Ex Parte HirzelDownload PDFBoard of Patent Appeals and InterferencesJun 29, 201010864040 (B.P.A.I. Jun. 29, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte ANDREW D. HIRZEL ____________________ Appeal 2009-007725 Application 10/864,040 Technology Center 2800 ____________________ Decided: June 29, 2010 ____________________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and THU A. DANG, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-007725 Application 10/864,040 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection of claims 1-9, 11-13, and 15-24. Claims 10 and 14 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2008). We AFFIRM. A. INVENTION According to Appellant, the invention generally relates to a dynamoelectric rotating machine (Spec. 1, l. 16-17). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary and is reproduced below: 1. A dynamoelectric machine, comprising: (a) at least one stator assembly, a plurality of stator windings, and at least one rotor assembly supported for rotation about a rotational axis, said rotor and stator assemblies being concentric with said rotational axis; (b) said at least one rotor assembly comprising at least two rotor layers having equal numbers of discrete rotor magnets, each of said magnets having a polarity defining north and south poles at opposite ends thereof, said layers being substantially planar, perpendicular to said rotational axis, and axially spaced apart, said magnets in each layer being disposed equiangularly about the circumference of said rotor assembly, such that: (i) one of said ends of each of said magnets is situated on a cylindrical periphery of said rotor assembly; Appeal 2009-007725 Application 10/864,040 3 (ii) said ends on said periphery have circumferentially alternating north and south poles; and (iii) each of said magnets is magnetically linked to an adjacent one of said magnets by a magnetically permeable linking member situated proximate the other of said ends of said adjacent magnet; (c) said at least one stator assembly comprising a plurality of stator cores, each of said stator cores terminating in a first and a second stator poleface and being comprised of laminated layers composed of a material selected from the group consisting of amorphous, nanocrystalline, and flux enhancing Fe-based metal, said stator cores being disposed equiangularly about the circumference of said stator assembly, such that: (i) said first and second stator polefaces of each of said stator cores are situated on a cylindrical periphery of said stator assembly in axial alignment; (ii) said first stator polefaces are in a first stator layer radially adjacent one of said rotor layers; and (iii) said second stator polefaces are in a second stator layer adjacent another of said rotor layers; and (d) said stator windings encircling said stator cores and said dynamoelectric machine having a slot per phase per pole ratio that ranges from about 0.25 to 4.0. Appeal 2009-007725 Application 10/864,040 4 C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tsuya 4,265,682 May 5, 1981 Sibata 5,220,228 Jun. 15, 1993 Lutz 5,691,588 Nov. 25, 1997 Fan 6,188,159 B1 Feb. 13, 2001 DeCristofaro 6,462,456 B1 Oct. 8, 2002 Caamano 6,603,237 B1 Aug. 5, 2003 Maslov 6,617,746 B1 Sep. 9, 2003 Hendershot, Design of Brushless Permanent-Magnet Motors pp. 3-1, 3-6 to 3-11, 3-13 (Magna Physics Publishing and Clarendon Press 1994). Claims 1, 4, 6-9, 11, 12, 15-17, 20-22, and 24 stand rejected under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot and DeCristofaro. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot, DeCristofaro and Lutz. Claim 5 stands rejected under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot, DeCristofaro and Sibata. Claim 13 stands rejected under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot, DeCristofaro and Tsuya. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot, DeCristofaro and Caamano. Appeal 2009-007725 Application 10/864,040 5 Claim 23 stands rejected under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov and Hendershot. II. ISSUES Did the Examiner err in finding that: 1. The combination of Fan, Maslov, Hendershot and DeCristofaro would have taught or suggested stator cores “being comprised of laminated layers composed of a material selected from the group consisting of amorphous, nanocrystalline, and flux enhancing Fe-based metal” and stator windings “having a slot per phase per pole ratio that ranges from about 0.25 to 4.0” (claim 1), as Appellant contends? In particular, the issue turns on whether combining DeCristofaro’s use of amorphous metal for stator constructions with Hendershot’s slot/pole/phase ratios would have suggested these features of claim 1. 