Appeal 2007-0022
Application 10/148,935
4. Claims 1, 7, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakayama and Rabenhorst.
5. Claims 22 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Nakayama, Hoshino, Rabenhorst, and Cachat.
ISSUES
Appellant contends that the Examiner erred in rejecting claims 14-21 under
35 U.S.C. § 112, first paragraph, because a person skilled in the art would
understand what is meant by the claimed “discs [being] axially connected at a
diameter that is greater than 80% of said outside diameter of said flywheel,” as
recited in claim 14 (Br. 17). Appellant further contends that the Examiner erred in
rejecting claims 1 and 7 under 35 U.S.C. § 102(b) and claims 1-11 under 35 U.S.C.
§ 103(a) because Rabenhorst fails to disclose a stacked disc steel flywheel (Br. 8,
11) as required by these claims. Appellant further contends that the Examiner
erred in rejecting claims 1, 7, 12, 13, 22, and 24 under 35 U.S.C. § 103(a) because
there would have been no motivation to modify the bolted-together flywheel of
Nakayama with the hole-less flywheel of Rabenhorst (Br. 14-16).
The issues before us are
• whether Appellant has shown that the Examiner erred in finding that the
specification fails to enable one skilled in the pertinent art to make and
use the invention of claims 14-21,
• whether Appellant has shown that the Examiner erred in finding that
Rabenhorst discloses a stacked disc steel flywheel, and
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