Ex Parte EL-Refaie et al

Patent Trial and Appeal Board

Oct 12, 2018

14252893 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/252,893 04/15/2014
6147 7590 10/16/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
Ayman Mohamed Fawzi EL-Refaie
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.
272717-1 8440
EXAMINER
ANDREWS, MICHAEL
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AYMAN MOHAMED FAWZI EL-REFAIE and KUM-KANG HUH
Appeal2017-010710
Application 14/252,893
Technology Center 2800
Before LINDA M. GAUDETTE, MARK NAGUMO, and DEBRA L. DENNETT,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1-6, 8-10, 13-17, 21, and 22 under 35 U.S.C. § 103 as
unpatentable over Osborne et al. (US 2013/0043760 Al, pub. Feb. 21, 2013) in
view of El-Refaie (US 2008/0238236 Al, pub. Oct. 2, 2008) and Mizuno et al. (US
6,345,544 Bl, iss. Feb. 12, 2002). We have jurisdiction under 35 U.S.C. § 6(b).
1 This Decision includes citations to the following documents: Specification filed
April 15, 2014 ("Spec."); Final Office Action dated November 10, 2016 ("Final");
Supplemental Appeal Brief filed May 1, 2017 ("Appeal Br."); Examiner's Answer
dated June 16, 2017 ("Ans."); and Reply Brief filed August 14, 2017 ("Reply
Br.").
2 The Applicant under 37 C.F.R. § 1.46, and hence the Appellant under 35 U.S.C.
§ 134, is the real party in interest, identified as General Electric Company. Appeal
Br. 3.
Appeal2017-010710
Application 14/252,893
We AFFIRM.
The invention is directed to "a rotor lamination, an induction machine with
dual phase magnetic material that allows for sensorless control that uses the rotor
lamination, and a method of manufacture." Spec. ,r 8. Figure 4, reproduced below,
illustrates a portion of the inventive rotor lamination. Id. ,r 16.
10
18 18 )
32 -- -~
r·f
1 7
30 . 1 ·:· 0 0
34 ~ 16 ::\ /161 r
·.1 ;' / /
i 0
Figure 4, above, depicts a portion of rotor lamination 10, which includes a
plurality of openings 16 circumferentially displaced around circular laminar
element 12, each opening 16 being configured to receive a rotor bar (not shown).
Spec. ,r,r 23-24, 27. At least a portion of lamination 10, e.g., region 30, may be
treated to create a variation in the relative magnetic permeability between at least
two regions of lamination 10. Id. ,r,r 26-27. "Any suitable method for changing
the magnetic permeability between at least two portions in the lamination 10 may
be used," including local heat treatment or nitriding to selectively render the
relative magnetic permeability of regions 30 less magnetic than the surrounding
regions. Id. ,r,r 26-28. Individual regions 32, 34, 36 within region 30 may have
the same or different relative magnetic permeabilities. Id. ,r 30. "In an
embodiment, the treatment may result in ... region 30 being non-magnetic, as
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Application 14/252,893
compared with the balance of the lamination 10 being magnetic." Id. The
"selective treatment [ of region 30] introduces rotor saliency by modulating the
rotor bar leakage flux. Ultimately, an electric motor ( e.g., induction machine) that
uses the resultant rotor laminations 10 is more suitable for sensorless control." Id.
Claims 1, 15, and 17 are reproduced below.
1. A rotor lamination, comprising:
a circular laminar element comprising a plurality of
openings configured to receive a plurality of rotor bars displaced
circumferentially around the element, wherein the circular laminar
element comprises a magnetic material, wherein a first region of the
circular laminar element having selectively received a nitriding
treatment, and wherein the nitriding treatment renders the first region
non-magnetic.
15. An induction machine comprising:
a plurality of rotor laminations of claim 1 stacked,
thereby defining a rotor core assembly; and
a stator surrounding the rotor core assembly.
17. A method of manufacture a rotor lamination, the method
compnsmg:
selectively nitriding a region of a rotor lamination,
thereby changing the magnetic permeability of the region, wherein the
rotor lamination is configured for use in an electric machine, the rotor
lamination comprises a plurality of openings displaced
circumferentially around the rotor lamination, wherein the rotor
lamination comprises a dual-phase magnetic material.
Appeal Br. 17-18 (Claims Appendix).
As to claim 1, the Examiner makes the following findings of fact ("FF"):
1. Osborne discloses a rotor lamination including a plurality of openings 16
circumferentially displaced around circular laminar element 12, each opening 16
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Application 14/252,893
being configured to receive one of rotor bars 20. Final 4 ( citing Osborne ,r,r 17-18,
Figs. 1, 2).
2. Osborne discloses that circular laminar element 12 comprises a magnetic
material. Id. ( citing Osborne ,r 17).
3. Osborne does not disclose that the circular laminar element includes a
non-magnetic region. Id. at 5.
4. El-Refaie discloses a rotor lamination comprising circular element 158
made of magnetic material 160 and having regions 162 that were rendered non-
magnetic by heat treatment. Id. (citing El-Refaie ,r,r 28-29, Fig. 6).
5. El-Refaie discloses that the arrangement of magnetic and non-magnetic
regions provides a smooth rotor with minimal noise and vibrations even at high
operating speeds and temperatures. Id. ( citing El-Refaie ,r 30).
6. One of ordinary skill in the art at the time of the invention would have
modified Osborne's rotor lamination to include regions of lower magnetic
permeability at the outer periphery to achieve the advantages described by El-
Refaie. Id.; see FF 5 supra.
7. Mizuno discloses the use of nitriding for lowering magnetic permeability.
Final 6 (citing Mizuno 6:7-16).
8. Based on Mizuno's disclosure, one of ordinary skill in the art at the time
of the invention would have recognized that heat treatments and nitriding are
known equivalents for lowering magnetic permeability. Id.
9. It would have been prima facie obvious to substitute Mizuno' s nitriding
treatment for El-Refaie's heat treatment, a known equivalent, to achieve the
predictable result of forming regions of lower magnetic permeability in Osborne's
rotor lamination. Id.; see In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
( explaining that the substitution of one known element for a known equivalent is
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Application 14/252,893
prima facie obvious.); In re Fout, 675 F.2d 297,301 (CCPA 1982) ("Express
suggestion to substitute one equivalent for another need not be present to render
such substitution obvious.").
The Examiner makes similar findings of fact with respect to claim 17. See
Final 9-10. Based on these findings, the Examiner concludes the invention, as
recited in claims 1 and 17, would have been obvious under 35 U.S.C. § 103.
Appellant's arguments in support of patentability as to all appealed claims
are based on limitations in claims 1 and 17. See generally Appeal Br. 9-16.
Accordingly, the remaining claims will stand or fall with claim 1 or claim 1 7. See
37 C.F.R. § 4I.37(c)(iv) (2016).
Appellant argues the Examiner reversibly erred in finding Osborne discloses
a circular laminar element comprising a plurality of openings displaced
circumferentially around the element. Appeal Br. 2; see FF 1 supra p. 3.
Appellant also disputes the Examiner's finding that ordinary artisan would have
modified Osborne's rotor lamination to include regions of lower magnetic
permeability based on El-Refaie's disclosure, arguing that "the outer periphery of
element 12 of Osborne is completely different than the inner nonferromagnetic
region 166 and the outer non-ferromagnetic region 162 of El-Refaie." Appeal Br.
13-14; see FF 6 supra p. 4. Appellant further argues that Mizuno discloses using a
nitriding treatment to change the hardness of magnetic substances 1, 11 to cause a
change in the magnetostrictive constant of magnetic substances 1, 11. Appeal Br.
15. Appellant thus contends the Examiner erred in finding Mizuno discloses the
use of a nitriding treatment to lower magnetic permeability to produce non-
magnetic regions. Id.; see FF 7 supra p. 4.
Having considered the respective positions of the Examiner and Appellant,
we find a preponderance of the evidence favors the Examiner's conclusion of
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obviousness as to claims 1 and 17. The Examiner has fully addressed Appellant's
arguments, and we agree that they are not persuasive of reversible error in the
Examiner's conclusion of obviousness for the reasons explained in the Answer.
See Ans. 2-5. In general, as explained by the Examiner, Appellant's arguments are
not persuasive because they are not supported by evidence, fail to address the facts
and reasons relied upon by the Examiner, and fail to take into account the
understanding of the ordinary artisan upon considering the prior art teachings as
whole. See id. We add the following for completeness.
