Ex Parte Gotoh et al

Board of Patent Appeals and Interferences

Nov 9, 2007

09925020 (B.P.A.I. Nov. 9, 2007)

1
UNITED STATES PATENT AND TRADEMARK OFFICE 2
_____________ 3
4
BEFORE THE BOARD OF PATENT APPEALS 5
AND INTERFERENCES 6
_____________ 7
8
Ex parte FUSASUKE GOTOH, 9
HIROSHI ISHIGURO, 10
NAOKI FUKUDA, 11
and 12
TOSHIHISA OHATA 13
_____________ 14
15
Appeal No. 2006-2829 16
Application No. 09/925,020 17
Technology Center 3600 18
______________ 19
20
Decided: November 9, 2007 21
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Before WILLIAM F. PATE, III, TERRY J. OWENS, and JENNIFER D. BAHR, 24
Administrative Patent Judges. 25
26
OWENS, Administrative Patent Judge. 27
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29
DECISION ON APPEAL 30
The Appellants appeal from a rejection of claims 1-18, which are all of the 31
pending claims. 32
Appeal 2006-2829
Application 09/925,020

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THE INVENTION 1
The Appellants claim a roller bearing. Claim 1 is illustrative: 2
1. A rolling bearing apparatus comprising: 3
a roller bearing including 4
a plurality of rolling elements held between an inner ring and an 5
outer ring by a retainer, and 6
grease sealed in said rolling bearing by a seal; 7
a rotary body provided with said outer ring; and 8
a shaft provided with said inner ring, wherein said rolling bearing 9
apparatus is configured such that said rotary body and said shaft are 10
connected together by a clutch mechanism, 11
when said rotary body and said shaft are connected, said rolling 12
bearing can be used on receiving a rotation load, while the reactive rotation 13
between said inner and outer rings is zero, and 14
wherein an initial radial clearance between said inner and outer rings 15
is set such that a bearing effective clearance when said rolling bearing is 16
incorporated between said rotary body and said shaft can provide a positive 17
value. 18
19
THE REFERENCES 20
Brucher US 4,371,220 Feb. 1, 1983 21
Teramachi US 4,629,337 Dec. 16, 1986 22
Dreschmann US 4,650,195 Mar. 17, 1987 23
Takano US 5,655,844 Aug. 12, 1997 24
Tanaka1 US 6,170,625 B1 Jan. 9, 2001 25
Iso US 6,329,326 B1 Dec. 11, 2001 26
(filed Sep. 28, 1999) 27
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THE REJECTIONS 29

1 The Examiner relies upon Tanaka as an English equivalent of JP 11-22753, and
Iso as an English equivalent of JP 2000-119673 (final rejection mailed June 10,
2005, p. 2). Because the Examiner cites to Tanaka and Iso and the Appellants do
not object to those substitutions, we consider Tanaka and Iso to be the references
relied upon by the Examiner in the rejections.
Appeal 2006-2829
Application 09/925,020

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The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1, 9, 17 1
and 18 over Tanaka in view of Iso and Takano; claims 2 and 10 over Tanaka in 2
view of Iso, Takano and Brucher; claims 3 and 11 over Tanaka in view of Iso, 3
Takano and Teramachi; claims 4 and 12 over Tanaka in view of Iso, Takano, 4
Brucher and Teramachi; claims 5 and 13 over Tanaka in view of Iso, Takano and 5
Dreschmann; claims 6 and 14 over Tanaka in view of Iso, Takano, Bucher and 6
Dreschmann; claims 7 and 15 over Tanaka in view of Iso, Takano, Teramachi and 7
Dreschmann; and claims 8 and 16 over Tanaka in view of Iso, Takano, Brucher, 8
Teramachi and Dreschmann. 9
OPINION 10
We reverse the rejection of claims 17 and 18 and affirm the rejections of the 11
other claims. 12
Claims 1-16 13
The Appellants provide a substantive argument only with respect to claim 1, 14
which is the sole independent claim (Br. 10-13; Reply Br. 4-5). Although 15
additional references are applied to claims 2-8 and 10-16, the Appellants do not 16
argue the separate patentability of those claims (Br. 15-16). We therefore limit our 17
discussion of claims 1-16 to claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 18
Tanaka discloses a pulley unit that has a clutch and can be installed on an 19
auxiliary machine such as an air conditioner compressor, a water pump, an 20
alternator or a cooling fan, driven from a crankshaft of an engine of an automobile 21
or the like through a belt (col. 1, ll. 7-12). The pulley unit comprises a roller 22
bearing (4) including balls (18) between an inner ring (16) and an outer ring (17), a 23
lubricant retained in the roller bearing by an oil seal (20), a rotary outer ring (1) 24
around which a belt (B) is wrapped, and an inner ring (2) attached to a shaft (not 25
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Application 09/925,020

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numbered) (col. 3, ll. 21-34, 64-67; fig. 1). When the clutch is in a lock state the 1
outer (1) and inner (2) rings rotate synchronously with each other (col. 4, ll. 7-10). 2
Iso discloses a roller bearing filled with a grease containing as base oils a 3
perfluoropolyether oil having a straight-chain structure and a dynamic viscosity of 4
40-160 mm2/s and a particulate fluororesin, and containing, as a thickening agent, a 5
particulate polytetrafluoroethylene (abstract). 6
Takano discloses a roller bearing unit used, for example, for rotatably 7
supporting a rotating shaft of a screw compressor (col. 1, ll. 6-8). Takano teaches 8
(col. 2, ll. 24-36): 9
[T]here have heretofore been various attempts to extend the life of the 10
rolling bearing unit fitted for example to a screw compressor. A first 11
arrangement has been carried out wherein a positive gap or actual gap (in 12
contrast to a negative gap under preload conditions) is provided rather than a 13
preload being applied to the pair of ball bearings of the rolling bearing unit. 14
When a positive or actual gap is provided in this way, then the contact 15
pressure on the rolling faces of the balls and on the inner and outer raceways 16
of the respective ball bearings is smaller than that for the case of a preload 17
applied, so that the fatigue life of the rolling faces, as well as that of the 18
inner and outer ring raceways is improved. 19
20
Takano discloses, with respect to his invention, a ball bearing (5) having an 21
assembly axial gap of 0.010 mm which provides a positive gap for the ball bearing 22
(col. 7, ll. 40-41). 23
The Appellants argue that there would have been no motivation to combine 24
Tanaka and Takano because unlike Tanaka, Takano is nonanalogous art (Br. 12-25
13). The test urged by Appellants of whether a reference is from an analogous art 26
is first, whether it is within the field of the inventor’s endeavor, and second, if it is 27
not, whether it is reasonably pertinent to the particular problem with which the 28
inventor was involved. See In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 29
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(CCPA 1979). A reference is reasonably pertinent if, even though it may be in a 1
different field of endeavor, it is one which, because of the matter with which it 2
deals, logically would have commended itself to an inventor’s attention in 3
considering the inventor’s problem. See In re Clay, 966 F.2d 656, 659, 23 4
USPQ2d 1058, 1061 (Fed. Cir. 1992). The Appellants argue, regarding the first 5
prong of the test, that their field of endeavor is rotary elements that may be held 6
together by clutches, whereas Takano’s field of endeavor is screw extruders 7
(actually, screw compressors) (Br. 12). The Appellants argue that, unlike their 8
rotary elements, screw extruder roller bearings have inner and outer rings that do 9
not rotate together such that there is no relative movement between them, and must 10
support an axial load acting against the turns of the screw portion of the extruder 11
(Br. 12; Reply Br. 4). The Appellants argue, with respect to the second prong of 12
the test (Br. 13): 13
Takano does not teach or suggest that there is solved the problem of wear in 14
a rolling bearing used on the condition that the rolling bearing receives a 15
rotation load, while a relative rotation between the inner ring and the outer 16
ring is zero, as is the situation in a mechanism having a clutch; i.e., the 17
problem solved by the present invention. 18
19
The Supreme Court’s statement in KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 20
1740, 82 USPQ2d 1385, 1396 (2007) that “[w]hen a work is available in one field 21
of endeavor, design incentives and other market forces can prompt variations of it, 22
either in the same field or a different one” indicates that for prior art to be properly 23
applied in a rejection it need not satisfy the first prong of the nonanalogous art test. 24
The Supreme Court also stated in KSR that “the problem motivating the patentee 25
may be only one of many addressed by the patent’s subject matter. The question is 26
not whether the combination was obvious to the patentee but whether the 27
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combination was obvious to a person with ordinary skill in the art.” KSR, 127 1
S.Ct. at 1742, 82 USPQ2d at 1397. Those statements indicate that for prior art to 2
be properly applied in a rejection it need not satisfy the second prong of the 3
nonanalogous art test as articulated in Wood and Clay. Hence, the Appellants’ 4
argument that Takano is nonanalogous art is not well taken. Regardless, because 5
Takano pertains to using a gap to improve the fatigue life of roller bearings, it 1) 6
logically would have commended itself to the Appellant’s attention in considering 7
their problem of roller bearing wear and, therefore, is in the Appellant’s field of 8
endeavor, and 2) is reasonably pertinent to the problem of roller bearing wear with 9
which the Appellants were involved. Takano, therefore, is analogous art. 10
Moreover, Takano’s disclosure that the positive gap was used “for example” 11
in screw compressor roller bearings (col. 2, ll. 24-26) would have led one of 12
ordinary skill in the art, through no more than ordinary creativity, to apply 13
Takano’s teaching regarding improving roller face fatigue life to other machines 14
wherein roller bearing wear is a problem, such as that of Tanaka.2 See KSR, 127 15
S.Ct. at 1741, 82 USPQ2d at 1396 (In making the obviousness determination one 16
“can take account of the inferences and creative steps that a person of ordinary 17
skill in the art would employ”). 18
The Appellants argue that their figure 4 shows that Takano’s 0.01 mm gap 19
does not produce any shift in contact area but, instead, shows that the retainer and 20
rolling elements remain stationary, thereby giving rise to wear problems (Reply Br. 21
5). That argument is not persuasive because the Appellants’ claim 1 does not 22
require a shift in contact area. Additionally, the recitations in claims 17 and 18 that 23
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the contact position of the rolling element is shifted indicates that claim 1, from 1
which claims 17 and 18 depend, encompasses roller bearings that do not provide 2
the contact position shift required by those dependent claims. 3
For the above reasons we are not convinced of reversible error in the 4
Examiner’s rejection of claims 1-16. 5
Claims 17 and 18 6
Claim 17 depends from claim 1 and requires that “the positive value of the 7
radial clearance is set such that the contact position of the rolling element with 8
respect to the raceway surface of the inner ring is gradually shifted when the 9
relative rotation between inner and outer rings is zero.” Claim 18 depends from 10
claim 1 and requires that “the positive value of the radial clearance is set such that 11
the contact position of the rolling element with respect to the raceway surface of 12
the inner ring is shiftable in a circumferential direction when the relative rotation 13
between inner and outer rings is zero.” 14
The Examiner argues that “the contact area between the raceway surface and 15
the inner ring of Tanaka as modified by Iso and further modified by Takano would 16
inherently shift when the forces applied to the device change due to the bearing 17
clearance” (final rejection mailed June 10, 2005, p. 3), and that “it is clear that the 18
contact area is gradually shifted in the reference to Takano due to the presence of 19
the clearance. See gap 9” (Ans. 5). 20
An inherent characteristic must be inevitable, and not merely a possibility or 21
probability. See In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 22
1981). The Appellants provide evidence in their figure 4 that a gap of 0.01 mm 23

