMBER
2832
MAIL DATE DELIVERY MODE
05/22/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte YUJING LIU and PIERLUIGI TENCA
________________

Appeal 2018-009246
Application 13/892,715
Technology Center 2800
________________

Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
ADAM J. PYONIN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20, which constitute all of the pending claims. 1
Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).2
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies ABB Research Ltd. as the real party in interest.
Appeal Brief filed April 18, 2018 (“Appeal Br.”) 2.
2 Oral argument was held on May 15, 2020. A transcript will be added to
the record in due course.
Appeal 2018-009246
Application 13/892,715

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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A rotating electrical machine including a stator or rotor
including a plurality of serially connected switching cells. Each
switching cell includes a winding subsection and a current
reverser arranged to controllably alter a current direction through
the winding subsection, and each current reverser includes a
capacitor arranged to form a resonant circuit in cooperation with
the winding subsection.
Abstract.
Independent claim 1, reproduced below with the disputed claim
language emphasized, illustrates the appealed claims:
1. A rotating or linear electrical machine comprising:
a stator or rotor comprising a plurality of serially
connected switching cells,
wherein each switching cell comprises a winding
subsection and a current reverser arranged to controllably alter a
current direction through the winding subsection,
wherein each current reverser comprises a capacitor
arranged to form a resonant circuit in cooperation with the
winding subsection,
wherein each current reverser further comprises switch
assemblies that provide bidirectional voltage blocking for
changing the polarity of the voltage across the winding
subsection, and
wherein each switching cell comprises a switch configured
to disconnect the capacitor from the winding subsection without
stopping the flow of current through the winding subsection.
Appeal Br. 15 (Claims App.).

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STATEMENT OF THE REJECTIONS
Claims 1, 3, 5–7, 9, 13, and 16–19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Maslov (US 2004/0021437 Al; published
Feb. 5, 2004), Falk (US 7,102,901 B2; issued Sept. 5, 2006), Klatt
(US 5,237,255; issued Aug. 17, 1993), and Ni (US 5,166,617; published
Nov. 24, 1992). Final Act. 3–12.3
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, Klatt, Ni, and Mongeau (US 5,917,295; issued June 29,
1999). Final Act. 12–14.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, Klatt, Ni, and Tokumasu (US 6,388,357 Bl; issued
May 14, 2002). Final Act. 14–15.
Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, Klatt, Ni, and Miskin (US 4,804,895; issued Feb. 14,
1989). Final Act. 16–17.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, Klatt, Ni, and Lee (US 6,064,175; issued May 16, 2000).
Final Act. 17.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, Klatt, Ni, and Suenaga (US 2008/0272115 Al; published
Nov. 6, 2008). Final Act. 18.

3 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
December 14, 2017 (“Final Act.”); the Examiner’s Answer mailed August 7,
2018 (“Ans.”); and the Reply Brief filed September 24, 2018 (“Reply Br.”).
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Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, Klatt, Ni, and MacKay (US 2006/0038517 Al; published
Feb. 23, 2006). Final Act. 18–20.
Claim 14 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, Klatt, Ni, and Kikuchi (US 2009/0200885 Al; published
Aug. 13, 2009). Final Act. 20–21.
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, Klatt, Ni, and Lander (US 6,054,791; issued Apr. 25,
2000). Final Act. 22.
Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Maslov, Falk, and Divan (US 4,864,483; issued Sept. 5, 1989). Final
Act. 22–25.

