Ex Parte Baumann

Patent Trial and Appeal Board

Aug 4, 2016

12356995 (P.T.A.B. Aug. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/356,995 0112112009
117185 7590 08/08/2016
ALSTOM TECHNOLOGY, LTD,
C/O Buchanan Ingersoll & Rooney PC
1737 King Street, Suite 500
Alexandria, VA 22314
FIRST NAMED INVENTOR
Thomas Baumann
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1033275-000878 9869
EXAMINER
MULLINS, BURTON S
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
08/08/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BAUMANN
Appeal2015-000921
Application 12/356,995
Technology Center 2800
Before KAREN M. HASTINGS, JENNIFER R. GUPTA, and
LILAN REN, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 8 and 17-25. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
The subject matter on appeal relates to a conductor bar for a rotating
electrical machine. Spec. i-f 2. Claim 8, reproduced below, is illustrative of
the claims on appeal.
1 Appellant identifies the real party in interest as Alstom Technology Ltd.
Appeal Brief filed May 19, 2014 ("App. Br."), 2.
2 Final Office Action mailed September 17, 2013 ("Final Act.").
Appeal2015-000921
Application 12/356,995
8. A conductor bar for a rotating electrical machine, the
conductor bar comprising:
an inner conductor having an essentially rectangular cross
section; and
a mica tape insulation sheathing the inner conductor in a
straight section of the conductor bar, wherein the mica tape
insulation includes a plurality oflayers including at least one first
mica tape layer having a width that is greater than 50 mm and
being wound directly onto a surface of the inner conductor and
around the inner conductor so that adjacent parallel edges of the
first mica tape layer form a butt joint,
wherein the first mica tape layer is wound around the
conductor bar and has a tape longitudinal axis parallel to a bar
longitudinal axis of the conductor bar.
REJECTIONS ON APPEAL
1. Claims 8 and 17-25 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement;
2. Claims 8, 17, 18, 21, 24, and 25 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Andersson et al.
(US 3,775,628, issued Nov. 27, 1973) (hereinafter "Andersson") in
view of Joho (US 2005/0168096 Al, published Aug. 4, 2005)
(hereinafter "Joho");
3. Claims 8, 18, 21, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Weinberg (US 5,721,397, issued Feb. 24, 1998)
(hereinafter "Weinberg"), in view of Maxfield et al.
(WO 96/02920 Al, published Feb. 1, 1996) (hereinafter
"Maxfield") and Joho;
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Application 12/356,995
4. Claims 19, 20, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Andersson and Joho, further in view of Okamoto
et al. (US 2005/0208301 Al, published Sept. 22, 2005) (hereinafter
"Okamoto");
5. Claims 19, 20, 23, and 25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Weinberg, Maxfield, and Joho, further in
view of Okamoto; and
6. Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Andersson, Joho, and Okamoto or over Weinberg, Maxfield,
Joho, and Okamoto, further in view of Purvis (US 3,523,061,
issued Aug. 4, 1970) (hereinafter "Purvis").
ANALYSIS
Written Description Rejection
The Examiner asserts that the limitation "the mica tape insulation
includes a plurality of layers including at least one first mica tape layer
having a width that is greater than 50 mm" is not adequately described
in the Specification and is new matter. Final Act. 2. Similarly, the
Examiner finds that there is no support in the Specification for the
limitations of claim 21, "wherein the width is about 100 mm." Id.
"[T]he test for [compliance with the written description requirement]
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The Appellant argues that
paragraphs 13 and 32 of the Specification provide written description for the
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Appeal2015-000921
Application 12/356,995
widths recited in claims 8 and 21. App. Br. 6. Paragraph 32 of the
Specification, which states that "[i]n one particularly preferred embodiment,
a tape with a considerably greater width B, in particular of more than
50 mm, for example 100 mm," conveys with reasonable clarity to a person
of ordinary skill in the art that, as of the filing date, the Appellant had
possession of the claimed mica tape layer having a width that is greater than
50 mm (claim 8), for example 100 mm (claim 21 ). See also original claim 3
(reciting "the width is greater than 50 mm," and depending from original
