Ex Parte Gabrys

Board of Patent Appeals and Interferences

Mar 26, 2007

10148935 (B.P.A.I. Mar. 26, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTOPHER W. GABRYS
____________

Appeal 2007-0022
Application 10/148,935
Technology Center 2100
____________

Decided: March 26, 2007
____________

Before ANITA PELLMAN GROSS, STUART S. LEVY, and LINDA E.
HORNER, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-22 and 24, all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2007-0022
Application 10/148,935

2

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant invented a flywheel and flywheel energy storage system, where
the flywheel is formed by stacking several steel discs together instead of using a
single thick cylinder (Specification 4: 8-9). Claims 1 and 14, reproduced below,
are representative of the subject matter on appeal.
1. A flywheel for an energy storage system comprised of
a low pressure housing, a flywheel supported for rotation
in said housing on a bearing system, and a motor and
generator for accelerating and decelerating said flywheel
for storing and retrieving energy, said flywheel
comprising:
an axial stack of a plurality of steel discs
connected together, said discs being free of axial through
holes;
said discs being quenched for strength prior to
assembly of said flywheel, and tempered for toughness;
adjacent discs in said stack having axial faces
abutting each other across the entire surface thereof to
create a substantially solid unitary flywheel cylinder
when assembled from said discs.

Appeal 2007-0022
Application 10/148,935

3
14. A flywheel energy storage system having a flywheel
supported for rotation on a bearing system inside a low
pressure housing, said flywheel having an attached motor
and generator for accelerating and decelerating said
flywheel for storing and retrieving energy, said flywheel
comprising:
multiple axially stacked steel discs, said discs
being free of axial through holes and having an outside
diameter equal to a desired outside diameter of said
flywheel;
said discs are axially connected at a diameter that
is greater than 80% of said outside diameter of said
flywheel.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Cachat US 3,775,831 Dec. 4, 1973
Rabenhorst US 4,244,240 Jan. 13, 1981
Hoshino US 4,385,845 May 31, 1983
Nakayama US 4,538,079 Aug. 27, 1985
The following rejections are before us for review.
1. Claims 14-21 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
2. Claims 1 and 7 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Rabenhorst.
3. Claim 1-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Hoshino and Rabenhorst.
Appeal 2007-0022
Application 10/148,935

4
4. Claims 1, 7, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakayama and Rabenhorst.
5. Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Nakayama, Hoshino, Rabenhorst, and Cachat.

ISSUES
Appellant contends that the Examiner erred in rejecting claims 14-21 under
35 U.S.C. § 112, first paragraph, because a person skilled in the art would
understand what is meant by the claimed “discs [being] axially connected at a
diameter that is greater than 80% of said outside diameter of said flywheel,” as
recited in claim 14 (Br. 17). Appellant further contends that the Examiner erred in
rejecting claims 1 and 7 under 35 U.S.C. § 102(b) and claims 1-11 under 35 U.S.C.
§ 103(a) because Rabenhorst fails to disclose a stacked disc steel flywheel (Br. 8,
11) as required by these claims. Appellant further contends that the Examiner
erred in rejecting claims 1, 7, 12, 13, 22, and 24 under 35 U.S.C. § 103(a) because
there would have been no motivation to modify the bolted-together flywheel of
Nakayama with the hole-less flywheel of Rabenhorst (Br. 14-16).
The issues before us are
• whether Appellant has shown that the Examiner erred in finding that the
specification fails to enable one skilled in the pertinent art to make and
use the invention of claims 14-21,
• whether Appellant has shown that the Examiner erred in finding that
Rabenhorst discloses a stacked disc steel flywheel, and
Appeal 2007-0022
Application 10/148,935

5
• whether Appellant has shown that the Examiner erred in finding a
motivation to combine the teachings of Nakayama and Rabenhorst.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Rabenhorst discloses an elastic joint for mounting and rotatably
coupling a flywheel to a shaft (Rabenhorst, Abstract).
2. Rabenhorst discloses that the elastic joint can be used with flywheel
structures having a shaft extending through the structure and with solid disc-type
flywheels without a through-hole (Rabenhorst, col. 2, ll. 10-17 and col. 3, ll. 22-
25).
3. Rabenhorst further discloses that the elastic joint can be used with
filament flywheels or conventional isotropic steel flywheels (Rabenhorst, col. 3, ll.
15-20).
4. The rotor 16 shown in the embodiment of Figure 1 of Rabenhorst is
described as “comprising anisotropic elements wound about the hub 14”
(Rabenhorst, col. 3, ll. 31-34).
5. Rabenhorst shows in Figure 6 an embodiment having a flywheel rotor
112 and states, “rotor 112 has no central aperture formed therein” (Rabenhorst, col.
5, ll. 55-56). Rabenhorst provides no disclosure as to the specific material or
construction of rotor 112.
6. The flywheel rotor 112 of Figure 6 is depicted in a similar fashion to
rotor 16 of Figure 1.
Appeal 2007-0022
Application 10/148,935