STANDARD OF REVIEW
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
The Examiner finds that Maslov discloses most of the limitations of
independent claims 1 and 20, specifically including the limitation of
“wherein each current reverser further comprises switch assemblies that
provide bidirectional voltage blocking for changing the polarity of the
voltage across the winding subsection.” Final Act. 4–5. In particular, the
Examiner interprets this limitation as merely reading on a conventional
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electrical circuit that is commonly called an H-bridge, and the Examiner
finds that Maslov’s switch set circuit 52 of Figures 16 and 18A, which
circuit includes four metal oxide semiconductor field effect transistors
(MOSFETs) 53–56, includes such an H-bridge, as claimed. Ans. 2–3 (citing
Maslov ¶¶ 42, 251, 253; Figs. 3, 18A).
The Examiner relies on Falk for teaching switching cells that are
connected serially. Id. at 6 (citing Falk Figure 1, switching cells 4.1 to 4.n).
The Examiner relies on Klatt for teaching a capacitor arranged to form a
resonant circuit in cooperation with each winding subsection. Id. at 6–7.
The Examiner relies on Ni for teaching switching cells that each comprise a
switch configured to disconnect the capacitor from the winding subsection
without stopping the flow of current through the winding subsection. Id.
at 7.
The Examiner concludes that motivation existed to combine the
teachings of these four references in a manner as recited in claim 1. Id. at 6–
8. More particularly, the Examiner initially reasons in relation to Maslov
and Falk,
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify Maslov to have the
switching cells 52 [] serially connected[,] as taught by Falk, for
the advantageous benefit of converting a high input voltage to a
useful output[,] as taught by Falk.
Id. (citing Falk, col. 1, ll. 11–13).
The Examiner subsequently supplements the reasoning for why one of
ordinary skill would have combined the references’ teachings, taking the
additional position that Maslov also teaches connecting the switching cells
in series:
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Maslov does not specify how the switch sets 52 shown in FIG. 16
and 19 are connected to each other and states that the switch sets
52 can be connected in parallel or in series. Maslov clearly
contemplates either one of series or parallel connections between
the switch sets 52.
Ans. 4 (citing Maslov ¶ 258).
Regarding the Examiner’s supplemental reasoning, Appellant disputes
the Examiner’s finding that Maslov contemplates either series or parallel
connections between the switch sets. Reply Br. 8–9. Appellant notes the
passage of Maslov that the Examiner relies upon, reads more fully, as
follows: “the power source provides energization to multiple independent
switch sets 52 each connected to respective motor winding or windings 34 in
parallel, series, or more complex commutated arrangements.” Id. at 8 (citing
Maslov ¶ 258).
Appellant contends that “[c]ontrary to the Examiner’s interpretation,
Maslov does not teach the switch sets 52 themselves are connected in
parallel or series with each other.” Id. (emphasis added). Appellant argues,
and we agree, that this passage teaches that “for any given switch set,
Maslov describes that the switch set is connected in parallel or series with its
corresponding winding 34.” Id. (emphasis added). As such, the Examiner
has not established that Maslov contemplates serially connecting the switch
sets, themselves.
Regarding the Examiner’s combination of Maslov and Falk, Appellant
additionally argues that there would have been insufficient reason to connect
Maslov’s switching cells serially because “Maslov teaches that the switch
sets are connected independently of each other—not serially connected—for
the intended purpose of isolating the machine’s electromagnetic circuits.
Reply Br. 8 (citing Maslov ¶¶ 23, 111). Appellant argues that the switch
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sets’ independence “allows effective control of more independent machine
parameters, enabling greater freedom to optimize and providing adaptive
motors and generators that are cheaper, smaller, lighter, more powerful, and
more efficient than conventional designs.” Id. at 9 (citing Maslov, Abstract).
Appellant further cites multiple passages of Maslov to support the
assertion that Maslov intentionally designed the switch-set circuits
specifically to be electrically isolated from each other and independently
connected to a power source. Reply Br. 5–9 (citing Maslov ¶¶ 23, 92, 93,
111, 113, 114, 134, 144, 153, 168, 251; Figs. 3, 18a). In light of Maslov’s
multiple disclosures of the benefits and central goal of electrically isolating
the circuits, the Examiner does not sufficiently explain why one of ordinary
skill would have expected that modifying Maslov’s motor to connect the
circuits serially would achieve “the [relatively] advantageous benefit of
converting a high input voltage to a useful output[,] as taught by Falk.”
Ans. 4.
For example, Maslov expressly describes the benefits of independent
control as follows:
Modern electric motors often have sophisticated,
microprocessor-based control systems. But an adaptive electric
machine may provide even better control over machine operation
by isolating the machine's electromagnetic circuits to eliminate
interference, then providing adequate optimal control to each
independent electromagnetic circuit by controlling electrical
flow in each circuit independently of electrical flow in each other
circuit. Better control means better opportunity to optimize.
Rather than being forced to accept compromises in selecting the
type of motor to use–– such as giving up high starting torque to
achieve variable speed-an adaptive electric machine may,
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because of its adaptive nature, provide optimum performance
over a wide range of conditions.
Maslov ¶ 23.
The Examiner’s combining of at least Falk with Maslov appears to be
a result of impermissible hindsight that was based on knowledge gleaned
only from Appellant’s claims and disclosure. See In re McLaughlin, 443
F.2d 1392, 1395, (CCPA 1971) (holding that a judgement on obviousness is
proper so long as it takes into account only knowledge that was within the
level of ordinary skill in the art and does not include knowledge gleaned
only from an applicant’s disclosure).

CONCLUSIONS
For the foregoing reasons, Appellant has persuaded us of error in the
Examiner’s obviousness rejection of independent claim 1. Accordingly, we
reverse the Examiner’s rejection of that claim, and claims 1, 3, 5–7, 9, 13
and 16–19, which either depend from claim 1 or otherwise recite that the
switching cells are serially connected.
With respect to the remaining rejections of dependent claims 2, 4, 8,
10–12, 14, and 15 and of independent claim 20, the Examiner does not rely
on any of the additionally cited references to cure the deficiency of the
obviousness rejection explained above. See Final Act. 12–25.

Appeal 2018-009246
Application 13/892,715

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DECISION SUMMARY
In summary:

REVERSED

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 3, 5–7,
9, 13, 16–
19
103 Maslov, Falk, Klatt,
Ni
1, 3, 5–7,
9, 13, 16–
19
2 103 Maslov, Falk, Klatt,
Ni, Mongeau
2
4 103 Maslov, Falk, Klatt,
Ni, Tokumasu
4
8 103 Maslov, Falk, Klatt,
Ni, Miskin
8
10 103 Maslov, Falk, Klatt,
Ni, Lee
10
11 103 Maslov, Falk, Klatt,
Ni, Suenaga
11
12 103 Maslov, Falk, Klatt,
Ni, MacKay
12
14 103 Maslov, Falk, Klatt,
Ni, Kikuchi
14
15 103 Maslov, Falk, Klatt,
Ni, Lander
15
20 103 Maslov, Falk, Divan 20
Overall
Outcome
1–20