Ex Parte Debelius

Board of Patent Appeals and Interferences

Mar 12, 2003

09293455 (B.P.A.I. Mar. 12, 2003)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte STEPHEN A. DEBELIUS
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Appeal No. 2002-0354
Application No. 09/293,455
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HEARD: Feb. 5, 2003
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Before KRASS, RUGGIERO, and BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
A patent examiner rejected claims 1-4, 6-11, 13-18, 20, and 21. The appellant
appeals therefrom under 35 U.S.C. § 134(a). We affirm.
BACKGROUND
The invention at issue on appeal concerns electric motors. In an electric motor,
an armature and stator must be aligned to prohibit axial movement or end play of the
motor's armature shaft. Excessive axial movement is known to cause noise, vibration,
and excessive wear during operation. (Spec. at 2.)
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Application No. 09/293,455
The appellant's electric motor (14) includes an armature shaft (42), which is
retained at one end by a retainer (100). Figure 2 of his specification shows that the
retainer (100) fits within an enlarged portion (84) of a central bore (82) of a bearing (80).
More specifically, the retainer (100) seats on a shoulder (86) of the bearing to register
the bearing (80) and a commutator (50).
A further understanding of the invention can be achieved by reading the following
claim.
1. An armature shaft comprising:
a shaft having two ends;
a commutator on said shaft;
at least one bearing on said shaft, said bearing adjacent one of
said ends of said shaft, said bearing having a central bore sized to
support said shaft during rotation, said central bore having an enlarged
portion opening towards said one end of said shaft; and
a retainer on said shaft for retaining said bearing on said shaft, said
retainer positioned within said enlarged bore portion of said bearing.
Claims 1-4, 7-11, 14-18, and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious over U.S. Patent No. 3,624,434 (“Dafler”) and U.S. Patent No. 4,801,252
(“Wrobel”). Claims 6, 13, and 20 stand rejected under § 103(a) as obvious over Dafler,
Wrobel, and U.S. Patent No. 3,829,722 (“Rosenthal”).
Appeal No. 2002-0354 Page 3
Application No. 09/293,455
OPINION
At the outset, we recall that claims that are not argued separately stand or fall
together. In re Kaslow, 707 F.2d 1366, 1376, 217 USPQ 1089, 1096 (Fed. Cir. 1983)
(citing In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979)). Here, the appellant
stipulates, "[c]laims 1-4, 6 and 7 stand or fall together. Claims 8-11, 13 and 14 stand or
fall together. Claims 15-18, 20 and 21 stand or fall together." (Appeal Br. at 3.)
Despite the stipulation, he fails to argue the patentability of the claims separately.
Therefore, claims 2-4, 6-11, 13-18, 20, and 21 stand or fall with representative claim 1.
With this representation in mind, before addressing the positions of the examiner
and the appellant, we find that Wrobel alone would have suggested the limitations in
question. "Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the Board must give claims their broadest
reasonable construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000). "Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
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Application No. 09/293,455
Here, claim 1 specifies in pertinent part the following limitations: "said central
bore having an enlarged portion opening towards said one end of said shaft; and a
retainer on said shaft for retaining said bearing on said shaft, said retainer positioned
within said enlarged bore portion of said bearing." Giving the representative claim its
broadest, reasonable construction, the limitations require that a retainer fit within an
enlarged portion of a central bore of a bearing.
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. The question of obviousness is
"based on underlying factual determinations including . . . what th[e] prior art teaches
explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693,
1697(Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir.
1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)). "'A
prima facie case of obviousness is established when the teachings from the prior art
itself would . . . have suggested the claimed subject matter to a person of ordinary skill
in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Appeal No. 2002-0354 Page 5
Application No. 09/293,455
1In sustaining a rejection based on a combination of references, the Board of
Patent Appeals and Interferences may rely on only one of the references without the
reliance "amount[ing] to rejection on a new ground." In re Bush, 296 F2d 491, 496, 131
USPQ 263,267 (CCPA 1961). See also In re Boyer, 363 F.2d 455, 458 n.2, 150 USPQ
441, 444 n.2 (CCPA 1966) ("We think legal support for our reliance on Harris alone,
under these circumstances, can be found in In re Bush. . . .").
Here, Wrobel discloses a "bearing support [for] the shaft of [a] driving motor."
Col. 1, l. 12. "FIG. 3 is a partial cross-sectional view, on an enlarged scale, of a first
embodiment of the bearing support. . . ." Col. 2, ll. 3-5. Therein, the "shaft is axially
secured in one direction by means of a thrust washer 43 and a retaining ring 44."
Col. 3, ll. 41-42. We find that the Figure shows that the reference's thrust washer 43
and retaining ring fit within an enlarged portion of a central bore of a "bearing unit 15."
Col. 2, ll. 47-48. Therefore, we are persuaded that teachings from the Wrobel1 would
have suggested the claimed subject matter to a person of ordinary skill in the art.
Turning to the positions of the examiner and the appellant, rather than reiterate
those positions in toto, we address the two points of contention between the examiner
and the appellant. First, the examiner asserts, "Wrobel teaches motivation in that the
bearing with the retainer during operation and reduces noise (col. 1, lines 12-22)."
(Examiner's Answer at 5-6.) The appellant argues, "the Examiner has failed to provide
any motivation as to why one skilled in the art would combine these two references as
he has suggested." (Reply Br. at 2.)
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“The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact.” In re Gartside, 203 F3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). “‘[T]he question is whether there is
something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.’” In re Beattie, 974 F.2d 1309, 1311-12, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir.
1984)). “[E]vidence of a suggestion, teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge of one of ordinary skill in the art, or,
in some cases, from the nature of the problem to be solved. . . .” Dembiczak, 175 F.3d
at 999, 50 USPQ2d at 1617 (citing Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996); Para-Ordnance Mfg. v.
SGS Imports Int’l, Inc., 73 F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995)).
Here, we find that evidence of a suggestion, teaching, or motivation to combine
flows from the references themselves. Dafler relates to "bearing support . . . for small
dynamoelectric machines of the type having a rotor shaft. . . ." Col. 1, ll. 5-8. More
specifically, "[a] thrust collar 84 formed by a metal ring having a tight interference fit with
the shaft end 76 is press fitted on the terminal section of the shaft end 76." Col. 4,
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Application No. 09/293,455
ll. 12-14. Although the reference does not mention that its thrust collar fits within an
enlarged portion of a central bore of bearings, we find that Dafler invites modifications
to it embodiment. Specifically, the reference asserts that "other forms may be adopted.
. . ." Col. 5, l. 74.
We further find that Wrobel recognize a problem facing bearings. Specifically,
“[i]n particular during long periods of operation, at high temperature differences and/or
higher rotational speeds, the bearings would become loose in their seats . . . and would
cause increasingly operating noises which finally would lead to the requirement that . . .
the bearing would have to be exchanged." Col. 1, ll. 15-22.
We also find that the latter reference solves the problem of loose bearings.
Specifically, Wrobel constructs a bearing so that "axial play or clearance which results
in operation is automatically compensated." Id. at ll. 45-46. Besides solving the
problem, the reference's invention offers the advantage that "preparation of the
assembly with the same is itself simple. . . ." Id. at ll. 43-44. We previously found that
Wrobel's thrust washer 43 and retaining ring 44 fit within an enlarged portion of a
central bore of bearing unit 15. Because Dafler invites modifications to it embodiment,
and Wrobel's embodiment solves the problem of loose bearings and simplifies
Appeal No. 2002-0354 Page 8
Application No. 09/293,455
assembly, we find that a suggestion, teaching, or motivation to combine flows from the
references themselves.
Second, the appellant alleges, "to modify Dafler as suggested by Wrobel would
most likely render the bearing of Dafler inoperable." (Appeal Br. at 6.) Unfortunately,
he does not explain how Dafler would allegedly, "most likely," be rendered inoperable.
Moreover, “[w]hat appellant[] overlook[s] is that it is not necessary that the inventions of
the references be physically combinable to render obvious the invention under review.”
In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (citing
Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200
(Fed. Cir. 1983); In re Andersen, 391 F.2d 953, 958, 157 USPQ 277, 281 (CCPA
1968)). See also In re Nievelt, 482 F.2d 965, 968, 179 USPQ 224, 226 (CCPA 1972)
("Combining the teachings of references does not involve an ability to combine their
specific structures."). The test for obviousness is not whether the features of a
reference may be bodily incorporated into the structure of another reference but what
the combined teachings of those references would have suggested to one of ordinary
skill in the art. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Here, combining the teachings of Dafler and Wrobel does not involve an ability to
combine their specific structures. The appellant’s argument overlooks “the relevant
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Application No. 09/293,455
combined teachings of the references." Andersen, 391 F.2d at 958, 157 USPQ at 281
(dismissing the argument that a combination would result in an inoperative structure).
Therefore, we affirm the rejection of claim 1 and of claims 2-4, 6-11, 13-18, 20, and 21,
which fall therewith.
CONCLUSION
In summary, the rejection of claims 1-4, 6-11, 13-18, 20, and 21 under § 103(a)
is affirmed. "Any arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences. . . ." 37 C.F.R.
§ 1.192(a)(2002). Accordingly, our affirmance is based only on the arguments made in
the briefs. Any arguments or authorities not included therein are neither before us nor
at issue but are considered waived. No time for taking any action connected with this
appeal may be extended under 37 C.F.R. § 1.136(a).
Appeal No. 2002-0354 Page 10
Application No. 09/293,455
AFFIRMED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
Appeal No. 2002-0354 Page 11
Application No. 09/293,455
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