Ex Parte Jaganjac

Patent Trials and Appeals Board

Jun 5, 2019

13813983 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/813,983 10/14/2013
15815 7590 06/07/2019
The Mason Group Patent Specialists LLC
2300 McDermott Rd
Suite 253
Plano, TX 75025
FIRST NAMED INVENTOR
Esad Jaganjac
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P6403 l.US01 7340
EXAMINER
MATES, ROBERT E
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
06/07/2019 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):
vdavis@themasongroup.net
info@themasongroup.net
twhite@themasongroup.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ESAD JAGANJAC
Appeal2018-003043
Application 13/813,983
Technology Center 2800
Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12, 14--17, and 19-23, which are all the claims
pending in this application. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In explaining our Decision, we refer to the Specification filed February 4,
2013 ("Spec."); Appeal Brief filed April 24, 2017 ("Br."); and Examiner's
Answer dated September 7, 2017 ("Ans."). There is no reply brief.
2 Protean Electric Limited is identified as the real party in interest. Br. 3.
3 Claims 13 and 18 are canceled. Br. 5.
Appeal2018-003043
Application 13/813,983
The Claimed Subject Matter
Appellant's disclosure relates to an interlocking arrangement for
connecting together elements of an electric motor. Spec. 1; Abstract.
According to the Specification, the claimed subject matter provides an
electric motor comprising a rotor and a stator in which two or more of the
components are connected together without the need for a third body, such
as a locating pin. Spec. 2.
Claim 1 is illustrative of the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. An electric motor or generator, comprising:
a rotor and a stator,
wherein at least one of the rotor and stator comprises a
first component and a second component having a common
circumference, the first component having one or more recesses
distributed around the common circumference and the second
component having one or more resiliently deformable
protrusions arranged to protrude into the one or more
recesses so as to press against side walls of the recesses to resist
relative rotation of the first and second components;
wherein the first component is fitted to the second
component by heating and subsequent cooling so as to form an
interference fit between the first component and the second
component and to resiliently deform the protrusions against the
side walls of the recesses; and
wherein the first component is fitted to the second
component by sliding the protrusions into the recesses so as to
align the respective components prior to cooling.
Br. 30 (key disputed claim language emphasized).
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Application 13/813,983
The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Crocker
Royer
Lung et al. ("Lung")
Savant
Y amamura
Baba
us 2,269,651
us 4,862,581
US 2007/0159022 Al
US 2010/0085706 Al
JP 1198724 A
JP 2007252088 A
The Rejections
Jan. 13, 1942
Sept. 5, 1989
July 12, 2007
Apr. 8, 2010
Apr. 9, 1999
Sept. 27, 2007
On appeal, the Examiner maintains the following rejections (Ans. 2):
1. Claims 1-7, 9, 11, 12, 14, 16, 17, and 20-23 are rejected under
pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Baba in view of
Yamamura ("Rejection 1 "). Final Act. 2.
2. Claim 8 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Baba in view of Yamamura and Crocker ("Rejection 2").
Final Act. 11.
3. Claim 10 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Baba in view ofYamamura and Savant ("Rejection 3").
Final Act. 12.
4. Claim 19 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Baba in view of Yamamura and Lung ("Rejection 4").
Final Act. 12.
5. Claims 1, 14, and 15 are rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Royer, Baba, and Yamamura
("Rejection 5"). Final Act. 13.
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Application 13/813,983
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections based on the fact-finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We add the following.
Reiection 1
Appellant argues independent claims 1, 20, and 23 as a group and
does not separately argue dependent claims 2-7, 9, 11, 12, 14, 16, 17, 21,
and 22. Br. 11, 22. We select claim 1 as representative and claims 2-7, 9,
11, 12, 14, 16, 17, and 20-23 stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner determines that the combination of Baba and
Y amamura suggests an electric motor or generator satisfying all of the
limitations of claim 1 and, thus, concludes the combination would have
rendered claim 1 obvious. Final Act. 2-5 (citing Baba ,r,r 12, 13, Fig. 1;
Yamamura ,r,r 26, 58, Fig. 18).
The Examiner finds that Baba teaches the majority of the limitations
of claim 1, but that it does not explicitly teach the "one or more resiliently
deformable protrusions arranged to protrude into the one or more recesses so
as to press against side walls of the recesses" and "to resiliently deform the
protrusions against the side walls of the recesses" recitations of the claim.
Final Act. 4 ( emphasis added). The Examiner, however, relies on
Y amamura for teaching or suggesting these elements of the claim. Id. at 4--5
( citing Yamamura ,r,r 26, 58, Fig. 18).
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Application 13/813,983
Based on the above findings, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to modify Baba' s electric motor to have
one or more resiliently deformable protrusions 106
arranged to protrude into the one or more recesses 108 so
as to press against side walls 109 of the recesses 108; and
... to resiliently deform the protrusions 106 against the
side walls 109 of the recesses 108 ... as taught by
Yamamura, for the advantageous benefit of suppressing
flux leakage as taught by Yamamura.
Id. at 5 ( citing Yamamura ,r,r 26, 58).
Appellant argues that the Examiner's rejection should be reversed
because "modifying Baba in accordance with Y amamura would render Baba
unsatisfactory for its intended purpose." Br. 11. In particular, Appellant
contends that
incorporating Yamamura's flexible stress-absorbing strips
into Baba would render Baba unsatisfactory for its
intended purpose of transforming (not absorbing) a
compression stress at the concave part 20 to a tensile
stress at the polygonal comer 104.
Id. at 18.
We do not find Appellant's argument persuasive of reversible error in
the Examiner's rejection because Appellant does not direct us to persuasive
evidence or provide an adequate technical explanation to support it.
Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984).
Although Appellant contends that "the objective of the Baba invention
is to reduce or eliminate compressive stress" (Br. 16) and Yamamura is
"directed to absorbing rather than generating stress" (id. at 17), Appellant
does not persuasively explain how modifying Baba's electric motor to
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Application 13/813,983
include Y amanmra' s resiliently deformable protrusions arranged to protrude
into the recesses and press against side walls of the recesses would render
Baba unsatisfactory for its intended purpose.
To the contrary, as the Examiner finds (Ans. 3--4), Baba teaches a
"shrinkage fit" exists between the recesses 24 in the first component 102 that
receive the protrusions 26 of the second component 101 (Baba ,r,r 9, 12, Fig.
1 ), which suggests that there is some deformation between the first
component 102 and the second component 101. As the Examiner further
finds (Ans. 4), Baba is merely silent as to whether the deformation is
"resilient," as recited in the claim. See also id. at 5 (finding that "Baba is
silent as to the degree of deformation produced by the shrink fit").
As the Examiner also finds (Ans. 4--5), Yamamura describes an
electric motor structure similar to Baba and teaches the press fitting of a
second component 105 into a first component 103 with dual protrusions 106
of the second component 105 received into the recess 108 of the first
component 103. Yamamura ,r 58, Fig. 18. As the Examiner explains (Ans.
5), based on Y amamura' s teaching that the deformation of the press fit is
resilient, i.e., "has the elasticity which returns to the original state" for the
benefit of suppressing magnetic flux leakage after fitting (Y amamura ,r 26),
it follows that one of ordinary skill would have had reason to modify Baba's
protrusions 26 to be "resiliently deformable," as claimed.
Appellant's contentions do not reveal any reversible error in the
Examiner's factual findings or analysis in this regard.
Appellant's comments at page 19 of the Appeal Brief regarding what
Appellant contends Yamamura's Figure 18 teaches and that paragraph 26 of
Y amamura is "solely directed to a first embodiment" (Br. 19) are not
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persuasive because Y amanmra is good for all that it teaches and would have
reasonably suggested to one of ordinary skill in the art. In re Bode, 550 F.2d
656, 661 (CCPA 1977) (stating that a "reference must be evaluated for all it
teaches and is not limited to its specific embodiments").
Appellant's assertion that "modifying Baba to include these
limitations would render this prior art unsatisfactory for its intended purpose
of reducing compression stress" (Br. 22) is not well-taken because it is
conclusory and unsupported by persuasive evidence in the record. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere
lawyer's arguments or conclusory statements, which are unsupported by
concrete factual evidence, are entitled to little probative value).
Appellant argues that the Examiner's rejection should be reversed
because Yamamura's Figure 18 does not teach the "one or more resiliently
deformable protrusions arranged to protrude into the one or more recesses"
recitation of the claim. Id. at 19.
We do not find this argument persuasive of reversible error because
Appellant attacks the references individually rather than the combined
teachings of the prior art as a whole. One cannot show non-obviousness by
attacking references individually where the rejection is based on a
combination of references. In re Keller, 642 F.2d 413,425 (CCPA 1981).
Appellant's argument in this regard is premised on what Appellant contends
Yamamura teaches individually, and not the combined teachings of Baba
and Y amamura as a whole and what the combined teachings would have
suggested to one of ordinary skill in the art.
Moreover, based on the fact-finding and reasoning provided by the
Examiner at pages 2-5 of the Final Office Action and pages 4--5 and 7-8 of
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the Answer, we find that a preponderance of the evidence does support the
Examiner's analysis and determination (Final Act. 2-5; Ans. 4--5, 7-8) that
the combination of Baba and Y amamura describes or suggests all of the
limitations of claim 1, including the "one or more resiliently deformable
protrusions arranged to protrude into the one or more recesses" recitation of
the claim. Baba ,r,r 12, 13, Fig. 1; Yamamura ,r,r 26, 58, Fig. 18.
Appellant argues that Baba addresses a different problem and the
teachings of Baba and Y amamura do not provide the same "technical effect
and advantage" as the claimed invention. Id. at 21-22. In particular,
Appellant contends that Baba "addresses the problem of reducing stress
within a stator back iron, where the circumferential support 102 ... does not
form part of the electromagnetic characteristics of the electric motor." Id. at
21-22.
We do not find this argument persuasive of reversible error in the
Examiner's rejection because, in making an obviousness determination, the
prior art does not have to be directed to trying to solve the same problem in
which the claimed invention is directed. Indeed, the Supreme Court has
stated that it is error to "look only to the problem the patentee [ or applicant]
was trying to solve." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007). As the Examiner correctly points out (Ans. 7), Appellant's
argument in this regard is largely irrelevant. The fact that Appellant may
have "recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis for patentability
when the difference would otherwise [have been] obvious." Ex parte
Obiaya, 227 USPQ 58, 60 (BP AI 1985).
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Appellant argues that "Baba teaches away from [the] causal
requirement between heating and cooling a component such that resilient or
resiliently deformable protrusions are pressed against the side walls of the
recesses." This argument is not well-taken because it is conclusory and
Appellant does not identify persuasive evidence to support it, and we will
not read into the references a teaching away where no such language exists.
Cf DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364
(Fed. Cir. 2006).
Appellant does not direct us to any teaching in Baba which
discourages one of ordinary skill in the art from modifying Baba' s
protrusions 26 to be "resiliently deformable," as claimed. In re Fulton, 391
F.3d 1195, 1201 (finding that there is no teaching away where the prior art's
disclosure "does not criticize, discredit, or otherwise discourage the solution
claimed"). Rather, as the Examiner finds (Ans. 4--5), Baba is merely silent
as to whether the deformation is resilient and the degree of deformation
produced by the shrink fit. Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 964
(Fed. Cir. 2014) ( explaining that "silence does not imply teaching away").
Accordingly, we affirm the Examiner's rejection of claims 1-7, 9, 11,
12, 14, 16, 17, and 20-23 under pre-AIA 35 U.S.C. § 103(a) as obvious over
the combination of Baba and Y amamura.
Re;ections 2, 3, and 4
In response to the Examiner's Rejections 2, 3, and 4, respectively,
Appellant does not present any new or additional substantive arguments and,
instead, relies on the same arguments previously presented and discussed
above in response to the Examiner's Rejection 1. See Br. 23.
