Ex Parte Beardsley et al

Patent Trial and Appeal Board

Apr 28, 2014

12318129 (P.T.A.B. Apr. 28, 2014)

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.
12/318,129 12/22/2008 M. Brad Beardsley 50100/04-177.01 5375
7590 04/28/2014
Thomas A. Miller
Caterpillar, Inc.
c/o Miller, Matthias & Hull LLP
One North Franklin Street, Suite 2350
Chicago, IL 60606
EXAMINER
JOYCE, WILLIAM C
ART UNIT PAPER NUMBER
3658
MAIL DATE DELIVERY MODE
04/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte M. BRAD BEARDSLEY, DAVID E. BOWMAN,
MARK S. DIEKEVERS, KAREN R. RAAB,
WILLIAM C. SMITH and D. TRENT WEAVER
________________

Appeal 2012-004949
Application 12/318,129
Technology Center 3600
________________

Before: JENNIFER D. BAHR, MICHAEL L. HOELTER and
JILL D. HILL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

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Application 12/318,129

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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-10. App. Br. 5. Claims 11-25 have been canceled
while claims 26-41 have been withdrawn. App. Br. 5. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “is directed to a sealing system, and
more particularly, this disclosure is directed to a sealing system appropriate
for use with an endless track for a track-type work machine.” Spec. para.
[01]. Independent claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A bushing, comprising:
an interior surface, an exterior surface, a first end, and a
second end; and
an end face forming at least part of at least one of the first
end and the second end, at least one of the exterior surface and
the end face having a sealing surface formed at least in part of a
coating including a material having a hardness level greater
than about 1200 Knoop, the sealing surface having a thickness
greater than about 35 microns, and having an average roughness
(Ra) less than about 0.25 micron.
EVIDENCE RELIED ON BY THE EXAMINER
Anderton US 6,102,408 Aug. 15, 2000
Zajchowski US 6,186,508 B1 Feb. 13, 2001
Fuha JP 01-158212 Jun. 21, 1989
Yamamoto JP 2001-289330 A Oct. 19, 2001.

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THE REJECTIONS ON APPEAL
Claims 1-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fuha1 and Zajchowski. Ans. 4.
Claims 1-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderton, Zajchowski, and Yamamoto. Ans. 5.
ANALYSIS
The rejection of claims 1-10
as being unpatentable over Fuha and Zajchowski
Appellants argue the rejection of all the claims (i.e. claims 1-10)
together. App. Br. 9-12. We select independent claim 1 for review with
dependent claims 2-10 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
Claim 1 is directed to a bushing having a surface coating that includes
a material having (a) “a hardness level greater than about 1200 Knoop,” (b)
“a thickness greater than about 35 microns” and, (c) “an average roughness
(Ra) less than about 0.25 micron.”
The Examiner finds that Faha discloses a bushing 7 with a surface
coating having a hardness and a thickness within their respective claimed
ranges2. Ans. 4-5 (citations omitted). For the missing roughness limitation,
the Examiner relies on Zajchowski which discloses a process that not only
can apply a coating thickness within the claimed thickness range, but also
can achieve a surface roughness in the claimed roughness range as well.
Ans. 5 (citations omitted). The Examiner concludes that it would have been
obvious “to apply the coating of [Faha] [having the identified hardness and

1 The Examiner identifies this reference as “Fuwa.”
2 Faha also discloses “a surface roughness of 1.4 µ Rz,” which is outside the
claimed roughness range. Faha pg. 8.
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thickness ranges] with a thickness greater than about 35 microns and a
roughness less than .1 microns, as taught by Zajchowski.” Ans. 5. The
Examiner finds that the motivation to employ Zajchowski’s teachings with
Faha’s coating is “to provide a coating having less residual tensile stress and
reduced cracking tendencies (column 2, lines 31-33 of Zajchowski et al.).”
Ans. 5.
Appellants address the teachings of Zajchowski contending that “there
is insufficient rationale to combine the cited references” and that “there is no
reasonable expectation of success to maintain those desirable features when
Zajchowski is combined with the other reference[s] cited by the Examiner.”
App. Br. 9-10. More specifically, Appellants contend that while Zajchowski
discloses a thickness and a roughness range for its coating, Zajchowski also
discloses hardness values outside the recited range and thus, Zajchowski “is
therefore tied to the aforementioned hardness specifications as well.” App.
Br. 11. Appellants contend that “one of ordinary skill in the art would
understand that, in order to achieve the desirable features of Zajchowski’s
coating, the hardness of the coating material should be” as discussed in
Zajchowski. App. Br. 11. More succinctly, Appellants contend that
Zajchowski can be combined with the other references “only if” the coating
also satisfies Zajchowski’s teaching regarding hardness. App. Br. 11; see
also Reply Br. 8. Appellants’ Reply Brief more expressively states that
Zajchowski’s hardness “is an essential parameter to achieve the improved
wear resistance and durability.” Reply Br. 6; see also Reply Br. 7.
The Examiner reiterates that “Zajchowski was not used in the
rejection for the teaching of forming a coating with a hardness” within the
claimed range. Ans. 9; see also Ans. 5. While the Examiner did not rely on
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Zajchowski for disclosing the hardness range that is specifically claimed, it
should nevertheless be noted that Zajchowski teaches a hardness range and
further that Zajchowski teaches that the coating’s actual hardness value can
be increased or decreased by varying the amount of hardeners employed or
by adjusting the process used. Zajchowski 5:20-25.
Despite the Examiner’s recitation that Zajchowski was not relied on
for the limitation directed to hardness (Ans. 5, 9), Appellants focus on
Zajchowski’s discussion of hardness and how “Zajchowski’s hardness
properties cannot be separated from its thickness and roughness properties.”
Reply Br. 6. As an indication that Zajchowski’s hardness properties cannot
be isolated from thickness and roughness properties, Appellants identify
where Zajchowski specifically discloses that “[w]e desire that the coating as
applied have a hardness between 450-650 VHN and preferably from 500-
600 VHN. . . We believe the practical brush seal applications will require
that the coating composition will be within 100 VHN of the bristle material.”
App. Br. 10 reciting Zajchowski 4:1-10; see also Reply Br. 6. In other
words, Appellants rely on passages in Zajchowski that express a desire, a
preference, and a belief and as such, these desires, preferences and beliefs
make Zajchowski’s disclosed hardness range required or essential. App. Br.
10-12, Reply Br. 6, 7. We are not persuaded that such terminology as used
in Zajchowski mandates that “the hardness of the coating material should
be” limited to only that disclosed in Zajchowski as Appellants argue. App.
Br. 11. This is especially the case when Zajchowski also teaches that the
hardness value can be increased by adding hardeners or by altering the
process. Zajchowski 5:20-26.
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Appellants further contend that Zajchowski’s teaching of increased
thickness “without cracking or spalling” “is therefore tied to the
aforementioned hardness specification as well.” Reply Br. 7 (citation
omitted). Here, Appellants reference Zajchowski column 2, lines 19-43 but
the portion of Zajchowski recited addresses only the relationship of tensile
stress and cracking to thickness. Appellants do not identify where
Zajchowski’s referenced discussion is “tied to the aforementioned hardness
specification” as argued. Reply Br. 7.
We are mindful of instructions from the Supreme Court that an
“obviousness analysis cannot be confined by . . . the explicit content of
issued patents” such as by limiting the teachings of Zajchowski as presently
proposed by Appellants. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). We are further instructed by our reviewing court that “[o]bviousness
does not require absolute predictability of success.” In re O’Farrell, 853
F.2d 894, 903-04 (Fed. Cir. 1988). “For obviousness under § 103, all that is
required is a reasonable expectation of success.” Id. (citations omitted). The
Examiner submits “that the above claim rejection provides a reasonable
explanation as to why the claimed invention is obvious in view of the prior
art, and that one [skilled] in the art would have a reasonable expectation of
success when combining the prior art teachings.” Ans. 8. Appellants’
arguments to the contrary that attempt to limit Zajchowski’s teaching to only
the specific hardness range discussed in Zajchowski are not persuasive of
Examiner error. In other words, Appellants do not indicate where the
Examiner failed to provide articulated reasoning with rational underpinning
to support the legal conclusion of obviousness. KSR, 550 U.S. at 418.
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Appellants also mis-characterize the Examiner’s rejection as being
“an improper ‘obvious to try’ rationale.” Reply Br. 5. Appellants do not
identify where such a rationale was expressed by the Examiner and as a
consequence, is not persuasive.
In view of the above, we sustain the Examiner’s rejection of claims
1-10 as being obvious over Faha and Zajchowski.
The rejection of claims 1-10
as being unpatentable over Anderton, Zajchowski, and Yamamoto
Here, Appellants also argue claims 1-10 together. App. Br. 13-14.
We select claim 1 for review.
In rejecting claim 1, the Examiner again relies on the teachings of
Zajchowski for disclosing a process of applying a coating having a thickness
and roughness within the claimed range. App. Br. 6. Regarding the issue of
hardness, the Examiner relies on the teachings of Yamamoto (Ans. 7) and
also references where Zajchowski discloses that the coating’s hardness may
vary (Ans. 6 citing Zajchowski 5:20-25). Appellants do not dispute
Yamamoto’s teaching of hardness nor do Appellants address Zajchowski’s
teaching of a varying hardness. Instead, Appellants repeat the arguments
presented above such that Zajchowski should be “narrowly drawn to a
coating” having only the disclosed hardness range. App. Br. 13, Reply Br.
9, see also Reply Br. 10. Appellants’ contentions are not persuasive and
accordingly, we sustain the Examiner’s rejection of claims 1-10 as being
obvious over Anderton, Zajchowski, and Yamamoto.

DECISION
The Examiner’s rejections of claims 1-10 are affirmed.
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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

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