Ex Parte Stelzer et al

Patent Trial and Appeal Board

Sep 30, 2014

12061797 (P.T.A.B. Sep. 30, 2014)

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
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Application 12/061,797
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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
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Application 12/061,797
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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.
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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
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Application 12/061,797
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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”
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Application 12/061,797
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(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.
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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

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