Mitsubishi Electric Corporation

Patent Trials and Appeals Board

Mar 27, 2020

14616829 - (D) (P.T.A.B. Mar. 27, 2020)

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.
14/616,829 02/09/2015 Masashi NAKAMURA Q217456 9153
23373 7590 03/27/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
MULLINS, BURTON S
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASASHI NAKAMURA, SHOGO OKAMOTO,
MASAYA INOUE, ATSUSHI SAKAUE, and TATSURO HINO
Appeal 2019-000275
Application 14/616,829
Technology Center 2800
Before ROBERT E. NAPPI, DENISE M. POTHIER, and
JASON V. MORGAN, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1,2 appeals from the
Examiner’s decision to reject claims 1 and 6. Appeal Br. 6. Claim 2 has
been canceled; claim 3 is objected to as being dependent upon a rejected

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Mitsubishi
Electric Corp. Appeal Br. 2.
2 Throughout this opinion, we refer to the Final Office Action (Final Act.)
mailed December 7, 2017, the Appeal Brief (Appeal Br.) filed June 8, 2018,
the Examiner’s Answer (Ans.) mailed August 8, 2018, and the Reply Brief
(Reply Br.) filed October 9, 2018.
Appeal 2019-000275
Application 14/616,829

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based claim but would otherwise be allowable if rewritten in independent
form, including all the limitations of the base claim and any intervening
claims; claims 4–5 have been allowed. Id.
We held a hearing for this appeal on March 10, 2020.
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to a rotary electric machine, such as an electric
motor or generator. Spec. ¶ 1. This machine is used in electric vehicles
where the demand for large currents continuously exists. Id. ¶ 2. Given this
continuous demand, the armature winding’s temperature within the machine
increases. Id. Appellant’s claims are directed to a cooling mechanism for
the armature windings that uses insulating paper to keep liquid coolant from
flowing radially inward. Id. ¶¶ 7–9.
Independent claim 1 is reproduced below:
1. A rotary electric machine comprising:
a housing;
a rotor that is fixed to a rotating shaft that is rotatably
supported by said housing so as to be disposed inside said
housing;
an armature including:
an annular armature core in which slots are arranged
circumferentially so as to open radially inward; and
an armature winding that is constituted by a plurality of
coils that are each produced by bending and shaping a
conductor wire, and that are mounted to said armature core,
said armature being disposed so as to be coaxial to said
rotor so as to surround said rotor, and being held by said
housing,
said rotary electric machine being installed such that a
central axis of said rotating shaft is horizontal, and a liquid
coolant being blown onto a coil end of said armature winding
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from a coolant suction aperture that is formed on said housing
to cool said armature winding,
wherein:
said coolant suction aperture is formed at a position on
said housing that is vertically above said coil end; and
a strip-shaped insulating paper is inserted such that a
thickness direction is in a radial direction between radially
adjacent conductor portions of a portion of said conductor wire
that constitutes said coil end, and is disposed so as to extend
circumferentially across a position that is vertically below said
coolant suction aperture inside said coil end, wherein:
m layers of said insulating paper that is inserted between
said radially adjacent conductor portions are disposed in a
radial direction, where m is an integer that is greater than or
equal to 1; and
a penetrating aperture that allows said liquid coolant to
pass through is formed on each of said m layers of insulating
paper that are disposed in said radial direction.

Appeal Br. 12–13 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Takahashi JP 2001-095205 April 6, 2001
Otsubo JP 2014-117034 A June 26, 2014
Sawada EP 2461463 A1 June 6, 2012

OBVIOUSNESS REJECTION OVER OTSUBO AND SAWADA
Claim 1 is rejected under 35 U.S.C. § 103 as being unpatentable over
Otsubo in view of Sawada. Final Act. 2–4.3 The Examiner found that

