Ex Parte Horng

Patent Trial and Appeal Board

Feb 26, 2016

12343605 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/343,605 12/24/2008
69638 7590 02/26/2016
KAMRATH IP Lawfirm, PA
4825 Olson Memorial Highway, Suite 150
Golden Valley, MN 55422
FIRST NAMED INVENTOR
Alex Horng
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
PK 10858US 4709
EXAMINER
ANDREWS, MICHAEL
ART UNIT PAPER NUMBER
2834
MAILDATE DELIVERY MODE
02/26/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX HORNG
Appeal2013-009146
Application 12/343,605
Technology Center 2800
Before MICHELLE R. OSINSKI, JILL D. HILL, and ERIC C. JESCHKE,
Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Alex Homg (Appellant)1 appeals under 35 U.S.C. § 134 from the
Examiner's final decision rejecting claims 2, 5, 6, and 11-13. Claims 1 and
7-10 are cancelled, and claims 3 and 4 are withdrawn. App. Br., Claims
App. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellant, the real party in interest is Sunonwealth Electric
Machinery Industry Co., Ltd. App. Br. 1.
Appeal2013-009146
Application 12/343,605
THE CLAIMED SUBJECT MATTER
Claim 13, reproduced below, is the sole independent claim and is
representative of the claimed subject matter on appeal.
13. A motor comprising:
a base having a shaft tube with an assembling hole, with
the shaft tube having an open end and a closed end;
a stator mounted around the shaft tube;
a retaining seat having a first axial hole and received in the
assembling hole, with the retaining seat disposed at the closed
end of the shaft tube, with an outer diameter of the retaining seat
being equal to a diameter of the assembling hole;
a bearing having a center hole and received in the
assembling hole of the shaft tube, with the bearing abutting the
retaining seat;
a retaining ring having a second axial hole and received in
the assembling hole of the shaft tube, with an outer diameter of
the retaining ring being equal to the diameter of the assembling
hole, with the bearing sandwiched and positioned between the
retaining ring and the retaining seat, wherein the diameter of the
second axial hole of the retaining ring is larger than the diameter
of the first axial hole of the retaining seat; and
a rotor having a shaft with a first annular groove and a
second annular groove formed on an outer periphery thereof to
respectively form a first neck and a second neck of the shaft, with
an outer diameter of the first neck being smaller than a diameter
of the first axial hole of the retaining seat and an outer diameter
of the second neck being smaller than a diameter of the second
axial hole of the retaining ring, with the shaft passing through the
second axial hole, the center hole and the first axial hole, with
the retaining seat and the retaining ring surrounding and partially
extending into the first annular groove and the second annular
groove respectively, wherein each of the first and second annular
grooves have a diameter, wherein the diameter of the second
annular groove is larger than the diameter of the first annular
groove.
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Appeal2013-009146
Application 12/343,605
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Mori tan
Homg '525
Homg '957
us 5,623,382
US 2007/0152525 Al
US 2007 /0284957 Al
REJECTIONS
Apr. 22, 1997
July 5, 2007
Dec. 13, 2007
I. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Homg '957 and Moritan. Final Act. 3-6.
II. Claims 2, 5, 6, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Homg '957, Moritan, and Homg '525. Id. at
6-9.
OPINION
The Examiner finds that Homg '957 teaches substantially all of the
limitations of independent claim 13, except for those relating to a "second
annular groove formed on an outer periphery of the shaft [] to form a second
neck." Final Act. 3-5. More particularly, because the Examiner finds
Homg '957 lacks a second annular groove on the shaft to form a second
neck, the Examiner finds Homg '957 necessarily lacks teachings that (i) the
outer diameter of the second neck is smaller than the diameter of the second
axial hole of retaining ring 24;2 and (ii) the first groove (necking 13 on shaft
2 Claim 13 provides for "a rotor having a shaft with a first annular groove
and a second annular groove formed on an outer periphery thereof to
respectively form a first neck and a second neck of the shaft, with ... an
outer diameter of the second neck being smaller than a diameter of the
second axial hole of the retaining ring." App. Br., Claims App.
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Application I2/343,605
I I) and the second groove each have a diameter, wherein the diameter of the
second annular groove is larger than the diameter of necking I 3. 3 See id. at
5; see also Homg '957, Fig. 3 (showing elements I I, I3, 24).
To remedy these deficiencies, the Examiner turns to Moritan's
teaching of motor shaft 203 with second annular groove 203c formed on an
outer periphery thereof to form a second neck. Final Act. 5 (citing Moritan,
l:IO-I3, 7:24--26, 8:I8-20, Fig. IA). The Examiner also looks to Moritan's
teaching that the outer diameter of the second neck is smaller than a
diameter of the second axial hole. Id. (citing Moritan, Fig. IA). The
Examiner concludes that it would have been obvious to modify Homg '957
to include a second annular groove in the shaft, as taught by Moritan, "for
axially supporting the rotor thereof, since Moritan teaches that the retaining
ring locks the rotor in place while allowing it to rotate and preventing
damage thereto." Id. at 5---6 (citing Moritan, 8:3 I-36).
