Ex Parte Knauff et al

Board of Patent Appeals and Interferences

Aug 28, 2008

10952532 (B.P.A.I. Aug. 28, 2008)

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
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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
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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).
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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
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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
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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.
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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
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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.

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(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.
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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.
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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.
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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).
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(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

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