Ex Parte Gibson

Board of Patent Appeals and Interferences

Sep 30, 2009

10673641 (B.P.A.I. Sep. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM J. GIBSON, JR
____________

Appeal 2008-002819
Application 10/ 673,641
Technology Center 3600
____________

Decided: September 30, 2009
____________

Before WILLIAM F. PATE III, JENNIFER D. BAHR, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
This is an appeal from the final rejection of claims 1, 4, 6-15, 18-28,
31, and 33-45. Claims 2, 3, 5, 16, 17, 29, 30, and 32 have been cancelled.
We have jurisdiction over this appeal under 35 U.S.C. §§ 134 and 6.

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The claimed subject matter is directed to a support system for a so-
called S-cam component of the braking system of large trucks. The support
system is characterized by an elongated bushing substantially coextensive
with the entire length of the S-cam drive shaft. A method is also claimed.
Claim 15, reproduced below, is further illustrative of the claimed
subject matter.
15. A support assembly for supporting a [sic] S cam, the S
cam having a generally elongate metal rod shank having an S-
head at one end of the shank and a set of splines at the other end
of the shank, the support assembly comprising:

a single elongate bushing rotationally supporting and
substantially coextensive along the length of the S cam shank,
the bushing extending from proximate the S-head to proximate
the splines; and

a bushing holder, the bushing being substantially
enclosed within the bushing holder.

REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Eksergian US 2,382,554 Aug. 14, 1945
Deibel US 3,497,037 Feb. 24, 1970
Asano US 4,346,535 Aug. 31, 1982
Morris US 6,240,806 B1 Jun. 05, 2001
Boyer US 6,450,073 B1 Sep. 17, 2002

REJECTIONS
Claims 1, 4, 6, 11, 13, 15, 18, 19, 24, 28, 31, 38, and 43-45 stand
rejected under 35 U.S.C. 103(a) as unpatentable over Deibel.

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Claims 1, 4, 6, 7, 15, 18-20, 28, 31, 33, 34, 39, 41, and 43-45 stand
rejected under 35 U.S.C. 103(a) as unpatentable over Morris in view of
Eksergian.

Claims 12, 14, 25, 26, 27, 40, and 42 stand rejected under 35 U.S.C.
103(a) as unpatentable over Deibel in view of Asano.

Claims 12, 14, 25, 26, 27, 40, and 42 stand rejected under 35 U.S.C.
103(a) as unpatentable over Morris in view of Eksergian and Asano.

Claims 8-10, 21-23, and 35-37 stand rejected under 35 U.S.C. 103(a)
as unpatentable over Morris in view of Eksergian and further in view of
Boyer.

ISSUES
With regard to the § 103 rejections based on Deibel, Appellant agues
that Deibel fails to teach or suggest an elongated bushing where the bushing
is coextensive along the length of the shank. Accordingly, the issue for our
consideration is whether the Appellant has established that the Examiner
erred in rejecting claims 1, 4, 6, 11, 13, 15, 18, 19, 24, 28, 31, 38, and 43-45
as unpatentable over Deibel and claims 12, 14, 25, 26, 27, 40, and 42 as
unpatentable over Deibel in view of Asano for the failure of Deibel to
disclose a bushing coextensive with the shank.
With respect to the rejections based on Morris in view of Eksergian,
Appellant argues that the if the teachings of Eksergian were followed in the
device of Morris and the bushing were made to extend more than half the
length of the shank, the grease reservoir formed between the shaft and tube
of Morris would be blocked by the bushing. Therefore, according to
Appellant, the operating principle of Morris would be changed. This,
according to Appellant, is evidence that the combination of Morris and
Eksergian would not have been obvious to one of ordinary skill. Therefore,
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the issue for our consideration is whether Appellant has established that the
Examiner erred in rejecting claims 1, 4, 6, 7, 15, 18-20, 28, 31, 33, 34, 39,
41, and 43-45 as unpatentable over Morris in view Eksergian, and whether
the Examiner erred in rejecting claims 12, 14, 25, 26, 27, 40, and 42 as
unpatentable over Morris in view of Eksergian and further in view of Asano
as directed to a combination of references that teach away from the claimed
subject matter. It is further noted that Appellant has not argued the rejection
of any of the dependent claims, apart from the independent claims from
which they depend. Accordingly, the dependent claims will stand or fall
with the independent claims from which they depend. See 37 C.F.R. §
41.37(c)(vii).
Finally, with respect to the rejection based on Morris in view of
Eksergian and further in view of Boyer, Appellant has chosen to base the
patentability of these claims on the arguments offered with respect to Morris
and Eksergian. Accordingly, we hold that these claims will stand or fall
with independent claim 1, 15, or 28 from which they ultimately depend.