claim 1, which was not limited to mica tape wound in a helical shape), and
original claim 4 (reciting the width is about 100 mm, and depending from
original claim 3). Despite the Examiner's contentions (e.g., Final Act. 3),
we do not find the width described in paragraph 32 to be limited to the
embodiment of the helically-wound tape depicted in Figure 6 of the
Specification. Accordingly, we do not sustain the rejection.
Obviousness Rejections
The Appellant presents separate arguments only as to claims 8 and 21.
We limit our discussion to those claims. Claims 1 7-20 and 22-25 depend,
directly or indirectly, from claim 8, and will therefore stand or fall with
claim 8.
The Appellant does not dispute the Examiner's interpretation of the
term "width" in claim 8 as encompassing the external circumference of the
inner conductor bar. See Ans. 14; see also Final Act. 3, and Spec. i-f 15.
Rather, the Appellant argues the Examiner reversibly erred in finding that
the applied references (Andersson, Weinberg, Maxfield, and Joho) teach or
suggest a conductor bar comprising an inner conductor and a mica tape
insulation sheathing the inner conductor where the mica tape insulation
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Application 12/356,995
includes at least one first mica tape layer having a width that is greater than
50 mm, as recited in claim 8. See App. Br. 6.
The Examiner finds Andersson discloses or suggests each limitation
of claim 8 except the width of the mica tape layer. Final Act. 5. Concerning
the mica tape layer having a width that is greater than 50 mm, the Examiner
finds that Joho teaches a conductor bar (103) (Figs. 1-2) comprising round
wires (104) made of cooper and having a conductor diameter ranging from
0.5 mm to 1.2 mm (i-f 25) and surrounded by a main insulation 105
consisting of mica paper (i-f 52). Examiner's Answer mailed August 22,
2014 ("Ans."), 14--15. The Examiner further finds that Joho teaches:
The number of individual wires [ 104] per bar [ 103] is determined
by the height and width of the bar and by previously known
filling factor (=copper cross section I bar cross section), which is
approximately 70%. Depending on the machine size and
frequency spectrum, a bar can be provided with 8 to 20 stranded
conductors and one stranded conductor can consist of 40 to 400
individual wires.
Joho i126. Based on this disclosure, the Examiner finds that the number of
wires and hence the circumference of the bar and width of the tape (which
surrounds the bar) in Joho are result-effective variables and determines that
it would have been obvious for one of ordinary skill in the art to have
adjusted the circumference of the bar and therefore the tape surrounding the
bar to greater than 50 mm because determining "the optimum or workable
ranges of a result-effective variable may be characterized as routine
experimentation." Ans. 15; see also Spec. i-f 15 (stating that in one
embodiment, "the width of the first mica tape is essentially the same as the
external circumference of the inner conductor"). The Examiner determines
that if one of ordinary skill in the art
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Appeal2015-000921
Application 12/356,995
designed a [conductor] bar on the basis ofJoho if [0026] with 400
individual wires and 10 stranded conductors to achieve a desired
frequency spectrum for a given machine size, and each individual
wire has a 1.0mm diameter, then it follows the circumference of
the bar and therefore the tape surrounding the bar will be greater
than 50mm and thus lie inside the claimed range.
Ans. 16. The Appellant does not explain why the Examiner's findings are
wrong. Nor does Appellant argue that optimizing the circumference of the
bar and therefore the width of the tape surrounding the bar would have been
beyond the level of ordinary skill in the art. Accordingly, based on the
arguments before us, we are not persuaded of reversible error in the
Examiner's rejection of claim 8.
Claim 21 depends from claim 8 and requires that "the width is about
100 mm." The Appellant's argument regarding claim 21 is similar to the
argument addressed above with respect to claim 8. For the same reasons
discussed above regarding claim 8, we are not persuaded of reversible error
in the Examiner's rejection of claim 21.
DECISION
We REVERSE the rejection of claims 8 and 17-25 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We AFFIRM the rejections of claims 8 and 17-25 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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