Ex Parte Brunner

Patent Trial and Appeal Board

Feb 11, 2016

12752295 (P.T.A.B. Feb. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121752,295 04/01/2010 Ronald E. Brunner
277 7590 02/11/2016
PRICE HENEVELD LLP
695 KENMOOR SE
PO BOX 2567
GRAND RAPIDS, MI 49501
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BRU009 P305 2197
EXAMINER
TRUONG, MINH D
ART UNIT PAPER NUMBER
3654
MAILDATE DELIVERY MODE
02/11/2016 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 RONALD E. BRUNNER
Appeal2013-000366
Application 12/752,295
Technology Center 3600
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
THOMAS F. SMEGAL, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ronald E. Brunner (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1, 2, 6-17, 19, and 20. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a spindle greasing method and apparatus.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1 Claims 3-5 and 18 are canceled.
Appeal2013-000366
Application 12/752,295
1. An assembly comprising:
a spindle and a bearing spacer with a sleeve section
surrounding a length portion of the spindle;
upper and lower bearings separated by the bearing spacer;
a housing including a cavity receiving the spindle with the
upper and lower bearings supporting the spindle in the cavity;
and
a plurality of elongated narrow grease passageways each
having a longitudinally extending portion extending at least a
length of the bearing spacer and that are formed in part by an
interior surface of the bearing spacer and in part by an exterior
surface of the spindle.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Poyner
Kuhn
Hong
US 2,438,128 Mar. 23, 1948
US 4,989,398 Feb. 5, 1991
US 2006/0083452 Al Apr. 20, 2006
REJECTIONS2
I. Claims 1, 2, 6, 9, 10, 11, 13-15, 19, and 20 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kuhn and Hong.
II. Claims 7, 8, 12, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kuhn, Hong, and Poyner.
2 The rejection of claims 2, 8, and 14 under 35 U.S.C. § 112, first paragraph,
and claims 12 and 19 under 35 U.S.C. § 112, second paragraph are
withdrawn by the Examiner. Advisory Act. 3.
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DISCUSSION
Rejection I
Appellant argues claims 1, 2, 6, 9-11, 13-15, 19, and 20 together. See
Appeal Br. 10. We select independent claim 1 as the illustrative claim, and
claims 2, 6, 9-11, 13-15, 19, and 20, stand or fall with claim 1.
The Examiner finds that Kuhn discloses all of the limitations of claim
1 except for "a plurality of elongated narrow grease passageways each
having a longitudinally-extending portion extending at least a length of the
bearing spacer and that are formed in part by an interior surface of the
bearing spacer and in part by an exterior surface of the spindle." Final Act.
5. The Examiner further finds that Hong discloses
a plurality of elongated narrow grease passageways
(passageways 21 and 22) each having a longitudinally-extending
portion extending at least a length of the bearing spacer (the
passageways extend along the length of bearing spacer 44) and
that are formed in part by an interior surface of the bearing spacer
and in part by an exterior surface of the spindle (the passageways
formed by exterior surface of spindle 20 and interior surface of
bearing spacer 44).
Id. Based on these findings, the Examiner determines that it would have
been obvious "to employ a plurality of longitudinal-extending portion in a
fonn of a flat passageway between the bearing spacer and spindle, as taught
by Hong, so that grease can travel directly to the bearings." Id. at 6. The
Examiner further determines that "employing a plurality of small grease
passageways will allow grease to be better distributed around the bearings."
Id.
Arguing that Hong is not analogous art, Appellant notes that Hong
does not disclose "grease passageways" in accordance with Appellant's
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unsupported definition of that claim terminology.3 Appeal Br. 7; see also
Reply Br. 1. Appellant further contends that "Hong concerns a different
field of endeavor since Hong is for an optical disc drive for a computer (see
col. 1, paragraph [0001], lines 3-4) where there are no top and bottom
bearings" and that "Hong is solving a different problem since Hong is trying
to contain the oil between its top and bottom ends (i.e., the oil from exiting
from top and bottom ends of the spindle)" and "to spread the oil evenly on
an outer surface of the spindle along intermediate surfaces of the spindle."
Id. at 7-8.
"To qualify as prior art for an obviousness analysis, a reference must
qualify as 'analogous art,' i.e., it must satisfy one of the following
conditions: (1) the reference must be from the same field of endeavor; or (2)
the reference must be reasonably pertinent to the particular problem with
which the inventor is involved." K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d
1364, 1375 (Fed. Cir. 2012) (citing Innovention Toys, LLC v. MGA Entm 't,
Inc., 637 F.3d 1314, 1321 (Fed.Cir.2011)).
The Specification states that the "invention relates to a spindle
apparatus configured for directing grease to a bearing mounted thereon.
More specifically this is an apparatus and method of routing grease to a
bearing(s) in a lawnmower blade spindle housing assembly, though not
limited to only lawnmowers, nor to blade spindle housing assemblies."
Spec. 1. (emphasis added). Hong states that
This invention is related to an oil retaining structure of a spindle
in particular to a structure that can retain the lubricating oil on a
spindle of a spindle motor for a disc drive or an optical disc drive
so as to prevent the lubricating oil from leaking out, avoid wear
3 We note that claim 1 does not positively recite grease.
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of spindle and bearing, reduce noise, and extend operation life of
the spindle motor.
Hong i-f 1. Hong further states, "[l]ubricating oil is used for providing the
lubrication between a spindle and a bearing when the spindle is rotating so
as to reduce the wear caused by friction." Id. at i-f 2. Thus, both the instant
invention and Hong are directed to a spindle for directing lubricant to a
bearing.
Our reviewing Court "counsels the PTO to avoid the temptation to
limit broad claim terms solely on the basis of specification passages." In re
Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). Moreover, with respect to the
scope of analogous art:
The Supreme Court's decision in KSR International Co. v.
Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the
scope of analogous art broadly, stating that ''familiar items may
have obvious uses beyond their primary purposes, and a person
of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle." Id. at 402
(emphasis added).
Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). Thus,
where both the instant invention and the prior art in question are directed to
similar structure, the intent to use the similar devices in different apparati
does not preclude a finding that the invention and the prior art are in the
same field of endeavor. Rather, in a case such as this, where both the instant
invention and the prior art are directed to a spindle for directing lubricant to
a bearing, they are in the same field of endeavor.
Turning to Appellant's argument that Hong does not solve the same
problem as the instant invention, Appellant contends that Hong solves a
different problem because "Hong discloses a spindle having spiral grooves
that both 'make the lubricating oil distribute evenly on the surface of the
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Application 12/752,295
spindle', and further that 'prevents the leaking of the lubricating oil' from
the top and bottom of the spindle. Appeal Br. 7 (citing Hong, Abstract).
Although, Hong is concerned with evenly distributing the oil on the surface
of the spindle, that does not preclude Hong from being concerned with
communicating lubricant to the bearing -the problem with which Appellant
is concerned. See Hong i-f 2. Further, it appears that Appellant misconstrues
the teachings of Hong. The Abstract of Hong states:
This invention relates to an oil retaining structure of a spindle,
wherein the outer peripheral surface of the spindle is provided
with a first oil groove extending spirally along a clockwise
direction and a second oil groove extending spirally along a
counterclockwise direction. The first oil groove and the second
oil groove across each other so as to form a plurality of collecting
points. In operation, the oil film formed on the outer peripheral
surface of the spindle will collect in the two oil grooves slowly,
and the lubricating oil in the two oil grooves will bump into each
other at the collecting points and then diffuse. As a result, an
interior cycle is formed, which not only prevents the leaking of
the lubricating oil but also makes the lubricating oil distribute
evenly on the surface of the spindle.
Hong, Abstract. The emphasized portion of the Abstract does not disclose a
spindle that leaks oil as Appellant contends. Rather, the diffusion discussed
supra, refers to movement of the oil from the collecting points 23 either
outwardly to coat the spindle 20 or downwardly through the spiraling
grooves 21 or 22. See Hong i-f 17. Moreover, as discussed supra, Hong
explicitly describes one of the problems with which it is concerned as
"providing lubrication between a spindle and a bearing." Hong i-f 2. Thus,
Appellant's argument that Hong is not concerned with the same problem as
the instant invention is unconvincing.
As Hong is within the same field of endeavor as the instant invention
and Hong is concerned with the same problem as the instant invention, Hong
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qualifies as analogous art under both prongs of the test for analogous art
discussed supra.
Further, asserting that "it is NOT obvious to combine Kuhn and
Hong," Appellant contends that "Kuhn discloses a spindle apparatus that has
the exact problems solved by the present invention," and that "Kuhn doesn't
disclose or suggest a solution" to these problems. Appeal Br. 8, 9. In
addition, Appellant argues that "Hong discloses an oil system with channels
that intentionally 'leak' oil laterally (see title of Hong)," "Hong does NOT
disclose passageways that are sealed sufficiently to allow grease to be
pumped through them," and "Hong does not have top and bottom bearings."
Id. at 9; see also Reply Br. 2.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. 800 F.2d 1091, 1097, (Fed. Cir. 1986).
Appellant's arguments do not explain why the combined teachings of Kuhn
and Hong would not render the claimed subject matter obvious, and thus, are
unavailing. Furthermore, a determination of obviousness does not require
the claimed invention, or a particular subcombination thereof, to be
expressly suggested by any one or all of the references. See, e.g., In
re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, as discussed supra,
Appellant misconstrues the teachings of Hong with regard to diffusion of the
oil at the collection points. In addition, claim 1 does not require grease or
passageways that are sealed. Accordingly, Appellant's arguments are
unconvmcmg.
Lastly, Appellant argues that "even if Kuhn and Hong were combined
(which Applicant strongly traverses), a combination of Kuhn and Hong
would not arrive at the present invention" noting that "minimizing waste of
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lubricant is a specific goal of the present invention." Appeal Br. 10 (citing
Spec. i-fi-1 3 and 32). In support of this argument, Appellant contends that "if
the channels of Hong were used in Kuhn, the spiral channels would be
configured to allow lubricant to escape along a length of the bearing spacer."
Id.
Again, Appellant's argument is based on a misreading of Hong as
discussed supra. Further, even if Appellant is correct that the proposed
combination would result in a device where lubricant escapes along a length
of the bearing spacer, such an arrangement is not precluded by claim 1.
Although the claims are interpreted in light of the specification, limitations
from the specification are not read into the claims. In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). Thus, Appellant's argument is
unconvmcmg.
In the Reply Brief, Appellant argues that "it is unreasonable to
interpret the word 'passageway' in the present claims to be an open,
unsealed channel, as proposed by the EXAivIIl...JER'S ANSWER." Reply Br.
2. In support of this argument, Appellant contends that "[ c ]laim 1 inherently
defines the term 'passageway' as being a sealed passageway. Otherwise, it
wouldn't be able to communicate grease as defined." Id.
Appellant does not identify where the Specification defines
"passageway" in the manner proposed by Appellant. Appellant does not
proffer an ordinary and customary meaning of "passageway" in support of
such a narrow interpretation of this claim terminology, nor adequately
explain why such an interpretation is an inherent feature of the invention as
claimed. Thus, Appellant does not apprise us of error.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2, 6, 9-11, 13-15, 19, and 20, which fall with claim 1.
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Rejection II
Appellant argues claims 7, 8, 12, 16, and 17 together. Appeal Br. 12.
We select claim 7 as the illustrative claim, and claims 8, 12, 16, and 17,
stand or fall with claim 1 7.
Contending that "it is not obvious to modify Poyner to arrive at the
invention of claim 1," Appellant argues that:
there is no bearing spacer in Poyner, and there is no reason to
incorporate one since Poyner only discloses a single bearing.
Further, there is no component equivalent to a bearing spacer in
Poyner since the plunger ( 4) is intended to move longitudinally
relative to the casing (3) in Poyner, such that a bearing spacer
wouldn't work if it were positioned to be similar to other
requirements of claim 1.
Appeal Br. 11.
As discussed supra, nonobviousness cannot be shown by attacking the
references separately. Moreover, Poyner was not relied upon to teach two
bearings or a bearing spacer, as these elements are disclosed by Kuhn. Final
Act. 3. Accordingly, Appellant's argument is not convincing.
Appellant's arguments pertaining to this rejection on pages 3--4 of the
Reply Brief raise new issues not argued in the Appeal Br. In accordance
with 37 C.F.R. § 41.41 (b)(2), lacking a showing of good cause, we do not
consider the arguments raised in the Reply Brief which are not responsive to
an argument raised in the Answer.
We sustain the Examiner's decision rejecting claim 7, and claims 8,
12, 16, and 17, stand or fall with claim 17.
DECISION
The Examiner's rejections of claims 1, 2, 6-17, 19, and 20 is
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
pgc
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