3 The Final Office Action reverts back to “Page 2” on what should be page
number four. We will number the Final Office Action by sequential page
number in this Decision.
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Otsubo teaches most of its limitations. Id. (citing Otsubo ¶¶ 11, 15–18, 41,
Figs. 1–2, 11). However, the Examiner determined Otsubo does not teach
the recited “penetrating aperture that allows said liquid coolant to pass
through is formed on each of said m layers of insulating paper that are
disposed in said radial direction,” turning to Sawada. Id. at 4 (citing Sawada
¶¶ 31–324, Figs. 6, 17). The Examiner proposed to modify Otsubo’s
insulation paper to include penetrating apertures as Sawada teaches to allow
the cooling medium to flow smoothly and improve the cooling effect. Id.
Appellant argues that it would not be obvious to modify Otsubo with
Sawada’s teaching as proposed. Appeal Br. 7–10. In particular, Appellant
argues Otsubo’s insulating paper functions to insulate the coils of different
phases and to form a circumferential flow path. Id. at 8. According to
Appellant, modifying Otsubo’s insulating paper with apertures will destroy
its purpose because (1) the apertures will permit conduction between cooling
different phases and (2) the apertures will permit the coolant medium to flow
radially inward and prevent the coolant from flowing circumferentially. Id.
at 8–9 (citing Otsubo ¶¶ 37–38, Figs. 11–12); Reply Br. 4–8.

MAIN ISSUE
Under § 103, would combining Otsubo and Sawada collectively as
proposed destroy various functions of Otsubo’s insulating paper?