FINDINGS OF FACT
Deibel discloses a support assembly for an S-cam which is an
intermediate device between a brake actuator 122 and brake lining 144 of a
vehicle braking system. See col. 3, ll. 21-35. The actual support assembly
consists of a bushing or bearing holder 140 which is coextensive with the S-
cam shank 128. The S-cam shank is journaled in the bushing holder 140 by
bearing 145, and it is sealed at each end with seals 146 and 148. See col. 4,
ll. 17-32. It is noted that shank 128 is shown crosshatched as a metal in
Fig. 6.
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Morris also discloses a support system for an S-cam in a vehicle
braking system. With reference to Fig. 4, Morris discloses a bushing holder
or cam tube 54, with the S-cam camshaft or shank 52 journaled therein by
bushings 59 and 60. See col. 4, ll. 44-52, col. 5, ll. 53 – col. 6, l. 27. See
also, generally, col. 3, ll. 1-20. Morris differs from the claimed subject
matter in that Morris discloses 2 bushings, one at either end of the bushing
holder and the bushings are not coextensive with the S-cam shank.
Eksergian discloses a brake mechanism for a railroad vehicle. A
pneumatic cylinder 25 moves brake lining 22, via pivotal arms 23 and 27.
See pg. 2, col. 1, ll. 21-29 and ll. 36-56. The pivotal arms 27 and 23 are
connected by means of a pivot portion 26. The pivot portion in Fig. 2 is
illustrated with two bearings. The first, radial thrust bearing 29, is in a
hardened bearing lining 34 and the second, axial thrust bearing 32, is
inserted in the hardened bearing lining 35. Thus, Eksergian discloses a
bearing shaft or shank with two bearings, one bearing proximate the spline
and the other bearing proximate the opposite end.
Eksergian further shows an embodiment in Fig. 5, and teaches that the
two bearings can be replaced with a single bearing. See page 2, col. 2, l. 73
– page 3, col. 1, l. 18. Thus, Eksergian teaches that two bearings on opposite
ends of a journaled brake operating shank can be replaced by a single
elongated bearing generally coextensive with the mounting tube.
Asano is cited by the Examiner merely to show that it is old in the art
to machine components. Appellant does not take issue with the Asano
patent.
Finally, Boyer has been cited to show a lubrication arrangement for a
multiple spindle turret lathe. Each of the spindles is mounted in the turret
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vial cylindrical bushing 28. See col. 2, ll. 66 – col. 3, l. 5. The bushing 28 is
formed with an outer circular groove 34 for grease supply and a series of
spiral inner grooves 40 and 42 connecting to the outer groove via supply
holes 36. See col. 3, ll. 56 – col. 4, l. 8. Appellant does not contest the
teaching of Boyer.
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., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 406-407 (“While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to
define the inquiry that controls.”).
The 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 416. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
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field, and such modification yields a predictable result. See id. (citing United
States v. Adams, 383 U.S. 39, 40). The Court further stated that:
[I]f 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.

