Kevin R. Williams et al.

Patent Trials and Appeals Board

Dec 2, 2019

12629354 - (D) (P.T.A.B. Dec. 2, 2019)

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.
12/629,354 12/02/2009 Kevin R. WILLIAMS NABORS.008001 7682
100183 7590 12/02/2019
Adolph Locklar
Michael Locklar
4615 S.W. Freeway
Suite 630
Houston, TX 77027
EXAMINER
BOBISH, CHRISTOPHER S
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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):
docket@adolphlocklar.com
docket@al-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEVIN R. WILLIAMS
and CHARLES PATRICK
__________________

Appeal 2019-000454
Application 12/629,354
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JAMES P. CALVE, and
SEAN P. O’HANLON, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1, 3, 7–11, and 21–27. See Appeal Br. 9.
Claims 2, 4–6, and 12–20 are canceled. See id. at 16–17 (Claims App.). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Canrig Drilling Technology Ltd. as the real party in interest. See
Appeal Br. 5.
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Application 12/629,354

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CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below with
disputed limitations italicized for emphasis.
1. A direct drive mud pump comprising:
a permanent magnet motor, wherein said
permanent magnet motor comprises
a housing comprising an interior chamber and a
wall surrounding said interior chamber, a stator being
positioned adjacent said wall of said housing;
said stator positioned within said housing, said
stator having a plurality of windings and an outer cover,
said plurality of windings being in spaced relationship
around an inner surface of said outer cover, the interior
surface of the windings defining a cylindrical aperture,
said windings extending radially inwardly from said
outer cover, the outer cover forming a spaced relationship
between said plurality of windings and said wall; and
a rotor cooperative with said stator and positioned
interior of said stator within said housing;
a shaft connected to said permanent magnet motor;
and
a pump head connected to an end of said shaft
opposite said permanent magnet motor.

REJECTIONS
Claims 1, 3, 8–10, and 22–27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Folk (US 2008/0181798 A1, pub. July 31, 2008) and
Hasebe (US 5,760,520, iss. June 2, 1998).
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Folk, Hasebe, and Goettel (US 6,419,465 B1, iss. July 16, 2002).
Claims 11 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Folk, Hasebe, and Sogabe (WO 89/08941 A1, pub. Sept.
21, 1989).
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ANALYSIS
Claims 1, 3, 8–10, and 22–27
Rejected over Folk and Hasebe
Appellant argues the claims as a group. Appeal Br. 9–15. We select
claim 1 as representative of the group. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner relies on Folk to teach a direct drive mud pump with a
permanent magnet motor 16 and pump head connected to an end of shaft 22
opposite to the permanent magnet motor that includes stator 21 and rotor 20.
Final Act. 2–3. The Examiner relies on Hasebe to teach the stator and rotor
configuration in a motor housing with a wall (casing 10) forming an interior
chamber to hold rotor 3 and stator 4 adjacent to wall 10 (Fig. 1) with stator 4
including plural windings spaced about slots 43 (in Fig. 2) around an inner
surface of an outer cover (outer portion of cores 40) and extending radially
inwardly along slots 43 to define a cylindrical aperture to receive rotor 3. Id.
at 3. The Examiner reasons it would have been obvious to use these features
in Folk to reduce torque oscillation and ripple as Hasebe teaches. Id. at 3–4.
Appellant argues that Hasebe teaches a stator 4 comprising a plurality
of cores 40 that make up the entirety of the stator; therefore, cores 40 are not
an outer cover of a stator as claimed. Appeal Br. 10. Appellant argues that
“[i]t is common to assemble a stator from a stack of cores and one skilled in
the art would not agree that the resulting stack includes a ‘cover.’” Id.
Appellant also argues that “Hasebe does not teach or suggest any radial
separation or delineation of the laminated cores that are formed into the
stator into an outer cover and ‘winding location’ as indicated by the Office
Action. Instead, Hasebe expressly defines elements 40 in their entirety as
the cores of the stator.” Reply Br. 3.
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Does Hasebe Teach a Stator with an Outer Cover?
Claim 1 recites “said stator having a plurality of windings and an
outer cover.” Appeal Br. 16 (Claims App.). The Specification discloses that
“stator 62 has an outer cover 120 which serves to space the coils 122 from
the inner wall of the housing 42.” Spec. ¶ 48. Appellant’s Figures 4 and 7
are reproduced below to illustrate the stator and cover inside housing 42.

Figure 4 above illustrates motor housing 42 with a unitary stator 62
element affixed to a wall of housing 42. Spec. ¶ 43. Rotor 64 is positioned
in close proximity to stator 62. Id. Interaction of wire coils 122 positioned
around the inner surface of stator 62 with permanent magnets formed around
a periphery of rotor 64 provides rotational power for magnet motor 40. Id.
Figure 7 above is a perspective view of stator 62, which includes outer
cover 120 that spaces coils 122 from the inner wall of housing 42. Id. ¶ 48.
Coils 122 extend radially inwardly and provide an interior surface 124 that
defines a circular aperture 126 into which rotor 64 is placed. Id.
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Neither the Specification nor the drawings describe outer cover 120 as
a separate element from stator 62. To the contrary, the sectional view of
stator 62 in Figure 4 above shows stator 62 as a single, integral element with
a single cross-hatching across its entire thickness. Similarly, Figure 7 above
illustrates outer cover 120 as an integral part of stator 62. The outer portion
of stator 62 is characterized as outer cover 120 in the same way as the outer
portion of drive plate 66 is described as “outer periphery” 90. Id. ¶ 46 (“The
drive plate 66 has a circular shape with an outer periphery 90.”), Fig. 5.
The Specification also describes “[a] stator 62 is affixed to the wall of
the housing 42” as illustrated in Figure 4 above. Id. ¶ 43 (emphasis added).
The Specification does not describe an “outer cover” affixed to stator 62 and
also fixed to a wall of housing 42. Instead, “stator 62 is affixed to the wall
of the housing 42” and “stator 62 has an outer cover 120.” Id. ¶¶ 43, 48.
Claim 1 recites only “said stator . . . having an outer cover,” and the
Specification describes this “outer cover” as a part of stator 62 at the outer
periphery. See Ans. 3 (claim 1 requires the stator to include a cover rather
than separate elements). This outer periphery “covers” coils 124 arranged
within the stator as illustrated in Figure 7 so the coils are spaced from the
inner wall of housing 42. Portions of stator 62 also extend integrally and
radially inwardly from the “outer cover” 120 between coils 122. Fig. 7.
This description of the stator and outer cover “does not suggest that
the claim terms require separate structures.” See Retractable Techs., Inc. v.
Becton, Dickinson & Co., 653 F.3d 1296, 1304 (Fed. Cir. 2011) (“The
claims and the specifications indicate that the ‘needle holder’ and ‘retainer
member’ need not be separately molded pieces” or “two separate pieces”).
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The Examiner’s finding that the outer portion of Hasebe’s stator 4 and
stator cores 40 forms an “outer cover” is consistent with the language of
claim 1 interpreted in light of the Specification and drawings. See Ans. 5–6.
The Examiner annotates these findings on Figure 2 of Hasebe (id. at 5),
which we reproduce below alongside an unannotated version of Figure 2.

