Ex Parte Ulrich et al

Board of Patent Appeals and Interferences

Oct 18, 2007

10286535 (B.P.A.I. Oct. 18, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK A. ULRICH and GREGORY D. POPP
____________

Appeal 2007-2869
Application 10/286,535
Technology Center 3700
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Decided: October 18, 2007
____________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR and LINDA E. HORNER,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1, 3-7, 10-27, and 36-43, all the claims currently pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
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THE INVENTION
Appellants’ claimed invention is to a method and apparatus for inductively
heating a metal object having conductive windings (Specification 1:5-7). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. An induction heating system comprising:
an induction heating assembly having a plurality of helically wound
coils and being adapted to produce a first magnetic field and a second
magnetic field to heat the work piece1 by induction, the first and second
magnetic fields being oriented in opposite directions; and
a wound core of an electrical machine disposed inboard of the
plurality of wound coils and having a coating disposed on windings of the
wound core to be cured by heat resulting from current induced by the first
and second magnetic fields.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Sakayanagi JP 63-0290145
(as translated)
Nov. 28, 1988
McGaffigan US 5,376,774 Dec. 27, 1994
Bleske US 5,786,575 Jul. 28, 1998
The following rejections are before us for review:
1. Claims 1, 3-5, 7, 10-27, 42 and 43 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sakayanagi and McGaffigan.

1 There is no antecedent basis for “the work piece” in the first paragraph of
claim 1. Unlike independent claim 36, claim 1 does not introduce “a work piece”
in the preamble. Additionally, claim 1 lacks a cross-reference between the "wound
core" and the "work piece." If further prosecution of this case is pursued, claim 1
should be amended to correct this antecedent basis problem and to clarify that the
"wound core" is the "work piece."
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2. Claims 6 and 36-41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sakayanagi, McGaffigan, and Bleske.

ISSUES
Appellants contend (1) “[t]he proposed modification of McGaffigan renders
the McGaffigan device unsatisfactory for its intended purpose and, in turn,
produces an inoperable result” (Appeal Br. 12); and (2) the Examiner fails “to
present objective evidence to support the obviousness rejection and has, instead,
relied on impermissible hindsight reconstruction to reject the claimed subject
matter” (Appeal Br. 13). The Examiner found that “Sakayanagi shows an
induction heating assembly 5 with a helically wound induction heating coil 51 for
heating a wound core 1 with wire 2 having a coating 21 to cure the wire coating 21
by induction heating” (Answer 3-4) and “McGaffigan shows an induction heating
system having a plurality of helically wound coils…wherein the first electric
current flows through the first coil in a first direction and the second electric
current flows through the second coil in a second direction opposite the first
direction” (Answer 4). The Examiner held that it would have been obvious to one
of ordinary skill in the art to use the induction heating device as taught by
McGaffigan in the system of Sakayangi “in order to reduce external radiation of
magnetic flux.” Id.
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The issues before us are:
1. Whether Appellants have shown that the Examiner erred in rejecting
claims 1, 3-5, 7, 10-27, 42, and 43 as unpatentable over Sakayanagi and
McGaffigan.
2. Whether Appellants have shown that the Examiner erred in rejecting
claims 6 and 36-41 as unpatentable over Sakayanagi, McGaffigan, and Bleske.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427,
7 USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. Sakayanagi discloses a method for manufacturing armatures having a
cylindrical core with multiple slots in the outer periphery and a commutator
connected to coils wrapped around the slots in the outer periphery of the core, the
coils having coating layers consisting of a fine inorganic powder on their surfaces.
The method includes, inter alia, using a high-frequency induction heating
apparatus to turn the coating layers on the coils into ceramic by heating up the core
by means of the Joule heat (Sakayanagi 5).
2. The high-frequency induction heating device is provided with high-
frequency coils 51 and a high-frequency power source 52 (Sakayanagi 9 and
Fig. 1).
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3. Sakayanagi does not disclose that the magnetic fields produced by the
high-frequency coils 51 are oriented in opposite directions.
4. McGaffigan discloses a low emission induction heating coil
(McGaffigan, col. 1, ll. 15-19).
5. The hollow cylindrical coil structure concentrates the magnetic field
induced by an alternating electric current applied thereto interiorly of the coil and
produces relatively little external magnetic radiation (McGaffigan, col. 1, ll. 51-
54).
6. The coil structure 2 consists of a first series of conductive rings 4, 6,
8, and 10 and a second series of conductive rings, 4’, 6’, 8’, and 10’. The number
of conductive rings and width of the conductors employed in any specific
application is a function of the length of the device to be heated and the current to
be carried (McGaffigan, col. 3, ll. 25-32 and Fig. 1).
7. The magnetic fields produced by the two series of rings are out of
phase with one another interiorly of the rings. Thus, the fields interiorly of the
rings are intense, while the fields produced by the two sets of conductors
interconnecting the rings of the two series buck one another, materially reducing
radiation from these conductors (McGaffigan, col. 2, ll. 21-25).
8. In one embodiment of McGaffigan, the induction device is capable of
causing a ferromagnetic material to be heated to approximately its effective Curie
temperature, if Curie temperature regulation is desired (McGaffigan, col. 4, ll. 61-
66).

