Ex Parte Martin

Patent Trial and Appeal BoardMay 24, 2013

11701675 (P.T.A.B. May. 24, 2013)

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. 11/701,675 02/01/2007 Sven Martin 11150/111 3536 26646 7590 05/24/2013 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER KENERLY, TERRANCE L ART UNIT PAPER NUMBER 2834 MAIL DATE DELIVERY MODE 05/24/2013 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 SVEN MARTIN ____________________ Appeal 2010-010838 Application 11/701,6751 Technology Center 2800 ____________________ Before THU A. DANG, JAMES R. HUGHES, and GREGORY J. GONSALVES, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL 1 Application filed February 81, 2007 claiming benefit of German Patent Application No. 10 2006 004 537.8 filed February 1, 2006. The real party in interest is Volkswagen, AG. (App. Br. 2.) Appeal 2010-010838 Application 11/701,675 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1-5. (App. Br. 2.)2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellant’s Invention The invention at issue on appeal concerns an electrical machine (generator) including permanent magnets made up of individual magnet segments with a gap between adjacent segments and an electrically insulative layer arranged in the gaps. (Spec., 2:27-3:11; Abstract.) Representative Claim Independent claim 1, reproduced below with disputed limitations italicized, further illustrates the invention: 1. An electrical machine, comprising: at least one of a permanently excited (a) rotor and (b) stator; and a plurality of permanent magnets arranged along a circumference of the at least one of (a) the rotor and (b) the stator adapted to generate a magnetic field to operate the electrical machine being able to be generated; wherein each permanent magnet is formed from a plurality of individual magnet segments having a same polarization, at least one gap provided between adjacent magnet segments, at least one electrically insulative layer arranged in each gap. 2 We refer to Appellant’s Specification (“Spec.”); Appeal Brief (“App. Br.”) filed December 22, 2009; and Reply Brief (“Reply Br.”) filed May 25, 2010. We also refer to the Examiner’s Answer (“Ans.”) mailed March 25, 2010. Appeal 2010-010838 Application 11/701,675 3 Rejections on Appeal 1. The Examiner rejects 1, 2, and 4 under 35 U.S.C. § 103(a) as being unpatentable over US Patent No. 6,509,664 B2, issued Jan. 21, 2003 (“Shah”) and US Pat. App. Pub. No 2002/0121827 A1, published Sep. 5, 2002 (“Kaneko”). 2. The Examiner rejects 3 and 5 under 35 U.S.C. § 103(a) as being unpatentable over Shah, Kaneko, and US Patent No. 5,675,203, issued Oct. 7, 1997 (“Schulze”). ISSUE Based on our review of the administrative record, Appellant’s contentions, and the Examiner’s findings and conclusions, the pivotal issue before us follows: Does the Examiner err in concluding that the combination of Shah and Kaneko collectively would have taught or suggested “each permanent magnet is formed from a plurality of individual magnet segments having a same polarization, at least one gap provided between adjacent magnet segments, at least one electrically insulative layer arranged in each gap” (claim 1) within the meaning of independent claim 1? FINDINGS OF FACT We adopt the Examiner’s findings in the Answer and the Final Office Action mailed July 22, 2009, as our own. Appeal 2010-010838 Application 11/701,675 4 ANALYSIS Based on Appellant’s arguments (App. Br. 3-5), we select independent claim 1 as representative of Appellant’s arguments and groupings with respect to claims 1-5. 37 C.F.R. § 41.37(c)(1)(iv). Claims 1, 2, and 4 Appellant contends that Shah and Kaneko do not teach or suggest the emphasized (supra) features of claim 1, in particular, a gap between adjacent magnet segments with an electrically insulative layer arranged in each gap. (App. Br. 3-5; Reply Br. 1-3.) Specifically, Appellant contends that Kaneko does not disclose “the feature of at least one electrically insulative layer is arranged in each gap.” (App. Br. 3, emphasis omitted.) Appellant further contends that “one of ordinary skill in the art would not combine” Kaneko and Shah “because the retainer segments (44) of [Shah] are arranged between adjacent permanent magnets . . . [and] these materials are clearly electrically conductive as opposed to electrically insulative. (App. Br. 4.) The Examiner sets forth a detailed explanation of the obviousness rejection in the Examiner’s Answer with respect to each of the claims (Ans. 3-11) and, in particular, the rejection of claim 1 (Ans. 3-4, 8-11). Specifically, the Examiner provides a detailed explanation with respect to Kaneko’s magnets (element 1) that have individual segments (1A-1E) with an electrically insulating adhesive between the segments. (Ans. 3-4, 8-10 (citing Kaneko, ¶¶ [0020]-[0021]; Figs. 1a, 1c).) Based on these findings, the Examiner concludes that Kaneko (and Shah) would have taught the disputed feature. (Ans. 3-4, 8-11.) We adopt these findings and this reasoning as our own. Appeal 2010-010838 Application 11/701,675 5 Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s finding that Kaneko describes magnets that have individual segments with an electrically insulating adhesive between the segments and the Examiner’s ultimate conclusion that the combination of Shah and Kaneko would have taught or suggested the disputed features of claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1 for the reasons set forth in the Answer, which we incorporate herein by reference. (Ans. 3-4, 8-10.) We limit our additional analysis to the following points of emphasis. We find (as did the Examiner) that Kaneko explicitly describes permanent magnets (1) “divided by substantially flat faces into a plurality of sections 1A-1E, the sections electrically insulated from each other, in order to suppress the flow of eddy current resulting from high frequency components in the alternating magnetic field. (Kaneko, ¶ [0020] (emphasis added).) Further, as explained by the Examiner, the retainer segments of Shah do not affect the magnet segments and are not incongruous with magnet segments with an insulating material there between. (Ans. 10-11.) Section 103 forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 402 (2007). This line of reasoning is applicable in the present case. The Examiner has demonstrated through Kaneko that it was well known in the art at the time of Appellant’s Appeal 2010-010838 Application 11/701,675 6 invention to utilize a magnet made up of segments with an insulating adhesive between each segment. (Kaneko, ¶ [0020].) Therefore, we find that the differences between the prior art and Appellant’s invention – utilizing conductive (as opposed to insulative) retainers – were well within the realm of one skilled in the art at the time of the invention. Thus, we find Appellant’s arguments unpersuasive of error in the Examiner’s rejection of representative claim 1. Accordingly, we affirm the Examiner’s obviousness rejection of representative independent claim 1, as well as dependent claims 2 and 4 not separately argued with particularity (App. Br. 5). Claims 3 and 5 Appellant does not separately argue the limitations of claims 3 and 5 with particularity. (App. Br. 5.) Accordingly, we affirm the Examiner’s obviousness rejection of claims 3 and 5 for the same reasons set forth with respect to claim 1. CONCLUSION OF LAW Appellants have not shown that the Examiner erred in rejecting claims 1-5 under 35 U.S.C. § 103(a). DECISION We affirm the Examiner’s rejections of claims 1-5 under 35 U.S.C. § 103(a). 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). AFFIRMED Vsh