6
7. Accordingly, Rabenhorst appears to disclose in Figure 6 a flywheel
rotor comprising anisotropic elements wound about the hub, as in Figure 1.
8. Rabenhorst shows in Figure 7 another embodiment having a flywheel
rotor 130, which appears from the cross hatching to be made from a plurality of
metal discs, and a shaft 126 extending through a central aperture 128 of the rotor
130 (Rabenhorst, Figure 7 and col. 6, ll. 1-6). Rabenhorst provides no disclosure
as to the specific metal used or the method of construction of rotor 130.
9. Rabenhorst fails to teach or suggest a “flywheel cylinder with a
plurality of steel discs connected together, said discs being free of axial through
holes.”
10. The Examiner admits that Hoshino “fails to show the flywheel
cylinder with a plurality of steel discs connected together” (Answer 4).
11. The Examiner relies on Cachat only for the teaching of “a process of
producing a flywheel comprising steps of quenching and tempering the flywheel”
(Answer 8).
12. Cachat does not teach or suggest a “flywheel cylinder with a plurality
of steel discs connected together.”
13. The Examiner found that it would have been obvious to modify the
discs of Nakayama with the hole-less discs as taught by Rabenhorst “to provide a
more balanced flywheel system so that less vibration can be experienced thus
creating a more effective energy storage system” (Answer 6, 8).
14. The Examiner based this finding of motivation to combine on an
alleged teaching in Rabenhorst of using hole-less discs to provide a more balanced
Appeal 2007-0022
Application 10/148,935

7
flywheel system to reduce vibrations (Answer 14, citing to Rabenhorst, col. 2, ll.
24-37).
15. Rabenhorst does not teach forming a disc without holes in order to
reduce vibration. Rather, Rabenhorst teaches that its elastic joint, which connects
the flywheel rotor to the shaft, is used to reduce vibration (Rabenhorst, col. 2, ll.
24-37) (“Of equal significance is the ability of the present [elastic] joint to
attenuate flywheel-induced vibration such that the operating RPM range is above
the natural frequency of the apparatus. Additionally, both externally-induced
vibration … and torsional vibration … are attenuated through use of the elastic
joint”).
16. Claim 14 recites a flywheel comprising multiple axially stacked steel
discs, where the discs “are axially connected at a diameter that is greater than 80%
of said outside diameter of said flywheel.”
17. Claim 18 similarly recites a process for manufacturing a flywheel
comprising fabricating multiple steel discs and assembling the discs, “said
assembling including establishing contact between adjacent discs to at least 80% of
said diameters of said discs…”
18. These claim limitations would be clearly understood by one having
ordinary skill in the art, when read in light of the Specification, to mean that the
diameter of the connection between the stacked discs is greater than 80% of the
outside diameter of said flywheel.
19. The Specification, as filed, discloses
The discs 71 are then stacked axially and joined at the
outer diameter by welding, brazing or soldering. Other
Appeal 2007-0022
Application 10/148,935

8
methods of joining could also be used, such as bonding.
As shown, the discs 71 can have radiused or chamfered
outer diameter corners 74 to facilitate the joining process
by leaving room for the welding, brazing or soldering,
but these discs 71 are no "constant stress" design discs.
The radiused or chamfered outer diameter corners 74 also
allows the outer diameter of the assembled flywheel 70 to
be machined or ground to final dimension without un-
joining the discs 71. If the outer diameter is not going to
be ground, the corners can alternatively be left sharp.
(Specification 8: 30 – 9: 7).
20. The Specification further discloses
Another method of joining the discs is to put axial
joining layers between the discs, as shown in Fig. 12, to
produce an axially joined axially stacked disc flywheel
80. The flywheel 80 is constructed of multiple stacked
discs 81 and in most cases, shafts 82 and end plates 83.
In this configuration, the discs 81 are joined axially by
preferably brazing, soldiering [sic] or use of an adhesive.
Other methods of joining may also be used. A final
machining or grinding can be accomplished if desired
without separating the discs 81. (Specification 9: 19-24).
21. Claims 14 and 18, as now pending, are identical to original claims 14
and 18, and thus also form part of the original disclosure.
22. Based on this disclosure, one skilled in the pertinent art at the time of
the invention would have known how to weld, braze, solder, bond, or otherwise
join the disclosed steel discs to form a flywheel such that the diameter of the
connection between the discs is greater than 80% of the outside diameter of the
flywheel.

Appeal 2007-0022
Application 10/148,935

9
PRINCIPLES OF LAW
The PTO bears the initial burden when rejecting claims for lack of
enablement.
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial
burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided by
that claim is not adequately enabled by the description of
the invention provided in the specification of the
application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as
to the scope of enablement. If the PTO meets this
burden, the burden then shifts to the applicant to provide
suitable proofs indicating that the specification is indeed
enabling.
In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA
1971)).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether the
disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the
art to make and use the claimed invention without undue experimentation. In re
Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). “Enablement
is not precluded by the necessity for some experimentation . . . . However,
experimentation needed to practice the invention must not be undue
experimentation. The key word is ‘undue,’ not ‘experimentation.’” In re Wands,
858 F.2d at 736-737, 8 USPQ2d at 1404.
Appeal 2007-0022
Application 10/148,935

10
To evaluate whether a disclosure would require undue experimentation, the
Federal Circuit has adopted the following factors to be considered:
(1) The quantity of experimentation needed to make or use the invention
based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404. The examiner’s analysis
must consider all the evidence related to each of these factors, and any conclusion
of nonenablement must be based on the evidence as a whole. Id., 8 USPQ2d at
1404.
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
To determine whether a prima facie case of obviousness has been
established, we are guided by the factors set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), viz., (1) the scope and content of the
prior art; (2) the differences between the prior art and the claims at issue; and (3)
Appeal 2007-0022
Application 10/148,935

11
the level of ordinary skill in the art. In addition to our review of the Graham
factors, we also consider “whether a person of ordinary skill in the art, possessed
with the understandings and knowledge reflected in the prior art, and motivated by
the general problem facing the inventor, would have been led to make the
combination recited in the claims.” In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1337 (Fed. Cir. 2006). “From this it may be determined whether the overall
disclosures, teachings, and suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons having ordinary skill in the
art at the time of the invention-support the legal conclusion of obviousness.” Id.
(internal citations omitted).

ANALYSIS
The Examiner bases his rejection of claims 14-21 under 35 U.S.C. § 112,
first paragraph, on a finding that it is not clear what is meant by the claim
limitation that the discs are axially connected at a diameter that is greater than 80%
of the outside diameter of the flywheel. We find that the Examiner has not met his
burden of setting forth a reasonable explanation as to why the scope of protection
provided by these claims is not adequately enabled by the description of the
invention provided in the specification of the application. The Examiner has not
provided any discussion of why the Specification is not sufficiently complete to
enable one of ordinary skill in the art to make and use the claimed invention
without undue experimentation. What the Examiner appears to be arguing is that
the claim is indefinite under 35 U.S.C. § 112, second paragraph, or lacks sufficient
Appeal 2007-0022
Application 10/148,935

12
written description under 35 U.S.C. § 112, first paragraph. In any event, we find
the claim language sufficiently clear and definite, when read in light of the
Specification, such that one skilled in the art would be enabled to make and use the
invention without undue experimentation (Findings of Fact 16-22). Further, we
find sufficient written description for the recitations of independent claims 14 and
18 in claims 14 and 18 as originally filed (Finding of Fact 21). As such, we will
not sustain the Examiner’s rejection of claims 14-21 under 35 U.S.C. § 112, first
paragraph.
The Examiner bases his findings of anticipation of claims 1 and 7 and
obviousness of claims 1-11 on an interpretation that Rabenhorst discloses a
flywheel comprised of a plurality of steel discs connected together, where the discs
are free of axial through holes (Answer 3, 4). We disagree with the Examiner’s
reading of this reference.
Independent claim 1 recites that the flywheel comprises “an axial stack of a
plurality of steel discs connected together, said discs being free of axial through
holes.” As stated supra, Rabenhorst appears to show, in Figure 6, a flywheel rotor
comprising anisotropic elements wound around the hub, and does not provide any
written disclosure as to the specific material or construction of rotor 112 that would
support the Examiner’s position (Findings of Fact 4-7).
The Examiner’s reliance on Figure 7 of Rabenhorst to interpret Figure 6 is
misplaced (Answer 9). Rabenhorst clearly describes Figures 6 and 7 as two
separate embodiments (Findings of Fact 5, 8). Further, the Examiner’s reliance on
the general disclosure in Rabenhorst (col. 3, ll. 19-20) that the elastic joint can be
Appeal 2007-0022
Application 10/148,935

13
used with a variety of flywheels including conventional isotropic steel flywheels,
as a teaching that the flywheel depicted in Figure 6 is made of isotropic steel discs
is also misplaced (Answer 9). Rabenhorst is silent as to the specific material or
construction of rotor 112 of the embodiment in Figure 6 (Finding of Fact 5).
It may be reasonable to construe that Figure 6 is depicting a flywheel rotor
comprising anisotropic elements wound about the hub, because the rotor 112 of
Figure 6 is depicted in a similar fashion to rotor 16 of Figure 1 (Findings of Fact 4-
7). It is conjecture, however, to read Rabenhorst’s general statement as to the
variety of different types of flywheel material that could be used with Rabenhorst’s
elastic joint, to provide a teaching that the rotor 112 of Figure 6 is comprised of
steel discs. As such, we find no teaching or suggestion in Rabenhorst of a flywheel
cylinder with a plurality of steel discs connected together where the discs are free
of axial through holes (Finding of Fact 9). As such, we will not sustain the
Examiner’s rejection under 35 U.S.C. § 102(b) of independent claim 1 or its
dependent claim 7 as anticipated by Rabenhorst.
The Examiner admits that Hoshino fails to cure the deficiency of Rabenhorst
(Finding of Fact 10). As such, we will not sustain the Examiner’s rejection of
claims 1-11 under 35 U.S.C. § 103(a) as unpatentable over Hoshino and
Rabenhorst.
The Examiner bases his findings of obviousness of claims 1, 7, 12, 13, 22,
and 24 on a motivation to combine, inter alia, the teachings of Nakayama and
Rabenhorst (Findings of Fact 13, 14). In particular, the Examiner found it would
have been obvious to modify the discs of Nakayama with the hole-less discs of
Appeal 2007-0022
Application 10/148,935

14
Rabenhorst “to provide a more balanced flywheel system so that less vibration can
be experienced thus creating a more effective energy storage system” (Finding of
Fact 13). We disagree with the Examiner’s finding of motivation to combine these
references.
Rabenhorst, on which the Examiner relies for the teaching of using hole-less
discs to reduce vibration, does not teach that the structure of the discs (e.g.,
whether the discs are solid or have holes) has any bearing on the vibrations
experienced by the flywheel. Rather, Rabenhorst teaches that its elastic joint is
used to reduce such vibrations (Finding of Fact 15). As such, we find that the
Examiner failed to set forth a prima facie case of obviousness of claims 1, 7, 12,
13, 22, and 24. Further, neither Hoshino nor Cachat provides the missing teaching
of Rabenhorst (Findings of Fact 10, 11). As such, we will not sustain the
Examiner’s rejection of claims 1, 7, 12, and 13 under 35 U.S.C. § 103(a) as
unpatentable over Nakayama and Rabenhorst, and we will not sustain the
Examiner’s rejection of claims 22 and 24 as unpatentable over Nakayama,
Hoshino, Rabenhorst, and Cachat.

CONCLUSIONS OF LAW
We conclude the Examiner erred in rejecting claims 14-21 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the enablement requirement,
claims 1 and 7 under 35 U.S.C. § 102(b) as anticipated by Rabenhorst, claims 1-11
under 35 U.S.C. § 103(a) as unpatentable over Hoshino and Rabenhorst, claims 1,
7, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Nakayama and
Appeal 2007-0022
Application 10/148,935

15
Rabenhorst, and claims 22 and 24 under 35 U.S.C. § 103(a) as unpatentable over
Nakayama, Hoshino, Rabenhorst, and Cachat.

DECISION
The decision of the Examiner to reject claims 1-22 and 24 is REVERSED.

REVERSED

jrg
Appeal 2007-0022
Application 10/148,935

16
J. Michael Neary
53939 Pine Grove Road
LaPine, OR 97739