Ex Parte Oba et alDownload PDFPatent Trial and Appeal BoardSep 25, 201411786810 (P.T.A.B. Sep. 25, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte YUKINORI OBA and TAKAHIRO SHIMIZU ________________ Appeal 2011-010765 Application 11/786,810 Technology Center 3700 ________________ Before STEVEN D.A. McCARTHY, MICHAEL L. HOELTER and MITCHELL G. WEATHERLY, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellants1 appeal under 35 U.S.C. § 134 (2011) from the 2 Examiner’s final decision rejecting claims 1, 2, 1517 and 2226. The 3 Appellants have canceled claims 314, 18 and 19. Claims 20 and 21 are 4 withdrawn from consideration. We have jurisdiction under 35 U.S.C. §6(b) 5 (2011). 6 We AFFIRM. 7 1 The Appellants identify the real party in interest as Mitsui High-Tec, Inc. Appeal 2011-010765 Application 10/786,810 2 The claims on appeal are directed to the production of an iron core for 1 the stator of an electric motor. (Spec., para. 1). Claims 1 and 15 are 2 independent. Claim 1 is illustrative: 3 1. An iron core-producing method for 4 blanking substantially linear iron cores from a strip 5 having a length and width, the method comprising 6 the steps of: 7 providing a) a first punch; b) a first die; c) a 8 second punch; and d) a second die; 9 blanking a first iron core from the strip 10 through the first punch and first die in such a 11 manner that the first iron core has a longitudinal 12 extent and comprises a plurality of discrete, 13 interconnected pole pieces each comprising a yoke 14 portion and a tooth portion formed on and 15 projecting from the yoke portion and a longitudinal 16 direction of the first iron core is inclined relative to 17 and greater than the width of the strip; and 18 blanking a second iron core from the strip 19 through the second punch and second die in such a 20 manner that the second iron core comprises a 21 second plurality of interconnected pole pieces each 22 comprising a second yoke portion and a second 23 tooth portion formed on and projecting from the 24 second yoke portion and a longitudinal direction of 25 the second iron core is inclined relative to and 26 greater than the width of the strip. 27 28 ISSUES 29 The Examiner rejects claims 1, 2, 1517 and 2226 under 35 U.S.C. 30 § 103(a) (2011) as being unpatentable over Minao (JP H11-56455 A, publ. 31 Appeal 2011-010765 Application 10/786,810 3 June 15, 1999),2 Davis (US 3,232,155, issued Feb. 1, 1966), Anderson (US 1 1,942,043, issued Jan. 2, 1934), Maddock (US 2,250,641, issued July 29, 2 1941) and Mitman (US 4,210,041, issued July 1, 1980). 3 The Appellants argue the patentability of claims 2, 1517 and 2226 4 solely on the basis of arguments addressing the patentability of claim 1. 5 (App. Br. 17). Although the Appellants include in their Appeal Brief 6 separate subheadings for claims 15 and 22 (see id.), the arguments under 7 those two subheadings may be addressed in connection with claim 1. 8 Therefore, claim 1 is representative. Because the teachings of Minao and 9 Anderson, alone or in combination with facts taken by Official Notice by the 10 Examiner, suffice to conclude that the subject matter of claim 1 would have 11 been obvious, this opinion need not discuss the teachings of Davis, Maddock 12 or Mitman further. 13 Only issues and findings of fact raised by the Appeal Brief and the 14 Reply Brief have been considered. See 37 C.F.R. § 41.67(c)(1)(vii) (2011); 15 In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). This appeal turns on one 16 issue: 17 Do the evidence and technical reasoning underlying the 18 rejection of claim 1 adequately support the conclusion that 19 one of ordinary skill in the art would have reason to change 20 the orientation of the cores described by Minao on a strip 21 from which the cores are punched? (See App. Br. 1315). 22 23 2 References to “Minao” will be to an English-language translation prepared in or about April 2011 by The McElroy Translation Company. A copy of the translation is in the record. Appeal 2011-010765 Application 10/786,810 4 FINDINGS OF FACTS 1 The record supports the following findings of fact (“FF”) by a 2 preponderance of the evidence. 3 1. The Examiner finds that the “level of ordinary skill [was] quite 4 high. One of ordinary skill is deemed to [have been] a mechanical engineer 5 with at least a B.S. degree and several years of work experience.” (Ans. 34 6 (Fact #1)). The Appellants “acknowledge that the relevant level of skill 7 [was] relatively high, albeit not necessarily at the level of a mechanical 8 engineer with at least a B.S. degree.” (App. Br. 5–6). The Examiner has not 9 demonstrated that one of ordinary skill in the art necessarily possessed a 10 baccalaureate degree in mechanical engineering. Nevertheless, the 11 sophistication of the teachings of Minao, Davis, Anderson, Maddock and 12 Mitman imply that one of ordinary skill in the art capable of understanding 13 these teachings would have had a combination of formal training and 14 experience sufficient to provide competence in mechanical design and strip 15 layout.3 16 2. We adopt the Examiner’s finding that “Minao shows a method 17 of using a punch and die to blank the recited linear iron cores, as seen in the 18 cover figure and as elaborated in Appellants[’] own specification on page 1 19 in reference to Minao.” (Ans. 3; see also Spec., paras. 