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Accordingly, based on the findings and technical reasoning provided
by the Examiner and for principally the same reasons discussed above for
affirming the Examiner's Rejection 1, we affirm the Examiner's Rejections
2, 3, and 4.
Reiection 5
Appellant argues claims 1, 14, and 15 as a group. Br. 23, 28. We
select claim 1 as representative and claims 14 and 15 stand or fall with
claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines that the combination of Royer, Baba, and
Y amamura suggests an electric motor or generator satisfying all of the
limitations of claim 1 and thus, concludes the combination would have
rendered the claim obvious. Final Act. 13-16 (citing Royer, Fig. 3, 4: 15-20;
Baba ,r 12, Fig. 1; Yamamura ,r,r 26, 58, Fig. 18).
Appellant argues that the Examiner's rejection of claim 1 should be
reversed because the cited art does not teach or suggest the "wherein at least
one of the rotor and stator comprises a first component and a second
component" and "wherein the first component is fitted to the second
component" limitations of the claim. Br. 26. In particular, Appellant
contends that, because the "Royer hub 4 is not a component of the Royer
rotor assembly 43," Royer does not teach or suggest the "comprises a first
component and second component" recitation of the claim. Id. at 26.
Appellant further argues that the Examiner's rejection should be
reversed because the cited art does not teach or suggest the "so as to press
against side walls of the recesses to resist relative rotation of the first and
second components" recitation of the claim. Id. at 26-27.
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Application 13/813,983
We do not find Appellant's arguments persuasive of reversible error
based on the fact-finding and reasoning provided by the Examiner at pages
13-16 of the Final Office Action and pages 9-11 of the Answer, which is
supported by a preponderance of the evidence in the record.
Contrary to what Appellant argues (Br. 26), the cited art does teach or
suggest the "wherein at least one of the rotor and stator comprises a first
component and a second component" and "wherein the first component is
fitted to the second component" recitations of the claim. In particular, as the
Examiner finds (Ans. 9), Royer teaches that the rotor assembly 43 and the
hub 4 are one integral part and rotate together. Royer, Fig. 3, 4:3-5, 4:15-
20. For example, as the Examiner correctly points out (Ans. 9), at column 4,
lines 15-20, Royer explicitly teaches that
Rotor assembly 43 is mounted to the elongate portion 30
of the hub 4 in a shrink fit so that the hub and rotor, after
their interconnection, may be considered, for the
purposes of this specification, as an integral part.
See also id. at 4:3-5 (disclosing that the "bearings 33 and 35 are mounted on
the shaft 13 to permit relative rotation of the hub 4 with respect to the shaft
13").
The cited art also teaches or suggests the "so as to press against side
walls of the recesses to resist relative rotation of the first and second
components" recitation of the claim. In particular, as the Examiner finds
(Ans. 10), Baba describes the relative movement between the first
component 102 and the second component 101 during the shrink fit (Baba,
Figs. 5(a), 5(b), 15:1-14) and suggests that as a result of the shrink fit,
projections 22 exert stress in both "X" circumferential directions to resist
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relative rotation of the first 102 and second 101 components (see id. at 12:7-
10, Fig. 2).
Appellant's disagreement as to the Examiner's factual findings,
without more, is insufficient to establish reversible error. Cf SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
("[M]ere statements of disagreement ... as to the existence of factual
disputes do not amount to a developed argument.").
Moreover, because Appellant has not filed a Reply Brief, the
Examiner's findings and analysis in this regard stand unrebutted. Absent
more, we discern no reason to reverse the Examiner's rejection. Cf In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that, even if the
examiner had failed to make a prima facie case, the Board would not have
erred in framing the issue as one of reversible error because "it has long
been the Board's practice to require an applicant to identify the alleged error
in the examiner's rejections").
Accordingly, we affirm the Examiner's rejection of claims 1, 14, and
15 under pre-AIA 35 U.S.C. § 103(a) as obvious over the combination of
Royer, Baba, and Y amamura.
DECISION
The Examiner's rejections of claims 1-12, 14--17, and 19-23 are
affirmed.
It is ordered that the Examiner's decision is affirmed.
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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).
AFFIRMED
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