Ex parte BOUTAGHOU - Page 12




          Appeal No. 2000-0617                                                        
          Application 08/706,025                                                      
               The problem to be solved is to decrease the size of the                
          bearing arrangement for an electric motor.  A consideration to              
          be taken when attempting to solve the problem would include                 
          how the rotor operates in its environment.  The bearing                     
          assembly of the disclosed invention is for a rotor that                     
          rotates at high speeds in successive 360 degree turns.  One of              
          ordinary skill in the art would keep in mind that the bearing               
          assembly, reduced in size, would have to be able to rotate at               
          high speeds in successive 360 degree turns.                                 
               The examiner has failed to sufficiently demonstrate why                
          one of ordinary skill in the art would look to Moriwaki to                  
          solve the problem faced by the inventor.  Moriwaki’s bearing                
          assembly is for a device that pivots back and forth, but does               
          not rotate 360 degrees.  Why then would one of ordinary skill               
          in the art expect the bearing device of Moriwaki to solve the               
          problems faced with reducing the size of a bearing assembly                 
          for a disk drive apparatus?                                                 
               Even if the examiner is correct that Moriwaki is                       
          analogous art, we further find, based on the record before us,              
          that there would be no reasonable expectation of success, such              
          that one of ordinary skill would want to combine Inoue with                 
          Moriwaki.  It has long been settled that an invitation to                   
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