Ex Parte Takahashi

Patent Trial and Appeal Board

May 28, 2014

11992305 (P.T.A.B. May. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TORU TAKAHASHI
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Appeal 2012-002379
Application 11/992,305
Technology Center 3600
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Before: JOHN C. KERINS, CHARLES N. GREENHUT and LYNNE H.
BROWNE, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002379
Application 11/992,305

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1 and 5-7. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing
was held on May 13, 2014, with Gregory W. Harper, Esq., appearing on
behalf of Appellant.
We affirm.
THE INVENTION
Appellant’s invention is directed to a bearing assembly with a rotation
detecting device. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A bearing assembly with a rotation detecting
device comprising:

an inner race;

an outer race;

rolling elements interposed between the inner race
and the outer race;

a magnetic generating element provided on the
outer ring side of the bearing assembly
and having a directionality around a center of
rotation of the outer ring so as to confront a
bearing center portion of the inner ring;

a circuit board provided on the inner ring side and
positioned at a bearing axis, the circuit
board being directly mounted on an end portion of
a shaft incorporated in an inner diametric
portion of the inner ring;

a sensor provided on the inner ring side and
positioned at a bearing axis on the circuit
Appeal 2012-002379
Application 11/992,305

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board to detect a magnetism of the magnetic
generating element to output information on
rotation or angle;

a signal extracting device to extract a detection
signal of the sensor through an interior of
the shaft incorporated in the inner diametric
portion of the inner ring; and

a shaft fixing member to fix the shaft to the inner
ring by sandwiching the inner ring from
opposite end faces, the shaft fixing member
including a flange formed in the end of the shaft
and a nut threadingly mounted on the shaft to
sandwich the inner ring at a location between the
nut and the flange,

wherein the shaft is a hollow shaft, and the signal
extracting device comprises a cable inserted within
a hollow of the hollow shaft and drawn outwardly
from an end of the shaft, which is opposite to the
end portion thereof where the sensor is fitted.

REJECTIONS
Claims 1 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peilloud (US 4,998,219, issued Jan. 29, 1991) in view of
Yamada (JP2004-239699, published Aug. 26, 2004) and Kitashiro1 (JP02-
203020, published Aug. 13, 1990).
Claims 5 and 6 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Peilloud in view of Yamada, Kitashiro and Landrieve
(WO 2004/025307, published March 25, 2004).

1 Referred to by Appellant and the Examiner in the Brief and Answer as
“Hojo”.
Appeal 2012-002379
Application 11/992,305

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OPINION
Claims 1 and 7--§ 103--Peilloud in view of Yamada and Kitashiro
The Examiner found that Peilloud discloses a circuit board 22 directly
mounted on an end portion of a shaft, which the Examiner considers to be
made up of coupled elements referred to in Peilloud as shaft 26 and support
disk 28. Ans. 5. Appellant, in arguing that the circuit board of Peilloud is
mounted on support disk 28, and not directly to the end portion of shaft 26,
is essentially challenging the Examiner’s reliance on members 26 and 28
together as corresponding to the claimed shaft. Appeal Br. 10. The
Examiner responds that claim 1 contains no structural details relative to the
shaft that result in the shaft having to be a one-piece element. Ans. 7.
The Examiner’s claim construction, and application of that claim
construction in determining that elements 26 and 28 of Peilloud correspond
to the claimed shaft, is reasonable. Appellant points to nothing in the
Specification that provides a lexicographical definition of the shaft as being
only a one-piece element. Appellant further presents no evidence that the
term “shaft” is a term recognized in the art as being limited to a one-piece
element. The elements Peilloud refers to as a shaft and support disc are
fixed to one another, and both are non-rotating elements fixed to an inner
ring or race, as is Appellant’s shaft. Peilloud, col.2, ll. 7-13.
Appellant, citing to In re Kotzab2, argues that there is no suggestion to
modify Peilloud to convert a plurality of elements to arrive at a single
element. Appeal Br. 10. The argument misses the mark. The Examiner
points out that the rejection does not propose modifying elements 26 and 28
to form a unitary shaft, rather, as noted above, the claimed shaft is being

2 217 F.3d 1365 (Fed. Cir. 2000).
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Application 11/992,305

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interpreted as encompassing a shaft made up of elements 26 and 28. Ans. 7-
8.
Appellant further points out that none of Yamada, Kitashiro and
Landrieve discloses a circuit board directly mounted to a shaft. Appeal Br.
10. The Examiner does not rely on these references in this regard.
Appellant cites to three advantages of the claimed invention that are
purportedly not realized by the Examiner’s proposed modifications to the
Peilloud reference. Appeal Br. 11-12. The first relates directly back to the
argument, which we find unpersuasive, that the circuit board is not directly
mounted to a shaft. The second purported advantage does not identify any
particular deficiency in the Examiner’s proposed modification to Peilloud in
view of Kitoshira, to secure the shaft to the inner ring with a nut. The third
refers to an advantage stemming from the use of a hollow shaft, which
Peilloud discloses.
Appellant further appears to argue that the modification of Peilloud in
view of Yamada to provide a magnet and a magnetic sensor array, would
require “substantial reconstruction or redesign,” and thus would not have
been obvious. Appeal Br. 12. More specifically, Appellant notes that, in
Yamada, the magnet is on the rotatable member, and the magnetic sensor
array is on the non-rotatable member. Id. The Examiner points out that the
application of the teaching of Yamada to Peilloud would result in the sensor
being mounted to the non-rotating component of Peilloud, and the magnet or
signal generating component being placed on the rotating component, just
as in Yamada. Appellant’s argument is thus not persuasive of
nonobviousness.
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Application 11/992,305

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Appellant finally states that “even if the rotation sensor apparatus of
Yamada was incorporated into Peilloud, Peilloud clearly shows that sensor
element 23 of Peilloud is not positioned at a bearing axis as recited in claim
1.” Appeal Br. 12. This argument, too, misses the mark, in that the
Examiner relies on Yamada as teaching the positioning of the sensors at the
bearing axis. Ans. 5, 10.
Appellant has not apprised us of error in the Examiner’s rejection of
claim 1, and that rejection is sustained. The rejection is sustained as to claim
7 as well, in that no separate arguments for patentability were advanced with
respect to claim 7. Appeal Br. 13.
Claims 5 and 6--§ 103--Peilloud/Yamada/Kitashiro/Landrieve
Appellant relies solely on the arguments advanced with respect to
claim 1 for the patentability of claims 5 and 6. Appeal Br. 13. The rejection
of claims 5 and 6 is thus sustained.
DECISION
The rejections of claims 1 and 5-7 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).

AFFIRMED

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