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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘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 to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, and (3) the level
of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966). See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court in
Graham further noted that evidence of secondary considerations “might be utilized
to give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
USPQ2d at 1395, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss,
11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham, 383
U.S. at 12, 148 USPQ at 464 (emphasis added)), and reaffirmed principles based
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on its precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained,
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of
demands known to the design community or present in
the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent
reason to combine the known elements in the fashion
claimed by the patent at issue.
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Id. at 1740-41, 82 USPQ2d at 1396. The Court noted that “[t]o facilitate review,
this analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)). However, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of ordinary skill
in the art would employ.” Id.
ANALYSIS
Rejection of claims 1, 3-5, 7, 10-27, 42 and 43 as unpatentable over Sakayanagi
and McGaffigan
Appellants argue claims 1, 3-5, 7, 10-27, 42, and 43 as a group (Appeal Br. 7
and 9-15). Although Appellants separately list the elements of independent claims
1, 10, 16, 20, and 25 on pages 9-12 of the Brief, Appellants do not provide separate
arguments as to why the cited art does not teach or suggest the listed elements. A
statement which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim. 37 C.F.R. § 41.37(c)(vii) (2006).
As such, we select claim 1 as a representative claim, and the remaining claims 3-5,
7, 10-27, 42, and 43 stand or fall with claim 1.
In rejecting claim 1, the Examiner held that “[i]t would have been obvious to
an [sic] ordinary skill in the art to modify Sakayanagi to choose any suitable
induction heating device for curing the wound core coating including the induction
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coil assembly…of McGaffigan, in order to reduce external radiation of magnetic
flux to prevent damages” as taught by McGaffigan (Answer 4). Appellants
contend that the Examiner has not presented a prima facie case of obviousness
“because the proposed modification changes the intended purpose of McGaffigan
and produces an inoperable result” (Appeal Br. 13). More specifically, Appellants
contend “if one were to place a wound element within the coil structure 30 of
McGaffigan to cure a varnish disposed thereon…the result would be a core having
no ferromagnetic properties” which would be inoperable in a motor or a generator
(Appeal Br. 14). We disagree with the Appellants’ narrow reading of McGaffigan.
McGaffigan discloses, in one embodiment, that the induction device is capable of
causing a ferromagnetic material to be heated to approximately its effective Curie
temperature, “if Curie temperature regulation is desired,” thus suggesting that other
operating temperatures are contemplated (Finding of Fact 8). Thus, heating a
ferromagnetic material to its effective Curie temperature is optional, and the
induction heating device of McGaffigan does not require such a result. As such, if
one were to place a wound element within the coil structure 30 of McGaffigan to
cure the coating disposed thereon, and one skilled in the art was aware that it is
desirable to maintain the ferromagnetic properties of the core, then the induction
device of McGaffigan is capable of heating the wound core to below its effective
Curie temperature to retain such ferromagnetic properties, while also gaining the
benefit of reducing external radiation, as taught by McGaffigan.
Appellants further contend that the combination of Sakayanagi and
McGaffigan “can not achieve the claimed wound core ‘to be cured by heat
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resulting from current induced by the first and second magnetic fields,’” as recited
in independent claim 1 (Reply Br. 2), because “adding the coils of Mcgaffigan [sic]
onto the system of Sakayangi would effectively result in magnetic fields produced
from each of the coils of Sakayangi and McGaffigan constructively and
destructively interfering throughout the induction heating device resulting from the
proposed combination,” resulting in a “core that would be underheated in some
portions, while overheated in others” Id. We disagree.
First, although the use of a multiple coil structure results in magnetic fields
which constructively and destructively interfere with one anther, we disagree with
Appellants’ contention that the disclosure of such a coil structure necessarily
results in the inability to cure coatings disposed on windings of a wound core as
claimed. McGaffigan discloses that the hollow cylindrical coil structure
concentrates the magnetic field induced by an alternating electric current applied
thereto interiorly of the coil and produces relatively little external magnetic
radiation (Findings of Fact 4, 5, and 7). In other words, it is precisely the
constructive and destructive nature of the adjacent fields which provides the
advantage of low external emissions in the coil structure of McGaffigan.
Furthermore, McGaffigan discloses that the induction device is capable of causing
a ferromagnetic material to be heated to approximately its effective Curie
temperature (i.e., the temperature above which the material becomes purely
paramagnetic), if desired (Finding of Fact 8). The Examiner found the
temperatures needed to cure the coatings of Sakayanagi to be less than 500 degrees
C, while the Curie temperature of a ferromagnetic material is approximately 760
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degrees C (Answer 7). Therefore, the intensity of the magnetic field within the
coil structure is sufficient to cure the coatings of Sakayanagi. Accordingly,
Appellants’ mere conjecture that the induction assembly of McGaffigan is
incapable of heating the wound core of Sakayanagi to the point of curing the
coating is unpersuasive.
Second, Appellants’ Specification notes that “magnetic fields 66, 67 will
oppose each other and tend to cancel each other where the coils 60, 61 are
adjacent” (Specification 6:9-10). Therefore, if Appellants’ argument that the
adjacent fields, which oppose each other, result in the inability to cure the wound
core were correct, then Appellants’ claimed invention would be inoperable as
well. Appellants cannot have it both ways. Furthermore, as we found supra,
Appellants have not provided any evidence that the induction heating device of
McGaffigan is only capable of heating a workpiece to its Curie temperature. In
fact, McGaffigan suggests otherwise, by stating that Curie temperatures are
achievable, if desired.
Appellants contend the Examiner has relied on impermissible hindsight
reconstruction because the Examiner has not articulated an “objectively supported
motivation” (Appeal Br. 14). We disagree.
The use of hindsight knowledge to support an obviousness rejection under
35 U.S.C. § 103 is impermissible. See e.g., W. L. Gore and Assocs. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984). However, obviousness judgments are necessarily based on
hindsight, but so long as judgment takes into account only knowledge known in the
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art, there is no impermissible use of hindsight. In re McLaughlin, 443 F.2d 1392,
1395, 170 USPQ 209, 212 (CCPA 1971). In the present case, the proposed
combination of Sakayanagi and McGaffigan is merely the substitution of one
induction heating assembly for another induction heating assembly which provides
additional benefits. Where, as here “[an application] claims a structure already
known in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a predictable
result,” KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v.
Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)). Appellants have provided no
evidence that replacing the induction heating device of Sakayanagi with an
induction heating device as taught by McGaffigan yields an unexpected result or
was uniquely challenging or difficult for one of ordinary skill in the art.
Finally, Appellants contend “there would be no motivation for one of
ordinary skill in the art to combine the references because their combination
clearly fails to achieve the benefits of the claimed invention (Reply Br. 4). The
law on obviousness does not require that the motivation to combine references
come from the problem the inventor is trying to solve. See KSR, 127 S.Ct. at 1742
(finding that the Court of Appeals erred in ruling that courts and patent examiners
should look only to the problem the patentee was trying to solve, and finding that
“[u]nder the correct analysis, any need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.” As such, we sustain the
Examiner’s rejection of claims 1, 3-5, 7, 10-27, 42, and 43 as unpatentable over
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Sakayanagi and McGaffigan.

