AKTIEBOLAGET SKF

Patent Trials and Appeals Board

Apr 13, 2020

15303134 - (D) (P.T.A.B. Apr. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/303,134 10/10/2016 Joakim Hermansson 2014P00135WOUS 8269
130169 7590 04/13/2020
Garcia-Zamor Intellectual Property Law, LLC
(on behalf of SKF GmbH)
12960 Linden Church Road
Clarksville, MD 21029
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
04/13/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
bryan@garcia-zamor.com
ipr@skf.com
ruy@garcia-zamor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOAKIM HERMANSSON
____________

Appeal 2019-006017
Application 15/303,134
Technology Center 3600
____________

Before STEFAN STAICOVICI, LISA M. GUIJT, and
MICHAEL L. WOODS, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–12 under 35 U.S.C. § 112(a) as failing to comply with the
enablement requirement. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Aktiebolaget SKF as the real party in
interest. Appeal Br. 2.
Appeal 2019-006017
Application 15/303,134
2
THE INVENTION
Appellant’s invention relates to “a hydrostatic bearing for supporting
a telescope.” Spec.2 ¶ 1. Claims 1 and 12 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A hydrostatic bearing for supporting a telescope comprising:
a foot part supporting a load-carrying unit,
a head part having a first surface adapted to receive an
external load (W) and a second surface opposite to the first
surface,
a body part arranged in between the foot part and the head
part, the body part forming a lower chamber and an upper
chamber, the upper chamber being provided with an inlet for a
pressurizing fluid,
a lower member supportable by the load-carrying unit and
arranged inside the lower chamber, the lower member providing
a first 3end surface facing away for the load-carrying unit and a
second end surface facing the load-carrying unit,
an upper member arranged inside the upper chamber, the
upper member providing a first end surface facing the second
surface of the head part and a second end surface facing the fits
end surface of the lower member,
wherein the lower member is moveable along a central
axis (A) between a retracted state, where the first end surface of
the lower member is distanced form the second end surface of
the upper member, and an extended state, and
wherein the first end surface of the lower member is in
contact with the second end surface of the upper member.

2 To be consistent with Appellant’s arguments as presented in the Appeal
Brief, we refer to the publication of US Patent App. 15/303,134: US
2017/0030407 A1.
Appeal 2019-006017
Application 15/303,134
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OPINION
Regarding independent claim 1, the Examiner finds that
[claim 1] sets forth a body part between the foot and head part,
the body having an upper and lower chamber and a number of
additional features within the chamber, however, how the
features of the body part work and interact has not been described
in a way to enable one skilled in the art to make and or use the
device, specifically the body part of the device.
Final Act. 3 (emphasis added). In particular, the Examiner finds that
“it is not understood from the disclosure or the drawings how the lower
member is being controlled or is movable,” in that “[t]he drawings show a
box with a fluid line into the box ([i.e., lower member 150, inlet 144]),”
however, the Specification fails to disclose “how the fluid is retract[ing] the
lower member.” Id. at 4 (emphasis added); see Ans. 8 (“[t]he issue is . . .
how the pressurized fluid is being used to move the members, specifically
how to lower or raise all of the box [(lower member)] 150 that the
pressurized fluid is introduced into”). The Examiner explains that
[i]n general the drawings appear to only be illustrating critical
features of the invention as boxes (for example 150 and 160) and
the [S]pecification does not describe what is occurring in these
boxes thus one having ordinary skill in the art cannot make
and/or use the invention as described since it cannot be
determined what is required to make the invention work.
Final Act. 4–5; see Ans. 6 (“while there is a fluid inlet[,] there is no
description regarding what is going [on] within the box 150 that allows the
fluid to raise and or lower the box”). The Examiner also explains that there
is no disclosure as to how the lower member, or more specifically, the lower
hydraulic piston, is configured (for example, there is no disclosure that the
lower hydraulic piston is within lower member 150) or how the lower
hydraulic piston actuates spring 120. Ans. 6; id. at 8 (“[i]f a piston, then
Appeal 2019-006017
Application 15/303,134
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how does all of box 150 move,” as “[a] piston would commonly move back
and forth within the box leaving the box stationary”). The Examiner
concludes that because the Specification “does not actually describe the
parts of the controls system and how they work to raise and lower all of unit
150 as a whole[,] the disclosure is not enabling.” Ans. 5–6 (emphasis
added).
First, Appellant argues that
the claims are adequately described in such a way as to
reasonably convey to one skilled in the relevant art (an Artisan)
that the inventors, at the time the application was filed, had
possession of the claimed invention, and that the [S]pecification
instructs as to the scope of three parts of the control system such
that the Artisan would know what is meant.
Appeal Br. 8 (emphasis omitted); see also Reply Br. 1–2. To the extent
Appellant’s argument addresses the written description requirement of
35 U.S.C. § 112(a), Appellant’s argument fails to address the rejection as set
forth supra by the Examiner, which is based on a lack of enablement.
Enablement is a legal determination of whether a patent enables one skilled
in the art to make and use the claimed invention. Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986). Cf.
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc) (explaining that the written description requirement of 35 U.S.C.
§ 112 requires that the disclosure of the application relied upon reasonably
convey that the inventor had possession of the claimed subject matter as of
the filing date).
Appellant also argues that
[w]ith respect to the control system, the Artisan would
understand that a pressurizing fluid asserts force on a spring
(which is an example of the load-carrying unit recited in claim
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Application 15/303,134
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1), such that the more fluid that is supplied, the more applied
force. As the applied force is increased (fluid is added), the
spring contracts. As the applied force is decreased (fluid is
withdrawn), the spring expands. Further, FIGS. 1 and 2 show
how item 120 expands and contracts in conjunction with the
providing of pressurizing fluid, such that the lower member 150
moves.
Appeal Br. 9; see also Reply Br. 5 (arguing, for example, that “a
pressurizing fluid driven by a hydraulic system, which is not claimed, asserts
force on a spring . . . , such that the more fluid that is supplied by the
hydraulic system, the more applied force” (emphasis omitted)).
Appellant’s argument, however, fails to address how the pressurizing
fluid, which is disclosed and depicted in the Specification as being
connected to the lower member (i.e., a lower hydraulic piston), moves the
lower member along axis A, as claimed. In other words, Appellant’s
explanation about how the “pressurizing fluid asserts force on a spring”
supra fails to provide any argument or evidence that a person of ordinary
skill in the art would know how to transfer such force from the pressurizing
fluid to the spring via the lower member or lower hydraulic piston, in view
of the disclosures from the Specification.3
Appellant further argues that
[m]ore particularly, as is shown in the drawings and described in
the [S]pecification, only the lower member 150 is movable
[(referencing footnote 1: “[t]he lower piston compresses the
load-carrying unit 120 by means of the pressurizing fluid” (Spec.
¶ 57)]. In contrast, the upper member 160 has a static nature.