4 The Examiner uses the original document’s column and line numbers.
Final Act. 4. We use paragraph numbers for simplicity.
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ANALYSIS
Based on the record before us, we find no error in the Examiner’s
rejection. We have reviewed the Examiner’s rejection of claim 1 in light of
Appellant’s arguments presented in this appeal. Arguments which Appellant
could have made, but did not make in the Brief are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv). Except as noted, we adopt as our own the
findings and reasons set forth in the rejections from which the appeal is
taken and in the Examiner’s Answer.
The Federal Circuit states “[i]f references taken in combination would
produce a ‘seemingly inoperative device,’ . . . such references teach away
from the combination and thus cannot serve as predicates for a prima facie
case of obviousness.” In re Urbanski, 809 F.3d 1237, 1243 (Fed. Cir. 2016)
(quoting McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354
(Fed.Cir.2001) (quoting In re Sponnoble, 56 CCPA 823, 405 F.2d 578, 587
(1969); citing In re Gordon, 733 F.2d 900, 902 (Fed.Cir.1984)). “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)).
Modification Allegedly Permits Conduction
Appellant first argues that modifying Otsubo’s insulating paper with
apertures as recited would defeat Otsubo’s purpose by permitting conduction
between its phases. Appeal Br. 7–8 (citing Otsubo ¶¶ 37–38, Fig. 11). We
are not persuaded.
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Here, we agree with the Examiner (see Ans. 4–5) that Appellant’s
assertion, to include apertures in Otsubo’s insulating paper would permit
conduction between coil phases (See Appeal Br. 7–8), is not supported
persuasively by factual evidence in the record. As the Examiner notes,
“according to the Appellant’s logic, the penetrating apertures 152a, 153a in
his own invention would defeat the purpose of the ‘insulating paper’
152,153 as insulation between the coil end conductors.” Ans. 6. Although
Appellant contends their penetrating apertures overlap with gap S′ (Spec. ¶
37, Fig. 14) and prevent conduction (Appeal Br. 6), this gap feature and how
it overlaps with the penetrating apertures are not claimed. Appeal Br. 12
(Claims App.). Rather, claim 1’s scope encompasses aperture arrangements
beyond what is shown in the disclosure’s Figure 14. Moreover, we agree
with the Examiner (see Ans. 6–7) that the Specification does not address that
gap S′ or its arrangement with aperture 153a in Figure 14 prevents
conduction between coils. Spec. ¶ 37, Fig. 14.
Additionally, claim 1 recites including “a penetrating aperture . . . on
each of said m layers.” Appeal Br. 13 (Claims App.) (emphasis added).
Thus, modifying Otsubo’s insulating paper 20 as the Examiner proposes
(Final Act. 4) would result in one (i.e., a) penetrating aperture in each of the
m layers as claim 1 requires. Thus, an adjacent m layer may be positioned
radially inward from a given m layer and the layers can still insulate the
phases from any possible conduction depending on the resulting aperture’s
location on each m layer. Thus, we disagree that any possible conduction
would destroy Otsubo’s insulating paper’s function to insulate between
layers or phases as argued. See Appeal Br. 8 (citing Otsubo ¶¶ 37–38).
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Accordingly, Appellant has not identified adequate evidence in the
record to demonstrate that including apertures in Otsubo’s insulting paper 20
would render its insulating paper inoperable for its purpose to insulate
between the cooling phrases or teaches away from the recited “aperture” in
claim 1.
Coolant Will Allegedly Flow Radially Defeating Otsubo’s Purpose
Appellant secondly argues that modifying Otsubo’s insulating paper
with apertures as taught by Sawada would defeat Otsubo’s purpose of
circumferentially cooling because Sawada teaches (1) its apertures are
located outside the stator coil, (2) disposing its insulating paper radially
outside the coils rather than between or within the coils for insulating, and
(3) its apertures create coolant flow radially inwardly rather than
circumferentially. Appeal Br. 8–10 (citing Otsubo ¶ 38, Figs. 11–12;
Sawada ¶¶ 29, 32, 37, Fig. 17); Reply Br. 4–8 (citing Otsubo ¶ 34, Fig. 11;
Sawada ¶¶ 29, 31, Figs. 6, 17). We are not persuaded.
Importantly, the rejection proposed to modify Otsubo’s insulating
paper 20, as shown in Figure 11 disposed between coils (see Otsubo ¶¶ 9,
11, 34–35, Fig. 11), to have apertures rather than proposing bodily
incorporating or replacing wholesale Sawada’s insulation arrangement in
Figure 17 with Otsubo’s arrangement in Figure 11. Final Act. 4 (proposing
modifying Otsubo’s insulation paper to have penetrating apertures as taught
by Sawada). That is, Sawada is being relied on in the rejection for a limited
purpose—to teach including apertures in insulating paper is known to an
ordinarily skilled artisan to allow the cooling medium to flow smoothly and
increase the cooling the effect within an electric machine environment. Ans.
8–9. As such, many of the noted arguments asserted by Appellant (Appeal
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Br. 8–10; Reply Br. 4–8), including Sawada teaches its insulating material
functions to insulate between the stator core and stator coil (see Appeal Br.
9–10; Reply Br. 4, 8), do not consider fully the rejection as proposed.
Moreover, Appellant cannot show nonobviousness by attacking Sawada’s
features individually when the rejection is based on modifying Otsubo’s
insulting paper based on Sawada’s teachings. See In re Keller, 642 F.2d
413, 426 (CCPA 1981); see In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); Ans. 8 (discussing Keller), 12 (discussing Appellant’s argument
“is directed towards structure in Sawada alone”), 13 (discussing the
arguments attack Sawada individually).
Furthermore, Otsubo teaches its arrangement, including the
embodiment shown in Figure 11, provide circumferential cooling of the coils
between phrases and their ends. See Otsubo ¶¶ 20, 34, 38, Fig. 4; Ans. 9.
Including holes, as taught by Sawada, within Otsubo’s insulating paper may
cause some coolant to move in a radial direction, but coolant will continue to
flow circumferentially. Ans. 11 (stating “even though apertures 53a would
reduce circumferential flow of cooling medium RF [(i.e., refrigerant)] . . . ,
this does not eliminate circumferential flow of cooling medium.”). Also,
Otsubo’s component 8, which is not proposed to be modified or eliminated,
would provide yet another barrier or wall so that the coolant can flow
circumferentially. Otsubo ¶ 20; see Ans. 9. Thus, contrary to Appellant’s
assertion (Appeal Br. 9), the combined Otsubo/Sawada rotary electric
machine as proposed would still provide circumferential cooling as shown
and taught by Otsubo.
For the above reasons, we disagree the modification as proposed
would defeat any purported purpose of Otsubo’s insulating paper to insulate
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between the coils or would destroy Otsubo’s function to cool its coils
circumferentially as Appellant argues.
We additionally disagree that Sawada provides “no basis” to teach
adding apertures “to a portion of the insulating paper residing within the
coils.” Appeal Br. 9 (emphasis omitted). Notably, the Examiner provides
reasons with a rational underpinning to combine Sawada’s teaching with
Otsubo’s arrangement, including to allow for smooth coolant flow and to
increase the cooling effect. Final Act. 4 (citing Otsubo ¶ 32); Ans. 3–4
(discussing allowing for cooling medium to flow smoothly and to increase
the cooling effect), 8–9 (same).
Assuming, without agreeing, that the proposed modification would
result in some of the insulating paper being located radially outside the coils,
Sawada’s Figures 1 and 3 show a first rotating electrical machine
embodiment that provides circumferentially cooling. Sawada’s Figures 1 and
3 are shown below.

