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
14
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