This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner's rejection of claims 9, 11, 12, 14, 17, 29, and 30, all remaining claims in appellant's application serial No. 363,561, filed April 29, 1964, for a "Vibratory Motor." We reverse.
The invention relates to the kind of vibratory motor used in hand-held massagers, sanders, clippers, and the like. Appellant claims a motor which employs conventional alternating "house" current to impart vibratory motion to the spring-mounted armature of an E-shaped electromagnet. This vibrating armature may be mechanically connected to various workpieces, which will then reciprocate as the armature vibrates. Figure 8 of the specification, said to show structure useful as a hair clipper motor, in which 72 is the spring-mounted armature and 21A is the electromagnet having coil 71, is illustrative:
The nub of the invention is the provision on the armature of one or more "wrap-around" extensions such as 77 and 78
All the other claims contain the same or similar language. The purpose of this construction, we are told, is to reduce the reluctance in the electromagnetic circuit, thereby causing the motor to heat less in operation with resultant increases in the life expectancy of the motor and in the consumer's comfort when the motor is employed in hand-held devices.
During prosecution, appellant submitted four Rule 132 affidavits. In the first of these, the inventor himself averred that his invention was novel and "unexpectedly resulted in the generation of substantially less heat" than vibratory motors in which the armature and core were not formed in the manner claimed. In the next two, employees of Dormeyer Industries Chicago, Illinois, owned by the assignee of the instant application, described the results of an experiment in which vibratory motors like those depicted in Fig. 8 were operated as shown and with the outer core arms 73 and 75 removed at the working gap face on the base 76. Briefly, these affidavits indicate that vibratory motors in which the outer arms had been removed drew more current and heated up to a higher temperature than otherwise identical vibratory motors in which the outer arms had not been removed. The fourth, submitted with a Request for Reconsideration before the board, attempts to distinguish
THE REJECTIONThe references are: Hartwell 1,259,396 Mar. 12, 1918 McElroy et al. 2,343,237 Mar. 7, 1944 Wallace 2,451,789 Oct. 19, 1948 Lewandowski 2,451,840 Oct. 19, 1948 Caracciolo 3,194,231 July 13, 1965
The examiner rejected claims 2 (since cancelled), 9, and 11 on McElroy or Caracciolo in view of Wallace and Hartwell and claims 12, 14, 17, 29, and 30 on McElroy or Caracciolo in view of Wallace and Lewandowski. The board affirmed the rejection of all claims, referring additionally to section 5-49 of the McGraw-Hill Book Company's Standard Handbook for Electrical Engineers (9th ed. 1957).
McElroy and Caracciolo disclose electromagnetic, vibratory motors powered by alternating current and having armatures spring-mounted on E-shaped cores. Appellant concedes that these features of his claimed invention are old and has relied for patentability solely on the minimization of the flux gap permitted by his wraparound armature extensions; accordingly, it is unnecessary to consider these references further.
Wallace discloses a vibratory armature electromagnetic motor (see Fig. 2 below) powered by interrupted direct current and having a spring-mounted armature A which parallels the core of the electromagnet,
Armature A is shown in its outward position. Through linkage L it reciprocates piston D of a small pump.
Appellant objected to the examiner's reliance on Wallace on the ground, inter alia, that it disclosed a motor powered by interrupted direct current in contrast to his ac-powered device, and Hartwell was thereupon cited solely as a teaching of the adaptability of an electromagnet such as that used by Wallace to either alternating or direct current operation.
Lewandowski discloses an electromagnetic motor in which the armature parallels the core of the electromagnet for most of its length, but has extensions "wrapping around" the electromagnet at either end. It does not, however, suggest in any way that these wraparound extensions should be kept as close as possible to the core.
The cited portion of the Standard Handbook for Electrical Engineers, referred to by the board, states:
The board drew from this a presumption that Wallace used a relatively small air gap to serve "the useful function of increasing the initial pull on the armature" as shown in two of the figures in the Handbook.
The board stated that:
Unfortunately, the board did not set forth the "elementary magnetic circuit consideration" which it thought suggested appellant's expedient.
The brief for the solicitor is equally unhelpful. The sum total of the analysis of this problem contained therein is the following paragraph:
However, we do not understand the removal of the outer core arm in the experiments described in appellant's affidavits to have had any effect on "the space across which the armature * * [was] drawn." That parameter seems to be set by the physical characteristics of the armature and armature mounting, the armature traveling from its rest position to contact with the core (shown in Fig. 8, supra, as having a resilient bumper 79 at the point of contact) each time the device is actuated.
Wallace is clearly the reference most relevant to the critical issue of the obviousness of minimizing the amount of air in the magnetic circuit in order to reduce the operating temperature of the device, although Wallace's device differs considerably in detail from the embodiment of appellant's invention depicted in Fig. 8.
According to appellant's affidavits, two devices of the type disclosed in Fig.
As remarked above, the Patent Office has not been of much help in aiding us to determine whether it would have been fairly predictable to such a person that decreasing the flux gap in the magnetic circuit of an electromagnetic motor of the type shown in Fig. 8 would result in cooler operation, and in fairness we add that the appellant's brief is no better than the solicitor's. Thus, we have been left to make an unescorted venture into relatively sophisticated electromagnetic theory. Therefore, we will set out our reasoning in some detail in order to make clear the considerations which have led us to reverse the rejection. Under the circumstances, we cannot guarantee technical accuracy; we can only guarantee that we have done our best with a skimpy record.
As we understand the operation of appellant's devices, there are three sources of heat — magnetic, electrical, and mechanical — the relative importance of which depends upon factors not recited in his claims and which could therefore vary widely in different devices within the scope of his claims. However, based on this record and our admittedly limited knowledge of electromagnetic theory, it seems to us that a person of ordinary skill in the design of electromagnetic motors would have expected all three sources to increase their steady-state heat output with decreases in magnetic circuit reluctance.
The first of these heat sources is magnetic loss, the combination of hysteresis loss and eddy-current loss. In a given device of this type, subjected to cyclic magnetization and demagnetization by means of periodic excitations, these losses are a function of maximum flux density and maximum magnetic potential gradient. Reducing the reluctance in the magnetic circuit should increase the magnetic flux in the circuit, which should in turn increase both the flux density and the magnetic potential gradient in the unchanged portions of the magnetic circuit, leading to an increase in core heating. See section 3-6, "Energy Loss in Ferromagnetic Cores," in Chapter 3, "Alternating-Current Excitation of Ferromagnetic Structures," in Electromechanical Energy Conversion by Vembu Gourishankar (International Textbook Co., Scranton, Pa., copyright 1965).
The second heat source is resistance loss in the electrical circuit used to excite the electromagnet. Although the voltage applied to the circuit in appellant's experiments was the usual sinusoidal, 60 cycle, 115 volt ac of the domestic supply, the induced electromotive force caused by changes in the flux linkage must have caused the waveform of the exciting
The third source of heat is the flexing of the spring, resulting in mechanical heating. The number of times per second the spring is flexed is, of course, set by the frequency of the exciting current, which was constant throughout appellant's experiments. However, the mechanical heat generated by flexing the spring would seem to be a function, not only of the rate at which the spring is flexed, but the angular velocity which the spring attains intermediate it points of instantaneous rest. Here again, reducing the reluctance in the magnetic circuit might be expected to increase the flux and therefore the force with which the armature is attracted to the electromagnet on each cycle, resulting in higher angular velocity flexing of the spring and thus in a higher, not lower, operating temperature.
The above analysis suggests that appellant's expedient, whatever its other merits which may have led Wallace to adopt the same expedient in a slightly different device,
Of course, we do not mean to imply that appellant has found an exception to Maxwell's equations which is going to necessitate their revision. No doubt, if appellant's affidavits are accurate, those skilled in the art will eventually be able to explain why appellant's results should have been predictable before appellant undertook his experiments, all based on electromagnetic theory well known long ago. What we do mean is that, based on this sketchy record and with our admittedly limited knowledge of electromagnetic theory, appellant's results seem to us unexpected at the time his invention was made. Since the Patent Office has not shown why they were to be expected, and since, if unexpected, they are sufficient to establish patentability, we reverse.
BALDWIN, Judge (concurring).
I am satisfied that the majority is correct in reaching the conclusion that the disclosures of the cited prior art references here, as applied by the Patent Office, did make out a prima facie case that the claimed subject matter before us would have been obvious in the sense of 35 U.S.C. § 103. In order to prevail, therefore, it became appellant's burden to come forward with some evidence tending to prove that the opposite conclusion, i. e., that the claimed invention would not have been obvious, would be more correct. To his credit, appellant recognized his burden and came forward with such evidence. The ultimate task of the Patent Office, which is now ours to review, was to evaluate that rebuttal evidence vis-a-vis the factors making up the prima facie case and to determine which was the stronger.
As should be readily apparent, the nature and degree of proof which will be
To draw the line anywhere in evaluating facts set forward to establish patentability is always a complex and difficult task. It becomes more so when the record leaves some doubt concerning the truth or accuracy of some of those facts. Such is the case here. Appellant has submitted evidence indicating that his claimed device possesses the obviously commercially desirable property of operating at a relatively cooler temperature. As the majority indicates, if this result would not have been predictable, i. e., expected, it would be enough to rebut the prima facie obviousness to be inferred from the reference disclosures. Unfortunately, we are not presented with anything in the nature of substantive proof or convincing reasoning by either party regarding the objective truth of appellant's assertion of this critical fact.
It appears to me that the principal opinion, in postulating its own theory about why the results shown by appellant would not have been expected, unnecessarily (and perhaps unlawfully, see 35 U.S.C. § 144) goes "out on a limb." I confess to not knowing if this theory is plausible or ridiculous, right or wrong. I simply cannot understand it. Even if I could, however, I feel it is not the province of this court to attempt such independent analyses. Compare the dissent in In re Moore, 409 F.2d 585, 56 CCPA 1060, 1066 (1969).
In any event, I am of the opinion that such an undertaking is unnecessary in this case. Appellant himself has gone out on a limb and has asserted under oath that the results he has demonstrated would have been unexpected. Recognizing the more critical eye with which the courts are now looking at such material assertions by applicants, the penalties, both civil and criminal, to be incurred if appellant has, in fact, committed fraud by such assertion, treating the showing of admittedly advantageous results as some corroboration (if it were so obvious that these devices could be made to run cooler, then why wasn't it done earlier?), and nothing that the Patent Office has done nothing more than cynically "pooh-pooh" appellant's assertion, I would accept it as an additional factor and give it the controlling weight indicated earlier. Cf., In re Ehringer, 347 F.2d 612, 52 CCPA 1457 (1965).
ALMOND, Judge (dissenting).
I agree with the majority that Wallace's disclosure of an armature extension providing a small air gap makes it prima facie obvious to provide a similarly minimized air gap with the E-shaped core type vibrator motors of the basic references. It will be noted that appellant, the examiner, and the board are all in agreement that providing a reduced air gap lowers the reluctance of a magnetic circuit. They also are of the unanimous view that such an air gap will result in less heating of the structure. The disagreement lies in whether this decreased heating was unexpected.
The board's position was that it would be obvious that reducing the length of the air gaps in a magnetic circuit "would decrease the reluctance thereof, and, with all other considerations being the same would reduce the heating produced." It is true the board did not elaborate on the "elementary magnetic circuit consideration" from which it thought this conclusion followed. However, the definition of "reluctance" as "[a] measure of the opposition presented to magnetic flux in a magnetic circuit,"
The tests showing that appellant's Figure 8 structure ran cooler than a similar structure lacking the core arms 73 and 75 at best merely substantiate the already admitted fact that providing an effectively smaller air gap in a magnetic circuit produces less heat loss. The tests plainly are not of any significance to the issue of whether such lower heat loss was unexpected.
The majority notes that appellant himself asserted in one of two affidavits he submitted that his construction "unexpectedly resulted in the generation of substantially less heat" than constructions lacking his overlapping armature ends with a minimum air gap. That mere assertion, without reinforcement by either facts or reasons, is certainly not convincing of unexpectedness to a person of ordinary skill in the art, and we do not understand the majority to have considered it so. Also, the two affiants who described the aforementioned tests each asserted that the "large difference" in heat generated in the two constructions tested "was unexpected." But those assertions too are unsupported by any facts or reasons, and, therefore, fail, in my opinion, to rebut the prima facie case of obviousness.
The only support then for the majority's finding that the reduced heating loss that appellant obtains is unexpected, and the prima facie case of obviousness rebutted, is its own original theory why it thinks that a person of ordinary skill in the design of electromagnetic motors would have expected an increase in heat losses to accompany a decrease in magnetic circuit reluctance. I cannot join in the determination of this appeal on that basis for two reasons. First, I do not know whether that theory is correct. Second, I do not think that the court should attempt an independent analysis of the technical point involved.
Since I cannot accept the majority's theory as to why the results emphasized are unexpected, and since appellant has not, in my opinion, offered any evidence that the decreased heating would in fact be unexpected to one of ordinary skill in the art, I would affirm the decision of the board.