Ex Parte Wong et alDownload PDFPatent Trial and Appeal BoardApr 1, 201412105175 (P.T.A.B. Apr. 1, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEALS BOARD ____________ Ex parte JONATHAN K.J. WONG, CHOON HOE KOH, and NATARAJAN SWAMINATHAN ____________ Appeal 2012-000261 Application 12/105,175 Technology Center 2800 ____________ Before CHUNG K. PAK, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1, 2, 5-11, 14-18, and 20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. 103(a): Appeal 2012-000261 Application 12/105,175 2 (I) Claims 1, 2, 5-6, 8-11, 14-15, 17, 18, and 20 as being unpatentable over Bailey (US 3,041,516, patented June 26, 1962) in view of Lieu (US 2005/0134124 A1, published June 23, 2005); (II) Claims 7 and 16 as being unpatentable over the combination of Bailey, Lieu, and Davidov (US 2003/0137273 A1, published July 24, 2003). Claim 1 is representative of the claimed subject matter: 1. A spindle motor comprising: a bearing defined between a stationary component and a rotatable component, wherein the stationary component and the rotatable component are positioned for relative rotation; a stator, affixed to the stationary component, the stator comprising a first tooth and a second tooth, the first tooth comprising a first phase winding about a first laminator, and the second tooth comprising a second phase winding about a second laminator; and a magnet affixed to the rotatable component to interact with the stator and operable to cause rotation of the rotatable component, wherein the first phase winding and the second phase winding are simultaneously energized to cause the interaction of the stator with the magnet for a net rotational torque, wherein the first tooth is positioned to generate a first radial force on the spindle motor, and the second tooth is positioned to generate a second radial force on the spindle motor, wherein the first radial force on the spindle motor is substantially equal and opposite of the second radial force on the spindle motor and wherein the first radial force and the second radial force equals a total radial force on the spindle motor. ANALYSIS Upon consideration of the evidence on this record and each of Appellants’ contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appeal 2012-000261 Application 12/105,175 3 Appellants’ claims is unpatentable under 35 U.S.C. § 103 over the applied prior art.1 We sustain the above rejections (I) and (II) based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner in the Answer. We add the following for emphasis. It is well established that the transitional term “comprising,” which is synonymous with “including,” is inclusive or open-ended and does not exclude any additional, unrecited elements. See Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). Appellants do not specifically refute the Examiner’s modification of Bailey based on Lieu (Ans. 6; Br. generally). Appellants do not specifically dispute the Examiner’s finding that Bailey exemplifies a motor with a radial force of zero applied by a tooth pair (Ans. 5-7; Br. 12, 13). Appellants also do not dispute the Examiner’s finding that each tooth pair of Bailey exerts a radial force of zero on the spindle motor, and that the total radial force always remains zero (Ans. 7; Br. generally). Rather, Appellants’ main argument is that Bailey shows three tooth pairs and thus the radial force is the sum of six force components, rather than the sum of the radial forces generated by a first and second tooth (Br. 13). This argument is unavailing, as it is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but 1 Appellants only present arguments directed to the common features of the independent claims1, 10, and 17 (Br. 12-16). Appeal 2012-000261 Application 12/105,175 4 otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.”) The Examiner reasonably determined that the disputed claim recitation does not preclude the use of three tooth pairs as depicted in Bailey, due to the open ended claim term “comprising,” and that since the total radial force is zero, the first and second radial force of the first tooth pair that is zero also equals a total radial force (e.g., Ans. 13, 14). Indeed, Appellants’ Specification discloses three tooth pairs (see, e.g., Spec. Fig. 6; para. [00017]). Notably, Appellants have provided no persuasive evidence, or any persuasive line of technical reasoning, explaining why the Examiner’s broadest reasonable interpretation is in error (Ans. 13-15; see generally Brief; no Reply Brief has been filed). The decision of the Examiner 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). AFFIRMED cdc Copy with citationCopy as parenthetical citation