Appeal 2006-3366
Application 10/864,041
705, 222 USPQ 191, 196 (Fed. Cir. 1984). We find no express limitation in
independent claim 1 which supports Appellant’s contention about the size of
the motor/machine or the number of poles. Appellant opines that
Hendershot is not enabled as to those configurations which have not been
shown to be useful and those that are known to be useful and that this lack of
differentiation precludes Hendershot from being properly regarded as a
disclosure of the numerically defined range of machine configurations (Br.
26), and that those skilled in the art would not know what SPP works since
no other reference is relied upon to teach or suggest the claimed range (Br.
23-32).3
Appellant also maintains:
But even if arguendo the Hendershot et al. disclosure were to be
regarded as an enabling disclosure of a broad range of configurations,
permitting a case of prima facie obviousness to be established,
applicant still maintains that the surprising and unexpected benefits
afforded by the claimed subset of these configurations (i.e., the
particular values of slots, poles, and phases) would still negate
obviousness and predicate patentability of designs falling within the
restricted class defined by applicant's SPP ratios. The Federal Circuit
has consistently held that obviousness cannot be predicated merely on
finding the recited elements in a combination of references.
(Br. 27).
Appellant additionally maintains that:
The benefit of using low core loss materials is unexpectedly high in
machines with low SPP ratios, high pole counts, and high excitation
3 Additionally, we would speculate that Appellant has not made every motor
within the claimed range and every combination of SPP. If we carry out
this argument to its logical end, we question whether enablement is an issue
with the instant specification, but leave it to the Examiner to evaluate.
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