Although method claim 17 positively recites a step of "nitriding," the
corresponding apparatus claim 1 recitation-"a first region of the circular laminar
element having selectively received a nitriding treatment, and wherein the nitriding
treatment renders the first region non-magnetic"-is a product-by-process
limitation. "[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself." In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The Examiner's findings with respect
to Osborne and El-Refaie provide a reasonable basis to conclude that Osborne, as
modified by El-Refaie, would have resulted in a rotor lamination having the
structure recited in claim 1, including a circular laminar element having a non-
magnetic first region. See FF 1---6 supra pp. 3--4; Thorpe, 777 F.2d at 697.
Therefore, the Examiner's findings as to Mizuno are unnecessary to support a
prima facie case of obviousness as to claim 1.
Turning to the Reply Brief, Appellant advances two new arguments in
support of patentability: Osborne's flat disc 12 is not laminar, and the ordinary
artisan would not have had a reasonable expectation of success in applying El-
Refaie' s heat treatment to Osborne's rotor. Reply Br. 5---6. We decline to consider
these arguments because Appellant has not explained why these arguments could
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not have been raised in the Appeal Brief. See FF 1---6 supra pp. 3--4; Ex parte
Borden, 93 USPQ2d 1473, 1474 (Bd. Pat. App. & Int. 2010) (informative) ("The
reply brief is not an opportunity to make arguments that could have been made
during prosecution, but were not. Nor is the reply brief an opportunity to make
arguments that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.").
In response to Appellant's argument that Mizuno does not disclose the use
of a nitriding treatment to lower magnetic permeability (Appeal Br. 15), the
Examiner stated that "[Mizuno' s] process is described as a 'means for producing a
difference in inductance change'. Since the properties of inductance and magnetic
permeability are proportional to one another, any increase or decrease in
inductance will result in a corresponding increase or decrease in magnetic
permeability." Ans. 4. Appellant disputes the Examiner's finding that the
properties of inductance and magnetic permeability are proportional. Reply Br. 5.
Appellant's argument is not persuasive of reversible error in the Examiner's
conclusion of obviousness for several reasons.
First, Appellant's argument is not supported by evidence. See In re Geisler,
116 F.3d 1465, 1471 (Fed. Cir. 1997) (explaining that argument by counsel cannot
take the place of evidence). Second, as to claim 1, for the reasons explained above,
the Examiner's findings with respect to Osborne and El-Refaie are sufficient to
support a prima facie case of obviousness. See discussion of claim 1 product-by-
process limitation supra p. 6. Third, as to claim 17, even assuming Appellant is
correct in stating the Examiner erred in finding that magnetic inductance is
proportional to magnetic permeability, we do not find this to be harmful error.
Claim 1 7 requires a step of selectively nitriding to effect a change in magnetic
permeability, but does not specify that such change is a reduction in magnetic
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permeability. See claim 17 supra p. 3. Even if Mizuno does not disclose that
nitriding lowers magnetic permeability, Mizuno clearly supports a finding that heat
treatments and nitriding were known equivalents for modifying magnetic
permeability. See Ans. 4 ("Mizuno discloses a treatment for magnetic substances
comprising 'a means for producing a difference in inductance change'. This
'means' can take the form of using 'materials of different permeability' or using
'the same materials with different hardness ... imparted by' either a heat
treatment, a surface treatment (including nitriding), or work hardening." ( quoting
Mizuno 6:7-16)); Mizuno 6:38--43 ("When heat treatment is applied to the portion
1 a of the magnetic substance 1 ... , the metallic composition of the portion 1 a is
changed to differentiate the magnetic permeability of the portion 1 a from that of
the other portions with the same result that the two magnetic substances of
different magnetic permeability are used."). In other words, Appellant has not
shown error in the Examiner's determination that the combination of Osborne, El-
Refaie, and Mizuno would have resulted in a method comprising "selectively
nitriding a region of a rotor lamination, thereby changing the magnetic
permeability of the region" (Claim 17 supra pp. 3--4 (emphasis added)).
In sum, Appellant has not identified reversible error in the Examiner's
conclusion of obviousness as to claims 1---6, 8-10, 13-17, 21, and 22 for the
reasons stated in the Final Office Action, the Advisory Action dated December 15,
2016, the Examiner's Answer, and above.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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