Ex Parte MURAKAMI et al

Patent Trials and Appeals Board

Jun 17, 2019

14251750 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/251,750 04/14/2014
23373 7590 06/19/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA A VENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
FIRST NAMED INVENTOR
Tadashi MURAKAMI
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.
Q211182 5692
EXAMINER
ANDREWS, MICHAEL
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
06/19/2019 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 TADASHI MURAKAMI, KOUICHI OJIMA,
and SHINJI NISHIMURA
Appeal2018-000268
Application 14/251,750
Technology Center 2800
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
JASON V. MORGAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-3 and 6, which constitute all of the claims pending in this
application. 1 Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Mitsubishi Electric Corp.
App. Br. 2. Claims 4 and 5 have been objected as being dependent upon a
rejected base claim, but would otherwise be allowable if rewritten in
independent form to include the limitations of the base claim and any
intervening claims. Final Act. 8. Claim 7 has been withdrawn from
consideration. Id. at 3. An oral hearing was held in this appeal on June 6,
2019. A transcript of the oral hearing is being prepared and will be entered
into the record in due course.
Appeal 2018-000268
Application 14/251,750
Introduction
According to Appellants, the claimed subject matter relates to rotary
electric machine ( e.g., an alternator) (100) including housing (1) having
rotatably disposed therein rotor (3) and stator (5) onto which are welded bolt
passage members ( 11) for securely fastening stator ( 5) to housing ( 1) by
means of fastening bolts (9). Spec. ,r,r 1, 7, 13, 15-17. Figure 1 of the
Specification, reproduced below, is a depiction of the rotary electric
machine. Id. ,r 10.
10 0
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1 1 i lb
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---------
Figure 1 shows the rotary electric machine housing, the rotor, and
stator. Id.
2
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Appeal 2018-000268
Application 14/251,750
Figure 2, reproduced below, illustrates the stator in the rotary electric
machine of Figure 1. Id.
5
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FIG~ 2
'I 1
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As depicted in Figure 2 above, stator (2) includes stator core (6)
formed by 18 core blocks (7) arranged in an annular ring held in place by
circular frame (10) onto which are welded bolt passage members (11) for
securely attaching stator (5) to housing (1). Spec. ,r,r 15, 16.
Representative Claim
Independent claim 1 is representative, and is reproduced below with
the limitations at issue italicized:
1. A rotary electric machine comprising:
a housing;
a rotor that is rotatably disposed inside said housing;
a stator that comprises:
a stator core that is configured by arranging a plurality of
core blocks into an annular shape, said plurality of core blocks
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Application 14/251,750
each being prepared by laminating and integrating a
predetermined number of magnetic steel plates, and comprising
a circular arc-shaped yoke portion, and a tooth portion that
protrudes radially inward from an inner circumferential wall
surface of said yoke portion; and coils that are wound onto said
tooth portions of each of said plurality of core blocks,
said stator being held on said housing so as to surround
said rotor;
a frame that is produced so as to have a cylindrical shape,
said plurality of core blocks that are arranged into said annular
shape being inserted into and fixed to an internal portion
thereof; and
a bolt passage member that is produced as a solid body,
that is fixed to an outer circuniferential surface of said frame by
welding such that a longitudinal direction thereof is oriented in
an axial direction of said frame, and that comprises a bolt
passage aperture that passes through in said longitudinal
direction, wherein said stator is held on said housing by
fastening a bolt that is passed through said bolt passage aperture
from a first longitudinal end of said bolt passage member into a
fixing portion that is formed on said housing.
Rejection on Appeal
Claims 1-3 and 6 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Watanabe (US Pub. 2013/0062977 Al,
March 14, 2013), Trowbridge (US 2002/0117920 Al, August 29, 2002) and
Palma (US 5,196,749, March 23, 1993). Final Act. 4--10.
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Application 14/251,750
ANALYSIS 2
1. Principles of Law
A claim is unpatentable for obviousness if, to one of ordinary skill in
the pertinent art, "the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
question of obviousness is resolved on the basis of underlying factual
determinations, including "the scope and content of the prior art";
"differences between the prior art and the claims at issue"; and "the level of
ordinary skill in the pertinent art."3 Graham v. John Deere Co., 383 U.S. 1,
17 (1966).
A patent claim "is not proved obvious merely by demonstrating that
each of its elements was, independently, known in the prior art." KSR,
550 U.S. at 418. An obviousness determination requires finding "both 'that
a skilled artisan would have been motivated to combine the teachings of the
prior art references to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of success in doing so."'
Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359,
2 We refer to Appellants' arguments and the Examiner's findings and
conclusions set forth in the Final Office Action (mailed November 8, 2016)
("Final Act."), the Appeal Brief (filed June 1, 2017) ("App. Br."), the
Answer ( mailed August 10, 201 7) ("Ans."), and the Reply Brief ( filed
October 10, 2017) ("Reply Br.") for the respective details.
3 Additionally, secondary considerations, such as "commercial success, long
felt but unsolved needs, failure of others, etc., might be utilized to give light
to the circumstances surrounding the origin of the subject matter sought to
