Ex parte Boutaghou

Board of Patent Appeals and Interferences

Sep 22, 2000

08706025 (B.P.A.I. Sep. 22, 2000)

Application for patent filed August 30, 1996, which1
is a division of application 08/446,381, filed May 22, 1995.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________________
Ex parte ZINE-EDDINE BOUTAGHOU
__________________
Appeal No. 2000-0617
Application 08/706,0251
________________
ON BRIEF
________________
Before LEE, GARDNER-LANE and MEDLEY, Administrative Patent
Judges.
MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner’s final rejection of claims 13, 15-23 and 25.
A. Findings of Fact
1. The applicant states that the real party in interest
is International Business Machines Corporation. (Brief at 1).
2. The application on appeal contains claims 13, 15-23
and 25.
Appeal No. 2000-0617
Application 08/706,025
The examiner indicates that claim 14 is rejected. 2
(Answer at 5). This appears to be a typographical error,
since claim 14 has been canceled. See Paper No. 10, entered
October 20, 1997.
The examiner indicates that claim 24 is rejected. 3
(Answer at 5). This appears to be a typographical error,
since claim 24 has been canceled. See Paper No. 10, entered
October 20, 1997.
2
3. Claims 1-12, 14 and 24 have been canceled.
4. Claims 13, 15-23 and 25 have been rejected as being
unpatentable under 35 U.S.C. § 103 over Nagata et al.
(Nagata), U.S. Patent 5,486,054, issued January 23, 1996,
based on application 08/304,545, filed September 12, 1994 in
view of Nakagawa, Kokai patent application Hei 5[1993]-176520,
published July 13, 1993.
5. Claims 13, 15 and 16 have been rejected as being2
unpatentable under 35 U.S.C. § 103 over Inoue et al. (Inoue),
U.S. Patent 4,856,918, issued August 15, 1989 in view of
Moriwaki et al. (Moriwaki), Kokai patent application Sho
62[1987]-255611, published November 7, 1987, and Nakagawa.
6. Claims 19, 20, 23 and 25 have been rejected as being3
unpatentable under 35 U.S.C. § 103 over Inoue in view of
Moriwaki and Brown, U.S. Patent 2,063,787, issued December 8,
1936.
Appeal No. 2000-0617
Application 08/706,025
3
7. Claims 21 and 22 have been rejected as being
unpatentable under 35 U.S.C. § 103 over Inoue in view of
Moriwaki and Brunner, U.S. Patent 1,920,546, issued August 1,
1933.
The invention
8. The disclosed invention pertains to an electric
motor with a stator and rotor. The rotor rotates about an
axis in successive 360 degree turns and is supported by two
balls positioned at either end of the rotor.
9. Independent claim 13 is the only independent claim
and is as follows:
An electric motor, comprising:
a stationary base;
an electro-magnetic stator attached to said base;
a bearing assembly for supporting a rotor, said rotor
rotating about an axis in successive 360 degree turns, said
bearing assembly comprising:
(a) a first freely rotating ball and a second freely
rotating ball, said balls being centered on said axis and
axially separated;
(b) a first stationary rotor mounting, said first
mounting having a first concave bearing surface centered about
said axis and in contact with said first ball;
(c) a second stationary rotor mounting, said second
Appeal No. 2000-0617
Application 08/706,025
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mounting having a second concave bearing surface centered
about said axis and in contact with said second ball; and
a rotor comprising:
(a) a rotor housing;
(b) means for imparting torque to said rotor in response
to an electro-magnetic field generated by said stator;
(c) a third concave bearing surface centered about said
axis and in contact with said first ball, said third concave
bearing surface opposing said first concave bearing surface
along said axis, said first and third concave bearing surfaces
confining said first ball, and
(d) a fourth concave bearing surface centered about said
axis and in contact with said second ball, said fourth concave
bearing surface opposing said second concave bearing surface
along said axis, said second and fourth concave bearing
surfaces confining said second ball;
wherein said third concave bearing surface and said
fourth concave bearing surface are positioned between said
first concave bearing surface and said second concave bearing
surface, said rotor being supported entirely by said first and
second balls.
