Ex parte Yang

Board of Patent Appeals and Interferences

Nov 1, 2001

08499367 (B.P.A.I. Nov. 1, 2001)

1
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(2) is not binding precedent of the Board.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. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TAI-HER YANG
_____________
Appeal No. 1999-1927
Application 08/499,367
______________
ON BRIEF
_______________
Before KRASS, JERRY SMITH and GROSS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134 from the examiner’s
rejection of claim 3, which constitutes the only claim remaining in the application.
The disclosed invention pertains to a motor casing which provides an axial flux path
between two magnetic poles of the motor, and which is in the form of two C-shaped end
casings between which are clamped the magnetic poles.
Appeal No. 1999-1927
Application No. 08/499,367
2
Single remaining claim 3 is reproduced as follows:
3. In a motor, comprising:
a rotor;
at least two magnetic poles made of a magnetically inductive material
surrounded by a field winding and arranged to generate a magnetic field which, by
interaction with the rotor, causes the rotor to rotate; and
a casing consisting of two end casings made of a magnetically inductive
material for holding said rotor at axially opposed ends of the rotor and for retaining said
poles, said casing serving as a sole means of support for said poles and said rotor;
the improvement wherein each of said end casings is a C-shaped member
made of a magnetically inductive material which forms a means for providing a respective
axial magnetization path between said poles, one on each side of the poles, said
respective axial magnetization paths being the only magnetization paths between said
poles,
wherein said two magnetic poles are clamped between ends of said end
casings such that said poles extend transversely relative to said end casings, and
wherein said C-shaped members thereby form a means for exposing the
rotor in order to ventilate the rotor.
The examiner relies on the following references:
Perkins 1,822,859 Sep. 08, 1931
Kawada et al. (Kawada) 4,626,725 Dec. 02, 1986
Linders UK 17,732 Oct. 16, 1891
De La Riboisiere et al. UK 29,562 Dec. 22, 1913
(De La Riboisiere)
Appeal No. 1999-1927
Application No. 08/499,367
3
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable over the
teachings of De La Riboisiere in view of Perkins. Claim 3 also stands rejected under 35
U.S.C. § 103 as being unpatentable over the teachings of Linder in view of Perkins or
Kawada.
Rather than repeat the arguments of appellant or the examiner, we make reference
to the briefs and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejections advanced
by the examiner and the evidence of obviousness relied upon by the examiner as support
for the rejections. We have, likewise, reviewed and taken into consideration, in reaching
our decision, the appellant’s arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal set forth in the examiner’s
answer.
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 obviousness of the invention as set forth in claim 3. Accordingly, we
reverse.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to
establish a factual basis to support the legal conclusion of obviousness. See In re Fine,
Appeal No. 1999-1927
Application No. 08/499,367
4
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner
is expected to make the factual determinations set forth in Graham v. John Deere Co., 383
U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why one having ordinary
skill in the pertinent art would have been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason must stem from some teaching,
suggestion or implication in the prior art as a whole or knowledge generally available to
one having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts to the applicant to overcome
the prima facie case with argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of the arguments.
See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart,
531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments actually
Appeal No. 1999-1927
Application No. 08/499,367
5
made by appellant have been considered in this decision. Arguments which appellant
could have made but chose not to make in the brief have not been considered [see 37
CFR § 1.192(a)].
We consider first the rejection of claim 3 based on De La Riboisiere and Perkins.
The examiner basically finds that De La Riboisiere teaches the claimed invention except
that De La Riboisiere does not teach two C-shaped end casings which clamp two
magnetic poles therebetween. The examiner cites Perkins as teaching the use of two C-
shaped end covers for securing the field-frame of a motor to the end covers. The examiner
finds that it would have been obvious to the artisan to provide separate C-shaped end
casings to clamp the magnetic poles of De La Riboisiere in order to securely clamp the
stator core to the end covers [answer, pages 3-4].
Appellant argues that the C-shaped sections of Perkins are not made of magnetic
material as required by the claim. Appellant also argues that the magnetic poles of De La
Riboisiere and Perkins are formed integrally with the yoke so that there is no reason why
they would be clamped in the manner recited in claim 3. In summary, appellant argues that
neither De La Riboisiere nor Perkins teaches or suggests the clamping of separate
magnetic poles between two C-shaped magnetic structures [brief, pages 4-8].
The examiner responds that Perkins was cited to teach end covers which clamp a
field-frame therebetween. It is the examiner’s position that if the field-frame of Perkins is
Appeal No. 1999-1927
Application No. 08/499,367
6
clamped by the end covers, then the magnetic pole pieces are also clamped between the
end covers [answer, pages 6-7]. Appellant responds that clamping the field-frame to the
end covers does not teach clamping the pole pieces to the end covers because the pole
pieces are a unitary part of the yoke in the applied references [reply brief].
We agree with the position argued by appellant. Since the magnetic poles are
formed integrally with the yoke in De La Riboisiere, there would be no motivation to seek
to clamp these poles by converting the yoke into two C-shaped sections. Clamping would
only be used if the pole pieces were movable with respect to the clamping member. Since
the poles in De La Riboisiere are fixed with respect to the yoke, we find no motivation to
use two C-shaped end sections as taught by Perkins to clamp the magnetic poles of De
La Riboisiere.
We now consider the rejection of claim 3 based on Linder and either Perkins or
Kawada. The examiner basically finds that Linder teaches the claimed invention except
that Linder does not clamp two magnetic poles between end casings. The examiner cites
Perkins and Kawada as each teaching the use of end covers for clamping magnetic poles
therebetween. The examiner finds that it would have been obvious to the artisan to provide
separate end casings in Linder to clamp the magnetic poles for the respective purposes of
clampingly securing the stator poles to the motor casing and precisely maintaining the
shape of the stator, the bearings and the motor’s other connecting surfaces [answer,
Appeal No. 1999-1927
Application No. 08/499,367
7
pages 4-6].
Appellant’s main brief failed to respond to this rejection. Appellant did file a reply
brief in response to this rejection, and the examiner has entered the reply brief. The reply
brief argues that none of the applied references suggests clamping the magnetic pole
pieces between two C-shaped core parts as claimed. Appellant also argues that the
motivations asserted by the examiner for combining the references are nowhere supported
by the applied references. Appellant argues that the modification of Linder proposed by
the examiner would not achieve any benefit suggested by Perkins or Kawada. The
examiner has not responded to the arguments of the reply brief.
We again agree with the position argued by appellant. We do not find any
suggestion within the applied prior art which would have led the artisan to modify Linder so
as to arrive at the claimed invention. The examiner’s motivations to combine seem to
require mere speculation in an attempt to reconstruct the invention in hindsight.
Appeal No. 1999-1927
Application No. 08/499,367
8
In summary, we have not sustained either of the examiner’s rejections of claim 3.
Therefore, the decision of the examiner rejecting claim 3 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JS:yrt
Appeal No. 1999-1927
Application No. 08/499,367
9
cc: Eugene Mar, Esq.
BACON & THOMAS
625 Slaters Lane
4th Floor
Alexandria, VA 22314