Thomas FogelbergDownload PDFPatent Trials and Appeals BoardAug 16, 201914414662 - (D) (P.T.A.B. Aug. 16, 2019) Copy Citation 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. 14/414,662 01/13/2015 Thomas Fogelberg 04190-P0265A 5862 137670 7590 08/16/2019 ABB - Whitmyer IP Group LLC 600 Summer Street Stamford, CT 06901 EXAMINER HOSSAIN, KAZI S ART UNIT PAPER NUMBER 2837 MAIL DATE DELIVERY MODE 08/16/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS FOGELBERG ____________ Appeal 2018-006429 Application 14/414,662 Technology Center 2800 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and JOHN A. EVANS, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, and 4–19. Claim 3 is cancelled. The Examiner indicates that claims 20 and 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form. See Final Act. 22. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted on July 3, 2019. We reverse. 1 According to Appellant, the real party in interest is ABB Schweiz AG, CH- 5400 Baden, Switzerland. App. Br. 2. Appeal 2018-006429 Application 14/414,662 2 Invention The disclosed and claimed invention on appeal is directed to “[a] hybrid transformer core.” (Abstract). Illustrative Claim 1. A hybrid transformer core, comprising: a first yoke composed of at least one yoke beam, each yoke beam of the first yoke comprising a first plurality of stacked yoke plates of amorphous steel, and a second yoke composed of at least one yoke beam, each yoke beam of the second yoke comprising a second plurality of stacked yoke plates of amorphous steel; and at least two limbs of grain-oriented steel extending between the first yoke and the second yoke, wherein a first end of each one of the at least two limbs is coupled directly to a first surface of the first yoke in a first connection plane defined by the first surface and wherein a second end of each one of the at least two limbs is coupled directly to a second surface of the second yoke in a second connection plane defined by the second surface, wherein the first yoke along the first connection plane extends in all directions beyond a contour of the first end of each one of the at least two limbs, and wherein the second yoke along the second connection plane extends in all directions beyond a contour of the second end of each one of the at least two limbs. App. Br. 18 (Claims App.) Appeal 2018-006429 Application 14/414,662 3 Rejections A. Claims 1, 2, 4–9, 11, 13, and 14 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Salomaki (US 2010/0308951 A1, published December 9, 2010; hereinafter “Salomaki”), in view of Boenitz (US 4,668,931, issued May 26, 1987), and further in view of Avila Montes et al. (US 2008/0068119 A1, published March 20, 2008; hereinafter “Avila”). Final Act. 2. B. Claims 10, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Salomaki, Boenitz, Avila, and further in view of Hirzel (US 2005/0237146 A1, published October 27, 2005). Final Act. 10. C. Claim 12 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Salomaki, Boenitz, Avila, and further in view of Ikriannikov et al. (US 2011/0279212 A1, published November 17, 2011; hereinafter “Ikriannikov’). Final Act. 15. D. Claim 15 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Salomaki, Boenitz, Avila, and further in view of Kobayashi et al. (US 2012/0139684 A1, published June 7, 2012; hereinafter “Kobayashi”). E. Claim 16 is rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Salomaki, Boenitz, Avila, and further in view of Park (US 2011/0115590 A1, published May 19, 2011). F. Claim 17 is rejected under 35 U.S.C. § 103(a) as being obvious over Appeal 2018-006429 Application 14/414,662 4 the combined teachings and suggestions of Salomaki, Boenitz, Avila, and further in view of Eriksson et al. (US 2011/0227687 A1, published September 22, 2011; hereinafter “Eriksson”). ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. We have reviewed Appellant’s arguments in the Briefs, the Examiner’s obviousness rejections, and the Examiner’s responses to Appellant’s arguments. Appellant proffers sufficient argument and evidence to persuade us of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness. In our analysis below, we highlight and address specific findings and arguments for emphasis. Rejection A of Independent Claim 1 under 35 U.S.C. § 103(a) Issue: Under 35 U.S.C. § 103(a), did the Examiner err by failing to provide sufficient articulated reasoning with some rational underpinning to support the legal conclusion of obviousness? See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).2 Regarding the Examiner’s proffered rationale to modify Salomaki (which uses a single compressed and sintered metal powder core material – ¶ 49) with the teachings of Boenitz (which uses winding legs made of grain- oriented silicon steel laminations and yokes made of a plurality of amorphous steel laminations – col. 3, ll. 36–38), Appellant contends: 2 We give the contested claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-006429 Application 14/414,662 5 Salomaki teaches that the constituents for both the yokes 13 and limbs 