Ex Parte Fischer et al

Patent Trial and Appeal Board

Jan 25, 2015

12301280 (P.T.A.B. Jan. 25, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAPHAEL FISCHER, PETER NIEBLING,
CHRISTIAN HECKER, DARIUS DLUGAI, and RALF HUND
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Appeal 2013-001292
Application 12/301,280
Technology Center 3600
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Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1–5, 9, 10, 13–20, and 22.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).

We AFFIRM.

1 According to the Appellants, “[t]he real party in interest is the assignee,
Schaeffler KG.” (Appeal Br. 3.)

Appeal 2013-001292
Application 12/301,280

2
STATEMENT OF THE CASE
The Appellants’ invention relates to an assembly on a motor vehicle
for connecting an outer bearing ring of a rolling bearing and a wheel
support. (Spec. 1.)

Illustrative Claim
1. A connecting assembly, comprising:
a roller bearing, which rotates about an axis of rotation,
having an outer bearing ring;
a wheel support formed by two molded sheet-metal parts,
which are connected fixedly to form a hollow profile, the
molded sheet-metal parts each having a circular opening,
which is coaxial with respect to the axis of rotation of the
rolling bearing, and the circular openings being spaced apart
from each other and the molded sheet-metal parts have edges
which have an encircling thickened portion and delimit the
circular openings; and
a spacer ring, which is axially supported by the edges of
the molded sheet-metal parts, arranged between the opening
of each of the molded sheet-metal parts and the edges of the
molded sheet-metal parts to delimit each opening and form a
tubular bearing receptacle for the outer bearing ring of the
rolling bearing,
wherein the molded sheet-metal parts are connected
fixedly to the spacer ring and the outer bearing ring of the
rolling bearing by only a form-fitting and frictional
connection.

Prior Art
Black US 2,744,800 Sept. 27, 1954
Niebling WO 2006/053530 A1 May 26, 2006

Appeal 2013-001292
Application 12/301,280

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Rejection
The Examiner rejects claims 1–5, 9, 10, 13–20, and 22 under
35 U.S.C. § 103(a) as unpatentable over Niebling and Black.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.3

ANALYSIS
Independent claim 1 sets forth an assembly comprising a “roller
bearing,” having an outer bearing ring, a “wheel support” formed by two
sheet-metal parts, and a “spacer ring.” (Appeal Br., Claims App.) The
“spacer ring” is arranged between the sheet-metal parts to “form a tubular
bearing receptacle for the outer bearing ring.”
Niebling discloses a wheel bearing assembly comprising a bearing
having an outer bearing ring 5 and a wheel support formed by sheet-metal
parts 3a and 3b. (Answer 4.) Black discloses a wheel bearing assembly
with a separate spacer ring arranged between sheet-metal parts to form a
tubular bearing receptacle for an outer bearing ring. (Id. at 5.)
According to the Examiner, it would have been obvious, in view of
Black, to modify Niebling’s wheel bearing assembly to include a separate
spacer ring forming a tubular receptacle for its outer bearing ring 5.
(Answer 5.) The Examiner articulates that this modification would provide

3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2013-001292
Application 12/301,280

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“a bearing assembly that can be made of sheet metal components and
economically assembled.” (Id.)
We are not persuaded by the Appellants’ arguments that the
Examiner’s combination would not have been obvious. (See Appeal Br. 12–
16.) The Examiner is not required to point to an express teaching in the
prior art to support an obviousness rejection. See, e.g., Ball Aerosol and
Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir.
2009). And the Appellants’ remarks on the teachings of the individual
references are not persuasive of Examiner error, because the rejection is
based on their combination. See, e.g., In re Keller, 642 F.2d 413, 426
(CCPA 1981). Additionally, the Appellants offer assertions, but not
evidence, about the manufacturing complications created by the Examiner’s
combination. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
Further, the Examiner’s combination does not entail bodily incorporating a
spacer ring, identical in every structural detail to that shown in Black, into
Niebling’s wheel bearing assembly. Keller, 642 F.2d at 425.
The key to supporting a conclusion of obviousness is a clear
articulation of the reason why the claimed invention would have been
obvious. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[A]ny
need or problem known in the field of endeavor” can provide “a reason for
combining the elements in the manner claimed.”4 KSR, 550 U.S. at 420.
When considering the obviousness of a combination of known elements, the
operative question is “whether the improvement is more than the predictable

4 Thus, looking to Black for potential modifications of Niebling’s wheel
bearing assembly is not “impermissible hindsight.” (See Appeal Br. 12–13.)
Appeal 2013-001292
Application 12/301,280

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use of prior art elements according to their established functions.” KSR, 550
U.S. at 417.
The Examiner’s rejection is based on a combination of known
elements that, in the modified wheel bearing assembly, perform their
established functions to yield a predictable result. Specifically, for example,
the sheet metal parts perform an established wheel support function, the
outer bearing ring performs an established bearing function, and the spacer
ring performs an established receptacle-forming function. And the
Examiner articulates a reason with rational underpinning for modifying
Niebling’s wheel bearing assembly to include a separate spacer ring forming
a tubular receptacle for its outer bearing ring, namely the economic
assembly of a wheel bearing assembly having sheet metal parts. As such,
the proposed combination would have been obvious at the time of
Appellants’ invention to a person of ordinary skill in the art
Thus, we sustain the Examiner’s rejection of independent claim 1.
The Appellants submit that the same arguments apply for independent
claim 13 (see Appeal Br. 19), so we sustain the Examiner’s rejection of
independent claim 13.
The Appellants acknowledge dependent claims 2–5, 9, 10, 14–20, and
22 fall with independent claim 1 (see Appeal Br. 17, 19), so we sustain the
Examiner’s rejection of these claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in the rejection of claims 1–5,
9, 10, 13–20, and 22 under 35 U.S.C. § 103(a) as unpatentable over Niebling
and Black.
Appeal 2013-001292
Application 12/301,280

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DECISION
We AFFIRM the Examiner’s rejection of claims 1–5, 9, 10, 13–20,
and 22.
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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