Regal Beloit America, Inc.

Patent Trials and Appeals Board

Feb 10, 2022

2021002030 (P.T.A.B. Feb. 10, 2022)

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. 15/910,223 03/02/2018 KERRY BAKER SHELTON 16-FW-013-UUA1 7567 50233 7590 02/10/2022 PATRICK W. RASCHE (23571) ARMSTRONG TEASDALE LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 EXAMINER ANDREWS, MICHAEL ART UNIT PAPER NUMBER 2834 NOTIFICATION DATE DELIVERY MODE 02/10/2022 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): uspatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KERRY BAKER SHELTON, SUBHASH MARUTIRAO BRAHMAVAR, ANDREW CRAIG BARRY, MOHAMAD KHALIL DAHOUK, and LESTER BENJAMIN MANZ Appeal 2021-002030 Application 15/910,223 Technology Center 2800 Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and JANE E. INGLESE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1-9 and 11-21 under 35 U.S.C. § 103 over Staudenmann (US 2009/0096308 A1, published April 16, 2009), Listing (US 1 The following documents are of record: Specification filed March 2, 2018, as amended (“Spec.”); Final Office Action dated September 14, 2020 (“Final Act.”); Appeal Brief filed November 23, 2020 (“Appeal Br.”), citations to pages 19-23 being to the Claims Appendix; Examiner’s Answer dated December 31, 2020 (“Ans.”); and Reply Brief filed January 27, 2021 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Regal Beloit America. Appeal Br. 1. Appeal 2021-002030 Application 15/910,223 2 4,719,382, issued January 12, 1988), Li (US 2012/0038237 A1, published February 16, 2012) and Hasuo (US 2016/0336840 A1, published November 17, 2016).3 We affirm. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electric motor assembly comprising: a rotor assembly configured to rotate about a central axis, wherein said rotor assembly includes a plurality of spokes and at least one permanent magnet; and a stator assembly configured to extend about said rotor assembly, said stator assembly comprising: an annular body extending about the central axis, said annular body including an inner surface and an outer surface, wherein said inner surface and said outer surface extend about the central axis and are spaced radially apart, said annular body having a first thickness defined between said inner surface and said outer surface, wherein said first thickness is at least about 8 millimeters (mm); a plurality of stator teeth extending radially from said annular body and spaced circumferentially about said annular body, each stator tooth of said plurality of stator teeth having a second thickness, wherein a ratio of said second thickness to said first thickness is in a range of about 0.5 to about 1, wherein said first thickness and said second thickness are configured to reduce vibrations and deformations of said stator assembly; and a plurality of slots defined by said plurality of stator teeth, wherein said plurality of slots comprises at least 12 slots and no more than 24 slots, and wherein the 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2021-002030 Application 15/910,223 3 number of spokes in said plurality of spokes is less than the number of slots in said plurality of slots. Appeal Br. 19 (emphases added). OPINION The Examiner found that Staudenmann discloses the claim 1 electric motor assembly except for the following limitations: (1) a stator assembly annular body thickness of at least about 8 millimeters; (2) a stator teeth thickness to annular body thickness ratio of about 0.5 to about 1; (3) at least 12, but not more than 24 slots defined by the stator teeth; and (4) fewer rotor assembly spokes than stator assembly slots (claim 1). Final Act. 4-9. As to limitations (1) and (2), the Examiner found that the ordinary artisan would have formed Staudenmann’s stator assembly with an annular body thickness of 2 to 40 millimeters as described in Hasuo “to provide the stator yoke with sufficient strength and rigidity.” Id. at 8. The Examiner found that the ordinary artisan would have formed the stator teeth and annular body to have the same thickness-i.e., a ratio of about 1-as described in Listing, “in order to increase induction in the yoke thereby improving the magneto- motive force of the motor.” Id. at 6. Regarding limitations (3) and (4), the Examiner found that the ordinary artisan would have implemented Li’s teaching of 10 spokes and 12 slots, respectively, in Staudenmann’s rotor and stator because “varying the number [of] rotor and stator poles is a known means of optimizing motor torque and magnetic resistance.” Id. at 7. On appeal to the Board, an Appellant can overcome an obviousness rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of Appeal 2021-002030 Application 15/910,223 4 nonobviousness. In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006). The Appellant contends that the Examiner did not establish a prima facie case of obviousness because the Examiner relied on impermissible hindsight reconstruction in finding that the ordinary artisan would have had a reason to vary the number of slots and spokes in Staudenmann’s stator assembly. Appeal Br. 13. The Appellant argues that, prior to the invention, adjustments were made solely to provide a desired magnetic flux capacity. Id. The Appellant argues that these adjustments were made only to the stator’s annular body and teeth thicknesses, and were based on the number of slots and magnetic poles in an existing stator assembly. Id. The Appellant’s arguments are not persuasive. “[M]otivation to modify a prior art reference to arrive at the claimed invention need not be the same motivation that the patentee had.” Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1368 (Fed. Cir. 2012) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (stating that it is error to look “only to the problem the patentee was trying to solve”)). In other words, whether the ordinary artisan would have appreciated that benefits other than a desired magnetic flux capacity were achievable by adjusting both the slot and spoke counts and the annular body and tooth thicknesses is irrelevant to the obviousness inquiry. To establish a prima facie case of obviousness, the Examiner need only provide some reason-supported by evidence-as to why the ordinary artisan would have combined the references to achieve the claimed invention. The Examiner met this burden by clearly articulating the reasons for modifying Stadenmann and identifying evidentiary support in the applied prior art. See generally Final Act. 4-9. Appeal 2021-002030 Application 15/910,223 5 The Appellant generally alleges that that the Examiner did not provide an adequate rationale to combine the references, but has not explained sufficiently why the Examiner’s specific fact finding and reasoning is erroneous or unreasonable. See, e.g., Reply Br. 3 (“The fact that some references may mention magnetic flux or deformation does not provide an adequate rationale to combine the references in a manner that is not disclosed or suggested by any of the references.”). The Appellant contends that it unexpectedly discovered that “the described combination of the thickness of the annular body, the tooth thickness, the number of slots, and the number of spokes . . . provide[s] a balance of magnetic flux capacity and hoop stress capacity. As a result, the motor assemblies resist deformation and vibrate less than at least some known stator assemblies.” Appeal Br. 13. This argument is not persuasive. The Examiner found that the claimed annular body and tooth thickness ranges, as well as the slot and spoke numbers, overlap those described in the prior art. See Final Act. 5-9. “[T]he existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would not have been obvious.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). The Appellant has not provided persuasive evidence of criticality in the claimed ranges, and the Specification suggests that there is none. See, e.g., Spec. ¶ 16 (“In some embodiments, thickness 138 is at least about 8 mm. In further embodiments, thickness 138 is in a range of about 8 millimeters (mm) to about 20 mm. In alternative embodiments, stator assembly 104 includes any annular body 132 that enables motor assembly 100 to operate as described herein.”), ¶ 21 (“In the exemplary embodiment, a ratio of thickness 150 of stator teeth 114 to thickness 138 of annular body 132 is in a range of about 0.5 Appeal 2021-002030 Application 15/910,223 6 to about 1. In alternative embodiments, annular body 132 and stator teeth 114 have any configuration that enables motor assembly 100 to operate as described herein.”), ¶ 20 (“In some embodiments, stator teeth 114 define no more than 24 slots. In the exemplary embodiment, stator assembly 104 includes twelve stator teeth 114 defining twelve slots 140 (FIG. 3) or twenty- four stator teeth 114 defining twenty-four slots 140 (FIG. 6). In alternative embodiments, motor assembly 100 includes any stator teeth 114 that enable motor assembly 100 to operate as described herein.”). In addition, the Specification indicates that a stator assembly having annular body and tooth thicknesses, and spoke and slot numbers, within the claim 1 ranges will necessarily experience reduced vibrations and deformations, and possess balanced magnetic flux and hoop stress capacities. See, e.g., Spec. ¶ 18 (“[T]hickness 138 facilitates annular body 132 having an increased hoop stress capacity. As a result, the vibrations of stator assembly 104 are reduced.”), ¶ 21 (“[T]hickness 138 is greater than thicknesses of at least some known stator assemblies and tooth thickness 150 is less than the thickness of at least some known teeth. As a result, stator assembly 104 resists deformation and vibrates less than at least some known stator assemblies.”); cf. In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the . . . [limitation], [Appellants’] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention].”); Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious.”). The Appeal 2021-002030 Application 15/910,223 7 Appellant has not provided persuasive evidence to show that these properties would not necessarily be present in the electric motor assembly resulting from the Staudenmann, Listing, Li, and Hasuo combination. In the Reply Brief, the Appellant alleges that the Examiner took “improper Official Notice to provide teachings which are not disclosed by the cited references.” Reply Br. 3. We decline to reach this issue because the Examiner’s finding as to facts that were common knowledge in the art (see Ans. 4) is unnecessary to support the Examiner’s conclusion of obviousness. For the reasons discussed in the paragraph above, the Examiner’s fact finding and reasoning in the Final Office Action are sufficient to support a finding that the Staudenmann, Listing, Li, and Hasuo combination would have necessarily resulted in an electric motor combination possessing the alleged unexpected properties. The Examiner has fully addressed any remaining arguments made by the Appellant, including the separate arguments directed to various individual claims and claim groupings. See generally Ans. 3-9. We agree with the Examiner’s explanation of why the Appellant’s arguments are not persuasive of reversible error. Accordingly, we affirm the rejection of claims 1-9 and 11- 21 for the above reasons and based on the Examiner’s fact finding and reasoning provided in the Final Office Action and the Answer. Appeal 2021-002030 Application 15/910,223 8 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-9, 11-21 103 Staudenmann, Listing, Li, Hasuo 1-9, 11-21 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. § 41.50(f). AFFIRMED