Ex Parte HorngDownload PDFPatent Trial and Appeal BoardFeb 26, 201612343605 (P.T.A.B. Feb. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/343,605 12/24/2008 69638 7590 02/26/2016 KAMRATH IP Lawfirm, PA 4825 Olson Memorial Highway, Suite 150 Golden Valley, MN 55422 FIRST NAMED INVENTOR Alex Horng UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. PK 10858US 4709 EXAMINER ANDREWS, MICHAEL ART UNIT PAPER NUMBER 2834 MAILDATE DELIVERY MODE 02/26/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX HORNG Appeal2013-009146 Application 12/343,605 Technology Center 2800 Before MICHELLE R. OSINSKI, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEivIENT OF THE CASE Alex Homg (Appellant)1 appeals under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 2, 5, 6, and 11-13. Claims 1 and 7-10 are cancelled, and claims 3 and 4 are withdrawn. App. Br., Claims App. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 According to Appellant, the real party in interest is Sunonwealth Electric Machinery Industry Co., Ltd. App. Br. 1. Appeal2013-009146 Application 12/343,605 THE CLAIMED SUBJECT MATTER Claim 13, reproduced below, is the sole independent claim and is representative of the claimed subject matter on appeal. 13. A motor comprising: a base having a shaft tube with an assembling hole, with the shaft tube having an open end and a closed end; a stator mounted around the shaft tube; a retaining seat having a first axial hole and received in the assembling hole, with the retaining seat disposed at the closed end of the shaft tube, with an outer diameter of the retaining seat being equal to a diameter of the assembling hole; a bearing having a center hole and received in the assembling hole of the shaft tube, with the bearing abutting the retaining seat; a retaining ring having a second axial hole and received in the assembling hole of the shaft tube, with an outer diameter of the retaining ring being equal to the diameter of the assembling hole, with the bearing sandwiched and positioned between the retaining ring and the retaining seat, wherein the diameter of the second axial hole of the retaining ring is larger than the diameter of the first axial hole of the retaining seat; and a rotor having a shaft with a first annular groove and a second annular groove formed on an outer periphery thereof to respectively form a first neck and a second neck of the shaft, with an outer diameter of the first neck being smaller than a diameter of the first axial hole of the retaining seat and an outer diameter of the second neck being smaller than a diameter of the second axial hole of the retaining ring, with the shaft passing through the second axial hole, the center hole and the first axial hole, with the retaining seat and the retaining ring surrounding and partially extending into the first annular groove and the second annular groove respectively, wherein each of the first and second annular grooves have a diameter, wherein the diameter of the second annular groove is larger than the diameter of the first annular groove. 2 Appeal2013-009146 Application 12/343,605 EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Mori tan Homg '525 Homg '957 us 5,623,382 US 2007/0152525 Al US 2007 /0284957 Al REJECTIONS Apr. 22, 1997 July 5, 2007 Dec. 13, 2007 I. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Homg '957 and Moritan. Final Act. 3-6. II. Claims 2, 5, 6, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Homg '957, Moritan, and Homg '525. Id. at 6-9. OPINION The Examiner finds that Homg '957 teaches substantially all of the limitations of independent claim 13, except for those relating to a "second annular groove formed on an outer periphery of the shaft [] to form a second neck." Final Act. 3-5. More particularly, because the Examiner finds Homg '957 lacks a second annular groove on the shaft to form a second neck, the Examiner finds Homg '957 necessarily lacks teachings that (i) the outer diameter of the second neck is smaller than the diameter of the second axial hole of retaining ring 24;2 and (ii) the first groove (necking 13 on shaft 2 Claim 13 provides for "a rotor having a shaft with a first annular groove and a second annular groove formed on an outer periphery thereof to respectively form a first neck and a second neck of the shaft, with ... an outer diameter of the second neck being smaller than a diameter of the second axial hole of the retaining ring." App. Br., Claims App. 3 Appeal2013-009146 Application I2/343,605 I I) and the second groove each have a diameter, wherein the diameter of the second annular groove is larger than the diameter of necking I 3. 3 See id. at 5; see also Homg '957, Fig. 3 (showing elements I I, I3, 24). To remedy these deficiencies, the Examiner turns to Moritan's teaching of motor shaft 203 with second annular groove 203c formed on an outer periphery thereof to form a second neck. Final Act. 5 (citing Moritan, l:IO-I3, 7:24--26, 8:I8-20, Fig. IA). The Examiner also looks to Moritan's teaching that the outer diameter of the second neck is smaller than a diameter of the second axial hole. Id. (citing Moritan, Fig. IA). The Examiner concludes that it would have been obvious to modify Homg '957 to include a second annular groove in the shaft, as taught by Moritan, "for axially supporting the rotor thereof, since Moritan teaches that the retaining ring locks the rotor in place while allowing it to rotate and preventing damage thereto." Id. at 5---6 (citing Moritan, 8:3 I-36). The Examiner acknowledges that the combination of Homg '957 and Mori tan "does not expressly disclose that the diameter of the second annular groove is larger than the diameter of the first annular groove," but concludes that it would have been obvious to one of ordinary skill in the art "to construct the first and second annular grooves of Homg [']957 and Moritan with the relative dimensions claimed, having no effect on its function." Id. at 6 (citing Gardner v. TEC Systems, Inc., 725 F.2d I338 (Fed. Cir. I984), cert. denied, 469 U.S. 830 (1984)). 4 3 Claim I 3 also provides that "each of the first and second annular grooves have a diameter, wherein the diameter of the second annular groove is larger than the diameter of the first annular groove." App. Br., Claims App. 4 The Examiner also concludes that "the claimed dimensions would have been obvious to one of ordinary skill in the art" because the modification to 4 Appeal2013-009146 Application 12/343,605 As to those limitations found by the Examiner to be taught by Homg '957, the only disagreement by Appellant relates to the claimed retaining ring. The Examiner finds that Homg '957 teaches a retaining ring-washer 24. Final Act. 4. The Examiner finds that (i) washer 24 has an axial hole with a diameter larger than that of the axial hole of limit member (or retaining seat) 30, (ii) washer 24 is received in the assembling hole of shaft tube 21, (iii) the outer diameter of washer 24 is equal to the diameter of the assembling hole of shaft tube 21, and (iv) bearing 23 is sandwiched between washer 24 and retaining seat 30. Id. (citing Homg '957 i-f 24, Fig. 3). Appellant argues that washer 24 cannot be considered a retaining ring when the term is construed within the context of the Specification. App. Br. 3. More particularly, Appellant argues that washer 24 does not "retain" the shaft because it doesn't extend into any groove of the shaft as there is no teaching that washer 24 retains spindle 11 in shaft tube 21 or in bearing 23. Reply Br. 2; App. Br. 3. We are not persuaded by Appellant's argument. Appellant has not directed us to any lexicographical definition of "retaining ring" set forth in the Specification that would require it to have the particular functionality or structural interactions argued by Appellant, 5 and we decline to import any specific characteristics of the retaining ring that may be set forth in the Specification into the claims. See Superguide Corp. v. DirecTV Enter., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) ("Though understanding the Homg '957 "would have involved a mere change in the size of a component, and a change in size is generally recognized as being within the level of ordinary skill in the art." Ans. 3 (citing In re Rose, 220 F .2d 459 ( CCP A 1955)). 5 We also note that the claim itself fails to recite such functionality or structural interactions. 5 Appeal2013-009146 Application 12/343,605 claim language may be aided by the explanations contained in the written description, it is important not to import into a claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment."). Appellant next contends that one of ordinary skill in the art looking to modify Horng '957's motor spindle system structure would not have utilized Moritan's annular groove 203c on shaft 203 without the magnetic attraction force of Moritan, and further, that there wouldn't have been an expectation of success in stabilizing the position of the rotor without the magnetic attraction force. App. Br. 3--4; Reply Br. 2. We are not persuaded by Appellant's contention. Appellant provides no evidence supporting this contention, only attorney argument. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). Moreover, the Examiner's use of only a portion of Moritan's teachings is appropriate in that all of the features of the secondary reference need not be bodily incorporated into the primary reference (see In re Keller, 642 F.2d 413, 425 (CCPA 1981)), and the ordinary artisan is not required to blindly follow the teaching of one prior art reference over the other without the exercise of independent judgment (Lear Siegler Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984)). Appellant has not provided persuasive evidence or technical reasoning to support that the Examiner's proposed modification of Horng '957 would have been beyond the level of ordinary skill in the art or unpredictable to a person of ordinary skill in the art. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary skill is also a person of ordinary creativity, not an automaton."). 6 Appeal2013-009146 Application 12/343,605 Appellant further argues that "as the prior art does not show first and second grooves in the rotor shaft and first and second retaining elements in a single motor, the prior art cannot suggest the relationships of the diameters of the annular grooves and of the axial holes of the retaining seat." App. Br. 4. Appellant's first specific example relates to the relationship of the diameter of the second axial hole of the retaining ring to the first axial hole of the retaining seat. Id. at 4--5. We are not persuaded of Examiner error. The Examiner has adequately shown that the diameter of the hole of washer (or retaining ring) 24 is greater than the diameter of the hole of limit structure (or retaining seat) 30. Homg '957, Fig. 3; Ans. 5-6. Appellant's second specific example relates to the relationship between the diameters of the annular grooves in which the diameter of the second annular groove is larger than that of the first annular groove. App. Br. 5. Appellant argues that the smaller diameter of the first annular groove as compared to the second annular groove creates an increased shoulder distance at the first annular groove that is abutted by retaining seat 30. Id. Appellant argues that when this increased shoulder distance is coupled with the smaller first axial hole of the retaining seat (which allows the retaining seat to extend further radially inwardly of shaft 61 ), an "improved retaining effect" is achieved that also avoids leakage of lubricating oil. Id. The Examiner responds that there is no disclosure regarding the purported relationship involving the distances between the second annular groove and retaining ring and between the first annular groove and retaining seat, such that there is no evidence of the purported beneficial effects. Ans. 6. The Examiner also finds that the improved retaining effect is disclosed as being due to the prevention of radial and axial movement of the retaining 7 Appeal2013-009146 Application 12/343,605 seat after being mounted in the shaft tube through the use of grooves in general, as opposed to the use of any particular dimensions of the first and second annular grooves, relative to one another. Final Act. 3 (citing Spec. 5: 12---6: 17). The Examiner maintains that a device having the claimed relative dimensions has not been shown to perform differently from the prior art device, and thus, is not patentably distinct from the prior art device. Ans. 7. In this particular case, we agree with the Examiner. In the absence of any explanation in the Specification or any other evidence in support of Appellant's contention that the relative dimensions have an effect on the function of the motor, we are not persuaded that Appellant has sufficiently demonstrated the criticality of the specific limitation such that the Examiner's reliance on a rationale reasoned from legal precedent is inappropriate in this case or in error. For the foregoing reasons, we are not persuaded of Examiner error, and we sustain the Examiner's rejection of independent claim 13, as well as dependent claims 2---6, 11, and 12 for which Appellant relies on the same arguments and reasoning. See App. Br. 6. New Ground of Rejection We enter the following new ground of rejection, under the provisions of 37 C.F.R. § 41.50(b): claims 2, 5, 6, and 11-13 are rejected under 35 U.S.C. § 112, first paragraph, as failing to meet the written description requirement. Compliance with the written description requirement is a question of fact. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991 ). In order to comply with the written description requirement, the applicant's disclosure must "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the 8 Appeal2013-009146 Application 12/343,605 [claimed] invention." Vas-Cath, Inc. at 1563---64. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). Upon our review of Appellant's Specification, nowhere do we find a description of each of the first and second annular grooves having a diameter, wherein the diameter of the second annular groove is larger than the diameter of the first annular groove. In connection with the Amendment in which this language was added to the claims, Appellant pointed to the disclosure in the Specification that the diameter of second axial hole 52 of retaining ring 50 is larger than that of first axial hole 32 of retaining seat 30. Amendment After Final, 6 (July 14, 2010) (citing Spec. 16:2-17: 18, Fig. 7). This portion of the Specification, however, fails to specifically mention the diameters of the grooves. Merely because the diameter of the second axial hole of the retaining ring is larger than the first axial hole of the retaining seat does not necessarily mean that the grooves into which the retaining ring and retaining seat are disposed, respectively, have the claimed relationship. Of particular significance, the Examiner has found, and we agree, that "there is no disclosure ... that the distances between the second annular groove and the retaining ring, and between the first annular groove and the retaining seat, have the relationship alleged by the Appellant." Ans. 6. To the extent that the Figures may be alleged to support this limitation, the Figures are not, based on any evidence before us, drawn to scale. Thus, the Figures cannot act as the sole basis for written description support for the limitations at issue. See In re Olson, 212 F.2d 590, 591 9 Appeal2013-009146 Application 12/343,605 (CCPA 1954) (atlirming new matter rejection, stating "[o]rdinarily drawings which accompany an application for a patent are merely illustrative of the principles embodied in the alleged invention claimed therein and do not define the precise proportions of elements relied upon to endow the claims with patentability"). This is especially true considering that any possible perceived difference between the illustrated diameters of the necks formed by the first and second annular groove is extremely slight. Spec. Figs. 5-7. Appellant's disclosure, thus, does not evidence that Appellant was in possession of a rotor having a shaft with a first annular groove and a second annular groove formed on an outer periphery thereof, wherein each of the first and second annular grooves have a diameter, wherein the diameter of the second annular groove is larger than the diameter of the first annular groove. For the foregoing reason, independent claim 13 fails to meet the written description requirement set forth in the first paragraph of 35 U.S.C. § 112. Claims 2, 5, 6, 11, and 12 depend from claim 13, and thus, necessarily include all limitations present in claim 13. These claims, therefore, also fail to meet the written description requirement set forth in the first paragraph of 35 U.S.C. § 112. DECISION The Examiner's decision to reject claims 2, 5, 6, and 11-13 is AFFIRMED. We enter a NEW GROUND OF REJECTION of claims 2, 5, 6, and 11-13 under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. 10 Appeal2013-009146 Application 12/343,605 Regarding the affirmed rejection, 37 C.F.R. § 41.52(a)(l) provides "Appellant may file a single request for rehearing within two months from the date of the original decision of the Board." In addition to affirming the Examiner's rejection of claims 2, 5, 6, and 11-13, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two option with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the exammer .... (2) Request rehearing. Request the proceeding be reheard under§ 41.52 by the Board upon the same record .... Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 11 Appeal2013-009146 Application 12/343,605 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED; 37 C.F.R. § 41.50(b) 12 Copy with citationCopy as parenthetical citation