Ex parte NEUENSCHWANDER

Board of Patent Appeals and Interferences

Aug 5, 1997

08262231 (B.P.A.I. Aug. 5, 1997)

Application for patent filed June 20, 1994. According1
to appellant, this application is a division of Application
07/903,372, June 24, 1992, now U.S. Patent No. 5,349,741,
issued September 27, 1994.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THOMAS R. NEUENSCHWANDER
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Appeal No. 96-4104
Application 08/262,2311
________________
ON BRIEF
________________
Before CALVERT, ABRAMS and McQUADE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 8 to
12 and 24 to 27, all the claims remaining in the application.
Claim 8 is illustrative of the subject matter in issue:
Appeal No. 96-4104
Application 08/262,231
The examiner indicates on page 2 of the examiner’s2
answer that an alternative rejection of the claims as
anticipated by Neuenschwander, under 35 U.S.C. § 102(b), has
been withdrawn.
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8. An apparatus for manufacturing electric motor parts
from a sheet of stock material, said apparatus comprising:
a blanking station;
first means for guiding sheet stock material to said
blanking station;
second means at said blanking station for blanking
generally planar laminas from said sheet stock material;
third means for forming spacing means in said generally
planar laminas at predetermined locations thereof; and
fourth means for relatively rotating said laminas so that
said spacing means of adjacently positioned laminas are offset
whereby each of said laminas have surfaces which when
positioned adjacently are separated from adjacent lamina
surfaces by said spacing means.

The references relied on by the examiner in the final
rejection are:
Diederichs 4,538,345 Sept. 3, 1985
Neuenschwander 4,619,028 Oct. 28, 1986
Claims 8 to 12 and 24 to 27 stand finally rejected under
35 U.S.C. § 103 as unpatentable over Neuenschwander in view of
Diederichs, under 35 U.S.C. § 103.2
The essence of the rejection is stated on pages 3 to 4 of
the examiner’s answer as follows:
Appeal No. 96-4104
Application 08/262,231
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It would have been obvious to one skilled in the art
at the time of the invention to modify the
Neuenschwander process to include forming spacing
means, stacking the lamina such that they are
spaced, annealing the stack, and then axially
compressing the annealed stack in order to realize
the advantages of “electrically ungraded” core
laminas as discussed in the Diederichs reference.
Similarly, one skilled in the art, having decided to
so modify the Neuenschwander method, would have
found it obvious to modify the Neuenschwander Figure
3 apparatus with an additional punch(es) to create
the spacing means structure of Diederichs. Having
provided such means for forming spacing means,
normal 180 degree rotation of alternate lamina as
disclosed would achieve the claimed function, i.e.,
spaced laminas.
After fully considering the record in light of the
arguments presented in the appellant’s brief and the
examiner’s answer, we conclude that the rejection should not
be sustained.
In the first place, we disagree with the examiner that
“normal 180 degree rotation of alternate lamina [of
Neuenschwander, modified to provide spacing means as disclosed
by Diederichs at 13-17 and 23-27 [sic: 23, 24 and 26-28],]
would achieve the claimed function, i.e., spaced laminas”
(answer, page 4). As appellant points out on page 8 of the
brief, if the lamina shown in Diederichs Figure 1 were rotated
180E, the spacing means would nest and not separate the
Appeal No. 96-4104
Application 08/262,231
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laminas; for example, spacing means (tab) 13 would nest with
tab 17.
More fundamentally, however, we do not consider that one
of ordinary skill in the art would have found the claimed
subject matter obvious from the combination of Neuenschwander
and Diederichs, because Diederichs discloses alternating two
different laminas, the laminas of Figures 1 and 2, in a stack
so that the spacing tabs of each lamina will not coincide with
the spacing tabs of the other lamina (column 2, lines 60 to
65, and column 3, line 63 to column 4, line 2). By contrast,
the claimed apparatus includes (emphasis added):
[F]ourth means for relatively rotating said
laminas so that said spacing means of adjacently
positioned laminas are offset whereby each of said
laminas have surfaces which when positioned
adjacently are separated from adjacent lamina
surfaces by said spacing means.
While Neuenschwander does disclose a means for relatively
rotating adjacent laminas (e.g., column 3, lines 41 to 46,
column 4, lines 39 to 44, and column 8, lines 55 to 61), we do
not consider that the Diederichs disclosure would have
suggested to one of ordinary skill modification of the
Neuenschwander apparatus to provide the claimed “fourth means”
because Diederichs does not cause the disclosed spacing means
Appeal No. 96-4104
Application 08/262,231
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to be effective by relatively rotating adjacent laminas, but
rather by alternately stacking two different laminas, the
spacing means on one being positioned differently from the
spacing means on the other.
Absent any disclosure of relative rotation of adjacent
laminas by Diederichs, there would be no suggestion to one of
ordinary skill to provide Neuenschwander with a means for
relatively rotating adjacent laminas to offset their spacing
means.
Accordingly, the examiner’s decision to reject claims 8
to 12 and 24 to 27 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Baker & Daniels
111 East Wayne St.
Suite 800
Fort Wayne, IN 46802
Appeal No. 96-4104
Application 08/262,231
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