Hamilton Sundstrand Corporation

Patent Trials and Appeals Board

Sep 2, 2020

2019005015 (P.T.A.B. Sep. 2, 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.
14/507,928 10/07/2014 Dhaval Patel 76495US01;
67036-769PUS1
5173
26096 7590 09/02/2020
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
JOHNSON, ERIC
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DHAVAL PATEL, GORDON W. FRISKE, and
WILFREDO E. COLON VELAZQUEZ

Appeal 2019-005015
Application 14/507,928
Technology Center 2800
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MERRELL C. CASHION JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–9, 11, 12, 14, and 15. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claim 1 illustrates the subject matter on appeal and is reproduced
below (format added):

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Hamilton
Sundstrand Corporation. Appeal Br. 1.
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1. A generator comprising:
a rotor to be driven for rotation adjacent a stator;
said stator including laminated core having circumferentially
intermediate slots, and a conductor received within said
slots, said conductor having an outer copper layer and an
inner aluminum core; and
said outer copper layer extends inwardly for a skin depth which
is determined, at least in part, based upon a calculation of
the skin depth, and the calculation relying upon at least one
of a resistivity of the conductor and a relative magnetic
permeability of the conductor.
Appeal Br. 5, Claims App.
Appellant requests review of the following rejections from the
Examiner’s Final Office Action:2
I. Claims 1–4, 6–9, 11, 12, 14, and 15 rejected under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.
II. Claims 7 and 12 rejected under 35 U.S.C. § 112(b), as indefinite.
III. Claims 1–4, 6–9, 11, 12, 14, and 15 rejected under 35 U.S.C.
§ 103 as unpatentable over Baldwin et al. (US 5,227,687; issued July 13,
1993, “Baldwin”) in view of Knerr et al. (US 2015/0243410 A1; Aug. 27,
2015, “Knerr”), Shinmoto et al. (US 2013/0162097 A1; issued June 27,
2013, “Shinmoto”) and Erden et al. (“Improvement of Thermal Performance
of 36kV DAF-30 Type Bushing,” 2013 3rd International Conference on
Electric Power and Energy Conversion Systems (EPECS), October 2013,
“Erden”).

2 The complete statement of the rejections on appeal appears in the Final
Office Action. (Final Act. 2–15).
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Application 14/507,928

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OPINION
Written Descriptive Support
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112(a) is whether the disclosure of the
application as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The Examiner bears the
initial burden of establishing that the original application disclosure as a
whole would not have reasonably conveyed to those skilled in the art that the
inventors had possession of the claimed subject matter at the time the instant
application was filed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc); In re Alton, 76 F.3d 1168, 1172, 1175–76
(Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262–64 (CCPA
1976)); In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989).
In rejecting claims 1–4, 6–9, 11, 12, 14, and 15 under 35 U.S.C.
§ 112(a) as lacking written descriptive support, the Examiner determines:
It is not clear applicant had possession of the invention
since there are no working examples disclosed. Applicant only
discusses aluminum with a copper layer that extends to the skin
depth and the formula for calculating skin depth. Applicant
does not provide any detailed examples of the resulting
conductor, such as any specific dimensions of the copper layer
and aluminum core or what structure of the conductor applicant
would employ for best performance.
Additionally the formula is dependent on the angular
frequency of the current. Applicant does not discuss a specific
frequency, but a range of frequencies (300-800 Hz). The copper
layer is fixed once the conductor is made. Since applicant
provides no working example or specific frequency, this
implies that the dimension of the copper layer changes when
currents of different angular frequencies are applied or when
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Application 14/507,928

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slight variations in current occur.
(Final Act. 3–4.)
In response to the Examiner’s rejection, Appellant argues the overall
teaching of the application would inform a skilled worker in this art how to
provide a conductor for a generator. (Appeal Br. 2.)
We do not sustain the rejection of the claims under 35 U.S.C. § 112(a)
for lack of written descriptive support based on this reasoning. The
Examiner has not established that the original Specification as a whole
would not have reasonably conveyed to those skilled in the art that the
inventors had possession of the claimed subject matter. There is no
requirement that the Specification contains working examples of the
invention. The Examiner has not disputed the Specification discloses a
generator comprising a stator having an outer copper layer that extends
inwardly for a skin depth.
Indefiniteness
The Examiner determines the phrase, “the frequency of the generator
is 300-800 Hz” is unclear and therefore rejects claims 7 and 12 under 35
U.S.C. § 112(b) as indefinite. (Final Act. 3.)
Appellant argues this rejection is erroneous because a person of
ordinary skill in the art would have understood how the frequency impacts
the formula and skin depth and, thus, the disputed language is not indefinite
when read in light of the Specification. (Appeal Br. 4.)
We do not sustain the rejection of the claims under 35 U.S.C. § 112(b)
as indefinite based on this reasoning. According to the Specification,
generators operating in a range of 300–800 Hz are suitable for the disclosed
invention. (Spec. ¶ 20.)
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Prior Art rejection
After review of the respective positions Appellant and the Examiner
provide, we determine that Appellant has not demonstrated reversible error
in the Examiner’s rejection under 35 U.S.C. § 103. We limit our discussion
to independent claim 1 and Appellant’s separate arguments directed to
claims 6, 11, and 14 together as a group. 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1–4, 6–9, 11, 12, 14, and 15 will stand or fall with independent claim
1.
The Examiner finds the combination of Baldwin, Knerr, and
Shinmoto renders obvious the claimed generator comprising a conductor
having an outer copper layer, having a skin depth, and an inner aluminum
core. (Final Act. 5–6.) The Examiner finds the combination is silent with
respect to how the skin depth is calculated. (Final Act. 6.) The Examiner
finds Erden discloses it is well known in the art to calculate a skin depth
based on the resistivity and the permeability of the conductor. (Final Act. 6;
Erden 2 (2nd column to last paragraph)).
Appellant argues nothing within Shinmoto utilizes or mentions
determining the skin depth, at least in part, based upon the resistivity of the
conductor or the relative magnetic permeability of the conductor. (Appeal
Br. 3.) Appellant argues “Erden merely recites the formula, admitted in
Appellant's application, about the skin depth through which current will
normally pass. Nothing within Erden suggests modifying the references,
that have already been twice modified, to meet the claims depth.” (Appeal
Br. 3.)
Appellant’s arguments are not persuasive of reversible error.
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It is a well-known proposition that process steps in a product claim are
limiting to the extent they further define the structure of the product. In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Further, it has long been held
that “‘[i]f the product in a product by process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the
prior product was made by a different process.’” Smithkline Beecham Corp.
v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006) (quoting In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)). It is also well settled that
when a claimed product reasonably appears to be substantially the same as a
product disclosed in the prior art, the burden of proof is on the applicant to
prove that the prior art product does not inherently or necessarily possess the
characteristics attributed to the claimed product. Cf. In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990) (holding that similarity in terms of reactants and
reaction conditions amounted to a prima facie case of unpatentability and
that the burden was properly shifted to applicants to show that the prior art
product does not have the claimed property); see also In re Best, 562 F.2d
1252, 1255 (CCPA 1977). Whether the rejection is based on inherency
under 35 U.S.C. § 102 or on obviousness under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain and compare
prior art products. Best, 562 F.2d at 1255.
In the present case the claimed subject matter is directed to a product,
specifically a generator comprising a rotor and a stator wherein the stator
includes a conductor having an outer copper layer that extends inwardly for
a skin depth. Claim 1 specifically states the “outer copper layer extends
inwardly for a skin depth which is determined, at least in part, based upon a
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Application 14/507,928

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calculation of the skin depth, and the calculation relying upon at least one of
a resistivity of the conductor and a relative magnetic permeability of the
conductor.” Appellant’s arguments for patentability are limited to the failure
of the cited art to disclose the skin depth is determined, at least in part, based
upon resistivity of the conductor or relative magnetic permeability of the
conductor. (Appeal Br. 3.) However, Appellant has not disputed the
Examiner’s determination that the combination of Baldwin, Knerr, and
Shinmoto renders obvious a generator comprising a rotor and a stator
wherein the stator includes a conductor having an outer copper layer, having
a skin depth, and an inner aluminum core.
As stated above and acknowledged by Appellant (Appeal Br. 3),
Erden discloses the formula for determining the skin depth through which
current will normally pass was known. Given Shinmoto’s disclosure of a
copper layer of a copper-cladded aluminum conductor extending inwardly
for a skin depth (Final Act 6; Shinmoto ¶ 221), a person of ordinary skill
determining the appropriate skin depth to achieve the desired current flow
would have reasonably sought to use known formulas for determining
current flow through skin depth. “Obviousness does not require absolute
predictability of success . . . all that is required is a reasonable expectation of
success.” In re Kubin, 561 F.3d 1351, 1359-60 (Fed. Cir. 2009) (citing In re
O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988)).
Appellant has not directed us to evidence that establishes the skin
depth which is determined, at least in part, based upon a calculation of the
skin depth, and the calculation relying upon at least one of a resistivity of the
conductor and a relative magnetic permeability of the conductor —the
process of making the claimed product— results in a patently distinct
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product.
Claims 6, 11, and 14
Appellant argues claims 6, 11, and 14 require the skin depth to be
calculated using the specified formula. Appellant argues “the only prior art
(Shinmoto) that locates the two layers at the location merely instructs
dividing the two thicknesses. Nowhere is there a suggestion to look to this
formula.” (Appeal Br. 4.)
These arguments are not persuasive for the reasons we provide above.
Appellant has not disputed the Examiner’s position that Erden discloses a
formula for determining the skin depth through which current will normally
pass was known.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
all the claims on appeal.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–9, 11,
12, 14, 15 112(a)
Written Description
Requirement
1–4, 6–9,
11, 12, 14,
15
7, 12 112(b) Indefiniteness 7, 12
1–4, 6–9, 11,
12, 14, 15 103
Baldwin, Knerr,
Shinmoto, Erden
1–4, 6–9,
11, 12, 14,
15

Overall
Outcome
1–4, 6–9,
11, 12, 14,
15

Appeal 2019-005015
Application 14/507,928

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED