NTN Corporation

Patent Trials and Appeals Board

Nov 17, 2020

2020000345 (P.T.A.B. Nov. 17, 2020)

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.
14/912,816 02/18/2016 Hiroyuki YAMADA 070456-0422 8688
20277 7590 11/17/2020
MCDERMOTT WILL & EMERY LLP
THE MCDERMOTT BUILDING
500 NORTH CAPITOL STREET, N.W.
WASHINGTON, DC 20001
EXAMINER
KENERLY, TERRANCE L
ART UNIT PAPER NUMBER
2832
NOTIFICATION DATE DELIVERY MODE
11/17/2020 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROYUKI YAMADA and KEN SUGIURA
____________

Appeal 2020-000345
Application 14/912,816
Technology Center 2800
____________
Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
I. DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10 of Application 14/912,816. Final
Act. (February 6, 2019). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
II. BACKGROUND
The ’816 Application describes an electric power generator which is
said to be configured to generate electric power using natural energy such as

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies NTN Corp. as the real party in interest.
Appeal Br. 1.
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waterpower or wind power. Spec. 1. In particular, the generator is said to
have high output and high efficiency while also being low-cost, small in
size, and having a low cogging torque. Id. Cogging torque makes it difficult
to start a generator with a small amount of waterpower or wind power. Id. at
2–3.
The power generator described in the ’816 Application’s Specification
is said to have a small cogging torque and high power generation efficiency.
Id. at 3. Figure 8 of the Specification is reproduced below.

Figure 8 shows an arrangement of Appellant’s
power generator. Id. at 11.
As shown in Figure 1, an axial gap power generator includes disk-
shaped rotor 41 and disk-shaped stator 50. Id. Rotor 41 includes disk
member 42, which has a plurality of pairs of permanent magnets 43, 44. Id.
Stator 50 includes disk-shaped magnetic body 51, which is the back yoke of
the stator. Id. A plurality of coils 53 are located on magnetic body 51. Id.
Each coil 53 is a winding of electric wire in the form of a cylinder. Id. at 11–
12. The plurality of coils 53 have holes in which a plurality of magnetic
bodies 52 are inserted. Id. at 12.
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According to the Specification,
to smoothly start and rotate a rotor using small water power or
wind power in the water power generation and wind power
generation, it is important to reduce cogging torque of the
power generator. For the reduction of cogging torque, a stator
having a coreless structure (structure including no magnetic
body such as a stator core or a back yoke) is frequently
employed; however, the lack of magnetic body leads to great
leakage of magnetic flux in a magnetic field, thus resulting in a
decreased amount of generated power (power generation
efficiency). In view of this, in the invention of the present
application, the length of magnetic body [12] inserted in coil
[13] is optimized to maximally secure an amount of generated
power (power generation efficiency) while suppressing cogging
torque to the minimum.
Id. at 6.
The relationship between the length of magnetic body 12 (Lm) and
the length of coil 13 (Lc) is expressed as a ratio. Figure 3 of the
Specification is reproduced below.

Figures 3(a) to 3(e) are cross-sectional views
showing the relationship between magnetic body
12 and coil 13 when the ratio
Lm/Lc has various values. Id. at 7.
Claim 1 is representative of the ’816 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. A power generator comprising:
a rotor including a plurality of permanent magnets
arranged to the rotational direction;
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Application 14/912,816
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a stator including a plurality of coils provided to face the
plurality of permanent magnets, each of the plurality of coils
being configured to generate AC voltage during rotation of the
rotor; and
a plurality of magnetic bodies respectively provided in
all the plurality of coils, wherein
in a direction of central axis of each of the coils, a length
Lm of each of the magnetic bodies is shorter than a length Lc of
each of the coils, a ratio of the length Lm to [the] length Lc is
expressed by 0 < Lm/Lc ≤ 0.5.
Appeal Br. 12 (emphasis added).
III. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 4, 5, and 7 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Mori,2 Dynamo,3 and Yashima.4
Final Act. 2.
2. Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Mori, Dynamo, Yashima, and Perlo.5 Final Act. 6.
3. Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Mori, Dynamo, Yashima, and Stiesdal.6 Final Act. 7.

2 JP 20091004989, published May 7, 2009.
3 DYNAMO-ELECTRIC-MACHINE, Your Dictionary (accessed October 13,
2017) https://www.yourdictionary.com/dynamo-electric-machine.
4 US 2005/0127761 A1, published June 16, 2005.
5 US 7,592,712 B2, issued September 22, 2009.
6 US 2011/0210558 A1, published September 1, 2011.
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4. Claims 8 and 9 are rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Mori, Dynamo, Yashima, and Guey.7 Final
Act. 8.
5. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Mori, Dynamo, Yashima, and Epskamp.8 Final Act. 9.
IV. DISCUSSION
A. Rejection of claims 1, 2, 4, 5, and 7 over Mori, Dynamo, and Yashima
Appellant argues for reversal of this rejection on the basis of
limitations found in claim 1. Appeal Br. 5–11. Dependent claims 2, 4, 5, 7
are said to be patentable because parent independent claim 1 is patentable.
Id. at 11. We, therefore, select claim 1 as representative of the group of
claims subject to this ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv) (2015).
Appellant raises two issues in this appeal: (1) whether Yashima
teaches “a ratio of the length Lm to [the] length Lc is expressed by
0 < Lm/Lc ≤ 0.5” and (2) whether a person of ordinary skill in the art would
have combined Mori and Yashima in the manner relied upon by the
Examiner. Appeal Br. 5. For reasons that shall become apparent, we need
only address Appellant’s first argument.
In rejecting claim 1, the Examiner found that Mori describes each
limitation of claim 1 except for the requirement that the ratio Lm to Lc falls
within the range set forth in claim 1. Final Act. 3. The Examiner further
found that Yashima teaches this limitation. Id. at 3–5 (citing Yashima Fig.

