Ex Parte Takano et al

Board of Patent Appeals and Interferences

May 31, 2005

10064363 (B.P.A.I. May. 31, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TADASHI TAKANO and SUSUMU ANDO

Appeal No. 2005-0478
Application No. 10/064,363
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HEARD: May 5, 2005
__________

Before HAIRSTON, LEVY, and MACDONALD, Administrative Patent Judges.

MACDONALD, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal from the final rejection of claims 1 and 4-6.
Invention

Appellants’ invention relates to an armature for a rotating machine having
a circular core of a magnetic material and a plurality of magnetic pole teeth
extending radially from said circular core and terminating at terminal ends spaced
from said circular core. Each of the magnetic pole teeth defining a core with an
enlargement formed at the terminal end of the core. This defines slots formed
between adjacent magnetic pole teeth. Each of the slots has a mouth formed
between adjacent enlargements. An insulator extends at least along the side of
Appeal No. 2005-0478 Page 2
Application No. 10/064,363

the enlargements facing the circular core for protecting windings formed by a
winding needle from damage by the winding needle. Appellants’ specification at
page 2, paragraph [0005].
Claim 1 is representative of the claimed invention and is reproduced as

follows:

1. An armature for a rotating machine having a circular core of a magnetic
material and a plurality of magnetic pole teeth extending radially from said
circular core and terminating at terminal ends spaced from said circular core,
each of said magnetic pole teeth defining a core and an enlargement formed at
the terminal end of said core, to define slots formed between adjacent magnetic
pole teeth, each of said slots having a mouth formed between adjacent
enlargements, an insulating bobbin having a circular portion lying on one side of
said circular core and leg portions that extend for the length of said pole teeth at
least on the sides of said slots and insulator portions extending at least along the
side of said enlargements facing said circular core for protecting windings formed
by a winding needle from damage by the winding needle.
References

The reference relied on by the Examiner is as follows:
Uchida et al. (Uchida) 5,763,978 Jun. 9, 1998

The reference relied on by this Board is as follows:
Scherzinger et al. 5,698,923 Dec. 16, 1997
(Scherzinger) 1
Rejections At Issue
Claims 1 and 4-6 stand rejected under 35 U.S.C. § 103 as being obvious
over Uchida.

1 Copy supplied by Appellants as part of the Information Disclosure Statement filed on
December 8, 2004.
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Application No. 10/064,363

Throughout our opinion, we make references to the Appellants’ brief, and
to the Examiner’s Answer for the respective details thereof.2
OPINION

With full consideration being given to the subject matter on appeal, the
Examiner’s rejections and the arguments of the Appellants and the Examiner, for
the reasons stated infra, we affirm the Examiner’s rejection of claims 1 and 5-6
under 35 U.S.C. § 103, and we reverse the Examiner’s rejection of claim 4 under
35 U.S.C. § 103.
We also use our authority under 37 CFR § 41.50(b) to enter a new ground
of rejection of claims 1 and 4. The basis for this is set forth in detail below.
Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants could have made but
chose not to make in the brief have not been considered. We deem such
arguments to be waived by Appellants [see 37 CFR § 41.37(c)(1)(vii) effective
September 13, 2004 replacing 37 CFR § 1.192(a)].
Appellants have indicated that for purposes of this appeal, the claims
stand or fall separately. See page 2 of the brief. Furthermore, Appellants argue
each group of claims separately and explain why the claims of each group are
believed to be separately patentable.

2 Appellants filed an appeal brief on December 9, 2003. The Examiner mailed an Examiner’s
Answer on April 29, 2004.
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Application No. 10/064,363

I. Whether the Rejection of Claims 1 and 5-6 Under 35 U.S.C. § 103 is
proper?

It is our view, after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would have suggested to one
of ordinary skill in the art the invention as set forth in claims 1 and 5-6.
Accordingly, we affirm.
In rejecting claims under 35 U.S.C. § 103, the Examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). The
Examiner can satisfy this burden by showing that some objective teaching in the
prior art or knowledge generally available to one of ordinary skill in the art
suggests the claimed subject matter. In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the Appellants.
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at
1472, 223 USPQ at 788.
An obviousness analysis commences with a review and consideration of
all the pertinent evidence and arguments. “In reviewing the [E]xaminer’s decision
on appeal, the Board must necessarily weigh all of the evidence and argument.”
Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of record, but
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Application No. 10/064,363

must also explain the reasoning by which the findings are deemed to support the
agency’s conclusion.” In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d 1430, 1434
(Fed. Cir. 2002).
With respect to independent claim 1, Appellants argue at page 3 of the
brief, that the claim distinguishes over the Uchida patent as the claimed “insulator
portions extending at least along the side of said enlargements” are “for
protecting windings . . . from damage by the winding needle.” We find this
argument unpersuasive.
We find that “for protecting windings . . . ” is an intended use of the
Appellants’ claimed “insulator portions extending at least along the side of said
enlargements.” A recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention and the prior art in
order to patentably distinguish the claimed invention from the prior art. If the
prior art structure is capable of performing the intended use, then it meets the
claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto,
136 USPQ 458, 459 (CCPA 1963). In the situation before us, figure 4(b) of
Uchida shows that the opening for the nozzle (42) of the winding machine is
between insulator portions (32) extending at least along enlargement (12). The
insulator portions are inclined into slot (20). We find that as a nozzle (42) is
inserted into slot (20) the insulator portion (32) would bend into the slot and
protect at least some of the windings from damage by the nozzle (42).
Appeal No. 2005-0478 Page 6
Application No. 10/064,363

