Ex Parte MAEKAWADownload PDFPatent Trial and Appeal BoardJun 7, 201813614860 (P.T.A.B. Jun. 7, 2018) Copy Citation 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); 2 Appeal2017-009951 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; 3 Appeal2017-009951 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. 4 Appeal2017-009951 Application 13/614,860 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 5 Appeal2017-009951 Application 13/614,860 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 6 Appeal2017-009951 Application 13/614,860 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 7 Appeal2017-009951 Application 13/614,860 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. 8 Appeal2017-009951 Application 13/614,860 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). 9 Appeal2017-009951 Application 13/614,860 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 10 Appeal2017-009951 Application 13/614,860 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. 11 Appeal2017-009951 Application 13/614,860 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 12 Appeal2017-009951 Application 13/614,860 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 13 Appeal2017-009951 Application 13/614,860 669, 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 14 Copy with citationCopy as parenthetical citation