FANUC CORPORATION

Patent Trials and Appeals BoardAug 26, 2020

15606741 - (D) (P.T.A.B. Aug. 26, 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. 15/606,741 05/26/2017 Akira Nishifukumoto 48623.199.2 2166 22859 7590 08/26/2020 FREDRIKSON & BYRON, P.A. INTELLECTUAL PROPERTY GROUP 200 SOUTH SIXTH STREET, SUITE 4000 MINNEAPOLIS, MN 55402 EXAMINER MATES, ROBERT E ART UNIT PAPER NUMBER 2832 NOTIFICATION DATE DELIVERY MODE 08/26/2020 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): IP@FREDLAW.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AKIRA NISHIFUKUMOTO and AKIRA YAMAGUCHI Appeal 2019-006411 Application 15/606,741 Technology Center 2800 Before TERRY J. OWENS, CATHERINE Q. TIMM, and MERRELL C. CASHION, JR., Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–5. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Fanuc Corporation (Appeal Br. 3). Appeal 2019-006411 Application 15/606,741 2 CLAIMED SUBJECT MATTER The claims are directed to ELECTRIC MOTOR WITH FAN MOTOR. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electric motor comprising: a motor main body, a fan motor for cooling said motor main body, and a casing which is attached to said motor main body to hold said fan motor, wherein said fan motor has a plurality of engagement parts comprising female threads, and both of said motor main body and said casing are each provided with a corresponding plurality of engagement parts (1E, 3E) comprising through holes, wherein the plurality of engagement parts on the fan motor align with either the plurality of engagement parts on the motor main body or casing so that a plurality of bolts can be received in either the plurality of engagement parts of the motor main body or casing and engage the plurality of engagement parts of the fan motor to fasten said fan motor to either the main motor body or casing. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Santner US 4,352,037 Sept. 28, 1982 Lykes US 5,076,762 Dec. 31, 1991 Nakamura US 5,780,946 July 14, 1998 Lin US 2007/0133169 A1 June 14, 2007 Picton US 2009/0263259 A1 Oct. 22, 2009 Büttner US 2013/0175892 A1 July 11, 2013 Kobayashi JP 53-113308 U Sept. 9, 1978 Appeal 2019-006411 Application 15/606,741 3 REJECTIONS The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1– 3 over Kobayashi in view of Nakamura, Picton, and Lykes, claim 4 over Kobayashi in view of Nakamura, Picton, Lykes, Büttner, and Santner, and claim 5 over Kobayashi in view of Nakamura, Picton, Lykes, Büttner, Santner, and Lin. OPINION We need to address only claim 1, which is the sole independent claim. That claim requires that a plurality of engagement parts on a fan motor align with either a plurality of engagement parts on a motor main body or casing so that a plurality of bolts can be received in either the plurality of engagement parts of the motor main body or casing and engage the plurality of engagement parts of the fan motor to fasten the fan motor to either the main motor body or the casing. Kobayashi discloses a prior art main dynamoelectric machine (1) having mounted to a bracket (9) on its frame (3) a flat dynamoelectric machine with a fan (11) for cooling the main dynamoelectric machine (1) (Fig. 1(A); p. 3). Kobayashi teaches that use of flat dynamoelectric machines with a fan (11) having different shapes and dimensions requires diverse types of brackets (9) having different attachment seats (10) corresponding to the flat dynamoelectric machine with a fan (11)’s attachment holes, which is extremely uneconomical (p. 4). Kobayashi solves that problem by machining, in the main dynamoelectric machine (1)’s cover (14), holes corresponding to the flat dynamoelectric machine with a fan (11)’s holes, using fixing bolts (17) in the holes to attach the flat dynamoelectric machine Appeal 2019-006411 Application 15/606,741 4 with a fan (11) to the cover (14), and mounting the cover (14) to the bracket (9) (Fig. 2; p. 5). Establishing a prima facie case of obviousness of an invention comprising a combination of known elements requires “an apparent reason to combine the known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner finds that Kobayashi’s “fan motor 11 is mounted to the bracket 9 in FIG. 1A and alternatively to the cover 14 in FIG. 2” (Ans. 5) and “the fan motor 11 can be mounted to either the cover or the bracket” (Ans. 6). That is so because Kobayashi’s invention in Figure 2, wherein the flat dynamoelectric machine (11) is mounted to the cover (14), is an alternative to the prior art in Figure 1(A), wherein the flat dynamoelectric machine (11) is mounted to the bracket (9) (p. 5). The Examiner finds that Kobayashi’s “engagement parts in the bracket 9 remain while engagement parts are machined into the cover 14” (Ans. 6). Kobayashi’s Figure 2 which shows Kobayashi’s invention does not include the bracket (9) attachment seat (10) in prior art Figure 1(A). Kobayashi’s Figure 2 shows the flat dynamoelectric machine with a fan (11) as being attachable only to the cover (14). The Examiner concludes that Kobayashi would have suggested switching the flat dynamoelectric machine (11) between the bracket (9) and the cover (14) without changing the bracket (9) because “[t]he engagement parts on the bracket 9 and the cover 14 are both aligned with the holes in the ribs 13 of the fan motor 11 to receive the same bolts 17” (Ans. 6). Appeal 2019-006411 Application 15/606,741 5 The Examiner has not established that Kobayashi would have suggested, to one of ordinary skill in the art, cover (14) holes aligned with bracket (9) attachment seat (10) holes. Kobayashi discloses cover (14) holes as an alternative to bracket (9) attachment seat (10) holes (Figs. 1(A), 2; p. 5). Thus, the Examiner has not set forth an apparent reason why one of ordinary skill in the art would have combined Kobayashi’s invention and prior art as proposed by the Examiner to arrive at the Appellant’s claimed electric motor. Accordingly we reverse the rejections.2 CONCLUSION The Examiner’s rejections are reversed. 2 The Examiner does not rely upon the applied references other than Kobayashi to remedy the above-discussed deficiency in Kobayashi (Final Act. 4–8). Appeal 2019-006411 Application 15/606,741 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3 103 Kobayashi, Nakamura, Picton, Lykes 1–3 4 103 Kobayashi, Nakamura, Picton, Lykes, Büttner, Santner 4 5 103 Kobayashi, Nakamura, Picton, Lykes, Büttner, Santner, Lin 5 Overall Outcome 1–5 REVERSED