Ex Parte Wakazono

Board of Patent Appeals and Interferences

Mar 29, 2010

11291817 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIO WAKAZONO
____________

Appeal 2009-008520
Application 11/291,817
Technology Center 3700
____________

Decided: March 29, 2010
____________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008520
Application 11/291,817

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STATEMENT OF THE CASE
Yoshio Wakazono (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 10 and 11, which are the only
claims pending in the application. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002). Appellant’s representative presented oral
argument on March 16, 2010.

The Invention
Appellant’s claimed invention is directed to an energy-saving grinding
machine for grinding a workpiece with a rotating grinding wheel. Spec. 1.
Claim 10, reproduced below, is representative of the claimed
invention.
10. A grinding machine for grinding with a
grinding wheel a workpiece of a predetermined
length which is carried to be rotatable together
with a work spindle, the grinding machine
comprising:
a wheel spindle supporting a grinding wheel;
and
fluid bearing means rotatably supporting the
wheel spindle on both sides of the grinding wheel
while securing a predetermined rigidity at a
grinding point defined between the grinding wheel
and the workpiece;
wherein a rigidity at a grinding point of the
grinding wheel of the grinding machine is about
100 Newtons per micrometer, wherein at least at
portions of the wheel spindle are supported by the
fluid bearing means, wherein the spindle
component diameter is about 40 mm and wherein
an idle rotation power consumption of the grinding
machine is between about 0.5kW and about l kW
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for a grinding wheel circumferential speed of
between about 60 m/sec and about 120 m/sec.

The Rejection
Appellant seeks review of the Examiner’s rejection of claims 10 and
11 under 35 U.S.C. § 103(a) as being unpatentable over Salmon (US
4,683,679, issued Aug. 4, 1987), Tomotaki (US 2003/0232584 A1,
published Dec. 18, 2003), and Balfrey (US 5,722,156, issued Mar. 3, 1998).

SUMMARY OF DECISION
We AFFIRM.

ISSUE
The issue before us is whether the combined teachings of Salmon,
Tomotaki, and Balfrey render obvious a grinding machine of the type
described by Salmon having a spindle diameter of 40 mm, a rigidity of about
100 Newtons per micrometer, and an idle rotation power consumption of
between about 0.5 kW and about 1 kW for a grinding wheel circumferential
speed of between about 60 m/sec and about 120 m/sec.

FACTS PERTINENT TO THE ISSUES
1. Salmon describes a grinding wheel supporting arrangement in which
the grinding wheel is operated with extreme accuracy because it is
supported by a pair of axially aligned shafts which in turn are
supported by hydro-static bearings. Col. 6, ll. 20-24. Salmon’s
support arrangement maintains “very high static and dynamic
rigidity,” and thus is an improvement over the cantilever type of
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grinding wheel support arrangement in the prior art, which permits
flexing of the shaft, thereby compromising quality. Col. 1, ll. 11-16;
col. 6, ll. 26-29.
2. Salmon does not specify a shaft diameter or rigidity, and is silent with
respect to power consumption.
3. Balfrey teaches that an overall loop stiffness between the wafer 28
and the grinding wheel 64 (that is, the equivalent stiffness of the
intermediate elastic elements arranged in series) of greater than 85
Newtons per micron, and in fact as high as possible, is desirable to
achieve accurate relative motion between the grinding wheel and the
wafer, and hence accurate machining. Col. 9, ll. 63-66; col. 13, ll. 38-
40 and 63-65).
4. Balfrey emphasizes that such stiffness (rigidity) is achieved by
providing a spindle which is “extremely stiff” and “capable of
supporting high rotational speed,” and supporting the spindle on high
precision bearings such as hydrostatic bearings. Col. 13, ll. 40-46.
5. Balfrey discusses grinding wheel peripheral rotation speeds of
between about 50 m/s and 100 m/s. Col. 12, ll. 57-59; col. 13, ll. 12-
14.
6. Tomotaki shows that it was recognized by those of ordinary skill in
the art that providing a spindle that is larger and heavier than
necessary for the application of the grinding machine results in
excessive energy consumption. Paras. 11 and 12. Consequently,
Tomotaki proposes reducing the size and weight of the spindle stock
to reduce energy consumption. Para. 12.
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7. We find that Tomotaki’s reference to size of spindle stock (see Fact 6)
is a reference to spindle diameter.
8. In prior art cantilever type support arrangements of the grinding
wheel, the spindles have been designed to be large to increase the
rigidity during grinding to thereby keep machining accuracy high.
Spec. 2.
9. In contrast to the prior art cantilever arrangement, which required
large diameter bearings and spindles, Appellant’s grinding machine
“comprises a wheel spindle for supporting the grinding wheel and
fluid bearing means for rotatably supporting the wheel spindle on both
sides of the grinding wheel while securing a predetermined rigidity at
a grinding point defined between the grinding wheel and the
workpiece.” Spec. 3. See also claim 10.

PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
Id. at 418.
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Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986).
Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning” to combine the
known elements in the manner required in the claim at issue. In re Kahn,
441, F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418. However, “the 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.
When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this
leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and
common sense. In that instance the fact that a
combination was obvious to try might show that it
was obvious under § 103.
Id. at 421.
As a general rule, the discovery of an optimum value of a result
effective variable is ordinarily within the skill of the art, and thus usually
obvious. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007)
(citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980) and In re Aller, 220
F.2d 454, 456 (CCPA 1955)). Additionally, where the difference between
the claimed invention and the prior art is some range or other variable within
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the claims, the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). Moreover,
even though applicant's modification results in
great improvement and utility over the prior art, it
may still not be patentable if the modification was
within the capabilities of one skilled in the art,
unless the claimed ranges “produce a new and
unexpected result which is different in kind and
not merely in degree from the results of the prior
art.”
In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (quoting In re Aller, 220
F.2d at 456).

ANALYSIS
Appellant argues claims 10 and 11 together. Thus, in accordance with
37 C.F.R. § 41.37(c)(1)(vii) (2007), we select claim 10 as the representative
claim, with claim 11 standing or falling with claim 10.
Salmon, like Appellant, recognizes that a grinding wheel supporting
arrangement in which the grinding wheel is supported by a pair of axially
aligned shafts, which in turn are supported by hydro-static bearings, is an
improvement over the cantilever type of grinding wheel support arrangement
in the prior art, because it maintains “very high static and dynamic rigidity.”
Facts 1 and 9. Salmon differs from the subject matter of claim 10 in that
Salmon does not specify a shaft diameter or rigidity, and is silent with
respect to power consumption. See Fact 2.
Balfrey teaches that a rigidity at a grinding point of the grinding wheel
of greater than 85 Newtons per micron, and in fact as high as possible, is
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desirable to achieve accurate machining of a wafer, with contemplated
grinding wheel circumferential speeds within the range set forth in claim 10.
See Facts 3 and 5. In light of that teaching, it would have been obvious to a
person of ordinary skill in the art to design Salmon’s grinding machine so as
to provide a rigidity of about 100 Newtons per micrometer, as called for in
claim 10, as a matter of common sense and ordinary creativity. See KSR,
550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
Balfrey teaches that the stiffness of the spindle and the quality of
bearings supporting the spindle contribute to the rigidity at the grinding
point. See Fact 4. Consequently, a person of ordinary skill in the art would
have appreciated that increased spindle size leads to increased rigidity, and
hence improved accuracy in machining. See also Fact 8. A person of
ordinary skill in the art would also have recognized, however, that larger
spindle diameter comes at a cost, namely, increased energy consumption.
Facts 6 and 7. Tomotaki’s suggestion to reduce spindle diameter to avoid
excessive energy consumption (Fact 6) thus would have prompted the
artisan to provide Salmon’s grinding machine with a spindle diameter just
large enough to ensure the requisite rigidity, taking into account the
improved static and dynamic rigidity afforded by the grinding wheel support
arrangement of Salmon (Fact 1). “The fact that the motivating benefit
comes at the expense of another benefit, . . . should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed Cir. 2000). In other words, despite Appellant’s argument to the
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contrary, the applied prior art does establish that spindle diameter was an art-
recognized result effective variable. Therefore, the selection of a particular
spindle diameter amounts to nothing more than the routine optimization of a
result effective variable, balancing the competing benefits of
rigidity/accuracy and reduced power consumption.
This is not a case where the prior art gives no indication of which
parameters are critical or no direction as to which of many possible choices
is likely to be successful. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed.Cir.2006) (an artisan does not have a reasonable
expectation of success where the prior art does nothing more than invite the
artisan “merely to vary all parameters or try each of numerous possible
choices until one possibly arrived at a successful result,” without either
giving an indication of which parameters are critical or some “direction as to
which of many possible choices is likely to be successful”). As discussed
above, the prior art applied by the Examiner, taken as a whole, points to
spindle diameter as the parameter to optimize to balance the competing
objectives of rigidity and reduced power consumption. Appellant’s attack of
these references individually (App. Br. 8; Reply Br. 2-3) is unconvincing, as
the rejection is based upon the combined teachings of those references. See
In re Merck & Co. Inc., 800 F.2d at 1097 (nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures).
Given the similar spindle and high precision supporting bearing
arrangements of Salmon and Appellant (see Facts 1 and 9), there is
reasonable basis to support the conclusion that the selection of a spindle
diameter of about 40 mm, as called for in claim 10, is nothing more than the
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discovery of an optimum value to achieve both the desirable rigidity of
about 100 Newtons per micrometer and a power consumption within the
range claimed. In any event, to the extent that there is any difference
between the invention of claim 10 and Salmon, as modified in view of
Balfrey and Tomotaki to optimize spindle diameter, Appellant has not
shown that the particular value or range is critical. In particular, Appellant
has not shown that the particular power consumption range claimed is
critical, rather than simply an arbitrary target, or that it is an unexpected
result of the optimization of spindle diameter to ensure the selected rigidity
while avoiding excess power consumption. The facts in this case tend to
show that the relationships between the design parameters and system
performance were well understood by those of ordinary skill in the art, and
that optimization of a grinding machine to achieve the rigidity, spindle
diameter, and power consumption set forth in claim 10 was well within the
technical grasp of a person of ordinary skill in the art. Appellant has
proffered no evidence to show that this was not the case. Consequently,
Appellant has not persuaded us that the Examiner erred in concluding that
the combined teachings of Salmon, Tomotaki, and Balfrey render obvious
the subject matter of claim 10.

CONCLUSIONS
On the basis of the record before us, the combined teachings of
Salmon, Tomotaki, and Balfrey render obvious a grinding machine of the
type described by Salmon having a spindle diameter of 40 mm, a rigidity of
about 100 Newtons per micrometer, and an idle rotation power consumption
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of between about 0.5 kW and about 1 kW for a grinding wheel
circumferential speed of between about 60 m/sec and about 120 m/sec.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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