Ex Parte Oba et al

Patent Trial and Appeal Board

Sep 25, 2014

11786810 (P.T.A.B. Sep. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YUKINORI OBA and TAKAHIRO SHIMIZU
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Appeal 2011-010765
Application 11/786,810
Technology Center 3700
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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, 1517 and 2226. The 3
Appellants have canceled claims 314, 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withdrawn from consideration.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.

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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, 1517 and 2226 under 35 U.S.C. 30
§ 103(a) (2011) as being unpatentable over Minao (JP H11-56455 A, publ. 31
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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, 1517 and 2226 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. 1315). 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.
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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. 34 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).
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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
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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
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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
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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
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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, 1517 and 2226 would have been obvious under 20
§ 103(a) over the teachings of Minao, Davis, Anderson, Maddock, and 21
Mitman. 22
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DECISION 1
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 1517 2
and 2226. 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
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9
10
Klh 11