Ex Parte Anma et al

Board of Patent Appeals and Interferences

May 17, 2005

09683997 (B.P.A.I. May. 17, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TATSUYA ANMA
and TADASHI TAKANO
____________
Appeal No. 2005-0189
Application No. 09/683,997
____________
HEARD: May 5, 2005
____________
Before HAIRSTON, LEVY, and MACDONALD, Administrative Patent Judges.
LEVY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-9, which are all of the
claims pending in this application.
BACKGROUND
Appellants' invention relates to a coil winding arrangement
for a rotary three-phase electrical machine. Each phase of coil
winding is comprised of a parallel circuit formed by the
connection of a plurality of series circuits in parallel
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Application No. 09/683,997
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(specification, pages 2 and 3). The coils of the series circuits
are wound in alternating direction (specification, page 6) to
prevent or reduce a circulating current from flowing in the
parallel circuit (specification, pages 2 and 8). An
understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced as follows:
1. A permanent magnet type three-phase AC rotary electric
machine including a permanent magnet element having a number of
permanent magnet poles and a coil winding element having a number
of slots, each of said three phases being connected in a line
current circuit and being comprised of a parallel circuit formed
by connecting a plurality of series circuits in parallel, said
coil winding element comprising cores of each of said series
circuits combined such that electromotive voltages or counter
electromotive voltages generated across opposite ends of said
plurality of series circuit forming each phase are substantially
the same based on symmetry of arrangement of said permanent
magnets and said coils, thereby preventing generation of a
circulating current in said parallel circuit.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Kilgore 2,575,716 Nov. 20, 1951
Nishio et al. (Nishio) 5,006,745 Apr. 9, 1991
Naoki et al. (Naoki) JP2001-197696 Jul. 19, 2001
Claims 1-4, and 7-9 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Naoki in view of Nishio.
Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Naoki in view of Nishio and Kilgore.
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Application No. 09/683,997
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Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellants regarding the above-noted rejections,
we make reference to the examiner's answer (mailed January 30,
2004) for the examiner's complete reasoning in support of the
rejections, and to appellants' brief (filed November 12, 2003)
for appellants' arguments thereagainst. Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered. See 37 CFR
§ 41.37(c)(1)(vii).
OPINION
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejections advanced
by the examiner, and the evidence of obviousness relied upon by
the examiner as support for the rejections. We have, likewise,
reviewed and taken into consideration, in reaching our decision,
appellants' arguments set forth in the brief along with the
examiner's rationale in support of the rejections and arguments
in rebuttal set forth in the examiner's answer.
Upon consideration of the record before us, we reverse, for
the reasons set forth by appellants. We begin with claim 1. In
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rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion
or implication in the prior art as a whole or knowledge generally
available to one having ordinary skill in the art. Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument and/or
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1 In determining the teachings of Naoki, we will rely on the translation
provided by the USPTO. A copy of the translation is attached for the
appellants' convenience.
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner's position (answer, pages 3 and 4) is that
Naoki1 shows, inter alia, a permanent magnet-type three-phase AC
rotary electric machine including a parallel circuit formed by
connecting a plurality of series circuits in parallel, but that
Naoki does not show the cores (3) of each series being encircled
by alternately wound coils. To overcome this deficiency of
Naoki, the examiner turns to Nishio for a teaching of cores (C1-
C18) of series circuits being encircled by alternately wound
coils (figure 7 and figures 10A-10C). The examiner asserts
(answer, page 4) that “[s]ince Naoki and Nishio et al. are all
from the same field of endeavor; the purpose disclosed by one
inventor would have been recognized in the pertinent art of the
others.” The examiner concludes (id.) that it would have been
obvious to an artisan to encircle the cores of each of the series
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circuits with alternately wound coils as taught by Nishio. In
addition, the examiner expands on the motivation for combining
the teachings of Naoki and Nishio stating (answer, page 7) that:
As the applicant admitted, Naoki et al.
purpose is to reduce the circulating current in a
parallel circuit. Although Naoki et al. do not
use the alternately wound coils to further
decrease the circulating current, Nishio et al.
teach to wind the winding alternately in order to
reduce the cogging torque, which is a well known
problem in the art of motor and generator. In
addition, Nishio et al. even disclose the problem
of cogging torque with windings wound around the
stator poles in the same direction in Figures 15-17
and columns 1-3. As a result, one having ordinary
skill in the art would recognize that there is a
problem with cogging torque in the machine of Naoki
et al. Therefore, using the alternate winding of
Nishio would not destroy the purpose of the basic
Naoki reference. Instead, it can improve the
performance of the motor by reducing cogging torque
as disclosed in column 3 of Nishio reference while
maintaining low circulating current as shown in
paragraph 0017 of Naoki et al.
Appellants admit (brief, page 3) that Naoki discloses a
plurality of series circuits in parallel, and that Naoki's
purpose is the same as appellants. However, appellants assert
(id.) that they have gone a step further in solving the problem
(of preventing the generation of a circulating current in the
parallel circuit due to a phase difference of an electromotive
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force or counter electromotive force) by providing alternately
wound coils. Appellants do not dispute the examiner's assertion
that alternately wound coils are well known in the art. However,
appellants maintain (brief, page 3) that “the art does not teach
that Naoki et al’s construction could be improved by using the
alternately wound coils.” It is argued (brief, page 4) that
“[t]he Nishio et al reference does not teach or suggest that it
could be used to reduce the circulating current in circuits
having parallel circuits comprised of series wound coils. Thus
the teaching for making this modification is not taught by the
prior art” and (id.) that “[t]he combination is only obvious
after one sees appellants’ invention and hindsight reasoning is
not permitted to support a rejection under 35 USC 103.”
We agree. From the disclosure of Nishio, we find, as
appellants and the examiner found, that Nishio teaches the
desirability of alternately winding cores, but does teach doing
so in the context of a parallel circuit formed of series circuits
connected in parallel. A teaching of using alternately wound
cores to minimize cogging in a circuit that does not have
parallel circuits of serially wound coils, is not a suggestion of
using alternately wound coils in the series circuits that
comprise a parallel circuit.
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In our view, the only suggestion for modifying Naoki in the
manner proposed by the examiner to meet the above-noted
limitation stems from hindsight knowledge derived from the
appellants' own disclosure. The use of such hindsight knowledge
to support an obviousness rejection under 35 U.S.C. § 103 is, of
course, impermissible. See, for example, W. L. Gore and Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983). It follows that we cannot sustain the
examiner's rejection of claim 1. Accordingly, the rejection of
claim 1 and claims 2-4 and 7-9, which depend therefrom, is
reversed.
Turning to claims 5 and 6, we cannot sustain the rejection
of these claims because Kilgore does not make up for the
deficiency of the basic combination of Naoki and Nishio.
Accordingly, the rejection of claims 5 and 6 under 35 U.S.C.
§ 103(a) is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims
1-9 under 35 U.S.C. § 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
ALLEN M. MACDONALD )
Administrative Patent Judge )
SSL/kis
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Application No. 09/683,997
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ERNEST A. BEUTLER, ATTORNEY AT LAW
10 RUE MARSEILLE
NEWPORT BEACH, CA 92660