Ex Parte Moeleker et al

Board of Patent Appeals and Interferences

Sep 29, 2009

10878691 (B.P.A.I. Sep. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PETRUS JOANNES JOSEPH MOELEKER,
HENDRIK PIETER JACOBUS DE BOCK, and
JOHN RUSSELL YAGIELSKI
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Appeal 2009-001,718
Application 10/878,691
Technology Center 2800
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Decided: September 29, 2009
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Before ROBERT E. NAPPI, MARC S. HOFF, and
KARL EASTHOM, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-001,718
Application 10/878,691

This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-16 and 21-26.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the Examiner’s rejection of these claims.

INVENTION
The invention is directed to a pressurized air-cooled rotating electrical
machine and method of use wherein the temperature inside the rotating
electrical machine is controlled by increasing or decreasing pressure based
upon the required air flow for a desired power output and efficiency rating.
See Spec. 1-2. Claim 1 is representative of the invention and reproduced
below:
1. A pressurized air-cooled rotating electrical machine
comprising:
a sealed housing;
a stator disposed within the sealed housing;
a rotor disposed within the stator;
a compressor operable to raise air pressure within the sealed
housing;
a temperature feedback device disposed within the sealed
housing, wherein the temperature feedback device is operable
to provide a signal representative of temperature within the
rotating electrical machine; and
a controller coupled to the temperature feedback device and
the compressor, wherein the controller is operable to regulate
the air pressure within the sealed housing based on the
temperature within the rotating electrical machine.

1 Appellants cancelled claims 17-20 in response to a Requirement for
Restriction/Election filed March 22, 2006.
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REFERENCES
Watanabe US 3,932,778 Jan. 13, 1976

Lulay US 6,037,683 Mar. 14, 2000

Chen US 6,639,334 B2 Oct. 28, 2003

REJECTIONS AT ISSUE
The Examiner rejected claims 1-3, 7, 8, 11-15, and 24-26 under 35
U.S.C. § 102(e) as being anticipated by Chen. Ans. 3-6.
The Examiner rejected claims 4-6 and 9 under 35 U.S.C. § 103(a) as
being unpatentable over Chen in view of Lulay. Ans. 6-7.
The Examiner rejected claims 10, 16, 21, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Chen in view of Lulay and Watanabe.
Ans. 7-8.
The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as being
unpatentable over Chen in view of Watanabe. Ans. 8-9.

ISSUES
Rejection of claims 1-3, 7, 8, 11-15, and 24-26 under 35 U.S.C. § 102(e) as
being anticipated by Chen

Appellants argue on pages 5-7 of the Appeal Brief and pages 2-5 of
the Reply Brief that the Examiner’s rejection of claims 1-3, 7, 8, 11-15, and
24-26 is in error. We select claim 1 as representative of the group
comprising claims 1-3, 7, 8, 11-15, and 24-26 since Appellants did not
separately argue claims 1-3, 7, 8, 11-15, and 24-26 with particularity. 37
C.F.R. § 41.37(c)(1)(vii). Appellants argue that Chen does not teach a
sealed housing. App. Br. 6; Reply Br. 2. In addition, Appellants argue that
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Chen does not teach a compressor that will regulate the air inside the sealed
housing.
Thus, with respect to claims 1-3, 7, 8, 11-15, and 24-26, Appellants’
contentions provide us with two issues. (1) Have Appellants shown that the
Examiner erred in finding that Chen teaches a sealed housing? (2) Have
Appellants shown that the Examiner erred in finding that Chen teaches a
compressor that will regulate the air inside the sealed housing?

Rejection of claims 4-6 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Chen in view of Lulay

Appellants argue on page 7 of the Appeal Brief that the Examiner’s
rejection of claims 4-6 and 9 is in error. Appellants reason that claims 4-6
and 9 are allowable based upon their dependency on claim 1. App. Br. 7.
Thus, Appellants’ arguments with respect to the Examiner’s rejection of
claims 4-6 and 9 present us with the same issues as claim 1.

Rejection of claims 10, 16, 21, and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Chen in view of Lulay and Watanabe

Appellants argue on pages 7-9 of the Appeal Brief that the Examiner’s
rejection of claims 10, 16, 21, and 22 is in error. Appellants make similar
arguments for claims 10, 16, 21, and 22 as for claim 1. App. Br. 8-9; Reply
Br. 4-5. In addition, Appellants argue that the combination of Chen with
Lulay and Watanabe is improper.
Thus, with respect to claims 10, 16, 21, and 22 Appellants’ arguments
present us with the same issues as claim 1. Additionally, Appellants’
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arguments present us with the issue: have Appellants shown that the
Examiner erred in combining Chen with Lulay and Watanabe?

Rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over
Chen in view of Watanabe

Appellants argue on pages 9-11 of the Appeal Brief and 4-5 of the
Reply Brief that the Examiner’s rejection of claim 23 is in error. Appellants
make similar arguments for claim 23 as for claim 1. App. Br. 9-11; Reply
Br. 4-5. In addition, Appellants argue that the combination of Chen with
Watanabe is improper.
Thus, with respect to claim 23 Appellants’ arguments present us with
the same issues as claim 1. Additionally, Appellants’ arguments present us
with the issue: have Appellants shown that the Examiner erred in combining
Chen with Watanabe?
FINDINGS OF FACT (FF)
1. “Regulate” is defined as “To adjust the amount [of].” Webster’s II
Dictionary (3rd ed. 2005).
Chen
2. Chen discloses an assembly and method used to improve reliability
and electric motor performance by removing dissipated heat from
end-windings of a sealed electric motor through the use of jet
impingement cooling. Col. 1, ll. 7-13.
3. The jet impingement assembly comprises a motor housing with
inlets, a temperature controlling fluid generating device, and
outlets. Col. 3, l. 64-col. 4, l. 19.
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4. The inlets, which may include nozzles, are used to supply the
temperature controlled fluid stream from the generating device to
the end-winding. Depending on the required amount of cooling,
the fluid stream can be any temperature, pressure, or diameter
necessary. Col. 4, ll. 1-11 and Fig. 2.
5. The outlets are operable to allow fluid to escape from the housing
to the outside atmosphere. Based upon the amount of cooling
desired, the inlets and outlets may be opened or closed or adjusted
in size or number. Col. 4, ll. 16-22 and Fig. 2.
6. A temperature sensor is located in the end-winding which is used
to regulate the temperature and pressure setting of the fluid stream.
Col. 4, ll. 22-27 and 66-67 and Fig. 2.
Lulay
7. Lulay discloses a stator and a rotor enclosed in a pressure-tight
casing. Abstract.
8. The pressure-tight casing includes shaft seals that prevent air from
escaping through the shaft while cooling air is applied to the stator
and rotor at super atmospheric pressure. Col. 4, l. 51-col. 5, l. 26.
Watanabe
9. Watanabe discloses a device that cools an electric rotary machine
in order to increase the output power of the machine. Col. 2, ll. 21-
28.
10. The system contains a housing containing ventilation windows and
an exhaust chamber. A cooling gas is injected into the chamber.
The ventilation windows have blowers mounted to them. The
blowers reduce the pressure in the exhaust chamber to below
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atmospheric pressure by venting the gas to the atmosphere. Col. 2,
l. 67 through col. 3, l. 6 and col. 4, ll. 9-25.

PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980 (Fed. Cir. 1995) (en banc).
“[I]nterpreting what is meant by a word in a claim is not to be confused with
adding an extraneous limitation appearing in the specification, which is
improper.” In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348 (Fed.
Cir. 2002) (internal quotation marks and citations omitted; emphasis in
original).
On the issue of obviousness, the Supreme Court has stated that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. at 417.
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
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must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.

Id. at 417. “One of the ways in which a patent’s subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
patent’s claims.” Id. at 419-420.
It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed in the prior art, the burden of
proof is shifted to applicant to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
product. In re Spada, 911 F.2d 705, 708-709 (Fed. Cir. 1990); In re Best,
562 F.2d 1252, 1255 (CCPA 1977). “Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima face obviousness’ under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.” Best, 562 F.2d at 1255 (CCPA
1977)
The Examiner bears the initial burden of presenting a prima facie case
of obviousness, and Appellant has the burden of presenting a rebuttal to the
prima facie case. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Appellant has the burden, on appeal to the Board, to demonstrate error in the
Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006).