KSR, 550 U.S. at 417. When considering obviousness of a combination of
known elements, the operative question is thus “whether the improvement is
more than the predictable use of prior-art elements according to their
established functions.” Id.
“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining
the teachings of references does not involve an ability to combine their
specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
The use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention--including all its limitations--
with the teachings of the prior art, flouts section 103 and the fundamental
case law applying it. Per se rules that eliminate the need for fact-specific
analysis of claims and prior art may be administratively convenient for PTO
Examiners and the Board. Indeed, they have been sanctioned by the Board
as well. But reliance on per se rules of obviousness is legally incorrect and
must cease. Any such administrative convenience is simply inconsistent
with section 103, which, according to Graham and its progeny, entitles an
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applicant to issuance of an otherwise proper patent unless the PTO
establishes that the invention as claimed in the application is obvious over
cited prior art, based on the specific comparison of that prior art with claim
limitations. We once again hold today that our precedents do not establish
any rules of obviousness, just as those precedents themselves expressly
declined to create such rules. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir.
1995).
ANALYSIS
The rejections of claims 1, 4, 6, 11, 13, 15, 18, 19, 24, 28, 31, 38, and 43-
45 as unpatentable over Deibel and the rejection of claims 12, 14, 25-27,
40, and 42 as unpatentable over Deibel in view of Asano.

We will not sustain these rejections. With regard to the axial extent of
the bushings as claimed in independent claims 1, 15 and 28, the Examiner
cites In re Rinehart, 531 F.2d 1048 (CCPA 1976) and states that to extend
the bushing along the entire shank is a mere scaling up of a prior art object
capable of being scaled up which would have been obvious to one of
ordinary skill in the art. We note that the jurisprudence when used in this
manner amounts to a per se rule of unpatentability. However, our reviewing
court has carefully cautioned against the use of such per se rules. Per se
rules used in this manner short-circuit the Graham inquiry. These rejections,
instead of being based on reasoning with rational underpinnings, are based
on this per se rule. Therefore, these rejections must be reversed.

The rejections of claims 1, 4, 6, 7, 15, 18-20, 28, 31, 33, 34, 39, 41, and 43-
45 as unpatentable over Morris in view Eksergian; claims 12, 14, 25, 26,
27, 40, and 42 as unpatentable over Morris in view of Eksergian and
further in view of Asano and claims 8-10, 21-23, and 33-35 as
unpatentable over Morris in view of Eksergian and Boyer.
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We will sustain these rejections. As noted above, Morris discloses the
claimed subject matter except that the bushings in Morris, two in number, do
not extend the axial extent of the S-cam shank. On the other hand,
Eksergian teaches that two bearings mounted toward the ends of a brake
actuator shank or pivot can be replaced with but a single bearing. In view of
this teaching of Eksergian, it is our view that the exact axial extent of the
bushings of Morris up to and including a bushing that extends the whole
distance of the shank would have been prima facie obvious to one of
ordinary skill in the art as specifically taught by the disclosure of Eksergian.
The structure of Morris is a prior art element which can be modified as
taught by Eksergian to yield predictable results.
Appellant argues that if the teachings of Eksergian were followed and
a large axially extending bearing were placed in the structure of Morris, the
central grease fitting would be blocked by the bushing. Appellant’s
argument is based on a misperception of the law concerning obviousness.
Obviousness is not determined by the bodily incorporation of one reference
into another. “Combining the teachings of references does not involve an
ability to combine their specific structure.” See In re Nievelt, 482 F.2d 965,
968 (CCPA 1973).
Furthermore, this argument of Appellant is belied by the disclosure of
Boyer which has a bearing that extends axially and covers the grease fitting.
However Boyer shows that grease can still be supplied to the journal via a
circular groove 34. Thus Appellant’s argument that the combination of
Morris and Eksergian would block the grease fitting disclosed in Morris is
not credited.
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CONCLUSIONS
Appellant has established that the Examiner erred in rejecting claims
1, 4, 6, 11, 13, 15, 18, 19, 24, 28, 31, 38, and 43-45 as unpatentable over
Deibel and in rejecting claims 12, 14, 25, 26, 27, 40, and 42 as unpatentable
over Deibel in view of Asano. The rejections of these claims are reversed.
Appellant has not established that the Examiner erred in rejecting
claims 1, 4, 6, 7, 15, 18-20, 28, 31, 33, 34, 39, 41, and 43-45 as unpatentable
over Morris in view Eksergian; claims 12, 14, 25-27, 40, and 42 as
unpatentable over Morris in view of Eksergian and further in view of
Asano; and claims 8-10, 21-23, and 35-37 as unpatentable over Morris in
view of Eksergian and further in view of Boyer. The rejections of these
claims are affirmed.
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)(1)(iv) (2009).

AFFIRMED-IN-PART

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