Ex parte Sugiura

Board of Patent Appeals and Interferences

May 29, 2001

08683236 (B.P.A.I. May. 29, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TSUNEO SUGIURA
____________
Appeal No. 1999-0893
Application No. 08/683,236
____________
HEARD: May 9, 2001
____________
Before THOMAS, RUGGIERO, and BARRY, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claim 1, which is the only claim remaining in the
application. Claims 2 and 3 have been canceled.
The claimed invention relates to a hybrid-type stepping
motor including a bearing mounted on a fixed shaft. First and
second inner and outer stator yokes having a plurality of
Appeal No. 1999-0893
Application No. 08/683,236
2
stator yoke teeth are mounted side by side in the direction of
the fixed shaft with each of the first and second inner and
outer stator yokes having a magnet set between them. A barrel
shaped rotor is rotatably supported on the bearing and a
plurality of rotor teeth of the same shape and pitch are
provided on the outer and inner circumference of the rotor.
Claim 1 is reproduced as follows:
1. A hybrid-type stepping motor comprising a bearing mounted
on a fixed shaft, a barrel rotor rotatably supported by the
bearing, a plurality of rotor teeth provided on the outer
circumference and inner circumference of the barrel rotor,
first and second inner stator yokes arranged side by side in
the direction of the fixed shaft with a magnet set
therebetween and first and second outer stator yokes arranged
side by side in the direction of the fixed shaft with the
magnet set therebetween, a plurality of stator yoke teeth,
first through fourth axially centered circular coils slots
facing the barrel rotor and formed around the outer
circumference of the first and second inner stator yokes and
the inner circumference of the first and second outer stator
yokes, and first through fourth coils wound in a solenoid
fashion and seated in the respective coil slots, whereby the
stator yokes alternate in polarity and the barrel rotor is
interposed between the coils;
wherein said magnet set comprises a first magnet
interposed between the fixed shaft and the inner stator yokes
and a second magnet interposed between the outer stator yokes
and the outer wall of the fixed shaft, whereby the magnets
face towards each other via the barrel rotor; and
wherein the plurality of rotor teeth provided on the
outer and inner circumference of the barrel rotor are of the
Appeal No. 1999-0893
Application No. 08/683,236
The Appeal Brief was filed November 3, 1998. In response to the1
Examiner’s Answer dated January 14, 1999, a Reply Brief was filed March 12,
1999 which was acknowledged and entered by the Examiner as indicated in the
communication of May 21, 1999.
3
same shape and pitch, such that the barrel rotor moves only in
the rotary direction.
The Examiner relies on the following prior art:
Nihei et al. (Nihei) 4,857,786 Aug. 15,
1989
Albrecht et al. (Albrecht) 4,920,292 Apr. 24,
1990
Claim 1 stands finally rejected under 35 U.S.C. § 103 as
being unpatentable over Albrecht in view of Nihei.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs and Answer for the1
respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner and the
evidence
of obviousness relied upon by the Examiner as support for the
Appeal No. 1999-0893
Application No. 08/683,236
4
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s
arguments set forth in the Briefs along with the Examiner's
rationale in support of the rejection and arguments in
rebuttal
set forth in the Examiner's Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the invention as set forth in claim 1.
Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
Appeal No. 1999-0893
Application No. 08/683,236
5
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
or knowledge generally available to one having ordinary skill
in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed.
Cir. 1984). These showings by the Examiner are an essential
part
Appeal No. 1999-0893
Application No. 08/683,236
6
of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
In response to the Examiner’s 35 U.S.C. § 103 rejection
of claim 1, Appellant asserts the failure of the Examiner to
establish a prima facie case of obviousness since proper
motivation for the proposed combination of references has not
been established. In particular, Appellant contends (Brief,
pages 7-8; Reply brief, pages 2-4) that neither of the
Albrecht and Nihei references has any teaching or suggestion
to provide a barrel rotor having a plurality of rotor teeth of
the same shape and pitch provided on the inner and outer
circumference of the rotor as claimed.
After careful review of the applied Albrecht and Nihei
references in light of the arguments of record, we are in
agreement with Appellant’s position as stated in the Briefs.
The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
Appeal No. 1999-0893
Application No. 08/683,236
7
modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992).
The Albrecht reference discloses a motor in which
rotational and linear motion is provided in a single motor
structure by having a rotor annularly configured between inner
and outer stator elements. Nihei, on the other hand,
discloses separate stator and rotor structures (e.g. Figures 1
and 6) for effecting linear and rotary movement. In our view,
these structural teachings are so opposite in approach that
any motivation to combine them must have resulted from an
improper attempt to reconstruct Appellant’s invention in
hindsight. We find further deficiency in Nihei in providing
any suggestion for the Examiner’s proposed combination since
the only embodiment that provides for teeth on both sides of a
movable element is in the linear motor embodiment, not in the
rotary motor embodiment where teeth are only provided on the
outer circumference of the rotor.
We further agree with Appellant (Reply Brief, page 4)
that the Examiner’s proposed combination fails to establish a
prima facie case of obviousness since such proposed
combination would destroy the principle of operation of the
Appeal No. 1999-0893
Application No. 08/683,236
8
Albrecht reference. The motor structure disclosed in Albrecht
(e.g. Figure 8) has a rotor with teeth on the outer and inner
circumference which are necessarily of differing shape and
pitch since they are used to effect differing motor movement,
i.e. linear or rotary, when acting in conjunction with the
inner and outer stators. In our view, any attempt to modify
the rotor structure of Albrecht to provide teeth of the same
shape and pitch on the inner and outer rotor circumference
must fail the test of obviousness since the benefits of the
Albrecht structure would thereby be negated requiring a
substantial redesign of the motor structure.
In conclusion, we are left to speculate why one of
ordinary skill would have found it obvious to modify the
applied prior art to make the combination suggested by the
Examiner. The only reason we can discern is improper
hindsight reconstruction of Appellants’ claimed invention. In
order for us to sustain the Examiner’s rejection under 35
U.S.C. § 103, we would need to resort to speculation or
unfounded assumptions or rationales to supply deficiencies in
the factual basis of the rejection before us. In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
Appeal No. 1999-0893
Application No. 08/683,236
At the oral hearing on May 9, 2001, Appellant’s representative was2
informed of our consideration of the references to Welburn (U.S. Patent No.
4,501,980) and Akira (Abstract of Japanese Patent Publication JP 02237456),
both of record in the application file. Each of these references, along with
Appellant’s admitted prior art illustration in Figure 2 of the drawings,
describes rotor teeth of the same shape and pitch provided on the inner and
outer circumferences of a rotor. While each of these disclosures provides a
better teaching of the claimed rotor teeth structure than the Nihei reference
applied by the Examiner, it is our view that an attempt to combine any of
these references with Albrecht would fail for all of the reasons discussed
supra.
9
denied, 389 U.S. 1057 (1968), rehearing denied, 390 U.S. 1000
(1968). 2
Accordingly, since we are of the opinion that the prior
art applied by the Examiner does not support the obviousness
rejection, we do not sustain the rejection of appealed claim
1. Therefore, the decision of the Examiner rejecting claim 1
under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
Appeal No. 1999-0893
Application No. 08/683,236
10
) BOARD OF PATENT
JOSEPH F. RUGGIERO ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
lp
Appeal No. 1999-0893
Application No. 08/683,236
11
SUGHRUE MION ZINN MACPEAK & SEAS
2100 PENNSYLVANIA AVENUE NW
WASHINGTON DC 20037
Leticia
Appeal No. 1999-0893
Application No. 08/683,236
APJ RUGGIERO
APJ BARRY
APJ THOMAS
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s):
Prepared: January 18, 2002
Draft Final
3 MEM. CONF. Y N
OB/HD GAU
PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT