Ex Parte Gabrys - Page 14



            Appeal 2007-0022                                                                                 
            Application 10/148,935                                                                           
            Rabenhorst “to provide a more balanced flywheel system so that less vibration can                
            be experienced thus creating a more effective energy storage system” (Finding of                 
            Fact 13).  We disagree with the Examiner’s finding of motivation to combine these                
            references.                                                                                      
                   Rabenhorst, on which the Examiner relies for the teaching of using hole-less              
            discs to reduce vibration, does not teach that the structure of the discs (e.g.,                 
            whether the discs are solid or have holes) has any bearing on the vibrations                     
            experienced by the flywheel.  Rather, Rabenhorst teaches that its elastic joint is               
            used to reduce such vibrations (Finding of Fact 15).  As such, we find that the                  
            Examiner failed to set forth a prima facie case of obviousness of claims 1, 7, 12,               
            13, 22, and 24.  Further, neither Hoshino nor Cachat provides the missing teaching               
            of Rabenhorst (Findings of Fact 10, 11).  As such, we will not sustain the                       
            Examiner’s rejection of claims 1, 7, 12, and 13 under 35 U.S.C. § 103(a) as                      
            unpatentable over Nakayama and Rabenhorst, and we will not sustain the                           
            Examiner’s rejection of claims 22 and 24 as unpatentable over Nakayama,                          
            Hoshino, Rabenhorst, and Cachat.                                                                 

                                        CONCLUSIONS OF LAW                                                   
                   We conclude the Examiner erred in rejecting claims 14-21 under 35 U.S.C.                  
            § 112, first paragraph, for failing to comply with the enablement requirement,                   
            claims 1 and 7 under 35 U.S.C. § 102(b) as anticipated by Rabenhorst, claims 1-11                
            under 35 U.S.C. § 103(a) as unpatentable over Hoshino and Rabenhorst, claims 1,                  
            7, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Nakayama and                         

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