The Nagata reference
10. Nagata discloses a bearing system in a motor for a
floppy disk drive.
11. Nagata describes a rotor 8 supported at one end by a
pivot bearing 11 and at the other end by a pivot bearing 23.
(Fig. 1).
12. The pivot bearings 11 and 23 each comprise three
Appeal No. 2000-0617
Application 08/706,025
5
balls (13, 14 and 24, 25) for supporting the rotor 8. (Fig.
1).
13. Prior art Fig. 3 of Nagata shows a three ball pivot
bearing 63 at one end and a single ball pivot bearing 61 at
the other end.
14. Prior art Fig. 3 further shows an intermediate
bearing 62.
15. Nagata describes the need to eliminate the
intermediate bearing 62, and does so by replacing the single
ball pivot bearing 61 with a three ball pivot bearing.
(Nagata, column 2, lines 12-19).
The Nakagawa reference
16. Nakagawa describes a bearing structure for a
stepping motor.
17. Nakagawa describes a rotor 1 with a ball 4 at one
end. (Figs. 1-3).
18. The other end of the rotor 1 does not show a ball
pivot bearing. (Fig. 1).
19. The rotor is further supported by intermediate
bearing 2. (Figs. 1 and 4).
20. Nakagawa describes a prior art pivot bearing with
three balls. (Fig. 4).
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21. Nakagawa describes that a single ball bearing is
preferable over the three ball bearing arrangement in order to
reduce the number of components for the bearing. (Nakagawa
section 0005 at 3).
The Inoue reference
22. Inoue describes a bearing device with a rotor for a
magnetic head.
23. Inoue describes a rotor 10 and a stator with stator
coil 35 and magnet 34. (Fig. 2).
The Moriwaki reference
24. Moriwaki describes an elastic bearing device with a
rotary shaft 21 supported by a ball (23, 25) at either end of
the shaft. (Fig. 1).
25. The Moriwaki reference describes a bearing assembly
with a main body 11 and an arm 26. (Figs. 1 and 2).
26. The arm 26 is attached to the rotary shaft 21, such
as to pivot back and forth as illustrated by the arrow in Fig.
2.
B. Discussion
The rejections of the claims on appeal cannot be
sustained. A reversal of the rejection on appeal should not
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Application 08/706,025
7
be construed as an affirmative indication that the applicants’
claims are patentable over prior art. We address only the
positions and rationale as set forth by the examiner and on
which the examiner’s rejection of the claims on appeal is
based.
Nagata in view of Nakagawa
The applicant argues that Nagata affirmatively teaches
away from the proposed combination. (Brief at 5). We agree.
"A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, . . . would be led
in a direction divergent from the path that was taken by the
applicant." In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130,
1131-32 (Fed. Cir. 1994).
The purpose of Nagata is to eliminate the intermediate
bearing supporting the rotor. Nagata does this by replacing
the combination of a single ball pivot bearing at one end of
the rotor and a three ball pivot bearing located at the other
end of the rotor with a three ball pivot bearing at both ends
of the rotor. (Findings 13-15). Thus, Nagata teaches that a
three ball pivot bearing on both ends of the rotor are
necessary in order to eliminate the intermediate bearing. In
contrast, the claimed invention recites that the rotor is
Appeal No. 2000-0617
Application 08/706,025
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supported entirely by a single ball at one end of the rotor
and a single ball at the other end of the rotor, e.g. with no
intermediate bearing. (Finding 9). The examiner has failed
to sufficiently demonstrate why one of ordinary skill in the
art would have arrived at the claimed invention based on the
combination of Nagata and Nakagawa, despite Nagata teaching
that a single ball bearing is not desirable for its stated
purpose, e.g. to eliminate an intermediate bearing. It has
not been sufficiently demonstrated why a person of ordinary
skill, upon reading the Nagata reference, would not be led in
a direction divergent from the path that was taken by the
applicant.
