Ex Parte Baba

Board of Patent Appeals and Interferences

Sep 8, 2008

10227426 (B.P.A.I. Sep. 8, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHINJI BABA
____________

Appeal 2008-1362
Application 10/227,426
Technology Center 2800
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Decided: September 8, 2008
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Before KENNETH W. HAIRSTON, JOHN A. JEFFERY, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1, 6, 11, and 12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

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Application 10/227,426

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STATEMENT OF CASE
Appellant’s claimed invention is directed to an improved structure of
a magneto generator including a guard annulus or ring for protecting and
positioning magnets mounted on an inner peripheral surface of a flywheel
(Spec. 1:8-11). The apparatus includes a guard ring having retaining
portions formed in a peripheral edge portion and a discontinuous flange
portion formed of a series of adjacent discontinuous flange elements
separated by V-shaped notches (Spec. 8:2-7; cl. 1).
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A magneto-generator, comprising:

a flywheel implemented substantially in a bowl-like shape;

a plurality of magnets disposed on and along an inner peripheral
surface of said flywheel;

a guard ring formed substantially in a smooth, continuous cylindrical
shape and disposed in intimate contact with said plurality of magnets
at inner side surfaces thereof, said guard ring being provided with
retaining portions formed in an opened peripheral edge portion of said
guard ring located at a bottom side of said flywheel and a
discontinuous flange portion formed of a series of adjacent
discontinuous flange elements separated by V-shaped notches, in an
opened peripheral edge portion at a side opposite to said retaining
portions for thereby positioning said magnets in a radial direction with
the smooth outer peripheral surface of said guard ring while
positioning said magnets in a rotational axis direction by sandwiching
said magnets between said retaining portions and said discontinuous
flange portion; and

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a mass of resin filled between said flywheel and said guard ring
around each of said magnets for securing fixedly said magnets
integrally with said flywheel.

REFERENCES
Shimizu US 4,877,986 Oct. 31, 1989
Hase JP 10-145995 A May 29, 1998

Claims 1, 6, 11, and 12 stand rejected under 35 U.S.C.
§ 103(a) based upon the teachings of Shimizu and Hase.
Appellant contends that the Examiner has failed to provide a
motivation to combine Shimizu and Hase, and thus, has not established a
prima facie case of obviousness (App. Br. 13 Reply Br. 4)1. Regarding
claims 11 and 12, Appellant adds that even if the references were
combinable, the combination would fail to teach or suggest a folded flange
segment with two layers in a laminated state in a direction axially to the
magneto-generator as claimed (App. Br. 18-19).

ISSUE
Did the Examiner err in rejecting claims 1, 6, 11, and 12 under 35
U.S.C. § 103(a) as obvious over Shimizu and Hase?

FINDINGS OF FACT
1. Appellant’s invention teaches a magneto-generator including a
flywheel, magnets disposed on an inner surface of the flywheel, a guard ring
including one edge having retaining portions and the opposite edge having a

1 We refer through out this opinion to the Appeal Brief mailed September
18, 2006.
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discontinuous flange portion (cl. 1). The discontinuous flange portion is
formed of a series of adjacent discontinuous flange elements separated by V-
shaped notches (cl. 1). Resin is filled between the flywheel and the guard
ring around each of the magnets to secure the magnets integrally with the
flywheel.
2. Shimizu teaches a magneto-generator including a flywheel, a
magnet-holding cylinder (guard ring) including one edge having retaining
portions and the opposite edge having a continuous flange (Figs. 1, 3, and 4).
The retaining portions include channel-bar-teeth having protrusions in the
radial direction of the magnet-holding cylinder (col. 3, ll. 8-15). Resin is
used to fill the space/gap formed between the wall of the flywheel, the
magnet-holding cylinder, and the magnets (col. 3, ll.48-52).
3. Hase teaches a rotor for a magneto-generator. Hase includes a
magnet protecting cover (6). A magnet (5) is mounted on an outer
circumferential surface of a cylindrical unit (6a) and a collar unit (6b) of the
magnet protecting cover covers an opening end side of the magnet
(¶[0011])2. Radially arranged notches (6c) are formed at the collar unit of
the magnet protecting cover to form flanges (6b) (¶[0013]). A liquid
adhesive or resin is filled between the magnet and the magnet protecting
cover (¶[0013]).

