Eaton Intelligent Power Limited

Patent Trials and Appeals Board

Mar 24, 2022

2021003782 (P.T.A.B. Mar. 24, 2022)

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. 15/118,943 08/15/2016 Fang Xie 041-063US1/13-ICD-1021 2528 123815 7590 03/24/2022 Eaton DMIPG P.O. Box 7126 Alexandria, VA 22307 EXAMINER BARNES, MALCOLM ART UNIT PAPER NUMBER 2837 NOTIFICATION DATE DELIVERY MODE 03/24/2022 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): contact@dmipgroup.com docketing@dmipgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FANG XIE, LEO SUN, KEVIN LEE, and DAVID XU ____________ Appeal 2021-003782 Application 15/118,943 Technology Center 2800 ____________ Before KAREN M. HASTINGS, CHRISTOPER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-18 of Application 15/118,943, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 In our Decision, we refer to the Specification (“Spec.”) of Application No. 15/118,943 filed Aug. 15, 2016; the Final Office Action dated Sept. 3, 2020 (“Final Act.”); the Appeal Brief filed Mar. 4, 2021 (“Appeal Br.”); the Examiner’s Answer dated Mar. 26, 2021 (“Ans.”); and the Reply Brief filed May 26, 2021 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Eaton Intelligent Power Limited as the real party in interest. Appeal Br. 1. Appeal 2021-003782 Application 15/118,943 2 For the reasons set forth below, we AFFIRM IN PART. The subject matter of the invention relates to reactive power compensation devices. Spec. 1, ll. 8-9. According to the Specification, such reactors are often used in outdoor environments; thus, the waterproof and dustproof requirements are relatively high. Id. 1, ll. 20-21. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, represents the claimed subject matter: 1. An inductance coil comprising a magnetic core and a coil which is wound around the magnetic core, wherein the coil includes a winding and a leading out terminal, wherein the coil is formed by winding a flat wire having a consistent size throughout the winding and the leading out terminal of the coil, and the flat surface of the wire is perpendicular to the axis around which the coil is wound, and wherein the coil is wrapped with an insulating adhesive tape, and the insulating adhesive tape is wound on the wire around an axis which is substantially in line with the direction along which the wire forming the coil extends without leaving any gaps between the insulating adhesive tape and the surface of the coil, so as to form an isolation layer on the surface of the coil. Appeal Br. 19 (Claims Appendix) (paragraph breaks added). REFERENCES The Examiner relies on the following prior art in rejecting the claims as obvious under 35 U.S.C. § 103: Name Reference Date Koubek et al. (“Koubek”) US 2,494,180 Jan. 10, 1950 Horrigan US 4,376,904 Mar. 15, 1983 Amagasa US 4,750,077 June 7, 1988 Holmes et al. US 6,137,202 Oct. 24, 2000 Appeal 2021-003782 Application 15/118,943 3 (“Holmes”) REJECTIONS The Examiner maintains the rejection of claims under 35 U.S.C. § 103 as follows: (1) claims 1-3, 5-12, and 14-18 over Horrigan in view of Koubek and further in view of Amagasa; and (2) claims 4 and 13 over Horrigan in view of Koubek and Amagasa and further in view of Holmes. Final Act. 4-12. DISCUSSION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the [E]xaminer’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. The Examiner rejects claims 1-3, 5-12, and 14-18 as obvious over Horrigan in view of Koubek and Amagasa, and claims 4 and 13 as obvious over the same references with the addition of Holmes. Final Act. 4-12. Rejection of claims 1, 2, 4, 7-11, 13, and 16-18 Appellant argues for reversal of the rejections of claims 1, 2, 4, 7-11, 13, and 16-18 as a group. Appeal Br. 6-13. We select claim 1 as Appeal 2021-003782 Application 15/118,943 4 representative of the group. Claims 2, 4, 7-11, 13, and 16-18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019). With regard to claim 1, the Examiner finds that Horrigan teaches most of the limitations, but does not explicitly teach (1) a magnetic core; (2) a wire having a consistent size throughout the winding and the leading out terminal of the coil; or (3) an insulating adhesive tape wound without leaving any gaps between the insulating adhesive tape and the surface of the coil. Final Act. 4-5. The Examiner finds that Koubek teaches a magnetic core. Id. at 5. The Examiner finds that Amagasa teaches a coil having a consistent size throughout the winding and “wound without leaving any gaps between the insulating adhesive tape and the surface of the coil.” Id. The Examiner determines that it would have been obvious for one of ordinary skill in the art before the effective filing date of the invention to modify Horrigan’s disclosure to include Koubek’s magnetic core in order to provide a flux conducting structure with a relatively constant inductance. Id. The Examiner finds that it would have been obvious as well to modify the combination of Horrigan and Koubek with Amagasa to increase coil inductance and suppress surge voltages and high frequency voltages. Id. Appellant makes several arguments for nonobviousness of the claims. First, Appellant argues that Koubek does not illustrate or describe the coil of wire disclosed therein as being formed by winding a flat wire having a consistent size through a winding and a leading out terminal or as being wrapped with an insulating adhesive tape. Appeal Br. 7. This argument is unpersuasive at least because the Examiner does not rely on Koubek for these disclosures. Appeal 2021-003782 Application 15/118,943 5 Appellant next argues that Amagasa does not disclose a coil that is wound without leaving any gaps between the insulating adhesive tape and the surface of the coil. Id. More specifically, Appellant contends that Amagasa does not disclose (1) an embodiment in which polyimide film 64 is applied to coil 50; (2) the polyimide film, including in tape form, is adhesive or an adhesive insulating tape; or (3) the polyimide film 64 is wrapped around coil 60, rather conductor 62 is wrapped. Id. at 7-8; Reply Br. 5-6. Appellant contends that Amagasa discloses that insulator 54 is between individual turns of coil 50, and polyimide film 64 is wound around individual conductors 62 of coil 60. Reply Br. 6. Appellant’s arguments are unpersuasive of reversible error. As the Examiner points out, Amagasa discloses that insulator 54 or film 64 may be inserted partly or entirely in the space between the coil turns. Ans. 4. “The insulator should desirably be made of a ceramic material which is inserted in the whole space or partial space between the coil turns. The metal foil-containing film should desirably have at least its part formed in the shape of a tape or sheet and wound on a coil proper.” Amagasa col. 2, ll. 42-47. The insulator may comprise an epoxy resin. Id. col. 4, ll. 16-17. According to Amagasa, winding the tape around the coil “is an effective means for filling the gaps between the coil turns.” Id. col. 4, ll. 36-37. To the extent that Amagasa discloses insulator 54 and film 64 as separate embodiments, it would have been obvious to one of ordinary skill in the art to combine the embodiments since such combination-if not explicitly taught-simply would have been a predictable variation to combine the benefits of both embodiments. See Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009) (“Combining two embodiments Appeal 2021-003782 Application 15/118,943 6 disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.”). We note that Horrigan discloses winding an insulating adhesive tape round the coil without leaving any gaps between the insulating adhesive tape and the surface of the coil. (We address infra Appellant’s separate argument that Horrigan does not disclose an insulating adhesive tape because the polyimide tape is non-adhesive and the FEP resin coated on the polyimide tape is a separate element.) During prosecution, an application’s claims are given their broadest reasonable scope consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read in light of the specification, as it would have been interpreted by one of ordinary skill in the art at the time of the invention. Id. The Specification states that a coil without a coil holder-as possible with a flat wire-allows the insulating adhesive tape to be tightly attached to the coil without leaving any gaps. Spec. 2, l. 34-3, l. 1; 5, ll. 2-4. The broadest reasonable interpretation of the “wound on the wire . . . without leaving any gaps” limitation in light of the Specification requires only that there is no gap between at least one layer of insulating adhesive tape and the surface of the coil. Horrigan discloses wrapping portions of the coil sequentially, such that the entirety of the coil is eventually covered by the insulating adhesive tape. Horrigan Figs. 1-6, col. 2, l. 40-53; col. 6, ll. 3-12. Appellant argues that one of ordinary skill in the art would not have been motivated to implement Amagasa’s consistent size coil conductors in Horrigan’s coil. Appeal Br. 8. The Examiner reasonably responds that the motivation stated in the Final Office Action is rational and relevant since the Appeal 2021-003782 Application 15/118,943 7 structure of Amagasa’s coil contributes to increasing coil inductance and suppressing surge voltages and high frequency voltages, even though not explicitly attributed by Amagasa to the consistent size. Ans. 4; see also Final Act. In addition, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[A] court can consider the inferences and creative steps a person of ordinary skill in the art would employ.” Id. Appellant argues that, although Amagasa appears to illustrate coils having a consistent size, Amagasa does not provide any written description of coil conductors that confirms that the coils are a consistent size. Appeal Br. 9. This argument is not persuasive. A drawing teaches all that it reasonably discloses and suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“[A] drawing in a utility patent can be cited against the claims of a utility patent application even though the feature shown in the drawing was unintended or unexplained in the specification of the reference patent.”). This is consistent with the Specification of the instant application, which contains no text description of the flat wire of the invention being a “consistent size throughout the winding and the leading out terminal.” See generally, Spec. In the Appeal Brief, Appellant relies on Figures 3 and 4 as support for the “consistent size” limitation. See Appeal Br. 1 (citing Spec. 4, ll. 16-17; 5, ll. 1-5; FIGS. 3-4, wherein the cited text details only that the wire is flat, but not a consistent size throughout the winding and the leading out terminal). The “consistent size” limitation was added by amendment in Appeal 2021-003782 Application 15/118,943 8 Appellant’s December 30, 2019 Response to Final Office Action. On the record before us, Amagasa discloses the “consistent size” limitation. Furthermore, as the Examiner finds in the Answer, Horrigan explicitly teaches a wire having a consistent size throughout the winding and the leading out terminal of the coil. Ans. 5. Figures 1 and 2 of Amagasa support this finding. Appellant’s contention that Horrigan’s Figure 6 shows that distal sections 11 and terminal leads 13 are not as wide as the wire in turns 12 (Appeal Br. 10) does not negate the disclosure in Figures 1 and 2. In addition, the figures taken as a whole suggest that the greater width of the coil shown in Figure 6 is due to the additional wrapping on the coil, as compared to less wrapping on the distal sections and terminal leads. Appellant argues that when considered as a whole, Horrigan would lead a skilled artisan away from modifying the coil to include a consistent size wire. Appeal Br. 10. This argument is unpersuasive at least for the reason discussed immediately supra. Appellant argues that Horrigan does not disclose a coil wrapped with an insulating adhesive tape because claim 1 calls for a single structural element, but Horrigan discloses two separate elements (non-adhesive polyimide tape and FED resin-coating on tape). Appeal Br. 11; Reply Br. 3. Appellant argues that “[t]he FEP resin is not adhesive until it is heated, at which time it separates from the polyimide film.” Reply Br. 3. These arguments are unpersuasive. “Counsel’s argument cannot take the place of evidence lacking in the record.” Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Furthermore, the arguments are contradicted by statements in Horrigan itself. Horrigan describes “the FEP resin-coated polyimide tape” as a single element. Horrigan col. 3, ll. 67-68. Appeal 2021-003782 Application 15/118,943 9 Horrigan also teaches “”[t]he tape used for the first or inner layer can be resin-coated on both sides to facilitate its adhesive bonding to the outer layer of tape and to the contiguous surface of the copper conductor.” Id. col. 4, ll. 39-42. Appellant argues that Horrigan’s coil is not wrapped in an insulating adhesive tape because Horrigan teaches first wrapping a layer 18 and a layer 19 of tape around the distal ends and terminal leads before eventually wrapping additional layers of tape around the coil. Reply Br. 3. Appellant contends that the additional layers are wrapped on top of layer 18 and layer 19, thus are not on the copper that forms the turns of the coil. Id. Therefore, according to Appellant, the additional layers of resin-coated polyimide tape do not form an isolation layer on the surface of the coil. Id. Appellant’s arguments are unpersuasive. The broadest reasonable interpretation of “the coil is wrapped with an insulating adhesive tape . . . without leaving any gaps between the insulating adhesive tape and the surface of the coil” does not require that a single, continuous piece of tape wraps the entirety of the coil, but rather only that the coil is wrapped with tape. The Specification does not suggestion otherwise. Horrigan discloses that the entirety of the surface of the coil, including the turns, distal ends, and terminal leads are wrapped in at least two overlapping layers of FEP resin-coated polyimide tape. See Horrigan col. 3, l. 67-6, l. 12. Appellant argues that there is no motivation to replace Horrigan’s pole piece with Koubek’s flux conducting structure, and the combination would require substantial redesign and change the principle of operation of Horrigan. Appeal Br. 12. The Examiner responds that one of ordinary skill Appeal 2021-003782 Application 15/118,943 10 in the art understands that a magnetic core, especially one with an air gap, is added to a coil in order to provide a flux conducting structure with a relatively constant inductance. Ans. 5. The record favors the Examiner’s position. “One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.” Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, (Fed. Cir. 2005) (citing In re Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992). Wire coils and magnetic cores are well known to even a layperson, and, as previously stated, “a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. When a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability. Moreover, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. A court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. “[A]n implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable.” Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). The motivation need not be the best option, but only a suitable option from Appeal 2021-003782 Application 15/118,943 11 which the prior art did not teach away. Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197-98 (Fed. Cir. 2014). “[T]he proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” Dystar Textilfarben, 464 F.3d at 1368. We find no reason to think such knowledge and skills would have eluded one of ordinary skill in the art. For the reasons above, we sustain the rejection of claim 1 as obvious over Horrigan in view of Koubek and Amagasa. We sustain the rejection of claims 2, 7-11, and 16-18 over these references, and of claims 4 and 13 over the references in addition to Holmes for the same reasons. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Rejection of claims 3 and 12 Dependent claims 3 and 12 each require “wherein a gap between the magnetic core and the coil is filled with an insulating material.” Appeal Br. 19, 20. In relation to this limitation, the Specification states insulation materials such as epoxy resin can also be filled in the gap between the E-I shaped magnetic core and the coil 3 so as to prevent them from colliding with each other, and prevent turns of the coil colliding with each other due to the effect of electromagnetic force, which may further reduce noises. Spec. 6, ll. 11-15. The Examiner finds that Horrigan’s FEP resin-coated polyimide tape meets the “being filled with an insulating material” limitation. Final Act. 6, 9; Ans. 5-6. Appellant argues that the rejection is improper because the Examiner relies on the FEP resin-coated polyimide tape as meeting multiple elements in the claims, i.e., “insulating adhesive tape” and “insulating material.” Appeal 2021-003782 Application 15/118,943 12 Appeal Br. 14. Appellant argues that no disclosure in any of the references leads to an understand that insulating material would fill a gap between a magnetic core and Horrigan’s coil. Reply Br. 8. Where, as here, a claim lists elements separately, “‘the clear implication of the claim language’ is that those elements are ‘distinct components.’” Becton, Dickinson and Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010); see also Engel Indus., Inc. v. Lockformer Co., 96 F.3d 1398, 1404-05 (Fed. Cir. 1996) (concluding that where a claim provides for two separate elements, a “second portion” and a “return portion,” these two elements “logically cannot be one and the same”). We do not sustain the rejection of claims 3 and 12 as obvious over Horrigan in view of Koubek and Amagasa because the Examiner relies on a single prior art element as reading on two separate claim elements. Rejection of claims 5 and 14 Dependent claims 5 and 14 each require “wherein the leading out terminal of the coil is sleeved with a heat-shrinkable tube.” Appeal Br. 19, 21. In relations to this limitation, the Specification states other waterproof and dustproof measures can also be provided to the above reactor so as to further improve its waterproof and dustproof performance. . . . In addition, a leading out terminal of the coil 3 may be coated with a sealing gum or sleeved with a heat-shrinkable tube to prevent the tape near the leading out terminal not being completely sealed. Using either one of the above waterproof and dustproof measures or any combination of them, the reactor can be completely sealed as a whole such that it is impossible for water to enter any location of the reactor and a high level of waterproof can be achieved. Spec. 6, ll. 16-28. Appeal 2021-003782 Application 15/118,943 13 The Examiner finds that Horrigan’s “shrinkable polyimide film” is analogous to the heat-shrinkable tube. Final Act. 6-7, 10; Ans. 6. According to Horrigan, the resin “provides a heat-sealable surface on the non-melting polyimide bases of the tape. The polyimide base itself tends to shrink during the heating step.” Horrigan 6, ll. 48-53. As in the case with claims 3 and 12, Appellant argues that the rejection is improper because the Examiner relies on the FEP resin-coated polyimide tape as meeting multiple elements in the claims, i.e., “insulating adhesive tape” and “heat shrinkable tube.” Appeal Br. 16. Appellant also argues that the FEP resin-coated polyimide film is not a “tube.” Id. We do not sustain the rejection of claims 5 and 14 for the same reasons given in relation to claims 3 and 12. The Examiner identifies a single prior art element (shrinkable polyimide film) for two separate elements in claims 5 and 14. Rejection of claims 6 and 15 Dependent claims 6 and 15 require “wherein the leading out terminal of the coil is coated with a sealing gum.” The Specification’s disclosure relating to “sealing gum” is the same as that given supra for claims 5 and 14. The Examiner finds that the resin in the tape “acts as an adhesive, and it provides a heat-sealable surface on the non-melting polyimide base of the tape.” Final Act. 7, 10. As in the case with claims 3, 5, 12, and 14, Appellant argues that the rejection is improper because the Examiner relies on the FEP resin-coated polyimide tape as meeting multiple elements in the claims, i.e., “insulating adhesive tape” and “coated with a sealing gum.” Appeal Br. 16. Appeal 2021-003782 Application 15/118,943 14 And as in the case of claims 3, 5, 12, and 14, we do not sustain the rejection of claims 6 and 15 as obvious over Horrigan in view of Koubek and Amagasa because the Examiner identifies only a single prior art element as reading on two separate elements of the claims. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-12, 14-18 103 Horrigan, Koubek, Amagasa 1, 2, 7-11, 16-18 3, 5, 6, 12, 14, 15 4, 13 103 Horrigan, Koubek, Amagasa, Holmes 4, 13 Overall Outcome 1, 2, 4, 7- 11, 13, 16- 18 3, 5, 6, 12, 14, 15 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). AFFIRMED IN PART