In the Answer, the examiner argues that “the general term
pivot bearing would suggest to a person skilled in the art
that other pivot bearings may be incorporated to achieve the
desired goal.” (Answer at 7). While this ordinarily may be
true, here the Nagata reference actually discourages using a
single ball pivot bearing. Therefore, why would one of
ordinary skill in the art want to incorporate the type of
bearing that Nagata expressly states that it does not want to
use? The test under 35 U.S.C. § 103 is whether the teachings
of the prior art, taken as a whole, would have made obvious
Appeal No. 2000-0617
Application 08/706,025
9
the claimed invention. In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881-882. (CCPA 1981). Here, based on the record
before us, we find that the Nagata reference teaches away from
combining Nagata with Nakagawa.
Accordingly, we will reverse the decision of the examiner
rejecting claims 13, 15-23 and 25 as being unpatentable under
35 U.S.C. § 103 over Nagata in view of Nakagawa.
Inoue in view of Moriwaki and Nakagawa
The applicant argues that the Moriwaki reference is
nonanalogous art. (Brief at 7). We agree for the following
reasons. "In order to rely on a reference as a basis for
rejection of the applicant's invention, the reference must
either be in the field of the applicant's endeavor or, if not,
then be reasonably pertinent to the particular problem with
which the inventor was concerned.” See In re Deminski, 796
F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986). In re
Oetiker, 977 F.2d 1443, 1447, 24 USPQ2d 1443, 1445 (1992).
The first inquiry is whether the Moriwaki reference is in
the field of applicant’s endeavor. The field of applicant’s
endeavor is a bearing assembly for a motor. Moriwaki
describes a bearing assembly not for a motor, but for what
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Application 08/706,025
10
appears to be a mechanical device. Along with the figures,
Moriwaki describes a “bearing that axially supports a rotary
shaft to support, for instance, a robot arm, in such a manner
that it can freely rotate.” (Moriwaki at 2). An “arm” 26 is
shown in Figs. 1 and 2. It is clear that the “arm” can not
rotate 360 degrees like the rotor of a motor. The main body
11 prevents 360 degree rotation of the arm 26. (Findings 25
and 26).
The examiner asserts that the relevant field of endeavor
is “ball bearing systems for rotating shafts.” (Answer at 8).
We disagree that the field of endeavor is so broad as to cover
all ball bearings for all shafts. Further, when determining
if a reference is analogous, one must consider the
similarities and differences of structure and function of an
invention disclosed in a reference. See In re Ellis, 476 F.2d
1370, 1372, 177 USPQ 526, 527 (CCPA 1973). The Moriwaki
bearing assembly is for a mechanical arm that does not rotate
360 degrees as does the claimed rotor, e.g. its used in a
different structure and functions differently. Based on this
record, the examiner has failed to sufficiently demonstrate
why one of ordinary skill in the art would look to Moriwaki to
design a bearing assembly for a rotor that rotates at high
Appeal No. 2000-0617
Application 08/706,025
11
speeds in successive 360 degree turns.
We next address whether the Moriwaki reference is
reasonably pertinent to the particular problem with which
applicant was concerned. The problem to which applicant was
concerned was to reduce the size of the bearing assembly in a
disk drive system. The applicant proposes to do this by
reducing the number of parts in the bearing assembly.
(08/706,025 specification page 3, line 24 to page 4, line 1
and page 5, lines 1-2 and 5-6).
The examiner relied on the Moriwaki reference to teach
the claimed bearing assembly. Moriwaki does not state that
the bearing assembly is used in a motor. Moreover, the
Moriwaki reference describes a bearing assembly with a main
body 11 and an arm 26. The arm 26 is shown in Figs. 1 and 2
attached to the rotary shaft 21, such as to pivot back and
forth as illustrated by the arrow in Fig. 2. What is further
apparent from the Moriwaki reference is that the rotary shaft
does not rotate 360 degrees successively as claimed. The main
body 11 prevents the arm 26 from rotating 360 degrees.
(Findings 25 and 26). It appears that the bearing is for a
mechanical type device and not for an electric motor. The
examiner has failed to sufficiently demonstrate otherwise.
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Application 08/706,025
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The problem to be solved is to decrease the size of the
bearing arrangement for an electric motor. A consideration to
be taken when attempting to solve the problem would include
how the rotor operates in its environment. The bearing
assembly of the disclosed invention is for a rotor that
rotates at high speeds in successive 360 degree turns. One of
ordinary skill in the art would keep in mind that the bearing
assembly, reduced in size, would have to be able to rotate at
high speeds in successive 360 degree turns.