3 Cf. Reply Br. 6 (arguing, in a conclusory manner, for the first time with
respect to claim 2 that “[t]he Artisan would understand that the lower
hydraulic piston would be driven by the pressurizing fluid, which in turn is
provided by the hydraulic system connected to the inlets 143, 144”) (citing
Spec. ¶¶ 9–11, 61, 63).
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Application 15/303,134
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Further, the lower member 150 moves with respect to the
pressurizing fluid.
Appeal Br. 9; see also Reply Br. 5.
Again, however, Appellant’s argument regarding the active verses
static natures of the upper and lower members and conclusory statement that
the lower member moves with respect to the pressurizing fluid fails to
provide a persuasive argument or evidence that a person of ordinary skill in
the art would know how to move the lower member along central axis A, as
claimed, by means of the pressurizing fluid, in view of the disclosures from
the Specification. Notably, the Specification discloses that, although
perhaps not movable, “[t]he upper hydraulic piston may support an external
load by means of pressurizing fluid when the lower member is in its
retracted state,” whereby “[t]he pressurizing fluid may typically be supplied
via the inlet for pressurizing fluid of the upper chamber.” Spec. ¶ 18.
Appellant further argues that the Specification “clearly explains that
the upper member 160 provides a first end surface 161, herein, being in
contact with the second surface 132 of the head part 130 and a second end
surface 162 facing the first end surface 151 of the lower member 150”
(Appeal Br. 10 (citing Spec. ¶¶ 52–54, 62, 63)), and also that the
Specification “clearly explains how the retracted state vs. the retracted state
[sic] support the external load based on the positions of the lower member
150 and the upper member 160 (id. (citing Spec. ¶ 63 (“[t]he present
invention offers a safe solution, where the external load W may be supported
by the hydrostatic bearing not only upon supply of pressurizing fluid, but
also if the supply of pressurizing fluid to e.g. the upper member is
interrupted”)). However, a description of the retracted and extended states
of lower member 150, for example, relative to upper member 160, does not
Appeal 2019-006017
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provide a persuasive argument or evidence that a person of ordinary skill in
the art would know how to move the lower member by means of the
pressurizing fluid, to the extent claimed, in view of the disclosures from the
Specification.
Finally, Appellant argues that
the Artisan would understand that a pressurizing fluid driven by
a hydraulic system, which is not claimed, asserts force on a
spring (which is an example of the load-carrying unit recited in
claims 1 and 12), such that the more fluid that is supplied by the
hydraulic system, the more applied force. Further, as the applied
force is increased (fluid is added by the hydraulic system), the
spring contracts. As the applied force is decreased (fluid is
withdrawn by the hydraulic system), the spring expands.
Further, FIGS. 1 and 2 show how item 120 expands and contracts
in conjunction with the providing of pressurizing fluid, such that
the lower member 150 moves. More particularly, as is shown in
the drawings and described in the [S]pecification, only the lower
member 150 is movable. In contrast, the upper member 160 has
a static nature. Further, the lower member 150 moves with
respect to the pressurizing fluid.
Reply Br. 5 (footnotes omitted). Appellant submits that “the Artisan would
understand that the pressurizing fluid is driven by the hydraulic system
connected to the inlets 143 and 144 and the pressurizing fluid in turn drives
the movement of the lower member 150” and also that “the hydraulic
system, which is expressly stated in the [S]pecification, enables the control
of the pressurizing fluid.” Id. at 5–6. However, Appellant’s characterization
of the hydrostatic bearing as a hydraulic system and Appellant’s conclusion
that a person of ordinary skill in the art would understand how pressurized
fluid moves the lower hydraulic piston are unpersuasive of Examiner error.
In sum, Appellant’s arguments fail to provide persuasive argument or
evidence that the Examiner erred in determining that the Specification fails
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Application 15/303,134
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to teach those of ordinary skill in the art how to make the full scope of the
subject matter of claim 1 without undue experimentation.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 as failing to comply with the enablement requirement of 35 U.S.C.
§ 112(a), and therefore, dependent claims 2–11 also lack enablement by
virtue of their dependency on claim 1. Appellant chose not to present
arguments for the patentability of independent claim 12 apart from the
arguments presented for claim 1 supra. Therefore, we also sustain the
Examiner’s rejection of independent claim 12.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s) Affirmed Reversed
1–12 112(a) 1–12

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED