Ex Parte Gotoh et alDownload PDFBoard of Patent Appeals and InterferencesNov 9, 200709925020 (B.P.A.I. Nov. 9, 2007) Copy Citation 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 _______________ 22 23 Before WILLIAM F. PATE, III, TERRY J. OWENS, and JENNIFER D. BAHR, 24 Administrative Patent Judges. 25 26 OWENS, Administrative Patent Judge. 27 28 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 2 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 28 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 3 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 Appeal 2006-2829 Application 09/925,020 4 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 Appeal 2006-2829 Application 09/925,020 5 (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 Appeal 2006-2829 Application 09/925,020 6 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 employâ€). 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 Appeal 2006-2829 Application 09/925,020 7 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 Appeal 2006-2829 Application 09/925,020 8 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). Appeal 2006-2829 Application 09/925,020 9 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 4 5 6 7 8 9 hh 10 11 SUGHRUE-265550 12 2100 PENNSYLVANIA AVE. NW 13 WASHINGTON, DC 20037-3213 14 Copy with citationCopy as parenthetical citation