Ex Parte ARZ et al

Board of Patent Appeals and Interferences

Oct 17, 2003

09388582 (B.P.A.I. Oct. 17, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WINFRIED ARZ and STEFAN STOCKER
_____________
Appeal No. 2003-1250
Application No. 09/388,582
______________
HEARD: OCTOBER 9, 2003
_______________
Before HAIRSTON, DIXON, and SAADAT, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 2,
11 and 13. Claim 4 is objected to as being dependent upon a
rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base
claim and any intervening claims.
The disclosed invention relates to a magnetic coil directly
cooled by a cooling tube that extends through an opening formed
by at least two profiled electrical conductor segments of a coil
winding.
Appeal No. 2003-1250
Application No. 09/388,582
2
Claim 1 is the only independent claim on appeal, and it
reads as follows:
1. A directly cooled magnetic coil comprising:
a conductor forming a coil winding comprising at least two
profiled electrical conductor segments which when
fitted together, form an opening, and
a cooling tube disposed permanently in said opening and
surrounded by said profiled segment conductors, said
coiling tube being comprised of a substantially
electrically non-conductive, flexible material.
The references relied on by the examiner are:
Haldeman, III (Haldeman) 3,946,349 Mar. 23, 1976
Couffet et al. (Couffet) 5,430,274 Jul. 4, 1995
Claims 1, 2, 11 and 13 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Haldeman.
Claims 1, 2 and 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Couffet in view of Haldeman.
Reference is made to the supplemental brief (paper number
19) and the answer (paper number 20) for the respective positions
of the appellants and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will sustain the anticipation rejection of claims 1, 2 and
11, and reverse the anticipation rejection of claim 13 and the
obviousness rejection of claims 1, 2 and 11.
Appeal No. 2003-1250
Application No. 09/388,582
3
Anticipation is only established when a single prior art
reference discloses every limitation of the claimed invention,
either explicitly or inherently. Glaxo Inc. v. Novopharm Ltd.,
52 F.3d 1043, 1047, 34 USPQ2d 1565, 1567 (Fed. Cir.), cert.
denied, 516 U.S. 3378 (1995). The examiner is of the opinion
that Haldeman discloses all of the limitations of claim 1. We
agree with the examiner’s findings (answer, page 3) that Haldeman
discloses (Figure 1) profiled conductor segments 5 fitted
together to form an opening for a permanent plastic cooling tube
3.
Appellants argue (brief, pages 4 and 5) that the profiled
conductor segments in Haldeman are akin to their nonelected
species of Figure 9, and that “the Examiner either should not
have relied on the Haldeman reference as a basis for allegedly
anticipating the subject matter of claim 1, or should have
withdrawn the election of species requirement (at least with
regard to Fig. 9).” In response, the examiner indicates (answer,
page 5) that:
[A]n election of species is based upon consideration of
the independence of inventions disclosed in an
application. Election of species practice is unrelated
to rejection of claims over prior art where claims must
be given their broadest reasonable interpretation.
Appeal No. 2003-1250
Application No. 09/388,582
4
We agree with the examiner. When claim 1 is given its broadest
reasonable interpretation, we find that it reads directly on
Figure 1 of Haldeman.
Appellants argue (brief, page 6) that “[t]he interior core
3, however, is only temporarily present during assembly, and is
subsequently removed, and in fact according to the teachings of
the Haldeman reference, it is undesirable to keep the tube 3 in
place.” In response, the examiner states (answer, page 5) that
“Haldeman’s Fig. 1 is disclosed as an example of Haldeman’s prior
art (col. 1, lines 35-42) and as such constitutes a finished
product.” According to Haldeman (column 2, lines 44 and 45),
“FIG. 1 illustrates the typical construction of Litz cable 1 with
a nylon tube 3.” The referenced portion of Haldeman (column 1,
lines 35 through 42) states that water is pumped through the
nylon tube 3. If water is pumped through the tube, then it is a
finished product, and the tube is “permanently” disposed as set
forth in claim 1.
Appellants arguments (brief, page 7) concerning high
voltages, de-ionized water and non-processed water are not
commensurate in scope with the invention set forth in claim 1.
In summary, the anticipation rejection of claim 1 is
sustained based upon the conventional cooling tube and Litz cable
Appeal No. 2003-1250
Application No. 09/388,582
5
teachings of Haldeman. The anticipation rejection of claims 2
and 11 is likewise sustained because appellants have chosen
(brief, page 4) to let these claims stand or fall with claim 1.
The anticipation rejection of claim 13 is reversed because
the examiner’s conclusion (answer, page 5) that “[t]he term
gradient does not confer any definite structural attribute to the
coil” is in error, and because the appellants have correctly
concluded (brief, page 8) that Haldeman is not directed to such a
coil.
The obviousness rejection of claims 1, 2 and 11 is reversed
because the examiner has not presented any evidence to buttress
his opinion (answer, page 4) that the cooling tubes disclosed by
the two applied references “were art-recognized equivalents at
the time the invention was made . . . . ” In re Lee, 277 F.3d
1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
DECISION
The decision of the examiner rejecting claims 1, 2, 11 and
13 under 35 U.S.C. § 102(b) is affirmed as to claims 1, 2 and 11,
and is reversed as to claim 13. The decision of the examiner
rejecting claims 1, 2 and 11 under 35 U.S.C. § 103(a) is
reversed. Accordingly, the decision of the examiner is affirmed-
in-part.
Appeal No. 2003-1250
Application No. 09/388,582
6
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MAHSHID SAADAT )
Administrative Patent Judge )
KWH/hh
Appeal No. 2003-1250
Application No. 09/388,582
7
SCHIFF, HARDIN, AND WAITE
PATENT DEPT.
7100 SEARS TOWER
CHICAGO, IL 60606