Ex Parte Curiel

Patent Trial and Appeal Board

Dec 10, 2018

13586674 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/586,674 08/15/2012
50233 7590 12/12/2018
PATRICK W. RASCHE (23571)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Francisco Javier Curiel
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.
12-FW-024UUA1 3540
EXAMINER
MUSTAFA, IFTEKHAR
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
uspatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCISCO JAVIER CURIEL
Appeal2018-001744
Application 13/586,674
Technology Center 2800
Before JANET A. GONGOLA, ROMULO H. DELMENDO, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Primary Examiner's final decision to reject claims 1-3, 5, 7, 9, 10, 12,
14, 16, and 18-22.2, 3 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Appellant identifies the real party in interest as "RBC Manufacturing
Corporation" (Appeal Brief filed May 15, 2017 ("Appeal Br.") 1).
2 Appeal Br. 4--11; Reply Brief filed December 5, 2017 ("Reply Br.") 1--4;
Final Office Action entered December 15, 2016 ("Final Act.") 2-10;
Examiner's Answer entered October 5, 2017 ("Ans.") 2-11.
3 Claim 17, which was listed as rejected in the Final Office Action's
Summary sheet (Disposition of Claims), is indicated as a claim on appeal
(Appeal Br. 1). But neither the Examiner's Answer nor the Final Office
Action discusses claim 17 in any rejection (Ans. 2-11; Final Act. 1-10).
Therefore, no rejection of claim 17 is before us.
Appeal2018-001744
Application 13/586,674
I. BACKGROUND
The subject matter on appeal relates to: a start capacitor assembly for
an electric motor; an electric motor connected to such a start capacitor
assembly; and a method for operating such an electric motor (Specification
filed August 15, 2012 ("Spec.") ,r 1). Figure 1 (annotated) is illustrative and
is reproduced from the Appellant's Drawings filed August 15, 2012, as
follows:
FIG. 1
Figure 1 provides an isometric view of an exemplary start capacitor
assembly 100 according to the invention, wherein the assembly 100
includes: a film capacitor 102 with connection terminals 114, 116, 118, and
120; a resistor 104 coupled to connection terminals 116 and 118; and a
housing 108 enclosing the film capacitor 102 (Spec. ,r,r 8, 13-16).
According to the Appellant, resistor 104, which is coupled in parallel to
capacitor 102, ( 1) facilitates discharging of capacitor 102 after disconnection
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Application 13/586,674
of the start capacitor assembly 100 from a start winding of an electric motor,
(2) helps prevent damage to other motor components, and (3) is sized with a
resistance that is sufficiently high to avoid excessive heat generation by
resistor 102 during operation (id. ,r 16).
Representative claim 1 is reproduced from the Claims Appendix to the
Appeal Brief as follows:
1. A start capacitor assembly for connection to an
electric motor, said assembly comprising:
a film capacitor having a first terminal and a second
terminal coupled to a plurality of connection terminals, wherein
said film capacitor substantially defines a capacitance of said
assembly;
a resistor electrically coupled to said film capacitor in
parallel with the first terminal and the second terminal of said
film capacitor by direct mechanical and electrical connection to
at least two of said plurality of connection terminals; and
a housing enclosing said film capacitor, wherein said
resistor is positioned external to said housing and connected
between at least two of said plurality of connection terminals.
(Appeal Br. 12; emphasis added.)
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections under pre-AIA
35 U.S.C. § 103(a) as follows:
A. Claims 1, 5, 9, 12, 16, and 194 as unpatentable over Lewus5 and
Thiel et al. 6 ("Thiel");
4 Claims 7 and 14 are not listed in the statement of the rejection but are
addressed in the analysis (Final Act. 2, 7).
5 US 3,644,810, issued February 22, 1972.
6 US 4,813,116, issued March 21, 1989.
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Application 13/586,674
B. Claims 2, 3, 10, 18, and 20 as unpatentable over Lewus, Thiel,
and Stockman; 7
C. Claim 21 as unpatentable over Lewus, Thiel, and Elliott et al. 8
("Elliott"); and
D. Claim 22 as unpatentable over Lewus, Thiel, and Kumar. 9
(Ans. 2-11; Final Act. 2-10.)
III. DISCUSSION
The Examiner finds that Lewus describes a start capacitor assembly
including a film capacitor having a first terminal and a second terminal
coupled to a plurality of connection terminals and a resistor coupled in
parallel to the film capacitor's first terminal and second terminal (Final Act.
2-3). The Examiner acknowledges that Lewus does not disclose "a housing
enclosing said film capacitor, wherein said resistor is positioned external to
said housing and connected between at least two of said plurality of
connection terminals" as recited in claim 1 (id. at 3). To resolve the
differences between Lewus's scope and content and the subject matter
recited in claim 1, the Examiner relies on Thiel (id.). Specifically, the
Examiner finds that Thiel discloses "a housing enclosing said film capacitor,
wherein said resistor are [sic] located in an insulated sheath separated from
the capacitor bank which can be positioned in the outside housing" (id.
(citations omitted)). Based on these findings, the Examiner concludes that
"[i]t would have been an obvious design choice to move a resistor to the
7 US 2011/0134584 Al, published June 9, 2011.
8 US 2011/0115448 Al, published May 19, 2011.
9 US 2011/0193490 Al, published August 11, 2011.
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Appeal2018-001744
Application 13/586,674
outside of the housing so that part of the heat can be further dissipated away
of the housing, while allowing also more space for heat emitted from the
capacitor to dissipate faster" (id.). According to the Examiner,
(Id.)
[i]t would have also been an obvious matter of design matter to
one of ordinary skill in the art, since the technique for
improving a known device was within the capabilities of one of
ordinary skill in the art and the improvement resulted from the
general knowledge of the art as taught by Thiel.
The Appellant's principal contention is that Lewus and Thiel would
not have suggested a start capacitor assembly with a resistor that is
positioned at a location external to a housing, as required by claim 1 (Appeal
Br. 5-6). The Appellant argues that, in Thiel, the discharge resistors 18 are
located within a housing 10 (Thiel Figs. 1, 2A), and the Examiner's
articulated reasons for concluding that a person having ordinary skill in the
art would have been prompted to reposition the resistors to a position
external to the housing are not supported by evidence (id.). Specifically, the
Appellant urges that Thiel does not provide any suggestion that heat
dissipation is a concern in the disclosed capacitor unit (id. at 6). The
Appellant points out that Thiel teaches an insulative film for resistor 18 and
a dielectric fluid to submerge the capacitor sections 12 within the housing
10, which would have suggested that heat dissipation is not a problem, as
evidenced by Thiel' s teaching that the capacitor is "intended for long life
over a wide range of environmental conditions and circuit operating
conditions" (id. ( citation omitted)).
We agree with the Appellant because the Examiner's articulated
reasons lack the requisite rational underpinning required to support an
obviousness conclusion. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
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Appeal2018-001744
Application 13/586,674
cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007).
Lewus's Figure 1 is reproduced as follows:
Fl a.I u
30
tS"
l8
Lewus's Figure 1 above illustrates, in schematic form, a capacitor-start
induction-run motor 10 having a starting circuit 11 that includes, inter alia, a
starting capacitor 29 and a resistor 30 connected in parallel with capacitor 29
(Lewus col. 2, 1. 60-col. 3, 1. 30). In contrast to claim 1, Lewus does not
disclose a housing for the capacitor 29, let alone the manner in which
resistor 30 is physically connected and positioned relative to a housing.
Thiel discloses power capacitors having a plurality of capacitive
section windings within an enclosure and interconnections between the
windings and external terminals (Thiel col. 1, 11. 12-15). Specifically,
Thiel's Figure 1 (annotated) is reproduced as follows:
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Appeal2018-001744
Application 13/586,674
IO
unitary h using
ta! areas
FIG. I
Thiel's Figure 1 above shows a capacitor unit having a unitary housing 10
that encloses a plurality of wound capacitor sections 12 stacked on one end
of the housing, each section 12 being wound with dielectric material on each
side of two electrodes and impregnated with a liquid dielectric fluid (id. at
col. 4, 11. 20-29). As shown in Thiel's Figure 2A (not reproduced), Thiel
teaches discharge resistors 18 connected between leads 15 for connection to
housing terminals 16 (id. at col. 4, 11. 45-60).
As the Appellant points out, neither Lewus nor Thiel provides
sufficient support for the Examiner's articulated reason that a person having
ordinary skill in the art would have been motivated to position a resistor at a
location external to a housing to dissipate heat. That reason is found only in
the Appellant's own disclosure (Spec. ,r,r 4, 16) and is, therefore, based on
hindsight.
Moreover, as the Appellant argues, Thiel teaches that a power
capacitor is intended to be suitable for a wide range of environmental
conditions and circuit operating conditions (Thiel col. 1, 11. 16-21 ).
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Application 13/586,674
Therefore, a person having ordinary skill in the art would have understood
that Thiel' s disclosed arrangement would be suitable for a wide variety of
environmental conditions and circuit operating conditions without any need
to rearrange the resistors to a location that is external to the housing. Indeed,
Thiel' s teaching that cold temperatures in some climates can cause
breakdown or failure would deter a person skilled in the relevant art to
modify Thiel's arrangement in the manner proposed by the Examiner (id. at
col. 2, 11. 54---63).
The Examiner's alternative design choice theory is also insufficient.
The Examiner explains that the proposed modification would have been a
matter of design choice because the Appellant has not disclosed any reason
or advantage for placing the resistor outside the housing (Ans. 4--5). That
finding is factually incorrect. The Appellant's Specification informs one
skilled in the relevant art that the components as arranged in claim 1 (i.e., the
claimed subject matter as a whole) provides several advantages, including a
solution to an excessive heat generation problem (Spec. ,r,r 4, 16).
Lastly, the Examiner states that the proposed modification would have
been obvious to a person having ordinary skill in the art based on "general
knowledge" (Final Act. 3). Although an obviousness conclusion may
properly be based on common knowledge or common sense in appropriate
circumstances, we do not think it is appropriate here because the facts
needed to support the obviousness conclusion are not capable of instant and
unquestionable demonstration as being well-known. KIS Himpp v. Hear-
Wear Techs., LLC, 751 F.3d 1362, 1366 (Fed. Cir. 2014) ("[T]he Board
cannot accept general conclusions about what is 'basic knowledge' or
'common sense' as a replacement for documentary evidence for core factual
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Application 13/586,674
findings in a determination ofpatentability." (citing In re Zurko, 258 F.3d
1379, 1385-86 (Fed. Cir. 2001))).
For these reasons, we cannot sustain the Examiner's rejection as
maintained against claim 1. Because the two other independent claims-
namely, claims 9 and 19-recite the same or similar limitations at issue in
claim 1, we also cannot sustain the rejection of all other claims on appeal.
IV. SUMMARY
Rejections A through Dare not sustained. Therefore, the Examiner's
final decision to reject claims 1-3, 5, 7, 9, 10, 12, 14, 16, and 18-22 is
reversed.
REVERSED
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