Ex Parte 6672679 et al

Board of Patent Appeals and Interferences

Jun 10, 2009

90008241 (B.P.A.I. Jun. 10, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NSK LTD.1
____________________

Appeal 2009-002609
Reexamination Control 90/008,241
Patent US 6,672,679 B22
Technology Center 3900
____________________

Decided: June 10, 20093
____________________

Before LINDA E. HORNER, KEVIN F. TURNER and DANIEL S. SONG,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 NSK, LTD. is the real party in interest (App. Br. 2).
2 Issued January 6, 2004 to Kaneko.
3 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date.

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STATEMENT OF THE CASE
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 (2002) from a Final Rejection of claim 2. Claims 1 and 3
are not subject to reexamination (App. Br. 4). We have jurisdiction under 35
U.S.C. §§ 134(b) and 306 (2002).
The Patentee claims a method for manufacturing a bearing that
includes a rotary ring or hub [8] with a mounting flange [13] having a
mounting surface [28] and mounting holes [23]. The claimed method
includes press-fitting studs [24] into the mounting holes, and then,
processing the mounting surface, where the material thickness of the
protruding portion [27] surrounding each of the mounting holes is thicker
than other portions of the mounting flange. (See col. 5, l. 60-col. 6, l. 3; col.
6, ll. 16-28; figs. 1 and 3).
Independent claim 2, the sole claim on appeal, reads as follows4
(Claims App’x; emphasis added):
2. A method of manufacturing a bearing unit for a wheel,
comprising:
providing a stationary ring having a stationary-side
raceway surface at a stationary-side periphery thereof, and
fixedly supported by a suspending apparatus under a condition
of being used;
providing a rotary ring having a rotary-side raceway
surface at the rotary-side periphery thereof;
hardening said rotary ring by a heat treatment;

4 The bracketed deletions and the underlined additions to claim 2 have been
incorporated into the reproduced claim 2 based on the Ex Parte
Reexamination Advisory Action (PTOL-467) mailed October 26, 2007
which indicates that for purposes of the appeal, the proposed amendments
will be entered.
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providing a plurality of rolling elements between the
rotary-side raceway surface and the stationary-side raceway
surface;
providing a mounting flange at the outer periphery of the
rotary ring for fixedly connecting a rotary body for braking and
a wheel to a mounting surface which is one side surface of the
mounting flange under a condition of being used, said mounting
flange having a plurality of mounting holes communicating
between the one side surface and an other side surface;
press-fitting a plurality of studs into the plurality of
mounting holes, so that each stud has a distal end protruding
from the mounting surface and a base portion press-fitted into
one of the plurality of mounting holes;
processing the mounting surface of the mounting flange
into a predetermined shape, after the rotary-side raceway
surface thereof has been heat-treated and the base portion of
each stud has been fixedly press-fitted into one of the mounting
holes,
wherein a portion surrounding each of said mounting
holes is thicker than the remaining portion of the mounting
flange.

The prior art relied upon by the Examiner is:
Johnston 2,067,620 Jan. 12, 1937
Manning 2,288,474 Jun. 30, 1942
Hawthorne 2,334,673 Nov. 16, 1943
Eksergian 2,349,220 May 16, 1944
Laps US 6,415,508 B1 Jul. 9, 2002
Miyazaki JP 11-129703 May 18, 1999
(citation to the translation of record)

The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Miyazaki in view of Laps, Hawthorne and Eksergian.
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We AFFIRM.

ISSUE
The issue raised in the present appeal is whether the Appellant has
shown that the Examiner failed to establish a prima facie case of
obviousness because the prior art teaches away from providing thicker
portions surrounding the mounting holes of a mounting flange.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Regarding Miyazaki, the Examiner found that:
Miyazaki et al. discloses a method of manufacturing a
bearing unit for a wheel, comprising: providing a
stationary ring 4 forming outer raceways 15, 16 (see
Fig. 1; paragraph 0019 on page 16 of the English
translation; paragraph 0004 on pages 6-7 of the
English translation), the stationary ring 4 having a
flange 17 for securing the stationary ring to a
suspension component (see paragraph 0005 on page 7
of the English translation); providing a rotary ring 2b,
3 forming inner raceways 7, 9 (see Fig. 1; paragraph
0019 on page 16 of the English translation;
paragraphs 0002-0003 on pages 5-6 of the English
translation); providing a flange 6 at the outer
periphery of the rotary ring 2b, 3 for securing the
rotary ring 2b, 3 to a wheel (see paragraph 0019 on
page 16 of the English translation); hardening the
rotary ring 2b, 3 by a heat treatment in order to extend
the fatigue life of the bearing unit (see paragraph 0020
on page 16 of the English translation); press-fitting
serrated studs (see Fig. 1) into holes in the flange 6 of
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the rotary ring 2b, 3; and providing rolling elements 5
between the inner raceways 7, 9 and the outer
raceways 15, 16 (see paragraph 0019 on page 16 of
the English translation).
(Ans. 3).
2. In addition, with respect to Miyazaki, the Examiner also found
that:
A. Miyazaki et al. fails to teach machining the
mounting surface of the flange 6 after the rotary ring
is hardened and the bearing unit (including the studs)
is assembled.
(Ans. 4).
B. Miyazaki et al. also fails to teach a mounting
flange having thicker portions adjacent the stud
mounting holes.
(Ans. 4).
3. Regarding Laps, the Examiner found that:
Laps teaches a method of manufacturing a bearing
unit for a wheel, comprising: providing a stationary
ring 4 forming outer raceways 44, the stationary ring
4 having a flange 50 for securing the stationary ring to
a suspension component C (see Fig. 1); providing a
rotary ring 2 having inner raceways 28; providing a
flange 10 at the outer periphery of the rotary ring 2 for
securing the rotary ring 2 to a wheel W and brake disk
B (see Fig. 1); press-fitting serrated studs 20 into
holes in the flange 10 of the rotary ring 2 (see Fig. 1);
providing rolling elements 40 between the inner
raceways 28 and the outer raceways 44; and
machining a mounting surface 22 of the flange 10
after the bearing unit (including the studs 20) is
assembled (see Fig. 4; column 5, lines 13-23).
(Ans. 4).
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4. The Appellant does not contest the Examiner’s factual findings
set forth above (FF 1-3) with respect to Miyazaki and Laps. Thus, we adopt
the Examiner’s factual findings with respect to Miyazaki and Laps as the
findings of the Board for the purposes of this appeal.
5. Laps also specifically states:
The present invention resides in a process for
providing the rotating hub of a hub assembly with a
mounting surface that is essentially free of runout, so
that a brake disk installed against that surface will not
acquire runout from the hub assembly.
(Col. 1, ll. 54-58).
6. Hawthorne describes a wheel hub 10 with an outer radially
extending portion 24 (i.e., a mounting flange), and a wheel body 11 with a
securing flange 33, the securing flange 33 being secured to the outer radially
extending portion 24 by a plurality of studs 34 and nuts 35 (Pg. 1, left col.,
ll. 52-54; Pg. 1, right col., ll. 17-24; Pg. 1, right col., ll. 44-50; fig.).
7. The sole figure of Hawthorne illustrates that the portion of the
outer radially extending portion 24 (i.e., mounting flange) surrounding each
of the holes (unnumbered) through which the studs 34 extend, is thicker than
the remaining portion of the outer radially extending portion 24 (fig.;
compare cross-sections of the upper and lower parts of the outer radially
extending portion 24).
8. Hawthorne does not specifically describe the function of the
thicker portion that surrounds each mounting holes of the outer radially
extending portion.

