Ex Parte Takechi

Board of Patent Appeals and Interferences

Jul 23, 2009

10960570 (B.P.A.I. Jul. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TETSUO TAKECHI
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Appeal 2009-002939
Application 10/960,570
Technology Center 3600
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Decided:1 July 23, 2009
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Before LINDA E. HORNER, JOHN C. KERINS, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002939
Application 10/960,570

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STATEMENT OF THE CASE
Tetsuo Takechi (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 3-5. We have jurisdiction under
35 U.S.C. § 6(b) (2002). We REVERSE.
The Appellant’s claimed invention is a geared motor used in a driving
device for an electric wheelchair. Spec. 1:5-6.
The Appellant seeks review of the Examiner’s rejection of claims 3
and 5 under 35 U.S.C. § 103(a) as unpatentable over published Japanese
Patent Application Publication No. 05-008722 to Masayuki Tanigawa
(referred to hereinafter as “Masayuki” for consistency with the Answer)
(published January 19, 1993). The Appellant also seeks review of the
Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over: Masayuki and published Japanese Patent Application Publication
No. 09-296829 to Kunihiro Hayashi (referred to hereinafter as “Kunihiro”
for consistency with the Answer) (published November 18, 1997).
The Examiner found that Masayuki discloses the geared motor of
claims 3 and 5 except that the clutch is disposed to engage an intermediate
shaft rather than the output shaft, as claimed. Ans. 3. The Examiner
concluded that it would have been obvious to modify Masayuki’s geared
motor by repositioning the clutch from engaging the intermediate shaft to
engaging the output shaft. Ans. 4. The Examiner’s conclusion that claim 4
is unpatentable over Masayuki and Kunihiro relies, in part, on the same
modification to the clutch of Masayuki. Ans. 4. 2

2 The Examiner did not rely on Kunihiro as support for the proposed
modification in contention.
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Application 10/960,570

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The Appellant contends that the Examiner has failed to articulate an
adequate rational basis for the proposed modification to the position of the
clutch of Masayuki and that the Examiner’s motivation is based on
impermissible hindsight. App. Br. 16-21; Reply Br. 10-14. The issue
presented in this appeal is whether the Appellant has demonstrated that the
Examiner erred in rejecting claims 3-5 because the Examiner failed to
provide a sufficient reason with a rational underpinning to explain why one
having ordinary skill in the art would have modified Masayuki to reposition
the clutch from engaging the intermediate shaft to engaging the output shaft.
Initially, the Examiner concluded a person of ordinary skill in the art
would reposition Masayuki’s clutch from engaging the intermediate shaft to
engaging the output shaft “for the purpose of accommodating a clutch lever
in a lower position on the motor and reducer casing.” Ans. 4. This rationale
is insufficient because it merely explains where the clutch would be
repositioned, and provides no reason with a rational underpinning to explain
why one having ordinary skill in the art would have made such a
modification.
Then, in Response to Argument, the Examiner asserted that because
the modification does not change the gearing or the clutch function, the
modification could be found to be an obvious rearrangement. Ans. 7-8
(citing In re Japikse, 181 F.2d 1019 (CCPA 1954). In Japikse, the court
held that moving a starter switch to a location different from the prior art
was an obvious variation because the operation of the device would not be
modified. In re Japikse, 181 F.2d at 1023. The Appellant contends that in
the present case, the operation of the device is modified because, as
acknowledged by the Examiner, repositioning the clutch isolates the output
Appeal 2009-002939
Application 10/960,570

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shaft from the remaining gear train, allowing the output shaft to be rotated
with less friction when the clutch is disengaged. Reply Br. 13 (referring to
Ans. 5). Because the Examiner’s proposed modification changes the
structure and the function of Masayuki’s device, the modification is more
than an obvious rearrangement or design choice. See In re Gal, 980 F.2d
717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when
claimed structure and the function it performs are different from the prior
art).
The Examiner goes on to state that a motivation for the modification
must be provided. Ans. 8. We agree. The Examiner then elaborates on the
initial rationale, stating that a person having ordinary skill in the art would
have modified Masayuki in the manner claimed for a number of reasons,
such as: “to reposition an operating element so that it does not interfere with
an element positioned above it,” “to incrementally lower the overall center
of gravity to improve stability,” or “to allow the use of a longer control arm
resulting in a lowered operating force at the control arm end.” Ans. 8.
While the Examiner has identified three different potential problems that
might necessitate relocation of the clutch from an intermediate shaft to an
output shaft, the Examiner has not provided in the record any objective
evidence to show that any of these problems were known in the art at the
time of Appellant’s invention. See KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398, 419-20 (2007) (“One of the ways in which a patent's subject matter can
be proved obvious is by noting that there existed at the time of invention a
known problem for which there was an obvious solution encompassed by the
patent's claims”) (emphasis added).
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Application 10/960,570

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Each of these reasons seems to have no basis other than the
Appellant’s own disclosure. Though the reasons provided by the Examiner
may be valid, general design considerations, they fall short of articulating
reasoning with some rational underpinning to support modifying Masayuki
to reposition the clutch from engaging the intermediate shaft to engaging the
output shaft. “[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418. Thus, absent hindsight, we see no reason,
and the Examiner has not provided an adequate articulation of a reason, why
a person of ordinary skill in the art would have been led to modify the
geared motor of Masayuki to reposition the clutch from engaging the
intermediate shaft to engaging the output shaft.
The Appellant has shown that the Examiner erred in the decision to
reject claims 3-5 by failing to articulate a sufficient reason to modify
Masayuki to reposition the clutch from engaging the intermediate shaft to
engaging the output shaft.
We reverse the Examiner's decision to reject claims 3-5.

REVERSED

Vsh

Appeal 2009-002939
Application 10/960,570

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