Ex Parte SUZUKI

Patent Trials and Appeals Board

Jun 27, 2019

14948945 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/948,945 11/23/2015
25944 7590 07/01/2019
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
FIRST NAMED INVENTOR
Y oshiaki SUZUKI
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
168460 7307
EXAMINER
BARRERA, RAMON M
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIAKI SUZUKI1
Appeal2018-000794
Application 14/948,945
Technology Center 2800
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
JASON V. MORGAN, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-4, 6, and 7. App. Br. 4. The Examiner indicates that
claim 5 would be allowable if rewritten in independent form including all
recitations set forth in claim 1, from which claim 5 depends. See Final Act.
1 Appellant is the application and real party in interest, Denso Corporation.
Appeal Br. 1.
Appeal2018-000794
Application 14/948,945
4; Amend. 3 (Sept. 2, 2016). We have jurisdiction under 35 U.S.C. § 6(b).
An oral hearing was held June 6, 2019.2
We AFFIRM.
Summary of disclosure
The Specification discloses an electromagnetic switch that has a
retainer "which extends from a first bobbin of [a] first solenoid at least to [a]
location of an air gap formed in a magnetic circuit of [a] second solenoid."
Abstract.
Representative claim (key limitations emphasized)
1. An electromagnetic switch for use in a starter to start an engine
compnsmg:
a frame which has a given length with a first end and a second end
opposite the first end, the first end defining a bottom of the frame, the
second end having an opening;
a first solenoid which includes a first coil which is wound around a
first bobbin and disposed closer to the first end of the frame, the first
bobbin having a first end facing the first end of the frame and a
second end facing the second end of the frame, the first coil working
to produce a magnetic force to move a pinion of a starter toward a ring
gear of an engine;
a second solenoid which includes a second coil which is wound
around a second bobbin and disposed closer to the second end of the
frame than the first bobbin is, the second bobbin having a first end
facing the first end of the frame and a second end facing the second
end of the frame, the second coil working to produce a magnetic force
to close main contacts installed in a power supply circuit for an
electric motor which serves to rotate the pinion;
first and second lead wires extending from the first coil outside the
second end of the first bobbin, at least the first lead wire passing
2 All references herein to the "Transcript" are to the transcript for this
hearing, a copy of which is attached.
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Application 14/948,945
radially inside an inner periphery of the second coil and extending
toward the second end of the frame; and
a lead-wire retainer which extends from the second end of the first
bobbin in an axial direction of the first bobbin at least to a location of
an air gap formed radially inside the second solenoid in a magnetic
circuit of the second solenoid to retain the first lead wire.
Rejection
The Examiner rejects claims 1-4, 6, and 7 under 35 U.S.C.
§ 102(a)(l) as being anticipated by Kaneda et al. (JP 5578257 Bl; issued
Aug. 27, 2014) ("Kaneda"). Final Act. 2-3.
ANALYSIS
Kaneda discloses electromagnetic switch equipment, exemplified by a
cross-sectional view illustrated in Kaneda's Figure 5, which is reproduced
below.
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Application 14/948,945
2:0d
15
31 28
/ I , I
·l i !\i ; ,. ,,...._.
,, I
' I
17a
Kaneda's Figure 5 illustrates first solenoid 12, comprising first bobbin
20, and second solenoid 9, which has an air gap formed radially within. See
Kaneda Abstract, ,i,i 14, 39; Transcript 9 (Appellant acknowledges that in
Kaneda there "has to be an air gap in the second solenoid"). Interference
part 20c is formed at one end of first bobbin 20 and serves as a lead-wire
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Application 14/948,945
retainer. See Kaneda ,i 31; Transcript 5 (Appellant acknowledges "20c is a
feature in the reference that would retain the lead wire"). Projection part
20d projects from interference part 20c at least to the air gap formed radially
within second solenoid 9. See Kaneda ,i 26; Transcript 5 (Appellant declines
"to separately argue that 20d doesn't necessarily go all the way to an air
gap"). Interference part 20c is "integrally formed as the projection part
20d." Kaneda ,i 45; Transcript 4 (Appellant acknowledges without disputing
the Examiner's finding that projection part 20d is an extension of
interference part 20c ).
