Ex Parte Kochan

Patent Trial and Appeal Board

Feb 28, 2017

12881675 (P.T.A.B. Feb. 28, 2017)

United States Patent and Trademark Office
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.
12/881,675 09/14/2010 John R. Kochan JR. 8367/110355U/0321 1488
24628 7590
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
EXAMINER
KRAMER, DEVON C
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
02/28/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. KOCHAN JR.1
Appeal 2014-008749
Application 12/881,675
Technology Center 3700
Before WILLIAM A. CAPP, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John R. Kochan Jr. (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final rejection of claims 1—3, 5, 6, and 8—16.2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is Metropolitan
Industries, Inc. Appeal Br. 2 (filed Mar. 5, 2014).
2 Claims 4 and 7 have been cancelled. Id. at 11—13 (Claims App.).
Appeal 2014-008749
Application 12/881,675
CLAIMED SUBJECT MATTER
The invention concerns “pumps, fans[,] or generators . . . with axial
fluid flow and with flow-through impellers or rotors.” Spec. 12. Claim 1 is
illustrative of the subject matter on appeal, and recites:
1. A pump comprising:
a hollow housing, the housing having a fluid inflow port
and a fluid outflow port with a substantially axial flow path
therebetween;
a flow-through impeller rotatably carried in the housing
adjacent to one of the ports for rotation generally perpendicular
to the flow path;
a rotor coupled to the impeller, displaced axially therefrom
along the flow path and adjacent to the other port wherein the
rotor is closer to the other port than is the impeller;
a plurality of magnets that continuously line an outside
edge of the rotor directly facing an inside surface of the hollow
housing; and
circuitry to rotate the impeller thereby producing a flow of
fluid through the housing.
Appeal Br. 11 (Claims App.). Independent claim 11 recites “[a]n electrical
generator” having the same structure as recited in claim 1.
REJECTIONS
The claims stand rejected as follows:
I. Claims 1—3, 5, 8, and 11—14 under 35 U.S.C. § 103(a) as
unpatentable over Isenberg3 and Lopatinsky,4 as evidenced by
Moineau.5
3 US 3,938,913, iss. Feb. 17, 1976.
4 US 6,911,757 B2, iss. June 28, 2005.
5 US 2,161,374, iss. June 6, 1939.
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Application 12/881,675
II. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over
Isenberg, Lopatinsky, and Kishimoto.6
III. Claims 9 and 10 under 35 U.S.C. § 103(a) as unpatentable over
Isenberg, Lopatinsky, and Angle.7
IV. Claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable
over Isenberg, Lopatinsky, and Bozeman.8
ANALYSIS
Rejection I
Appellant argues claims 1—3, 5, 8, and 11—14 as a group. Appeal
Br. 5—9. We select claim 1 as representative, and claims 2, 3, 5, 8, and 11—
14 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Isenberg discloses a pump substantially as
claimed, wherein the pump motor is asynchronous and, therefore, lacks a
plurality of magnets. Final Act. 2—3 (mailed Dec. 4, 2013). The Examiner
finds that Lopatinsky teaches a synchronous motor that includes a plurality
of magnets 18 that lie on an outside edge of rotor 15 and directly face an
inside surface of a housing. Id. at 4. The Examiner concludes that it would
have been obvious to substitute for Isenberg’s asynchronous motor the
synchronous motor taught by Lopatinsky, which includes a rotor with a
plurality of external magnets “in order to avoid slip losses and [to] be able to
use for constant speed under variable load pumping operations.” Id. The
Examiner also states that “it is well known in the art that asynchronous
6 JP 11-37079, pub. Feb. 9, 1999.
7 US 2003/0198563 Al, pub. Oct. 23, 2003.
8 US 5,692,882, iss. Dec. 2, 1997.
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Appeal 2014-008749
Application 12/881,675
motors by design have slip while synchronous don’t and therefore
asynchronous motors will not be able to maintain a constant speed under
variable load torque applications.” Id. (citing http://www.groschopp.com/
synchronous-vs-asynchronous).
Appellant contends, first, that if Isenberg’s “inductive coils were
replaced by magnets . . ., the magnets would change the principle of
operation of Isenberg.” Appeal Br. 5; see also Reply Br. 3 (filed Aug. 7,
2014).
We are unpersuaded by this argument, because the Examiner does not
propose replacing the inductive coils of Isenberg’s asynchronous motor with
magnets. Rather, the Examiner proposes replacing Isenberg’s asynchronous
motor with Lopatinksy’s “synchronous motor . . . comprising a rotor with [a]
plurality of external magnets.” Final Act. 4 (emphasis added). In other
words, the Examiner proposes to replace Isenberg’s entire motor, not just
Isenberg’s inductive coils. Appellant’s argument does not provide technical
reasoning to explain persuasively why substituting a synchronous motor for
an asynchronous motor would impact the principle of operation. We agree
with the Examiner that in the proposed modification, drive power would
continue to be supplied to the pump, albeit by a synchronous—instead of an
asynchronous—motor. Ans. 9 (mailed July 11, 2014).
