Ex Parte Maeda et al

Board of Patent Appeals and Interferences

Aug 23, 2010

11274170 (B.P.A.I. Aug. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ATSUSHI MAEDA and KAZUO CHIKARAISHI
____________

Appeal 2009-008931
Application 11/274,170
Technology Center 3700
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY and STEFAN
STAICOVICI, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008931
Application 11/274,170

2
STATEMENT OF THE CASE
Atsushi Maeda and Kazuo Chikaraishi (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1 and 3-6.
Claim 2 has been canceled and claims 7-9 have been withdrawn from
consideration. We have jurisdiction under 35 U.S.C. § 6(b) (2002). An oral
hearing was conducted on August 10, 2010, with Blake A. Tankersley, Esq.,
appearing on behalf of Appellants.
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to a method for
manufacturing a worm gear reducer that includes a worm wheel and an
operational worm. Claim 1, reproduced below, is illustrative of Appellants’
invention:
1. A manufacturing method for a worm gear
reducer including a worm wheel (5a) and an
operational worm (3), wherein the worm wheel
(5a) is meshed with said operational worm (3) at
usage, comprising the steps of:

preparing an operational worm (3) comprising
teeth;

preparing a worm wheel (5a), in which at least a
surface layer of a tooth portion (8a) is made of
synthetic resin;

preparing a machining worm (13), in which pitch
of teeth of the machining worm (13) in an axial
direction thereof is the same as that of said
operational worm (3), and providing abrasive
grains (14) on a surface of the machining worm
Appeal 2009-008931
Application 11/274,170

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(13) by means of electro-deposition;

disposing the machining worm (13) in a twisting
position relative to the worm wheel (5a); and

rotating the machining worm (13) and the worm
wheel (5a) with meshing each other so as to
machining the tooth portion of the worm wheel
(5a),

wherein said operational worm [(]3) and
machining worm (13) are prepared such that the
diameter of the tip and root portions of the
machining worm (D13a, d13a) are larger than the
diameters of the tip and root portions of the
operational worm (D3, d3) by 1 to 10%.

THE REJECTION
The Examiner has rejected claims 1 and 3-6 under 35 U.S.C. § 103(a)
as being unpatentable over Fujita (JP 2000-84747, published March 28,
2000). References herein to the Fujita published application will be to the
English-language translation dated November 2008, prepared by Schreiber
Translation, Inc.

ISSUE
Does the Fujita reference render obvious a manufacturing method in
which the diameters of the tip and root portions of a machining worm are
larger by 1 to 10% than the diameters of the tip and root portions of an
operational worm?

Appeal 2009-008931
Application 11/274,170

4
ANALYSIS
The Examiner found, and Appellants do not contest, that Fujita
discloses all limitations set forth in claim 1, with the exception of preparing
a machining worm having tip and root portions that are greater in diameter,
by 1 to 10%, than the tip and root portions of the operational worm.
(Answer 4; Appeal Br., passim). Although there is no express disclosure in
Fujita that the machining worm is larger in diameter at its tip and root
portions than is the operational worm, the Examiner relies on the disclosure
in paragraph [0021] of Fujita as indirectly evidencing that there is a
difference in the diameter of the operational worm and machining worm
used therein. (Answer 4). The Examiner further cites to the disclosure in
paragraph [0018] of Fujita, which states that the polishing tool (machining
worm) is formed by electrodepositing an abrasive on the tooth surface of a
worm (operational worm), as evidence that the diameter of the tip and root
of the polishing tool will be greater than the diameter of the tip and root
portion of the operational worm. (Answer 5).
The Examiner concludes that the subject matter of claim 1, in
particular the diameter difference of 1 to 10%, would have been obvious
under the legal precedent of In re Aller, 220 F.2d 454 (CCPA 1955), which
stands for the proposition that where the general conditions of a claim are
disclosed in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art, and that the person of ordinary skill in
the art would have found it obvious to select 1 to 10% as an optimum or
workable range. (Answer 4, 5).
We agree with the Examiner that at least the passage in paragraph
[0018] of Fujita appears to propose providing a polishing tool/machining
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Application 11/274,170

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worm having tip and root portions of greater diameters than those of the
operational worm, in that the abrasive is deposited on an operational worm,
thus increasing the diameters by the thickness of the abrasive layer.
However, we find nothing in Fujita that would guide the person of ordinary
skill in the art toward making the larger diameters of the tip and root
portions of the polishing tool in the specific range of 1 to 10% larger than
the diameters of the tip and root portions of the operational worm. Fujita
never directly states that the polishing tool is to be larger in diameter than
the operational worm for any particular reason. Accordingly, even though
Fujita’s disclosure can be read as disclosing the use of a polishing tool of
some indeterminate larger diameter that is largely dependent on the size of
the abrasive particles deposited on the worm, we do not consider that Fujita
adequately discloses to persons of ordinary skill in the art the so-called
“general condition” that the polishing wheel is to have larger tip and root
portion diameters to achieve any particular effect. Thus, Fujita does not
provide the person having ordinary skill with the necessary disclosure to
embark on experimentation to arrive at optimum or workable ranges.
The rejection of claim 1 as being obvious over Fujita will not be
sustained.
The rejections of dependent claims 3-6 are founded on the same
erroneous conclusion reached in rejecting claim 1. Accordingly, we will not
sustain the rejection of those claims for the same reasons presented above.

Appeal 2009-008931
Application 11/274,170

6
CONCLUSION
The Examiner has not established that it would have been obvious to
provide a machining worm whose diameters of the tip and root portions
thereof are larger by 1 to 10% than the diameters of the tip and root portions
of an operational worm.

DECISION
The decision of the Examiner to reject claims 1 and 3-6 is reversed.

REVERSED

Klh

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