Ex Parte MAEKAWA

Patent Trial and Appeal Board

Jun 7, 2018

13614860 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/614,860 09/13/2012
23373 7590 06/11/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Toshia MAEKA WA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Ql42087 2717
EXAMINER
KENERL Y, TERRANCE L
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIO MAEKA WA
Appeal2017-009951
Application 13/614,860
Technology Center 2800
Before LINDA M. GAUDETTE, RAEL YNN P. GUEST, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to reject claims 1-12. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
Appellant claims a magnet-type power generator (claim 1) and a
method of manufacturing a magnet-type power generator (claim 8). App.
1 Appellant identifies Mitsubishi Electric Corporation as the real party in
interest. Appeal Brief filed January 12, 2017 ("App. Br."), 2.
Appeal2017-009951
Application 13/614,860
Br. 4--5. Claim 1 illustrates the subject matter on appeal and is reproduced
below with contested language italicized:
1. A magnet-type power generator comprising:
a rotor having a bowl-shaped flywheel and a plurality of
magnets disposed on an inner circumferential surface of the
flywheel so as to be spaced at a predetermined interval; and
a stator having a plurality of cores facing the magnets,
each having a coil wound therearound,
wherein the plurality of magnets comprises a plurality of
bonded magnets integrally molded with the flywheel on the
inner circumference surf ace and a bottom surface of the
flywheel.
App. Br. 22 (Claims Appendix).
The Examiner sets forth the following rejections in the Non-
Final Office Action entered October 12, 2016 ("Non-Final Act."), and
maintains the rejections in the Examiner's Answer entered May 19,
2017 ("Ans."):
I. Claims 1, 5, and 7 under 35 U.S.C. § 103(a) as unpatentable
over Safranek (US 4,873,962, issued October 17, 1989) in view of
Masuzawa (US 2009/0085416 Al, published April 2, 2009);
II. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over
Safranek in view ofMasuzawa and Kliman (US 5,345,130, issued
September 6, 1994);
III. Claim 3 under 35 U.S.C. § 103(a) as unpatentable over
Safranek in view ofMasuzawa and Inaba (US 2001/0006292 Al, published
July 5, 2001 );
IV. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Safranek in view ofMasuzawa, Inaba, and Ratz (US 2002/0153793 Al,
published October 24, 2002);
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Application 13/614,860
V. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Safranek in view ofMasuzawa and Hashiba (US 2008/0143204 Al,
published June 19, 2008);
VI. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over
Safranek in view ofMasuzawa and Kobayashi (US 2010/0033050 Al,
published February 11, 2010);
VII. Claim 8 under 35 U.S.C. § 103(a) as unpatentable over
Safranek in view ofMasuzawa, Aoshima (US 2002/0047334 Al, published
April 25, 2002), and Kikuchi (JP 357016561A, published January 28, 1982);
VIII. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Safranek in view of Masuzawa, Aoshima, and Kobayashi;
IX. Claim 11under35 U.S.C. § 103(a) as unpatentable over
Safranek in view ofMasuzawa and Rignault (US 2008/0024018 Al,
published January 31, 2008); and
X. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Safranek in view of Masuzawa, Aoshima, and Rignault.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejections of
claims 1, 3-7, and 11under35 U.S.C. § 103(a) for the reasons set forth in
the Final Action, the Answer, and below, and reverse the Examiner's
rejections of claims 2, 8-10, and 12 under 35 U.S.C. § 103(a) for the reasons
set forth below.
Claims 1, 3-7, and 11
Appellant argues claims 1, 3-7, and 11 as a group on the basis of
claim 1, to which we accordingly limit our discussion. App. Br. 7-12, 20;
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Application 13/614,860
37 C.F.R. § 41.37(c)(l)(iv).
Safranek discloses flywheel 46 used as a rotor in an alternator. Col. 3,
11. 14--15; Figs. 2 and 3. Safranek discloses that flywheel 46 has a thin outer
wall 49 (col. 3, 11. 28-35), and Appellant does not dispute the Examiner's
finding that Safranek discloses mounting magnets 53a-f on an inner surface
of outer wall 49, and on a bottom surface of the flywheel 46. Compare Non-
Final Act. 6-7 (citing Safranek Fig. 3), with App. Br. 7-12. The Examiner
finds that Safranek does not disclose that magnets 53a-f comprise a plurality
of bonded magnets integrally molded with flywheel 46, and the Examiner
relies on Masuzawa for suggesting this feature. Non-Final Act. 7.
