Ex Parte Fujimura

Board of Patent Appeals and Interferences

Sep 15, 2009

10998898 (B.P.A.I. Sep. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NOBUAKI FUJIMURA
____________

Appeal 2009-003521
Application 10/998,898
Technology Center 3600
____________

Decided: September 15, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
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STATEMENT OF THE CASE
Nobuaki Fujimura (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision finally rejecting claim 3, which is the sole
pending claim in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is a linear guide apparatus used to
machine equipment requiring high processing accuracy or measuring
accuracy such as mold processing machines or semiconductor
manufacturing apparatus. Spec. 1:6-10. Claim 3 is reproduced below.
3. A linear guide device including an axially extending
guide rail having rolling element rolling grooves on both sides,
a slider bridged over the guide rail and comprising a slider main
body having a loaded rolling element rolling grooves opposed
to the rolling element rolling grooves of the guide rail and
having rolling element channels penetrating in the axial
direction, and an end cap fixed to each end of the slider main
body and having rolling element circulation channels that
communicates with both of the rolling element rolling grooves
and the rolling element channels, and plural rolling elements
arranged such that they can circulate under rolling through both
of the rolling element rolling grooves, the rolling element
circulation channels and the rolling element channels,

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wherein the length of the loaded rolling element rolling
groove of the slide main body is defined from 109.5 mm to
177.8 mm, and
wherein the number of effective rolling elements is a
value obtained by dividing the length of the loaded rolling
element groove of the slide main body with the diameter of the
ball is defined as from 23 to 32.

THE EVIDENCE
The Examiner relies upon the following evidence:
Kato JP 12-046052 A Feb. 15, 2000
Appellant’s Admitted Prior Art (AAPA) on pages 1-3 of the
Appellant’s Specification

THE REJECTION
The Appellant seeks review of the Examiner’s rejection of claim 3
under 35 U.S.C. § 103(a) as being unpatentable over Kato and AAPA.

ISSUES
The Examiner found that Kato discloses the claimed linear guide
device, and discloses both a range of values for the effective number of
rolling elements and a specific value of an effective number of rolling
elements as being 31. The Examiner found that AAPA discloses a ball
diameter of 4.762 mm for use in the linear guide device of Kato, and that
such a ball diameter, when multiplied by the 31 rolling elements of Kato,
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results in a length of the loaded rolling element groove that falls within the
range claimed. Ans. 3.
Appellant argues that the Examiner erred (1) in determining that Kato
discloses the narrow range with sufficient specificity to anticipate claim 3;
(2) in failing to consider whether Kato’s broad range disclosure in any way
suggests the unexpected results underlying the invention of claim 3; and (3)
in failing to provide a motivational statement as to why one of ordinary skill
would have been led to focus on the claimed narrow range of the number of
rolling elements. App. Br. 10.
The issues presented by this appeal are:
Has Appellant shown the Examiner erred in finding that the disclosure
in Kato of both a range of the number of effective rolling elements of 20 to
50, and a specific value of the number of effective rolling elements of 31,
discloses with sufficient specificity the claimed range of the number of
effective rolling elements of 23 to 32?
Has Appellant shown the Examiner erred in improperly weighing the
evidence of unexpected results of the claimed range when such evidence is
compared with the disclosure in Kato?
Has Appellant shown the Examiner erred in failing to provide a
reason why one having ordinary skill in the art would have been led, based
on the prior art, to the range of rolling element numbers as recited in
claim 3?

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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Kato discloses a linear guide device including an axially extending
guide rail 1 having rolling element rolling grooves 3a, 3b on both
sides, a slider 2 bridged over the guide rail and comprising a slider
main body 2A having loaded rolling element rolling grooves 5a, 5b
opposed to the rolling element rolling grooves of the guide rail,
and having rolling element channels 6a, 6b penetrating in the axial
direction, with an end cap 2B fixed to each end of the slider main
body and having rolling element circulation channels 12 that
communicate with both of the rolling element rolling grooves and
the rolling element channels, and plural rolling elements B,
arranged such that they can circulate under rolling through both of
the rolling element rolling grooves, the rolling element circulation
channels, and the rolling element channels. Kato, paras. 0014-
0015, 0019, figs. 1, 3, 4.1
2. Kato discloses that the number of effective rolling elements is a
value obtained by dividing the length of the loaded rolling element

1 Citations to Kato throughout this Opinion refer to the Official PTO
Translation of Kato provided by the Examiner (PTO 08-1303), translated by
FLS, Inc., dated December 2007.
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groove of the slide main body with the diameter of the ball. Kato,
para. 0017.
3. Kato discloses that the number of effective rolling elements is a
value in the range of 20 to 50. Kato, para. 0027.
4. Kato discloses an embodiment in which the number of effective
rolling elements is 31. Kato, paras. 0017, 0021.
5. AAPA discloses using a rolling element having a diameter of
4.762 mm in the linear guide device disclosed in Kato. Spec.
2:16-23.
6. A linear guide device having 31 rolling elements, where each
element has a diameter of 4.762 mm, has a length of the loaded
rolling element rolling groove of the slide main body, according to
the equation disclosed in Kato, of 147.622 mm.
7. Figure 3 of Appellant’s application shows a relation between the
amount of the displacement component (µm) of rolling element
passage vibrations and the number of effective rolling elements in
a case of the ball diameter of 4.762 mm. Spec. 8:3-8. The data
points in Figure 3 cover linear guide devices having between
approximately 16 and 47 rolling elements. Fig. 3.
8. Figure 4 of Appellant’s application shows a relation between the
amount of the displacement component (µm) of rolling element
passage vibrations and the number of effective rolling elements in
a case of the ball diameter of 5.556 mm. Spec. 9:2-8. The data
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points in Figure 4 cover linear guide devices having between
approximately 16 and 47 rolling elements. Fig. 4.
9. Figure 9 of Kato discloses a linear guide device implemented using
31 rolling elements each having a diameter of 7/32 inches
(equivalent to 5.556 mm) and thus having a length of the loaded
rolling element rolling groove of the slide main body of
172.236 mm.

PRINCIPLES OF LAW
It is well established that the disclosure of a genus in the prior
art is not necessarily a disclosure of every species that is a
member of that genus. There may be many species
encompassed within a genus that are not disclosed by a mere
disclosure of the genus. On the other hand, a very small genus
can be a disclosure of each species within the genus.
Atofina v. Great Lakes Chem. Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)
(citations omitted) (A temperature range of over 100 degrees, namely, 100 to
500 °C, was held not to anticipate a temperature range, namely, 330 to
450 °C, encompassed entirely within the disclosed range.) The disclosure of
a small genus may anticipate the species of that genus even if the species are
not themselves recited. See Bristol-Myers Squibb Co. v. Ben Venue Labs.,
Inc., 246 F.3d 1368, 1380 (Fed. Cir. 2001); In re Petering, 301 F.2d 676,
681 (CCPA 1962) (Disclosure of specific preferences in connection with
general formula constituted a description of a definite and limited class of
compounds, namely 20, and was sufficient to anticipate the claimed
structure.)
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Moreover, in Atofina, the court held that a disclosed preferred range
of 150 to 350 °C did not anticipate the claimed range of 330 to 450 °C even
though the upper end point fell within the claimed range. 441 F.3d at 1000
(finding that “[t]he disclosure is only that of a range, not a specific
temperature in that range, and the disclosure of a range is no more a
disclosure of the end points of the range than it is of each of the intermediate
points.”).
When an article is said to achieve unexpected (i.e., superior) results,
those results must logically be shown as superior compared to the results
achieved with other articles. Moreover, an applicant relying on comparative
tests to rebut a prima facie case of obviousness must compare his claimed
invention to the closest prior art. In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).

