Ex Parte Ries

Patent Trial and Appeal Board

Mar 14, 2013

10591086 (P.T.A.B. Mar. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GUENTER RIES
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Appeal 2010-010097
Application 10/591,086
Technology Center 2800
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Before KRISTEN L. DROESCH, HUNG H. BUI, and GEORGIANNA W.
BRADEN, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 14-16 and 18-21.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.3

1 Real Party in Interest is BSH Bosch und Siemens Hausgeräte GmbH.
2 Claims 14-31 are pending in this application. Claims 1-13 have been
cancelled and are not on appeal. In a Final Office Action, mailed August 31,
2009 (“FOA”), claims 22-31have been indicated as allowable and claim 17
conditionally allowable if rewritten in independent form.
Appeal 2010-010097
Application 10/591,086

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STATEMENT OF THE CASE
Appellant’s Invention
Conventional yokes for linear drive devices have been kinked on a
side facing the armature body. Such conventional yokes are expensive to
produce and it is difficult to arrange the excitation windings in the winding
windows. Appellant’s Spec. 2:5-11. In contrast, Appellant’s invention
relates to a linear drive device with a simplified yoke structure in which all
limbs of the main yoke body have the same axial widths at their pole
surfaces facing the armature body, the limbs are each spaced apart from one
another axially by a pole surface spacing and an axial extension of each
magnet part is approximately equal to the sum of the pole surface width and
a pole surface spacing. Id., 2:17-21; FIG. 1, and Abstract.

Claims on Appeal
Claim 14 is the only independent claim on appeal and is
representative of the invention, and is reproduced below with disputed
limitations emphasized:

14. A linear drive device comprising:

an excitation winding producing a variable magnetic
field;

3 Our decision refers to Appellant’s Appeal Brief filed October 29,
2009 (“App. Br.”); Examiner’s Answer mailed March 9, 2010 (“Ans.”); and
the original Specification filed August 29, 2006 (“Spec.”).
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Application 10/591,086

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a magnetic-flux-guiding main yoke body accommodating
the excitation winding and having multiple limbs including a
central limb;

a winding-free counter-yoke body disposed opposite to
the main yoke body;

an axial gap formed between the main yoke body and the
counter-yoke body;

an armature body provided with at least two permanent
magnetic magnet parts arranged axially one behind the other
and having opposite magnetization, each of the at least two
magnet parts having a magnet axial extension dimension, the
armature body being set in axially oscillating motion by the
magnetic field of the excitation winding in the axial gap; and

each of the multiple limbs of the main yoke body having
a pole surface facing the armature body and defining a pole
surface width dimension extending across the axial width of the
pole surface, the pole surface width dimension of each of the
multiple limbs being substantially the same, each of the
multiple limbs being spaced apart from one another axially by
a pole surface spacing dimension, the magnet axial extension
dimension of each magnet part being approximately equal to
the sum of the pole surface width dimension and the pole
surface spacing dimension.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
McGill (McGill ’834) US 2003/0173834 A1 Sep. 18, 2003
Huth (Huth ’553) EP09155553A2 Oct. 28, 1998
Hitoo Tomigashi (Hitoo ’829) JP2000-224829 Feb. 01, 1999
Hitoo Togashi (Hitoo ’640) JP2000-253640 Feb. 25, 1999

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Examiner’s Rejections
(1) Claims 14, 18 and 20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated over Hitoo ’640. Ans. 3.
(2) Claims 14 and 18-20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated over Hitoo ’829. Ans. 3-4.
(3) Claims 15 and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hitoo ’640 and Huth ’553. Ans. 4.
(4) Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hitoo ’640 and McGill ’834. Ans. 5.

ISSUES
Under § 102(b), has the Examiner erred in finding that Hitoo ’640 and
separately, Hitoo ’829 disclose the disputed features of Appellant’s
independent claim 14, including:
the pole surface width dimension of each of the multiple limbs
being substantially the same, each of the multiple limbs being spaced
apart from one another axially by a pole surface spacing dimension,
the magnet axial extension dimension of each magnet part being
approximately equal to the sum of the pole surface width dimension
and the pole surface spacing dimension[?]

App. Br. 8-15; Reply Br. 8-23.
Under § 103(a), has the Examiner erred in finding that (1) the
combination of Hitoo ’640 and Huth ’553 discloses or renders obvious the
invention of claims 15 and 16; and (2) the combination of Hitoo ’640 and
McGill ’834 discloses or renders obvious the invention of claim 21? App.
Br. 15-19; Reply Br. 23-30.
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ANALYSIS
With respect to the anticipation rejection of claims 14, 18 and 20
based on Hitoo ’640, Appellant contends that Hitoo ’640 does not disclose
several features of independent claim 14, including:
a pole surface width dimension of each of the multiple limbs
being substantially the same, each of the multiple limbs being
spaced apart from one another axially by a pole surface spacing
dimension, the magnet axial extension dimension of each
magnet part being approximately equal to the sum of the pole
surface width dimension and the pole surface spacing
dimension.

App. Br. 8-10; Reply Br. 8-14. According to Appellant, “these features are
important for simplifying the yoke structure and thereby making it less
expensive to manufacture and easier to install the windings.” Id., 8. In
particular, Appellant argues that FIG. 7 of Hitoo ’640 (if drawn to scale)
shows that “the width of the central limb 2a clearly is larger than the width
of the outer limbs” and that Hitoo ’640 is completely silent with respect to
two disputed limitations: (1) “a pole surface width dimension of each of the
alleged multiple limbs 2a being substantially the same,” and (2) “the magnet
axial extension dimension of each magnet part being approximately equal to
the sum of the pole surface width dimension and the pole surface spacing
dimension,” as recited in claim 14. App. Br. 9; Reply Br. 10.
In response thereto, the Examiner admits that Hitoo ‘640 does not
disclose the disputed limitations; nevertheless, the Examiner asserts that
“these two conditions represent an optimized magnetic circuit design
inherent in the reference,” and provides a hand-sketched diagram of FIGS.
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A-D to show the magnet axial extension dimension of each magnet part is
less than the sum of the pole surface width dimension and the pole surface
spacing dimension. Ans. 6-7 (emphasis added). In addition, the Examiner
also applies a broad interpretation to the disputed limitations, noting the
deviations of the sum of the pole surface width dimension and the pole
surface spacing dimension are ±10% as described on page 2, ¶[008] of
Appellant’s Specification.
At the outset, we note that nowhere in Hitoo ’640 is there any
disclosure of the two disputed limitations of independent claim 14, as
expressly admitted by the Examiner. Ans. 6. Next, we address the question
as to whether these two disputed limitations of independent claim 14 can be
inherent to the structure of Hitoo ‘640. However, we find no evidence from
Hitoo ’640 to support that the two disputed limitations of Appellant’s
independent claim 14 are necessary present in the moving magnet-type
linear vibration motor 10 as shown in FIGS. 1-6 of Hitoo ’640. See Dayco
Products, Inc. v. Total Containment, Inc., 329 F.3d 1358, 1369 (Fed. Cir.
2003). "Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient." In re Oelrich, 666 F.2d 578, 581 (CCPA
1981) (citing Hansgirg v. Kemmer, 102 F.2d 212, 214 (1939)). For
example, nowhere in FIGS. 1-6 of Hitoo ’640 is there any showing of
“multiple limbs including a central limb” and that “the pole surface width
dimension of each of the multiple limbs being substantially the same,” as
recited in claim 14. Likewise, nowhere in FIGS. 1-6 of Hitoo ’640 is there
any disclosure of “the magnet axial extension dimension of each magnet part
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being approximately equal to the sum of the pole surface width dimension
and the pole surface spacing dimension,” as recited in claim 14.
We also find that the Examiner’s interpretation of the disputed
limitations is unreasonably broad. The Examiner cannot ignore or broadly
interpret the disputed limitations out of context and then rely on the
deviations of the sum of the pole surface width dimension and the pole
surface spacing dimension as described on page 2, ¶[008] of Appellant’s
own Specification against Appellant’s own claim 14.
For the reasons set forth, we cannot sustain the Examiner’s
anticipation rejection of claim 14 and its dependent claims 18 and 20.
With respect to the anticipation rejection of claims 14 and 18-20
based on Hitoo ’829, Appellant makes similar arguments presented against
the rejection of claim 14 based on Hitoo ’640. We also cannot sustain the
Examiner’s anticipation rejection of claim 14 and its dependent claims 18-20
for the same reasons discussed supra.
With respect to the obviousness rejection of claims 15 and 16 based
on Hitoo ’640 and Huth ’553, Appellant argues that neither Hitoo ’640 nor
Huth ’553 discloses or suggests the two disputed limitations of claim 14,
including:
pole surface width dimension of each of the multiple limbs being
substantially the same, each of the multiple limbs being spaced apart
from one another axially by a pole surface spacing dimension, the
magnet axial extension dimension of each magnet part being
approximately equal to the sum of the pole surface width dimension
and the pole surface spacing dimension.

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Application 10/591,086

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App. Br. 15; Reply Br. 24. We agree with Appellant’s arguments and
cannot sustain the Examiner’s rejection of claims 15 and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Hitoo ’640 and Huth ’553.
Lastly, with respect to the obviousness rejection of claim 21 based on
Hitoo ’640 and McGill ’834, Appellant makes the same argument presented
against claim 14. App. Br. 17-19; Reply Br. 27-30. We also agree with
Appellant’s arguments and cannot sustain the Examiner’s rejection of claim
21 under 35 U.S.C. § 103(a) as being unpatentable over Hitoo ’640 and
McGill ’834.

CONCLUSION
On the record before us, we conclude that the Examiner has erred in
rejecting: (1) claims 14, 18 and 20 under 35 U.S.C. § 102(b) as being
anticipated over Hitoo ’640; (2) claims 14 and 18-20 under 35 U.S.C.
§ 102(b) as being anticipated over Hitoo ’829; (3) claims 15 and 16 under 35
U.S.C. § 103(a) as being unpatentable over Hitoo ’640 and Huth ’553; and
(4) claim 21 under 35 U.S.C. § 103(a) as being unpatentable over Hitoo ’640
and McGill ’834.

DECISION
As such, we REVERSE the Examiner’s final rejection of claims 14-16
and 18-21.
REVERSED

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