Ex parte ANDO - Page 4




          Appeal No. 1998-0647                                                        
          Application 08/414,004                                                      


          examiner's common view that the claimed rotary shaft is the                 
          rotor 1 of Figure 1 of Kawashima and the magnetic bearing                   
          means in turn comprises electromagnets 2a, 2b.  The examiner                
          takes the additional view at page 4 of the answer that the                  
          rotor 1 also comprises the motor of the claim and that the                  
          same electromagnets 2a, 2b provide the magnetic bearings                    
          associated therewith, thus, meeting the feature of "a combined              
          motor and magnetic bearing device."  We disagree.  To the                   
          extent that the combined motor and the magnetic bearing device              
          of the claim may comprise rotor 1 and electromagnets 2a, 2b of              
          Kawashima, there is no remaining teaching or showing of the                 
          reference to comprise the claimed rotary shaft and the                      
          magnetic bearing means of representative independent claim 1                
          on appeal.  The examiner can't have it both ways.                           
               The examiner does not rely upon the feature at column 3,               
          lines 49-52 that "the rotor 1 is rotated by an unillustrated                
          induction motor while being held afloat in accordance with the              
          target value (C)" which has been computed to be the midpoint                
          between two limit positions in accordance with the logic of                 
          the  flow chart in Figure 2 of Kawashima.  Again, even                      
          according to this teaching of a separate motor in addition to               
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