Ex Parte Hirzel

Board of Patent Appeals and Interferences

Jun 29, 2010

10864040 (B.P.A.I. Jun. 29, 2010)

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
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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;

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(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.

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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.
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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.

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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
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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
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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.
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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
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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,
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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).
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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
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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
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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
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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.
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(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

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