In view of the above discussion, it is our view, that Uchida teaches all the
features of claim 1. A disclosure that anticipates under 35 U.S.C. § 102 also
renders the claim unpatentable under 35 U.S.C. § 103, for “anticipation is the
epitome of obviousness.” Jones V. Hardy, 727 F.2d 1524, 1529, 220 USPQ
1021, 1025 (Fed. Cir. 1984). See also In re Francalossi, 681 F.2d 792, 794,
215 USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402,
181 USPQ 641, 644 (CCPA 1974).3
As to claim 5, Appellants argue, “Fig. 2 . . . fails to show any nozzle tip.”
We find this argument unpersuasive as Uchida’s teaches a nozzle (item 42) at
column 6, line 43.
As to claim 6, Appellants argue that Uchida fails to show an opening
smaller than the nozzle tip. We find this argument unpersuasive as the opening
shown in figure 2 of Uchida is deformed by the nozzle and is thus smaller.
Therefore, we will sustain the Examiner’s rejection under 35 U.S.C. § 103
of claims 1 and 5-6.
II. Whether the Rejection of Claim 4 Under 35 U.S.C. § 103 is proper?
It is our view, after consideration of the record before us, that the evidence
relied upon and the level of skill in the particular art would not have suggested to
one of ordinary skill in the art the invention as set forth in claim 4. Accordingly,
we reverse.

3 The Board may rely on less than all of the references applied by the Examiner in an
obviousness rationale without designating it as a new ground of rejection. In re Bush, 296 F.2d
491, 496, 131 USPQ 263, 266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458 n.2 150 USPQ
441, 444 n.2 (CCPA 1966).
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Application No. 10/064,363

With respect to dependent claim 4, Appellants argue at page 2 of the brief
that figure 2 of Uchida fails to teach that the “insulator portions have a greater
thickness than the insulating bobbin leg portions.” We agree. We have reviewed
the Uchida reference and find that it does not recite the “greater thickness” as
argued in the rejection at page 5 of the answer. Further, we find that the
Examiner’s reliance on figure 4b at page 7 of the answer is misplaced as the
accompanying detailed description gives no hint as to what thickness is being
represented in figure 4b.
Therefore, we will not sustain the Examiner’s rejection under
35 U.S.C. § 103.
III. Rejection of Claims 1 and 4 Under 37 CFR § 41.50(b).
We make the following new grounds of rejection using our authority under
37 CFR § 41.50(b).
Claims 1 and 4 are rejected under 35 U.S.C. § 102 as being clearly
anticipated by figures 2 and 3 of Scherzinger.
Appellants have admitted that Scherzinger anticipates at least claim 1.4
We have reviewed Scherzinger and find that it also teaches the subject matter of
claim 4 as the insulator portions (36) in figure 2 have a thickness greater than the
bobbin leg portions (40).

4 Appellants’ representative admitted at the Oral Hearing held at the Board of Patent Appeals and
Interferences on May 5, 2005, that the Scherzinger patent anticipates at least some of the claims.
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Application No. 10/064,363

Conclusion
In view of the foregoing discussion, we have sustained the rejection under
35 U.S.C. § 103 of claims 1 and 5-6; we have not sustained the rejection under
35 U.S.C. § 103 of claim 4; and we have entered a new ground of rejection
against claims 1 and 4 under 37 CFR § 41.50(b).
As indicated supra, this decision contains a new ground of rejection
pursuant to 37 CFR § 41.50(b) (effective September 13, 2004, by final rule
notice, 69 Fed. Reg 49960, 50008 (August 12, 2004), 1286 Off. Gaz. Pat. Office
21, 61 (September 7, 2004)). 37 CFR § 41.50(b) provides that, “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 CFR § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of proceedings (37 CFR § 1.197 (b) (amended effective September
13, 2004)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding will be
remanded to the examiner. . .

(2) Request that the proceeding be reheard under 37 CFR § 41.52 by the
Board upon the same record. . .

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).
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Application No. 10/064,363

AFFIRMED-IN-PART; 37 CFR § 41.50(b)

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
ALLEN R. MACDONALD )
Administrative Patent Judge )

ARM/lbg

Appeal No. 2005-0478 Page 10
Application No. 10/064,363

ERNEST A. BEUTLER, ATTORNEY AT LAW
10 RUE MARSEILLE
NEWPORT BEACH, CA 92660