Ex Parte Moss et al

Board of Patent Appeals and Interferences

Sep 17, 2003

09733667 (B.P.A.I. Sep. 17, 2003)

1 In rendering our decision, we have considered Appellants’ arguments presented in
the Brief, filed September 9, 2002 and the Reply Brief, filed November 25, 2002.
The opinion in support of the decision being entered today was not written for publication and
is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GRAHAM D. MOSS
and SCOTT CAMPBELL
____________
Appeal No. 2003-1407
Application No. 09/733,667
____________
ON BRIEF
____________
Before KIMLIN, JEFFREY T. SMITH and POTEATE, Administrative Patent
Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal the decision of the Primary Examiner finally rejecting
claims 9, 10 and 12 to 16.1 We have jurisdiction under 35 U.S.C. § 134.
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Application No. 09/733,667
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CITED PRIOR ART
As evidence of unpatentability, the Examiner relies on the following
references:
Hartzell 1,410,914 Oct. 23, 1917
Binder 3,819,967 Jun. 25, 1974
Ito et al. (Ito) 3,864,821 Feb. 11, 1975
BACKGROUND
Appellants’ invention relates to a method of manufacturing a commutator
which is adapted for mounting on a shaft of an electrical motor. According to the
specification, page 3, the present invention minimizes the intricate and expensive
manufacturing steps. Claim 9, which is representative of the claimed invention,
appears below:
9. A method of manufacturing a commutator adapted to be mounted
on a shaft of an electric motor for cooperation with electrically
conductive brushes of the motor, which comprises:
(a) molding a support member from an electrically insulating material,
said support member having a major outer surface portion divided into
subsections of lesser area by a plurality of rib members extending
upwardly from said outer surface portion;
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(b) cutting a sheet of electrically conductive material into commutator
segments of predetermined shape and dimensions for attachment to
said outer surface portions of said subsections; and thereafter
(c) attaching said commutator segments to said outer surface portions
of said subsections such that said segments form respective
commutator surfaces interrupted by said rib members,
wherein said support member has a generally cylindrical configuration
and said major surface portion is generally cylindrical, and
wherein said rib members have a heightwise dimension less than the
thickness of said commutator segments such that said commutator
segments are attached to said outer surface portions of said support
member, the respective upper surface of each segment is substantially
discontinuous with said respective upper surface of each next adjacent
rib member.
The Examiner rejected claims 9, 10, 12, 13 and 16 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Hartzell and Ito; claims 14 and 15 under 35
U.S.C. § 103(a) as unpatentable over the combination of Hartzell and Ito, as applied
to claims 9, 10, 12, 13 and 16, further combined with Binder. (Answer pp. 3-4).
Appellants have indicated (Brief, p. 4) that “[c]laims 9, 10 and 12-16 stand or
fall together.” We will consider the claims separately only to the extent that separate
arguments are of record in this appeal. 37 CFR § 1.192 (c)(7) and (8) (2001). See
In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (“if
the brief fails to meet either requirement, the Board is free to select a single claim
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Application No. 09/733,667
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from each group of claims subject to a common ground of rejection as representative
of all claims in that group and to decide the appeal of that rejection based solely on
the selected representative claim”).
Rather than reiterate the conflicting viewpoints advanced by the Examiner
and the Appellants concerning the above-noted rejections, we refer to the Answer
and the Briefs. Our review leads us to conclude that the Examiner’s § 103 rejections
are well founded. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-1472, 223 USPQ 785,
787-788 (Fed. Cir. 1984). We affirm primarily for the reasons advanced by the
Examiner and add the following primarily for emphasis.
DISCUSSION
The Examiner rejected claims 9, 10, 12, 13 and 16 under 35 U.S.C. § 103(a)
as unpatentable over the combination of Hartzell and Ito. The Examiner has found,
Answer page 3, that Hartzell discloses a method of manufacturing a commutator
which is the same as that claimed. The Examiner asserts the formed commutator of
Hartzell differs from the claimed invention by not specifying the heightwise
dimension of the separating ribs/teeth. (Answer, p. 3).
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Hartzell discloses a process for manufacturing a commutator that comprises
molding a cylindrical support member from an electrically insulating phenolic
resinous material. (Col. 1, ll. 53-58). The support member has a major outer surface
portion divided into subsections of lesser area by a plurality of teeth or tongues (rib
members) extending upwardly from the outer surface. (Fig. 1, Col. 1, ll. 74-80).
Hartzell discloses cutting a sheet of electrically conductive material into commutator
segments of predetermined shape and dimensions for subsequent attachment to the
outer surface of the support member such that the segments form commutator
surfaces interrupted by the rib members. (Col. 1, ll. 80–108). Hartzell includes an
additional step wherein the final commutator is turned or ground to equalize the
ribs/teeth with the surfaces of the conductive plates. (Col. 2, ll. 21-26). Hartzell
does not disclose that the height of the ribs/teeth is lower than the conductive plates.
The Examiner asserts that Ito discloses forming a commutator wherein
intervening ribs/teeth have a thickness that is less than the conductive commutator
segments. (Answer, pp. 3-4). According to Ito, when the insulator ribs/teeth of a
commutator project above the conductive segments undesirable contact occurs
between the brush and the commutator producing noise and reduced performance.
(Col. 2, ll. 13-17).
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The Examiner concludes that it would have been obvious to perform the
manufacturing method of Hartzell wherein the produced commutator has ribs/teeth
comprising a heightwise dimension below the heightwise dimension of the
conductive segment to prevent degradation in performance of the commutator.
(Answer, p. 4).
Appellants have presented several arguments attacking the Hartzell reference
individually. (Brief, pp. 5-6). Obviousness cannot be rebutted by attacking
references individually where the rejection is based upon the teachings of a
combination of references. A reference must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole. In re Merck & Co., 800
F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). In the present case, a person
of ordinary skill in the art would have recognized, as stated above, that when the
insulator ribs/teeth of a commutator project above the conductive segments
undesirable contact occurs between the brush and the commutator producing noise
and reduced performance. As stated above, Hartzell discloses the molding of a
cylindrical support, including ribs/teeth, from an electrically insulating phenolic
resinous material. In light of the recognition of poor performance, a person of
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ordinary skill in the art would have been motivated to mold the ribs/teeth of the
cylindrical support to a height that would not exceed the conductive segments.
Appellants argue that “[o]ne would not look to Ito et al. to modify Hartzell
since in Ito et al. the insulating material 3 in slits 2 is not part of the body 4 and is
thus not molded as part of the body 4.” (Brief, p. 6). This argument is not
persuasive because Hartzell recognized the interchangeability of forming the
ribs/teeth by molding or by inserting insulating bars. (See Col. 2).
Appellants argue that both Hartzell and Ito teach cutting material as a final
step of making the commutator. However, in the claimed method the height of the
rib and commutator segment thickness are taken into account. (Reply Brief, p. 3).
This argument is not persuasive because claim 9 includes the transitional
phrase “comprises” in defining the claimed subject matter. When a claim uses
“comprises” as its transitional phrase, that use creates a presumption that the recited
limitations are only part of the claimed subject matter and do not exclude additional,
unrecited elements. Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1271,
229 USPQ 805, 812 (Fed. Cir. 1986). The description of the heightwise dimension
of the rib in claim 9 does not preclude the use of a subsequent step.
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The Examiner rejected claims 14 and 15 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hartzell and Ito, as applied to claims 9, 10, 12,
13 and 16, further combined with Binder.
Appellants argue that “claims 14 and 15 are allowable for the reasons
advanced above with regard to claim 9 as amended, and for the additional reason that
the added subject matter thereof is neither taught nor suggested by the prior art of
record.” (Brief, p. 7).
The Examiner has presented factual determinations regarding the suitability of
using an adhesive in a commutator. These determinations seem reasonable.
Since Appellants have failed to specifically challenge the factual
determinations, we presume that they are in agreement with the Examiner. Thus, for
the reasons presented above regarding claim 9 and the reasons presented by the
Examiner we will uphold the rejection.
Based on our consideration of the totality of the record before us, having
evaluated the prima facie case of obviousness in view of Appellants’ arguments, we
conclude that the subject matter of claims 9, 10 and 12 to 16 would have been
obvious to a person of ordinary skill in the art from the combined teachings of the
cited prior art.
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CONCLUSION
The rejection of claims 9, 10, 12, 13 and 16 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hartzell and Ito and rejection of claims 14 and
15 under 35 U.S.C. § 103(a) as unpatentable over the combination of Hartzell and
Ito, as applied to claims 9, 10, 12, 13 and 16, further combined with Binder are
affirmed.
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Time for taking action
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED

)
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF
) PATENT
JEFFREY T. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
JTS/kis
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Application No. 09/733,667
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SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
186 WOOD AVENUE SOUTH
ISELIN, NJ 08830