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ANALYSIS
Rejection of claims 1-3, 7, 8, 11-15, and 24-26 under 35 U.S.C. § 102(e) as
being anticipated by Chen

Appellants’ contentions have not persuaded us that the Examiner’s
rejection of claims 1-3, 7, 8, 11-15, and 24-26 is in error. Representative
claim 1 recites “a sealed housing.” Appellants argue that Chen does not
teach a sealed housing because Chen’s housing contains outlets that allow
fluid to escape to the outside atmosphere from the housing. App. Br. 6;
Reply Br. 2-3. While Chen does in fact contain outlets to allow fluid to
escape (FF 5), this fact does not preclude the housing from being sealed.
Chen discloses that the outlets are “operable” to allow fluid to escape from
the housing. FF 5. The outlets may be opened or closed depending upon the
desired amount of cooling of the end-windings. FF 5. When the outlets are
closed, the housing is sealed. Therefore, Appellants’ arguments are not
found to be persuasive.
Claim 1 additionally recites “a controller coupled to the temperature
feedback device and the compressor, wherein the controller is operable to
regulate the air pressure within the sealed housing based on the temperature
within the rotating electrical machine.” Appellants argue that Chen does not
teach regulating the air pressure within the sealed housing because the
pressure disclosed in Chen is the “driving force for the temperature
controlled fluid stream” and not the internal pressure of the housing. App.
Br. 6; Reply Br. 3 (citing Chen, column 4, line 6). Appellants’ Specification
does not provide a specific definition for the term “regulate.” Therefore, we
look to the dictionary definition of the term “regulate,” as “to adjust the
amount.” FF 1. As a result, in order to meet the claim limitation, Chen
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would need to teach adjusting the amount of pressure within the housing
depending on the temperature of the rotating electrical machine. Chen
discloses this limitation.
Chen discloses a jet impingement assembly that comprises inlets,
outlets, and a temperature controlling fluid generating device. FF 3. The
inlets direct a cool stream of fluid into the interior of the housing at a
particular pressure. FF 4. A temperature sensor is located in the end-
winding. FF 6. Based upon the end-winding temperature and the desired
cooling, a particular jet temperature and pressure is set and the outlets are
opened and/or closed. FF 4, 5. A result of controlling jet pressure and the
outlet flow is that the pressure within the housing will be adjusted.
Therefore, we do not find Appellants’ arguments to be persuasive and we
sustain the Examiner’s rejection of claims 1-3, 7, 8, 11-15, and 24-26.

Rejection of claims 4-6 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Chen in view of Lulay

Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 4-6 and 9. Claims 4-6 and 9 ultimately
depend upon claim 1 and as such include the same limitations discussed
supra with respect to claim 1. Appellants’ arguments present the same
issues discussed with respect to claim 1 (App. Br. 7). Therefore, we sustain
the Examiner’s rejection of claims 4-6 and 9 for the reasons discussed supra
with respect to claim 1.

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Rejection of claims 10, 16, 21, and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Chen in view of Lulay and Watanabe

Appellants’ arguments have not persuaded us of error in the
Examiner’s rejection of claims 10, 16, 21, and 22. Claim 10 ultimately
depends upon claim 1 and claim 16 ultimately depends upon claim 11.
Additionally, claim 21 contains similar limitations to claim 1 and 11 and
claim 22 ultimately depends upon claim 21. Appellants’ arguments present
the same issues discussed with respect to claim 1 (App. Br. 8). Therefore,
we sustain the Examiner’s rejection of claims 10, 16, 21, and 22 for the
reasons discussed supra with respect to claim 1. In addition, Appellants
argue that the combination of Chen with Lulay and Watanabe is
unreasonable because there is no basis to combine the references and
combining them would “render each of these devices unsuitable for its
disclosed purpose and would substantially alter its fundamental operation.”
App. Br. 9; Reply Br. 5. We disagree.
In KSR, the Supreme Court stated that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 416. The
combination of Lulay and Watanabe with Chen yields predictable results.
Chen discloses a system that cools end-windings through the use of a
jet impingement assembly that includes a temperature controlling fluid
generating device, inlets for directing a cool stream of fluid, and outlets
allowing fluid to escape from the sealed housing. FF 2, 3. Lulay discloses a
system wherein a pressure-tight casing contains a seal between the stator and
rotor. FF 7, 8. Watanabe discloses a system wherein a pump reduces air
pressure in the housing to below atmospheric pressure. FF 10.
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All of the references disclose ways to cool rotary machines. Lulay’s
pressure tight case includes shaft seals to prevent air from escaping through
the shaft while cooling air is applied to the stator and rotor at super
atmospheric pressure. FF 8. Watanabe’s blowers allow the heated air to be
removed more quickly from the interior of the housing. FF 10. Chen’s jet
impingement system allows a temperature control fluid to be injected onto
end-windings in order to control the temperature of the windings and the
housing. FF 3, 4. Therefore, we consider using Lulay’s seal to seal the
housing around the shaft to form a pressure-tight casing with Watanabe’s
pump operable to reduce the air pressure inside the housing below
atmospheric pressure with Chen’s jet impingement cooling system to be
nothing more than using known devices to perform known functions. As
such, the combination is obvious.
In addition, the Examiner has provided explicit motivation to combine
the references. Ans. 8. While KSR does not require a specific motivation,
providing an “articulated reasoning with some rational underpinning” will
support a legal conclusion of obviousness. KSR, 550 U.S. at 418. The
Examiner stated, on page 8 of the Answer, that the combination would
increase “output of the motor.” Appellants have not provided sufficient
argument or evidence to contradict the Examiner’s finding. In the absence
of such sufficient argument or evidence, we find the Examiner’s motivation
to be reasonable.
Thus, for the reasons stated above, we sustain the Examiner’s
rejection of claims 10, 16, 21, and 22.

