Ex parte JANG

Board of Patent Appeals and Interferences

Jun 30, 1998

08360866 (B.P.A.I. Jun. 30, 1998)

Application for patent filed December 21, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HO-JIN JANG
__________
Appeal No. 97-3201
Application No. 08/360,8661
__________
ON BRIEF
__________
Before STONER, Chief Administrative Patent Judge, ABRAMS and
STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claim 1, which is the only claim remaining
of record in the application.
Appeal No. 97-3201
Application No. 08/360,866
Our understanding of this reference has been obtained2
from a PTO translation, a copy of which is enclosed.
These rejections were set forth in the Examiner’s Answer3
as being in the alternative.
2
The appellant's invention is directed to a video cassette
recorder reel table driving device. The claim on appeal can
be found in an appendix to the Appeal Brief.
THE REFERENCES
The reference relied upon by the examiner to support the
final rejection is:
Japanese application (Akagi) 58-150158 Sep.2
6, 1983
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by the Japanese reference.
Claim 1 also stands rejected under 35 U.S.C. § 103 as
being unpatentable over the Japanese reference.3
The rejections are explained in the Examiner's Answer.
Appeal No. 97-3201
Application No. 08/360,866
3
The opposing viewpoints of the appellant are set forth in
the Appeal Brief.
OPINION
The Rejection Under Section 102
Anticipation under 35 U.S.C. § 102(b)is established
only when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every
element of the claimed invention. See In re Paulsen, 30 F.3d
1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994).
The claim before us is directed to a reel table driving
device for use in a video cassette recorder. The mechanism
requires, inter alia, a pair of idlers disposed adjacent to a
supply reel table and a take-up reel table, with each of the
idlers including axially spaced first and second gears with
said second gear of the first idler having more
teeth than the first gear of the first idler to
rotate the supply reel table at a relatively high
speed, and said second gear of the second idler has
[sic, having] fewer teeth than the first gear of the
second idler to rotate the take-up reel table at a
relatively low speed.
Appeal No. 97-3201
Application No. 08/360,866
4
There is no explicit teaching in the Japanese reference
that the first and second gears of the idlers have different
numbers of teeth, much less that they be arranged on the two
gear sets in the manner specified. Moreover, since the first
and second gears of each of the idlers appear from the
drawings to be of the same diameter, in the absence of
amplifying information the presumption is that each has the
same number of teeth, in our view. For these reasons, we
agree with the appellant that the Japanese reference fails to
disclose all of the subject matter recited in the claim, and
thus the rejection on the basis of anticipation cannot be
sustained.
The Rejection Under Section 103
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). However, the mere fact that the prior
art structure could be modified does not make such a
modification obvious unless the prior art suggests the
Appeal No. 97-3201
Application No. 08/360,866
5
desirability of doing so. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
As we stated above, there is no explicit teaching in the
Japanese reference that the first and second gears of each
idler have different numbers of teeth. It is the examiner’s
position, however, that it would have been obvious to one of
ordinary skill in the art “to provide a difference in the
number of gear teeth between the stepped gears to obtain a
desired gear ratio based upon the intended use” (Answer, page
4). We do not agree.
The gear ratio “desired” in the reference apparently is 1:1,
that is, the same number of teeth on each gear. We fail to
perceive any teaching, suggestion or incentive which would
have led one of ordinary skill in the art to alter this ratio
to meet the terms of the claim, other than the hindsight
accorded one who first viewed the appellant’s disclosure.
This, of course, is
impermissible.
This rejection also will not be sustained.
SUMMARY
Appeal No. 97-3201
Application No. 08/360,866
6
Neither of the rejections is sustained.
The decision of the examiner is reversed.
REVERSED
BRUCE H. STONER, JR., Chief )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Anderson Kill Olick & Oshinsky
1251 Avenue of the Americas
New York, NY 10020