7 US 2008/0143110 A1, published June 19, 2008.
8 DE 10 2009 014 147 A1, published October 7, 2010.
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1(b), ¶ 56). For ease of reference, we reproduce Yashima’s Figure 1(b)
below:

Figure 1(b) is a lateral cross-sectional view
of an axial air gap single-phase brushless motor.
Yashima ¶ 38.
Yashima’s paragraph 56 states that the length of magnetic piece 9 “is
roughly the same as half the length of the long axis of the air-core part 6C.”
The Examiner also found that Yashima teaches that this structure stably
stops the rotor. Id. at 3–4 (citing Yashima ¶ 19). The Examiner concluded
that it would have been obvious to a person of ordinary skill in the art at the
time of the invention to combine Mori and Yashima so that the rotor of
Mori’s power generator can be stably stopped. Id. at 4–5.
Appellant argues that the Examiner erred by finding that Yashima’s
paragraph 56 is discussing Figure 1(b). Appeal Br. 6–7. According to
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Appellant, that portion of Yashima actually is discussing Figure 2. Id. We
reproduce Yashima’s Figure 2 below:

Figure 2 is a plan view of a
single-phase brushless motor.
We agree with Appellant that Yashima’s paragraph 56 is describing
Figure 2. This is a significant error because Figure 1B is a cross-sectional
view of the brushless motor shown in Figure 2. Thus, the statement in
paragraph 56 about the relative lengths of magnetic piece 9 and air-core part
6C does not apply to the dimensions relied upon by the Examiner in
rejecting claim 1.
Nor can the Examiner rely upon the relative sizes of the components
shown Figure 1(b). As Appellant points out, the patent drawings are
presumed to be drawn in a not-to-scale fashion. Appeal Br. 7. As the Federal
Circuit has explained: “Under our precedent, however, it is well established
the patent drawings do not define the precise proportions of the elements and
may not be relied upon to show particular sizes if the specification is
completely silent on the issue.” Hockerson-Halberstadt Inc. v. Avia Grp.
Int’l Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). See also In re Wright, 569
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F.2d 1124, 1127 (CCPA 1977) (“Absent any written description in the
specification of quantitative values, arguments based on measurement of the
drawing are of little of value.”).
For these reasons, the Examiner’s finding that Yashima describes or
suggests a magnetic piece and an air-core part having lengths the ratio of
which falls within the range recited in claim 1 is unsupported by evidence.
Thus, we reverse the rejection of claim 1. Accordingly we also reverse the
rejection of claims 2, 4, 5, and 7.
B. Rejection of claim 3 over Mori, Dynamo, Yashima, and Perlo
Appellant does not present separate arguments for reversal of this
rejection. Accordingly, we reverse the rejection of claim 3 because we have
reversed the rejection of parent independent claim 1 and the Examiner has
not shown that Perlo cures the defects we have identified above.
C. Rejection of claim 6 over Mori, Dynamo, Yashima, and Stiesdal
Appellant does not present separate arguments for reversal of this
rejection. Accordingly, we reverse the rejection of claim 6 because we have
reversed the rejection of parent independent claim 1 and the Examiner has
not shown that Stiesdal cures the defects we have identified above.
D. Rejection of claims 8 and 9 over Mori, Dynamo, Yashima, and Guey
Appellant does not present separate arguments for reversal of this
rejection. Accordingly, we reverse the rejection of claims 8 and 9 because
we have reversed the rejection of parent independent claim 1 and the
Examiner has not shown that Guey cures the defects we have identified
above.
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E. Rejection of claim 10 over Mori, Dynamo, Yashima, and Epskamp
Appellant does not present separate arguments for reversal of this
rejection. Accordingly, we reverse the rejection of claim 10 because we have
reversed the rejection of parent independent claim 1 and the Examiner has
not shown that Eskamp cures the defects we have identified above.
V. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Basis Affirmed Reversed
1, 2, 4, 5, 7 103 Mori, Dynamo, Yashima 1, 2, 4, 5, 7
3 103 Mori, Dynamo, Yashima, Perlo 3
6 103 Mori, Dynamo, Yashima, Stiesdal 6
8, 9 103 Mori, Dynamo, Yashima, Guey 8, 9
10 103 Mori, Dynamo, Yashima, Epskamp 10
Overall Outcome 1–10
REVERSED