2 The Appellants acknowledge that “Appellants and Tanaka are directed to the field
of rotary elements that may be held together by clutches” (Br. 12) and that wear
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does not provide a contact position shift. The Examiner has not provided evidence 1
or technical reasoning which shows that the Appellants’ evidence is incorrect or 2
that there is a difference between Takano’s roller bearing and that in the 3
Appellants’ figure 4 which causes Takano’s 0.01 mm gap, unlike that in the 4
Appellants’ figure 4, to inevitably produce a contact position shift. 5
The Examiner, therefore, has not established a prima facie case of 6
obviousness of the inventions claimed in the Appellants’ claims 17 and 18. 7
DECISION 8
The rejection under 35 U.S.C. § 103 of claims 1, 9, 17 and 18 over Tanaka 9
in view of Iso and Takano is affirmed as to claims 1 and 9 and reversed as to 10
claims 17 and 18. The rejections under 35 U.S.C. § 103 of claims 2 and 10 over 11
Tanaka in view of Iso, Takano and Brucher, claims 3 and 11 over Tanaka in view 12
of Iso, Takano and Teramachi, claims 4 and 12 over Tanaka in view of Iso, 13
Takano, Brucher and Teramachi, claims 5 and 13 over Tanaka in view of Iso, 14
Takano and Dreschmann, claims 6 and 14 over Tanaka in view of Iso, Takano, 15
Bucher and Dreschmann, claims 7 and 15 over Tanaka in view of Iso, Takano, 16
Teramachi and Dreschmann, and claims 8 and 16 over Tanaka in view of Iso, 17
Takano, Brucher, Teramachi and Dreschmann are affirmed. 18

was a known problem in that type of device (Spec. 4:19-20).
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Application 09/925,020

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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 2
AFFIRMED-IN-PART 3
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WASHINGTON, DC 20037-3213 14