Ex parte Yoshino

Board of Patent Appeals and Interferences

Nov 23, 1999

08227686 (B.P.A.I. Nov. 23, 1999)

Application for patent filed April 14, 1994. According1
to the appellant, the application is a continuation of
Application No. 07/852,217, filed May 28, 1992, now abandoned.

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journal and (2) is not binding precedent of the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. 35
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte AKIRA YOSHINO
____________
Appeal No. 1996-4067
Application No. 08/227,6861
____________
ON BRIEF
____________
Before JOHN D. SMITH, PAK and WALTZ, Administrative Patent
Judges.
JOHN D. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal pursuant to 35 U.S.C. § 134 from the
final rejection of claims 7 and 8.
Claim 7 is representative and is reproduced below:
Appeal No. 1996-4067
Application No. 08/227,686
Our review of this reference is based on the English2
translation of record.
2
7. A method of manufacturing a motor rotary apparatus
containing a rotary shaft having a journal portion, the method
comprising the steps of masking portions of said apparatus
other than the journal portion, holding said journal portion
in a fluorine- or fluoride-containing gas atmosphere under
heating to form a fluoride layer on the surface of the journal
portion, and thereafter further holding the journal portion in
a nitride atmosphere under heating to form a hard nitride
layer on the surface of the journal portion, and assembling on
said rotary shaft an armature; an armature coil operably
mounted onto said armature; and a commutator operably mounted
onto said armature coil.
The references of record relied upon by the examiner are:
Tahara et al. (Tahara) 5,013,371 May
7, 1991
Hollox 4,858,294 August
22, 1989
Patent Abstracts of Japan, Unexamined Applications, Section:
E, Section. No. 885, Vol. 14, No. 67 p. 145 (the Japanese
abstract), published July 2, 1990
Franz et al. (Franz ) German patent 222 335 published May 15,2
1985
The appealed claims stand rejected under 35 U.S.C. § 103
as unpatentable over the Japanese abstract in view of Tahara,
Franz, and Hollox.
We cannot sustain the stated rejection.
Appeal No. 1996-4067
Application No. 08/227,686
3
The subject matter on appeal is directed to a method of
manufacturing a motor rotary apparatus such as a DC or AC
servo motor used in industrial robots which apparatus contains
a rotary shaft having a journal portion rotatably supported by
a bearing member. Appellant explains in his specification in
the “Background Of The Invention” section (pages 1 and 2) that
the journal portion of the rotary shaft is “required to have
high durability” and that high durability steels “are
selected” for use as the rotary shaft of such an apparatus
with the attendant disadvantages of “increases in cost of
material and weight.”
See the specification at page 2, lines 11-20. In this regard,
the claimed method on appeal is said to form a low cost motor
rotary shaft that is of reduced weight compared to other
shafts because the claimed method forms a hard nitride layer
on the surface of the journal portion of the shaft without
forming a hard nitride layer “on the remainder of the rotary
shaft.” See the brief at page 4. To achieve this purpose,
appellant’s claimed method involves a step of masking portions
of the apparatus other than the journal portion of the shaft.
Then, the unmasked journal portion of the shaft is held in a
Appeal No. 1996-4067
Application No. 08/227,686
4
fluorine- or fluoride-containing gas atmosphere under heating
to form a fluoride layer on the surface of the journal
portion. Thereafter, the journal portion with the fluoride
layer is held in a nitride atmosphere under heating to form a
hard nitride layer on the surface of the journal portion of
the rotary shaft. At this point, the final assembly steps are
undertaken to provide the apparatus with an armature, an
armature coil, and a commutator.
In his supplemental answer entered July 7, 1999, the
examiner contends that the Japanese abstract “shows that the
claimed motor structure and components are known in the art”
although the examiner acknowledges that this “reference does
not disclose that the journal portion of the shaft has a hard
nitride layer formed on a surface.” See the supplemental
answer at pages 4 and 5 (emphasis added). We point out, as
emphasized above, that the appealed claims are directed to a
of method of manufacturing a motor rotary apparatus involving
clearly defined manipulative steps of “masking”, “holding”,
“further holding”, and “assembling.” Thus, the stated
rejection does not directly address the claimed subject
matter.
Appeal No. 1996-4067
Application No. 08/227,686
5
Even if the Japanese abstract described similar
corresponding methodology as required by the claims on appeal,
this reference contains no teaching or suggestion of the
formation of a hard nitride layer on the shaft of the
described DC servo motor, much less that a hard nitride layer
should be formed only on the journal portion of the shaft by
the specific steps required by the appealed claims. That
shafts for other devices have been selectively nitrided and
that the specific nitriding process utilized by appellant is
described in the art in the Tahara patent is no basis for
combining the teachings of the relied upon references to
arrive at the claimed subject matter. The examiner’s
statement in the supplemental answer at page 6 that
“[N]itriding just a wear part of a shaft such as a journal
portion is within an ambit” of a person of ordinary skill in
the art is simply not an adequate reason to combine the
reference teachings in the manner implicitly proposed. Thus,
the examiner’s stated rejection cannot be sustained.

OTHER ISSUES
Appeal No. 1996-4067
Application No. 08/227,686
6
Before taking any further action in this application, the
examiner should carefully review the “Background of the
Invention” section of appellant’s specification at pages 1 and
2 to determine whether this background material constitutes
admitted prior art to appellant. Specifically, with
appellant’s cooperation, the examiner should determine whether
Figure 4 of the application represents admitted prior art with
respect to an apparatus having a high durability steel shaft,
and whether prior art workers recognized at the time of
appellant’s invention that the journal portion of the shaft in
association with the bearing metals was required to “have high
durability.” See the specification at page 2, lines 11-15,
and our discussion of this disclosure at page 2 of this
decision. Based on these determinations, the question of
obviousness should be reevaluated.
In summary, the decision of the examiner is reversed.
Other issues must be considered by the examiner before taking
any additional action in this application.
REVERSED
Appeal No. 1996-4067
Application No. 08/227,686
7
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
THOMAS A. WALTZ )
Administrative Patent Judge )
jrg
Appeal No. 1996-4067
Application No. 08/227,686
8
Armstrong, Westerman, Hattori,
McLeland & Naughton
Suite 1000
1725 K St., N.W.
Washington, DC 20006