Ex Parte Stelzer et alDownload PDFPatent Trial and Appeal BoardSep 30, 201412061797 (P.T.A.B. Sep. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/061,797 04/03/2008 Gerald Stelzer 11357-020 9118 29391 7590 09/30/2014 BEUSSE WOLTER SANKS & MAIRE, P. A. 390 NORTH ORANGE AVENUE SUITE 2500 ORLANDO, FL 32801 EXAMINER LIAN, MANG TIN BIK ART UNIT PAPER NUMBER 2837 MAIL DATE DELIVERY MODE 09/30/2014 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 GERALD STELZER, RAINER MEINKE, and MARK SENTI ______________ Appeal 2012-006860 Application 12/061,797 Technology Center 2800 _______________ Before CHARLES F. WARREN, TERRY J. OWENS, and CATHERINE Q, TIMM, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL Applicants appeal to the Board under 35 U.S.C. § 134(a) from the decision of the Primary Examiner finally rejecting claims 1-6, 8-21, 24, and 26-37 under 35 U.S.C. § 103(a): claims 1, 2, 12-21, 24, 26-28, and 34-37 over Rouet (US 5,767,759) and Whearley (US 2,982,888); claims 3-6 and 8-10 over Rouet, Whearley, and Bushnell (US 2006/0080829 A1); claim 11 over Rouet, Whearley, and Tanimura (US 4,271,463); claims 29-32 over Rouet, Whearley, and Shinonaga (JP 59-113608 A); and claim 33 over Rouet, Whearley, and Peck (US 2004/0257190 A1). Appeal Br. 10; Ans. 4, 10, 12, 13, 14. We have jurisdiction. 35 U.S.C. § 6(b). We affirm the decision of the Primary Examiner. Claim 1 illustrates Appellants’ invention of a method for constructing a conductor assembly of the type which, when conducting current, generates Appeal 2012-006860 Application 12/061,797 2 a magnetic field or which, in the presence of a changing magnetic field, induces a voltage (claim 1), and the conductor assembly (claim 17), and is representative of the claims on appeal: 1. A method for constructing a conductor assembly of the type which, when conducting current, generates a magnetic field or which, in the presence of a changing magnetic field, induces a voltage, comprising: providing a first insulative layer tubular in shape and including an outer surface along which a conductor segment may be positioned; forming a first channel in the surface of the insulative layer defining a first conductor path, the channel including a surface of first contour in cross section along a first plane transverse to the conductor path; providing a first segment of conductor, having a relatively large length dimension in proportion to a thickness measurable along a direction transverse to the length dimension, and having a surface of a second contour in cross section along a plane transverse to the length dimension; positioning the first segment of conductor at least partly in the channel with the length dimension extending along the conductor path wherein, along the first plane, with contact between the conductor surface of second contour and the channel surface of first contour including at least two separated regions of contact with the channel surface, with a portion of the surface of second contour between the two separated regions being spaced away from a portion of the channel surface between the two separated regions; and coating at least part of the outer surface of the first insulative layer and at least part of the outer surface of the first segment of conductor with a second insulative layer comprising electrically isolating material so that part of the first segment of conductor is coated and covered with electrically isolating material. Appeal Br. 22 (9. App’x of Claims On Appeal). Spec. ¶¶ 0023-0044, 0072-0082, Figs. 1A-1M, 8A-8D-3. Appellants argue the first ground of rejection on claims 1, 12, 17, 19, 26, 35, and 37, argue the second ground of rejection on claims 4, 5, and 8, and requests review of but does not argue the remaining grounds of rejection, relying instead on the arguments submitted with respect to Appeal 2012-006860 Application 12/061,797 3 independent claims 1 and 17. App. Br. 11, 12, 15, 18-20. Thus, we decide this appeal based on the argued claims with the remaining claims standing or falling therewith. OPINION We are of the opinion Appellants’ arguments do not establish that the evidence in the totality of the record weighs in favor of the nonobviousness of the method for constructing a conductor assembly specified in claims 1, 4, 5, 8, 12, and 35, and of the conductor assembly specified in claims 17, 19, 26, and 37. In this respect, we are in agreement with the Examiner’s analysis of the evidence in the combination of Rouet and Whearley alone and further combined with Bushnell, findings of fact and conclusions of law, and response to Appellants’ arguments stated in the Answer, to which we add the following for emphasis with respect to Appellants’ arguments. Ans. 4-12, 15-21; App. Br. 12-20;1 Reply Br. 4-9. We cannot agree with Appellants’ position that the Examiner erred in concluding that the combination of Rouet and Whearley would have led one of ordinary skill in the art to modify Rouet’s conductor assembly by coating a second insulative layer of electrically isolating material on at least part of the outer surface of the first insulative layer and at least a part of the outer surface of the first segment of the conductor in order to improve insulation as disclosed by Whearley, thus reasonably arriving at the method for constructing a conductor assembly specified in claim 1 and the conductor assembly specified in claim 17. On this record, we find that, as the Examiner contends and contrary to Appellants’ position, Rouet would not 1 We point out that Appellants’ contentions with respect to matters arising during prosecution before the Examiner are petitionable and not appealable. App. Br. 11-12. Appeal 2012-006860 Application 12/061,797 4 have disclosed to one of ordinary skill in the art that the conductor is coated with an insulative layer, and indeed, Appellants have not supported the position that one of ordinary skill in the art would have reasonably expected that conductors are so coated as a matter of course. Ans. 6, 8, 16-17; App. Br. 13-14, 15-16; Reply Br. 4-7. In this respect, we agree with the Examiner that Appellants’ contentions “acknowledge the need or reason or motivation for electrical insulation” on the conductor by one of ordinary skill in the art. Ans. 16. Furthermore, we fail to find in claim 1 and 17 a limitation providing for cooling channels which Appellants contend in the Appeal Brief are not disclosed by Rouet, and indeed, Appellants then point out in Reply Brief that the claims merely require that a particular portion of the outermost surface region of the conductor “is spaced away from an area of the channel surface.” App. Br. 13-14; Reply Br. 7-8. See, e.g., In re Self, 671 F.2d 1344, 1350-51 (CCPA 1982). In any event, we agree with the Examiner that Rouet would have disclosed a hollow space, which we find to be v-shaped, between the channel groove 7 of cylinder 3 and conductor windings L. Rouet col.2 ll.61-65, Fig. 2. Ans. 16-17; Reply Br. 7-8. In this respect, we are not persuaded by Appellants’ contention that Whearley’s coating step, wherein the electrical insulating material of the sleeve(s) on which the conductor wire is wound is caused to flow and enclose the windings in forming the conductor assembly, does not enable the Examiner’s combination of Rouet and Whearley to meet the limitation that “contact between the conductor surface of second contour and the channel surface of first contour including at least two separated regions of contact with the channel surface, with a portion of the surface of second contour between the two separated regions being spaced away from a portion of the Appeal 2012-006860 Application 12/061,797 5 channel surface between the two separated regions” in claim 1, and by Appellants’ similar contention with respect to claim 17. App. Br. 14-15, 16-17 (citing Whearley col.3 ll.20-26); Reply Br. 8-9. Appellants contend that when Whearley’s electrically insulating materials which soften upon heating and then re-solidify, are heated and flow to enclose and fix the windings L in groove 7 of cylinder 3 of Rouet, the insulating materials would fill the v-shaped hollow in groove 7 beneath windings L, thus eliminating the v-shaped space. App. Br. 14-15, 16-17; Reply Br. 9. However, Appellants do not dispute the Examiner’s argument that Rouet’s cylinder 3 is plastic and would not soften on heating, thus enabling the combination of references. On this record, we are of the opinion that, as the Examiner contends, one of ordinary skill in the art would have reasonably expected that the application of Whearley’s heat softening, electrically insulating material to coat the surface of Rouet’s cylinder 3 would be enabling because the softened insulating material can coat the top and sides of wirings L in groove 7 without flowing beneath wirings L into the v- shaped hollow formed by groove 7 and windings L. Ans. 18. Turning now to the separately argued dependent claims, claims 12 and 19 both specify that a void between the channel surface and the conductor windings can function as a channel for cooling fluid.2 Appeal Br. 24, 25 2 We are not convinced of error by the Examiner in rejecting claim 11 under a different combination of references (Ans. 12) than Rouet and Whearley which the Examiner relies on with respect to claim 12, dependent on claim 11. Ans. 18-19; App. Br. 18. Appellants do not contest the rejection of claim 11. See generally App. Br. With respect to claim 12, we determine that the void specified in claim 12, which is one of the two voids specified in claim 11, corresponds to a particular portion of the outermost surface region of the conductor which “is spaced away from an area of the channel surface” Appeal 2012-006860 Application 12/061,797 6 (9. App’x of Claims On Appeal). Ans. 6, 8, 18-19; App. Br. 18. On this record, we agree with the Examiner that, contrary to Appellants’ contentions, Rouet’s v-shaped hollow formed by groove 7 and windings L is capable of functioning as a coolant channel. Ans. 16-17, 18-19; App. Br. 14, 18; Reply Br. 7-8. With respect to claim 26, we find that, contrary to Appellants’ contention, the Examiner explains the pertinent teaching of Whearley’s column 2, lines 40-44, to the claim limitation, “the channel has a three sided cross sectional shape about the plane passing transversely through the portion of the channel path.” Appeal Br. 26 (9. App’x of Claims On Appeal). Ans. 9, 20; App. Br. 18. Each of claim 35, ultimately dependent on claim 1, and claim 37, ultimately dependent on claim 17, specifies that a further insulative layer formed on the conductor assembly includes at least “a composite material” comprising at least “fibers and a polymer.” Appellants do not dispute the Examiner’s position that Whearley’s disclosure of glass and polymerizable plastics would have suggested the combination of glass fibers and a polymer to one of ordinary skill in the art. App. Br. 27, 28 (9. App’x of Claims On Appeal). Ans. 20; Appeal Br. 19. Each of dependent claims 4, 5, and 8, all dependent on claim 1, specifies a particular channel surface contour for which the Examiner combines Bushnell with Rouet and Whearley for Bushnell’s disclosure of channel surface contours. App. Br. 23 (9. App’x of Claims On Appeal). Ans. 10, 11, 20-21; App. Br. 19-20. The Examiner responds to Appellants’ contentions by pointing out the channel surfaces contours that Whearley and that is required by claims 1 and 17 as Appellants point out in Reply Brief. See above p. 4. Appeal 2012-006860 Application 12/061,797 7 Bushnell would have suggested to one of ordinary skill in the art, and Appellants do not dispute the Examiner’s position. We affirm the grounds of rejection of claim 11 over Rouet, Whearley, and Tanimura, claims 29-32 over Rouet, Whearley, and Shinonaga, and claim 33 over Rouet, Whearley, and Peck. These grounds of rejection have been advanced by the Examiner on appeal, and Appellants have relied on the same arguments submitted with respect to claims 1 and 17 which considered above. See above pp. 1-3; see above note 2. The Primary Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED cam Copy with citationCopy as parenthetical citation