be patented. As indicia of obviousness or nonobviousness, these inquiries
may have relevancy." Graham, 383 U.S. at 17-18.
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Application 14/251,750
1367---68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
(for an obviousness analysis, "it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does").
We analyze the obviousness rejection with the principles identified
above in mind.
2. Obviousness Rejection
Appellants argue that the Examiner erred in rejecting claims 1-3 and
6 as obvious over the combination of Watanabe, Trowbridge, and Palma
because none of the cited references teaches or suggests a bolt passage
member fixed to an outer circumferential surface of a frame by welding, as
recited in independent claim 1. App. Br. 7. In particular, Appellants argue
that Trowbridge fails to provide a structural basis to modify the bolt hole
24 H portions of Watanabe, and, therefore, fails to cure the admitted
deficiencies thereof. Id. at 10. According to Appellants, while
Trowbridge' s alternator may disclose a stator frame, Trowbridge' s stator
frame does not teach mounting ears internal to a housing. Id. at 11. Instead,
it discloses ears that are external to the housing for attaching the alternator to
an engine. Id. Therefore, Appellants submit that Trowbridge's external ears
would be incompatible with Watanabe's stator core having a cylindrical
frame attached internally to a housing using bolt holes 24H. Id. at 11-12
(citing Watanabe ,r 64; Trowbridge ,r 4). Consequently, Appellants submit
that the proposed combination of Trowbridge and Watanabe would result in
locating externally mounting ears in various positions to mount the housing
to different vehicle models. Id. at 12. This argument is not persuasive.
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Application 14/251,750
At the outset, we note Appellants do not dispute the Examiner's
finding that Watanabe teaches a bolt passage member ( albeit made from the
same material as the frame) fixed to an outer circumferential surface of a
frame for securing the stator to the housing by means of a bolt. Final Act.
5-6 (Watanabe ,r,r 61, 64). We further note that, to complement Watanabe's
teaching, the Examiner relied upon Trowbridge for its teaching of a stator
frame having affixed on its outer circumference separately formed mounting
ear portions (3), each including a bolt passage member (4). Id. at 6 (citing
Trowbridge Fig. 7, ,r,r 34--42); Ans. 2-3. Therefore, Appellants' argument
alleging that the Examiner proposes combining the external ear portions of
Trowbridge with Watanabe's internal bolt passage member is a
misapprehension of the findings made by the Examiner. On this record, the
ordinarily-skilled artisan would readily appreciate that the proposed
combination of Watanabe with Trowbridge, and Palma would predictably
result in the stator frame being separately coupled with ear member portions,
each including a bolt passage member welded thereon ( as suggested by
Palma) to secure the stator inside the housing of an alternator. Accordingly,
we agree with the Examiner that the proposed combination would not
change the purpose or manner of operation of Trowbridge. Ans. 3--4.
Additionally, we find the Examiner's proposed combination of the
cited teachings of Watanabe, Trowbridge, and Palma is no more than a
predictable arrangement of old elements, with each performing the same
function it had been known to perform, yielding no more than one would
expect from such an arrangement. KSR, 550 U.S. at 416. The ordinarily-
skilled artisan, being "a person of ordinary creativity, not an automaton,"
would be able to fit the teachings of the cited references together like pieces
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Application 14/251,750
of a puzzle to predictably result in the frame of a stator being separately
coupled with ear member portions, each including a bolt passage member
welded thereon (as suggested by Palma) to secure the stator inside the
housing of an alternator. Id. at 420-21. Because the Examiner's proffered
combination would not have been "uniquely challenging or difficult for one
of ordinary skill in the art," the Examiner's proposed modification would
have been within the purview of the ordinarily skilled artisan. Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)
(citing KSR, 550 U.S. at 418).
Next, Appellants contend because Watanabe's "stator core 24 K is
configured integrally in an annular shape, the frame does not need to hold
the core blocks being arranged in an annular shape. That is, Watanabe does
not disclose a frame for fixing the core blocks being arranged into an annular
shape .... Accordingly, Watanabe fails to disclose a 'plurality of blocks that
are inserted into and fixed to a frame."' App. Br. 13. Further, Appellants
submit that because Watanabe's stator core portion 24K corresponds to the
recited circular arc-shaped yoke portion, as opposed to the recited frame,
Watanabe does not teach both the frame and the arc-shape yoke portion. Id.
at 14. This argument is not persuasive.
As depicted in Figure 11, Watanabe discloses stator core 24 with
circular arc-shaped yoke portions (24 T, 24C) arranged an annular shape and
held together by frame (24 K) having formed thereon ear portions (24 H),
each including a bolt passage for securing the stator to the housing.
Therefore, on the record before us, we are satisfied that Watanabe
reasonably teaches the disputed limitations. Consequently, we are not
persuaded of error in the Examiner's obviousness rejection of claim 1.
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Regarding the rejection of claims 2, 3, and 6, because Appellants have
either not presented separate patentability arguments or have reiterated
substantially the same arguments as those previously discussed for
patentability of claim 1 above, those claims fall therewith. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv) (2016).
DECISION
For the above reasons, we affirm the Examiner's obviousness
rejection of claims 1-3, and 6.
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
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