Ex Parte Qu et al

Patent Trial and Appeal Board

Mar 17, 2014

12138182 (P.T.A.B. Mar. 17, 2014)

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.
12/138,182 06/12/2008 Ronghai Qu 197032-1/MAN
(GERD:0815)
8950
41838 7590 03/18/2014
GENERAL ELECTRIC COMPANY (PCPI)
C/O FLETCHER YODER
P. O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
ANDREWS, MICHAEL
ART UNIT PAPER NUMBER
2834
MAIL DATE DELIVERY MODE
03/18/2014 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 RONGHAI QU
and PATRICK LEE JANSEN
____________

Appeal 2012-001783
Application 12/138,182
Technology Center 2800
____________

Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001783
Application 12/138,182
2
On November 17, 2010, the Examiner finally rejected claims 1-4 and
21-23 of Application 12/138,182 under 35 U.S.C. § 112, ¶ 2 as indefinite.
Claims 21-23 also were rejected under 35 U.S.C. § 112, ¶ 1 for failing to
meet the written description requirement. Claims 1-4, 21, and 22 also were
rejected under 35 U.S.C. § 102(b) as anticipated, and claim 23 also was
rejected under 35 U.S.C. § 103(a) as obvious. Appellants1 seek reversal of
these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’182 application describes high-torque electrical machines. Spec.
¶ 0001. In particular, the ’182 application is directed toward electrical
machines that can deliver high torque and power at low speeds. Id. at
¶¶ 0003-0005.
Claim 1 is the only independent claim in the ’182 application and is
reproduced below:
1. An electrical machine comprising:
a rotor comprising:
an inner rotor having a plurality of inner rotor poles; and
an outer rotor having a plurality of outer rotor poles; and
a stator configured to modulate a magnetic flux and to transmit
torque to the inner rotor and the outer rotor, the stator
comprising:
a stator core interposed concentrically between the inner
rotor and the outer rotor;

1 General Electric Co. is identified as the real party in interest. (App. Br. 2.)
Appeal 2012-001783
Application 12/138,182
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a plurality of stator windings disposed in a plurality of
stator slots, the stator windings configured to form a
plurality of stator poles; and
a plurality of stator teeth interposed between the plurality
of stator slots, wherein an arithmetic sum or difference of
twice a number of stator teeth and a number of the stator
poles equals a number of rotor poles.
(App. Br. 23 (Claims App’x) (emphasis added).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-4 and 21-23 are rejected under 35 U.S.C. § 112, ¶ 2, as
indefinite. (Ans. 4.)
2. Claims 21-23 are rejected under 35 U.S.C. § 112, ¶ 1, for failing to
comply with the written description requirement. (Ans. 5.)
3. Claims 1-4, 21, and 22 are rejected under 35 U.S.C. § 102(b) as
anticipated by Qu.2 (Ans. 5.)
4. Claim 23 is rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Qu and Atallah.3 (Ans. 7.)
DISCUSSION
Rejection 1. The Examiner rejected all of the pending claims of the
’182 application as indefinite under 35 U.S.C. § 112, ¶ 2. (Ans. 4.) In this
case, the Examiner concluded that the phrase “wherein an arithmetic sum or

2 U.S. Patent Application Publication No. 2006/0131985 A1, published June
22, 2006.
3 K. Atallah & D. Howe, A Novel High-Performance Magnetic Gear, 37
IEEE TRANSACTIONS ON MAGNETICS 2844 (2001).
Appeal 2012-001783
Application 12/138,182
4
difference of twice a number of stator teeth and a number of the stator poles
equals a number of rotor poles” is indefinite. The Examiner stated that “[i]t
is unclear whether [the term ‘a number’ is] intended to refer to the total
number of teeth or poles or some subset thereof.” (Id.)
During prosecution, a claim is examined for compliance with 35
U.S.C. § 112, ¶ 2 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009). A claim is not indefinite merely because more suitable
language or modes of expression are available. Id. In determining whether
a particular claim is definite, the claim’s language must be analyzed in light
of the content of the particular application, the prior art’s teaching, and the
interpretation that would be given to the claim’s language by a person of
ordinary skill in the art at the time the invention was made. Id.
Here, a review of the ’182 application’s Specification leads us to
conclude that the Examiner erred in rejecting claims 1-4 and 21-23 as
indefinite. As Appellants point out, ¶ 0033 of the Specification discloses the
mathematical relationship recited in claim 1:
In an exemplary embodiment, the inner rotor poles of the
outer rotor 26 may be permanent magnets 36, 38 disposed on its
inner surface and the outer rotor poles of the inner rotor 28 may
be permanent magnets 40, 42 disposed in its outer surface. The
permanent magnets 36, 38, 40 and 42 are together configured to
form a number of rotor poles. The number of the rotor poles,
the number stator poles and the stator teeth are configured to
satisfy:
2 ∗ ………… 1 ;
wherein STEETH refers to the number of stator teeth 30, SPOLE
refers to the number of stator poles and RPOLE refers to the
number of rotor poles.
Appeal 2012-001783
Application 12/138,182
5
Furthermore, the Specification also discloses additional embodiments. See,
e.g., Spec. ¶¶ 0035, 0036, 0038-0040. The description of each of these
embodiments makes it clear that equation (1) sets forth a mathematical
relationship between the total number of stator teeth, the total number of
stator poles, and the total number of rotor poles. Thus, claim 1, when
considered in view of the Specification, meets the necessary minimum
standards of clarity and precision.
We reverse the Examiner’s rejection of claims 1-4 and 21-23 as
indefinite.4
Rejection 2. The Examiner rejected claims 21-23 under 35 U.S.C.
§ 112, ¶ 1 for failing to comply with the written description requirement.
(Ans. 5.) This rejection is based upon the Examiner’s view that the
Specification does not demonstrate that Appellants had possession of the
mathematical relationship between the total numbers of stator teeth, stator
poles, and rotor poles. (Id.)
As discussed above, we conclude that the Examiner erred in
interpreting the description provided in Appellants’ Specification. We,
therefore, also reverse the rejection of claims 21-23 under 35 U.S.C. § 112,
¶ 1.
Rejection 3. The Examiner rejected claims 1-4, 21 and 22 as
anticipated by Qu. (Ans. 5.) In making this rejection, the Examiner
concludes that the devices disclosed in Qu satisfy equation (1) because “any
number of rotor poles, stator poles, and stator teeth can meet the claimed

4 We leave the question of whether, in view of our construction of claim 1,
dependent claims 21-23 comply with 35 U.S.C. § 112(d) for the Examiner’s
consideration in the first instance.
Appeal 2012-001783
Application 12/138,182
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limitation since ‘a number’ can be any integer, up to the maximum number
of poles/teeth disclosed by Qu.” (Ans. 6.)
In view of our interpretation of claim 1 and the reversal of the
indefiniteness rejection, it is clear that the Examiner used an incorrect claim
construction. We, therefore, reverse the rejection of claims 1-4, 21, and 22
as anticipated by Qu.
Rejection 4. The Examiner rejected claim 23 as obvious over the
combination of Qu and Atallah. (Ans. 7.) The Examiner does not find that
Atallah describes a device with a structure that satisfies equation (1). (Id. at
7-8.) Thus, the Examiner has not established a prima facie case of
obviousness. We reverse the rejection of claim 23 as obvious for that
reason.
CONCLUSION
In view of the foregoing, we reverse the Examiner’s rejections of
claims 1-4 and 21-23 of the ’182 application.
REVERSED

cdc