2; Minao paras. 1 and 20 4). 21 3. The winding-type iron cores punched by Minao’s method 22 include hubs or tooth portions Tb extending at equal intervals from a base 23 3 “The person of ordinary skill in the art is a hypothetical person who is presumed to know the relevant prior art.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995), citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986). Appeal 2011-010765 Application 10/786,810 5 part Ta. (Minao, para. 7 and Fig. 3). One of ordinary skill in the art 1 competent in strip layout would have recognized that the tooth portions Tb 2 were susceptible of being interlocked or interdigitated with tooth portions of 3 another identical iron core if the two iron cores were placed with their base 4 parts Ta parallel, their tooth parts Tb facing, and one iron core offset along 5 its longitudinal direction relative to the other by a distance equal to a suitable 6 fraction of the interval between adjacent tooth portions of the same iron 7 core. 8 4. The Examiner correctly finds that “Minao blanks his cores 9 perpendicularly to the strip as opposed to obliquely.” (Ans. 3). Neither the 10 Examiner nor the Appellants identify any other limitation of claim 1 not 11 described by Minao. 12 5. Anderson describes a method of punching metal blanks shaped 13 for use as fasteners for envelopes. (Anderson 1, ll. 1–4). A blank of this 14 sort includes a pair of oppositely-extending prongs at each end forming an 15 “I”-shaped member, plus a pair of bendable tongues extending in opposite 16 directions from the middle of the web portion of the “I” shape in parallel to 17 the pairs of prongs. (Anderson 1, ll. 4–12 and 52–58; id., Fig. 5). 18 Anderson’s method uses a multiple punch 4 and a die block 6 capable of 19 punching a line of fastener blanks from an elongated metal strip 8. 20 (Anderson 1, ll. 58–71). Anderson teaches feeding the strip 8 over the die 21 block 6 intermittently between strokes of the multiple punch 4. (Anderson 22 1, ll. 72–76). 23 6. Anderson teaches aligning the multiple punch 4 with the strip 8 24 so as to punch a line of fastener blanks extending obliquely with respect to 25 the direction in which the strip 8 is fed. (Anderson 2, ll. 22–31 (claim 1) and 26 Appeal 2011-010765 Application 10/786,810 6 Fig. 2). Anderson additionally teaches feeding the strip 8 a distance less 1 than the overall length of one of the blanks between strokes of the punch. 2 (Anderson 1, ll. 94–97). By correctly choosing the angle between the length 3 X-X of the lines of fasteners and the feed direction of the strip 8, as well as 4 the distance Y-Y the strip is fed between strokes of the punch 4, one may 5 interlock the blanked areas of the strip so as to reduce waste material. 6 (Anderson 1, l. 97 – 2, l. 11). 7 7. One of ordinary skill in the art competent in strip layout would 8 have appreciated from Figure 2 of Anderson that the orientation of the lines 9 of fastener blanks oblique to the length of the strip provided a close packing 10 of the blanks, yielding an efficient use of the strip material. 11 8. The Examiner takes Official Notice that it was “well known to 12 successively punch products of opposing orientations, such that they may 13 interdigitate better and thus reduce scrap.” (Ans. 4 (Fact #5)). The 14 Appellants in the Appeal Brief “acknowledge this fact.” (App. Br. 15). 15 9. Anderson taught that: 16 In the production of fastener blanks according to 17 the present invention, a series of blanks are cut at 18 each operation of a multiple punch, with the 19 direction and amount of feed of the stock between 20 each punch stroke resulting in interlocking of the 21 blanked areas to such an extent that waste is 22 reduced to a minimum. 23 (Anderson 1, ll. 23–30). 24 In other words, Anderson expressly taught that punching lines of fastener 25 blanks elongated in a direction oblique to the length of the metal strip from 26 which the blanks are punched facilitates interlocking or interdigitating lines 27 of blanks adjacent to each other along the length of the metal strip. Because 28 Appeal 2011-010765 Application 10/786,810 7 it was well known to successively punch products or lines of products of 1 opposing orientations, such that they might interdigitate better and thus 2 reduce scrap (FF 8), the teachings of Anderson would have provided one of 3 ordinary skill in the art an apparent reason to punch elongated blanks or lines 4 of blanks from a strip such that longitudinal directions of the blanks or lines 5 of blanks inclined with respect to the length (as well as the width) of the 6 strip. 7 8 ANALYSIS 9 The Appellants argue that, in Anderson, “the angling merely makes 10 possible a more efficient nesting of components that causes them to be 11 placed into a compact area as they are blanked. The scrap reduction is not 12 attributable generically to angling.” (App. Br. 14). The Appellants also 13 argue that one of ordinary skill in the art familiar with the teachings of 14 Anderson would not have “conclude[d] that angling is always appropriate to 15 reduce scrap or to minimize strip width.” (Id.) Therefore, according to the 16 Appellants’ reasoning, one of ordinary skill in the art familiar with the 17 teachings of Minao and Anderson would not have had reason to modify 18 Minao’s apparatus to blank iron cores from a strip such that longitudinal 19 directions of the iron cores were inclined with respect to the width of the 20 strip. 21 The Examiner explains that the teaching in Anderson is that angling is 22 beneficial for some shapes. One of ordinary skill in the art would have 23 realized that the shape of the cores punched by Minao’s apparatus could 24 benefit from angling. (Ans. 10; see also FF 7). The Appellants do not 25 provide any persuasive reason why this finding might be in error. Rather, 26 Appeal 2011-010765 Application 10/786,810 8 the Appellants argue that Anderson does not teach that all parts should be 1 angled relative to a sheet. (Reply Br. 8). The Examiner agrees that there are 2 some shapes that would not benefit from angling, but this does not take 3 away from the finding that the specific shape of Minao could benefit from 4 angling. (Ans. 10). 5 The Appellants also argue that Anderson would not have motivated 6 one skilled in the art to angle a part that extends the full width of a strip to 7 reduce the required strip width and for the purpose of scrap reduction. (App. 8 Br. 15). The Examiner correctly finds that although Anderson describes 9 punching lines of fastener blanks rather than a single, elongated blank, the 10 underlying teaching in Anderson is angling to reduce scrap loss. (Ans. 10). 11 One competent in strip layout would have recognized that a single, 12 elongated blank could have been angled in the same manner as a line of 13 blanks. The Appellants do not provide persuasive evidence or argument as 14 to why angling a series of spaced dies across the sheet width as taught by 15 Anderson to reduce scrap loss would not apply equally to angling a series of 16 interconnected dies across the sheet width. 17 Therefore, the Examiner correctly concludes that it would have been 18 obvious “to have modified Minao’s apparatus by orienting the punch and die 19 obliquely to the [strip], for the reasons set forth in” the Examiner’s Fact #4 20 (Ans. 5). We sustain the rejection of claim 1 under § 103(a) as being 21 unpatentable over Minao, Davis, Anderson, Maddock, and Mitman. 22 Alternatively, Minao described punching iron cores having tooth 23 portions Tb susceptible of being interlocked or interdigitated with tooth 24 portions of another identical iron core if the two iron cores were placed with 25 their base parts Ta parallel, with their tooth parts Tb facing, and with one 26 Appeal 2011-010765 Application 10/786,810 9 iron core offset along its longitudinal direction relative to the other by a 1 distance equal to a suitable fraction of the interval between adjacent tooth 2 portions of the same iron core. (FF 3). It was well known to successively 3 punch products of opposing orientations such that they might interdigitate 4 better and thus reduce scrap. (FF 8). Therefore, the teachings of Anderson 5 would have provided one of ordinary skill in the art apparent reason to 6 modify Minao’s apparatus to punch iron cores from a strip such that the 7 longitudinal directions of the iron cores are inclined with respect to the 8 width of the strip. (See FF 9). 9 The Examiner correctly concluded that it would have been obvious 10 “to have modified Minao’s apparatus by orienting the punch and die 11 obliquely to the [strip], for the reasons set forth in” the Examiner’s Fact #5. 12 (Ans. 5). While this reasoning may differ from the “stated objective of 13 Appellants[’] claimed structure” (see App. Br. 13), “any need or problem 14 known in the field of endeavor and addressed by the [claimed subject 15 matter] can provide a reason for combining the elements in the manner 16 claimed.” KSR Int’l, Inc. v. Teleflex, Inc., 550 U.S. 398, 420 (2007). 17 Although not necessary to affirm the decision of the Examiner in this appeal, 18 this reasoning further supports the Examiner’s conclusion that the subject 19 matter of claims 1, 2, 1517 and 2226 would have been obvious under 20 § 103(a) over the teachings of Minao, Davis, Anderson, Maddock, and 21 Mitman. 22 Appeal 2011-010765 Application 10/786,810 10 DECISION 1 We AFFIRM the Examiner’s decision rejecting claims 1, 2, 1517 2 and 2226. 3 No time period for taking any subsequent action in connection with 4 this appeal may be extended under 37 C.F.R. § 1.136(a) (2011). 5 6 AFFIRMED 7 8 9 10 Klh 11 Copy with citationCopy as parenthetical citation