The examiner has failed to sufficiently demonstrate why
one of ordinary skill in the art would look to Moriwaki to
solve the problem faced by the inventor. Moriwaki’s bearing
assembly is for a device that pivots back and forth, but does
not rotate 360 degrees. Why then would one of ordinary skill
in the art expect the bearing device of Moriwaki to solve the
problems faced with reducing the size of a bearing assembly
for a disk drive apparatus?
Even if the examiner is correct that Moriwaki is
analogous art, we further find, based on the record before us,
that there would be no reasonable expectation of success, such
that one of ordinary skill would want to combine Inoue with
Moriwaki. It has long been settled that an invitation to
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Application 08/706,025
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experiment is not obviousness. In re O'Farrell, 853 F.2d 894,
903, 7 USPQ2d 1673, 1680-81 (Fed. Cir. 1988). Rather, for
obviousness what is required is a reasonable expectation of
success. In re O'Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673,
1681 (Fed. Cir. 1988); Merck & Co. v. Biocraft Labs., 874 F.2d
804, 809, 10 USPQ2d 1843, 1847 (Fed. Cir. 1989). While it may
have been obvious to try the bearing assembly of Moriwaki in
the Inoue motor assembly, it has not been sufficiently
demonstrated that there would have been a reasonable
expectation of success.
It has not been sufficiently demonstrated that one of
ordinary skill in the art would have had a reasonable
expectation that a bearing assembly for an arm that rotates
back and forth, and not in successive 360 degree turns would
work in an electric motor. The artisan of a bearing assembly
of a rotor for an electric motor knows that such a rotor must
be capable of rotating at high speeds in successive 360 degree
turns. What will work for a rotor in the motor environment,
may not work for a rotor in another environment. Similarly, a
rotor that does not rotate at high speeds in successive 360
degree turns, but rather rotates back and forth, as described
in Moriwaki may not work for a rotor in an electric motor.
Appeal No. 2000-0617
Application 08/706,025
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While it may be obvious to try the Moriwaki bearing assembly
in an electric motor, one would have no reasonable expectation
that such a bearing assembly would be appropriate or work for
an electric motor.
The examiner further relies on Nakagawa to teach a
concave surface on the axis of rotation for supporting the
ball bearings. (Answer at 5). As applied by the examiner,
Nakagawa does not make up for the deficiencies of Moriwaki.
For the above reasons, the rejection of claims 13, 15 and
16 under 35 U.S.C. § 103 over Inoue in view of Moriwaki and
Nakagawa cannot be sustained.
Inoue, Moriwaki and Brown or Brunner
As applied by the examiner, neither Brown nor Brunner
make up for the deficiencies of Moriwaki. Accordingly, we do
not sustain the rejection of claims 19-23 and 25 over Inoue in
view of Moriwaki and either Brown or Brunner.
C. Decision
The examiner’s rejection of claims 13, 15-23 and 25 as
being unpatentable under 35 U.S.C. § 103 over Nagata in view
of Nakagawa is reversed.
The examiner’s rejection of claims 13, 15 and 16 as being
unpatentable under 35 U.S.C. § 103 over Inoue in view of
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Application 08/706,025
15
Moriwaki and Nakagawa is reversed.
The examiner’s rejection of claims 19, 20, 23 and 25 as
being unpatentable under 35 U.S.C. § 103 over Inoue in view of
Moriwaki and Brown is reversed.
The examiner’s rejection of claims 21 and 22 as being
unpatentable under 35 U.S.C. § 103 over Inoue in view of
Moriwaki and Brunner is reversed.
REVERSED
______________________________
JAMESON LEE )
Administrative Patent Judge )
)
)
______________________________) BOARD OF PATENT
SALLY GARDNER-LANE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
______________________________)
SALLY C. MEDLEY )
Administrative Patent Judge )
Appeal No. 2000-0617
Application 08/706,025
16
Roy W. Truelson
IBM Corporation Department 917
3605 Highway 52 North
Rochester, MN 55901-7829