Ex Parte Lyons et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201713683146 (P.T.A.B. Feb. 27, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/683,146 11/21/2012 David Lyons 2010D10004 4862 113241 7590 03/01/2017 Garlick & Markison (TSLA) 106 E. 6th Street, Suite 900 Austin, TX 78701 EXAMINER ANDREWS, MICHAEL ART UNIT PAPER NUMBER 2834 NOTIFICATION DATE DELIVERY MODE 03/01/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patents @ teslamotors.com mmurdock@texaspatents.com bpierotti @ texaspatents .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID LYONS, JEFFREY B. STRAUBEL, ERIK SHAHOIAN, and RUDY GARRIGA Appeal 2015-006340 Application 13/683,1461 Technology Center 2800 Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and LILAN REN, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL2 Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the Examiner’s decision rejecting, under 35 U.S.C. § 103(a), claims 1—3, 7, and 1 According to Appellants, the real party in interest is Tesla Motors, Inc. App. Br. 2. 2 Our decision refers to the Specification (Spec.) filed November 21, 2012, Examiner’s Non-Final Office Action (Non-Final) delivered October 1, 2014, Appellants’ Appeal Brief (App. Br.) filed February 2, 2015, the Examiner’s Answer (Ans.) delivered April 10, 2015, and Appellants’ Reply Brief (Reply Br.) filed May 22, 2015. Appeal 2015-006340 Application 13/683,146 8 as unpatentable over Carosa3 in view of Roach,4 and claim 4 adding Eckert. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE The invention relates to an electric motor rotor assembly (Spec. 12), having a solid rotor ring located at each end of a stack of laminated discs, wherein the rings are fabricated by brazing slugs between end portions of rotor bars protruding from the ends of the disc stack {id. at 19). Appellants disclose that these slugs are interposed between adjacent rotor bar surfaces of the end portions to form rotor bar/slug assemblies on each side of the stack {id. at 110). Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the subject matter on appeal. The limitations at issue are italicized. 1. A rotor assembly for an electric motor, comprising: a rotor shaft; a plurality of laminated discs formed into a stack of laminated discs, wherein each of said plurality of laminated discs includes a plurality of slots, wherein said plurality of slots of each of said plurality of laminated discs are co-aligned within said stack of laminated discs, and wherein said stack of laminated discs is mounted to said rotor shaft; a plurality of rotor bars passing through said plurality of slots of said stack of laminated discs, wherein a first end portion of each of said plurality of rotor bars extends out and away from a first end surface of said stack of laminated discs, and wherein a second end portion of each of said plurality of rotor bars extends out and away from a second end surface of said stack of laminated disc; 3 US 5,642,010, issued June 24, 1997. 4 US 4,064,410, issued December 20, 1977. 2 Appeal 2015-006340 Application 13/683,146 first means for interposing, by radially inserting the first means, between said first end portions of a corresponding pair of said plurality of rotor bars, the interposing done so that the first means directly contacts the first end portions, and wherein said first means is joined to said first end portions of said corresponding pair of said plurality of rotor bars via a first pair of braze joints; and second means for interposing, by radially inserting the second means, between said second end portions of a corresponding pair of said plurality of rotor bars, the interposing done so that the second means directly contacts the second end portions, and wherein each of said second means is joined to said second end portions of said corresponding pair of said plurality of rotor bars via a second pair of braze joints. ANALYSIS Appellants present no distinct arguments with respect to the Examiner’s second rejection (of claim 4) and argue all claims as a group. See App. Br. 3—8; Reply Br. 2-4. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2014), we limit our discussion to claim 1, and all other claims on appeal stand or fall together with claim 1. We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it has long been the Board’s practice to require an applicant to identity the alleged error in the examiner’s rejections”)). After considering the evidence presented in this Appeal and each of Appellants’ contentions, we are not persuaded that Appellants identity reversible error. Thus, we affirm the Examiner’s § 103 rejections for the reasons expressed in the Non- Final Office Action and the Answer. We add the following primarily for emphasis. 3 Appeal 2015-006340 Application 13/683,146 It is axiomatic that during examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). An applicant seeking a narrower construction must either show why the broader construction is unreasonable or amend the claim to expressly state the scope intended. In re Morris, 111 F.3d 1048, 1057 (Fed. Cir. 1997). All words of a claim are to be given weight when evaluating patentability. In re Wilder, 429 F.2d 447, 450 (CCPA 1970) (“[Ejvery limitation positively recited in a claim must be given effect in order to determine what subject matter that claim defines.”); In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“All words in a claim must be considered in judging the patentability of the claim against the prior art.”). We begin, appropriately, with the claim’s words. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001) (“Only when a claim is properly understood can a determination be made . . . whether the prior art anticipates and/or renders obvious the claimed invention.”); In re Donaldson Co., 16 F.3d 1189, 1192 (Fed. Cir. 1994). During examination, claim terms are given their broadest reasonable construction consistent with the specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In general, words used in a claim are accorded their ordinary and customary meaning. Honeywell Int 7 Inc. v. Universal Avionics Sys. Corp., 488 F.3d 982, 992 (Fed. Cir. 2007). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. 4 Appeal 2015-006340 Application 13/683,146 The dispositive issue before us in this appeal is whether Appellants have identified reversible error in the Examiner’s finding that Carosa teaches structures that are equivalent to Appellants’ first and second means for interposing. Based on a proper interpretation of the claims, we answer this question in the negative and, therefore, will sustain the Examiner’s obviousness rejections. The Examiner finds, without dispute, that Carosa teaches a rotor assembly substantially as recited in claim 1. Compare Non-Final 5—7 with App. Br. 3—8. In particular, the Examiner finds Carosa teaches, inter alia, first and second means 38 for interposing between respective first and second end portions 26 of corresponding pairs of rotor bars 18, wherein the first and second means directly contacts the end portions and are joined thereto via braze joints. Non-Final 5—6. Nonetheless, the Examiner acknowledges that Carosa fails to teach that the first and second means for interposing are radially inserted between the respective first and second end portions of adjacent rotor bar pairs. Id. at 6. The Examiner cites to Roach for a teaching of a rotor assembly having means for interposing 26 that are radially inserted between rotor bars 15. Id. The Examiner concludes that it would have been obvious to form Carosa’s rotor assembly by radially inserting the first and second means for interposing as taught by Roach for faster assembly. Id. The Examiner also concludes that because the claimed rotor assembly is the same as or obvious over Carosa’s finished rotor assembly, it would have been obvious to make the rotor assembly by any process including radial insertion of the first and second interposing means. Id. at 6—7, citing In re Thorpe, 111 F.2d 695,698 (Fed. Cir. 1985). 5 Appeal 2015-006340 Application 13/683,146 Claim 1 recites, in pertinent part, “first means for interposing, by radially inserting the first means, between said first end portions of a corresponding pair of said plurality of rotor bars, the interposing done so that the first means directly contacts the first end portions.”5 Appellants invoke 35 U.S.C. § 112, sixth paragraph (pre-AIA) both by the use of the term, “means,” and by way of argument (App. Br. 4—5). Accordingly, it is appropriate to analyze claim 1 under § 112, sixth paragraph. In using “means-plus-function” language under § 112, sixth paragraph, Applicants must link the recited function to a structure in the specification. See B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) (“[Structure disclosed in the specification is ‘correspond ing’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112,16.”). Here, Appellants contend that the structure corresponding to the recited first means is the slug 600, as depicted in Figure 6, and associated Specification paragraphs 25 and 29-37.6 App. Br. 3. Therein, Appellants disclose slug 600 is radially inserted into each gap formed between adjacent rotor bars 400 located at each end of the laminated 5 Claim 1 similarly recites “second means for interposing, by radially inserting the second means, between said second end portions of a corresponding pair of said plurality of rotor bars, the interposing done so that the second means directly contacts the second end portions.” As this second means is identical to the first means other than being on the opposite end of the disc stack, our comments and holding regarding the first means applies with equal force to the second means. 6 Appellants later restrict the corresponding structure to slug 600 of Figure 6, and associated Specification paragraphs 29-31 (as amended on January 30, 2014). Reply Br. 3^4. 6 Appeal 2015-006340 Application 13/683,146 disc stack 501. Appellants do not teach any structure for performing this radial insertion nor do Appellants argue that the functional recitation of the first means requires such structure. In other words, the radial insertion function may be performed by hand. Indeed, although Appellants disclose that slug 600 is radially inserted into the gap between the ends of an adjacent pair of rotor bars 400, Appellants disclose no structure for preventing axial insertion. Turning to the Examiner’s interpretation of the means recitations of claim 1, we note that the Examiner determined that the radial insertion recitation is not part of the functional requirement of the means, but is instead a “product-by-process” limitation. Ans. 2-4. Thus, the radial insertion recitation does not set forth a function for the means but identifies how the rotor assembly was made. Appellants disagree, contending that the performance of the function at issue relates to both the manufacturing and the finished product. App. Br. 4. Clearly, the manufacturing aspect to which Appellants refer coincides with the Examiner’s determination that this recitation is a “product-by-process” limitation. That the “radial insertion” recitation is a “product-by-process” limitation is further supported by the manner in which claim 1 recites this feature. Claim 1 recites “by radially inserting the first means.” Therefore, the action of radial inserting is done to the first means, not by the first means. As for the function’s relation to the finished product, this aspect is more properly captured in the actual function of the means “for interposing . . . between said first end portions of a corresponding pair of said plurality of rotor bars, the interposing done so that the first means directly contacts the first end portions.” Specifically, in the finished product, the means (slug 600) is interposed between and directly contacts the ends of an adjacent pair of rotor bars. Thus, we construe claim 7 Appeal 2015-006340 Application 13/683,146 1 to require that a slug as in Appellants’ Figure 6 that is capable of radial insertion between the ends of the rotor rods at either end of the laminated stack. Given the above claim construction, we must determine whether Appellants have identified reversible error in the Examiner’s application of the prior art. There is no dispute that Carosa teaches