Ex Parte Molteni

Patent Trial and Appeal Board

Nov 25, 2016

13381801 (P.T.A.B. Nov. 25, 2016)

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.
13/381,801 12/30/2011 Danilo Molteni P946-US 4955
72932 7590 11/25/2016
Steinfl & Bruno LLP
155 N. Lake Ave. Ste 700
Pasadena, CA 91101
EXAMINER
TALPALATSKI, ALEXANDER
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
11/25/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANILO MOLTENI
__________

Appeal 2015-004705
Application 13/381,801
Technology Center 2800
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JULIA HEANEY, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-004705
Application 13/381,801

2
Appellant appeals under 35 U.S.C. § 134 the final rejection of claims
1–5. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to an electromagnet used in a device
for moving tubular members and bundles of tubes (Spec. 1:3–5). The
allegedly novel aspect of the invention is that the laterally dispersed
magnetic field is eliminated in the device (Spec. 1:5–6). The electromagnet
structure uses ferromagnetic side panels of a suitable thickness to short-
circuit substantially the whole lateral flux thereby preventing the dispersion
of the flux (Spec. 6:26–31; 7:1–3; Fig. 2).
Claim 1 is illustrative (emphasis added to highlight argued limitation):
1. An electromagnet comprising:
at least two solenoids each wound on a respective core of a polar
yoke, side panels,
bottom baffles for protection of the at least two solenoids,
first polar shoes at the cores of the polar yoke, and
second polar shoes at poles of the polar yoke;
wherein:
the polar yoke has a shape corresponding to at least two aligned E-
shaped yokes with at least two cores and three poles,
the side panels are made from ferromagnetic material and
magnetically connect the poles while being magnetically insulated from the
cores, and
the side panels have a thickness sized such that the side panels are
suitable to short-circuit the whole lateral flux of a magnetic field generated
by the electromagnet and to convey the lateral flux towards the second polar
shoes,
wherein, during operation, the at least two cores have a first polarity,
and the side panels and the at least three poles have a second polarity
opposite to the first polarity.

Appeal 2015-004705
Application 13/381,801

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Appellant appeals the following rejection:
Claims 1–5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Cardone ’582 (US 4,847,582, issued July 11, 1989) in view of Chernikov et
al. (US 4,684,112, issued Aug. 4, 1987) (“Chernikov”) and Cardone ’625
(US 4,956,625, issued Sept. 11, 1990).
Appellant’s argument focus on the subject matter of claim 1 only
(App. Br. 5–15). Claims 2–5 will stand or fall with our analysis of the
rejection of claim 1.

FINDINGS OF FACT & ANALYSIS
The Examiner finds that Cardone ’582 teaches all the limitations of
claim 1, except for the entire flux path passing through the side panels or
that the cores have a first polarity and the poles have a second polarity (Final
Act. 2–3). The Examiner finds that Chernikov teaches side panels (8) that
carry the whole lateral flux (Final Act. 3). The Examiner finds that Cardone
’625 teaches in Figure 2 that all poles 15 have a first polarity and all cores
13 and side panels have a second polarity. Id. The Examiner concludes that
“it would have been obvious to make the wall thicknesses of Cardone to
carry the whole lateral flux as taught by Chernikov in order to provide
sufficient safety and proper functionality by not having objects attracted to
unwanted locations on the device due to outwardly extending flux lines.” Id.
The Examiner further concludes that it would have been obvious to
configure the device of Cardone ’582 with the pole/core polarity
configuration of Cardone ’625 to provide an increased number of gripping
locations. Id.
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Application 13/381,801

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Appellant argues that the Examiner’s combination of the teachings of
Cardone ’582 and Cardone ’625 are based on impermissible hindsight (App.
Br. 5–7; Reply Br. 3). Appellant contends that Cardone ’582 and Cardone
’625 operate in a different way and so to combine Cardone ’625’s multiple
cores having the same polarity with Cardone ’582’s electromagnet that uses
cores with opposite polarity would have frustrated the purpose of Cardone
’582 and rendered Cardone ’582’s electromagnet unsuitable for its intended
purpose (App. Br. 8–11). Appellant argues that operating Cardone ’582
according to Cardone ’625’s method would not have worked because control
of the magnetization cores 29 of Cardone ’582’s Figure 6 would not be
possible (App. Br. 13).
Claim 1 is directed to an electromagnet (i.e., a device or apparatus).
Claim 1 recites the structure of the electromagnet as including at least two
cores and at least three poles. Claim 1 recites that “during operation, the at
least two cores have a first polarity, and the side panels, and the at least three
poles have a second polarity opposite to the first polarity” (emphasis added).
The claim language plainly requires that the electromagnet is structured so
that during its use the at least two cores have a polarity opposite that of the
at least three poles. In other words, the distinction argued by Appellant is
directed to how the device is used rather than a difference in the structure of
the prior art.
Appellant’s argument that Cardone ’582 and Cardone ’625 would not
have been combined because doing so would frustrate the purpose of
Cardone ’582 or render it unsuitable for its intended purpose fails to address
the Examiner’s specific rejection. The Examiner’s position is that Cardone
’582 discloses the structure of the electromagnet recited in claim 1 with the
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Application 13/381,801

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exception of the entire magnetic flux passing through the side panels (Final
Act. 3). The Examiner relies upon Chernikov to teach using side panels on
an electromagnet to carry the whole lateral flux. Id. Appellant does not
contest the Examiner’s conclusion that it would have been obvious to
combine the teachings of Chernikov and Cardone ’582 (App. Br. 5–15).
With regard to the claim limitation that during operation there are at
least two cores and at least three poles having opposite polarity, the
Examiner further finds that Cardone ’625 teaches this claim requirement as a
different configuration of Cardone ’582’s (Final Act. 3). The Examiner
finds that the polarity of the magnetic field can be easily changed by
controlling the energizing of the coils (Ans. 4). The Examiner finds that
Cardone ’582 is capable of operating the electromagnet according to
Cardone ’625’s mode of operation. Id. In other words, the Examiner finds
that Cardone ’582 as modified by Chernikov has all the structure recited in
claim 1 and thus would have been capable of having at least two cores and at
least three poles of opposite polarity. The Examiner’s rejection is based
upon the capability of Cardone ’582’s electromagnet structure. Appellant’s
arguments regarding the frustration of purpose or the rendering unsuitable
for its intended purpose fail to address the Examiner’s position that Cardone
’582’s structure is capable of operating so that there are two cores and three
poles with opposite polarity.
Appellant argues that “modified device obtained by combining
Cardone ’582 and Cardone ’625 would not work since control of the
magnetization of magnetic cores 29 of Fig. 6 of Cardone ’582 would not be
possible” (App. Br. 13). Appellant contends that the time for magnetization
of Cardone ’582’s permanent magnet is much shorter than the time for
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Application 13/381,801

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magnetization of Cardone ’625’s electromagnet so that applying the longer
duration pulses of Cardone ’625 to Cardone ’582 would burn out the coils
(App. Br. 12–14, Reply Br. 6). Appellant refers to Figures C and D on
pages 12 and 14 of the Appeal Brief as showing the difference in operation
between Cardone ’582 and Appellant’s invention.
Appellant’s arguments and evidence do not demonstrate that Cardone
’582 is incapable of operating so that at least two cores and at least three
poles have opposite polarity. Appellant’s evidence relies on attorney
argument that operating Cardone ’582 according to Cardone ’625 would
burn the coils and ruin the device. Attorney argument, however, cannot take
the place of evidence in the record. In re Schulze, 346 F.2d 600, 602 (CCPA
1965). Appellant’s Figure C on page 12 is said to show how Cardone ’582
functions. Appellant’s Figure D on page 14 shows how Appellant’s
currently claimed invention operates (App. Br. 13). These figures do not
specifically compare how Cardone ’625 operates as compared to Cardone
’582.
Contrary to Appellant’s argument, Cardone ’582 describes main
magnet core 18 as “consisting of magnetically reversible permanent
magnets” (col. 3, ll. 52–53). Cardone ’625 similarly teaches that magnet 14
are “reversible magnets” and “permanent magnets 14 and 16” (col. 3, l. 13,
50). It appears that Cardone ’582 and Cardone ’625 each use permanent
magnets as part of the electromagnet. Therefore, Appellant’s argument does
not persuade us that Cardone ’582’s electromagnet structure is incapable of
operating as demonstrated in Cardone ’625.
On this record, we affirm the Examiner’s § 103 rejection of all the
pending claims over Cardone ’582 in view of Chernikov and Cardone ’625.
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DECISION
The Examiner’s decision 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).

ORDER
AFFIRMED