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9. Hawthorne specifically states:
Around its central opening, it [the wheel body] is
provided with a generally radially extending securing
flange 33, through which it is secured, in [a] known
manner, as by a plurality of studs 34 and nuts 35, to
the outboard face of the radially outer attaching
portion 24 of the hub flange 21.
(Pg. 1, right col., ll. 44-50).
10. Eksergian describes a wheel hub 11 having a flange 17 (i.e.,
mounting flange) with holes through which supporting studs 19 extend to
secure a wheel 18 (Pg. 1, right col., ll. 22-36; figs. 1-3).
11. Figures 1-3 of Eksergian illustrate that the portion of the flange
17 surrounding each of the holes (unnumbered) is thicker than the remaining
portions of the flange (Pg. 1, right col., ll. 22-36; figs. 1-3).
12. Eksergian does not specifically describe the function of the
thicker portion that surrounds each mounting holes of the flange.
13. Eksergian states:
In the manufacture of wheel hubs[,] a point of
weakness is the junction between the cylindrical body
portion of the hub and the hub flange, that is, the
bolting on flange to which a demountable wheel is
secured. Under loading, in use, the flange tends to
deflect into a somewhat conical form, and most hub
failures come from this coning tendency which
ultimately develops a circumferential crack around the
hub. Merely increasing the thickness of the casting at
this point does not solve the problem because what
may be gained by mere increase in thickness is lost by
the increased porosity of the thicker casting.
(Pg. 1, left col., ll. 39-52).

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14. Figures 1-3 of the ‘679 patent illustrate that the mounting
surface 28 side of the mounting hole 23 has a chamfer or beveled edge,
while the other side of the mounting flange is provided with the thicker
portion that surrounds the mounting hole (Figs. 1-3, unnumbered).
15. The Specification of the ‘679 patent states:
Further, in the illustrated embodiment, since a
chamfered portion of large diameter is formed by, for
example, a spot face processing or lathe processing at
the end of the mounting hole 23 and at the opening of
the side of the mounting surface 28, it is possible to
more exactly prevent the deformation of the mounting
surface 28 in the convex direction accompanied with
press-fitting the serration portion 26.
(Col. 6, ll. 60-67).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18 (1966).

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In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” and reaffirmed principles based on its precedent that “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” KSR, 550 U.S. at 415-
16. The Court also affirmed that “when a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.” Id. at 416 (citing United States v. Adams, 383 U.S. 39,
50-51 (1966)). The Court further explained:
If a person of ordinary skill can implement a
predictable variation, §103 likely bars its
patentability. For the same reason, if a technique
has been used to improve one device, and a person
of ordinary skill in the art would recognize that it
would improve similar devices in the same way,
using the technique is obvious unless its actual
application is beyond his or her skill.
Id. at 417. The operative question is “whether the improvement is more than
the predictable use of prior art elements according to their established
functions.” Id.
The Court stated that “[o]ften, it will be necessary for a court to look
to interrelated teachings of multiple patents; the effects of demands known
to the design community or present in the marketplace; and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 418. The
Court also noted that “[t]o facilitate review, this analysis should be made
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explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”)). However, “the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
In addition, “[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). However, mere description of an
implementation in the prior art that differs from the Appellants’ claimed
invention, without more, does not show that the prior art is “teaching away”
from the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) (“[t]he prior art’s mere disclosure of more than one alternative does
not constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed. . . .”).

ANALYSIS
The Examiner rejected claim 2 as being obvious over Miyazaki in
view of Laps, Hawthorne and Eksergian (Ans. 3). The Examiner contends
that Miyazaki describes all of the limitations recited in the method of claim 2
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except for the limitations directed to (1) machining the mounting surface
after heat treatment and installation of the studs, and (2) a mounting flange
having thicker portions adjacent the stud mounting holes (FF 1 and 2; Ans. 3
and 4).
As to the step of machining the mounting surface, the Examiner relies
upon Laps for describing the claimed step (FF 3) and contends that it would
have been obvious to “modify Miyazaki et al. by machining the mounting
surface of the flange after the rotary ring is hardened and the bearing unit
(including the studs) is assembled because this results in ‘a mounting surface
that is essentially free of runout, so that a brake disk installed against that
surface will not acquire runout’” as specifically taught in Laps (Ans. 4; FF
5). The Examiner further relies on the illustrated figures of wheel hub
mounting flanges shown in Hawthorne and Eksergian for teaching the
provision of thicker portions adjacent to the stud mounting holes (FF 7 and
11; Ans. 4). The Examiner contends that it would have been obvious to one
of ordinary skill in the art to “further modify Miyazaki et al. by providing
the mounting flange with thicker portions surrounding the stud mounting
holes in order to increase the strength of the flange adjacent the studs, while
minimizing weight in areas where such increased strength is unnecessary”
(Ans. 4).
The Appellant does not dispute the Examiner’s factual findings with
respect to Miyazaki and Laps (FF 4). However, the Appellant argues that
the Examiner errs by relying on Hawthorne and Eksergian while ignoring
Miyazaki and Nakamura (not relied upon by the Examiner) (App. Br. 10 and
11). In particular, the Appellant contends that because Hawthorne and
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Eksergian are not directed to press-fitted studs and “fail to disclose any
function or purpose related to thickness of the mounting flange in areas
adjacent to the stud mounting holes” (FF 8 and 12), the Examiner’s rationale
for combining the references is misguided (App. Br. 10). The Appellant
asserts that one of ordinary skill in the art would instead, “rely on the
express teachings of Miyazaki and Nakamura, which teach using thinner
portions surrounding the stud mounting holes in combination with press
fitted studs” (App. Br. 11; citing Miyazaki Figs. 1, 7, 8 and 11-17;
Nakamura, col. 6, ll. 61-65). Thus, the Appellant argues that because the
prior art actually teaches away from the claimed invention, the Examiner’s
“conjured reason to combine is not supported” (App. Br. 12 and 13).
We do not find the Appellant’s arguments persuasive. Hawthorne and
Eksergian need not specifically discuss the function of the thicker portions
around the mounting holes, or explicitly state a reason to provide such
thicker portions. Explicit teaching or suggestion in a reference is not
required for one of ordinary skill to combine the teachings of prior art
references. See KSR, 550 U.S. at 418. Instead, what is required to establish
a prima facie case of obviousness is for the Examiner to articulate a reason
with rational underpinnings to support the conclusion of obviousness. Id.
In the present appeal, the Examiner has articulated a reason, that is,
“to increase the strength of the flange adjacent the studs, while minimizing
weight in areas where such increased strength is unnecessary” (Ans. 4). The
Examiner’s articulated reason is rational and sufficient to support the
conclusion of obviousness. In this regard, the Appellant’s claimed invention
is a predictable variation of prior art bearing assemblies in which the known
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technique of providing thicker portions around the mount holes is applied to
thereby attain predictable results. See KSR, 550 U.S. at 416-17.
We also find unpersuasive, the Appellant’s argument that the prior art
teaches the use of thinner portions around the stud mounting holes, and thus,
“teaches away” from the claimed invention. Firstly, as noted by the
Examiner, Miyazaki is silent as to statements “indicating that thicker
portions surrounding the stud mounting holes are to be avoided, or that
thinner portions surrounding the stud mounting holes are desirable for any
reason” (Ans. 5). See In re Gurley, 27 F.3d at 553; In re Fulton, 391 F.3d at
1201. Secondly, the Examiner’s contention (Ans. 5 and 6) that Miyazaki
also describes embodiments which do not include a beveled edge is not in
dispute. Hence, the Examiner’s position, that this suggests that beveled
edges are not required in Miyazaki, is well taken (Ans. 5 and 6).
Moreover, we agree with the Examiner that the alleged thinner
portions shown in Miyazaki relied upon by the Appellant as “teaching away”
from the claimed thicker portions are merely beveled edges of the mounting
holes on the mounting surface (Ans. 5). Provisions of such beveled edges
would not be understood by one of ordinary skill as teaching the provision of
a thinner portion surrounding the hole as asserted by the Appellant, much
less teaching away from provision of a thicker portion. Indeed, the drawings
of the ‘679 patent in the present appeal illustrate that the Appellant’s own
invention includes such a chamfer or beveled edge as well as the recited
thicker portions (FF 14). The Appellant’s Specification also explains the
function of such a beveled edge (FF 15) which appears to be independent of
whether a thicker portion is provided or not.
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Therefore, the mere fact that many of the prior art embodiments
provide beveled edges on the mounting sides of the mounting holes does not,
by itself, “teach away” from providing the thicker portions around the
mounting holes. Miyazaki’s (or for that matter, Nakamura’s) mere
description of an implementation which differs from the Appellant’s claimed
invention cannot be said to “teach away” or discourage a person of ordinary
skill in the art from providing thicker portions that surround the stud
mounting holes. See In re Fulton, 391 F.3d at 1201; In re Gurley, 27 F.3d at
553.
We also do not find persuasive, the Appellant’s alternative argument
that even if the prior art does not directly teach away from the claimed
invention, “one of ordinary skill would not find the requisite likelihood of
success” in making such a modification (Reply Br. 5 and 6). The basis for
the Appellant’s assertion is not entirely clear. The Appellant has not set
forth any evidence or persuasive arguments as to why adding a thicker
portion would pose any technical difficulties so that one of ordinary skill
would not expect such a modification to Miyazaki to be successful. In this
regard, we also note that “[o]bviousness does not require absolute
predictability of success[.]”, but instead, “all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir.
1988) (citing In re Longi, 759 F.2d 887, 897 (Fed. Cir. 1985)).
Furthermore, the Appellant’s argument that the Examiner’s reliance
on Hawthorne and Eksergian is improper based the fact that neither of these
reference describe press fitting of studs is also unpersuasive (FF 8 and 12;
App. Br. 10; Reply Br. 4). Firstly, as noted by the Examiner (Ans. 6),
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Miyazaki is relied upon for describing press fitting of studs into the
mounting holes of the mounting flange (FF 1). Secondly, as also noted by
the Examiner (Ans. 6), Hawthorne teaches that the wheel body is secured to
a flange 33 “in a known manner, as by a plurality of studs and nuts” (FF 9).
As the Examiner stated, while Hawthorne “does not explicitly teach press
fitting of the studs 34 into the stud mounting holes, press fitting of the studs
was one such ‘known manner’ referred to” by Hawthorne (Ans. 6). Hence,
we agree with the Examiner’s conclusion that “one of ordinary skill in the
art would recognize that the press-fit studs of Miyazaki et al. could be used
in conjunction with the increase thickness portions. . . .” (Ans. 7).
While we do not view the disclosure of Eksergian as being necessary
to sustain the Examiner’s rejection in view of Hawthorne, we also disagree
with the Appellant’s argument that “Eksergian expressly cautions against
merely increasing the thickness of the casting to improve strength” and
teaches against the claimed invention (App. Br. 12; Reply Br. 4). As the
Examiner notes (Ans. 8), the portion of Eksergian relied upon by the
Appellant does not relate to the mounting holes, but rather, relates to the
junction between the body portion of the hub and the hub flange, and is
directed to addressing hub flange deflection and cracking (FF 13).
Therefore, for the reasons set forth above, we conclude that the
Appellant has not shown that the Examiner erred in rejecting claim 2 as
unpatentable.

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CONCLUSION
The Appellant has not shown that the Examiner failed to establish a
prima facie case of obviousness. The prior art does not teach away from
providing thicker portions surrounding the mounting holes of a mounting
flange.

ORDER
The Examiner’s rejection of claim 2 is AFFIRMED.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

rvb

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