Ex Parte McGlasson

Patent Trial and Appeal Board

Jan 6, 2014

11243264 (P.T.A.B. Jan. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM D. MCGLASSON
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Appeal 2011-011504
Application 11/243,264
Technology Center 3700
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Before: JENNIFER D. BAHR, BART A. GERSTENBLITH, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3 and 5-11. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are directed to a magnetic spindle for a machine tool for
testing or lapping of gears. Claims 1, 2, 10, and 11 are independent. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A spindle for a machine tool, said spindle being
rotatable about an axis of rotation and comprising:
an outer spindle portion;
an inner spindle portion, with each of said outer spindle
portion and said inner spindle portion being rotatable about said
axis relative to one another;
a first plurality of magnets arranged in a ring shape about
an inside surface of said outer spindle portion and a second
plurality of magnets arranged in a ring shape about an outside
surface of said inner spindle portion,
said first plurality and said second plurality being the
same number, said first plurality of magnets and said second
plurality of magnets facing one another,
wherein the second plurality of magnets on said inner
spindle portion are radially spaced from the first plurality of
magnets on said outer spindle portion, said inner spindle
portion being movable during operation of said spindle with
respect to said outer spindle portion along said axis of rotation.

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REFERENCES
The Examiner relies upon the following prior art references in
rejecting the claims on appeal:
Stadtfeld
McGlasson
US 6,120,355
US 6,481,508 B2
Sep. 19, 2000
Nov. 19, 2002
Gery
Hasegawa
US 2004/0066107 A1
US 2005/0200207 A1
Apr. 8, 2004
Sep. 15, 2005

REJECTIONS
The Examiner made the following rejections:
Claims 1-3 and 5-9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gery and Hasegawa. Ans. 3-6.
Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gery, Hasegawa, and either Stadtfeld or McGlasson.
Ans. 6-7.

ANALYSIS
Obviousness Rejection: Claims 1-3 and 5-9
Gery and Hasegawa
Claims 1 and 2
Appellant separately argues claims 1 and 2; claim 3; claims 5 and 6;
claim 7; and claims 8 and 9. App. Br. 13-16. With respect to claims 1 and 2,
we select claim 1 as representative, treating claim 2 as standing or falling
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Gery discloses the limitations of claim 1,
except for “said inner spindle portion being movable during operation of
said spindle with respect to said outer spindle portion along said axis of
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rotation.” Ans. 4. Noting that the inner spindle of Gery is capable of axial
movement along the axis of rotation, the Examiner additionally relies on
Hasegawa to teach movement of an inner spindle element in a rotational
direction and an axial direction. Id. (citing Hasegawa, para. [0006]; fig. 17).
Based on these teachings, the Examiner reasons that it would have been
obvious to modify the inner spindle of Gery using an inner spindle that can
be moved in both rotational and axial directions as taught by Hasegawa,
since the results would have been predictable, i.e., “one could upgrade
degree of freedom of operational control of a moveable spindle thereby
providing a more versatile device.” Id. Although the Examiner finds that
Figure 1 of Gery discloses the same number of first plurality of magnets and
second plurality of magnets, the Examiner additionally cites In re Aller, 105
USPQ 233 (CCPA 1955), in support of the conclusion that “it would have
been obvious to have selected any number of magnets using routine
optimization and experimentation to achieve a desired axial and rotational
movement.” Id. at 4-5.
Appellant presents several arguments alleging Examiner error.
Initially, Appellant argues that there is “no credible motivation” to exchange
the inner magnet array M2 of Gery with the inner spindle 6 of Hasegawa.
App. Br. 13-14. However, Appellant’s argument regarding a lack of
motivation to combine the inner magnet array of Gery with the inner spindle
of Hasegawa is foreclosed by KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
415 (2007), in which the Court rejected the rigid requirement of a teaching
or suggestion or motivation to combine known elements in order to show
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obviousness.1 Instead, the relevant inquiry is whether the Examiner has set
forth “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”2 In this case, the Examiner
has provided a reasoning that the predictable result of an additional (i.e.,
upgraded) degree of operational control afforded by the modification would
render the device more versatile, which comes directly from Hasegawa and
has rational underpinnings. See Hasegawa, para. [0006].
Appellant also argues that combination of the spindle of Gery with the
axially and rotationally movable shaft of Hasegawa is not obvious because
the separate stationary member 2 imparts movement to the movable member
6 of Hasegawa and without stationary member 2, replacing the inner ring 14
and magnet M2 of Gery with movable member 6 of Hasegawa would not
impart axial movement to movable member 6. App. Br. 14. This argument
is not convincing because it appears to be directed to a bodily incorporation
of the stationary member 2 of Hasegawa into the spindle of Gery, and not to
the combination proposed by the Examiner. Further, Appellant does not
adequately explain why such inclusion of stationary member 2 would be
necessary. The test for obviousness is what the combined teachings of
references would have suggested to a skilled artisan and not whether the
features of a secondary reference can be bodily incorporated into a primary

1 The Court noted that an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
2 See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with approval in
KSR, 550 U.S. at 418.
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reference.3 Moreover, Appellant’s argument regarding stationary member 2
and replacing the inner ring 14 and magnet M2 of Gery with the movable
member 6 and stationary member 2 of Hasegawa does not apprise us of error
in the Examiner’s proffered reasoning that there is nothing in Gery to
prevent the rotatable inner spindle from axial movement. Ans. 5, 8-9. In
view of these arguments, Appellant does not apprise us of error in the
Examiner’s findings that the inner spindle of Gery is capable of axial
movement, or that Hasegawa discloses both rotational and axial movement
of an inner spindle element.
Appellant also argues that the combination of the spindle of Gery with
the axially and rotationally movable shaft of Hasegawa is not obvious since
coupling of the drive motor 19 and shaft 16 of Gery impedes placement of
moveable member 6, bearings 1b, and housing portion 1a of casing 1 from
Hasegawa into the coupling of Gery. App. Br. 14. Again, the Examiner has
the better position, as Appellant’s argument does not apprise us of error in
the Examiner’s reasoning that there is nothing in Gery to prevent the inner
spindle from moving. Contrary to Appellant’s assertion, the Examiner only
relies on the teachings of Hasegawa that it is known to move an inner
spindle using magnets and current, and not for the structure of movable
member 6 extending through bearings 1b in the housing portion 1a of casing
1. Ans. 8.
Appellant further argues that the Examiner errs since Hasegawa does
not disclose the same number of magnets on both the inner and outer
spindle. App. Br. 14. Citing Figures 2 and 3 of Hasegawa, Appellant

3 See In re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Nievelt,
482 F.2d 965, 968 (CCPA 1973)( “[c]ombining the teachings of references
does not involve an ability to combine their specific structures.”)
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contends that five outside magnets (2a, 2b, 2c, 4a, and 4b) are shown for the
first and second stationary members 2 and 4, respectively, and two inner
magnets (6b1, 6b2) are shown. Id. This argument, however, does not
apprise us of error in the Examiner’s finding that Gery demonstrates how the
inner spindle and outer spindle each have the same number of magnets. Ans.
4; Gery, fig. 2.
In addition to the teachings of Gery, the Examiner relies on Figure 17
of Hasegawa, which is similar in construction to the first and fourth
embodiments of Hasegawa, to demonstrate that it would have been obvious
to provide the same number of magnets on the inner spindle and outer
spindle. We note that stationary member 2 of Hasegawa is a single member
having an “E” shape with three magnetic pole portions 2a, 2b, 2c, and not
three separate magnets as Appellant asserts. See Hasegawa, para. [0042];
fig. 17. Likewise, Hasegawa discloses that the second stationary member 4
is a single pillar member having a “C” shape, with two magnetic pole
potions (4a, 4b), and not two magnets as Appellant asserts. Id. para. [0044].
As such, Appellant’s argument that Hasegawa discloses a total of five inner
magnets and two outer magnets and not the claimed ratio of inner to outer
magnets, is not convincing.
Citing the Specification, Appellant contends that neither Gery nor
Hasegawa recognizes the technical importance of having the same number
of inner to outer magnets for torque control (wind-up) or decoupling
capability. App. Br. 14 (citing Spec. paras. [0016], [0018], and [0023]).
Appellant’s argument regarding the technical importance of having the same
number of inner and outer spindle magnets is not convincing, as such
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recognition is not necessary to a determination of obviousness.4 The
Examiner reasonably relies on Gery to disclose the number of magnets, and
Hasegawa to disclose movement. Ans. 9. We note that the portions of the
Specification Appellant refers to in support of their position generally
describe how the torque is zero between the two rotational members when
the poles of the inner and outer magnets line up; how the applied torque is
transferred through the magnets resulting in a rotational displacement of one
spindle member relative to another; and how the “magnetic elements 8, 10
provide a force that opposes and is a function of rotary displacement.” See
Spec. paras. [0016], [0018] and [0023]. Appellant does not adequately
explain how the cited portions of the Specification specifically rely on the
same number of magnets on the inner and outer spindle to control torque and
decoupling capability. We further note that Hasegawa explains how the
positioning of the magnets influences axial and rotational movement of the
inner spindle. See Hasegawa, paras. [0047] – [0050].
Appellant also contends that the combination of Gery and Hasegawa
would not achieve the claimed magnet ratio because Hasegawa discloses the
use of more outside magnets than inside magnets to impart axial and
rotational movement. App. Br. 15. Given that the Examiner relies on Gery
to disclose the same number of magnets, Appellant’s argument regarding the
combined teachings of Gery and Hasegawa is not convincing.

4 “In determining whether the subject matter of a patent claim is obvious,
neither the particular motivation nor the avowed purpose of the patentee
controls. What matters is the objective reach of the claim. If the claim
extends to what is obvious, it is invalid under § 103.” KSR, 550 U.S. at 419-
20.
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Based on the record before us, the decision of the Examiner to reject
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Gery and Hasegawa
is sustained, and claim 2 falls therewith.

Claim 3
Appellant separately argues claim 3, which recites the additional
limitation that the spindle comprises a stationary housing. Clms. App’x.
The Examiner finds that the motor housing 19 of Gery is a stationary
housing, and alternatively proposes an “optional” modification of Gery to
incorporate the stationary housing 1 of Hasegawa, which also meets the
claim limitation of a stationary housing. Ans. 5, 10. Based on these
findings, the Examiner reasons that modifying the device of Gery using the
stationary housing of Hasegawa would provide a predictable result, i.e., “one
could provide a more durable and sealed housing that prevents unwanted
debris from entering the device.” Ans. 5. According to Appellant, sealing
the open end 1a of Gery would prevent use of the shroud 24 and change the
operability of Gery. App. Br. 15. This argument is not convincing, as
Appellant does not adequately inform or explain why the Examiner’s finding
that the motor housing 19 of Gery meets the claim limitation of a stationary
housing is in error, nor does Appellant adequately explain why the
combination of Gery and Hasegawa proposed by the Examiner would
prevent use of Gery’s shroud 24 from sealing the driven element from the
driving element or change its operability.
For these reasons, the decision of the Examiner to reject claim 3 under
35 U.S.C. § 103(a) as unpatentable over Gery and Hasegawa is sustained.

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Claims 5 and 6
Claims 5 and 6 depend directly or indirectly from claim 1. We select
claim 5 as representative, and claim 6 stands or falls with claim 5. Claim 5
further includes the limitation that the inner spindle portion “is axially
movable over a predetermined amount via an inner element axially
moveable between defined stop positions.” Clms. App’x. The Examiner
finds that inner element 8 is axially movable between defined stop positions
on the inner surface (i.e., inner surface of stationary member 1b). Ans. 5
(citing Hasegawa, fig. 17).
Appellant asserts inner element 8 is stationary and not axially
movable due to its securement to bearing 1b, which also does not function as
a defined stop position. App. Br. 15. According to Appellant, contact
between magnets 6b1 or 6b2 and bearings 1b is not envisioned and “would
be detrimental to the performance of the bearings 1b and simply would not
be contemplated in machine design.” Id. (citing Hasegawa, fig. 17).
Appellant’s arguments are not convincing, as Appellant does not adequately
explain why inner element 8, which Appellant admits is a spring, is not
axially movable. Nor does Appellant adequately explain why inner surface
1b would not define a stop position. In comparison, the Examiner
reasonably explains how the inner surface of opposing stop members 1b
form stops when the springs (upper or lower elements 8) compress to meet
the limitations of claim 5. Ans. 11.
Moreover, Appellant does not inform us why the Examiner’s
conclusion that it would have been obvious to a skilled artisan to provide a
mechanism for moving the inner spindle in both axial and rotational
directions, “and the results would have been predictable” is erroneous. Ans.
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5-6. For these reasons, the Examiner’s decision to reject claim 5 under 35
U.S.C. § 103(a) as unpatentable over Gery and Hasegawa is sustained, and
claim 6 falls therewith.

Claim 7
Claim 7 recites the feature that “at least one of the inner surfaces
includes a spring and/or piston for moving the inner element and inner
spindle portion.” Clms. App’x. The Examiner finds that Hasegawa meets
the limitations of claim 7 by disclosing “at least one of the inner surfaces
includes a spring (8) and/or piston for moving said inner element and inner
spindle portion.” Ans. 6 (citing Hasegawa, fig. 17). As Appellant points
out, the Examiner relies on element 8 of Hasegawa to meet the claim
limitation of an inner element that is axially movable as recited in claim 5.
App. Br. 15-16. We agree with Appellant that the Examiner has not
adequately explained how the same inner element 8 can meet the limitation
of “a spring and/or piston for moving the inner element and inner spindle
portion” as recited in claim 7.
As such, the Examiner’s decision to reject claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Gery and Hasegawa is not sustained.

Claims 8 and 9
Claims 8 and 9 depend directly or indirectly from claim 6. Appellant
argues that Hasegawa “does not disclose the claimed axially movable inner
element[,] so it cannot show such an element being movable.” App. Br. 16.
For the reasons discussed with respect to claim 6, Appellant does not apprise
us of error in the Examiner’s rejection of claims 8 and 9. Accordingly, the
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decision of the Examiner to reject claims 8 and 9 under 35 U.S.C. § 103(a)
as unpatentable over Gery and Hasegawa is sustained.

Obviousness Rejection: Claims 10 and 11
Gery, Hasegawa, and either Stadtfeld or McGlasson
Appellant argues claims 10 and 11 as a group. App. Br. 16-17. We
select claim 10 as representative, and claim 11 stands or falls with claim 10.
The Examiner finds that Gery discloses the limitations of claim 10, except
for a computer controlled machine. Ans. 6. The Examiner alternatively
relies on Stadtfeld or McGlasson to teach the use of a computer controlled
machine for use with a spindle in testing or lapping gears. Id. (citing
Stadtfeld, col. 4, ll. 41-46; McGlasson, col. 4, ll. 41-46). Based on the
teachings of either of these references, the Examiner reasons that it would
have been obvious to a skilled artisan to modify the device of Gery using a
Computer-Controlled Machine (CNC) device as taught by either Stadtfeld or
McGlasson, and the results would have been predictable because “one could
more accurately control the relative position and rotational speed of the
spindle.” Id. at 6-7.
Appellant refers to and repeats the arguments made with respect to
claim 1, asserting that the Examiner errs with respect to Gery and Hasegawa.
App. Br. 16. Since Appellant does not apprise us of error with regards to the
combination of Gery and Hasegawa, this argument is not persuasive for the
same reasons we articulated above with respect to claim 1.
Appellant also argues that the Examiner errs because Stadtfeld does
not disclose the spindle structure and opposed magnets of Gery or
Hasegawa, and importing such structure into Stadtfeld would not result in
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the claimed invention, thus failing to cure the deficiencies in the
combination of Gery and Hasegawa. App. Br. 16-17. Appellant’s argument
is not convincing because, for the reasons discussed above, there is no such
deficiency in the combination of Gery and Hasegawa.
With respect to McGlasson, Appellant argues that McGlasson does
not teach the limitations of claim 10 concerning opposed sets of magnets
arranged one about the other, and that the beam shape of spring elements 68
would oppose axial movement between the spindle elements in a direction
along their length. App. Br. 17. Appellant’s assertion regarding
McGlasson’s teachings concerning the opposed sets of magnets is not
persuasive because the Examiner relies on Gery for teaching the
arrangement of magnets and attaching the end (22) of the device to a
member to be driven. Ans. 12 (citing Gery, para. [0016]). As such,
Appellant does not apprise us of error in the Examiner’s finding that
McGlasson teaches that “the end (22) could be attached to a member used
for lapping or testing operations, while also being controlled by a computer.”
Ans. 12.
Appellant also argues that the addition of McGlasson does not cure
the deficiencies of Gery and Hasegawa and that the Examiner uses hindsight
in reconstructing the claimed invention. App. Br. 17. Appellant’s assertion
of error does not explain why the Examiner’s articulated reasons to combine
the teachings of the Gery, Hasegawa, and McGlasson references are
ineffective to support the conclusion of obviousness with respect to claim
10. Because the Examiner’s reasoning includes rational underpinnings to
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support the legal conclusion of obviousness, we are not persuaded that the
Examiner’s modification is arrived at using hindsight.5
Based on the record before us, we sustain the decision of the
Examiner to reject claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Gery, Hasegawa, and either Stadtfeld or McGlasson, and claim 11 falls
therewith.

DECISION
The Examiner’s decision rejecting claims 1-3, 5, 6, and 8-11 is
affirmed.
The Examiner’s decision rejecting claim 7 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2009).

AFFIRMED-IN-PART

llw

5 “Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant’s disclosure, such a reconstruction is proper.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).