Ex Parte Matsushita et al

Patent Trial and Appeal Board

Feb 8, 2017

12991221 (P.T.A.B. Feb. 8, 2017)

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.
12/991,221 11/05/2010 Masayuki Matsushita 13596/49 7340
23838 7590 02/10/2017
ANDREWS KURTH KENYON LLP
13501 STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005
EXAMINER
MOK, ALEX W
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
u spto @ keny on .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAYUKI MATSUSHITA, KENJI HARADA,
and SHINGO FUBUKI
Appeal 2016-001201
Application 12/991,221
Technology Center 2800
Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001201
Application 12/991,221
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2
finally rejecting claims 1—3 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Ide et al. (JP 2006-288025 (“Ide”), pub. Oct. 19, 2006 (Machine translation)) in
view of Fukunaga (JP 2006-130550, pub. May 25, 2006 (English Abstract)). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART
The invention relates to a coil for use, e.g., in a drive motor of a hybrid
electric vehicle. Specification filed Nov. 5, 2010 (“Spec.”) Tflf 1—2. More
specifically, the invention relates to a technique for bending a flat, rectangular
conductor to form a coil having improved dimensional accuracy. Id. ^ 1.
Independent claim 1 is illustrative of the inventive method, and is reproduced
below:
1. A winding method of forming a coil having a long side and a
short side by edgewise bending a flat rectangular conductor by use of
a wire guide, a first side surface supporting tool, and a support
member, the method comprising:
a first step of performing edgewise bending of a first bent
portion by bending a part of the flat rectangular conductor to be the
long side about an outer periphery of the support member by rotating
the first side surface supporting tool in the direction of clockwise
about the support member after conducting a long-side feeding
operation; and
a second step of performing edgewise bending of a second bent
portion by bending another part of the flat rectangular conductor to be
the long side about the outer periphery of the support member by
rotating the wire guide in the direction of counterclockwise about the
support member after conducting a short-side feeding operation,
1 Appellants identity the real party in interest as Toyota Jidosha Kabushiki Kaisha.
Appeal Brief filed May 22, 2015 (“App. Br.”), 2.
2 Final Office Action mailed Apr. 2, 2015 (“Final Act.”).
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Appeal 2016-001201
Application 12/991,221
the first step of the clockwise edgewise bending and the second
step of the counterclockwise edgewise bending being alternately
conducted so that a bulging portion is formed by the support member
in bending the flat rectangular conductor 90 degrees about the support
member in a concentrated manner in a side of the coil located
between predetermined adjacent two of the edgewise bent portions.
App. Br. 14 (Claims App’x) (emphasis added). Independent claim 2 recites a
winding apparatus for forming a coil, and requires that the apparatus is capable of
performing steps similar to those recited in claim 1, so as to form “a bulging
portion ... in a concentrated manner in a side of the coil located between
predetermined adjacent two of the edgewise bent portions” (claim 2). App. Br.
14—15. Independent claim 3 is a product-by-process claim that recites a stator
comprising a coil formed by steps similar to those recited in claim 1, so as to form
“a bulging portion ... in a concentrated manner in a side of the coil located
between predetermined adjacent two of the edgewise bent portions” (claim 3).
App. Br. 15—16.
The Examiner finds Ide discloses a method of forming a coil from a flat
rectangular conductor that includes a first step of edgewise bending via clockwise
rotation around a support member. Final Act. 2. The Examiner further finds Ide
discloses a second step of edgewise bending, but acknowledges the second step
likewise is conducted via clockwise rotation, rather than counterclockwise rotation
as recited in claim 1. Id. at 3. The Examiner finds Fukunaga discloses a method of
bending a wire in a counterclockwise direction around a support member. Id. The
Examiner contends “[i]t would have been obvious to include the counterclockwise
rotation as taught by Fukanaga [sic] for the wire guide of Ide et al. for predictably
facilitating desired bending of the conductor,” and that such modification of Ide
would result in the method recited in appealed claim 1. Id. at 3^4. The Examiner
relies on substantially the same fact finding and reasoning in rejecting claim 2, i.e.,
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Appeal 2016-001201
Application 12/991,221
the Examiner does not provide facts and/or reasons to support a finding that Ide or
Fukunaga, individually, discloses or suggests an apparatus capable of performing
steps of bending using alternate steps of clockwise and counterclockwise rotations
about a support member. See id. at 4—6. With respect to claim 3, the Examiner
finds Ide’s method, alone, would produce a coil having “a bulging portion . . .
formed ... in a concentrated manner in a side of the coil located between
predetermined adjacent. . . bent portions” (claim 3). See Final Act. 6—7.
Appellants contend Ide describes forming a coil using only clockwise
rotational movement, and Fukunaga discloses forming two bends in a pipe using a
counterclockwise rotational movement. App. Br. 10—12. Appellants argue the
Examiner has not identified a teaching or suggestion in either reference, or
otherwise explained sufficiently why one of ordinary skill in the art would have
had a reason, to modify Ide’s method so as form bends by alternating between
clockwise and counterclockwise rotational movements. Id. at 12.
The Examiner, in responding to Appellants’ argument, states:
It would have been obvious for a person of ordinary skill to apply [in
Ide’s invention] the counterclockwise direction as taught by Fukunaga
because this counterclockwise direction achieves the same result of
forming the bent portion in the conductor wire, and also would
achieve the same result of forming the claimed “bulging portion”
since the appellant’s claim requires the bulging portion to be formed
“by the support member in bending the flat rectangular conductor 90
degrees about the support member in a concentrated manner”, of
which the reference of Fukunaga would be able to perform.
Examiner’s Answer mailed Sept. 22, 2015 (“Ans.”), 8.
We agree with Appellants that the Examiner fails to provide the requisite
articulated reasoning with some rational underpinning to support the conclusion
of obviousness as to claims 1 and 2. See Reply Brief filed Nov. 10, 2015, 2-4.
The above quotation from page 8 of the Answer indicates that the Examiner
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Appeal 2016-001201
Application 12/991,221
improperly “use[d] the claimed invention as an instruction manual or ‘template’ to
piece together the teachings of the prior art so that the claimed invention is
obvious,” In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992). Because the
Examiner relied on improper hindsight reasoning in determining claims 1 and 2
would have been obvious, we do not sustain the Examiner’s rejection of these
claims over the combination of Ide and Fukunaga.
As noted above, claim 3 is drafted in product-by-process format. “[E]ven
though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself.” In re Thorpe, 111
F.2d 695, 697 (Fed. Cir. 1985). Appellants rely solely on attorney argument in
attempting to distinguish the coil produced by the process steps recited in claim 3
from the coil produced by Ide’s method. See App. Br. 8—9; Ans. 10. Because
Appellants have not provided persuasive evidence to refute the Examiner’s finding
that Ide’s method would have resulted in a coil having a bulging portion as
claimed, we are not convinced of error in the Examiner’s determination that Ide’s
method would have produced a stator as recited in claim 3.
In sum, we affirm the Examiner’s rejection of claim 3, but reverse the
rejection of claims 1 and 2.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. §1.136(a)(l)(iv).
AFFIRMED-IN-PART
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