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Rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over
Chen in view of Watanabe

Appellants’ contentions have not persuaded us that the Examiner’s
rejection of claim 23 is in error. Claim 23 recites limitations directed to the
control of internal housing pressure based on temperature which are similar
in scope as the limitations discussed above with respect to claim 1. As
discussed above, we are not persuaded that the Examiner erred in finding
that a result of controlling jet pressure and the outlet flow is that the pressure
within the housing will be adjusted. Therefore, we sustain the Examiner’s
rejection of claim 23 for the reasons discussed supra with respect to claim 1.
In addition, Appellants argue that the combination of Chen with Watanabe is
unreasonable because there is no basis to combine the references and
combining them would “render each of these devices unsuitable for its
disclosed purpose and would substantially alter its fundamental operation.”
App. Br. 9; Reply Br. 5. We disagree.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR, 550 U.S. at 416. The combination of Watanabe with Chen yields
predictable results.
Chen discloses a system that cools end-windings through the use of a
jet impingement assembly that includes a temperature controlling fluid
generating device, inlets for directing a cool stream of fluid, and outlets
allowing fluid to escape from the sealed housing. FF 2, 3. Watanabe
discloses a system wherein a pump reduces air pressure in the housing to
below atmospheric pressure. FF 10.
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Both of the references disclose ways to cool rotary machines.
Watanabe’s blowers allow the heated air to be removed more quickly from
the interior of the housing. FF 10. Chen’s jet impingement system allows a
temperature control fluid to be injected onto end-windings in order to control
the temperature of the windings and the housing. FF 3, 4. Therefore, we
consider using Watanabe’s pump operable to reduce the air pressure inside
the housing below atmospheric pressure with Chen’s jet impingement
cooling system to be nothing more than using known devices to perform
known functions. As such, the combination is obvious.
In addition, the Examiner has provided explicit motivation to combine
the references. Ans. 8. While KSR does not require a specific motivation,
providing an “articulated reasoning with some rational underpinning” will
support a legal conclusion of obviousness. KSR, 550 U.S. at 418. The
Examiner stated, on page 9 of the Answer, that the combination would
increase “output of the motor.” Appellants have not provided sufficient
argument or evidence to contradict the Examiner’s finding. In the absence
of such sufficient argument or evidence, we find the Examiner’s motivation
to be reasonable.
Thus, for the reasons stated above, we sustain the Examiner’s
rejection of claim 23.

CONCLUSIONS OF LAW
Appellants have not shown that the Examiner erred in finding that
Chen teaches a sealed housing.
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Appellants have not shown that the Examiner erred in finding that
Chen teaches a compressor that will regulate the air inside the sealed
housing.
Appellants have not shown that the Examiner erred in combining
Chen with Lulay and Watanabe.
Appellants have not shown that the Examiner erred in combining
Chen with Watanabe.

SUMMARY
The Examiner’s rejection of claims 1-16 and 21-26 is affirmed.
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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

ELD

GENERAL ELECTRIC COMPANY (PCPI)
C/O FLETCHER YODER
P. O. BOX 692289
HOUSTON, TX 77269-2289

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