Ex Parte Lyons et al

Patent Trial and Appeal BoardApr 10, 2013

11452793 (P.T.A.B. Apr. 10, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/452,793 06/13/2006 David Lyons TES078 5604 87872 7590 04/11/2013 Tesla Motors, Inc. c/o Patent Law Office of David G. Beck P.O. Box 1146 Mill Valley, CA 94942 EXAMINER PHAN, THIEM D ART UNIT PAPER NUMBER 3729 MAIL DATE DELIVERY MODE 04/11/2013 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 DAVID LYONS, JEFFREY B. STRAUBEL, ERIK SHAHOIAN and RUDY GARRIGA ____________ Appeal 2011-002178 Application 11/452,793 Technology Center 3700 ____________ Before EDWARD A. BROWN, LYNNE H. BROWNE and RICHARD E. RICE, Administrative Patent Judges. RICE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002178 Application 11/452,793 2 STATEMENT OF THE CASE David Lyons, et al. (Appellants) originally appealed under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-9. See Not. of App., filed Mar. 2, 2010 (stating that Appellants “hereby appeal[] to the [Board] from the last decision of the examiner.”) In the Appeal Brief, however, Appellants explicitly state that “[t]he 35 U.S.C. [§] 103 rejection of the independent claim 1 is being appealed.” App. Br. 2. Appellants do not include claims 2-9 in the grounds of rejection to be reviewed on appeal and do not present arguments for patentability of claims 2-9. App. Br. 4-8. As such, we understand Appellants to have withdrawn the appeal as to claims 2- 9. We suggest that the Examiner cancel these claims upon return of jurisdiction of this application to the Examiner. See Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter “is related to electric motors and more specifically to rotor construction in an electric motor.” Spec. 1, ll. 13-15. Claim 1 is reproduced below, with italics for emphasis: 1. A method of building at least a component of a rotor, comprising: stacking a plurality of discs, each disc comprising a plurality of teeth, to produce a stack of discs; adding, between a plurality of the teeth of each of the discs, a plurality of bars, at least some of the plurality of the bars having a length longer than the height of the stack of discs; Appeal 2011-002178 Application 11/452,793 3 radially inserting, between each of at least some of the outer edges of the plurality of bars, a slug, wherein at least one of the slugs and the bars is coated with a braising material; applying a removable radial force to the slugs towards a center so as to compress faces of the slugs against faces of the bars; heating the slugs, plurality of bars and stack of discs to braise the slugs to the plurality of bars; and allowing the heated slugs, plurality of bars and stack of discs to cool. REFERENCE RELIED ON BY THE EXAMINER Estrada US 3,924,149 Dec. 2, 1975 THE REJECTION The Examiner rejected claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Appellants’ Admitted Prior Art (AAPA) and Estrada. ANALYSIS The Examiner found that AAPA disclosed all of the steps and limitations of claim 1 except “applying a removable radial force to the slugs towards a center so as to compress faces of the slugs against faces of the bars.” Ans. 3-4 (citing Spec. 1, ll. 17-22 and 2, ll. 4-8 and 11-18). The Examiner further found that Estrada disclosed a tieless bracing or take-up means for applying a removable radial force to the winding end turns of a dynamoelectric machine, and concluded that it would have been obvious to modify AAPA’s method by using Estrada’s tieless bracing “to apply a removable radial force to the slugs towards a center so as to compress faces of the slugs against faces of the bars without creating undesirable mechanical stress in the supporting structure of bars and slugs.” Ans. 4 (citing Estrada, col. 2, ll. 32-34 and figs 4-5). Appeal 2011-002178 Application 11/452,793 4 Appellants contend that AAPA does not disclose radially inserting the slugs (App. Br. 4-5), but only “inserting slugs in the spaces between the ends of the bars.” Id. at 5 (quoting Spec. 2, ll. 13-14). Appellants further contend that “[t]he slugs can be inserted axially, so there is no inherency argument possible.” App. Br. 7. In response to Appellants’ argument, the Examiner contends that, even if the slugs are first inserted axially between the outer edges of the bars, the slugs nevertheless will ultimately be radially inserted during the step of applying a removable radial force to the slugs towards a center so as to compress faces of the slugs against faces of the bars. The Examiner states that first the slugs are axially or radially inserted in the spaces radially located from the motor center [and] then the tieless bracing is squeezing slowly, creating a tangential and radial force against the slugs, which ultimately forms a radial force against the slugs due to the shrinking of the tieless bracing’s circumference and finally the slugs are radially pressed and inserted to optimized/tightly fit status. Therefore, there is 100% probability or ultimate reason that the slugs must be subjected to radially inserting force, as claimed. Ans. 7 (emphasis added). We disagree with the Examiner’s implicit claim construction that the “radially inserting” step is redundant of the “applying a removable radial force” step. Under well-established principles of claim construction, the step of “applying a removable radial force” cannot be construed so as to render the “radially inserting” step merely superfluous.1 1 See Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006) (“claims are interpreted with an eye toward giving effect to all terms in the claim,” so that physical structures and characteristics specifically described in a claim are not rendered “merely superfluous”). Appeal 2011-002178 Application 11/452,793 5 Only if the “radially inserting” step refers to the initial radial insertion of the slugs between the outer edges of the bars instead of to any radial insertion that may occur as the result of subsequently applying a removable radial force to the slugs, would each of the claimed steps have a distinct meaning. This claim construction is consistent with the Specification. See, e.g., Spec. 11, ll. 12-15; fig. 1 flowchart (steps 114 and 118).2 As such, the Examiner’s rejection of claim 1 is erroneous for failing to establish that AAPA and Estrada teach the sequential steps of first radially inserting a slug between each of at least some of the outer edges of the plurality of bars and then applying a removable radial force to the slugs towards a center so as to compress faces of the slugs against faces of the bars.3 Accordingly, we do not sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as being unpatentable over AAPA and Estrada. 2 In determining the meaning of a claim term, “the specification ‘is always highly relevant to the claim construction analysis.’” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)). 3 See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369-70 (Fed. Cir. 2003) (citing Loral Fairchild Corp. v. Sony Electronics Corp., 181 F.3d 1313, 1321 (Fed. Cir. 1999) (holding that the claim language itself indicated that the steps had to be performed in their written order because the second step required the alignment of a second structure with a first structure formed by the prior step); also citing Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d 1368, 1375-76 (Fed. Cir. 1998) (holding that the steps of a method claim had to be performed in their written order because each subsequent step referenced something logically indicating the prior step had been performed)). Appeal 2011-002178 Application 11/452,793 6 DECISION We reverse the rejection of claim 1. REVERSED hh