Masuzawa discloses integrally compression molding a bonded magnet
to a soft magnetic yoke (flywheel) to form a high tensile strength joint
interface between the magnet and the yoke. Masuzawa i-fi-f 14--16, 78. The
Examiner finds that Masuzawa discloses that integrally molding the bonded
magnet to the yoke "increases a joint force on the joint face." Non-Final
Act. 7 (citing Masuzawa i1 77).
The Examiner determines that it would have been obvious to one of
ordinary skill in the art at the time of Appellant's invention to construct
Safranek's flywheel "so that the plurality of magnets comprises a plurality of
bonded magnets integrally molded with the flywheel, as taught by
Masuzawa, so as to increase the joint force," and to secure the magnets to
the flywheel, preventing them from falling off the flywheel, and from
moving left to right, or up or down, on the flywheel. Non-Final Act. 7; Ans.
6-7.
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Appellant argues that one of ordinary skill in the art would not have
understood "the referenced portion of Masuzawa"-paragraph 77-to
disclose integrally molding magnets with a flywheel. App. Br. 9.
Appellant contends that the use of binding material and adhesive described
in paragraph 77 "clearly reveal[ s] the reference process to be a traditional
bonding technique." Id.
However, Masuzawa indicates numerous times throughout the
reference that Masuzawa's invention is directed to a process for integrally
compression molding a bonded magnet to a soft magnetic yoke in which "a
magnet powder containing a binding material [for forming a bonded magnet]
and a soft-magnetic powder containing the binding material [for forming a
soft magnetic yoke] are integrally compression molded while engaging with
each other at a joint face where both powders are in contact with each
other." i-f 46; see also i-fi-114--16, 49, 50, 55, 60, 63, 79.
Paragraphs 7 6 to 77 of Masuzawa describe a particular embodiment of
"integrally molding the bonded magnet and the soft-magnetic yoke," and
indicate that a binding material and an adhesive may be utilized during the
integral molding process at the joint face "to increase a joint force on the
joint face." Paragraph 78 goes on to explain that "[i]t is difficult to obtain
stable adhesion strength by a conventional jointing method using an
adhesive," but "the joint interface formed by the present invention has a high
strength." Therefore, contrary to Appellant's argument, Masuzawa discloses
integrally molding magnets with a yoke (flywheel).
Appellant argues that Masuzawa discloses magnets on an outer
circumference of a yoke, rather than on the inner circumference of a
flywheel as disclosed in Safranek. App. Br. 9-10. Appellant contends that
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the purpose of Masuzawa's invention is to reduce tensile stress at the joint
interface between the bonded magnet and the yoke that occurs due to
centrifugal force generated by rotation of the yoke/magnet rotator. App. Br.
11. Appellant asserts that in the invention-and in Safranek-the plurality
of magnets are retained radially by the inner circumferential surface of the
flywheel, and therefore do not experience the tensile stress that Masuzawa's
invention is aimed towards ameliorating, "such that the considerations of
Masuzawa are not relevant to either the present disclosure or Safranek."
Appellant argues that Masuzawa therefore "teaches away from the
Examiner's proposed modification of Safranek." App. Br. 10-12.
However, as discussed above, Safranek discloses magnets "mounted"
on an inner surface of the outer wall of a flywheel, but we find no disclosure
in Safranek indicating how the magnets are fixed to the flywheel.
Accordingly, although the plurality of magnets disclosed in Safranek may be
retained radially by the inner circumferential surface of the flywheel as
Appellant asserts, integrally molding the magnets to the flywheel would
secure the magnets to the flywheel when it rotates, preventing them from
falling off the flywheel, and from moving left to right, or up or down, on the
flywheel, as the Examiner determines in the Answer. Non-Final Act. 7;
Ans. 6-7.
