Thomas Fogelberg

Patent Trials and Appeals Board

Aug 16, 2019

14414662 - (D) (P.T.A.B. Aug. 16, 2019)

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.
14/414,662 01/13/2015 Thomas Fogelberg 04190-P0265A 5862
137670 7590 08/16/2019
ABB - Whitmyer IP Group LLC
600 Summer Street
Stamford, CT 06901
EXAMINER
HOSSAIN, KAZI S
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
08/16/2019 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 THOMAS FOGELBERG
____________

Appeal 2018-006429
Application 14/414,662
Technology Center 2800
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
JOHN A. EVANS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, and 4–19. Claim 3 is cancelled. The
Examiner indicates that claims 20 and 21 are objected to as being dependent
upon a rejected base claim, but would be allowable if rewritten in
independent form. See Final Act. 22. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was conducted on July 3, 2019.
We reverse.

1 According to Appellant, the real party in interest is ABB Schweiz AG, CH-
5400 Baden, Switzerland. App. Br. 2.

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Invention
The disclosed and claimed invention on appeal is directed to “[a]
hybrid transformer core.” (Abstract).

Illustrative Claim
1. A hybrid transformer core, comprising:

a first yoke composed of at least one yoke beam, each yoke
beam of the first yoke comprising a first plurality of
stacked yoke plates of amorphous steel, and a second yoke
composed of at least one yoke beam, each yoke beam of
the second yoke comprising a second plurality of stacked
yoke plates of amorphous steel; and

at least two limbs of grain-oriented steel extending
between the first yoke and the second yoke,

wherein a first end of each one of the at least two limbs is
coupled directly to a first surface of the first yoke in a first
connection plane defined by the first surface and

wherein a second end of each one of the at least two limbs
is coupled directly to a second surface of the second yoke
in a second connection plane defined by the second
surface,

wherein the first yoke along the first connection plane
extends in all directions beyond a contour of the first end
of each one of the at least two limbs, and

wherein the second yoke along the second connection
plane extends in all directions beyond a contour of the
second end of each one of the at least two limbs.

App. Br. 18 (Claims App.)

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Rejections
A. Claims 1, 2, 4–9, 11, 13, and 14 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Salomaki (US 2010/0308951 A1, published December
9, 2010; hereinafter “Salomaki”), in view of Boenitz (US 4,668,931,
issued May 26, 1987), and further in view of Avila Montes et al. (US
2008/0068119 A1, published March 20, 2008; hereinafter “Avila”).
Final Act. 2.
B. Claims 10, 18, and 19 are rejected under 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of Salomaki,
Boenitz, Avila, and further in view of Hirzel (US 2005/0237146 A1,
published October 27, 2005). Final Act. 10.
C. Claim 12 is rejected under 35 U.S.C. § 103(a) as being obvious over
the combined teachings and suggestions of Salomaki, Boenitz, Avila,
and further in view of Ikriannikov et al. (US 2011/0279212 A1,
published November 17, 2011; hereinafter “Ikriannikov’). Final Act.
15.
D. Claim 15 is rejected under 35 U.S.C. § 103(a) as being obvious over
the combined teachings and suggestions of Salomaki, Boenitz, Avila,
and further in view of Kobayashi et al. (US 2012/0139684 A1,
published June 7, 2012; hereinafter “Kobayashi”).
E. Claim 16 is rejected under 35 U.S.C. § 103(a) as being obvious over
the combined teachings and suggestions of Salomaki, Boenitz, Avila,
and further in view of Park (US 2011/0115590 A1, published May 19,
2011).
F. Claim 17 is rejected under 35 U.S.C. § 103(a) as being obvious over
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the combined teachings and suggestions of Salomaki, Boenitz, Avila,
and further in view of Eriksson et al. (US 2011/0227687 A1,
published September 22, 2011; hereinafter “Eriksson”).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s obviousness rejections, and the Examiner’s responses to
Appellant’s arguments. Appellant proffers sufficient argument and evidence
to persuade us of error regarding the Examiner’s underlying factual findings
and ultimate legal conclusion of obviousness. In our analysis below, we
highlight and address specific findings and arguments for emphasis.

Rejection A of Independent Claim 1 under 35 U.S.C. § 103(a)
Issue: Under 35 U.S.C. § 103(a), did the Examiner err by failing to
provide sufficient articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness? See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).2
Regarding the Examiner’s proffered rationale to modify Salomaki
(which uses a single compressed and sintered metal powder core material –
¶ 49) with the teachings of Boenitz (which uses winding legs made of grain-
oriented silicon steel laminations and yokes made of a plurality of
amorphous steel laminations – col. 3, ll. 36–38), Appellant contends:

2 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997).
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Salomaki teaches that the constituents for both the
yokes 13 and limbs 12 are made of the same sintered metal
powder, which is compressed between rollers into a solid form
as shown in Figure 21. (Salomaki ¶¶ [0047]-[0049], [0059].)
Salomaki explicitly states: “It is efficient to use so-called
Sintermetal material as the core material,” i.e., for the limbs
and yokes. (Salomaki¶ [0049].) Accordingly Salomaki teaches
using the same powdery material for creating identical
constituents to form the yokes and the limbs, which allows for
simple and efficient manufacturing of the core.
App. Br. 9–10 (emphasis added).

Appellant further argues:
Given that Salomaki’s intended purpose is to use
essentially identical constituents to form the core, a person
having ordinary skill in the art would not have been motivated
to modify Salomaki’s core with Boenitz in order to have the
first yoke and the second yoke made of plates of amorphous
steel while the limbs are made of grain-oriented steel. The
Federal Circuit has held that if a proposed modification would
render the prior art invention being modified unsatisfactory for
its intended purpose, then there is no suggestion or motivation
to make the proposed modification. In re Gordon, 733 F.2d 900
(Fed. Cir. 1984); MPEP 2143.01(V). Here, if a skilled artisan
were to modify Salomaki’s core so that each yoke 13 comprises
a plurality of staked yoke plates of amorphous steel, while the
limbs 12 are of grain oriented steel, such modification would
detract from Salomaki’s purpose of using essentially identical
constituents of the same magnetic powder material to construct
a core. Also, the proposed modification would cause
Salomaki’s manufacturing method to be more complicated and
provide less simple and less efficient production of the core.
App. Br. 10 (emphasis added).

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The Supreme Court has held that the Examiner must provide an
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness. See KSR, 550 U.S. at 418 (quoting Kahn, 441
F.3d at 988).
Even if we arguendo accept the Examiner’s proffered rationale that “it
was well known in art that magnetic cores can be made from different types
of materials such as magnetic powder, amorphous steel, grain-oriented steel
etc.” (Ans. 4), and even if such substitution from Boenitz into Salomaki
would have produced predictable results, we are persuaded by Appellant’s
arguments: (1) “that such modification would detract from Salomaki’s
purpose of using essentially identical constituents of the same magnetic
powder material to construct a core,” and, (2) “the proposed modification
would cause Salomaki’s manufacturing method to be more complicated and
provide less simple and less efficient production of the core.” App. Br. 10.
Appellant additionally argues the importance of using insulators in
Salomaki to reduce the undesirable effects of eddy currents which are
induced in the magnetic core:
The proposed modification [(i.e., of Salomaki and Boenitz with
the direct coupling of Avila) would also detract from providing
insulation between limbs and yokes necessary for reducing the
adverse effects of eddy currents. (Salomaki ,¶ [0007].)
Thus, not only would the proposed modification require a
change in the basic principle under which Salomaki was
designed to operate, but it would cause Salomaki to suffer from
the drawbacks which it intends to avoid, i.e., adverse effects of
eddy currents. The proposed modification would render
Salomaki unsatisfactory for its intended purpose of minimizing
the negative impact of eddy current effects.
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Accordingly, there is no motivation or suggestion to
modify Salomaki (or the combination of Salomaki and Boenitz)
with Avila.
App Br. 13 (emphasis added).

In support, Appellant urges that “such modification would require a
change in Salomaki’s operational principle where limbs are connected to
insulator pieces which are then connected to the yokes. The proposed
modification would also detract from providing insulation between limbs
and yokes necessary for reducing the adverse effects of eddy currents.
(Salomaki ¶ [0007].).” App. Br. 13 (emphasis added).
Based upon our review of the record, we find a preponderance of the
evidence supports Appellant’s contentions. As described in Salomaki:
The purpose of the invention being presented here is
to improve the manufacture and performance of inductive
component cores and to achieve an advantageous and reliable
magnetic core. The purpose is also to achieve a magnetic core,
in which the adverse effects of the eddy currents are as small
as possible.
Salomaki ¶ 7 (emphasis added). See also Salomaki ¶ 59, describing the
arrangements depicted in Figures 15a and 15b, in which the use of insulator
15 aids in the reduction of eddy currents in the core.
Regarding the Examiner’s proffered rationale to modify the
combination of Salomaki and Boenitz with the direct coupling of limbs and
yokes, as taught by Avila (¶ 30, Fig. 1) to provide a “better connection
between yokes and limbs” (Final Act. 5), Appellant contends:
Avila does not disclose any motivation to combine
its teachings with Salomaki, and in particular, is silent
regarding the yokes being connected directly to the limbs for
better connection therebetween.
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Furthermore, there is no motivation or suggestion to
modify Salomaki with Avila. It is well settled that if the
proposed modification or combination of the prior art would
change the principle of operation of the prior art invention
being modified, then the teachings of the references are not
sufficient to render the claims prima facie obvious. In re Ratti,
270 F.2d 810, 813 (CCPA 1959); MPEP 2143.01(VI).
App. Br. 11.

Appellant reproduces the Examiner’s motivation to modify Salomaki
(or the combination of Salomaki and Boenitz) with Avila so that the limbs
are coupled directly to the surfaces of the yokes:
it would have been obvious to a person of ordinary skill in the
art to modify the combination of Salomaki and Boneitz [sic] in
view of Avila to have two limbs [] coupled directly to a first
surface of the first yoke in a first connection plane, and to a
second surface of the second yoke in a second connection plane
to provide better connection between yokes and limbs.
App. Br. 11 (citing Final Act. 5).

Appellant urges that the Examiner has made a conclusory statement
with no rational underpinning to support the proffered combination of
Salomaki and Boenitz with the tertiary Avila reference:

Here, Salomaki, Boenitz, and Avila fail to teach or suggest the
Examiner's alleged reason of providing better connection
between yokes and limbs. The Examiner does not cite any
passage from the cited art which would provide adequate
evidentiary basis for the assertion that the proposed
modification would provide better connection between yokes
and limbs. Avila does not disclose any motivation to combine
its teachings with Salomaki, and in particular, is silent
regarding the yokes being connected directly to the limbs for
better connection therebetween.
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App. Br. 11 (emphasis added).

Appellant further avers:
a person of ordinary skill in the art would not be
motivated to modify Salomaki's core so that the limbs are
coupled directly to the surfaces of the yokes because Salomaki
is already configured to be mechanically strong with the use of
fastener rods. The proposed modification would require a
structural redesign of Salomaki’s core without imparting any
benefit that Salomaki's core does not already have. Moreover,
for the sake of argument, even if a person of ordinary skill in
the art were to modify the core of Salomaki so that the limbs
are coupled directly to the surfaces of the yokes without the
insulator pieces therebetween, such modification would require
a change in Salomaki's operational principle where limbs are
connected to insulator pieces which are then connected to the
yokes.
App Br. 12–13 (emphasis added).

We reproduce the pertinent portion of Salomaki’s paragraph 62 that
supports Appellant’s argument:
FIG. 18 presents two views of the choke 11 in its side
projection and how to make the structure mechanically
strong by making a forming to the grooves 19 that are placed
on top of the horizontal bars 17 to protect them. The forming
makes it possible to press the vertical and horizontal bars
together using fastener rods 20.
(emphasis added).
Thus, we find a preponderance of the evidence supports Appellant’s
contention that “Avila does not disclose any motivation to combine its
teachings with Salomaki, and in particular, is silent regarding the yokes
being connected directly to the limbs for better connection therebetween.”
App. Br. 11 (emphasis added). Moreover, as argued by Appellant, we agree
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that Salomaki already evidences “that the core structure is made
‘mechanically strong’ by using fastener rods 20 to hold the yokes, limbs, and
insulator pieces together. (Salomaki¶ [0062].).” App. Br. 12.
Because Salomaki is already designed to have a “mechanically
strong” choke 11 structure (¶ 62), we find Appellant’s argument (App. Br.
11–13) that there is no need for Avila’s direct coupling, is supported by a
preponderance of the evidence.
For essentially the same reasons argued by Appellant (App. Br. 5–16;
Reply Br. 2–11), as discussed above, we are constrained on this record to
reverse the Examiner’s obviousness Rejection A of independent claim 1
over the cited combination of Salomaki, Boenitz, and Avila.
Because the Examiner has not provided sufficient articulated
reasoning with some rational underpinning to support the proffered reasons
for combining the base combination of Salomaki, Boenitz, and Avila, we are
also constrained on this record to reverse the Examiner’s Rejection E of
independent claim 16, and Rejection B of remaining independent claim 18.
For the same reasons, we also reverse the Examiner’s obviousness rejections
A–F of each dependent claim on appeal.
Accordingly, for essentially the same reasons argued by Appellant, as
discussed above, we reverse the Examiner’s obviousness rejections A–F of
all claims 1, 2, and 4–19 on appeal.

CONCLUSION
The Examiner erred in rejecting claims 1, 2, and 4–19, as being
obvious under pre-AIA 35 U.S.C. § 103(a), over the combined teachings and
suggestions of the cited prior art.
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DECISION
We reverse the Examiner’s decision rejecting claims 1, 2, and 4–19
under pre-AIA 35 U.S.C. § 103(a).
REVERSED