Naoki Ohashi et al.

Patent Trials and Appeals Board

Sep 4, 2019

14383212 - (D) (P.T.A.B. Sep. 4, 2019)

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.
14/383,212 09/05/2014 Naoki Ohashi Q214169 8751
23373 7590 09/04/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
MULLINS, BURTON S
ART UNIT PAPER NUMBER
2834
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAOKI OHASHI, MASAYA INOUE, KOICHI OJIMA, and
KAZUYUKI IWAMOTO
Appeal 2018-002691
Application 14/383,212
Technology Center 2800

Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1, 5, and 6. Claims 2
and 3 are allowed and claim 4 is objected to, but would be allowed if
rewritten into independent form. (Final Act. 1.) An oral hearing was held
on August 21, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellants” to refer to “Applicants” as defined in 37
C.F.R. § 1.42(a). Appellants identify the real party in interest as Mitsubishi
Electric Corporation. (App. Br. 2.)
Appeal 2018-002691
Application 14/383,212

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CLAIMED SUBJECT MATTER
The claims are directed to a rotary electric machine. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A rotary electric machine comprising:

a stator that includes:

a stator core; and

a stator coil that is mounted onto said stator core;

a ring member that accommodates said stator so as to hold
said stator core in an internally fitted state;

a housing case that is formed into a floored cylindrical
shape that has an opening at a first end portion, and that
accommodates said ring member and said stator;

a cover that is mounted onto said first end portion of said
housing case so as to cover said opening of said housing case;
and

a rotor that is fixed to a shaft that is rotatably supported by
a floor portion of said housing case and by said cover so as to be
rotatably disposed on an inner circumferential side of said stator,
wherein:

a first end portion of each of said ring member and said
housing case is fixed by fastening to said cover such that a
fastening direction of each is oriented in an axial direction and
the first end portion of the ring member is fixed to the cover at a
position radially inward of a position where the first end portion
of the housing case is fixed to the cover; and

a second end portion of said ring member is fitted into and
held by said housing case by means of an interfitting member.
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Application 14/383,212

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REFERENCES
The prior art relied upon by the Examiner is:
Isogai et al. US 2012/0061201 A1 Mar. 15, 2012
Sugiyama US 8,164,230 B2 Apr. 24, 2012

Kato JP 2009-131083 A June 11, 2009
Kamiya JP 2010-246259 A Oct. 28, 2010

REJECTIONS
Claims 1 and 5 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Isogai in view of Sugiyama and Kamiya.
Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Inayama,2 Sugiyama, and Kamiya as applied to claim 1
above, further in view of Kato.
OPINION
Claims 1 and 5
With respect to claims 1 and 5, we address independent claim 1 as the
illustrative claim for the group. Appellants contend that Isogai’s structure is
the same as the background art discussed in the present application (Spec. ¶
2) and the claimed feature “the first end portion of the ring member is fixed
to the cover at a position radially inward of a position where the first end
portion of the housing case is fixed to the cover,” is novel over this

2 We note that the Examiner modified the grounds of the rejection in the
Final Office Action and removed the Inayama reference and substituted the
combination of Isogai in view of Sugiyama. Therefore, the Isogai reference
is relied upon rather than the Inayama reference for dependent claim 6,
which depends from independent claim 1. We find this to be a harmless
error.
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Application 14/383,212

4
background art, and for similar reasons, novel over the Isogai reference.
(App. Br. 6.) Appellants contend that claim 1 recites, inter alia:
a first end portion of each of said ring member and said housing
case is fixed by fastening to said cover such that a fastening
direction of each is oriented in an axial direction and the first end
portion of the ring member is fixed to the cover at a position
radially inward of a position where the first end portion of the
housing case is fixed to the cover.

(App. Br. 7.) Appellants contend that the Examiner’s reliance upon the
Isogai reference for the claimed “the first end portion of the ring member is
fixed to the cover at a position radially inward of a position where the first
end portion of the housing case is fixed to the cover” was in error. Rather,
Appellants contend that in the Isogai reference the stator holder 33 (alleged
ring member) is not attached to the cover, but instead, is attached to the case
7 (alleged housing case). (App. Br. 8.) Appellants further argue that this
construction in Isogai is the same as the structure identified in the
background art of the present Specification — where the ring member is
attached to the housing case, not the cover, and Isogai is deficient for at least
these reasons — it does not show a ring member attached to a cover, but
instead, a housing case. (App. Br. 8.) Appellants further argue that the
secondary Sugiyama and Kamiya references do not remedy this deficiency.
(App. Br. 9.)
Appellants further contend that this language describes more than a
mere concept that they are all fixed together, as the Examiner interprets this
language. Rather, the claim language clearly describes where a certain
portion, “the first end portion,” is fixed in a position. (Reply Br. 5.)
Appellants also contend that
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Isogai’s disclosure is clear, the ring member is fixed to the
housing case using fastener 36, and then the housing case is fixed
to the cover using fastener 722. Now despite the fact that fastener
36 does not contact the cover 72, the Examiner selects this as the
position where the fastener 36 fixes the ring member 33 to the
cover 72. This renders the phrase “the first end portion of the
ring member is fixed to the cover at a position radially inward of
a position where the first end portion of the housing case is fixed
to the cover,” meaningless.
(Reply Br. 5.) Appellants contend that “the Examiner gives these terms a
meaning that eviscerates all meaning from the phrase ‘the first end portion
of the ring member is fixed to the cover at a position radially inward of a
position where the first end portion of the housing case is fixed to the
cover.’” (Reply Br. 6–7.)
In response to Appellants’ arguments, the Examiner attempts to
distinguish the prior art discussed in paragraphs 2–4 of the Specification.
(Ans. 7.) The Examiner further maintains that the claim language does not
require being “directly fixed by fastening to the cover, i.e., with no
intervening parts.” (Ans. 7.) Rather, the Examiner takes the position that
if Isogai’s ring member 33 is fixed to the case 7 by fasteners, and
the case 7 is fixed to the cover 72 by fasteners 722, then ring
member 33---including all the ring member’s constituent parts
such as its end portion---is “fixed by fastening” to the cover 72
in the ordinary meaning of that term. In other words, Isogai’s
fasteners fix the ring member, case and cover together as a single
unit. This is not inconsistent with the specification in that the
specification ¶[0026] teaches the ring member 10 is “held by the
housing case 15 by a second end portion thereof being fitted
together with the interfitting member 19.” It would be
unreasonable to presume the ring member 10 is not held by (i.e.,
fixed to) the housing case 15 simply because the interfitting
member 19 lies between them.
(Ans. 7–8.)
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We disagree with the Examiner’s factual findings and conclusion with
regard to the other end portion of the ring member rather than the disputed
“first end portion.” We agree with Appellants that the Examiner’s
interpretation of the indirect fixing by fasteners construction of the Isogai
reference is unreasonable. (See Ans. 8–9.)
The Examiner maintains that Appellants’ interpretation of the “fixed
by fastening” limitation is based upon an importation of limitations from the
Specification rather than the express claim language. (Ans. 9.)
We disagree with the Examiner and find that the language of
independent claim 1 clearly requires
a first end portion of each of said ring member and said
housing case is fixed by fastening to said cover such that a
fastening direction of each is oriented in an axial direction and
the first end portion of the ring member is fixed to the cover at a
position radially inward of a position where the first end portion
of the housing case is fixed to the cover.
We agree with Appellants that claim 1 requires two connections at the first
end portion of the “ring member” and first end portion of the “housing case”
and that the each of the two are “fixed by fastening” and are radially spaced
with the “ring member” radially inward from the fixed portion of the
“housing case” to the cover.
From our review of the Isogai reference, we find that the screw 36 is
attached to the housing 71 through a hole in the ring member 33 holding the
ring member. The ring member has a slight gap between the ring member
33 and the cover 72. The cover 72 is directly attached to the body of the
housing 71 with the screw 722. Under the Examiner’s interpretation, every
member of the totality of the system of the Isogai reference is fixed, if it is in
some manner attached to the housing 71 because there would be an indirect
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affixation. We disagree with the Examiner’s overreaching claim
interpretation and interpretation of the teachings and suggestions of the
Isogai reference.
Appellants contend that the relevant claim language “the first end
portion of the ring member is fixed to the cover at a position radially inward
of a position where the first end portion of the housing case is fixed to the
cover” describes more than a mere concept that they are all fixed together, as
the Examiner appears to interpret this language. Appellants contend that the
claim language clearly describes where a certain portion “the first end
portion” is fixed where in both instances, the claim describes a position
where this first end portion is fixed. (Reply Br. 5.) Appellants further
contend that the Examiner has ignored the specific interrelationship of the
claimed elements as they are specifically fixed in the language of
independent claim 1. (Reply Br. 5.)
We agree with the Appellants. Therefore, we agree with Appellants
that the Examiner’s interpretation of the limitations of independent claim 1
and the interpretation of the teachings of the Isogai reference are
unreasonable based upon the Examiner’s formulation of the rejection.
Therefore, Appellants have shown error in the Examiner’s factual finding
and the claim interpretation so as to show error in the Examiner’s ultimate
conclusion of obviousness based upon the combination of the Isogai,
Sugiyama, and Kamiya references. As a result, we cannot sustain rejection
of illustrative independent claim 1 and dependent claim 5 for the same
reasons.

Appeal 2018-002691
Application 14/383,212

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Claim 6
The Examiner has not relied upon the Kato reference to remedy the
deficiency noted above in the separate rejection of dependent claim 6.
Therefore, we cannot sustain the rejection of dependent claim 6 for the same
reasons discussed above.

DECISION
The Examiner’s obviousness rejections are reversed.

DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 5, and 6 § 103 None 1, 5, and 6

REVERSED