PRINCIPLES OF LAW
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007) (citing
Graham v. John Deere Co., 383 U.S. 1, 12 (1966)), reaffirmed principles

2 All references to Hase are with respect t to its official English language
translation.
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based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
If the Examiner’s burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with arguments and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).

ANALYSIS
The Examiner rejected claims 1, 6, 11, and 12 as obvious over
Shimizu and Hase. The Examiner contends that Shimizu teaches all the
features of Hase except for the discontinuous flange portion formed of a
series of adjacent discontinuous flange elements separated by V-shaped
notches. The Examiner then contends that Hase teaches discontinuous
flange portion (Fig. 4) as taught by Appellant.
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Appellant asserts that the Examiner has failed to provide a motivation
to combine Shimizu and Hase because the “feature adopted from Hase to
modify Shimizu performs a different function in a different way, there is no
support that modifying Shimizu as attempted by the Examiner would have a
reasonable chance of success” (App. Br. 13). Appellant alleges that the
function and purpose of Shimizu and Hase are different in that the function
of Shimizu is as a magnet holding cylinder; whereas Hase merely discloses a
magnet protective cover (App. Br. 16). Therefore, Appellant asserts, there is
no motivation to combine because the combination would sacrifice the
structural characteristics of Shimizu’s flange. (App. Br. 16). We do not
agree.
Hase teaches to improve the bonding of magnets (See Abstract:
Solution) as does Shimizu (col. 3, ll. 51-64; App. Br. 14-15). Thus, they
both have the property, inherent or otherwise, of holding magnets in place
on a magneto generator. The Examiner cited Hase as evidence that it was
known to a skilled artisan at the time of the invention that flanges can have
discontinuous flange portions. Because Shimizu and Hase are in the same
field of endeavor, it would have been obvious to a skilled artisan, in our
view, to notch the flange of Shimizu in view of Hase. Appellant has
provided no evidence on this record that notching the flange in Shimizu
would somehow render Shimizu inoperative, or that the combination would
sacrifice the structural characteristics of Shimizu’s flange.
Further, combining these references would require no more than the
combination of familiar elements according to known methods that would
do no more than yield predictable results. KSR, supra. As noted in KSR, if a
technique has been used to improve one device, and a person of ordinary
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skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill. Id. at 1740. In this instance, Hase teaches
improving the bonding of magnets (See Abstract: Solution) as does Shimizu
(col. 3, ll. 51-64; App. Br. 14-15). Hase was cited as evidence that it was
known to a skilled artisan at the time of the invention that flanges can have
discontinuous flange portions. Because Shimizu and Hase are in the same
field of endeavor, it would be obvious to a skilled artisan to notch the flange
of Shimizu in view of Hase. As we indicated previously, Appellant has
provided no evidence that notching the flange in Shimizu would impair or
defeat the function of Shimizu.
It should be noted, however, that claims 11 and 12 teach not only a
series of circumferentially spaced flange sections, but also, each flange
section includes “a folded flange segment that has two layers in a laminated
state.” The Examiner contends the folded flange segment in a laminated
state is shown by the two layers 4c and 6b in Fig. 2 and J4 and J6 in Fig. 6 of
Hase (Ans. 6). The Examiner further states that Appellant’s Fig. 6 does not
show the layers contacting each other entirely (Ans. 6), and since neither
does Hase, Hase teaches this feature. We do not agree. The folded flange
segment having two layers in a laminated state, as claimed, is not shown by
Hase. Rather, Hase shows two separate elements that are not folded and are
not laminated (Figs. 1 and 2; ¶[0010]). There is also no teaching or
suggestion in Hase to form the flange in this manner.
Thus, for the above reasons, we find Appellant has provided no
evidence rebutting the Examiner’s prima facie case of obviousness with
respect to claims 1 and 6 and therefore, Appellant has not persuaded us of
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error in the Examiner’s rejection of those claims. We therefore sustain the
Examiner’s rejection of claims 1 and 6. Appellant, however, has persuaded
us of error in the Examiner’s obviousness rejection of claims 11 and 12.
Therefore, we reverse the rejection of those claims.

CONCLUSION
We therefore conclude that the Examiner did not err in rejecting
claims 1 and 6, and that the Examiner did err in rejecting claims 11 and 12
under 35 U.S.C. § 103(a) as obvious over Shimizu and Hase.

DECISION
We affirm the decision of the Examiner rejecting claims 1 and 6 and
reverse the decision of the Examiner rejecting claims 11 and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

KIS

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