Ex Parte Handa et al

Patent Trial and Appeal Board

Oct 19, 2018

13996334 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/996,334 06/20/2013 Norihisa Randa
22850 7590 10/23/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
417746US41PCT 1063
EXAMINER
MORAZA, ALEXANDER
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORIHISA RANDA, SATORU OHASHI,
MASAHIRO TANIDA, and SHUSAKU YAMASAKI
Appeal2017-002704
Application 13/996,334 1
Technology Center 2800
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final decision rejecting claims 1-14, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
Oral arguments were heard on October 9, 2018. A transcript of that hearing
will be added to the record in due time.
We AFFIRM.
1 Appellants identify IHI CORPORATION as the real party in interest. See
Appeal Br. 2.
Appeal2017-002704
Application 13/996,334
STATEMENT OF THE CASE
Invention
Appellants' invention relates to a rotary machine that is cooled
with coolant and that includes a partition and mold member for
"[p]reventing the coolant from entering [an] air gap" between a stator and
a rotor of the rotary machine. This prevents an "increase in a mechanical
loss of the rotary machine." Spec. 1:1-19.2
Exemplary Claims
Claim 1 is the only independent claim. Claims 1 and 8 are exemplary
and are reproduced below with limitations at issue italicized.
1. A rotary machine comprising:
a rotor rotatable around a center axis of a rotor shaft;
a stator having a stator core arranged around the rotor
and a coil attached to the stator core so that a coil end part
protrudes from each end of the stator core;
a mold member formed at each end of the stator core and
configured to cover only a base part of the coil end part; and
a partition member attached in contact with the mold
member and configured to separate a first space with the rotor
arranged therein from a second space with the coil end part
arranged therein.
2 Throughout this Decision, we refer to: (1) Appellants' Specification filed
June 20, 2013 ("Spec."); (2) the Final Office Action mailed December 7,
2015 ("Final Act."); (3) the Appeal Brief filed June 3, 2016 ("Appeal Br.");
(4) the Examiner's Answer mailed October 21, 2016 ("Ans."); and (5) the
Reply Brief filed December 21, 2016 ("Reply Br.").
2
Appeal2017-002704
Application 13/996,334
8. The rotary machine according to claim 1, wherein
an end of the partition member is fitted to, attached to, brought
in contact with, or engaged with the whole of an inner
circuniference of the mold member, thereby separating the first
space from the second space.
Appeal Br. 11, 12.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal includes:
Kiyono et al.
("Kiyono")
Leiber et al.
("Leiber")
Hattori
Kikuchi
Matsui
Tajima
Tatematsu
US 2010/0275436 Al
US 2012/0007453 Al
JP 2002325394A
JP 2003289650A
JP 2004180376A
JP 2005328689A
JP 2009027837 A
REJECTIONS
Nov. 4, 2010
Jan. 15,2012
Nov. 8, 2002
Oct. 10, 2003
June 24, 2004
Nov. 24, 2005
Feb. 5,2009
Claims 1, 4, 5, 6, 8, 13, and 14 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Kikuchi and Kiyono. Final Act. 3-9.
Claim 2 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kikuchi, Kiyono, and Tajima. Final Act. 9-10.
Claim 3 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kikuchi, Kiyono, Tajima, and Leiber. Final Act. 10-11.
Claim 7 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kikuchi, Kiyono, and Matsui. Final Act. 11-13.
3
Appeal2017-002704
Application 13/996,334
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kikuchi, Kiyono, and Hattori. Final Act. 13-16.
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kikuchi, Kiyono, Hattori, and Tatematsu. Final Act. 16-
19.
Our review in this appeal is limited only to the above rejections and
issues raised by Appellants. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(1)(iv)(2014).
ANALYSIS
Rejection of Claim 1 Under 35 U.S.C. § 103(a)
Issue 1: Does the Examiner err in finding the combination of Kikuchi
and Kiyono teaches or suggests "a mold member formed at each end of the
stator core and configured to cover only a base part of the coil end part," and
"a partition member," as recited in claim 1?
The Examiner finds Kikuchi' s "insulator member (18) formed at each
end of the stator core ( 6)" and covering only "a base part of the coil end
part" teaches "a mold member," as claimed. Final Act. 3 ( citing Kikuchi
,r,r 22, 29, Figs. 1, 4). The Examiner finds "Kiyono teaches a method of
manufacturing a stator including resin molding to enhance production
efficiency and surely fill the rein between an insulator and a winding." Final
Act. 4 (citing Kiyono ,r,r 14, 16). The Examiner concludes "[i]t would have
been obvious ... to have the insulator member of Kikuchi' s motor to be a
mold member (resin molded), in order to enhance production efficiency and
surely fill the rein between the insulator and the winding, as taught by
Kiyono." Final Act. 4.
4
Appeal2017-002704
Application 13/996,334
Appellants dispute the Examiner's factual findings, arguing "[t]he
outstanding Office Action acknowledges that Kikuchi fails to teach a mold
member as an insulator at the end of the stator core." Appeal Br. 5.
We are unpersuaded. Appellants' argument does not address the
actual reasoning of the Examiner's rejection because the Examiner relies
primarily on Kikuchi to teach the mold member, rather than acknowledging
that Kikuchi fails to teach a mold member, as argued by Appellants. See
Final Act. 3; Ans. 3--4. That is, the Examiner finds Kikuchi's insulator 18 is
formed at each end of the stator core and covers only a base part of the coil
end part. The Examiner relies on Kiyono to show that Kikuchi's insulator
may be resin molded by "introducing resin between [an] insulator and a
winding (coil) and filling that gap between them." Ans. 3--4 (citing Kiyono
,r,r 14, 16).
Appellants next argue "the edgewise coil 13 of Kiyono is not molded
by covering only a base part of a coil end part thereof." Appeal Br. 5.
This argument likewise does not address the actual reasoning of the
Examiner's rejection because the Examiner relies on Kikuchi's insulator 18
to teach a member covering only a base part of a coil end part thereof. See
Final Act. 3.
As such, Appellants' arguments attack the Examiner's findings from
Kikuchi and Kiyono individually (see Appeal Br. 6-9), but the rejection is
based on the teachings of the combination of references. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references") ( citation omitted).
Appellants' arguments, thus, are unpersuasive because they fail to take into
5
Appeal2017-002704
Application 13/996,334
account what the collective teachings of Kikuchi and Kiyono would have
suggested to one of ordinary skill in the art.
Next, Appellants argue "Kikuchi describes a different partition
structure for separating a space of the cooling jacket from a space of the
rotor" because "Kikuchi fails to teach a mold member as an insulator," as
recited in claim 1. Appeal Br. 5.
We find this argument unpersuasive because Kikuchi does teach a
mold member as claimed when considered in combination with the
teachings of Kiyono as discussed above. Moreover, Appellants provide only
unsupported assertions without evidence. It is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
Issue 2: Does the Examiner provide erroneous reasoning in
combining the teachings of Kikuchi and Kiyono?
Appellants argue "that a person of ordinary skill in the art would not
have reached the claimed invention by merely modifying the stator of
Kikuchi in view of the split stator manufacturing method of Kiyono"
because "such a modification would require substantial redesign and/or
reconstruction of the Kikuchi rotary electric machine, as well as change its
principle of operation." Appeal Br. 5---6 (citations omitted). This argument,
however, is premised on Appellants' erroneous assertion that the
"outstanding Office Action acknowledges that Kikuchi fails to teach a mold
member." Appeal Br. 5. We, therefore, find this argument unpersuasive.
6
Appeal2017-002704
Application 13/996,334
Next, Appellants argue the Examiner provides no substantial evidence
"within the record of an apparent reason for modifying the stator of the
Kikuchi rotary electric machine. Without such reason and absent improper
hindsight reconstruction, a person of ordinary skill in the art would not have
found it obvious to perform the proposed modification." Appeal Br. 6.
We are not persuaded by Appellants' hindsight argument because the
Examiner has provided a reason with rational underpinnings to combine the
teachings of Kikuchi and Kiyono, namely, "to have the insulator member of
Kikuchi's motor to be a mold member (resin molded), in order to enhance
production efficiency ... , as taught by Kiyono." Final Act. 4 ( citing Kiyono
,r,r 14, 16); see In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections
on obviousness grounds [require] some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness") ( cited
with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appellants fail to show why this reasoning is deficient. Appellants also fail
to provide evidence to demonstrate the Examiner's proffered combination
would have been "uniquely challenging or difficult for one of ordinary skill
in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
For the reasons discussed, Appellants have not shown error in the
Examiner's factual findings or conclusion of obviousness. We, therefore,
sustain the Examiner's 35 U.S.C. § 103(a) rejection of independent claim 1.
We also sustain the rejections of dependent claims 2-7 and 9-14, which are
not argued separately. See Appeal Br. 7-10.
7
Appeal2017-002704
Application 13/996,334
Rejection of Claim 8 Under 35 U.S.C. § 103(a)
Issue: Does the Examiner err in finding the combination of Kikuchi
and Kiyono teaches or suggests "an end of the partition member is fitted to,
attached to, brought in contact with, or engaged with the whole of an inner
circumference of the mold member, thereby separating the first space from
the second space," as recited in claim 8?
The Examiner finds Kikuchi' s cylindrical member 4 teaches or
suggests the claimed partition member and Kikuchi' s insulator 18 teaches or
suggests the claimed mold member. See Final Act. 8. Specifically, the
Examiner finds "an end of the partition member (4) is fitted to, attached to,
brought in contact with, or engaged with the whole of an inner
circumference of the insulator member (18) (resin molded with Kiyono's
combination), thereby separating the first space (S 1) from the second space
(82)." Final Act. 8 ( citing Kikuchi Fig. 4).
Appellants, relying on Figure 4 of Kikuchi argue "an end of the
cylindrical member 4, cited for the claimed partition member, is not fitted to,
attached to, brought into contact with, or engaged with the whole of an
inner circumference of the insulator 18, cited for the claimed mold
member." Appeal Br. 7.
The Examiner responds by additionally finding Kikuchi modified by
Kiyono teaches the disputed limitation because Kikuchi' s partition member
"(4) has a seal (8) located in the inner circumference of the insulator (18) to
seal that area" and because "[t]here is no mention in Kikuchi's Specification
of a gap located in between the seal (8) of the partition (4) and the
insulator (18)." Ans. 5---6, emphasis omitted ( citing Kikuchi ,r 29).
8
Appeal2017-002704
Application 13/996,334
Appellants, in tum, fail to respond to the Examiner's additional
findings (see Reply Br. 5). Also, Appellants' conclusory statement, based
on Kikuchi's Figure 4, amounts to little more than a paraphrasing of the
claim language and a general denial, and thus is unpersuasive to rebut the
Examiner's prima facie case of obviousness. Cf 37 C.F.R. § 4I.37(c)(iv)
("A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
Appellants have, therefore, not shown error in the Examiner's factual
findings. Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
dependent claim 8.
DECISION
We affirm the Examiner's decision rejecting claims 1-14 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)(l )(iv).
AFFIRMED
9