Appellant does not challenge this determination in the Reply Brief,
which we accordingly accept as true. See, e.g., In re Fox, 471F.2d1405,
1407 (CCPA 1973) (affirming the Board's decision: "In this court appellant
has not denied the existence of the facts on which the examiner rested his
obviousness rejection nor the added facts of which the board took judicial
notice.") Rather, Appellant focuses on the embodiment described in
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paragraph 77 of Masuzawa and argues that Masuzawa "makes only solid
components via pressure molding pre-compact bodies 20 and 21, and
provides no basis for how the structure of Safranek, in which spaced
magnets are placed on an internal surface, can be manufactured using the
pre-compact pressure molding described in Masuzawa." Reply Br. 6.
However, Masuzawa's disclosures are not limited to the particular
embodiment of pressure molding pre-compact bodies described in paragraph
77. Rather, Masuzawa discloses numerous embodiments of Masuzawa's
invention that describe how to integrally mold a bonded magnet to a yoke.
See, e.g., Masuzawa i-fi-f 14--16, 28, 29, 46, 49, 50, 52, 53, 55, 60, 63, 64, 72,
76, 79; Figs. IA, 5, 1 IA-F; In re Applied Materials, Inc., 692 F.3d 1289,
1298 (Fed. Cir. 2012) ("A reference must be considered for everything that
it teaches, not simply the described invention or a preferred embodiment.").
In view of Masuzawa's disclosure as a whole, Appellant's arguments do not
demonstrate that integrally molding bonded magnets to an inner
circumference surface of Safranek' s flywheel would have been "uniquely
challenging or difficult for one of ordinary skill in the art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007)).
Therefore, Appellant does not persuade us of error in the Examiner's
finding that Masuzawa' s disclosure of integrally molding a bonded magnet
to a soft magnetic yoke (flywheel) would have led one of ordinary skill in
the art to integrally mold a plurality of bonded magnets to an inner
circumference surface of Safranek' s flywheel, as recited in claim 1, to
effectively secure the magnets to the flywheel, preventing them from falling
off or moving when the flywheel rotates. Consequently, Masuzawa does not
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teach away from the Examiner's proposed modification, as Appellant
asserts. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("[t]he prior
art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed").
We accordingly sustain the Examiner's rejection of claims 1, 3-7, and
11 under 35 U.S.C. § 103(a).
Claim 2
Claim 2 depends from claim 1 and recites that the bonded magnets are
molded so as to be coupled to each other by coupling parts formed on a
bottom side of the flywheel.
The Examiner finds that Safranek does not disclose bonded magnets
molded so as to be coupled to each other by coupling parts formed on a
bottom side of the flywheel, and the Examiner relies on Kliman to address
this feature. Office Act. 8-9. The Examiner finds that Kliman discloses
magnets 34--37 coupled to each other by cut outs 32 formed on a rotor to
improve a sinusoidal wave form. Non-Final Act. 8 (citing Kliman Abstract).
The Examiner finds that cut outs 3 2 disclosed in Kliman correspond to the
coupling parts recited in claim 2. Id. The Examiner determines that the
"routineer would have readily arrived at locating the coupling portions on
the bottom side of the flywheel" to improve a sinusoidal wave form. Id.
The Examiner concludes that "it would have been obvious to a person
having ordinary skill in the art at the time the invention was made to
construct the generator of Safranek so that the bonded magnets are molded
so as to be coupled to each other by coupling parts formed on a bottom side
of the flywheel." Non-Final Act. 8-9.
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However, Kliman discloses a permanent magnet rotor in which cut
outs 32 in the rotor core between adjacent magnetic poles 34--37 force
magnetizing flux into the main part of the poles, resulting in a substantially
trapezoidal flux distribution. Col. 2, 11. 43--49; col. 2, 1. 65---col. 3, 1. 3. As
Appellant points out, Kliman discloses that cut outs 32 face radially
inwardly toward the rotor core, rather than being positioned on a bottom side
of a flywheel, as recited in claim 2. App. Br. 13-14; Kliman Fig. 5. Even if
cut outs 32 disclosed in Kliman correspond to coupling portions as the
Examiner asserts, the Examiner does not provide any objective evidence or
technical reasoning to support the conclusory assertion that one of ordinary
skill in the art would have readily arrived at locating cut outs 32 on the
bottom side of Safranek' s flywheel, or that doing so would improve a
sinusoidal wave form. In particular, the Examiner does not provide any
objective evidence to establish that locating cut outs 32 on the bottom side of
a flywheel-rather than facing radially inwardly toward a rotor core as
disclosed in Kliman so as to force magnetizing flux into the main part of the
poles-would improve a sinusoidal wave form.
Accordingly, the Examiner does not establish that the combined
disclosures of Safranek, Masuzawa, and Kliman would have led one of
ordinary skill in the art to form Safranek's flywheel with bonded magnets
molded so as to be coupled to each other by coupling parts formed on a
bottom side of the flywheel, as required by claim 2.
We accordingly do not sustain the Examiner's rejection of claim 2
under 35 U.S.C. § 103(a).
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Claims 8, 9, and 12
Independent claim 8, directed to a method of manufacturing a magnet-
type power generator, requires, inter alia, a step of injection molding a
bonded magnet integrally with an inner circumference surface and a bottom
surface of a flywheel. Because claims 9 and 12 depend from claim 8, we
need consider only claim 8.
The Examiner finds that Safranek "does not teach the step of injection
molding the bonded magnet to the flywheel on the inner circumference
surface and a bottom surface of the flywheel," and the Examiner relies on
Aoshima to address this feature. Non-Final Act. 12. The Examiner finds
that Aoshima discloses that injection molding magnets prevents the magnets
from cracking during manufacturing. Non-Final Act. 12 (citing Aoshima i-f
51 ). The Examiner concludes that:
it would have been obvious to a person having ordinary skill in
the art at the time the invention was made to modify the method
of Safranek with the step ofinjection molding the bonded magnet
to the flywheel, [as disclosed in] Aoshima so as to prevent the
magnets from cracking during manufacturing.
Non-Final Act. 13.
However, as Appellant points out, Aoshima discloses a stepping
motor in which a single cylindrical magnet is located on a rotary shaft, rather
than on a flywheel. App. Br. 19; Aoshima i-fi-149-51; Fig. 1. Aoshima
discloses that the cylindrical magnet is formed from plastic material by
injection molding. i-fi-150---51. Although, as the Examiner correctly finds,
Aoshima discloses that forming the plastic magnet by injection molding
prevents the magnet from cracking during injection molding (Non-Final Act.
12 (citing Aoshima i-f 51) ), the Examiner does not articulate reasoning
having rational underpinning as to why Aoshima's disclosure of injection
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molding a single plastic cylindrical magnet located on a rotary shaft would
have suggested injection molding a bonded magnet integrally with a
flywheel, as required by claim 8. The Examiner does not make any
additional findings of fact in connection with the rejection of claim 8 that
remedy this deficiency in the rejection.
Therefore, the Examiner does not establish that the combined
disclosures of the applied prior art would have led one of ordinary skill in
the art to injection mold a bonded magnet integrally with a flywheel as
required by claim 8. We accordingly do not sustain the Examiner's
rejections of claims 8, 9, and 12 under 35 U.S.C. § 103(a).
Claim 10
Claim 10 depends from claim 1 and recites that a bonded magnet of
the plurality of bonded magnets has a first slope portion at a first side edge
and a second slope portion at a second side edge, the first slope portion of
the first side edge being substantially parallel to the second slope portion of
the second side edge.
The Examiner finds that Safranek does not disclose a bonded magnet
having substantially parallel slope portions at first and second side edges as
recited in claim 10. Non-Final Act. 10. The Examiner finds that Inaba
discloses a magnet having slope portions at both side edges that are
substantially parallel so as to cool the coils of a stator by rotation of a
flywheel. Id. The Examiner concludes that "it would have been obvious to
a person having ordinary skill in the art at the time the invention was made
to construct the generator of Safranek so that a magnet of the plurality of
magnets has slope portions at both side edges thereof that are substantially
parallel, as taught by Inaba, so as to cool the motor." Id.
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In response to Appellant's argument that Inaba does not disclose
magnets having substantially parallel slope portions at both side edges (App.
Br. 14--15), the Examiner finds in the Answer that Figure 14B of Inaba
illustrates a magnet having slope portions at both side edges that "appear to
be parallel." Ans. 9-11. However, contrary to the Examiner's assertion, the
side edges of the magnets illustrated in Figure 14 B of Inaba do not appear to
be parallel. In addition, we find no disclosure in Inaba of cooling the coils
of a stator by rotation of a flywheel having magnets shaped so as to generate
a cooling air flow, and the Examiner does not provide a citation to any such
disclosure in Inaba. Therefore, the Examiner does not establish that Inaba
discloses or would have suggested a magnet having substantially parallel
slope portions at both side edges that cool the coils of a stator by rotation of
a flywheel.
The Examiner further finds that Ratz discloses that magnets can be
formed of any shape or size, simplifying their installation. Non-Final Act.
10 (citing Ratz i-f 7). The Examiner determines that one of ordinary skill in
the art therefore "would have been motivated to at least try [a magnet]
configuration" in which a first slope portion of a first side edge is
substantially parallel to a second slope portion of a second side edge "since
such a modification would have involved a mere change in the size or shape
of a component. A change in size or shape is generally recognized as being
within the level of ordinary skill in the art." Non-Final Act. 10 (citing In re
Rose, 220 F.2d 459 (CCPA 1955)). The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of
Appellant's invention to construct the generator of Safranek with a magnet
in which a first slope portion of a first side edge is substantially parallel to a
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second slope portion of a second side edge "as implicitly taught by Ratz, so
as to simplify installation." Non-Final Act. 11.
However, Ratz discloses permanent magnets arranged on the rotor of
a generator that are "formed by a plurality of relatively small magnet
elements," allowing them to "be installed in [a] simple manner." i-fi-f l, 7. As
Appellant points out, Ratz discloses that "[a]s far as the shape of the magnet
elements is concerned, it can be practical to determine their length in
accordance with the axial dimension of the rotor," but Ratz "fails to disclose
consideration of the slope portions of side edges." Ratz i1 8 (emphasis
added); App. Br. 15. Consequently, Ratz does not disclose a bonded magnet
having slope portions at first and second side edges that are substantially
parallel, and the Examiner does not identify any disclosure in Ratz that
would have suggested a bonded magnet of this shape.
Although a difference in a claimed shape from a shape disclosed in
the prior art is insufficient to show non-obviousness in circumstances where
the claimed shape is not of functional significance and accomplishes the
same results as the prior art, in the present case, the shape of side edges of
the bonded magnet recited in claim 10 does have functional significance,
and thus is not simply a matter of design choice. See Gardner v. TEC
Systems, Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984) (affirming a district
court determination of obviousness because "the dimensional limitations of
claim 1 failed to particularly point out a feature of an air bar which
performed any differently from prior art bars"); In re Kuhle, 526 F.2d 553,
555 (CCPA 1975) (use of claimed feature solves no stated problem and
presents no unexpected result and "would be an obvious matter of design
choice within the skill of the art" (citations omitted)); In re Dailey, 357 F.2d
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669, 672-73 (CCPA 1966) (holding that the configuration of a claimed
disposable plastic nursing container was a matter of choice that a person of
ordinary skill in the art would have found obvious absent persuasive
evidence that the particular configuration of the claimed container was
significant).
Appellant's Figure 6 illustrates a rotor of a magnet-type power
generator having bonded magnets with first and second side edges having
slope portions that are substantially parallel. The Specification explains that
side edges having this shape generate airflow inside the flywheel as the
flywheel rotates that lowers the temperature of the coils, prolonging the
lifetime of the power generator. Spec. i-f 16. Due to this functional
significance of the substantially parallel slope portions of the first and
second side edges of the bonded magnet recited in claim 10, the Examiner
improperly relies on design choice in rejecting the claim.
We accordingly do not sustain the Examiner's rejection of claim 10
under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejections of claims 1, 3-7, and 11 under
35 U.S.C. § 103(a), and reverse the Examiner's rejections of claims 2, 8-10,
and 12 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-IN-PART
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