Ex Parte Calico

Board of Patent Appeals and Interferences

Aug 11, 2008

11222305 (B.P.A.I. Aug. 11, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN M. CALICO
____________

Appeal 2008-1643
Application 11/222,305
Technology Center 2800
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Decided: August 11, 2008
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Before JOSEPH F. RUGGIERO, MAHSHID D. SAADAT, and
SCOTT R. BOALICK, Administrative Patent Judges.

RUGGIERO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Final Rejection of
claims 48-53. Claims 1-47 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appeal 2008-1643
Application 11/222,305

Appellant’s invention relates to a d.c. brushless motor having a rotor
with an axial shaft, a powder core compacted about the shaft, and a powder
magnet compacted about the core. (Spec. 6-7).
Claim 48 is illustrative of the invention and reads as follows:
48. A d.c. brushless motor, comprising:
a stator; and
a rotor;
said rotor having a shaft, a core compacted about said shaft and a
magnet compacted about said core;
said motor having a torque constant from 6.8% to 33.47% greater that
the torque constant of an identically-dimensioned motor having a core
formed of solid 12L14 steel.

The Examiner’s Answer cites the following prior art references:
Nishimoto US 2002/0003006 A1 Jan. 10, 2002
Gay US 6,423,264 B1 Jul. 23, 2003
(filed Oct. 14, 1999)

Anthony C. Morcos and Peter Campbell, “Neo Magnets Boost Fuel
Economy,” Machine Design, 92-6 (September 2002) ("Morcos").1

Claims 48-53, all of the appealed claims, stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Gay in view of Nishimoto.
Rather than reiterate the arguments of Appellant and the Examiner,
reference is made to the Briefs and Answer for the respective details. Only
those arguments actually made by Appellant have been considered in this

1 The Morcos reference is not part of the Examiner’s stated ground of
rejection but, rather, is cited as evidence in support of the Examiner’s
position.
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Application 11/222,305

decision. Arguments which Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
[see 37 C.F.R. § 41.37(c)(1)(vii)].

ISSUE
Under 35 U.S.C. § 103(a), with respect to appealed claims 48-53,
would one of ordinary skill in the art at the time of the invention have found
it obvious to combine Gay and Nishimoto to render the claimed invention
unpatentable?

PRINCIPLES OF LAW
In 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 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
‘there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness’ . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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Appeal 2008-1643
Application 11/222,305

ANALYSIS

With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
appealed independent claims 48 and 53 based on the combination of Gay
and Nishimoto, Appellant’s arguments assert a failure to set forth a prima
facie case of obviousness since all of the claimed limitations are not taught
or suggested by the applied prior art references. Appellant’s arguments
(App. Br. 7-12; Reply Br. 1-2) focus on the contention that, in contrast to the
claimed invention, neither of the applied Gay and Nishimoto references, or
their combination, discloses a motor with a compacted core having a torque
constant of 6.8-33.47% greater than motor with a solid 12L14 steel core as
set forth in independent claim 48. Similarly, Appellant contends (App. Br.
14-15: Reply Br. 2) that the applied prior art does not teach or suggest a
motor rotor with an exchange spring neodymium core having a flux density
18-33.5% greater than an identical compression molded isotropic powder
magnet as recited in independent claim 53.
We do not find Appellant’s arguments to be persuasive in convincing
us of any error in the Examiner’s stated position (Ans. 4-5) which finds that
to optimize the torque constant and flux density variables to the claimed
values would have been obvious to the skilled artisan. As pointed out by the
Examiner, Appellant does not dispute that the general motor structure set
forth in independent claims 48 and 53 is taught by Gay and Nishimoto with
the exception of the particular range of values for the torque constant and
flux density variables. The Examiner has provided evidence on the record,
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Application 11/222,305

i.e., the Morcos document, which indicates that torque constant and flux
density are result-effective variables for motors that provide higher motor-
efficiencies. In other words, the optimization of result effective variables in
motor structure design would be expected to provide a motor structure with
increased performance.
Further, it is well settled that "where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456
(CCPA 1955). See also In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003) ("The normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.") Further, in In re Huang, 100 F. 3d 135, 139 (Fed. Cir. 1996),
the Court stated:
This court and its predecessors have long held, however, that even
though applicant’s modification results in great improvement and
utility over the prior art, it may still not be patentable if the
modification was within the capabilities of one skilled in the art,
unless the claimed ranges ’produce a new and unexpected result
which is different in kind and not merely in degree from the results
of the prior art’.

We also agree with the Examiner (Ans. 7) that Appellant has simply
provided no evidence of any unexpected results or any teaching away by the
prior art from the claimed ranges of torque constant and flux density values.
To the contrary, we find that the exemplary illustrations in Appellant’s
Figures 6A-6C, described at pages 15 and 16 of the Specification, do not
provide any indication of unexpected results of the claimed motor structure
in independent claim 48. For example, the motor structure set forth in claim
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Application 11/222,305

48 includes a rotor with a compacted core and a compacted magnet around
the rotor shaft. The illustrated examples in Appellant’s Figures 6A-6C,
however, do not compare a compacted core rotor with a steel core rotor but
instead, compare a steel core rotor, Figure 6A, formed by dynamic magnetic
compaction (DMC) with steel core rotors formed by compression molding
(Figures 6B-6C).
Appellant’s exemplary illustrations in Figures 7A-7B, described at
page 16 of the Specification, are equally deficient in showing any
unexpected results of the motor structure set forth in independent claim 53.
The motor structure recited in claim 53 includes a core of exchange spring
nano-powder neodymium compacted about a rotor shaft. The illustrated
examples in Appellant’s Figures 7A-7B, on the other hand, do not involve a
comparative analysis of a neodymium rotor core but, rather, compare a
neodymium permanent magnet, Figure 7A, formed by dynamic magnetic
compaction (DMC) with a neodymium permanent magnet formed by
compression molding.
In view of the above discussion, since the Examiner’s prima facie case
of obviousness has not been overcome by any convincing arguments from
Appellant, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection, based on
the combination of Gay and Nishimoto, of independent claims 48 and 53, as
well as dependent claims 49-52 not separately argued by Appellant.

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Application 11/222,305

CONCLUSION
In summary, we have sustained the Examiner’s 35 U.S.C. § 103(a)
rejections of all of the claims on appeal. Therefore, the decision of the
Examiner rejecting claims 48-53 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

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