Rejection of claims 6 and 36-41 as unpatentable over Sakayanagi, McGaffigan,
and Bleske
Appellants argue claims 6 and 36-41 as a group (Appeal Br. 15-16). As
such, we select claim 36 as a representative claim, and the remaining claims 6 and
37-41 stand or fall with claim 36. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
Appellants contend that Bleske fails to overcome the alleged deficiencies of
Sakayanagi and McGaffigan presented with respect to claim 1 (Appeal Br. 15).
We find Appellants’ arguments with regard to independent claim 1 unpersuasive
for those reasons presented supra. As such, we sustain the Examiner’s rejection of
claims 6 and 36-41 as unpatentable over Sakayanagi, McGaffigan, and Bleske.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred in
rejecting claims 1, 3-5, 7, 10-27, 42 and 43 as unpatentable over Sakayanagi and
McGaffigan, and claims 6 and 36-41 as unpatentable over Sakayanagi,
McGaffigan, and Bleske.
DECISION
The Examiner’s decision under 35 U.S.C. § 103(a) to reject claims 1, 3-5, 7,
10-27, 42 and 43 as unpatentable over Sakayanagi and McGaffigan, and claims
6,and 36-41 as unpatentable over Sakayanagi, McGaffigan, and Bleske is
sustained.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED

hh

PATRICK S. YODER
FLETCHER, YODER & VAN SOMEREN
P.O. BOX 692289
HOUSTON, TX 77269-2289