Ex Parte Knox

Board of Patent Appeals and Interferences

Mar 14, 2005

09656683 (B.P.A.I. Mar. 14, 2005)

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for publication and is not binding precedent of the Board.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 DICK LEE KNOX
____________
Appeal No. 2005-0141
Application No. 09/656,683
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HEARD: FEBRUARY 23, 2005
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Before COHEN, NASE, and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 14, all of the claims in the application. At the oral
hearing, James E. Bradley (counsel for appellant) requested that
the appeal be dismissed as to claims 12 through 14. The request
followed a discussion at the hearing of appellant’s grouping
together of claims 1 through 3, 5 through 9, and 11 through 13
(main brief, page 3). We pointed out that in selecting a claim
for review, we would consider selecting the broadest claim of the
grouping, i.e., independent claim 12 drawn to a bearing assembly
Appeal No. 2005-0141
Application No. 09/656,683
1 In light of the dismissal, reference to claims 12 through
14 has been removed from the statement of the examiner’s
rejections and appellant’s claim groupings, infra.
2
per se as compared to narrower claims of the grouping, i.e.,
independent claim 1 (and independent claim 8) which respectively
set forth an electric motor including a bearing body and a
(metallic) coiled member. As per the request, the appeal as to
claims 12 through 14 is dismissed, and the only claims before us
for review are claims 1 through 11.1
Appellant’s invention pertains to an elongated electric
motor. A basic understanding of the invention can be derived
from a reading of exemplary claims 1 and 8, respective copies of
which appear in “APPENDIX 1" of the main brief filed August 5,
2002.
As evidence of obviousness, the examiner has applied the
documents listed below:
Nogle 3,485,540 Dec. 23, 1969
Beavers et al. 4,119,874 Oct. 10, 1978
(Beavers)
Balsells 4,890,937 Jan. 2, 1990
Ide 5,436,515 Jul. 25, 1995
Appeal No. 2005-0141
Application No. 09/656,683
3
The following rejections are before us for review.
Claims 1, 3, 6, and 7 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Beavers in view of Balsells.
Claims 2, 5, 8, 9, and 11 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Beavers in view of Balsells,
as applied to claim 1 above, further in view of Nogle.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beavers in view of Balsells, as applied to
claim 1 above, further in view of Ide.
Claim 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beavers in view of Balsells and Nogle, as
applied to claims 8 and 12 above, further in view of Ide.
The full text of the examiner’s rejections and response to
the argument presented by appellant appears in the answer mailed
October 1, 2002, while the complete statement of appellant’s
argument can be found in the main brief filed August 5, 2002 and
the reply brief filed October 10, 2002.
Appeal No. 2005-0141
Application No. 09/656,683
2 In our evaluation of the applied prior art, we have
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the Board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
4
In the main brief (page 3), appellant establishes claims 1
through 3, 5 through 9, and 11 as one group and claims 4 and 10
as another group, and suggests that we select claims 1 and 4 for
review from the respective groups. This panel of the Board
selects claims 1 and 4 for consideration, infra, with the
remaining claims of each grouping standing or falling with the
selected claim of the grouping.

OPINION
In reaching our conclusion on the obviousness issues raised
in this appeal, this panel of the Board has carefully considered
appellant’s specification and claims, the applied teachings,2 and
the respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determination which
follows.
Appeal No. 2005-0141
Application No. 09/656,683
3 We note that independent claim 8, akin to independent
claim 1, sets forth an elongated electric motor that includes a
stationary bearing body and a metallic coiled member with an
outer portion that frictionally engages an inner wall of a
stator, preventing rotation of the bearing body and stabilizing a
rotatable shaft installed within the stator.
5
We cannot sustain the respective obviousness rejections of
appellant’s claims for the reasons given below.
Independent claim 1 addresses an elongated electric motor
that includes a stationary bearing body with a cavity, and a
coiled member contained in the cavity having an outer portion
that frictionally engages an inner wall of a stator, preventing
rotation of the bearing body and stabilizing a rotatable shaft
installed within the stator.3 Claim 4 recites a coiled spring
that comprises a plurality of coiled member segments that are
spaced apart from each other.
As recognized by the examiner (answer, page 4), the patent
to Beavers teaches an elongated electric motor with a corrugated
spring member, not a coiled member, mounted in a cavity. To
overcome the deficiency of Beavers, the examiner proffers the
Balsells patent. However, like appellant (main brief, pages 3
and 4 and reply brief, pages 2 and 4), we readily perceive that
Appeal No. 2005-0141
Application No. 09/656,683
6
Balsells discloses a cartridge bearing for reciprocating shafts
wherein a spring 22 causes a tubular bearing element 12 and shaft
16 to float within a surrounding housing 30 (Fig. 1). Thus,
Balsells neither relates to rotatable shafts nor a coil spring
that prevents rotation of a bearing body. Accordingly, as we see
it, one having ordinary skill in the art would not have derived a
suggestion from the Balsells’ teaching for replacing the
corrugated spring member of Beavers with a coiled member. It is
for this reason that the rejection of claim 1 cannot be
sustained. We have also reviewed the other two references
applied by the examiner. However, we find that the Nogle
reference (coil spring 30, 34 for resiliently maintaining
concentric alignment in a self-aligning bearing) and the Ide
patent (a plurality of spaced wheels provide for inhibiting
rotation of a bearing relative to a stator, Fig. 2, or a
structural spring configuration provided by cantilever beam-like
extensions 42 and feet 43 inhibit rotation, Fig. 13) also would
not have been suggestive of a coiled spring for preventing
rotation of a bearing body. As to claim 4, in particular, it is
quite clear to us that the Ide teaching of spaced wheels would
not have been suggestive of a plurality of spaced apart coiled
Appeal No. 2005-0141
Application No. 09/656,683
7
member segments to one having ordinary skill in the art. Thus,
the rejection of claim 4 is not sound and cannot be sustained.
In summary, this panel of the Board has not sustained any of
the examiner’s respective obviousness rejections of appellant’s
claims.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
ICC/lbg
Appeal No. 2005-0141
Application No. 09/656,683
8
James E. Bradley
Bracewell & Patterson, L.L.P.
P.O. Box 61389
Houston, TX 77208-1389