PROTEAN ELECTRIC LIMITED

Patent Trials and Appeals Board

Sep 2, 2020

14436138 - (D) (P.T.A.B. Sep. 2, 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.
14/436,138 04/16/2015 John Foulsham 11708P/WOUS 8296
15815 7590 09/02/2020
The Mason Group Patent Specialists LLC
24610 Kingsland Blvd
Katy, TX 77494
EXAMINER
MULLINS, BURTON S
ART UNIT PAPER NUMBER
2832
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
docketing@nolteip.com
twhite@themasongroup.net
vdavis@nolteip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN FOULSHAM and JAMIE BELL

Appeal 2019-005392
Application 14/436,138
Technology Center 2800
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
JEFFREY R. SNAY, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7, 9–12, and 15–19.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Protean
Electric Limited. (Appeal Br. 2.)
2 Pending claims 13 and 14 are objected to as being dependent upon a
rejected base claim, but are not rejected. (Non-Final Act. 15.)
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Application 14/436,138

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STATEMENT OF THE CASE
Claims 1 and 19 illustrate the subject matter on appeal and are
reproduced below:
1. A stator or rotor for an electric motor or generator
comprising: a circumferential support having a protrusion; a
tooth arranged to receive coil windings, wherein the tooth
includes a recess in which is housed the protrusion of the
circumferential support, wherein the protrusion and the
recess in the tooth are arranged to have a tubular-shaped
channel formed between adjacent surfaces of the recess and
the protrusion when the protrusion is housed in the recess;
and a material is placed within the tubular-shaped channel,
wherein the material is arranged to harden after being placed
within the tubular-shaped channel to form a retention pin
that acts as an interlocking element for retaining the tooth to
the support.

19. A method of manufacturing a stator or rotor comprising:
providing a plurality of teeth, wherein each tooth includes a
recess with a channel formed in a surface of the recess, and a
circumferential support having a plurality of protrusions
circumferentially distributed about the support, wherein the
plurality of protrusions each have a channel formed on a
surface of the protrusions; placing coil windings around
each of the plurality of teeth and mounting the protrusions
formed on the circumferential support into a recess of a
respective tooth so that the channel formed in the surface of
the recess and the channel formed on the surface of the
protrusions are on adjacent surfaces combine to form a
plurality of tubular-shaped channels between the adjacent
channels; and placing material between the within the
tubular-shaped channels, wherein the material is arranged to
harden after being placed within the tubular-shaped
channels, and wherein the hardened material forms retention
pins that act as interlocking elements for retaining the
plurality of teeth to the support.

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Application 14/436,138

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Appeal Br. 14 and 17–18, Claims Appendix.
The following rejections are presented for our review3:
I. Claim 19 is rejected under 35 U.S.C. § 112, second paragraph as
indefinite.
II. Claims 1–7, 9–11, and 16–19 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Yamamoto et al. (JP 2000-134831, pub. May 12, 2000)
in view of Mongeau et al. (US 7,990,015 B2, iss. Aug. 2, 2011), and Hsu
(US 7,550,892 B2, iss. June 23, 2009).
III. Claims 12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamamoto, Mongeau, Hsu, and Jaganjac (GB 2477520 A,
pub. Aug. 10, 2011).
IV. Claims 1, 2, 5–7, 9–11, and 16–19 rejected under 35 U.S.C. § 103
as unpatentable over Yamamoto in view of the Forbes et al. (US 4,712,035,
iss. Dec. 8, 1987).
V. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamamoto, Forbes, and GB 681,578 (pub. Oct. 29, 1952)
(“GB ’578”).
VI. Claims 12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamamoto, Forbes, and Jaganjac.

3 The complete statement of the rejections on appeal appears in the Final
Office Action. (Non-Final Act. 2–15.)
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OPINION
Indefiniteness
The Examiner determines the recitation “placing material between the
within the tubular-shaped channels” is unclear and therefore rejects claim 19
as indefinite. (Non-Final Act. 2.) We summarily sustain.
Appellant does not contest this rejection (see Briefs generally). 37
C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).

Prior Art rejections
Rejections over Yamamoto, Mongeau, and Hsu
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejections of claims 1–7, 9–11, and
16–19 under 35 U.S.C. § 103(a) as obvious over Yamamoto, Mongeau, and
Hsu as well as the rejection of claims 12 and 15 over those references further
in view of Jaganjac.4
We consider the record to determine whether Appellant has identified
reversible error in the Examiner’s rejections. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an

4 The complete statement of the rejections on appeal appears in the Non-
Final Office Action. (Non-Final Act. 2–9.)
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applicant to identify the alleged error in the examiner’s rejections,” citing Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)).
Appellant argues for reversal of all of the rejected claims as an
undifferentiated group. See generally (Appeal Br. 6–9.) We, therefore,
select claim 1 as representative of the claims on appeal. 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
Because we discern no reversible error in the Examiner’s factual
findings, analysis, and conclusion, we adopt them as our own. We add the
following for emphasis only.
Appellant argues none of the cited references, Yamamoto, Mongeau,
and Hsu, disclose or suggest “the language of independent claims 1, 18, and
19, once the material, which is placed within the tubular-shaped channel
formed between the adjacent surfaces of the recess (within the tooth) and
protrusion (from the stator or rotor), is hardened, it forms a retention pin for
retaining the tooth to the support.” (Appeal Br. 7) (emphasis omitted.)
Appellant argues that Mongeau does not teach that his resin/deformable
compound hardens and at most, the combination of Mongeau and Hsu
discloses applying a material between the entirety of the interfacing surfaces
between two elements in order to strengthen the assembly as a whole.
(Appeal Br. 7.) Appellant further argues it is impossible for the hardening
material of Mongeau and Hsu to form a pin, a rod, or some similarly shaped
item within a hole or opening. (Appeal Br. 8.)
Appellant’s arguments are not persuasive because they are not
supported by factual evidence. Appellant has not refuted the Examiner’s
position that Mongeau teaches the use of either an elongated rod or a resin
deformable compound place within a tubular recess created by combining
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the tooth and tip components. (Non-Final Act. 3; Mongeau col. 7, ll. 24–
38.) Appellant has not directed us to evidence that established that the resin
materials of the claimed invention are distinct from the resins described by
Mongeau and Hsu or that the resin cured under conditions that are different
from the claimed invention.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejections of
claims 1–7, 9–11, and 16–19 under 35 U.S.C. § 103(a) as obvious over
Yamamoto, Mongeau, and Hsu as well as the rejection of claims 12 and 15
over those references further in view of Jaganjac.

Rejections over Yamamoto and Forbes
After review of the respective positions Appellant and the Examiner
provide, we determine that Appellant has demonstrated reversible error in
the Examiner’s rejections under 35 U.S.C. § 103 that rely on Yamamoto and
Forbes. We limit our discussion to independent claim 1.
The dispositive issue for this rejection is:
Did the Examiner reversibly err in determining, from the teaching of
Yamamoto and Forbes, the that it would have been obvious to replace
Yamamoto’s pre-formed pins with a material arranged to harden, after being
placed within the tubular recess created by combining the tooth and tip
component, to form a retention pin that acts as an interlocking element for
retaining the tooth to the support as required by independent claims 1, 18,
and 19?
Appellant argues Yamamoto only teaches the use of a preformed pin
placed within the opening created from the alignment a tooth and yolk
elements. (Appeal Br. 10.) Appellant argues Forbes only teaches applying a
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material between two elements to prevent engagement of the elements.
Appellant specifically states:
Forbes teaches applying a material between two elements to
prevent engagement of the elements. Particularly, a hardenable
adhesive material 83 is applied between the entirety of the
interfacing surfaces of a projection row 65r of a salient pole
piece 57 and a notch row 45r of a yoke section 35 “to at least
assist in insuring or enhancing the aforementioned displacement
preventing engagement of the projections and notch rows.” See,
e.g., FIG. 9 and col. 8, lines 37-44. In another embodiment,
application of the material 83 is extended to being placed
between a base section 61 of the salient pole pieces 57 and
outer circumferential surface 47 of the yoke section 35 adjacent
the notch row 45r. See, e.g., FIG. 9 and col. 8, lines 45-48.
Thus, in any given scenario presented in Forbes, it is impossible
for the hardened adhesive material to form a pin within a hole
or opening.
(Appeal Br. 10, emphasis omitted.)
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The Examiner has failed to direct us to evidence that Forbes teaches
the resin material is suitable for hardening after being placed within the
tubular recess created by combining the tooth and tip component to form a
retention pin that acts as an interlocking element for retaining the tooth to
the support as required by independent claims. As depicted in Figure 9,
Forbes teaches the hardenable adhesive material 83 is applied between the
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entirety of the interfacing surfaces of the projection row and the notch row to
prevent displacement. (Forbes col. 8, ll. 37–44.) Consequently, the
Examiner has failed to properly explain how the combination of Yamamoto
and Forbes renders obvious the limitations of independent claims 1, 18, and
19.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103
rejections of all the claims on appeal that rely on the combination of
Yamamoto and Forbes alone or with additional references. The additional
references fail to cure the deficiency discussed above.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
19 112, second paragraph Indefiniteness 19
1–7, 9–11,
16–19 103(a)
Yamamoto,
Mongeau, Hsu
1–7, 9–11,
16–19
12, 15 103(a)
Yamamoto,
Mongeau, Hsu,
Jaganjac
12, 15
1, 2, 5–7, 9–
11, 16–19 103(a) Yamamoto, Forbes
1, 2, 5–7,
9–11, 16–
19
3, 4 103(a) Yamamoto, Forbes, GB ’528 3, 4
12, 15 103(a) Yamamoto, Forbes, Jaganjac 12, 15
Overall
Outcome
1–7, 9–12,
15–19

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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