ANALYSIS
The Examiner’s rejection is premised on the finding that Kato
anticipates the claimed linear guide device except that Kato does not
disclose the specific length of the loaded rolling element groove. The
Appellant’s argument that the Examiner erred by failing to provide a
motivational statement as to why one having ordinary skill in the art would
have been led to the narrow range of 23 to 32 rolling elements based on
Kato’s disclosure of the broader range of 20 to 50 rolling elements, is not
persuasive of error. The Examiner’s conclusion of obviousness is based on
the finding that Kato alone discloses the claimed range of the number of
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rolling elements with sufficient specificity to meet the claim. Ans. 3. The
Examiner provided an adequate motivational statement for the combination
of Kato and the AAPA, viz, that “one of ordinary skill in the art would have
readily recognized the obviousness of combining the linear guide device of
Kato with a teaching of known rolling element diameters at the time of the
invention” (Ans. 5), to result in a length of the loaded rolling element groove
that falls within the range claimed. Appellant has not challenged this
reasoning provided by the Examiner.
As such, one question before us is whether Kato discloses the claimed
range of the number rolling elements with sufficient specificity to meet the
claim. We find that it does. While Kato discloses a broader range of 20 to
50 rolling elements (Fact 3), it also discloses a specific number of rolling
elements in one embodiment that falls within the claimed range (Fact 4).
This distinguishes the present case from the facts presented in Atofina, on
which the Appellant relies. Contrary to Atofina, the Examiner in the present
case does not rely on one of the end points of the disclosed 20 to 50 range of
Kato as the basis for the finding that Kato discloses the claimed range of 23
to 32 rolling elements with sufficient specificity. Rather, the Examiner
found that the claimed range (the species of 23 to 32 rolling elements) is
entirely encompassed by the range disclosed in Kato (the genus of 20 to 50
rolling elements) and found that Kato discloses a specific number of rolling
elements, i.e., 31, that falls within the claimed range. It is the combination
of these two findings that forms the basis for the Examiner’s determination
that Kato discloses the claimed range with sufficient specificity to meet the
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claim. The fact that the prior art in the present case contains a specific
disclosure of a value that falls squarely within the claimed range
distinguishes the facts before us from the facts before the court in Atofina.
In Atofina, the prior art was missing any specific disclosure of a value that
fell within the claimed range. 441 F.3d at 1000.
In this case, even if we were to accept as true that portions of the
claimed range would not have been obvious in view of the disclosure of the
generic range in Kato, Appellant has failed to show that the Examiner erred
in concluding that Kato’s disclosure of the use of 31 rolling elements would
have rendered the claimed invention obvious to one having ordinary skill in
the art for at least one point within the claimed range of the number of
elements. “[C]laims are unpatentable when they are so broad as to read on
obvious subject matter even though they likewise read on non-obvious
subject matter.” In re Mraz, 455 F.2d 1069, 1072-73 (CCPA 1972) (holding
that claims reciting rolls having a maximum groove angle not exceeding 15°
reads on prior art rolls having a 6° or greater groove angle and thus the
claims are unpatentable because they are so broad as to read on obvious
subject matter); see also Muniauction, Inc. v. Thomson Corp., 532 F.3d
1318, 1328 n.4 (Fed. Cir. 2008) (noting the “long-established rule that
‘[c]laims which are broad enough to read on obvious subject matter are
unpatentable even though they also read on nonobvious subject matter.’”).
We now turn to Appellant’s argument that the claimed range achieves
unexpected results over the prior art. Here, the closest prior art is the Kato
linear guide device having 31 rolling elements. When such a device is
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implemented using conventionally-sized rolling elements having a diameter
of 4.762 mm, which results in a length of the loaded rolling element rolling
groove of the slide main body of 147.622 mm, such a device would exhibit
the same displacement component of rolling element passage vibration as
the displacement component of the claimed linear guide device.
Appellant argues that the “range of unexpected results is shown in the
non-monotonically-decreasing vibration performance region between
element number 23 to 32 illustrated in present Fig. 3….” App. Br. 8.
Figures 3 and 4 of Appellant’s application show a relation between the
amount of the displacement component (µm) of rolling element passage
vibrations and the number of effective rolling elements in the case of the ball
diameter of 4.762 mm and 5.556 mm, respectively (Facts 7, 8). Appellant
compares the vibration suppression in the claimed range of 23 to 32 rolling
elements with monotonically-decreasing vibration response throughout the
entire range of 20 to 50 rolling elements disclosed in Kato. Appellant fails
to provide evidence to show that the claimed device exhibits unexpected
results when compared to a linear guide device having 31 rolling elements,
as disclosed in Kato. As such, Appellant’s Figures fail to show unexpected
results when compared to the closest prior art.
We further note that Figure 9 of Kato is a graph indicating the
relationship between the effective number of balls and the extent of the
rolling passing vibrations (measured in μm). Kato 18. The description of
the legend (1) in Figure 9 states that the data on the graph was produced
using a steel ball having a diameter of 7/32 inches, which corresponds to
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5.556 mm. Kato 22, fig. 9. The graph also appears to show a data point that
was produced using a linear guide device having 31 balls. Using the
equation provided in Kato for calculating the length of the loaded rolling
element rolling groove of the slide main body as the product of the number
of balls and the ball diameter (Fact 2), the length of the loaded rolling
element rolling groove equates to 172.236 mm, which falls within the
claimed range of 109.5 mm to 177.8 mm. As such, Figure 9 of Kato appears
to disclose a linear guide device having the same structure as called for in
claim 3 (see Fact 1), having the length of the loaded rolling element rolling
groove of the slide main body between 109.5 mm and 177.8 mm, and having
the number of effective rolling elements as a value obtained by dividing the
length of the loaded rolling element groove of the slide main body with the
diameter of the ball (see Fact 2) as between 23 and 32 (Fact 9). In other
words, Figure 9 of Kato discloses a device that anticipates claim 3. A
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and In
re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). As such, we further affirm
the Examiner’s rejection of claim 3 based on this understanding of the
disclosure of Kato.

CONCLUSIONS
Appellant has failed to show the Examiner erred in finding that the
disclosure in Kato of both a range of the number of effective rolling
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elements of 20 to 50, and a specific value of the number of effective rolling
elements of 31, discloses with sufficient specificity the claimed range of the
number of effective rolling elements.
Appellant has also failed to show the Examiner erred in improperly
weighing the evidence of unexpected results of the claimed range when such
evidence is compared with the disclosure in Kato.
Appellant has also failed to show the Examiner erred in failing to
provide a reason why one having ordinary skill in the art would have been
led, based on the prior art, to the range of rolling element numbers as recited
in claim 3.

DECISION
The decision of the Examiner to reject claim 3 is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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