Sawada’s Figures 1 (left) and 3 (right) Showing
a Rotating Electric Machine and its Cooling System.
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The above Figures 1 and 3 in Sawada show a rotating electrical
machine 1 and its cooling system respectively. Sawada ¶ 15, Figs. 1, 3.
Sawada’s Figure 1 shows stator coil 22 having coil end 22E. Id. ¶ 15, Fig. 1.
Guide plates 41 and 42 are located along the upper half portion and lower
portion of coil end 22E respectively. Id. Sawada further shows and
describes cooling medium RF is spouted towards the upper portion of coil
end 22E in a circumferential manner. Id. ¶¶ 17–18, Fig. 3 (see arrows about
guide plates); Ans. 10–11 (discussing Sawada ¶ 17).
Sawada’s Figure 17, cited by the Examiner, shows a third
embodiment of a rotating electrical machine. Id. ¶ 27, Fig. 17. Sawada’s
Figure 17 is reproduced below.

Sawada’s Figure 17 Showing an Alternative Rotating Electrical Machine.
Sawada’s Figure 17 shows guide plates 241 and 242 arranged similar
to guide plates 41 and 42 in Figure 1. Compare id. ¶ 28, Fig. 17, with id. at
Fig. 1. Thus, contrary to any argument by Appellant (see Appeal Br. 8–10),
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circumferentially cooling of the coil’s end would exist in this third
embodiment similar to the first embodiment.
In the Reply Brief, Appellant newly argues there would have been no
reasonable expectation of success for the proposed modification because of
Sawada’s disclosure. Reply Br. 7–8. To the extent this argument is not
waived (see 37 C.F.R. § 41.41(b)(2)), we disagree for the above-stated
reasons.
Accordingly, Appellant has not persuaded us of error in the rejection
of independent claim 1.

OBVIOUSNESS REJECTION OVER OTSUBO, SAWADA,
AND TAKAHASHI

Claim 6 depends from claim 1. Claim 6 is rejected under 35 U.S.C.
§ 103 as being unpatentable over Otsubo, Sawada, and Takahashi. Final
Act. 4–5. Appellant has not argued this rejection separately. We sustain this
rejection for reasons similar to those discussed for claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References Affirmed Reversed
1 103 Otsubo, Sawada 1
6 103 Otsubo, Sawada,
Takahashi
6
Overall
Outcome
1, 6

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Claim 3 stands objected to as being dependent upon a rejected based
claim but the Examiner indicates it would otherwise be allowable if
rewritten in independent form including all the limitations of the base claim
and any intervening claims. Final Act. 1, 5.
Claims 4–5 have been allowed. Id. at 1, 6.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED