FUJI ELECTRIC CO., LTD.

Patent Trials and Appeals Board

Jul 15, 2021

2020005401 (P.T.A.B. Jul. 15, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/347,392 11/09/2016 Toshiharu MOCHIDA 1639.1102 1256
21171 7590 07/15/2021
STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
EXAMINER
MORAZA, ALEXANDER
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
07/15/2021 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):
ptomail@s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIHARU MOCHIDA, AKIO TOBA, HIROSHI SHIMADA,
HIROFUMI NISHIMURA, and NOBUYUKI SASAKI
Appeal 2020-005401
Application 15/347,392
Technology Center 2800
Before KAREN M. HASTINGS, RAE LYNN P. GUEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–9, and 11–18. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Fuji Electric Co., Ltd.
Appeal Br. 1.
Appeal 2020-005401
Application 15/347,392

2
CLAIMED SUBJECT MATTER
The claims are directed to a permanent magnet embedded rotating
electrical machine. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A permanent magnet embedded rotating electrical machine
comprising:
a rotor comprised of a plurality of stacked rotor steel
plates, the rotor having
a plurality of poles, each of the poles configured by
two permanent magnets embedded in an interior of the
rotor, and
in each of the plurality of poles, two magnet
embedding holes and a center bridge between the two
magnet embedding holes, each of the two magnet
embedding holes housing one of the two permanent
magnets configuring the respective pole, the two magnet
embedding holes being arranged in an inverted V-shape
having an apex facing away from a central axis of rotation
of the rotor, each of the two magnet embedding holes
having an exposed end opposite the apex so that an
exposed end of the corresponding one of the two
permanent magnets faces the exposed end of the
corresponding magnet embedding hole and away from an
outer peripheral edge of the rotor, the exposed end of the
magnet embedding hole extending to the outer peripheral
edge of the rotor,
each of the plurality of stacked rotor steel plates has,
in a region thereof between an inscribed circle of the
magnet embedding holes and an outer periphery of the
rotor, a structure, formed by an auxiliary process, to fix
positions of neighboring plates of the plurality of stacked
rotor steel plates.

Independent claim 17 recites a permanent magnet embedded electrical
machine similar to that of claim 1 (Claims App. iv–v).
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Application 15/347,392

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hershberger US 4,327,302 Apr. 27, 1982
Hino US 2006/0113858 A1 June 1, 2006
Kagami (“Kagami
’234”)
US 2013/0106234 A1 May 2, 2013
Hazeyama US 2014/0091663 A1 Apr. 3, 2014
Kagami (“Kagami
’293”)
US 2014/0210293 A1 July 31, 2014

REJECTIONS
Claim(s) Rejected 35 U.S.C.
§
Reference(s)/Basis
1, 3, 4, 9, 11, 12, 18 103 Kagami ’234, Hino
5, 6, 13, 14 103 Kagami ’234, Hino,
Hershberger
7, 15, 17 103 Kagami ’234, Hino, Kagami
’293
8, 16 103 Kagami ’234, Hino,
Hazeyama

OPINION
Upon consideration of the evidence in this appeal record and each of
Appellant’s contentions as set forth in the Appeal Brief filed March 16, 2020
and the Reply Brief filed July 15, 2020, we determine that Appellant has not
demonstrated reversible error in the Examiner’s rejections. In re Jung, 637
F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held
practice of requiring Appellant to identify the alleged error in the
Examiner’s rejection). We sustain the rejections for the reasons expressed
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Application 15/347,392

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by the Examiner in the Final Office Action and the Answer (e.g., Ans. 3–10
(dated May 15, 2020)).
We add the following for emphasis.
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he 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. at 418.
Appellant does not specifically dispute most of the Examiner’s
findings with respect to the teachings of Kagami ’234 and Hino except for
alleging that one of ordinary skill would not have been led to combine
Kagami ’234 and Hino in any fashion. Appellant argues further that the
reconstruction of Kagami ’234 based on Hino teaches away from the
claimed inverted V-shape magnet arrangement and that the reconstruction
does not arrive at the claimed exposed end of the corresponding one of the
two permanent magnets: (1) facing the exposed end of the corresponding
embedding hole, and (2) facing away from an outer peripheral edge of the
rotor, and with the exposed end of the magnet embedding hole extending to
the outer peripheral edge of the rotor, as required by claims 1 and 17 (e.g.,
Appeal Br. 7–9; Reply Br. 1–4).
Appellant, however, has not shown reversible error in the Examiner’s
position that modifying Kagami ’234 based on Hino involves merely
modifying Kagami ’234 such that its V-shape magnet structure is inverted
Appeal 2020-005401
Application 15/347,392

