SIEMENS AKTIENGESELLSCHAFT

Patent Trials and Appeals Board

Sep 10, 2020

14893456 - (D) (P.T.A.B. Sep. 10, 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.
14/893,456 11/23/2015 MARCO KÖHLER KOEHLER-4 4805
20151 7590 09/10/2020
HENRY M FEIEREISEN, LLC
HENRY M FEIEREISEN
35 WEST 35TH STREET
SUITE 900
NEW YORK, NY 10001
EXAMINER
SINGH, ALEXANDER A
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
09/10/2020 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):
INFO@FEIEREISENLLC.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCO KÖHLER, GERHARD GÖMMEL,
FREERK JACOBUS OUDE KOTTE, and THOMAS RETTIG
Appeal 2019-006805
Application 14/893,456
Technology Center 2800

Before JENNIFER S. BISK, JASON J. CHUNG, and
DAVID J. CUTITTA II, Administrative Patent Judges.

CUTITTA, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–35, all the claims under
consideration. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments
were heard on August 27, 2020. A transcript of that hearing will be added to
the record in due time.
We AFFIRM.

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 SIEMENS AG.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Invention
Appellant’s claimed subject matter relates to an electric motor having
a stator configured “to efficiently air-cool [the] electric motor without a
housing.” Spec. ¶ 7.2 The stator includes stator sheets that each have a large
lug that “projects radially outwards between . . . two tension strips adjacent
to the large lug in the circumferential direction about the axis of rotation
over the two adjacent tension strips and has cantilevers extending there
about the axis of rotation which reach over the two adjacent tension strips.”
Id. at ¶ 9. Because “the tension strips are fixed in the axial direction by the
cantilevers,” the “tension strips thus cannot lift away from the stator” if
“bending torque acts on the electric machine.” Id. at ¶ 10. This reduces the
“bending torque to be accepted by an individual tension strip” and so the
“tension strips can therefore be dimensioned smaller” to reduce any adverse
effect on cooling caused by the tension strips. Id; see ¶ 6.
Exemplary Claim
Claims 17 and 31 are independent. Claim 17, reproduced below with
certain limitations at issue italicized, exemplifies the claimed subject matter:
17. An electric machine, comprising:
a rotor supported in bearings for rotation about an axis of
rotation;
a stator arranged in radial surrounding relationship with
respect to the axis of rotation and including at least a plurality
of first stator sheets which are stacked upon one another in the

2 We refer to: (1) the originally filed Specification filed November 23, 2015
(“Spec.”); (2) the Final Office Action mailed June 25, 2018 (“Final Act.”);
(3) the Appeal Brief filed April 1, 2019 (“Appeal Br.”); and (4) the
Examiner’s Answer mailed July 11, 2019 (“Ans.”).
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direction of the axis of rotation, said first stator sheets having a
number of recesses radially outside with respect to the axis of
rotation to form grooves in parallel relationship to the axis of
rotation;
tension strips arranged in the grooves and having ends;
and
end rings connected at the ends of the tension strips,
wherein said first stator sheets each have at least one first
lug configured to project radially outwards between two tension
strips adjacent to the first lug as viewed about the axis of
rotation in a circumferential direction over the two adjacent
tension strips, said first lug on each first stator sheet having
cantilevers configured to extend about the axis of rotation and
to reach over the two adjacent tension strips.
Appeal Br. 9 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art references:
Name Number / Title Date
King US 4,712,292 Dec. 15, 1987
Ciciliani US 2004/0000821 A1 Jan. 1, 2004
Ishikawa US 2008/0315702 A1 Dec. 25, 2008
Tomohara US 2009/0026872 A1 Jan. 29, 2009
Allen US 2013/0229084 A1 Sept. 5, 2013
Timan US 2015/0306975 A1 Oct. 29, 2015
Ozeki JP 06–70452 Sept. 30,
1994
REJECTIONS
The Examiner makes the following rejections:
Claims Statute Basis Final Act.
17–20, 22, 25, 27, 28 § 103 Ciciliani, King 6
23, 24, 26 § 103 Ciciliani, King, Ozeki 11
21 § 103 Ciciliani, King, Allen 14
29 § 103 Ciciliani, King, Ishikawa 15
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Claims Statute Basis Final Act.
30 § 103 Ciciliani, King, Tomohara 16
31–34 § 103 Timan, Ciciliani, King 18
35 § 103 Timan, Ciciliani, King, Ozeki 25
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
We disagree with Appellant that the Examiner erred and adopt as our own
the findings and reasons set forth by the Examiner to the extent consistent
with our analysis herein. We add the following primarily for emphasis.
The Examiner relies on Ciciliani to teach or suggest all of the
limitations of claim 17 but finds that “Ciciliani does not explicitly teach said
first lug on each first stator sheet having cantilevers configured to extend
about the axis of rotation and to reach over the two adjacent tension strips.”
Final Act. 8. The Examiner, however, finds that King teaches or suggests
this limitation:
King teaches (see figs. 16–17 and annotated fig. 15 below)
said first lug (see annotated fig. 15 below) on each first stator
sheet (these are the stator sheets 175 on which cantilevers 67 are
formed, see annotated fig. 16 below) having cantilevers (67)
configured to extend about the axis of rotation and to reach over
the two adjacent tension strips (65, cantilevers 67 are on both
sides of the lug contacting adjacent tensions strips 65).
Id.
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Appellant argues the Examiner’s proposed combination would not
have been obvious because:
the configuration of the extensions 52 in Ciciliani to form fins 37
and to leave between the extensions 52 grooves 54 for passing
bars 35 (Ciciliani’s paragraph [0047] clearly mitigate against a
modification of Ciciliani with the King’s disclosure to arrive at
the present invention because such a modification would, in fact,
render Ciciliani unsatisfactory for its intended purpose of cooling
and connecting the bars in the grooves. Ciciliani’s intent in the
configuration of the extensions is to maximize the spacing
between the extensions 52 by inclining the ends of confronting
extensions away from one another, i.e. at an obtuse angle in
relation to the vertical center line in Fig. 5.
Appeal Br. 6.
Appellant’s argument that the Examiner’s reliance on the combined
teachings of Ciciliani and King would render Ciciliani unsatisfactory for its
intended purpose is not supported by evidence found in the record and is,
instead, supported only by attorney argument, which “cannot take the place
of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant
does not provide evidence that supports the allegations that Ciciliani’s
intended purpose is “cooling and connecting the bars in the grooves” or that
“Ciciliani’s intent in the configuration of the extensions is to maximize the
spacing between the extensions 52 by inclining the ends of confronting
extensions away from one another.” Appeal Br. 6. Furthermore, even
assuming the alleged intended purpose of Ciciliani is accurate, Appellant
does not provide evidence to establish that deforming Ciciliani’s extensions
52 so that they extend over adjacent tension bars and fix them in place,
“would entail both a marked change in cooling performance of the
extensions, as well as change or even obstruct the flow of cooling air.” Id.
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As a result, Appellant fails to demonstrate why the constraints of In re
Gordon apply to Appellant’s electric machine. See In re Gordon, 733 F.2d
900 (Fed. Cir. 1984) (The court reversed the Board’s holding that it would
have been obvious to turn the prior art device upside down, finding that if
the prior art device was turned upside down it would be inoperable for its
intended purpose because the gasoline to be filtered would be trapped at the
top, the water and heavier oils sought to be separated would flow out of the
outlet instead of the purified gasoline, and the screen would become
clogged).
In response to Appellant’s arguments, the Examiner notes that “the
allegation that modifying Ciciliani to provide cantilevers would prevent
proper cooling of Ciciliani is not supported by actual facts,” i.e., evidence.
Ans. 4. In addition the Examiner finds that,
[t]he modification of Ciciliani to include these cantilevers for the
added benefit of improving structural strength of the stator will
in no way impede cooling performance of the device of Ciciliani
because lugs 52 that extend radially and are used as cooling fins
will still remain, the gaps (see annotated fig. 4 below) between
these axially stacked lugs will also still remain. Additionally
grooves 54 that extend axially would also still be present since
secondary reference King teaches in figure 17 that the cantilevers
(67) extend over tension strips (77) leaving an axially groove (see
annotated fig. 17 below) that can accommodate air flow.
Id. at 5.
Appellant, in turn, has not rebutted the Examiner’s additional
reasoning and findings articulated in the Answer. Consequently, Appellant
has not shown error in these additional factual findings or in the Examiner’s
conclusion of obviousness.
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For the reasons discussed, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 17.
Accordingly, we sustain the Examiner’s rejection of that claim, as well as
the rejection of independent claim 31, and dependent claims 18–30 and 32–
35, which Appellant does not argue separately with particularity. Appeal
Br. 7.
CONCLUSION
We affirm the Examiner’s decision to reject claims 17–35 under
35 U.S.C. § 103.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–20, 22,
25, 27, 28
103 Ciciliani, King 17–20, 22,
25, 27, 28

23, 24, 26 103 Ciciliani, King,
Ozeki
23, 24, 26
21 103 Ciciliani, King,
Allen
21
29 103 Ciciliani, King,
Ishikawa
29
30 103 Ciciliani, King,
Tomohara
30
31–34 Timan, Ciciliani,
King
31–34
35 103 Timan, Ciciliani,
King, Ozeki
35
Overall
Outcome
17–35
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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