Ex Parte Knauff et alDownload PDFBoard of Patent Appeals and InterferencesAug 28, 200810952532 (B.P.A.I. Aug. 28, 2008) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte AXEL KNAUFF, HOLGER SCHUNK and REINER SEUFERT ____________ Appeal 2008-1868 Application 10/952,5321 Technology Center 2800 ____________ Decided: August 28, 2008 ____________ Before JOSEPH F. RUGGIERO, SCOTT R. BOALICK, and JOHN A. JEFFERY, Administrative Patent Judges. BOALICK, Administrative Patent Judge. 1 Application filed September 28, 2004. Application 10/952,532 claims the benefit under 35 U.S.C. § 119 of German application 103 45 631.7, filed September 29, 2003. The real party in interest is Siemens Aktiengesellschaft. Appeal 2008-1868 Application 10/952,532 DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims 1-11, all the claims pending in the application. An oral hearing on this appeal was conducted on August 12, 2008. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. STATEMENT OF THE CASE Appellants' invention relates to an electric machine having a stator with a winding support assembly and a measuring system. (Spec. paragraph [0002].) Claim 1 is exemplary: 1. An electric machine comprising: a stator having opposing end faces and a plurality of grooves; at least one winding system received in the grooves of the stator and having winding strands; at least one winding support assembly disposed on at least one end face of the stator and constructed to include channels for guiding the winding strands of the winding system, said channels being sized to allow ends of the winding strands to be connected to one another; and at least one measuring system integrated in the winding support assembly. 2 Appeal 2008-1868 Application 10/952,532 The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kintz US 5,343,613 Sep. 6, 1994 Cho US 6,346,810 B2 Feb. 12, 2002 Claims 1-3 and 9-11 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Kintz. Claims 4-8 stand rejected under 35 U.S.C. § 103(a) as being obvious over Kintz and Cho. Rather than repeat the arguments of Appellants or the Examiner, we make reference to the Brief and the Answer for their respective details. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).2 ISSUES The first issue is whether Appellants have shown that the Examiner erred in rejecting claims 1-3 and 9-11 under 35 U.S.C. § 102(b). The second issue is whether Appellants have shown that the Examiner erred in rejecting claims 4-8 under 35 U.S.C. § 103(a). 2 Except as will be noted in this opinion, Appellants have not presented any substantive arguments directed separately to the patentability of the dependent claims or related claims in each group. In the absence of a separate argument with respect to those claims, they stand or fall with the representative independent claim. See 37 C.F.R. § 41.37(c)(1)(vii). 3 Appeal 2008-1868 Application 10/952,532 PRINCIPLES OF LAW On appeal, all timely filed evidence and properly presented arguments are considered by the Board. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). In the examination of a patent application, the Examiner bears the initial burden of showing a prima facie case of unpatentability. Id. at 1472. When that burden is met, the burden then shifts to the Applicant to rebut. Id.; see also In re Harris, 409 F.3d 1339, 1343-44 (Fed. Cir. 2005) (finding rebuttal evidence unpersuasive). If the Applicant produces rebuttal evidence of adequate weight, the prima facie case of unpatentability is dissipated. In re Piasecki, 745 F.2d at 1472. Thereafter, patentability is determined in view of the entire record. Id. However, on appeal to the Board it is the Appellant's burden to establish that the Examiner did not sustain the necessary burden and to show that the Examiner erred. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). Anticipation is established when a single prior art reference discloses expressly or under the principles of inherency each and every limitation of the claimed invention. Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994). "Section 103 forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). "[R]ejections on obviousness grounds cannot be sustained by 4 Appeal 2008-1868 Application 10/952,532 mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d at 988. During examination of a patent application, a claim is given its broadest reasonable construction consistent with the specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); see also In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007). "[T]he words of a claim 'are generally given their ordinary and customary meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (internal citations omitted). The "ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Id. at 1313. ANALYSIS Appellants contend that the Examiner erred in rejecting claims 1-3 and 9-11 as being anticipated by Kintz and in rejecting claims 4-8 as being obvious over Kintz and Cho. Reviewing the record before us, we find that Appellants have not shown that the Examiner failed to make a prima facie showing of anticipation with respect to claims 1-3 and 9-11 and a prima facie showing of obviousness with respect to claims 4 and 6-8. Appellants failed to meet the burden of overcoming these prima facie showings. However, we agree with Appellants that the Examiner erred in rejecting claim 5 as being obvious over Kintz and Cho. Regarding claim 1, the Examiner found that the disclosure in Kintz of phase separators 24, windings 20, and varnish impregnating the windings 20 5 Appeal 2008-1868 Application 10/952,532 teaches a winding support assembly disposed on a stator that is constructed to include channels for guiding the wiring strands. (Ans. 5; Kintz, col. 5, l. 65 to col. 6, l. 67; Fig. 2.) The Examiner also found that the disclosure in Kintz of a sensor 26 located in the gap 22 between two windings teaches a measuring system that is integrated in the winding support assembly. (Ans. 5; Kintz col. 6, ll. 13-14, 37-68; Fig. 2.) The Examiner reasoned that when the windings are impregnated with varnish, the varnish will harden and dry to form a winding support system in which the sensor 26 is integrated. (Ans. 9.) We agree with the Examiner's findings. In addition, we note that, even without varnish impregnation, sensor 26 is integrated into the wiring support assembly by virtue of having been inserted into the gap 22 between two windings 20 so that the windings "tightly embrace" the sensor 26 (Kintz, col. 6, ll. 37-66). Appellants argue that the Examiner "completely ignores the essence of the present invention, which resides in the provision of a separate support that can be pre-manufactured to include the channels and the measuring system, for attachment onto a stator" (Br. 4) and that Kintz "lacks the provision of a separate winding support assembly that forms a unitary structure having integrated therein channels for receiving the strands, i.e. end turns, and the sensor (see also paragraph [0040] of the instant specification)" (Id.). Appellants also argue that, in Kintz, "[t]he provision of phase separators to separate three end turns of a grouping from adjacent groupings is different from a single winding support assembly because each phase separator represents a distinct member that assumes the function of a barrier" (Br. 4) and "[t]here is no integration of a sensor nor are there any channels formed by a phase separator" (Br. 4). We do not agree. 6 Appeal 2008-1868 Application 10/952,532 The Examiner correctly noted (Ans. 7-8) that Appellants' arguments are not commensurate with the scope of the claim. Claim 1 does not recite a separate winding support assembly that forms a unitary structure having integrated channels, and we decline Appellants' invitation to read these limitations into the claim. Claim 1 merely recites "at least one winding support assembly disposed on at least one end face of the stator and constructed to include channels for guiding the wiring strands." In other words, the plain language of the claim does not require the winding support assembly to be separate, or to form a unitary structure with integrated channels. All that is required is that the winding support assembly be disposed on an end face of the stator and be constructed so as to include channels. And it is the measuring system, not the channels, which is recited as being integrated in the winding support assembly. We agree with the Examiner (Ans. 8) that, under the broadest reasonable interpretation, the term "at least one winding support" does not preclude the possibility of multiple windings lying in the same support and that "a 'winding' could include multiple turns of the same wire or wires" (Ans. 8). In addition, we agree with the Examiner that, even if the winding support assembly was required to be unitary -- despite the absence of such a limitation from the claim -- then the assembly in the hardened varnish taught by Kintz would disclose a "unitary" winding support assembly. (Ans. 9.) We also agree with the Examiner that, under the broadest reasonable interpretation, the sensor 26 of Kintz is integrated into the wiring support assembly formed by the phase separators 24, windings 20, and varnish. (Ans. 8; Kintz col. 6, ll. 10-14, 58-67; Fig. 2.) Even assuming for the sake of argument that the varnish does not cover the sensor 26, as noted above the 7 Appeal 2008-1868 Application 10/952,532 sensor 26 is nevertheless integrated into the wiring support assembly by virtue of having been inserted into the gap 22 between two windings 20 so that the windings "tightly embrace" the sensor 26 (Kintz, col. 6, ll. 37-66). We do not find anything in the Specification to require a different interpretation. Indeed, the terms "unitary" and "single winding" do not appear in the Specification. Paragraph [0040], relied upon by Appellants (Br. 4), merely states: [0040] Advantageously, the sensors 8, 9 are embedded and/or sealed in the winding support assembly 3, which can be done already during the manufacturing process, i.e., at the start of the assembly. This also defines the position of the sensors 8, 9 and their attachment to the motor early in the manufacturing process, so that the corresponding time constant for the temperature measurement and its variation as a result of the manufacturing tolerances can be significantly reduced, thereby improving motor protection. We find nothing in paragraph [0040] to require claim 1 to be limited in the manner asserted by Appellants. The paragraph merely states that the sensors are embedded and/or sealed in the winding support assembly, but does not teach or require any particular method or technique for doing so. With respect to integration of the measuring system, the Specification also teaches that: The measuring system, in particular the sensor 8, 9, is integrated in the winding support assembly 3. In this way, the measuring system is securely affixed to the winding support assembly 3 attached to the motor, i.e., fixedly integrated in the motor structure. The measuring system is thereby also protected by the winding support assembly 3, so that the sensors can reliably operate even in the presence of strong vibrations or shocks. 8 Appeal 2008-1868 Application 10/952,532 (Spec. paragraph [0039] (emphasis added).) In addition, the Specification teaches that "[i]n an alternative embodiment, sensors, such as temperature sensors, could also be attached to or encapsulated in the winding support by using a spring-like structure in order to ensure a reliable contact with the surface to be measured." (Spec. paragraph [0024] (emphasis added).) Because the sensor 26 of Kintz is securely affixed to the windings 20 and makes reliable contact with the surface to be measured, it fully meets the "at lease one measuring system integrated in the winding support assembly" limitation under the broadest reasonable interpretation of the claim consistent with the Specification. In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007), cited by Appellants at oral argument, is inapposite.3 The panel majority in Buszard, over a strong dissent by Judge Prost, found that claims to a composition that produces a flexible polyurethane foam and a flexible foamed article made from that composition were not anticipated by a reference that disclosed a rigid foam reaction mixture that produced a rigid foam product which was rendered flexible when mechanically crushed. Buszard, 504 F.3d at 1367. The majority found that the Board's interpretation "to equate 'flexible' with 'rigid,' or to equate a crushed rigid polyurethane foam with a flexible polyurethane foam," id., was not reasonable where "Buszard's specification and claims specifically state the requirement of a flexible polyurethane foam reaction mixture," id. 3 Although Appellants did not cite this case in their Brief, we consider it here because In re Buszard was decided after the time to file a reply brief had expired. See 37 C.F.R. §§ 41.37(c)(1)(vii), 41.41. 9 Appeal 2008-1868 Application 10/952,532 Unlike Buszard, here the Examiner's claim interpretation is reasonable and not inconsistent with the Specification. As discussed, Appellants' allegedly required features of a separate winding support assembly that forms a unitary structure having integrated channels are not found in the claims or required by the Specification. Thus, Appellants' reliance on Buszard is unavailing. Accordingly, we conclude that Appellants have not shown that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 102(b). Independent claim 10 was argued on the same basis as independent claim 1 (Br. 5), and we sustain the rejection of claim 10 for the same reasons discussed with respect to claim 1. Claims 2 and 3 were not argued separately, and thus fall with claim 1. Regarding claim 9, Appellants argue that the disclosure of Kintz relating to impregnation with varnish "relates to impregnation of coils only," not the sensor 26. (Br. 5.) Therefore, Appellants argue that Kintz does not teach embedding or sealing the sensor in the winding support assembly, as claimed. (Id.) We do not agree. As the Examiner correctly found (Ans. 6, 8-9) and as discussed supra with respect to claim 1, Kintz teaches a sensor embedded in or sealed in the winding support assembly. Accordingly, we conclude that Appellants have not shown that the Examiner erred in rejecting claim 9 under 35 U.S.C. § 102(b). Regarding claim 11, Appellants argue that the Examiner failed to appreciate the invention because "the present invention sets forth a unitary winding support assembly that is constructed to have channels of spiral- shaped configuration." (Br. 5.) We do not agree. 10 Appeal 2008-1868 Application 10/952,532 Appellants' argument is not commensurate with the scope of the claim because, as with claim 1, claim 11 does not recite or require a unitary winding support assembly. However, even if a unitary assembly was required, as discussed supra we agree with the Examiner (Ans. 9) that when the varnish hardens the assembly taught by Kintz is unitary. In addition, we agree with the Examiner (Ans. 6, 9) that Figures 1 and 3 of Kintz show a spirally shaped configuration of the channels formed by phase separators 24. Accordingly, we conclude that Appellants have not shown that the Examiner erred in rejecting claim 11 under 35 U.S.C. § 102(b). Appellants have not separately argued the rejection of claims 4 and 6-8 under 35 U.S.C. § 103(a). Instead, Appellants summarily allege that these claims are not unpatentable over the applied references "by virtue of their dependencies." (Br. 6.) Therefore, we will sustain the rejection for the reasons discussed with respect to independent claim 1, from which claims 4 and 6-8 ultimately depend. However, with respect to claim 5, we agree with Appellants that neither Kintz nor Cho, alone or in combination, teaches or suggests a measuring system that is integrated in the winding support assembly and operates in the absence of mechanical contact with the winding system, as claimed. The Examiner found that Kintz does not disclose this limitation (Ans. 6) and turned to Cho to remedy the deficiency (Ans. 7). However, we agree with Appellants (Br. 6) that the sensors of Cho are in contact with the body to be measured (Cho, col. 3, ll. 17-21; col. 4, ll. 38-40, 46-48; Figs. 1-5), and therefore do not satisfy the limitation recited by claim 5. 11 Appeal 2008-1868 Application 10/952,532 In particular, Cho teaches that the sensors 34, 35, 36 include a "a giant magnetoresistive sheath for contacting the body and which is subjected to the magnetic field and temperature of the body." (Cho, col. 3, ll. 17-22.) An analyzer 31 receives signals from the sensors 34, 35, 36 and may be remote from the stator 24. (Cho, col. 3, ll. 30-32, 37-38.) But while the analyzer 31 may be remote, the sensors 34, 35, 36 are in direct contact with the stator. In addition, although Cho discloses the use of an infrared thermometry sensor4 in the BACKGROUND OF THE INVENTION (col. 1, ll. 43-45), Cho explains that such "systems are expensive and difficult to implement in a reliable manner" (col. 1, ll. 46-47). There is no teaching or suggestion that the sensors in the system disclosed by Cho use infrared thermometry, and thus there is no teaching or suggestion that the system of Cho uses a measuring system that operates in the absence of mechanical contact with the winding system, as claimed. Therefore, we conclude that Appellants have shown that the Examiner erred in rejecting claim 5. CONCLUSION OF LAW We conclude that: (1) Appellants have not shown that the Examiner erred in rejecting claims 1-3 and 9-11 for anticipation under 35 U.S.C. § 102(b). (2) Appellants have not shown that the Examiner erred in rejecting claims 4 and 6-8 for obviousness under 35 U.S.C. § 103. 4 The Examiner points out that such an infrared sensor would provide contactless measurement of temperature (Ans. 10-11), and Appellants state that "this interpretation by the Examiner may be true" (Br. 6). 12 Appeal 2008-1868 Application 10/952,532 (3) Appellants have shown that the Examiner erred in rejecting claim 5 for obviousness under 35 U.S.C. § 103. DECISION The rejection of claims 1-3 and 9-11 for anticipation under 35 U.S.C. § 102(b) is affirmed. The rejection of claims 4 and 6-8 for obviousness under 35 U.S.C. § 103 is affirmed. The rejection of claim 5 for obviousness under 35 U.S.C. § 103 is reversed. 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). AFFIRMED-IN-PART gvw HENRY M. 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