5
into an inverted V-shape magnet arrangement. The Examiner further points
out that the inverted V-shape structure is one that is taught by Hino as
advantageous for reducing stress concentration of the rotor (e.g., Ans. 5–7;
see also Hino, ¶ 151, Fig. 21). The Examiner explains that this modification
results in the bridge portion of Kagami ’234 moving to the outer
circumference such that the inner ends of the magnets move up and the outer
ends move down. The Examiner further points out that reconstructing
Kagami ’234 based on Hino results in features already taught by Kagami
’234. In other words, the Examiner points out that Kagami ’234 already
teaches the exposed end of the corresponding one of the two permanent
magnets: (1) facing the exposed end of the corresponding embedding hole,
and (2) facing away from an outer peripheral edge of the rotor, and with the
exposed end of the magnet embedding hole extending to the outer peripheral
edge of the rotor, as required by claims 1 and 17 (e.g., Final Act. 6–8).
Appellant argues further that the Examiner’s position is based on
using the claims as a roadmap in order to make the claimed modifications to
arrive at the claimed invention, such that the Examiner relies on
impermissible hindsight (Reply Br. 2–3). This argument is not sufficient to
show reversible error. As the Examiner aptly points out, Kagami ’234
teaches all of the claimed features of the claimed machine except for the
inverted V-shape magnet arrangement. The Examiner then incorporates
Hino’s inverted V-shape magnet arrangement and the modified locations of
the ends of the magnets and their relation to the periphery edge of the rotor
(Ans. 6–7). As the Examiner explains, it would not have been beyond the
knowledge and reasonable creativity of the skilled artisan to rely on Hino to
teach the inverted V-shape magnet arrangement and the movement of the
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Application 15/347,392

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bridge portion of Kagami ’234 to move further out toward the outer
circumference of the rotor (see, e.g., Kagami ’234: labeled as “220” of Fig.
4). Id.
With respect to claim 17, the Examiner’s position is well supported
that Kagami ‘293 teaches the claimed outer peripheral surface of at least one
rotor has a radius of curvature smaller than the distance from the central axis
of rotation of the rotor to an outermost peripheral portion of the rotor (Ans.
9–10; Final Act. 17–22). However, with respect to claim 17, Appellant
makes a similar argument to that of claim 1, that it is improper for the
Examiner to have reconstructed the combination of Kagami ’234/Hino to
further incorporate the teaching of Kagami ’293 merely because Kagami
’293 does not teach the inverted V-shape magnet arrangement (Appeal Br.
11–12). Thus, Appellant fails to provide a sufficient argument as to why
reconstructing Kagami ’234/Hino based on Kagami ’293 would be beyond
the knowledge and reasonable creativity of one of ordinary skill in the art.
Further, the Examiner provides a clear motivation that the smaller radius of
curvature portion reduces cogging torque which is an advantage in the art as
explained by Kagami ’293 (Final Act. 17–22, see, e.g., Kagami ’293, ¶¶ 17–
21, 25).
Therefore, Appellant’s argument that one of ordinary skill would not
have been led to combine Kagami ’234/Hino and Kagami ’293 is not
sufficient to show reversible error.
Accordingly, we sustain the Examiner’s rejections of independent
claims 1 and 17, as well as all claims dependent thereon, noting that
Appellant relies substantially upon the arguments made for claims 1 and 17
for all the other claims (see also, Appeal Br. 4–12).
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Application 15/347,392

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The Examiner’s decision is affirmed.

CONCLUSION
The Examiner’s rejections are AFFIRMED.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 9,
11, 12, 18
103 Kagami ’234, Hino 1, 3, 4, 9, 11,
12, 18

5, 6, 13, 14 103 Kagami ’234,
Hino, Hershberger
5, 6, 13, 14
7, 15, 17 103 Kagami ’234,
Hino, Kagami ’293
7, 15, 17
8, 16 103 Kagami ’234,
Hino, Hazeyama
8, 16
Overall
Outcome
1, 3–9, 11–18

TIME PERIOD FOR RESPONSE
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).
AFFIRMED