2. One of ordinary skill in the art would have combined the teachings of the cited references? In particular, the issue turns on whether it would have been obvious to use Hendershot’s slot/pole/phase ratios with DeCristofaro’s use of amorphous metal for stator constructions. Appeal 2009-007725 Application 10/864,040 6 III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. DeCristofaro 1. DeCristofaro discloses an electric motor having a generally polyhedrally shaped bulk amorphous metal magnetic component in which a plurality of layers of amorphous metal strips are laminated together to form a generally three-dimensional part having the shape of a polyhedron (Abstract). Hendershot 2. Hendershot discloses slot/pole ratios for 3-phase brushless motors for minimum cogging torque of 0.75 to 6.0 (p. 3-13, Table 3.8). IV. ANALYSIS Claims 1, 4, 6-9, 11, 12, 15-17, 20-22, and 24 Appellant contends that “Hendershot et al. merely discloses a very wide range of theoretically possible machine configurations that encompass a spectrum of values of SPP, but falls far short of any enabling disclosure or suggestion of the particular SPP ranges required by applicant’s claims” (App. Br. 22). Though Appellant admits that DeCristofaro “discloses use of amorphous metal for stator construction” (App. Br. 32), Appellant contends that “[t]he skilled artisan, knowing the Hendershot et al. teaching, would recognize that losses of conventional materials preclude large pole counts for conventional motors” and that Hendershot “clearly and conspicuously Appeal 2009-007725 Application 10/864,040 7 lacks any indication of a relationship between: (a) the slot/phase/pole configuration that expressly underlies the five enumerated factors; and (b) the selection of lamination material.” (App. Br. 30). In particular, Appellant submits that Hendershot’s “(‘Use [of] larger number of slots/pole’) expressly contradicts the Examiner’s proposed motivation for invoking Hendershot et al., and teaches away from applicant’s reduced value of slot/phase/pole ratio.” (App. Br. 33). However, the Examiner concludes that “[t]he claimed slot/phase/pole ratio became known and enabled as of 1994 when the ‘Design of Brushless Permanent Magnet Motors’ by Hendersthot was published” and that “ratio is a result effective variable which is both known as shown in the disclosed tables in Hendershot and obvious to optimize” (Ans. 9). In particular, the Examiner finds that “Hendershot does not warn against the use of ratio 0.24- 4.0, or 0.25-1, or 0.5, on the contrary Hendershot teaches these are the combinations can provide effective motors … and a motor with reduced cogging torque.” (Ans. 11). Further, the Examiner finds that “[b]oth Hendershot and DeCristofaro provide clear and literal motivation to select the material of the cores as amorphous or nano-crystalline to provide a highly efficient motor” and that “the selection of the material based on the intended use is within the ordinary skill in the art.” (Ans. 9). Thus, we address on appeal whether combining DeCristofaro’s use of amorphous metal for stator constructions with Hendershot’s slot/pole/phase ratios would have suggested stator cores “being comprised of laminated layers composed of a material selected from the group consisting of Appeal 2009-007725 Application 10/864,040 8 amorphous, nanocrystalline, and flux enhancing Fe-based metal” and stator windings “having a slot per phase per pole ratio that ranges from about 0.25 to 4.0” as required in claim 1. We also address whether it would have been obvious to use Hendershot’s slot/pole/phase ratios with DeCristofaro’s use of amorphous metal for stator constructions. We give the claims their broadest reasonable interpretation. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Furthermore, our analysis will not read limitations into the claims from the specification. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Contrary to Appellant’s argument that Appellant’s claims require “particular SPP ranges” (App. Br. 22), claim 1 merely requires “ranges from about 0.25 to 4.0” (emphasis added). Thus, we broadly but reasonably construe claim 1 to merely require a range that is reasonably close to “0.25 to 4.0.” DeCristofaro discloses an electric motor comprised of laminated layers composed of amorphous material (FF 1). In fact, even Appellant admits that DeCristofaro “discloses use of amorphous metal for stator construction” (App. Br. 32). Furthermore, Hendershot discloses slot/pole ratios of 0.75 to 6.0 for 3- phase brushless motors for minimum cogging torque (FF 2). We find that one of ordinary skill in the art would have understood that slot/pole ratios for 3-phase brushless motors would be comprised of slot/pole/phase ratio of (0.75 to 6.0) divided by 3, or 0.25 to 2.0. Thus, the skilled artisan would also have understood Hendershot to disclose a slot per phase per pole ratio that within a range that is reasonable close (i.e. “about”) 0.25 to 4.0. Appeal 2009-007725 Application 10/864,040 9 From our review of the rejection and the prior art teachings presented by the Examiner, we find that the Examiner has set forth a proper reasoned showing of the obviousness of independent claim 1. We additionally find that the Examiner has set forth a statement of motivation for the combination of the teachings which Appellant has not shown error therein. In particular, we agree with the Examiner’s conclusion that it would have been obvious “to select the material of the cores as amorphous or nano-crystalline to provide a highly efficient motor” wherein “the selection of the material based on the intended use is within the ordinary skill in the art” (Ans. 9), and that “Hendershot teaches … the combinations can provide effective motors … and a motor with reduced cogging torque.” (Ans. 11). As to Appellant’s contention that Hendershot “falls far short of any enabling disclosure or suggestion of the particular SPP ranges required by applicant’s claims” (App. Br. 22), the Examiner concludes that “[t]he claimed slot/phase/pole ratio became known and enabled as of 1994 when the ‘Design of Brushless Permanent Magnet Motors’ by Hendershot was published.” (Ans. 9). Appellant provides no argument to dispute the Examiner’s conclusion that the skilled artisan would find Henderson enabling. Therefore, Appellants' argument of Examiner error is not persuasive. Though Appellant contends that Hendershot “teaches away from applicant’s reduced value of slot/phase/pole ratio” (App. Br. 33), we agree with the Examiner that “Hendershot does not warn against the use of ratio Appeal 2009-007725 Application 10/864,040 10 0.24-4.0, or 0.25-1, or 0.5, on the contrary Hendershot teaches these are the combinations can provide effective motors… and a motor with reduced cogging torque.” (Ans. 11). Our reviewing court in In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) stated: “A reference may be said to teach away when a person of ordinary skill, upon [examining] the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” Here, we find that Appellant has not established in the record that the skilled artisan would be led in a divergent direction or from following the path disclosed by Hendershot. Therefore, Appellants' argument is not persuasive. Though Appellant contends that “Hendershot et al. merely discloses a very wide range of theoretically possible machine configurations that encompass a spectrum of values of SPP” and that “Hendershot et al. encompass a range of SPP ratios that is far wider than applicant’s claimed ratios” (App. Br. 22), as discussed above, claim 1 merely requires that the range be “about 0.25 to 4.0” (emphasis added). Further, obviousness does not require absolute predictability, only a reasonable expectation of success, i.e., a reasonable expectation of obtaining similar properties. See, e.g., In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). While Appellant also maintains that “the Hendershot et al. authors do not contemplate, and are unaware of, any particular benefits that attend the use of such previously unrecognized or unknown configurations, let alone the unexpected benefits of such configurations in combination with the machine design of claim 1, Appeal 2009-007725 Application 10/864,040 11 especially when the machine is constructed with advanced low-loss soft magnetic materials” (App. Br. 25) and that there are “surprising and unexpected benefits afforded by the claimed subset of these configurations” (App. Br. 27), we find no support and no evidence in the record for Appellant’s argument to the “surprising and unexpected benefits.” We agree with the Examiner that “Appellant has not provided any statistical evidence or affidavits to support his contention” (Ans. 12). Since Appellant bears the burden of persuasion at this point in the prosecution, and has not presented any evidence of criticality of the range, we are not persuaded by the Appellant’s mere unsupported arguments. Appellant can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . [I]n such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). As stated above, Appellant has not met the burden by providing any evidence of criticality. We agree with the Examiner’s conclusion that “Hendershot does not warn against the use of ratio 0.24-4.0, or 0.25-1, or 0.5, on the contrary Hendershot teaches these are the combinations [sic, which] can provide effective motors… and a motor with reduced cogging torque” (Ans. 11). Appeal 2009-007725 Application 10/864,040 12 Though Appellant contends that “In Deuel, … the court emphasizes that ‘obvious to try’ [as admitted by Hendersthot] is not the standard under 35 USC 103” (App. Br. 37), as clarified in KSR, it’s now apparent “obvious to try” may be an appropriate test in more situations than we previously contemplated. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). When there is motivation to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. Id. If this leads to anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. Id. This reasoning is applicable here. Appellant also contends that “the need for such a large number (in the Examiner’s rejections) is further evidence of the impermissible operation of hindsight reconstruction involving the mere aggregation of elements set forth in applicant’s own teaching” (App. Br. 35). However, as clarified in KSR, the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” See Id. at 420-21. Since DeCristofaro discloses use of amorphous metal for stator construction (FF 1), we conclude that the combination of one known element (Hendershot’s slot per phase per pole ratio that ranges from about 0.25 to 4.0) with another (DeCristofaro’s use of amorphous metal for stator construction) would have yielded predictable results to one of ordinary skill Appeal 2009-007725 Application 10/864,040 13 in the art at the time of the invention. That is, we find that using amorphous metal as taught by DeCristofaro in Hendershot’s stator construction is no more than a simple arrangement of old elements, with each performing the same function it had been known to perform, yielding no more than one would