Ex Parte Anger et al

Patent Trial and Appeal Board

Aug 29, 2016

13187241 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/187,241 07/20/2011
131672 7590 08/29/2016
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
FIRST NAMED INVENTOR
Jan Anger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
04189-P0066A 5872
EXAMINER
BAISA, JOSELITO SASIS
ART UNIT PAPER NUMBER
2837
MAILDATE DELIVERY MODE
08/29/2016 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 JAN ANGER, WLIA FORSLIN, and UNO GAFVERT
Appeal2014-009003
Application 13/187,241
Technology Center 2800
Before CARL W. WHITEHEAD JR., BRUCE R. WINSOR, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b). Claims 4 and 5
are indicated to be directed to allowable subject matter. (Final Act. 3.)
Claims 6-15 are withdrawn from consideration. (App. Br. 2.) Oral
argument was heard on August 16, 2016. A transcript of the hearing will be
placed in the record in due time.
1 The real party in interest identified by Appellants is ABB Research Ltd.
(App. Br. 2.)
Appeal2014-009003
Application 13/187,241
We REVERSE and institute a NEW GROUND OF REJECTION
within the provisions of 37 C.F.R. § 41.50(b) (2013).
STATEMENT OF THE CASE
Appellants' disclosed "invention relates to a core leg for a shunt
reactor, wherein magnetic core elements of the leg are separated by spacers
between the core elements." (Spec. i-f 2.) Claim 1, which is illustrative,
reads as follows:
1. A gapped core leg for a shunt reactor, the gapped core leg
compnsmg:
a plurality of core elements arranged in a stacked manner,
and
a spacer arranged in a gap between adjacent core
elements,
characterized in that the spacer is directly cast between
the adjacent core elements.
Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kerns (US 2,600,057, issued May 10, 1949) and Beauclair
et al. (US 5,748,013, issued May 5, 1998) (hereinafter "Beauclair").
Rather than repeat the arguments here, we refer to the Briefs ("App.
Br." filed Mar. 3, 2014; "Reply Br." filed Aug. 19, 2014) and the
Specification ("Spec." filed July 20, 2011) for the positions of Appellants
and the Final Office Action ("Final Act." mailed Oct. 18, 2013) and
Examiner's Answer ("Ans." mailed June 20, 2014) for the reasoning,
findings, and conclusions of the Examiner.
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Application 13/187,241
ISSUE
The dispositive issue before us is whether, in rejecting the claims
under appeal, the Examiner provided "some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
ANALYSIS
The Examiner concludes it would have been obvious to apply
Beauclair's teaching of molding, i.e., "directly casting," a gap material to the
body of an inductor core (see Beauclair abstract, col. 4, 11. 21-22) to the
manufacture of Kerns' s high-voltage multiple core transformer comprising a
plurality of cores 23 separated from each other by insulating spacers 24 (see
Kerns Title, col. 3, 11. 26-33, Figs. 1--4). Final Act. 2; see also id. at 3-5;
Ans. 3--4. The Examiner finds as follows:
It would have been obvious to one having ordinary skill in
the art at the time of the invention to use molding or bonding to
insert a spacer or gap into a magnetic core as taught by Beauclair
to the magnetic core of Kerns since either method would work
well to achieve the desired permeability of the core.
Final Act. 2 (citation omitted). The Examiner further explains "[t]he
motivation [for applying Beauclair' s teaching to Kerns] would have been to
introduce an easier way of manufacturing an interleave configuration of
magnetic cores and gap spacers." Final Act. 5, Ans. 4.
Appellants contend "one skilled in the art viewing Kerns would not
think that it would be 'an easier way of manufacturing' to use Beauclair's
molding technique rather than the stacking technique taught by Kerns."
Reply Br. 5. We agree. As explained by Appellants:
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Application 13/187,241
Kerns teaches its "[t]he cores 23 of Fig. 2 are stacked and aligned
vertically so as to form a hollow cylinder with a core passageway
26." (Kerns col. 3 11. 26-28, emphasis added.) Kerns has a
"primary winding 25" as well as "secondary winding 22" which
"makes a single tum through the center of the core passageway
26 of all the cores." (Kerns col. 3 11. 40-51.) [Kerns Fig. 2
omitted.] Accordingly, Kerns requires a hollow core passageway
26 and its core windings 22, 25 travel through the hollow core
passageway 26.
As a result, the Examiner's suggestion to use "molding" as
taught by Beauclair to insert a spacer into a magnetic core of
Kerns would not work. (Examiner's Answer at 2.) Doing so
would instead block Kern's "hollow core passageway." ...
Moreover, there is no suggestion in either reference of a
mold that provides for Kerns' windings that run through its
hollow passageway. These windings ... would require openings
in any mold that would permit spacer material to escape. Kerns
does not disclose how the Examiner's hypothetical combination
could be accomplished, Beauclair does not disclose how this
could be accomplished, and the Examiner's Answer does not
disclose how this could be accomplished. The mere fact that
references can be combined or modified does not render the
resultant combination obvious unless the results would have
been predictable to one of ordinary skill in the art. [KSR, 550
U.S. at 417.]
Reply Br. 2--4.
We are not persuaded that either Beauclair or Kerns "teaches away"
from the proposed combination or that the combination would change the
"principle of operation" of either Beauclair or Kerns. See App. Br. 7-9;
Reply Br. 2-5. Nor are we persuaded that Beauclair and Kerns are not
analogous art vis-a-vis Appellants' invention. See Reply Br. 6. However,
Appellants have adduced evidence in support of those propositions that
rebuts the Examiner's findings that Beauclair's directly molded gap spacers
may be directly substituted for Kems's gap spacers (see Final Act. 2) and
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Appeal2014-009003
Application 13/187,241
that applying Beauclair' s teachings to Kerns would predictably produce an
easier way of manufacturing Kems's transformer (see Final Act. 5; Ans. 4).
We find the preponderance of the evidence before us does not support
the Examiner's finding that applying Beauclair's teaching to Kems's
transformer would be a simple substitution of one method for another (Final
Act 2) or "introduce an easier way of manufacturing an interleave
configuration of magnetic cores and gap spacers" (Final Act. 5, Ans. 4).
Therefore, the reasoning articulated by the Examiner in support of the legal
conclusion of obviousness does not have an adequate factual underpinning.
See KSR, 550 U.S. at 418. Accordingly, we do not sustain the rejection of
claim 1 and claims 2 and 3 which depend, directly or indirectly, from
claim 1.
NEW GROUND OF REJECTION WITHIN 37 C.F.R. § 41.50(b)
Claim 1 is rejected on a new ground of rejection under 35 U.S.C.
§ 103(a) as unpatentable over Appellants' Admitted Prior Art ("AAPA")
(see Spec. i-fi-13-7, Figs. 1, 2) and Beauclair.
AAP A teaches all the elements of claim 1 except AAP A does not
teach that gap spacers in the inductor core are "directly cast in place."
Rather, AAP A teaches that gap spacers are joined to the core elements by
bonding. See Spec. i15. In the same field of endeavor of electromagnetic
inductors, Beauclair teaches that bonding a gap spacer to a core element and
directly molding the gap spacer in place are interchangeable manufacturing
techniques. See Beauclair col. 4, 11. 21-22. Beauclair further teaches that
gaps with gap spacers can be formed within a core element (see Beauclair
Fig. 1) or between core elements (see id. Fig. 5). It would have been
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Application 13/187,241
obvious to a person of ordinary skill in the art to substitute Beauclair's
molding the gap material in place for AAP A's bonding of the gap material to
the core elements, because, as evidenced by Beauclair, such a replacement is
no more than "the simple substitution of one known element for another."
KSR, 550 U.S. at 417. That AAPA and Beauclair's preferred embodiments
may involve core elements and gap spacers made of materials having
different electrical or magnetic properties is of no significance, as claim 1 is
silent as to the materials and their properties. For emphasis, we note that, as
evidenced by Yoshimori et al. (US 6,512,438 Bl, issued Jan. 28, 2003)
(Y osahimori), 2 it was well known in the inductor art at the time of the
invention to select gap spacer materials to be magnetic, non-magnetic,
conductive, or insulating, or some combination of materials. See, e.g.,
Yoshimori col. 3, 11. 19-30, col. 4, 11. 13-15.
Dependent Claims
We have entered new grounds of rejection for independent claim 1.
We leave to the Examiner to consider the patentability of dependent claims 2
and 3 in light of our findings and conclusions supra regarding claim 1. The
fact that we did not enter new grounds of rejection for the dependent claims
should not be construed to mean that we consider the dependent claims to be
patentable over the prior art of record.
DECISION
The decision of the Examiner to reject claims 1-3 is reversed.
2 Yoshimori et al. is cited on a Notice of References Cited (PT0-892) mailed
June 6, 2013.
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Application 13/187,241
We enter a new ground of rejection for claim 1 under 35 U.S.C.
§ 103(a).
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
37 C.F.R. § 41.50(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§§ 41.50(f), 41.52(b).
REVERSED
37 C.F.R. § 41.50(b)
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