Ex Parte Bach Andersen et alDownload PDFPatent Trial and Appeal BoardSep 25, 201411569270 (P.T.A.B. Sep. 25, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NIELS KRISTIAN BACH ANDERSEN, BRIAN LUNSTED POULSEN, THOMAS BLAD, and KJELD HELLEGAARD Appeal 2012-012107 Application 11/569,270 Technology Center 2800 ____________ Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the decision of the Primary Examiner rejecting claims 1–15, 17, 18, and 20–23. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse. 1 The Real Party-In-Interest is Grundfos a/s (Appeal Br. 1). Appeal 2012-012107 Application 11/569,270 2 CLAIMED SUBJECT MATTER Appellants’ invention is directed to a laminated core for electromagnetic applications which is made up of at least two segments (Abstract). At least one of the segments has, on a side edge, an engagement groove, and at least the other segment has a corresponding engagement projection (id.). The engagement groove and the engagement projection are dimensionally matched to one another so that either the engagement projection or the engagement groove are plastically deformed by inserting the engagement projection into the engagement groove, and the other is elastically deformed by this action (Spec. ¶ 14). Independent claim 1 is representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Brief: 1. A laminated core for electromagnetic applications with at least two segments (2), of which at least one at a first side-edge (11) comprises an engagement groove (12), and the other at an opposite second side-edge (9) comprises a corresponding engagement projection (10), via which the two segments are connected to one another into a component, wherein the engagement groove (12) comprises an undercut in the form of a widened section (26) distanced to the groove opening and the engagement projection (10) extends from the second side-edge (9) and comprises a free end and a web (16) that connects the free end to the second side-edge (9), and wherein the engagement projection (10) and the engagement groove (12) are dimensioned to one another in a manner such that at least one of the free end of the engagement projection (10) and the engagement groove (12) is elastically deformed by way of inserting the engagement projection (10) into the engagement groove (12) and at least one of the free end of the engagement projection (10) and the engagement groove (12) is plastically deformed by way of inserting the engagement projection (10) into the engagement groove (12), so that the engagement projection (10) engages into the widened section (26) of the engagement groove (12) to establish a secure locking connection. Appeal 2012-012107 Application 11/569,270 3 REJECTIONS Five rejections are appealed: (1) Claims 1–15, 17, 18, and 20–23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. (2) Claims 1–8, 10, 11, 13–15, 17, 18, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Kazama.2 (3) Claims 9 and 23 under 35 U.S.C. § 103(a) as unpatentable over Kazama in view of Suzuki.3 (4) Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Kazama in view of Kato.4 (5) Claim 20 under 35 U.S.C. § 103(a) as unpatentable over Kazama in view of Shida.5 REJECTION (1) The Examiner attempts to document inconsistencies between the Specification, the claims, and information provided in the Rule 132 Declaration of Brian Lundsted Poulsen (Non-Final Rejection6 11–13), but does not specify persuasively how these alleged inconsistencies cause the claims to fail to meet the written description requirement of § 112. 2 Kazama et al, U.S. Patent No. 6,504,284 B1, issued January 7, 2003. 3 Suzuki, U.S. Patent No. 5,786,651, issued July 28, 1998. 4 Kato, JP 2000-069694 A, published March 3, 2000. 5 Shida, et al., U.S. Patent No. 6,595,760 B2, issued July 22, 2003. 6 Non-Final Rejection mailed December 9, 2011. In accordance with 37 C.F.R. § 41.39(a)(1), the Examiner’s Answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken. In this instance, the Examiner made such an incorporation explicit (Ans. 3). Accordingly, we cite to the Non-Final Rejection, as necessary. Appeal 2012-012107 Application 11/569,270 4 Accordingly, the Examiner’s comparison is not germane to our analysis of the rejection under § 112 for lack of written description. The Examiner finds that two separate elements in the claims were not described in the Specification as filed: (1) the limitation in each of the independent claims that the “free end” of the engagement projection is either plastically or elastically deformed by insertion of the engagement projection into the engagement groove (Non-Final Rejection 13); and (2) the limitation that at least one of the free end of the engagement projection and the engagement groove is plastically deformed and that at least one is elastically deformed (Non-Final Rejection 14). In order to satisfy the written description requirement of § 112, the specification – including the drawings and the originally filed claims – must allow a person of ordinary skill in the art to recognize that the inventor invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989). The specification must reasonably convey to a person of ordinary skill in the art that the inventor had possession as of the filing date of the claimed subject matter. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). The specification, however, need not describe the claimed subject matter word-for-word. In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). With regard to the use of the word “free end” of the engagement projection in the claims, the Specification identifies the “free end of the engagement projection” as circular section 14 in FIG. 3 (Spec. ¶ 43): Appeal 2012-012107 Application 11/569,270 5 FIG. 3 shows a detailed view of an engagement portion of a stator segment according to the claimed invention. The Specification then states that “the material in the region of the circular section 14 of the engagement projection 10 is plastically deformed” (Spec. ¶ 45). In our view, the combination of identifying the “free end” of the engagement projection as “circular section 14” and then stating that “circular section 14 . . . is plastically deformed” reasonably conveys to a person of ordinary skill in the art that the inventor had, as of the filing date of the application, possession of the limitation that the “free end” of the engagement projection may be plastically deformed or elastically deformed. Ralston Purina, 772 F.2d at 1575. With regards to the limitation that at least one of the free end of the engagement projection and the engagement groove is plastically deformed and that at least one is elastically deformed, the Examiner finds that because an Exhibit filed by Applicants during prosecution shows both the engagement projection and the engagement groove being plastically deformed, the claimed requirement that one be plastically deformed and the other be elastically deformed is not described within the meaning of § 112. We disagree with the Examiner and find that the disputed limitation is described as required by § 112. In particular, as noted by Appellants Appeal 2012-012107 Application 11/569,270 6 (Appeal Br. 6), originally filed claim 1 recites that the engagement projection “and/or” the engagement groove are plastically deformed, while originally filed claims 4 and 16 recite that the engagement projection and engagement groove may be elastically deformed. Thus, we find that the combination of originally filed claims 1, 4, and 16 demonstrate that a person of ordinary skill in the art will recognize that Appellants invented a system in which at least one of the free end of the engagement projection and the engagement groove is plastically deformed and that at least one is elastically deformed. In re Gosteli, 872 F.2d at 1012. Therefore, we reverse the written description rejections under 35 U.S.C. § 112, first paragraph. REJECTIONS (2)–(5) The Examiner finds that Kazama discloses each of the limitations of the independent claims except that it does not “clearly describe” the claimed deformation properties (Non-Final Rejection 17). The Examiner finds that a person of skill in the art would create components with the claimed deformation characteristics “for [the] predictable result of reducing friction by inserting the convexity into the concavity” (id.). Appellants argue that Kazama does not disclose plastic deformation in either the free end of the engagement projection or the engagement groove and that, therefore, the Examiner has not made out a prima facie case of obviousness (Appeal Br. 8–9). In particular, Appellants argue that the plastic deformation in Kazama occurs in arm 15 (which corresponds to the claimed web 16) which connects the convexity 8b (which corresponds to the claimed free end of the engagement projection) with yoke 6 (which Appeal 2012-012107 Application 11/569,270 7 corresponds to the claimed second side edge 9), as shown in Kazama FIG. 5a: FIG. 5a illustrates two of Kazama’s segments immediately after being joined. In response, the Examiner finds that Kazama discloses “an arm connecting a root to a tip of the coupling convexity to be plastically deformed,” and that “[t]he ‘arm’ has been defined to be from the tip (top end) to the root (bottom end) of the convexity (8b, Fig. 18)” (Ans. 7). The Examiner further states that the rejection does not rely on the embodiments disclosed in FIG. 5a (id.). We agree with Appellants that the Examiner has not demonstrated that Kazama teaches that the free end of the engagement projection (or the engagement groove) is plastically deformed, as required by the claims. Although the Examiner states that “[t]he ‘arm” has been defined” to include both the convexity (corresponding to the claimed free end) and the root (presumably corresponding to the claimed web), the Examiner does not provide any support for this statement. Appeal 2012-012107 Application 11/569,270 8 It is well understood that to reject a claim in a patent application as obvious under 35 U.S.C. § 103(a), the Examiner must establish a prima facie case of obviousness, which includes a showing that each of the claimed limitations are either shown or suggested by the prior art. “In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). In this instance, we agree with Appellants that the Examiner has not persuasively shown that Kazama discloses a free end of an engagement portion which is plastically (or elastically) deformed. Accordingly, we reverse the obviousness rejection over Kazama (Rejection (2)). With respect to Rejections (3)–(5), which recite the combination of Kazama with various secondary references, the Examiner does not rely on any of the secondary references to address the location of the plastic deformation discussed above. Accordingly, we also reverse these rejections. CONCLUSION We REVERSE the rejection of claims 1–15, 17, 18, and 20–23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. We REVERSE the rejection of claims 1–8, 10, 11, 13–15, 17, 18, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Kazama. We REVERSE the rejection of claims 9 and 23 under 35 U.S.C. § 103(a) as unpatentable over Kazama in view of Suzuki. We REVERSE the rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable over Kazama in view of Kato. Appeal 2012-012107 Application 11/569,270 9 We REVERSE the rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable over Kazama in view of Shida. REVERSED cdc Copy with citationCopy as parenthetical citation