expect from such an arrangement. See Id. at 417. Appellants have presented no evidence that combining DeCristofaro’s use of amorphous metal to the slot per phase per pole ratio of Henderson was “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 416). Accordingly, we find that the Examiner did not err in rejecting independent claim 1 and independent claim 24 falling therewith under 35 U.S.C. § 103(a). As to claim 22, though Appellant admits that “on/off switches of various types are ordinarily used with motors,” Appellant argues that the Examiner erred in finding that “Fan inherently includes control circuitry and power electronics to operate the motor” (App. Br. 39). In particular, Appellant argues that “a person having ordinary skill in the electric machine art would clearly not regard an on/off disconnect switch as constituting power electronics” (App. Br. 39). However, we agree with the Examiner that “every motor includes power electronics to control the power to the windings, even if they are connected directly to a power grid, as argued by the Appellant” (Ans. 17). That is, we agree that an artisan skilled in the art would have understood that Appeal 2009-007725 Application 10/864,040 14 Fan at the least suggests having power electronics to operate the motor. Accordingly, we find that the Examiner did not err in rejecting independent claim 22 under 35 U.S.C. § 103(a). Appellant does not provide separate arguments with respect to the rejection of claims 4, 6-9, 11, 12, 15-17, 20, and 21 depending from claim 1. Therefore, we find that the Examiner also did not err in rejecting dependent claims 4, 6-9, 11, 12, 15-17, 20, and 21 under 35 U.S.C. § 103(a). Claims 2 and 3 As to claims 2 and 3, Appellant argues that because “[t]he need to design for lower flux density” is recognized in Hendershot, “a person having ordinary skill in the art would be motivated not to use the particular magnets required” (App. Br. 44). However, we agree with the Examiner that “Appellant’s arguments and opinions about designing a low flux density motor is [sic] not persuasive because the limitation is not claimed” (Ans. 20). Thus, we agree with the Examiner that an artisan skilled in the art would have “avail[ed] himself of the best known magnetic material” (Ans. 19). Accordingly, we find that the Examiner did not err in rejecting claims 2 and 3 under 35 U.S.C. § 103(a). Claims 5, 13, 18, 19, and 23 Similarly, as to claims 5, 13, 18, 19, and 23, Appellant again repeats the arguments that it would not have been obvious to combine the references (App. Br. 46-54). In particular, Appellant respectively argues that “Sibata clearly fails to recognize [features and benefits] as set forth by the instant specification” (App. Br. 47), “applicant has discovered the benefits of using Appeal 2009-007725 Application 10/864,040 15 improved stator materials in machine designs” (App. Br. 50), the Examiner’s proposed motivation to combine the references is “merely conclusory” (App. Br. 51), and that “a person having ordinary skill would be led away from such a configuration by the disclosure of Hendershot” (App. Br. 53). However, such features and benefits are not specifically recited in the claims. We agree with the Examiner that Appellant’s arguments are “unsupported by any evidence” (Ans. 20), that “Tsuya teaches literal motivation to use non-oriented Fe 6.5% Si” (Ans. 21), and that “the motivation is literally provided by the references itself” (Ans. 22). Further, as discussed above regarding claim 1, Appellant has not established in the record that the skilled artisan would be led in a divergent direction or from following the path disclosed by Hendershot. Therefore, Appellants' argument is not persuasive. Accordingly, we find that the Examiner did not err in rejecting claims 5, 13, 18, 19, and 23 under 35 U.S.C. § 103(a). V. CONCLUSIONS OF LAW (1) The Examiner did not err in concluding that claims 1, 4, 6-9, 11, 12, 15-17, 20-22, and 24 are unpatentable under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot and DeCristofaro. (2) The Examiner did not err in concluding that claims 2 and 3 are unpatentable under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot, DeCristofaro and Lutz. Appeal 2009-007725 Application 10/864,040 16 (3) The Examiner did not err in concluding that claim 5 is unpatentable under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot, DeCristofaro and Sibata. (4) The Examiner did not err in concluding that claim 13 is unpatentable under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot, DeCristofaro and Tsuya. (5) The Examiner did not err in concluding that claims 18 and 19 are unpatentable under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov, Hendershot, DeCristofaro and Caamano. (6) The Examiner did not err in concluding that claim 23 is unpatentable under 35 U.S.C. § 103(a) over the teachings of Fan in view of Maslov and Hendershot. (7) Claims 1-9, 11-13, and 15-24 are not patentable. VI. DECISION We affirm the Examiner’s rejection of claims 1-9, 11-13, and 15-24 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Appeal 2009-007725 Application 10/864,040 17 peb ERNEST D. BUFF ERNEST D. BUFF AND ASSOCIATES, LLC. 231 SOMERVILLE ROAD BEDMINSTER, NJ 07921 Copy with citationCopy as parenthetical citation