Ex parte Joffe

Board of Patent Appeals and Interferences

May 24, 2000

08480561 (B.P.A.I. May. 24, 2000)

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(2) is not binding precedent of the Board.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. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BENJAMIN JOFFE
_____________
Appeal No. 1999-1779
Application No. 08/480,561
______________
HEARD: MAY 4, 2000
_______________
Before ABRAMS, FRANKFORT and NASE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-7, 19 and 20. Claims 8-18 have
been withdrawn from consideration as being directed to non-
elected species.
The appellant’s invention is directed to a wobble-
Appeal No. 1999-1779
Application No. 08/480,561
2
absorbing magnetic bearing for a drive system. The claims on
appeal have been reproduced in an appendix to the Brief.
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THE REFERENCE
The reference relied upon by the examiner to support the
final rejection is:
Bardocz 3,720,849 Mar. 13,
1973
THE REJECTIONS
Claims 1-7, 19 and 20 stand rejected under 35 U.S.C. §
112, first and second paragraphs, on the basis that the
claimed invention is not described in such full, clear,
concise and exact terms as to enable any person skilled in the
art to make and use the same, and/or for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
Claims 1-7, 19 and 20 also stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Bardocz.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 29) and the final rejection
(Paper No. 18), and to the Appellant’s Briefs (Papers No. 28
Appeal No. 1999-1779
Application No. 08/480,561
The propriety of the examiner’s refusal to include claims1
12, 17 and 18 under the elected species, from which relief is
requested on page 24 of the Brief, is a petitionable matter,
not an appealable one. See Manual of Patent Examining
Procedure (MPEP) §§ 1002 and 1201.
4
and 31).
OPINION1
The Rejections Under 35 U.S.C. § 112
Considering first the rejection under the first paragraph
of section 112, the examiner has not specified, nor can we
determine from the expression of the rejection, whether the
shortcoming in the appellant’s disclosure is under the
description requirement or the enablement requirement. In any
event, we point out that in order to meet the written
description requirement, the appellant does not have to
utilize any particular form of disclosure to describe the
subject matter claimed, but “the description must clearly
allow persons of ordinary skill in the art to recognize that
[he or she] invented what is claimed.”
In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed.
Cir. 1989). Put another way, “the applicant must . . . convey
with reasonable clarity to those skilled in the art that, as
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of the filing date sought, he or she was in possession of the
invention.” Vas-Cath, Inc v. Muhurkar, 935 F.2d 1555, 1563-
64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). In our view, the
description of the invention provided in the application is
sufficient to convey to one of ordinary skill in the art that
the appellant was in possession of the claimed invention at
the time the application was filed.
The test for enablement is whether one skilled in the art
could make and use the claimed invention from the disclosure
coupled with information known in the art without undue
experimentation. See United States v. Telectronics, Inc.,
857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988), cert.
denied, 490 U.S. 1046 (1989). It is our opinion that the
disclosure of the invention provided in the specification
meets this test.
We therefore will not sustain the rejection under 35
U.S.C. § 112, first paragraph.
Turning to the rejection under the second paragraph of
Section 112, while not explicitly stated, it would appear that
the examiner believes the claims are indefinite because the
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terms “driving bearing element,” “driven bearing element,”
“means for receiving,” and “means for applying driving,” which
are present in claim 1, and “means for applying,” which
appears in claims 1 and 19, do not provide “clear elucidation”
of the claimed subject matter (see final rejection, page 3).
The second paragraph of 35 U.S.C. § 112 requires claims to set
out and circumscribe a particular area with a reasonable
degree of precision and particularity. See, for example, In
re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA
1977). In making this determination, the definiteness of the
language employed in the claims must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art
and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in
the pertinent art. Id.
It is clear to us from the explanation provided on pages
1 through 23 of the specification, with particular reference
to Figures 1-5 and from reading in their entirety the portions
of the claims in which the phrases quoted above appear, that
one of ordinary skill in the art would understand the terms
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mentioned by the examiner. That is, relating the terms to the
chosen species of Figure 5, the driving bearing element is the
lower element, as shown, to which the numeral 112 is applied,
the driven bearing element is the upper element, as shown, to
which the numeral 113' is applied, the means for receiving
driving contact is the bottom portion of the lower element or
elements attached thereto (such as bar 210 of Figures 1-3),
the means for applying driving contact from the driven bearing
element is the upper portion of the upper element (such as the
threaded opening of Figure 5), and the means for applying
magnetic force is the magnet 17.
The examiner’s position appears to be that all of the
elements recited in the claims before us must be shown in
Figure 5, which is the chosen embodiment. We know of no
requirement that such be the case. The fact of the matter is
that the entirety of the structure is shown in Figures 1-3,
with details of the various magnetic bearings being shown in
the other figures. From our perspective, the claims are not
indefinite, and one of ordinary skill in the art would have no
trouble determining the metes and bounds of the claimed
subject matter.
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We will not sustain the rejection under 35 U.S.C. § 112,
second paragraph.
The Rejection Under 35 U.S.C. § 102(b)
It is the examiner’s position that “to the limited
extent understood,” claims 1-7, 19 and 20 are anticipated by
Bardocz (final rejection, page 3). It is axiomatic that
anticipation under 35 U.S.C. § 102(b) is established only when
a single prior
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art reference discloses, either expressly or under the
principles of inherency, each and every element of the claimed
invention. See, for example, In re Paulsen, 30 F.3d 1475,
1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re
Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
That is not the case here, and we will not sustain this
rejection. Our reasoning follows.
The appellant’s invention is directed to a “wobble-
absorbing magnetic bearing for a drive system,” the objective
of which is to accommodate inaccuracies that may be present in
a driving mover as it moves a driven object. As manifested in
claim 1,
the invention comprises a driving bearing element having a
first surface and a driven bearing element having a second
surface “that faces the first surface along a drive
direction,” and rolling elements disposed between the surfaces
to “enable the driving and driven bearing elements to move
substantially freely, relative to each other, along at least
one direction transverse to the drive direction” and to
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“transmit drive forces along the drive direction from the
driving bearing element to the driven bearing element.”
Relating this to Figure 5, the drive direction is essentially
perpendicular to the planes of the facing surfaces
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of elements 112 and 14', and therefore the direction
transverse to the drive direction is parallel to the planes of
the aforementioned facing surfaces.
Bardocz is directed to a system which allows precision
alignment of a linearly translatable element (Z) with respect
to a platform element (R). Bardocz discloses a lower element
(V) and an upper element (Z). Each element has a surface
that faces the other, and interposed between the two elements
are a plurality of balls mounted in grooves in the opposed
surfaces. The elements are held together by magnetic force.
By means of inputs applied by a coarse adjustment drive (T)
and a fine adjustment drive (M), the upper element is
positionable transversely with respect to the lower element.
Considering that the “drive direction” in the appellant’s
claim 1 is perpendicular to the facing surfaces, the Bardocz
mechanism causes the elements to move relative to one another
along a “direction transverse to the drive direction,” in the
language of claim 1.
However, Bardocz fails to disclose some of the other
features of claim 1. Looking to the specific language of
claim 1, Bardocz is not disclosed as a “bearing,” much less a
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bearing for applying force from a driving mover to move a
driven object along a drive direction, that is, a direction
perpendicular to the planes of the facing surfaces of the two
elements. Nor is one of the elements “freely” movable with
respect to the other, as evidenced by the presence of the two
adjustment screw means that engage (as T) or are attached (as
M) to the elements, thus fixing them together. In addition,
there is no disclosure in Bardocz of moving the two elements
in the “drive direction,” nor is there reason to conclude that
such movement is inherent. Thus, as might be expected,
Bardocz fails to disclose a driving mover and a driven object
which interact with the two elements, or the “means for
receiving driving contact from the driving mover at the
driving bearing element” and “means for applying driving
contact from the driven bearing element to the driven object.”

This being the case, Bardocz does not anticipate the
subject matter of claim 1, and we will not sustain this
rejection of claim 1 or of claims 2-7, which depend therefrom.
Independent claim 19 also is directed to a wobble-
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absorbing magnetic bearing that applies force from a driving
mover to move a driven object. As recited in this claim, the
invention specifies that the rolling elements be of
nonmagnetic material.
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This feature clearly is not taught by Bardocz, and therefore
the
reference cannot be anticipatory of the subject matter recited
in claim 19.
The Section 102(b) rejection of claim 19 and dependent
claim 20 therefore is not sustained.
SUMMARY
The rejection of claims 1-7, 19 and 20 under 35 U.S.C.
§ 112, first and second paragraphs, is not sustained.
The rejection of claims 1-7, 19 and 20 under 35 U.S.C.
§ 102(b) is not sustained.
The decision of the examiner is reversed.
REVERSED
)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1779
Application No. 08/480,561
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NEA:hh
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PETER I. LIPPMAN
ASHEN & LIPPMAN
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