12 are made of the same sintered metal powder, which is compressed between rollers into a solid form as shown in Figure 21. (Salomaki ¶¶ [0047]-[0049], [0059].) Salomaki explicitly states: “It is efficient to use so-called Sintermetal material as the core material,” i.e., for the limbs and yokes. (Salomaki¶ [0049].) Accordingly Salomaki teaches using the same powdery material for creating identical constituents to form the yokes and the limbs, which allows for simple and efficient manufacturing of the core. App. Br. 9–10 (emphasis added). Appellant further argues: Given that Salomaki’s intended purpose is to use essentially identical constituents to form the core, a person having ordinary skill in the art would not have been motivated to modify Salomaki’s core with Boenitz in order to have the first yoke and the second yoke made of plates of amorphous steel while the limbs are made of grain-oriented steel. The Federal Circuit has held that if a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900 (Fed. Cir. 1984); MPEP 2143.01(V). Here, if a skilled artisan were to modify Salomaki’s core so that each yoke 13 comprises a plurality of staked yoke plates of amorphous steel, while the limbs 12 are of grain oriented steel, such modification would detract from Salomaki’s purpose of using essentially identical constituents of the same magnetic powder material to construct a core. Also, the proposed modification would cause Salomaki’s manufacturing method to be more complicated and provide less simple and less efficient production of the core. App. Br. 10 (emphasis added). Appeal 2018-006429 Application 14/414,662 6 The Supreme Court has held that the Examiner must provide an articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418 (quoting Kahn, 441 F.3d at 988). Even if we arguendo accept the Examiner’s proffered rationale that “it was well known in art that magnetic cores can be made from different types of materials such as magnetic powder, amorphous steel, grain-oriented steel etc.” (Ans. 4), and even if such substitution from Boenitz into Salomaki would have produced predictable results, we are persuaded by Appellant’s arguments: (1) “that such modification would detract from Salomaki’s purpose of using essentially identical constituents of the same magnetic powder material to construct a core,” and, (2) “the proposed modification would cause Salomaki’s manufacturing method to be more complicated and provide less simple and less efficient production of the core.” App. Br. 10. Appellant additionally argues the importance of using insulators in Salomaki to reduce the undesirable effects of eddy currents which are induced in the magnetic core: The proposed modification [(i.e., of Salomaki and Boenitz with the direct coupling of Avila) would also detract from providing insulation between limbs and yokes necessary for reducing the adverse effects of eddy currents. (Salomaki ,¶ [0007].) Thus, not only would the proposed modification require a change in the basic principle under which Salomaki was designed to operate, but it would cause Salomaki to suffer from the drawbacks which it intends to avoid, i.e., adverse effects of eddy currents. The proposed modification would render Salomaki unsatisfactory for its intended purpose of minimizing the negative impact of eddy current effects. Appeal 2018-006429 Application 14/414,662 7 Accordingly, there is no motivation or suggestion to modify Salomaki (or the combination of Salomaki and Boenitz) with Avila. App Br. 13 (emphasis added). In support, Appellant urges that “such modification would require a change in Salomaki’s operational principle where limbs are connected to insulator pieces which are then connected to the yokes. The proposed modification would also detract from providing insulation between limbs and yokes necessary for reducing the adverse effects of eddy currents. (Salomaki ¶ [0007].).” App. Br. 13 (emphasis added). Based upon our review of the record, we find a preponderance of the evidence supports Appellant’s contentions. As described in Salomaki: The purpose of the invention being presented here is to improve the manufacture and performance of inductive component cores and to achieve an advantageous and reliable magnetic core. The purpose is also to achieve a magnetic core, in which the adverse effects of the eddy currents are as small as possible. Salomaki ¶ 7 (emphasis added). See also Salomaki ¶ 59, describing the arrangements depicted in Figures 15a and 15b, in which the use of insulator 15 aids in the reduction of eddy currents in the core. Regarding the Examiner’s proffered rationale to modify the combination of Salomaki and Boenitz with the direct coupling of limbs and yokes, as taught by Avila (¶ 30, Fig. 1) to provide a “better connection between yokes and limbs” (Final Act. 5), Appellant contends: Avila does not disclose any motivation to combine its teachings with Salomaki, and in particular, is silent regarding the yokes being connected directly to the limbs for better connection therebetween. Appeal 2018-006429 Application 14/414,662 8 Furthermore, there is no motivation or suggestion to modify Salomaki with Avila. It is well settled that if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious. In re Ratti, 270 F.2d 810, 813 (CCPA 1959); MPEP 2143.01(VI). App. Br. 11. Appellant reproduces the Examiner’s motivation to modify Salomaki (or the combination of Salomaki and Boenitz) with Avila so that the limbs are coupled directly to the surfaces of the yokes: it would have been obvious to a person of ordinary skill in the art to modify the combination of Salomaki and Boneitz [sic] in view of Avila to have two limbs [] coupled directly to a first surface of the first yoke in a first connection plane, and to a second surface of the second yoke in a second connection plane to provide better connection between yokes and limbs. App. Br. 11 (citing Final Act. 5). Appellant urges that the Examiner has made a conclusory statement with no rational underpinning to support the proffered combination of Salomaki and Boenitz with the tertiary Avila reference: Here, Salomaki, Boenitz, and Avila fail to teach or suggest the Examiner's alleged reason of providing better connection between yokes and limbs. The Examiner does not cite any passage from the cited art which would provide adequate evidentiary basis for the assertion that the proposed modification would provide better connection between yokes and limbs. Avila does not disclose any motivation to combine its teachings with Salomaki, and in particular, is silent regarding the yokes being connected directly to the limbs for better connection therebetween. Appeal 2018-006429 Application 14/414,662 9 App. Br. 11 (emphasis added). Appellant further avers: a person of ordinary skill in the art would not be motivated to modify Salomaki's core so that the limbs are coupled directly to the surfaces of the yokes because Salomaki is already configured to be mechanically strong with the use of fastener rods. The proposed modification would require a structural redesign of Salomaki’s core without imparting any benefit that Salomaki's core does not already have. Moreover, for the sake of argument, even if a person of ordinary skill in the art were to modify the core of Salomaki so that the limbs are coupled directly to the surfaces of the yokes without the insulator pieces therebetween, such modification would require a change in Salomaki's operational principle where limbs are connected to insulator pieces which are then connected to the yokes. App Br. 12–13 (emphasis added). We reproduce the pertinent portion of Salomaki’s paragraph 62 that supports Appellant’s argument: FIG. 18 presents two views of the choke 11 in its side projection and how to make the structure mechanically strong by making a forming to the grooves 19 that are placed on top of the horizontal bars 17 to protect them. The forming makes it possible to press the vertical and horizontal bars together using fastener rods 20. (emphasis added). Thus, we find a preponderance of the evidence supports Appellant’s contention that “Avila does not disclose any motivation to combine its teachings with Salomaki, and in particular, is silent regarding the yokes being connected directly to the limbs for better connection therebetween.” App. Br. 11 (emphasis added). Moreover, as argued by Appellant, we agree Appeal 2018-006429 Application 14/414,662 10 that Salomaki already evidences “that the core structure is made ‘mechanically strong’ by using fastener rods 20 to hold the yokes, limbs, and insulator pieces together. (Salomaki¶ [0062].).” App. Br. 12. Because Salomaki is already designed to have a “mechanically strong” choke 11 structure (¶ 62), we find Appellant’s argument (App. Br. 11–13) that there is no need for Avila’s direct coupling, is supported by a preponderance of the evidence. For essentially the same reasons argued by Appellant (App. Br. 5–16; Reply Br. 2–11), as discussed above, we are constrained on this record to reverse the Examiner’s obviousness Rejection A of independent claim 1 over the cited combination of Salomaki, Boenitz, and Avila. Because the Examiner has not provided sufficient articulated reasoning with some rational underpinning to support the proffered reasons for combining the base combination of Salomaki, Boenitz, and Avila, we are also constrained on this record to reverse the Examiner’s Rejection E of independent claim 16, and Rejection B of remaining independent claim 18. For the same reasons, we also reverse the Examiner’s obviousness rejections A–F of each dependent claim on appeal. Accordingly, for essentially the same reasons argued by Appellant, as discussed above, we reverse the Examiner’s obviousness rejections A–F of all claims 1, 2, and 4–19 on appeal. CONCLUSION The Examiner erred in rejecting claims 1, 2, and 4–19, as being obvious under pre-AIA 35 U.S.C. § 103(a), over the combined teachings and suggestions of the cited prior art. Appeal 2018-006429 Application 14/414,662 11 DECISION We reverse the Examiner’s decision rejecting claims 1, 2, and 4–19 under pre-AIA 35 U.S.C. § 103(a). REVERSED Copy with citationCopy as parenthetical citation