Ex parte BOHM

Board of Patent Appeals and Interferences

Oct 14, 1999

08728224 (B.P.A.I. Oct. 14, 1999)

Application for patent filed October 10, 1996.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT T. BOHM

_____________
Appeal No. 1999-0519
Application 08/728,2241
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-0519
Application 08/728,224
2
This is a decision on appeal from the examiner's
final rejection of claims 1 through 4 and 7 through 10.
Claims 5, 6,
11 and 12, the only other claims remaining in the application,
stand withdrawn from further consideration under 37 CFR
§ 1.142(b).
Appellant’s invention relates to a method for con-
trolling lateral vibration in a rotating shaft and to a shaft
assembly which implements that method. A copy of independent
claims 1 and 7 can be found in the Appendix to appellant’s
brief.
The sole prior art reference relied upon by the
examiner in rejecting the appealed claims is:
Hamada et al. (Hamada) 5,593,144 Jan. 14, 1997
(filed May 1,
1995)
Appeal No. 1999-0519
Application 08/728,224
3
Claims 4 and 10 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
Claims 1, 4, 7 and 10 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Hamada.
Claim 2, 3, 8 and 9 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Hamada.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 13, mailed August 26, 1998) for the reason-
ing in support of the rejections, and to appellant’s brief
(Paper No. 11, filed June 10, 1998) for the arguments there-
against.
Appeal No. 1999-0519
Application 08/728,224
4
OPINION
In reaching our decision in this appeal, we have
given careful consideration to appellant’s specification and
claims, to the applied prior art reference, and to the respec-
tive positions articulated by appellant and the examiner. As
a consequence of our review, we have made the determinations
which follow.
Looking first at the examiner's rejection of claims
4 and 10 under 35 U.S.C. § 112, second paragraph, we note that
the examiner has taken the position that the recitation in
each of these claims that the mass added to the shaft at the
second order critical frequency node comprises “a bearing
assembly” is indefinite because “merely naming mass as a
bearing assembly
fails to further define the claimed structure” (answer, page
3). The examiner goes on to indicate that if appellant wishes
to claim the bearing structure then the specific element or
elements that constitute the bearing structure should be
positively set forth. We do not agree. Like appellant, we
Appeal No. 1999-0519
Application 08/728,224
5
view the recitation in claims 4 and 10 on appeal as merely
setting forth the broad proposition that the mass added to the
shaft may be in the form of a bearing assembly, rather than a
solid mass. While this recitation is certainly broad, we see
no reason why it should be considered to be indefinite.
Appellant discloses embodiments of the invention wherein the
mass added to the shaft is provided in the form of a bearing
assembly (see Figs. 11 and 12). The exact form of the bearing
assembly set forth in claims 4 and 10 would appear to be
irrelevant. Since we find that appellant’s claims are merely
broad, and not indefinite, it follows that the examiner’s
rejection of claims 4 and 10 under 35 U.S.C. § 112, second
paragraph, will not be sustained.
Regarding the examiner’s rejection of claims 1, 4, 7
and 10 under 35 U.S.C. § 102(e) as being anticipated by Ha-
mada,
we share appellant’s view as expressed in the brief (pages 5
Appeal No. 1999-0519
Application 08/728,224
6
and 6) that the dynamic, spring-mass type vibration damper of
Hamada and the method of its operation are entirely different
than the shaft assembly and method for damping lateral vibra-
tions in a shaft defined in appellant’s claims 1, 4, 7 and 10
on appeal. As to method claim 1, even if the shaft of Hamada
were to have each of the basic characteristics set forth in
the preamble of the claim, there is no disclosure, teaching or
suggestion in Hamada of defining an “adjusted first order
critical frequency” (emphasis added) for the rotating shaft,
wherein the adjusted first order critical frequency is “equal
Appeal No. 1999-0519
Application 08/728,224
We understand from appellant’s specification that in a2
typical shaft system, the second order critical frequency
would normally occur at a rotational frequency higher than the
upper operating frequency of the rotating shaft, so that the
operation of the shaft system is not affected thereby. How-
ever, it is common in many shaft systems for the first order
critical frequency to occur within the operating frequency
range, thereby introducing the potential for shaft instability
and undesirable vibratory characteristics. As noted on page 4
of the specifica- tion, an object of appellant’s invention is
to provide a method and apparatus for controlling lateral
vibration in a shaft system by shifting the first order
critical frequency of a rotating shaft out of an operational
frequency range of the shaft system, without changing the
second order critical frequency. Thus, with regard to appel-
lant’s method claim 1, we understand that the “first order
critical frequency” set forth in the preamble is one which
occurs within the operational frequency range of the rotating
shaft, while the “adjusted first order critical frequency” is
equal to or, more preferably, less than the lower operating
frequency of the rotating shaft.
7
to or less than” the lower operating frequency of the shaft;2
and
then disposing a mass having a predetermined weight (W) in
combination with the rotating shaft “at said second order
critical frequency node, whereby said mass maintains said
adjusted first order critical frequency at a frequency equal
to or less than said lower operating frequency, thereby con-
trolling lateral vibration of said rotating shaft as said
Appeal No. 1999-0519
Application 08/728,224
8
rotating shaft rotates within said operating frequency range,”
as specified in appellant’s claim 1 on appeal.
Regarding independent claim 7, although the shaft in
Hamada has a mass (28) associated therewith at a central
portion of the shaft, there is no disclosure or teaching in
Hamada of a mass being disposed in combination with the shaft
“at said second order critical frequency node” as in appel-
lant’s claim 7 and no disclosure at all that said mass should
have a predetermined weight (W) equal to or greater than a
critical weight, with said critical weight corresponding to a
state wherein said first order critical frequency substan-
tially equals the lower operating frequency of the shaft,
whereby said disposition of said mass about said shaft main-
tains said first order critical frequency at a frequency equal
to or less than said lower operating frequency,
thereby controlling lateral vibration of said rotating shaft
as said rotating shaft rotates within said operating frequency
range, as in claim 7 on appeal.
Appeal No. 1999-0519
Application 08/728,224
9
For the above reasons, we will not sustain the
examiner’s rejection of claims 1, 4, 7 and 10 under 35 U.S.C.
§ 102(e) based on Hamada.
As a further commentary, we also note that we share
appellant’s view (brief, pages 6 and 7) that it would not have
been obvious to one of ordinary skill in the art, based on the
teachings of Hamada, to merely optimize the weight of the mass
(28) in Hamada to achieve the results sought by appellant, or
to derive a weight adjustment constant k which equals 31.14
Newtons. There is simply no guidance whatsoever in Hamada for
such selec- tions to be made or derived therefrom. Thus, the
examiner’s rejection of claims 2, 3, 8 and 9 under 35 U.S.C. §
103 based on Hamada will likewise not be sustained.
In view of the foregoing, the examiner's decision
rejecting claims 1, 4, 7 and 10 under 35 U.S.C. § 102(e) and
Appeal No. 1999-0519
Application 08/728,224
10
claims 2, 3, 8 and 9 of the present application under 35
U.S.C. § 103 based on Hamada is reversed. In addition, the
examiner’s decision rejecting claims 4 and 10 under 35 U.S.C.
§ 112, second paragraph, is also reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-0519
Application 08/728,224
11
CEF:psb
Appeal No. 1999-0519
Application 08/728,224
12
Adam C. Solomon
Sikorsky Aircraft Corporation
Legal Intellectual Property, M/S S316A
6900 Main Street
P.O. Box 9729
Stratford, CT 06497-9129