Ex parte SEKI

Board of Patent Appeals and Interferences

Apr 27, 2000

08710551 (B.P.A.I. Apr. 27, 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not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASAYUKI SEKI
__________
Appeal No. 1998-2064
Application 08/710,551
___________
HEARD: April 7, 2000
___________
Before FRANKFORT, STAAB and BAHR, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 5-10, all the claims currently pending in
the application.
Appeal No. 1998-2064
Application 08/710,551
2
Appellant’s invention pertains to a rotary driving device
for a press machine. With reference to appellant’s Figure 2,
a tap T for tapping a hole in a workpiece W is provided at a
lower end of a rotary driving device 1. In operation, a
striker S of a turret punch press strikes a push head member
21 provided at an upper end of the driving device. Through a
series of elements provided within the driving device,
downward movement of striker S is converted into downward and
rotary movement of the tap T. The elements within the driving
device that accomplish this conversion include a male thread
axle member 29 having male threads, and a cooperating female
thread member 33 having female threads. When the striker S
strikes the push head member 21, the male thread axle member
29, which is rotatably mounted within the push head member, is
driven downwardly relative to the female thread member, which
is held against rotation within the driving device. As a
result, the male thread axle member rotates as it moves
downward.
Appellant’s inventive efforts include the provision of a
sliding connection 35, 37 between the female thread member 33
Appeal No. 1998-2064
Application 08/710,551
Our understanding of this German language reference is1
derived from a translation prepared on behalf of the Patent
and Trademark Office. A copy of the translation is attached
to this opinion.
3
and an upper housing portion 3 of the driving device that
allows
axial movement of the female thread member relative to the
housing portions of the driving device, in combination with
impact absorbing springs 41 between the lower surface of the
female thread member and a lower housing portion 5 of the
driving device. According to appellant, this arrangement
improves the operation of the device by absorbing impact
forces that tend to damage the workpiece.
A copy of the appealed claims can be found in an appendix
to appellant’s brief.
The references of record relied upon by the examiner in
support of a rejection under 35 U.S.C. § 103 are:
Markus 0,305,762 Mar. 8, 19891
(European)
Becker 0,394,925 Oct. 31, 1990
(European)
Appeal No. 1998-2064
Application 08/710,551
4
Claims 5-10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Becker in view of Markus.
Reference is made to the brief (Paper No. 11) and to the
final rejection and the answer (Paper Nos. 4 and 12,
respectively) for the respective positions of appellant and
the examiner with respect to this rejection.
Opinion
In reaching our decision is this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions set forth by appellant and the examiner. As a
consequence of our review, we find that we cannot sustain the
examiner’s rejection.
There appears to be no dispute that the only difference
between the rotary drive device of Becker and claim 5, the
sole independent claim on appeal, lies in the particulars of
the mounting of the female thread member 74 within the housing
members 8, 10. With respect to the mounting of the female
thread member within the housing, appellant’s claim 5 calls
Appeal No. 1998-2064
Application 08/710,551
5
for (1) a female thread supported by the upper member of the
main body such that it is moveable in the axial direction
relative to the upper member of the main body, and (2) a first
impact absorbing means interposed between the female thread
and the lower member of the main body. Becker discloses at
column 6, lines 8-13, that roller nut 74 is fixedly mounted to
housing member 8. Becker is silent as to the provision of an
impact absorbing means between the
roller nut 74 and either the upper housing member 8 or the
lower housing member 10. Thus, it is clear that Becker lacks
a female thread “supported in the upper member . . . [and]
being moveable in an axial direction” as called for in claim
5, and “first impact absorbing means interposed between a
lower surface of the female thread and an upper surface of the
lower member” as also called for in claim 5.
Markus pertains to an electromotive servo drive for use
as an actuator for a valve or the like in a pipe system
Appeal No. 1998-2064
Application 08/710,551
6
(translation, page 3, lines 4-6). The drive includes a motor
driven worm 9 and a worm wheel 8 in engagement with the worm.
Worm wheel 8 includes an internally threaded opening that is
in engagement with an externally threaded end of a spindle 10
(translation, page 3, lines 7-12). Presumably, worm 9
rotatably drives worm wheel 8, which in turn causes the
spindle 10 to move axially. As shown in Figure 1 of Markus,
worm wheel 8 is mounted in a bearing assembly that includes
spring washers 4, 5. Markus states the following with respect
to this mounting arrangement:
By means of axial sets of springs (4, 5) on both
sides of the lower bearing (2), an axial
displacement of the worm wheel (8) from a central
position may take place in a spring-mounted manner.
[Translation, page 3, lines 16-19.]
It is the examiner’s position that it would have been
obvious “to provide spring means to mount the Becker female
nut 74 and housing 8, 10 following the teachings of Markus in
order to absorb shock loads to the transmission elements”
(final rejection, page 2). With respect to the placement of
the impact absorbing means between the lower surface of the
Appeal No. 1998-2064
Application 08/710,551
7
female thread and an upper surface of the lower member, the
examiner considers that since the female nut 74 of Becker
abuts the lower housing member 10, “the logical place to
install such spring means is between the nut and the lower
member as required . . .” (final rejection, page 2). The
examiner further explains (answer, pages 4-5) that Markus is
only relied upon to show that one skilled in the art of
mechanical devices is aware that transmission elements can be
spring mounted in order to absorb shocks. In addition, the
examiner considers (answer, page 5) that one skilled in the
art would be apprised of the desirability of reducing shock
loads on the transmission elements of Becker by Becker’s
disclosure at column 6, lines 19-26. The examiner
characterizes this portion of Becker’s disclosure as teaching
that low-friction, high-torque nut 74 is used to minimize the
possibility that the threads of the spline shaft 26 might be
stripped under the high impact
driving forces generated by the actuating press. Thus, the
examiner concludes that the suggestion for making the
Appeal No. 1998-2064
Application 08/710,551
Note the presence of lead nut 92 in addition to2
internally threaded roller nut 74.
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combination comes from the teachings of the references and not
from the use of impermissible hindsight.
While we appreciate the points the examiner is attempting
to make with respect to what one of ordinary skill in the art
would have learned from the teachings of Becker and Markus, we
do not believe the ordinarily skilled artisan would have been
led to modify the Becker device to arrive at the subject
matter of claim 5 in the absence of appellant’s disclosure.
Conceding for the sake of argument that Markus teaches
generally that a female threaded member may be resiliently
mounted in order to absorb shocks, it is not clear to us why
one of ordinary skill in the art would have applied this
general teaching in Becker in the particular way and at the
particular location called for in claim 5. This is especially
so in that Becker discloses not one but two fixably mounted
female threaded members , in that Becker’s 2
Appeal No. 1998-2064
Application 08/710,551
9
device includes piston and cylinder units 32 in the upper
housing which would appear to absorb impact forces, and in
that there is no suggestion in either Becker or Markus that
the Becker device might be inadequate for its intended
purpose. Furthermore, Markus is directed to a valve operator,
whereas Becker pertains to a tapping device for a turret-type
punch press (column 1, last four lines). The dissimilar
purposes and modes of operation of the applied references
makes it highly unlikely, in our view, that one of ordinary
skill in the art would have combined them in the specific
manner proposed by the examiner based on the teachings of the
references alone.
Where, as here, the prior art references require a
selective combination to render obvious a claimed invention,
there must be some reason for the combination other than
hindsight gleaned from the invention disclosure, Interconnect
Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551
(Fed. Cir. 1985). In the fact situation before us, we are
unable to agree with the examiner that one of ordinary skill
in the art would have been motivated by the teachings of
Appeal No. 1998-2064
Application 08/710,551
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Markus to interpose impact absorbing means between the roller
nut 74 of Becker and lower housing member 10 in order to
arrive at the subject matter of claim 5.
In light of the above, we will not sustain the standing
§ 103 rejection of claims 5-10.
The decision of the examiner is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1998-2064
Application 08/710,551
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LJS/pgg
Victor M. Wigman
Wigman Cohen Leitner and Myers
The Farragut Building
900 17th Street NW
Washington, Dc 20006