In rejecting claim 1 as being anticipated, the Examiner finds that
because Kaneda' s projection part 20d, which is an extension of interference
part 20c (i.e., a lead-wire retainer), projects to the air gap formed radially
within second solenoid 9, Kaneda discloses "a lead-wire retainer which
extends from the second end of the first bobbin in an axial direction of the
first bobbin at least to a location of an air gap formed radially inside the
second solenoid in a magnetic circuit of the second solenoid to retain the
first lead wire," as recited in claim 1. Final Act. 3-4 ( citing, e.g., Kaneda
iJiJ 26, 31, Fig. 5).
Appellant contends the Examiner erred because "lead projection part
20d in Kaneda is not structured or configured as a lead-wire retainer (i.e., to
retain the lead wire l 7a)." Appeal Br. 5; see also Reply Br. 2 ("l 7a is not
held within (or retained by) projection portion 20d"). Appellant's argument
is unpersuasive, however, because claim 1 does not require that the lead-
wire retainer retain the lead wire all the way through to a location of the
second solenoid's air gap. Rather, the lead-wire retainer merely must:
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Application 14/948,945
(1) retain the wire at some point and (2) extend in some manner to the
second solenoid's air gap.
Appellant acknowledges "that the combination of 20c plus 20d would
reach the air gap," but argues "this was not something that was discussed in
the rejection." Transcript 10. The Examiner, however, explicitly notes that
"lead projection part 20d is the extension of the lead interference part 20c."
Final Act. 4 (emphasis added); see also Appeal Br. 5 (acknowledging the
Examiner's finding). Thus, the Examiner's findings show that Kaneda
discloses a part, formed by the combination of interference part 20c and
projection part 20d, that retains leading wire 17a (i.e., through interference
part 20c) and extends to the second solenoid's air gap (i.e., through
projection part 20d). Therefore, we agree with the Examiner that Kaneda
discloses "a lead-wire retainer which extends from the second end of the
first bobbin in an axial direction of the first bobbin at least to a location of an
air gap formed radially inside the second solenoid in a magnetic circuit of
the second solenoid to retain the first lead wire," as recited in claim 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 102(a)(l)
rejection of claim 1, and claims 2-4, 6, and 7, which Appellant does not
argue separately. Appeal Br. 10.
DECISION
We affirm the Examiner's decision rejecting claims 1-4, 6, and 7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
6
RECORD OF ORAL HEARING
U.S. PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHIAKI SUZUKI
Appeal2018-000794
Application 14/948,945
Technology Center 2800
Oral Hearing Held: June 6, 2019
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
JASON V. MORGAN, Administrative Patent Judges.
APPEARANCES:
ON BEHALF OF THE APPELLANT:
JOEL GOTKIN, ESQ.
of: Oliff PLC
277 South Washington Street
Alexandria, Virginia 22314
(561) 310-9128
jgotkin@oliff.com
The above-entitled matter came on for hearing on Thursday, June 6,
2019, commencing at 10:15 a.m. at the U.S. Patent and Trademark Office,
600 Dulany Street, Alexandria, Virginia.
Appeal2018-000794
Application 14/948,945
P-R-0-C-E-E-D-I-N-G-S
10: 15 a.m.
1
2
3 JUDGE HOMERE: Good morning, Counselor. You have 20
4 minutes to present your arguments.
5 MR. GOTKIN: Thank you very much. Thank you for your time
6 this morning and may it please the Court. My name is Joel Gotkin. I am an
7 attorney at Oliff PLC, representing Denso Corporation, who has appealed
8 this application.
9 This one is a little bit different, maybe. The rejection here is an
10 anticipation rejection and it's over prior art that Applicant has understood
11 and essentially described in some detail in the background of the invention.
12 In speaking with them, they have felt that the examiner in this case
13 had not fully appreciated the distinction that was attempted to be made by
14 the first amendment and by the claims as they presently stand. Despite the
15 fact that there is some allowable features that were found in these claims and
16 some of the dependent claims, we believe that Claim 1 does have enough of
17 a distinction in there.
18 And if you wouldn't mind, just bear with me for a minute. I think it
19 might be useful to discuss based on our own specifications by the
20 description of Kaneda and basically where the improvement came from and
21 what it is.
22 So Denso does a lot of work in engines, and particularly in starters.
23 This relates particularly to a tandem solenoid application and basically of
24 two solenoids that will independently control and do things with the engine.
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Application 14/948,945
1 What is required in these solenoid applications, the tandem solenoids, is lead
2 wires to move through the engine and be connected to the appropriate points.
3 What they had found, basically, in Kaneda, is there is a structure that
4 is useful to minimize an air gap between the second of the coils, referring to
5 the second solenoid, and the frame, which is good, but there come a number
6 of issues with the arrangement of Kaneda.
7 Basically, the arrangement of Kaneda has a first coil lead wire that
8 has a portion of it that extends from the end of the lead wire outlet that it is
9 of an increased length. So basically, there's an unretained portion that
1 O extends too far out. What this is going to do is it makes it more difficult for
11 an operator to assemble the starter and also it causes some problems with
12 magnetic flux that can leak outside of an air gap.
13 What Applicant has done, and it's somewhat straightforward in the
14 figures, they've basically added what they call a lead wire retainer, which in
15 our Figure 1 is Retainer 39. What that does, it extends from, as we claim, the
16 second end of the first bobbin to at least the air gap Gin our figures, which
17 is inside the solenoid. That is to retain the first lead wire, which our first lead
18 wire is 14a.
19 The examiner has analyzed our features and a number of them we
20 understand his analysis through the majority of the claim. But Applicant or
21 Appellant strenuously disagrees with the analysis where the projection part
22 of the Kaneda disclosure would be considered the lead wire retainer.
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Application 14/948,945
1 Basically, what it comes down to is 20d, which the examiner has
2 commentated, is an extension of 20c, extends outward. Presumably the
3 examiner has used this to reach our limitation that it would go from the
4 second end of the first bobbin to an air gap, the projection 20d extending
5 much deeper in Kaneda.
6 But 20d has no basis to retain the first lead wire. It can't, and it
7 doesn't. Actually, Kaneda discloses in paragraph 31 what the projection
8 does. It's basically there to facilitate alignment of the two bobbins. It extends
9 into an engagement part of one the bobbins, and that's how it works.
10 We had gone back and forth, and eventually amended the claims to
11 be a little bit more carefully clarifying that the lead wire retainer is going to
12 extend all the way to the air gap and it retains the first lead wire. What we're
13 saying here is that the lead wire is retained by the lead wire retainer all the
14 way through and in this case, we believe that the examiner has failed to
15 demonstrate an anticipation, because 20d cannot and does not correspond to
16 a lead wire retainer.
17 But here, if there any questions I can continue to discuss.
18 JUDGE MORGAN: I keep hearing the discussion about the air
19 gap. You see in Figure 1 of the specification the lead wire retainer extends
20 past air gap G, that's what --
21 (Simultaneous speaking.)
22 JUDGE MORGAN: The second portion.
4
1
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Application 14/948,945
MR. GOTKIN: Yes, yes.
JUDGE MORGAN: Is one of your arguments that in Kaneda it
3 does not go past the air gap?
4 MR. GOTKIN: In the appeal brief we discuss the whole thing in its
5 entirety. It's a lead wire retainer in its entirety that we do not believe is
6 reached. Frankly, what it comes down to, we had stated on the record so I'm
7 not going to hide the point, that 20c is a feature in the reference that would
8 retain the lead wire. However, 20d does not. We do not, we're not intending
9 to separately argue that 20d doesn't necessarily go all the way to an air gap.
10
11
12
13
JUDGE MORGAN: I wanted to make sure that that doesn't --
(Simultaneous speaking.)
MR. GOTKIN: Sure.
JUDGE MORGAN: Figure 2a in your specification shows that a
14 cross-section of the wire retainer, lead wire retainer in, looks like it's a semi-
15 circular shape that's right at the bottom of that groove, 38, and looking at the
16 cross-sections in Kaneda Figure 6, it shows a cross-section of 20d. Those are
17 semi-circular pieces that are at the bottom of the groove 20b. Why isn't it,
18 they're both semi-circular projections. Why isn't Kaneda having the same
19 effect?
20 MR. GOTKIN: Our understanding of Kaneda is those grooves that
21 do exist are part of 20c but not part of 20d. To us, it appears that, or at least
22 the description that Applicant has provided in our background, that what
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Application 14/948,945
1 would amount to 20d is really a projection part and the 20c portion of it,
2 which includes, perhaps, these grooves, which I think was brought up in the
3 examiner's answer, does exist but the 20d component that would need to be
4 used to extend perhaps to an air gap, which it might arguably do, does not
5 actually hold the lead wire.
6 I guess, again, it comes down to the fact that the examiner has made
7 the argument that 20d in its entirety and alone corresponds to a lead wire
8 retainer. He did not suggest, for example, that 20c plus 20d would
9 correspond to a lead wire retainer, which in this case it's a hypothetical
10 rejection but I would dispense with that by saying that our invention has the
11 component where the lead wire is going to be entirely retained by a
12 component all the way to the air gap, and that's kind of the fundamental
13 difference with the invention.
14 The part that is required to breech such a feature in Kaneda is not
15 actually retaining the lead wire.
16 JUDGE MORGAN: Kaneda doesn't, this was the way, label an air
17 gap --
18 MR. GOTKIN: Sure.
19 JUDGE MORGAN: Is that, would the air gap in Kanedajust be
20 that little --
21 MR. GOTKIN: In Figure 5?
6
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Appeal2018-000794
Application 14/948,945
JUDGE MORGAN: Yeah, looking at Figure 5 there's a portion,
2 there's like a portion -- 27, and there's an area right below that that doesn't
3 have any hatches -- wouldn't that be used to open up that air gap in the
4 invention?
5 MR. GOTKIN: I think that's consistent with my understanding.
6 One of the ideas of Kaneda is they are actually trying to minimize the air gap
7 so maybe that's one of the reasons that it's difficult and it's perhaps not
8 shown, because they're trying to show it as smaller. However, there has to be
9 some sort of solenoid, and that, I believe, is consistent.
10 JUDGE MORGAN: So the gauge in 22 might be impacted in the
11 retainer? Or actually, arguing that 22 is a retainer?
12 MR. GOTKIN: We did not separately discuss this in the appeal.
13 However, in the response, we did state on the record that 20c does retain the
14 wire. And the Applicant's invention was developed based on that point. We
15 have extended, so to speak, the lead wire all the way through whereas 20c,
16 it's only in this particular portion. It does not reach all the way through.
17 JUDGE MORGAN: Doesn't Claimant says that the lead wire
18 retainer extends from the second end of the first bobbin, section of the first
19 bobbin to at least the location of an air gap formed. So it doesn't specifically
20 say that it goes all the way through. It just has to get to that air gap. Correct?
21 MR. GOTKIN: We need the lead wire retainer to get to the air gap,
22 yes. It doesn't, I do agree based upon a reasonable interpretation of the claim
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Appeal2018-000794
Application 14/948,945
1 language, that the lead wire retainer would not extend, doesn't necessarily
2 need to extend all the way through. It does in our figure, so I appreciate in
3 the claims that the lead wire retainer would only need to extend to the air
4 gap. But I do think a reasonable interpretation of extending to the air gap
5 means it actually has to at least get there.
6 JUDGE MORGAN: Figure 5, though, ofKaneda shows that it,
7 whether it's 20b or 20c, that that extends, both of them extend past the air
8 gap.
9 MR. GOTKIN: Again, we think that 20c does not reach from -- So
10 it has to extend one from the second end of the first bobbin, that's a starting
11 point, right, all the way to the location of the air gap that regularly inside the
12 second solenoid, so I guess, yeah, we submit that the 20c does not reach all
13 the way to the air gap in this case, in that actual direction.
14 JUDGE MORGAN: We need to clarify in what. Is it not that
15 portion right below 27, then that would be the air gap?
16
17
MR. GOTKIN: Let me try and make sure that I, yeah.
JUDGE MORGAN: I'm looking at the portion below line C, that
18 blank portion.
19 MR. GOTKIN: Okay, so where 27 is pointing to, then there's a
20 space there?