Figure 2 above (left) illustrates Hasebe’s stator 4 formed of cores 40
with rotor cores 30a and rotor shaft 2. Hasebe, 4:14–27. Figure 2 above
(right) includes the Examiner’s annotations to identify the outer “Cover.”
It is well-settled that a reference does not have to teach a feature using
the same terms as an applicant or patentee. See In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009). Drawings in a utility or design patent can be cited
against claims of a utility patent application. See In re Aslanian, 590 F.2d
911, 913–14 (CCPA 1979). Prior art teachings to include the drawings are
evaluated on the basis of what they reasonably disclose and suggest to a
skilled artisan. Id. at 914.
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Furthermore, “a claimed invention may be anticipated or rendered
obvious by a drawing in a reference, whether the drawing disclosure be
accidental or intentional.” In re Meng, 492 F.2d 843, 847 (CCPA 1974)
(citation omitted); Aslanian, 590 F.2d at 914 (holding that “a drawing in a
utility patent can be cited against claims of a utility patent application even
though the feature shown in the drawing was unintended or unexplained in
the specification of the reference patent.”); In re Mraz, 455 F.2d 1069, 1072
(CCPA 1972) (“[W]e did not mean that things patent drawings show clearly
are to be disregarded.”).
Because Hasebe’s stator 4 has the same structure as the claimed outer
cover, namely, an outer peripheral portion that separates the coils from outer
motor casing 10, Hasebe teaches an “outer cover” that corresponds to the
claimed outer cover interpreted in light of the claims and Specification.
Are Windings Spaced Around an Inner Surface of the Outer Cover?
Claim 1 also recites “said stator having a plurality of windings and an
outer cover, said plurality of windings being in spaced relationship around
an inner surface of said outer cover.” Appeal Br. 16 (Claims App.). The
Examiner illustrates the claimed “inner surface of said outer cover” with
annotations on Figure 2 of Hasebe, which is reproduced above. See Ans. 5.
Appellant argues that “the alleged ‘cover’ lacks an inner surface and
the windings cannot be positioned on the inner surface as claimed.” Id. at
12. Appellant also argues that “the coils are not in a spaced relationship
around an inner surface of core laminate 40 as they are instead inserted into
the slots also formed in element 40.” Id. at 13. Appellant further argues that
the “core laminate 40 of Hasebe––and not the coils––forms a cylindrical
aperture as claimed about rotor 3.” Id.
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As illustrated by the Examiner’s annotations on Figure 2 of Hasebe
above, Hasebe’s stator 40 includes a cover that includes an inner surface
from which slots 43 extend radially inwardly. The Examiner correctly finds
that the coil windings are formed around stator arms between slots 43 so the
windings are in a spaced relationship around an inner surface of the outer
cover, which also provides a spaced relationship between the windings and
the wall of housing 10 of Hasebe as claimed. Final Act. 3–4, 10; Ans. 3.
In Appellant’s Figure 7, coils 122 extend radially inwardly from outer
cover 120. Appellant considers stator cover 120 to have an “inner surface,”
but neither the Specification nor Figure 7 describes or identifies the “inner
surface.” We interpret “inner surface” to mean structure where outer cover
120 meets coils 122. The Examiner finds that Hasebe’s stator cover includes
structure where coils in slots 43 meet the outer cover. See Ans. 4–5. This
structure provides an inner surface as claimed in light of the Specification.
No other feature is recited. Appellant’s argument that Hasebe lacks an outer
cover and thus cannot have an inner surface (Appeal Br. 11–13; Reply Br. 5)
is not persuasive because Hasebe teaches an “outer cover.”
Does the Interior Surface of Windings Form a Cylindrical Aperture?
Appellant also argues that Hasebe teaches that core laminate 40 forms
a cylindrical aperture about rotor 3, whereas claim 1 requires “the interior
surface of the windings defining a cylindrical aperture,” and Hasebe “does
not teach that these coils form a cylindrical aperture as claimed.” Appeal Br.
13, 16 (Claims App.); Reply Br. 4. Appellant argues that an “aperture” is
“an opening or open space” and a skilled artisan “would not interpret the
hypothetical volume bounded by the coils to be an opening, open space, or a
hole as is implied by the term ‘aperture.’” Reply Br. 5.
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In response, the Examiner explains:
[T]he position of the stator arms does not preclude the windings
from forming an aperture on their own, as they are
circumferentially positioned about the rotor 3. The office does
not disagree that the stator arms extend further inward of the
windings, but this is not a limitation of the claim, which requires
only that the windings form a cylindrical aperture. Such an
aperture would be formed when the windings are positioned
within the slots 43 in a circular manner about the inner portion of
the cover roughly indicated at 40.

Ans. 4. The Examiner has the better position.
The Specification describes coils 122 forming interior surface 124 that
defines circular aperture 126 for rotor 64. Spec. ¶ 48. Appellant’s Figure 7
illustrates circular aperture 126 formed by interior aperture 124 of coils 122.
Hasebe discloses a similar arrangement in Figures 1 and 2 with coils
and their ends 41 (shown in Figure 1) forming an interior aperture in which
rotor 3 is placed. This arrangement places permanent magnets 32 of rotor 3
in close proximity to the stator coils (see Hasebe, 4:1–27, Figs. 1, 2) in the
same way that the Specification describes the claimed interior aperture 124
of coils 122 as placing permanent magnet piles 104 in close proximity to the
coils 122 so the permanent magnet motor can operate properly (Spec. ¶ 48).
The Examiner correctly finds that claim 1 does not preclude the stator
from having an inner surface at or radially inwardly of the interior aperture
of the windings. Appellant’s Figure 7 illustrates stator 62 having an inner
surface positioned at or inwardly of interior surface 124 of coils 122. The
Specification does not describe this feature, but Figure 7 illustrates it as part
of inner aperture 126 adjacent to interior surface 124 of coils 122. Hasebe’s
stator 4 forms a similar inner surface adjacent to rotor 3 in Figure 2.
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“During examination, ‘claims [in an application] are to be given their
broadest reasonable interpretation consistent with the specification, and . . .
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (alteration in original) (quoting
In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)); see In re Suitco Surface,
Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010) (same). “Giving claims their
broadest reasonable construction ‘serves the public interest by reducing the
possibility that claims, finally allowed, will be given broader scope than is
justified.’” Am. Acad. of Sci. Tech., 367 F.3d at 1364 (quoting In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)); see In re Zletz, 893 F.2d
319, 322 (Fed.Cir.1989) (“An essential purpose of patent examination is to
fashion claims that are precise, clear, correct, and unambiguous. Only in
this way can uncertainties of claim scope be removed, as much as possible,
during the administrative process.”). “Construing claims broadly during
prosecution is not unfair to the applicant . . ., because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage.”
Am. Acad. of Sci. Tech., 367 F.3d at 1364; see Yamamoto, 740 F.2d at 1571–
72 (“Applicants’ interests are not impaired since they are not foreclosed
from obtaining appropriate coverage for their invention with express claim
language.”). “[T]he patent examiner and the applicant work together to
determine the scope of the claimed invention.” PPC Broadband Inc. v.
Corning Optical Commc’ns RF, LLC, 815 F.3d 734, (Fed. Cir. 2016); see In
re Buszard, 504 F.3d 1364, 1366–67 (Fed. Cir. 2007) (“The patent examiner
and the applicant, in the give and take of rejection and response, work
toward defining the metes and bounds of the invention . . . .”)).
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We start with the language of claim 1. Claim 1 recites “the interior
surface of the windings defining a cylindrical aperture,” but claim 1 only
requires “a rotor cooperative with said stator and positioned interior of said
stator within said housing.” Appeal Br. 16 (Claims App.). Claim 1 does not
require the rotor to be positioned interior of the aperture defined by the stator
windings or immediately adjacent thereto to clarify that the aperture defined
by the windings marks the innermost radial extent of the stator, and the rotor
is positioned adjacent thereto with no intervening structure. Claim 9, which
depends from claim 1, requires the “permanent magnets being cooperative
with windings positioned on said stator.” Appeal Br. 17 (Claims App.).
The Specification describes “[t]he interior surface 124 of the coils 122
define[s] a circular aperture into which the rotor 64 is placed” so magnets
104 are close to coils 122. Spec. ¶ 48. Claim 1 does not recite the rotor or
its magnets in close proximity, or immediately adjacent, to the stator coils.
It is well-settled that “limitations are not to be read into the claims
from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993). “Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (“[T]his court counsels the PTO to avoid
the temptation to limit broad claim terms solely on the basis of specification
passages.”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1316, 1323
(Fed. Cir. 2005) (en banc) (absent lexicographic definition or disclaimer, the
claims are not limited to embodiments disclosed in the specification even if
the specification describes only a single embodiment). The Specification
lacks a definition or disclaimer to narrow the meaning of “interior surface.”
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Hasebe’s stator coils have an interior surface that forms a cylindrical
aperture, and rotor 3 is positioned inside stator 4. Hasebe, 4:1–27, Figs. 1
(coil ends 41), 2 (coil slots 43). Claim 1 requires no more in this regard.
Accordingly, we sustain the rejection of claim 1 and claims 3, 8–10,
and 22–27, which fall with claim 1.
Claim 7
Rejected over Folk, Hasebe, and Goettel
Appellant does not present arguments for the rejection of claim 7. See
Appeal Br. 9–15. Thus, we summarily sustain the rejection of claim 7. See
37 C.F.R. § 41.37(c)(1)(iv).
Claims 11 and 21
Rejected over Folk, Hasebe, and Sogabe
Appellant does not present arguments for the rejection of claims 11
and 21. See Appeal Br. 9–15. Thus, we summarily sustain the rejection of
claim 7. See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the rejections of claims 1, 3, 7–11, and 21–27.
In summary:
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
1, 3, 8–10,
22–27
103(a) Folk, Hasebe 1, 3, 8–10,
22–27

7 103(a) Folk, Hasebe,
Goettel
7
11, 21 103(a) Folk, Hasebe,
Sogabe
11, 21
Overall
Outcome
1, 3, 7–11,
21–27

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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)(1)(iv).
AFFIRMED