a means for interposing between said first end portions of a corresponding pair of said plurality of rotor bars, the interposing done so that the first means directly contacts the first end portions. Carosa, Fig. 8, fill part 38. As set forth above, we find the limitation “by radially inserting the first means” to be a product-by process limitation. “The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 111 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) (citation omitted); see also In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969) (“[T]he patentability of a claim to a product does not rest merely on a difference in the method by which that product is made. Rather, it is the product itself which must be new and unobvious.”) “Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-93 (Fed. Cir. 1983). The only argument Appellants raise to attempt to establish an unobvious difference between the claimed rotor assembly and Carosa is that Carosa’s fill part 38 does not have the same structure as Appellants’ slug 8 Appeal 2015-006340 Application 13/683,146 600. App. Br. 4. Appellants assert that Carosa’s fill part 38 has keyed structure for interlocking with rotor bars 18 that would prevent its radial insertion into the gap between the rotor bars and, therefore, is not equivalent to Appellants’ slug 600. Id. Appellants cite both Mas-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, 1211-12 (Fed. Cir. 1998) (internal citation omitted) and Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 (Fed. Cir. 2006) in support of this argument. Appellants’ argument is not persuasive of reversible error. Initially, we note that both case decisions cited by Appellants are directed to infringement analyses of “means-plus-fimction” limitations. However, we note that such infringement analysis is inapplicable during prosecution within the USPTO. In re Moore, 127 F.3d 1048, 1053-1054 (Fed. Cir. 1997) (Means-plus-function claims are limited to what is described in the specification and equivalents thereof, under the rubric of broadest reasonable interpretation.) To be sure, one factor supporting equivalence under § 112, sixth paragraph, is that the prior art element performs the identical function in substantially the same way, and produces substantially the same results as the corresponding element disclosed in the specification. Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352 (Fed. Cir. 2000). Another factor supporting equivalence is that a person of ordinary skill in the art would have recognized the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification. Caterpillar Inc. v. Deere & Co., 224 F.3d 1374 (Fed. Cir. 2000). A still further factor supporting equivalence is that there are insubstantial differences between the prior art element and the corresponding element 9 Appeal 2015-006340 Application 13/683,146 disclosed in the specification. IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436 (Fed. Cir. 2000). See MPEP 2183.7 Applying any of the above factors to the first means of claim 1, it is clear that Carosa’s fill part 38 is an equivalent of Appellants’ slug 600. Both perform the identical function of interposing between the rotor rod ends (compare Carosa, Fig. 8, with Appellants’ Fig. 10); both perform this function in substantially the same way in that both are seated in the gap between and directly contact the rotor rod ends; both produce the same result by stabilizing the rotor rod ends and, upon brazing to the rotor rod ends, create a solid ring on each end of the motor. As such, one of ordinary skill in the art would have recognized the interchangeability of the Carosa’s fill part 38 for Appellants’ slug 600. Although Carosa’s fill part 38 has keyed structure that mates with the rod ends, the Examiner finds this keyed structure is not required. Ans. 5. The Examiner finds Carosa teaches other shapes of the rotor bars that would not have keyed interlocking structures with the fill parts. Id.', Carosa 6:14— 17 (“In order to hold the assembly together until and during brazing, the assembly may be clamped, tack welded, or, if a rotor cross-section shape permits it, held together by the ‘keyed’ interlocking effect of adjacent fill parts 38 and rotor bars 18 which can be seen in FIG. 8.”) Indeed, other non interlocking shapes are known, e.g., Roach’s rotor bars 15. Absent such keyed structure, Carosa’s fill part 38 would not have structure preventing radial insertion into the gap between adjacent rotor ends. In addition, it would have been within the ordinary skill in the art to have omitted such 7 Manual of Patent Examining Practice, 9th ed., revision 07.2015, last revised November 2015. 10 Appeal 2015-006340 Application 13/683,146 keyed structure from Carosa along with its inherent function of interlocking the fill part with the rotor ends without the need for clamping or tack welding as recognized by Carosa. Id.', In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient); In re Larson, 340 F.2d 965, 968 (CCPA 1965) (omission of structure which served a function would have been obvious if the function was not desired). See also, Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (obviousness analysis requires the prior art as a whole to be read in context, taking account of the knowledge, creativity, and design skill of one of ordinary skill in the art). Accordingly, based on our consideration of the totality of the record before us, we have weighed the evidence of obviousness found in Carosa and Roach with Appellants’ countervailing arguments for nonobviousness and conclude, by a preponderance of the evidence and weight of argument, that the claimed invention encompassed by appealed claims 1—4, 7, and 8 would have been obvious as a matter of law under 35 U.S.C. § 103(a). DECISION Upon consideration of the record, and for the reasons given above and in the Answer, the decision of the Examiner rejecting claims 1—4, 7, and 8 under 35 U.S.C. § 103(a) as unpatentable over Carosa and Roach, alone or further in view of Eckert, 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). AFFIRMED 11 Copy with citationCopy as parenthetical citation