10360111 (B.P.A.I. Mar. 21, 2012)

Ex Parte Kaplan et al

Board of Patent Appeals and InterferencesMar 21, 2012

10360111 (B.P.A.I. Mar. 21, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/360,111 02/06/2003 Martin Kaplan 60680-481 2505 26127 7590 03/21/2012 DYKEMA GOSSETT PLLC 39577 WOODWARD AVENUE SUITE 300 BLOOMFIELD HILLS, MI 48304-5086 EXAMINER MULLINS, BURTON S ART UNIT PAPER NUMBER 2834 MAIL DATE DELIVERY MODE 03/21/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MARTIN KAPLAN and JAMES M. KOKERNAK, ____________________ Appeal 2009-012625 Application 10/360,111 Technology Center 2800 ____________________ Before ALLEN R. MacDONALD, KRISTEN L. DROESCH, and DAVID M. KOHUT, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012625 Application 10/360,111 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-5, 7-12, and 14-19. We have jurisdiction under 35 U.S.C. § 6(b). Exemplary Claim Exemplary claim 1 under appeal read as follows: Claim 1. A switched reluctance motor, comprising: a rotor having a plurality of radially outwardly extending rotor poles; and, a stator disposed about said rotor, said stator having a back iron and a plurality of stator poles extending radially inwardly from said back iron wherein a first stator pole of said plurality of stator poles tapers radially inwardly from a radially inner periphery of said back iron of said stator to a radially innermost portion of said first stator pole and a second stator pole of said plurality of stator poles tapers radially inwardly from said radially inner periphery of said back iron of said stator to a radially innermost portion of said second stator pole, said second stator pole adjacent said first stator pole, a first side of said first stator pole and a second side of said second stator pole adjacent to one another and parallel to one another. Appeal 2009-012625 Application 10/360,111 3 Rejections on Appeal 1 The Examiner rejected claims 1, 3-5, 7-8, 10, 12, 14, 15, and 17-19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Saito (US 6,236,132 B1) and Rieber (US 5,124,607). The Examiner rejected claims 2, 9, 11, and 16 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Saito, Rieber, and Hancock (US 5,015,903). The Examiner rejected claims 1-2, 5, 8-9, 11-12, 15-16, and 19 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shimizu (JP 10-322992) and Lenz (US 3,675,056). Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over the combination of Saito and Rieber because “[o]ne of ordinary skill in the art would not be motivated to modify the structure of Saito et al, therefore, because Saito et al. and Rieber et al. . . . teach away from the combination proposed by the Examiner and from Appellants’ claimed invention.” (App. Br. 8). 1 Separate patentability is not argued for claims 2-5, 7-12, and 14-19. Except for our ultimate decision, these claims are not discussed further herein. While using an argument for patentability of a first claim as a cut-and- paste argument for a second claim might outwardly appear to be a separate argument for patentability of the second claim, such a cut-and-paste argument is not in fact an argument for “separate patentability.” Appellants’ arguments as to claim 9 are exemplary of this failure to present arguments for separate patentability. Appeal 2009-012625 Application 10/360,111 4 2. Also Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over the combination of Saito and Rieber because “there is no suggestion or motivation to combine the teachings of Saito et al. and Rieber et al.” (App. Br. 9). 3. Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over the combination of Shimizu and Lenz because “One of ordinary skill in the art would not be motivated to modify the structure of Shimizu et al. therefore, because Shimizu et al. teach away from the combination proposed by the Examiner and from Appellants’ claimed invention.” (App. Br. 13-14). 4. Also Appellants contend that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) over the combination of Shimizu and Lenz because “there is no suggestion or motivation to combine the teachings of Shimizu et al. and Lenz.” (App. Br. 15). Issues on Appeal Did the Examiner err in rejecting claim 1 as being obvious over the combination of Saito and Rieber because the references teach away from the proposed combination? Did the Examiner err in rejecting claim 1 as being obvious over the combination of Saito and Rieber because there is no suggestion or motivation to combine teachings of the references? Did the Examiner err in rejecting claim 1 as being obvious over the combination of Shimizu and Lenz because Shimizu teaches away from the proposed combination? Appeal 2009-012625 Application 10/360,111 5 Did the Examiner err in rejecting claim 1 as being obvious over the combination of Shimizu and Lenz because there is no suggestion or motivation to combine teachings of the references? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ argument (Appeal Brief and Reply Brief) that the Examiner has erred. We disagree with Appellants’ conclusion. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Appeal Brief. We concur with the conclusions reached by the Examiner. As to Appellants above contention 1, we agree with the Examiner’s reasoning as to the combination of Saito and Rieber and the teaching away argument beginning at page 6 of the Answer. As to Appellants above contention 1, we agree with the Examiner’s reasoning as to the combination of Shimizu and Lenz and the teaching away argument beginning at page 14 of the Answer. As to Appellants above contentions 2 and 4, although Appellants acknowledge the Court’s ruling in KSR v. Teleflex, 550 U.S. 398 (2007), Appellants still argue that a suggestion or motivation is required to show obviousness. (App. Br. 9, 14, and 15). The Court explicitly rejected Appellants argued suggestion or motivation theory of obviousness. KSR, 550 U.S. at 415 (“We begin by rejecting the rigid approach of the Court of Appeals.”). Contrary to Appellants’ argument, a suggestion or motivation is Appeal 2009-012625 Application 10/360,111 6 not required. Further, Appellants’ suggestion or motivation argument fails to acknowledge the obviousness rational of “simple substitution.” We conclude that the substitution of the slot profile taught by Riebers for the slot profile taught by Saito is such a “simple substitution” and requires no further articulated reasoning by the Examiner in order to set forth a proper prima facie case of obviousness. We do not find a contention by Appellants that such a simple substitution rationale is in error. We also conclude that the substitution of the slot profile taught by Lenz for the slot profile taught by Shimizu is such a “simple substitution” and requires no further articulated reasoning by the Examiner in order to set forth a proper prima facie case of obviousness. We do not find a contention by Appellants that such a simple substitution rationale is in error. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1-5, 7-12, and 14-19 as being unpatentable under 35 U.S.C. § 103(a). (2) Claims 1-5, 7-12, and 14-19 are not patentable. DECISION The Examiner’s rejections of claims 1-5, 7-12, and 14-19 are affirmed. Appeal 2009-012625 Application 10/360,111 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED tj