Ex Parte Nagai

Board of Patent Appeals and Interferences

Feb 24, 2006

09682642 (B.P.A.I. Feb. 24, 2006)

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and is not binding precedent of the Board.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 KENJI NAGAI
____________

Appeal No. 2005-2437
Application No. 09/682,642
____________

ON BRIEF
____________

Before OWENS, LEVY, and NAPPI, Administrative Patent Judges.
OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1, 10-19 and 23-30. Claims 2-9 and 20-
22 stand withdrawn from consideration.
THE INVENTION
The appellant claims a rotating electrical machine such as a starter for a
motorcycle engine. Claim 16 is illustrative:
16. A rotating electrical machine comprised of an outer housing assembly and a
rotor including a rotor shaft journalled therein, said rotor shaft having a drive portion
extending outwardly beyond said outer housing assembly for driving relation with
another shaft, said outer housing assembly being comprised of a stator shell closed at
opposite ends thereof by first and second end caps, said first end cap providing an
anti-friction bearing journaling said rotor shaft adjacent said drive portion with said drive
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portion extending through said first end cap, said first end cap having attachment
means for providing a mounting connection to a body that journals the another shaft,
said stator shell carrying a plurality of permanent magnets,
said rotor having a plurality of windings cooperating with said permanent magnets, a
commutator fixed to said rotor shaft in electrical communication with said rotor windings,
fasteners for
affixing said end caps to each other and to opposite ends of said stator shell, a brush
carrier fixed to said stator shell and carrying brushes cooperating with said commutator,
and a plain bearing carried by said second end cap for journaling the end of said rotor
shaft spaced from said drive portion.

THE REFERENCES
Kakuda et al. (Kakuda) 4,618,790 Oct. 21, 1986
Isozumi 4,897,571 Jan. 30, 1990
Nagashima et al. (Nagashima) 5,353,658 Oct. 11, 1994
Hefner 5,742,110 Apr. 21, 1998
THE REJECTIONS
The claims stand rejected as follows: claims 1, 10-13, 16 and 17 under 35 U.S.C.
§ 102(b) as anticipated by Nagashima; claims 14, 15, 18, 19 and 30 under 35 U.S.C.
§ 103 as obvious over Nagashima in view of Isozumi; claims 23-25 under 35 U.S.C.
§ 103 as obvious over Nagashima in view of Isozumi and Kakuda;
and claims 26-29 under 35 U.S.C. § 103 as obvious over Nagashima in view of Isozumi,
Kakuda and Hefner.1,2

1 A rejection of claims 1 and 16 under 35 U.S.C. § 102(b) as anticipated by US
4,665,320 to DeBello is withdrawn in the examiner’s answer (page 2).
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OPINION
We affirm the aforementioned rejections.

2 The examiner also relies upon US 5,576,588 to Moribayashi et al. and US
4,440,033 to Kurihara (answer, pages 6 and 8. Because those references are not
included in the statement of a rejection, they are not properly before us. Accordingly,
we have not considered those references in reaching our decision. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
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The appellant states that the claims stand or fall in the following groups: 1) claims
1, 16 and 17; 2) claims 10 and 11; 3) claims 12 and 13; 4) claims 14 and 18; and 5)
claims 15 and 19 (brief, page 3).3 Accordingly, we limit our discussion to one claim in
each of these groups, i.e., claims 16, 10, 12, 18 and 19. The appellant states that the
claims that are not grouped stand or fall separately. See id. The appellant, however,
does not argue claims 24 and 25 separately from claim 23, and does not argue claims
26-29 (brief, pages 6-7). Claims 24-29 therefore stand or fall with claim 23. See In
re Ochiai, 71 F.3d 1565, 1566 n.2, 37 USPQ2d 1127, 1129 n.2 (Fed.
Cir. 1995); 37 CFR § 1.192(c)(7)(1997).
Claim 16
Nagashima discloses “a starter in which a pinion gear is
selectively meshed with the ring gear of an engine by displacing
a pinion shaft for transmitting torque from the motor by using a
shift lever which rotates in response to the displacement of an
armature of a magnetic switch” (col. 1, lines 5-10).

3 Citations to the brief are to the substitute brief filed August 9, 2004.
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The appellant argues that Nagashima discloses a roller or
needle bearing, not a plain bearing (brief, page 4; reply brief,
page 2).
The appellant’s claim 16 requires a plain bearing carried by
a stator shell’s second end cap for journaling the end of a rotor
shaft spaced from a drive portion. For the second end cap the
examiner relies upon the right end of Nagashima’s motor housing
to which the numeral 2 is pointing in figure 1 (answer, page 9).
That end cap journals the end of the rotor shaft spaced from the
drive portion which is the portion on the motor’s left side in
figure 1. Nagashima does not state that the bearing on the right
side is a plain bearing. However, the bearings on the left of
the motor are shown as roller bearings, the bearing which the
examiner relies upon as being a plain bearing is not shown as a
roller bearing, and the appellant states that the common practice
was to use a plain bearing to journal the shaft at the end of a
rotor shaft opposite the drive portion (specification, page 1,
¶ 0003). Hence, one of ordinary skill in the art would have
interpreted Nagashima’s figure 1 as disclosing a plain bearing on
the right side of the motor.
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The appellant’s claim 16 requires that a commutator is fixed
to a rotor shaft in electrical communication with rotor windings
and that a brush carrier is fixed to a stator shell and carries
brushes cooperating with the commutator. Claim 16 does not
require that the commutator or brush carrier are fixed directly
to, respectively, the rotor shaft and the stator shell. The
appellant does not dispute that Nagashima’s motor includes a
commutator, brushes and a brush carrier (reply brief, page 2).
The similarity of the illustration of the appellant’s commutator
The appellant argues that Nagashima’s starter motor shaft
end 2b is enclosed in the end plate 1a rather than extending
through it (brief, page 5).
The appellant’s claim 16 requires that the drive portion of
a rotor shaft extends through a first end cap. For the first end
cap the examiner relies upon the piece extending from the lower
left corner of magnetic switch 5 to below the roller bearing on
the left side of motor 2 in Nagashima’s figure 1 (answer,
page 10). Figure 1 shows that the drive portion of the rotor
shaft extends through that end cap.
The appellant argues that Nagashima does not disclose any
detail as to the structure and mounting arrangement of a
commutator and brushes and their carrier (reply brief, page 2).
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The appellant’s claim 10 requires that first and second end
caps of a stator shell are fixed to each other by threaded
fasteners and that the stator shell is sandwiched therebetween.
Nagashima’s figure 1 shows a threaded fastener at the lower part
of the motor housing, and shows that the fastener fixes together
the stator shell’s two end caps with the stator shell being
(26, figure 1) and the component of Nagashima’s motor immediately
to the left of the bearing on the right side of the motor
indicates that one of ordinary skill in the art would have
considered the component to be a commutator which, like the
appellant’s commutator, is fixed to the rotor shaft. Because
Nagashima’s motor is an assembled unit, the brush carrier
necessarily is fixed to the stator shell directly or indirectly.

For the above reasons we are not convinced of reversible
error in the examiner’s rejection of claim 16. Accordingly, we
affirm the rejection of claim 16, and claims 1 and 17 that stand
or fall therewith.
Claim 10
The appellant argues that it is speculation whether the
structure on the right side of Nagashima’s figure 1 is a
commutator and brush.
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Due to its dependence from claim 11, claim 12 also requires
that the brush carrier is fixed to the second end cap. As
discussed above regarding the rejection of claim 16, one of
ordinary skill in the art would have considered the part of
Nagashima’s motor to the left of the bearing on the right side of
the motor to be a commutator. Accordingly, such a person would
have considered the portion surrounding the commutator to be the
therebetween. Claim 10, due to its dependence from claim 1, also
requires that the commutator is fixed to the rotor shaft at an
end thereof spaced from the drive portion of the rotor shaft. As
discussed above regarding the rejection of claim 16, one of
ordinary skill in the art would have considered the structure to
the left of the bearing on the motor’s right side in Nagashima’s
figure 1 to be a commutator. The commutator is at an end of the
rotor shaft spaced from the rotor shaft’s drive portion which is
on the left side of the motor.
We therefore affirm the rejection of claim 10 and claim 11
that stands or falls therewith.
Claim 12
The appellant argues that a distinguishing feature of
claim 12 is that the second end cap is affixed to a body that
journals another shaft.
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brush carrier. As shown in Nagashima’s figure 1, the brush
carrier is fixed to the second end cap. The second end cap is
connected by the threaded fasteners at the bottom part of the
motor housing to the casing to the left of the threaded
fasteners. That figure shows that the casing on the left side of
the figure journals another shaft.
Hence, we affirm the rejection of claim 12 and claim 13 that
stands or falls therewith.
Claim 18
The appellant argues that Isozumi’s ribs 21a of resinous
bracket 21 have the sole purpose of preventing metal plates 22
from being displaced when fasteners 14 are tightened, and that if
the ribs were to provide any strength for the bearing the
reference would have said so (brief, page 10).
The appellant’s claim 18 requires that a second end cap is
formed with stiffening ribs in the area of the plane bearing to
minimize distortion loads thereon from threaded fasteners.
Isozumi discloses that metal plates 22 are engaged with ribs 21a
of rear bracket 21 so that they may not be displaced when
through-bolts 14 are tightened (col. 4, lines 2-4). Isozumi’s
teachings that “the metal plates 22 are formed by using a plate
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such as a quenched band steel plate so that they may not be
deformed by the axial tensions of the through-bolts 14 when
tightened” (col. 4, lines 5-8) and that “the rear bracket 21 is
never deformed or bent by the axial tensions of the through-bolts
14” (col. 5, lines 52-53) would have indicated to one of ordinary
skill in the art that distortion loads produced when the
fasteners are tightened are being minimized. Hence, the ribs
function in minimizing the distortion loads.
We therefore affirm the rejection of claim 18 and claim 14
that stands or falls therewith.
Claim 19
The appellant argues that Nagashima and Isozumi do not
disclose a reinforced end plate affixed directly to an engine
body (brief, page 6).
Claim 19, which depends from claim 18, requires that a
second end cap is formed with a mounting bracket which is affixed
to a body that journals another shaft, and that at least some of
the stiffening ribs are integral with the mounting bracket. The
claim does not require that a reinforced end plate is affixed
directly to an engine body. Nagashima’s figure 1 shows that the
end cap on the right of the motor, which corresponds to the
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appellant’s second end cap, is affixed by the threaded fasteners
at the bottom part of the motor to the casing to the left of the
motor that journals another shaft. Isozumi’s ribs 21a are
integral with rear bracket 21 (col. 4, lines 31-33; figure 1).
Isozumi would have fairly suggested, to one of ordinary skill in
the art, using the rear bracket ribs with Nagashima’s motor to
provide the disclosed benefit of avoiding displacement when
bracket fasteners are tightened (col. 4, lines 2-4).
Hence, we affirm the rejection of claim 19 and claim 15 that
stands or falls therewith.
Claim 23
The appellant argues that one of ordinary skill in the art
would not have combined Kakuda and Nagashima because Kakuda
relates to a totally different type of motor than that of
Nagashima (brief, page 6).
The appellant’s claim 23, which depends from claim 19,
requires that a brush carrier carries a number of brushes all of
which are confined in an area that encompasses not greater than
180° around the rotational axis of a rotor shaft. Such a
structure is disclosed by Kakuda (col. 3, lines 17-20). Kakuda’s
teaching that the motor is suitable for use in general industrial
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machinery and electrical equipment (col. 1, lines 5-11) would
have fairly suggested, to one of ordinary skill in the art, using
Kakuda’s brush structure in Nagashima’s motor because Nagashima’s
starter for internal combustion engines (col. 1, lines 4-5) falls
within the scope of Kakuda’s general industrial machinery and
electrical equipment.
Accordingly, we affirm the rejection of claims 23 and
claims 24-29 that stand or fall therewith.
Claim 30
The appellant argues that Isozumi does not disclose a
reinforced plate affixed directly to an engine body (brief,
page 6).
The appellant’s claim 30, which depends from claim 19,
requires that the machine comprises a starter motor for starting
an internal combustion engine and that the another shaft is a
shaft associated with the engine. The claim does not require a
reinforced end plate affixed directly to an engine body.
Nagashima’s starter is for an internal combustion engine (col. 1,
lines 4-5), so the shaft that corresponds to the appellant’s
another shaft is associated with an internal combustion engine.
We therefore affirm the rejection of claim 30.
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DECISION
The rejections of claims 1, 10-13, 16 and 17 under 35 U.S.C.
§ 102(b) as anticipated by Nagashima, claims 14, 15, 18, 19 and
30 under 35 U.S.C. § 103 as obvious over Nagashima in view of
Isozumi, claims 23-25 under 35 U.S.C. § 103 as obvious over
Nagashima in view of Isozumi and Kakuda, and claims 26-29 under
35 U.S.C. § 103 as obvious over Nagashima in view of Isozumi,
Kakuda and Hefner, are affirmed.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
STUART S. LEVY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT NAPPI )
Administrative Patent Judge )
Appeal No. 2005-2437
Application No. 09/682,642

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ERNEST A. BEUTLER, ATTORNEY AT LAW 10 RUE MARSEILLE EWPORT BEACH, CA 92660 N

TJO/jrg

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