GENERAL ELECTRIC COMPANY

Patent Trials and Appeals Board

Jul 26, 2021

2020003646 (P.T.A.B. Jul. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
13/780,773 02/28/2013 Tsarafidy Raminosoa 263233-US-1 7683
131278 7590 07/26/2021
Meagher Emanuel Laks Goldberg & Liao, LLP
One Palmer Square
Suite 325
Princeton, NJ 08542
EXAMINER
MATES, ROBERT E
ART UNIT PAPER NUMBER
2832
NOTIFICATION DATE DELIVERY MODE
07/26/2021 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):
gedocket@meagheremanuel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSARAFIDY RAMINOSOA, AYMAN MOHAMED FAWZI EL-
REFAIE, and JAMES PELLEGRINO ALEXANDER
Appeal 2020-003646
Application 13/780,773
Technology Center 2800
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 1.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as General Electric
Company. Appeal Br. 3.
2 In an Amendment dated November 26, 2019, Appellant cancelled claims
2–39. See Amendment Under 37 C.F.R. § 41.33(b); see also Appeal Br. 3;
Advisory Action dated December 11, 2019.
Appeal 2020-003646
Application 13/780,773

2
CLAIMED SUBJECT MATTER
Appellant describes the invention as relating to “a dual magnetic
phase stator lamination for use in permanent magnet electric machines
having the magnets in the stator.” Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A permanent magnet electrical machine comprising:
a rotor mounted for rotation about a central axis; and
a stator positioned about the rotor, the stator comprising a
conductive winding and a plurality of stator laminations,
wherein each of the stator laminations is composed of a dual
magnetic phase material and comprises:
an outer casing;
a plurality of teeth extending radially inward from
the outer casing;
a plurality of openings formed in the outer casing
or the plurality of teeth;
a permanent magnet embedded in at least one of
the plurality of openings; and
a bridge structure formed adjacent to at least one
opening, the bridge structure being heat treated to render
it non-magnetic, the remainder of the stator lamination
remaining magnetic.
Appeal 2020-003646
Application 13/780,773

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Fukushima JP 2002-199679 A July 12, 2002
Shah US 2008/0238217 A1 Oct. 2, 2008
Alexander US 2010/0277028 A1 Nov. 4, 2010
Ehrhart US 2004/0021396 A1 Feb. 5, 2004
REJECTION
Claim 1 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Fukushima, Shah, Alexander, and Ehrhart. See Ans. 3; see also Final
Act. 9–12.
OPINION
Claim 1 recites “a stator . . . comprising . . . a plurality of stator
laminations, wherein each of the stator laminations is composed of dual
magnetic phase material and comprises . . . a bridge structure formed
adjacent to at least one opening, the bridge structure being heat treated to
render it non-magnetic, the remainder of the stator limitation remaining
magnetic.” The Examiner finds Fukushima discloses an electric machine
including a stator 10, the stator 10 including a yoke part 1F and magnetic-
path shorting parts 61–66 adjacent to rectangular slots 21–26, where
magnetic-path shorting parts 61–66 short-circuit the magnetic flux of
magnets 31–36. See Final Act. 9–10 (citing Fukushima ¶¶ 40–42, Fig. 1).
The Examiner further finds Shah discloses a permanent magnet machine
including a stator core 14 constructed of dual-phase magnetic material 30,
where the dual-phase magnetic material 30 becomes non-magnetic when
heated beyond a certain temperature. See Final Act. 10–11 (citing Shah
¶ 33, Fig. 4). The Examiner additionally finds Alexander discloses an
Appeal 2020-003646
Application 13/780,773

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internal permanent magnetic machine 200 including a rotor assembly 210,
where the rotor assembly 210 includes multiple stacks of laminations 218,
and where multiple locations 222 of the laminations 218 are made non-
magnetic by heat-treating to reduce magnetic flux leakages. See Final
Act. 11 (citing Alexander ¶ 32; Fig. 6). As further found by the Examiner, it
would have been obvious to one of ordinary skill in the art, at the time the
claimed invention was made, to modify the yoke part 1F as disclosed in
Fukushima to have magnetic-path shorting parts 61–66 be heat-treated to
render them non-magnetic in light of the teachings of Shah and Alexander.
See Final Act. 11–12 (citing Alexander ¶ 32; Ehrhart ¶ 43).
Appellant argues that Fukushima, Shah, Alexander, and Ehrhart,
either alone or in any combination, do not teach or suggest the
aforementioned element of claim 1 because: the Examiner admits that
Fukushima fails to teach the aforementioned element; Shah merely teaches
that a stator core can be constructed of dual-phase magnetic material and
fails to teach or suggest heat treating the stator core; and Alexander discloses
heat treating a rotor rather than a stator. See Appeal Br. 14–17; see also
Reply Br. 7–9. Appellant further argues its Declaration of Ayman EL-
Refaie under 37 C.F.R. § 1.132 (“Declaration”) rebuts the Examiner’s
assertion that Alexander’s teaching of heat-treating portions of a rotor are
applicable to a stator. See Appeal Br. 7–8; see also Reply Br. 3–5.
Appellant additionally argues Ehrhart does not teach or suggest the terms
“rotor” and “stator” of an electrical machine are interchangeable, as
evidenced by Appellant’s Declaration. See Appeal Br. 8–14; see also Reply
Br. 5–7.
Appeal 2020-003646
Application 13/780,773

5
We are not persuaded by Appellant’s arguments that the Examiner
erred. As previously described, Fukushima expressly teaches magnet
magnetic-path shorting parts 61–66 which short-circuit the magnetic flux of
magnets 31–36 of stator 10. See Fukushima ¶ 41. Further, Shah expressly
teaches a stator core 14 constructed entirely of dual-phase magnetic material
30, and further teaches that heating the stator core 14 beyond a certain
temperature causes the dual-phase magnetic material 30 to become non-
magnetic and reduces the normal flux pattern of the stator core 14. See Shah
¶ 33. Even further, Alexander expressly teaches heat-treating specific
locations 222 of magnetic laminations 218 which causes the locations 222 to
be made non-magnetic and which reduces the magnetic flux leakages. See
Alexander ¶ 32. In light of these express teachings, we agree with the
Examiner that it would have been obvious to one of ordinary skill in the art,
at the time the claimed invention was made, to modify the stator structure as
disclosed in Fukushima to heat-treat the magnetic-path shorting parts to
render them non-magnetic. See Final Act. 11–12.3
Appellant’s Declaration does not rebut the Examiner’s prima facie
case that claim 1 is obvious. As a threshold matter, although Appellant
argues that Mr. EL-Refaie’s Declaration supports Appellant’s contention as
to why one of ordinary skill in the art would not apply Alexander’s teaching
of heat-treating a rotor structure to a stator structure, the Declaration does
not address heat-treating and thus, does not address the Examiner’s findings

3 We do not take a position as to the Examiner’s finding that Ehrhart teaches
“what is taught by Alexander about a rotor is applicable to a stator,” (see
Final Act. 12), as it is not necessary to reach this finding in order to sustain
the Examiner’s rejection in light of the express teachings of Fukushima,
Shah, and Alexander.
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Application 13/780,773

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regarding Alexander. Instead, the Declaration merely contends that a person
of ordinary skill in the art would not use dual-phase magnetic material in a
stator structure because the costs of doing so would allegedly outweigh the
benefits. See Declaration ¶¶ 5–6; see also Ans. 3. We do not weigh Mr. EL-
Refaie testimony heavily in this regard because Shah expressly teaches
constructing a stator core entirely out of dual-phase magnetic material. See
Shah ¶ 33; see also Ans. 3. Moreover, Appellant’s contention by itself does
not rebut the Examiner’s rationale for modifying the structure disclosed in
Fukushima based on the teachings of Shah and Alexander, as a person of
ordinary skill in the art may still be motivated to make the proposed
modification after weighing the costs and benefits. See Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”). Accordingly, we sustain the Examiner’s
rejection of independent claim 1.
CONCLUSION
We sustain the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 103(a).
Appeal 2020-003646
Application 13/780,773

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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1 103(a) Fukushima, Shah,
Alexander, Ehrhart
1

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED