Ex parte GALE et al. - Page 8




          Appeal No. 1997-3237                                                        
          Application 08/266,081                                                      

          its generator mode in Fig. 2 with different efficiency levels               
          achieved by changing the current and rotor flux.                            
               In view of the above and in light of the specification as              
          a whole, we find that the steps of operating the motor at two               
          different operating points with different efficiency levels                 
          and providing a battery for receiving the regeneration current              
          are sufficiently defined and would reasonably appraise those                
          skilled in the art of the scope of these limitations.                       
          Accordingly, we will not sustain the rejection of claims 1                  
          through 14 under 35 U.S.C. § 112.                                           
               Turning to the rejection of claim 1 under 35 U.S.C. §                  
          102, Appellants argue on pages 1 and 2 of the reply brief that              
          Kanzaki’s motor does not have any different operating points.               
          Appellants further point out that Kanzaki connects and                      
          disconnects a load from the motor without changing the                      
          operating point.                                                            
               The Examiner on page 2 of the supplemental answer                      
          responds to Appellants’ arguments by stating that claim 1 does              
          not recite changing of the operating points but merely                      
          requires the motor be in a regeneration mode at a second point              
          of reduced efficiency.  The Examiner characterizes the                      

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