Ex Parte Qu et al

Board of Patent Appeals and Interferences

Jun 5, 2009

11014137 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RONGHAI QU, PATRICK LEE JANSEN, BHARAT
SAMPATHKUMAR BAGEPALLI, RALPH JAMES CARL JR.,
ANIRUDDHA DATTATRAYA GADRE and FULTON JOSE LOPEZ
____________

Appeal 2008-5459
Application 11/014,137
Technology Center 2800
____________

Decided:1 June 5, 2009
____________

Before KENNETH W. HAIRSTON, JOHN A. JEFFERY,
and CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-5459
Application 11/014,137

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 2, 5, 6, 8, 17 and 18. See App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b) (2002). We affirm.

STATEMENT OF THE CASE
Appellants invented an electrical machine having a rotor and a
double-sided yokeless stator with modular lamination stacks.2
Claim 1 which further illustrates the invention follows:
1. An electrical machine comprising:

a rotor with an inner rotor portion and an outer rotor portion; and

a double-sided yokeless stator comprising modular lamination stacks
and configured for radial magnetic flux flow,

wherein the double-sided yokeless stator is concentrically disposed
between the inner rotor portion and the outer rotor portion of the electrical
machine.

The Rejections
The Examiner relies upon the following prior art reference as
evidence of unpatentability:
Seguchi U.S. 6,590,312 B1 Jul. 8, 2003

Claims 1, 2, 5, 6, 8, 17 and 18 stand rejected under 35 U.S.C. § 102(b)
as being unpatentable over Seguchi (Ans. 3-4).
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by

2 See generally App. Br. 2 and Spec. 2-3.
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Application 11/014,137

Appellants. Arguments which Appellants could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2008).

Claims 1, 2, 5, 6, 8, 17 and 18
Appellants argue that Seguchi’s rotary electric machine only discloses
a lamination core 211 with integrated teeth 214 and not modular lamination
stacks as claimed (App. Br. 3-4). It is the Examiner’s position that
Seguchi’s lamination core forms modular lamination stacks and fully meets
the claim language (Ans.5).

ISSUE
Have the Appellants shown that the Examiner erred in finding that
Seguchi discloses modular lamination stacks?
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

Seguchi
1. Figure 3 of Seguchi is reproduced below:
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Appeal 2008-5459
Application 11/014,137

Figure 3 discloses a rotary machine (200) having a stator (210), three
phase stator winding (212), permanent magnets (222, 232), rotor (250),
outer teeth (214), inner teeth (214’) and magnetic core (221).

2. The stator core is composed of laminated iron sheets (Col. 3, ll. 29-31).
3. The magnetic core (221) is composed of laminated sheets that are
conformed to the small cylinder portion (241) of the bowl member (240)
(Col. 8, ll. 44-46).

PRINCIPLES OF LAW
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. Of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted) (internal
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Application 11/014,137

quotation marks omitted). “[T]he words of a claim ‘are generally given their
ordinary and customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303,
1312 (Fed. Cir. 2005) (en banc) (internal citations omitted).
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim. For
example, a particular embodiment appearing in the written description
may not be read into a claim when the claim language is broader than
the embodiment.

SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004).

“‘For a prior art reference to anticipate in terms of 35 U.S.C. § 102,
every element of the claimed invention must be identically shown in a single
reference.’” In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990) (quoting
Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677 (Fed. Cir.
1988)). “These elements must be arranged as in the claim under review,”
Bond, 910 F.2d at 832 (citing Lindemann Maschinenfabrik v. American
Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984)), “but this is not
an ‘ipsissimis verbis’ test”. Bond, 910 F.2d at 832-33 (citing Akzo N.V. v.
United States Int'l Trade Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir.
1986)). “‘[A]nticipation is a fact question subject to review under the
clearly erroneous standard.”’ Bond, 910 F.2d at 833 (quoting In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986)).

ANALYSIS
The Examiner and Appellants disagree on the interpretation of the
phrase “modular lamination stacks” found in claim 1. As instructed by In re
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Appeal 2008-5459
Application 11/014,137

Am. Acad. Of Sci. Tech Ctr., 367 F.3d at 1364, we give this limitation its
broadest reasonable interpretation in light of the Specification and as one
skilled in the art would interpret this limitation. The Specification indicates
that the modular lamination stacks are arranged as different core packs, each
core pack comprising one or more modular lamination stacks. (Spec. 3).
The Specification does not provide the composition of the modular
lamination stacks, thus it fails to define the line of demarcation between one
lamination stack or multiple lamination stacks. The Examiner argues that
the laminated iron sheets are laminated stacks, and that each of the laminated
stacks of teeth forms a modular lamination stack and thus reads on the claim
language. See Ans. 5 and (FF1-3). It is the Appellants’ position that the
Examiner is confusing the terms modular and laminations (Reply Br. 6).
Without providing evidence, such as in In re Cortright, 165 F.3d
1353, 1358-59 (Fed. Cir. 1999), Appellants argue that one skilled in the art
would recognize that laminations include multiple layers and therefore
Seguchi cannot anticipate the claims because it only discloses one stack of
layers of iron sheets. See Reply Br. 6. Arguments made by counsel do not
take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602
(CCPA 1965); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
As we stated previously, the Specification is silent in regards to defining the
composition of the lamination stacks and therefore what constitutes one
modular lamination stack as opposed to multiple modular lamination stacks
is not determinable. Therefore, we do not find the Examiner’s interpretation
of modular lamination stacks to include laminated iron sheets to be an
unreasonable interpretation.
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Application 11/014,137

Furthermore, due to the breadth of the claim, we will not read or
import the arrangement of Figures 2-4 in the Specification, showing the
modular lamination stacks arranged as different core packs, into claim 1. See
SuperGuide, 358 F.3d at 875.
For the above reasons, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102 as being anticipated by Seguchi. We also
sustain the rejection of claims 2, 5, 6, 8, 17 and 18 which fall with claim 1.
CONCLUSION
The Appellants have not shown that the Examiner erred in finding that
Seguchi disclosed modular lamination stacks.

ORDER
We have sustained the Examiner’s decision rejecting claims 1, 2, 5, 6,
8, 17 and 18.
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) (2007).
AFFIRMED

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GENERAL ELECTRIC COMPANY
GLOBAL RESEARCH, PATENT DOCKET RM
BLDG. K1-4A59
NISKAYUNA, NY 12309
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