21 JUDGE MORGAN: Yes.
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Application 14/948,945
1 MR. GOTKIN: The second solenoid that he had, yeah, clarify that
2 too, that's some type of distinction. He did not specifically say where he's
3 considering the second air gap, but if it's the second solenoid, --
4 JUDGE MORGAN: There has to be an air gap in the second
5 solenoid.
6 MR. GOTKIN: Right.
7 JUDGE MORGAN: So there's still, all right, then you have --
8 MR. GOTKIN: Where 20d is extending to, for the sake of
9 argument, we believe it might get there.
10 JUDGE MORGAN: But 22 doesn't.
11 MR. GOTKIN: But 22 doesn't.
12 JUDGE MORGAN: I see. It would have to be that air gap formed
13 above line C.
14 MR. GOTKIN: Yeah, right. Exactly
15 (Simultaneous speaking.)
16 MR. GOTKIN: Touch scrims. But yeah, you're right. So it's 20d
17 will extend to it, for the sake of argument. We do not think that 20d has any
18 capability to hold the lead wire, but it, just for the sake of efficiency, 20d,
19 we're not separately arguing that they can't get there. We're arguing that
20 what he's saying is the lead wire retainer, 20d, is actually not retaining.
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Application 14/948,945
1 JUDGE HOMERE: Counselor, based on the evidence here before
2 us in this discussion, would you agree that the combination of 20d and 20c
3 would essentially reach the air gap?
4 MR. GOTKIN: I do appreciate the question, and I definitely had to
5 consider this as I was reviewing this application. I do believe that the
6 combination of 20c plus 20d would reach the air gap. However, I must
7 caution that this was not something that was discussed in the rejection, and
8 the rejection we relied entirely on 20d.
9 20d, and this is the crux of our point, 20d cannot and will not hold
10 the actual lead wire.
11 JUDGE HOMERE: By itself.
12 MR. GOTKIN: By itself. Correct.
13
14
JUDGE HOMERE: Fair enough.
JUDGE MORGAN: The examiner had made a point about the wire
15 going through this hole 20e.
16 MR. GOTKIN: Yes.
17 JUDGE MORGAN: Could you just clarify where that would be on
18 Figure 5? It's not --
19 MR. GOTKIN: So, let me pull this up. This is from the examiner's
20 answer.
21 JUDGE MORGAN: Yes.
10
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Application 14/948,945
MR. GOTKIN: I did notice that he brought some comments in the
2 examiner's answer that were not necessarily used in the main rejection. Are
3 we talking about 32e?
4 JUDGE MORGAN: Yes. The examiner points out that the, well,
5 the lead wire, at least the lead wire on the right side, goes to that hole 32e,
6 and that's shown in Figures 8 and 9, I think it shows, in Figure 10 it shows a
7 wire instead of the --
8 MR. GOTKIN: Right. Again, I, it's hard for me to superimpose it
9 on Figure 4. I frankly am not entirely sure. That said, it is not aiding the
10 protection portion in retaining the lead wire. So 32e is, I think, a part of one
11 of the solenoids. It's still, I reject it. I don't mean to dismiss the question, but
12 I frankly don't know exactly where it would be placed on Figure 5, but the
13 crux of it, again, is that it is not going to retain the lead wire. It is not going
14 to enable the protection portion to retain the lead wire all the way through to
15 the air gap.
16 JUDGE MORGAN: And so your position is that the only that
17 projection 20d is doing is engaging with 32f.
18 MR. GOTKIN: Correct. And we had made some comments about,
19 in our response to the initial off-section, again, Kaneda's an improvement
20 that they were, or an art that they were fully aware of so they were fairly
21 well versed in the, in why they make the improvement. And what Kaneda's
22 projection portion does is it attempts to facilitate the alignment between the
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Application 14/948,945
1 bobbins, and that's how it uses 32f, or that's why it's using 32f to do it as
2 opposed to what are lead wire retainers doing, which is actually holding the
3 lead wire all the way through. That's going to avoid this magnetic flux that
4 gives it, that can happen and things like that.
5 JUDGE HOMERE: Anything else?
6 MR. GOTKIN: No, I have no further comments. I do appreciate
7 your time.
8 JUDGE HOMERE: Anything else from the bench?
9 MR. GOTKIN: Thank you very much.
10 (Whereupon, the above-entitled matter went off the record at 10:32
11 a.m.)
12