The Examiner acknowledges that the combination of Homg '957 and
Mori tan "does not expressly disclose that the diameter of the second annular
groove is larger than the diameter of the first annular groove," but concludes
that it would have been obvious to one of ordinary skill in the art "to
construct the first and second annular grooves of Homg [']957 and Moritan
with the relative dimensions claimed, having no effect on its function." Id.
at 6 (citing Gardner v. TEC Systems, Inc., 725 F.2d I338 (Fed. Cir. I984),
cert. denied, 469 U.S. 830 (1984)). 4
3 Claim I 3 also provides that "each of the first and second annular grooves
have a diameter, wherein the diameter of the second annular groove is larger
than the diameter of the first annular groove." App. Br., Claims App.
4 The Examiner also concludes that "the claimed dimensions would have
been obvious to one of ordinary skill in the art" because the modification to
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Appeal2013-009146
Application 12/343,605
As to those limitations found by the Examiner to be taught by Homg
'957, the only disagreement by Appellant relates to the claimed retaining
ring. The Examiner finds that Homg '957 teaches a retaining ring-washer
24. Final Act. 4. The Examiner finds that (i) washer 24 has an axial hole
with a diameter larger than that of the axial hole of limit member (or
retaining seat) 30, (ii) washer 24 is received in the assembling hole of shaft
tube 21, (iii) the outer diameter of washer 24 is equal to the diameter of the
assembling hole of shaft tube 21, and (iv) bearing 23 is sandwiched between
washer 24 and retaining seat 30. Id. (citing Homg '957 i-f 24, Fig. 3).
Appellant argues that washer 24 cannot be considered a retaining ring
when the term is construed within the context of the Specification. App. Br.
3. More particularly, Appellant argues that washer 24 does not "retain" the
shaft because it doesn't extend into any groove of the shaft as there is no
teaching that washer 24 retains spindle 11 in shaft tube 21 or in bearing 23.
Reply Br. 2; App. Br. 3. We are not persuaded by Appellant's argument.
Appellant has not directed us to any lexicographical definition of "retaining
ring" set forth in the Specification that would require it to have the particular
functionality or structural interactions argued by Appellant, 5 and we decline
to import any specific characteristics of the retaining ring that may be set
forth in the Specification into the claims. See Superguide Corp. v. DirecTV
Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("Though understanding the
Homg '957 "would have involved a mere change in the size of a component,
and a change in size is generally recognized as being within the level of
ordinary skill in the art." Ans. 3 (citing In re Rose, 220 F .2d 459 ( CCP A
1955)).
5 We also note that the claim itself fails to recite such functionality or
structural interactions.
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Application 12/343,605
claim language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.").
Appellant next contends that one of ordinary skill in the art looking to
modify Horng '957's motor spindle system structure would not have utilized
Moritan's annular groove 203c on shaft 203 without the magnetic attraction
force of Moritan, and further, that there wouldn't have been an expectation
of success in stabilizing the position of the rotor without the magnetic
attraction force. App. Br. 3--4; Reply Br. 2. We are not persuaded by
Appellant's contention. Appellant provides no evidence supporting this
contention, only attorney argument. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence."). Moreover, the Examiner's use of only a portion of Moritan's
teachings is appropriate in that all of the features of the secondary reference
need not be bodily incorporated into the primary reference (see In re Keller,
642 F.2d 413, 425 (CCPA 1981)), and the ordinary artisan is not required to
blindly follow the teaching of one prior art reference over the other without
the exercise of independent judgment (Lear Siegler Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984)). Appellant has not provided persuasive
evidence or technical reasoning to support that the Examiner's proposed
modification of Horng '957 would have been beyond the level of ordinary
skill in the art or unpredictable to a person of ordinary skill in the art. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
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Application 12/343,605
Appellant further argues that "as the prior art does not show first and
second grooves in the rotor shaft and first and second retaining elements in a
single motor, the prior art cannot suggest the relationships of the diameters
of the annular grooves and of the axial holes of the retaining seat." App. Br.
4. Appellant's first specific example relates to the relationship of the
diameter of the second axial hole of the retaining ring to the first axial hole
of the retaining seat. Id. at 4--5. We are not persuaded of Examiner error.
The Examiner has adequately shown that the diameter of the hole of washer
(or retaining ring) 24 is greater than the diameter of the hole of limit
structure (or retaining seat) 30. Homg '957, Fig. 3; Ans. 5-6.
Appellant's second specific example relates to the relationship
between the diameters of the annular grooves in which the diameter of the
second annular groove is larger than that of the first annular groove. App.
Br. 5. Appellant argues that the smaller diameter of the first annular groove
as compared to the second annular groove creates an increased shoulder
distance at the first annular groove that is abutted by retaining seat 30. Id.
Appellant argues that when this increased shoulder distance is coupled with
the smaller first axial hole of the retaining seat (which allows the retaining
seat to extend further radially inwardly of shaft 61 ), an "improved retaining
effect" is achieved that also avoids leakage of lubricating oil. Id.
The Examiner responds that there is no disclosure regarding the
purported relationship involving the distances between the second annular
groove and retaining ring and between the first annular groove and retaining
seat, such that there is no evidence of the purported beneficial effects. Ans.
6. The Examiner also finds that the improved retaining effect is disclosed as
being due to the prevention of radial and axial movement of the retaining
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Application 12/343,605
seat after being mounted in the shaft tube through the use of grooves in
general, as opposed to the use of any particular dimensions of the first and
second annular grooves, relative to one another. Final Act. 3 (citing Spec.
5: 12---6: 17). The Examiner maintains that a device having the claimed
relative dimensions has not been shown to perform differently from the prior
art device, and thus, is not patentably distinct from the prior art device. Ans.
7. In this particular case, we agree with the Examiner. In the absence of any
explanation in the Specification or any other evidence in support of
Appellant's contention that the relative dimensions have an effect on the
function of the motor, we are not persuaded that Appellant has sufficiently
demonstrated the criticality of the specific limitation such that the
Examiner's reliance on a rationale reasoned from legal precedent is
inappropriate in this case or in error.
For the foregoing reasons, we are not persuaded of Examiner error,
and we sustain the Examiner's rejection of independent claim 13, as well as
dependent claims 2---6, 11, and 12 for which Appellant relies on the same
arguments and reasoning. See App. Br. 6.
New Ground of Rejection
We enter the following new ground of rejection, under the provisions
of 37 C.F.R. § 41.50(b): claims 2, 5, 6, and 11-13 are rejected under 35
U.S.C. § 112, first paragraph, as failing to meet the written description
requirement. Compliance with the written description requirement is a
question of fact. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.
Cir. 1991 ). In order to comply with the written description requirement, the
applicant's disclosure must "convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he or she was in possession of the
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Application 12/343,605
[claimed] invention." Vas-Cath, Inc. at 1563---64. An applicant shows
possession of the claimed invention by describing the claimed invention
with all of its limitations using such descriptive means as words, structures,
figures, diagrams, and formulas that fully set forth the claimed invention.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Upon our review of Appellant's Specification, nowhere do we find a
description of each of the first and second annular grooves having a
diameter, wherein the diameter of the second annular groove is larger than
the diameter of the first annular groove. In connection with the Amendment
in which this language was added to the claims, Appellant pointed to the
disclosure in the Specification that the diameter of second axial hole 52 of
retaining ring 50 is larger than that of first axial hole 32 of retaining seat 30.
Amendment After Final, 6 (July 14, 2010) (citing Spec. 16:2-17: 18, Fig. 7).
This portion of the Specification, however, fails to specifically mention the
diameters of the grooves. Merely because the diameter of the second axial
hole of the retaining ring is larger than the first axial hole of the retaining
seat does not necessarily mean that the grooves into which the retaining ring
and retaining seat are disposed, respectively, have the claimed relationship.
Of particular significance, the Examiner has found, and we agree, that "there
is no disclosure ... that the distances between the second annular groove
and the retaining ring, and between the first annular groove and the retaining
seat, have the relationship alleged by the Appellant." Ans. 6.
To the extent that the Figures may be alleged to support this
limitation, the Figures are not, based on any evidence before us, drawn to
scale. Thus, the Figures cannot act as the sole basis for written description
support for the limitations at issue. See In re Olson, 212 F.2d 590, 591
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Application 12/343,605
(CCPA 1954) (atlirming new matter rejection, stating "[o]rdinarily drawings
which accompany an application for a patent are merely illustrative of the
principles embodied in the alleged invention claimed therein and do not
define the precise proportions of elements relied upon to endow the claims
with patentability"). This is especially true considering that any possible
perceived difference between the illustrated diameters of the necks formed
by the first and second annular groove is extremely slight. Spec. Figs. 5-7.
Appellant's disclosure, thus, does not evidence that Appellant was in
possession of a rotor having a shaft with a first annular groove and a second
annular groove formed on an outer periphery thereof, wherein each of the
first and second annular grooves have a diameter, wherein the diameter of
the second annular groove is larger than the diameter of the first annular
groove. For the foregoing reason, independent claim 13 fails to meet the
written description requirement set forth in the first paragraph of 35 U.S.C.
§ 112. Claims 2, 5, 6, 11, and 12 depend from claim 13, and thus,
necessarily include all limitations present in claim 13. These claims,
therefore, also fail to meet the written description requirement set forth in
the first paragraph of 35 U.S.C. § 112.
DECISION
The Examiner's decision to reject claims 2, 5, 6, and 11-13 is
AFFIRMED.
We enter a NEW GROUND OF REJECTION of claims 2, 5, 6, and
11-13 under 35 U.S.C. § 112, first paragraph as failing to comply with the
written description requirement.
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Application 12/343,605
Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection of claims 2, 5, 6, and
11-13, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two option with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
exammer ....
(2) Request rehearing. Request the proceeding be reheard
under§ 41.52 by the Board upon the same record ....
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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