Appellant also contends that “the claimed invention has a
functionality” that is not disclosed by the prior art. Appeal Br. 6. Namely,
Appellant argues that the “plurality of magnets that continuously line an
outside edge of the rotor,” recited in claim 1, “allows for the use of a non­
magnetic substrate (i.e., the rotor). This is necessarily the case because (as
would be apparent to those of skill in the art) the directly adjacent magnets
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Application 12/881,675
form their own localized magnetic circuits with the electromagnets of the
stator.” Id. Appellant argues that “[n]one of the cited references recognize
the problem solved by the claimed invention of allowing for the use of non­
magnetic rotors.” Id. at 8—9.
We are unpersuaded by this argument. First, claim 1 does not recite a
non-magnetic substrate or rotor. See Appeal Br. 11 (Claims App.); Ans. 10.
Second, Appellant does not identify any basis upon which such a limitation
properly would be read into claim 1, through claim construction. We find no
support in Appellant’s Specification for a non-magnetic substrate or rotor.
See generally Spec. Indeed, we find the Specification to entirely lack any
discussion of non-magnetic materials or rotor materials. Appellant provides
no extrinsic evidence to support such an argument.
Appellant also contends that neither Isenberg nor Moineau disclose
the claimed plurality of magnets, and that Lopatinsky “is explicitly directed
to ‘[a] ferrous ring shaped rotor band 22’.. .for coupling the magnetic flux of
the Lopatinsky et al. spaced apart magnets 23, 24 to the stator.” Appeal
Br. 6 (citing Lopatinsky, 3:28), 8; see also Reply Br. 3. Because the
Examiner does not rely on Isenberg or Moineau to teach the claimed
magnets, it is of no moment that such a disclosure is lacking in those
references. See Final Act. 2—5; Ans. 10. Further, Appellant’s discussion of
Lopatinsky’s rotor 22 with magnets 23, 34 is not responsive to the rejection,
which relies on Lopatinsky’s rotor 15 with magnets 18. Final Act. 4;
compare Lopatinsky, Fig. 1, 2:35—43 (disclosing “rotor band 15 with a
plurality of permanent magnets 18 circumferentially positioned around the
rotor band periphery”), with id. at Fig. 2, 3:24—33 (disclosing a different
embodiment in which “rotor band 22 has a plurality of radially-magnetized
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Appeal 2014-008749
Application 12/881,675
permanent magnets [23, 24] attached around its outer periphery with each
adjacent magnet having the opposite polarity”). Appellant does not
articulate any patentable distinction between Lopatinsky’s magnets 18 and
those claimed.
Finally, the Appeal Brief recites general principles of law regarding
obviousness. See Appeal Br. 7—8. Appellant contends that “the Office
Action has failed to meet the burden of establishing a prima facie case of
obviousness” because “there is no teaching or suggestion whatsoever in [the
prior art] of ‘a plurality of magnets that continuously line an outside edge of
the rotor directly facing an inside surface of the hollow housing.’” Id. at 8;
see also Reply Br. 3.
We are unpersuaded by this argument. We addressed above
Appellant’s argument regarding the purported lack of disclosure of the
claimed magnets. To the extent this argument also criticizes the Examiner’s
reasoning for the proposed combination, we are also unpersuaded of error.
We understand that “rejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In this case,
the Examiner met the requisite burden. Specifically, the Examiner
concluded that it would have been obvious to substitute Lopatinsky’s
synchronous motor for the asynchronous motor of Isenberg and specifically
articulates a reason to do so—namely, “to avoid slip losses and [to] be able
to use for constant speed under variable load pumping operations.” Final
Act. 4. The Examiner provides additional support for this reasoning, in the
form of a citation to an Internet resource. Id. Appellant does not address the
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Application 12/881,675
merits of the Examiner’s reasoning, and does not explain why it is allegedly
deficient. On the present record, we find the reasoning articulated by the
Examiner to be sufficient to establish a prima facie case of obviousness.
Accordingly, Appellant has not apprised us of error in the Examiner’s
rejection of claims 1—3, 5, 8, and 11—14. We affirm the rejection.
Rejections II—IV
Appellant does not present argument with respect to the rejections of
claims 6, 9, 10, 15, and 16. See Appeal Br. 2, 5 (purporting to appeal only
the rejection of claims 1—3, 5, 8, and 11—14). However, because claims 6, 9,
10, 15, and 16 have not been cancelled, those claims are properly before us.
See 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office.”).
Because Appellant has not presented argument with respect to these
claims, we summarily affirm the Examiner’s rejections of claims 6, 9, 10,
15, and 16.
DECISION
The rejection of claims 1—3, 5, 6, and 8—16 is AFFIRMED.
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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