Ex Parte Gyuricsko et al

Patent Trial and Appeal Board

Nov 30, 2017

13719541 (P.T.A.B. Nov. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/719,541 12/19/2012 Frederick S. Gyuricsko 1001-0195-2CIP 8225
140282 7590 12/04/2017
Mnrtha r'lillina T T P
EXAMINER
One Century Tower
265 Church Street
DIXON, KEITH L
New Haven, CT 06510 ART UNIT PAPER NUMBER
3644
NOTIFICATION DATE DELIVERY MODE
12/04/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing@murthalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK S. GYURICSKO,
JAY PHOENIX,
ARNOLD E. FREDERICKSEN, and
JOHN H. COWLES JR.
Appeal 2016-001317
Application 13/719,541
Technology Center 3600
Before JOHN C. KERINS, MICHAEL L. HOELTER, and
SEAN P. O’HANLON, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-001317
Application 13/719,541
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1—9 and 11. App. Br. 4. Claim 10 has been canceled. App. Br. 4.
Appellants’ counsel provided oral argument on November 7, 2017. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse the Examiner’s rejections, but we enter a NEW GROUND
OF REJECTION with respect to claim 1 pursuant to 37 C.F.R. § 41.50(b).
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to roller bearing assemblies for
use in critical applications and, more particularly, to lined track roller
bearing assemblies used within an actuation system of a leading edge of a
wing of an aircraft assembly.” Spec. 12. Apparatus claim 1 is the sole
independent claim, is illustrative of the claimed subject matter, and is
reproduced below:
1. An actuation system for deploying and retracting a lift
assisting device of a leading edge of a wing of an aircraft, the
actuation system comprising:
a track pivotally coupled to the lift assisting device, the
track having first and second outer surfaces and side surfaces;
a shaft rotationally coupled within the wing of the aircraft
and operable, in response to flight control signals, to deploy or
retract the lift assisting device;
means for actuating the lift assisting device, coupled to
the shaft, between a retracted position to a deployed position
along an arcuate path;
a plurality of track roller bearings rotatably contacting
the first and second outer surfaces of the track to guide the track
along the arcuate path; and the plurality of track roller bearings
including at least one lined track roller assembly;
wherein each of the at least one lined track roller
assemblies comprises an inner ring having an outer bearing
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Application 13/719,541
surface and an outer ring having an inner bearing surface, the
inner ring being disposed at least partially in the outer ring and
a self lubricating liner is disposed on at least one of the outer
bearing surface and the inner bearing surface.
REFERENCES
Butler US 2,620,147
US 6,149,105
US 6,180,574 B1
US 6,994,475 B2
Dec. 2, 1952
Nov. 21,2000
Jan. 30, 2001
Feb. 7, 2006
Jaggard
Ryan
Doll
REJECTIONS
Claims 1—3, 5—7, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jaggard, Doll, and Ryan.
Claims 4, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jaggard, Doll, Ryan, and Butler.
ANALYSIS
The rejection of claims 1—3, 5—7, and 11
as unpatentable over Jaggard, Doll, and Ryan
Appellants argue all the claims (i.e., claims 1—3, 5—7, and 11)
together. App. Br. 9—15. We select independent claim 1 for review with the
remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner primarily relies on the teaching of Jaggard for
disclosing the limitations of claim 1, but acknowledges that Jaggard does not
teach the limitations of a “lined track roller assembly” nor a “self-lubricating
liner.” See Non-Final Act. 3. The Examiner relies, respectively, on the
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teachings of Doll and Ryan for such teachings.1 Non-Final Act. 3; see also
Ans. 3^4. The stated reason to modify the combination of Jaggard and Doll
with Ryan is that the resulting combination “will result in [a] coating that is
easy to apply to a variety of surfaces and that would have good wear
properties even under high temperature use.” Non-Final Act. 3^4
(referencing Ryan 1:27—29).
Appellants take issue with the Examiner’s stated reason to combine
the cited references, i.e., “because of increase in wear properties at high
temperaturesApp. Br. 10; see also Reply Br. 2, 4. Appellants contend
that “high temperatures do not exist in environments where an actuation
system for ... a leading edge of a wing of an aircraft is utilized.” App. Br.
10 (referencing an “Inventor Declaration submitted July 8, 2014”).
Appellants state that one skilled in the art would understand that such an
actuation system would be employed “where temperatures are [as] low as
-55°C.” App. Br. 10 (referencing section 6 of the Inventor Declaration).
Hence, as per Appellants, “increasing wear properties at high temperatures
[as per Ryan] would not motivate one skilled in the art to modify the cited
references in a manner that would disclose or suggest the claimed
invention.2 App. Br. 10. Accordingly, “one skilled in the art concerned with
1 It is noted that both Doll and Ryan disclose the use of PTFE (i.e., Teflon®)
as a suitable lining material, as do Appellants. See Doll 4:16—17; Ryan
3:48-54; Spec. 129.
2 Appellants also state that one skilled in the art “would also understand that
the coefficient of friction for self-lubricating liners increases significantly
with decreasing temperature and decreasing bearing pressure.” App. Br. 10
(referencing sections 9, 10, 14, and 16 of the Inventor Declaration).
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Application 13/719,541
actuation systems utilized in a wing of an aircraft [as claimed] would
immediately discard Ryan as being irrelevant.” App. Br. 10.
The Examiner acknowledges Ryan’s express teaching (i.e., “a
particularly desirable bearing coating would be easy to apply to a variety of
surface[s] and would have good wear properties even under high
temperature use”). Ryan 1:26—29. The Examiner emphasizes Ryan’s usage
of the term “even” stating that because of such usage, “Ryan teaches or
suggests that the coating will result in good wear properties at high
temperatures and at other than high temperatures.” Ans. 3 (emphasis
added). The Examiner thus states, “[t]he motivation to combine Jaggard
with Doll and Ryan is proper and the rejection should be upheld.” Ans. 3.
Ryan discusses testing the coating at a temperature of 163°C. Ryan
9:1—3; 9:56—60. Ryan would not be viewed by a person skilled in the art as
limited to elevated temperatures such as this, but Ryan also fails to evidence
that it would be suitable for low temperature use. Hence, the temperature of
the environment taught by Ryan is indeed different from that described in
the Inventor Declaration where it is stated, “the aircraft wing and lined track
rollers are exposed to subfreezing temperatures as low as -55°C.” Inventor
Declaration | 6; see also Reply Br. 2.
Accordingly, and based on the record presented and the Inventor
Declaration describing the temperatures involved, we agree with Appellants
that “one skilled in the art concerned with actuation systems utilized in a
wing of an aircraft would immediately discard Ryan as being irrelevant.”
App. Br. 10. We thus are not of the opinion that the Examiner has properly
established a prima facie case of obviousness because the temperatures
discussed in Ryan and those encountered by an aircraft wing are so vastly
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different.3 We do not sustain the Examiner’s rejection of claims 1—3, 5—7,
and 11 as being obvious over Jaggard, Doll, and Ryan.
New Ground of Rejection under 37 C.F.R. § 41.50(b)
However, because Doll, Ryan, and Appellants each disclose the use of
PTFE (Teflon®) as a suitable lining material in roller assemblies (see
supra), we investigate the characteristics of PTFE to ascertain what one
skilled in the art might understand regarding that substance. A quick
Internet search led to a “Properties Handbook” produced by the DuPont
Company (the developer of PTFE) entitled “Teflon® PTFE fluoropolymer
resin” dated July 1996, number 220313D, and bearing reorder number H-
37051-3 (replacing H-37051-2) (hereinafter “Handbook”).4 As stated
therein, “[t]he design and engineering data presented in this handbook are
intended to assist the design engineer in determining where and how
Teflon® resins may best be used.” Handbook 1. Under the heading “Low
Temperature Properties,” the Handbook states:
Parts fabricated of Teflon® PTFE resins exhibit high strength,
toughness, and self-lubrication at low temperatures. Teflon®
PTFE resins are useful from—268°C (-A50°F) and are highly
flexible from—79°C (—110°F).
Handbook 23. Further, the Handbook states, “[ujseful but varying
mechanical properties are maintained from—268 to 260°C (—450 to 500°F)
for Teflon® PTFE.” Handbook 8. From the above, it can reasonably be
concluded that one skilled in the art of self-lubricating bearing liners would
have been aware of the ability to use a PTFE liner in the low temperature
3 “The PTO bears the initial burden of showing a prima facie case of
obviousness.” In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014).
4 See http://www.rjchase.com/ptfe_handbook.pdf
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environment described in the Inventor Declaration section 6 (i.e., in
“subfreezing temperatures as low as -55°C”).
Appellants also address pressure, stating that, with respect to aircraft
actuation systems, there is a limit “as to how much force they can apply.”
App. Br. 14 (referencing Inventor Declaration section 7). On this point,
Appellants acknowledge, “Ryan is particularly concerned with the
performance of the coating under certain conditions” which include “high
pressure.” Reply Br. 3 (referencing Ryan 1:38-40). Since Ryan is directed
to providing “a low friction surface” (Ryan 1:34—35), the use of Ryan’s
surface would result in less force being required. Further, the Handbook
states, “Figure 13 indicates that static friction of Teflon® PTFE resins
decreases with increases in pressure.” Handbook 26. Hence, the use of
PTFE as both Doll and Ryan suggest appears to resolve Appellants’
pressure-related issues, i.e., “[ajnother problem with lined track rollers is
that the coefficient of friction decreases with decreasing bearing pressure.”
App. Br. 14 (referencing Inventor Declaration, section 10). Hence,
Appellants’ argument regarding a need to minimize the applied force is not
persuasive the Examiner erred in view of such teachings.
Accordingly, the Examiner’s statement that “Ryan teaches or suggests
that the coating will result in good wear properties at high temperatures and
at other than high temperatures” (Ans. 3) is supported by the Handbook’s
teachings, which one skilled in the art is presumed to be aware of.5 Thus,
5 See In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having established
that this knowledge was in the art, the examiner could then properly rely, as
put forth by the solicitor, on a conclusion of obviousness ‘from common
knowledge and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular reference.’”).
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the motivation expressed by the Examiner (i.e., “such a predictable
arrangement will result in [a] coating that is easy to apply to a variety of
surfaces . . . even under high temperature use” has rational underpinning that
supports the Examiner’s conclusion of obviousness.6 Non-Final Act. 3^4.
Additionally, the statements addressing temperature and pressure made in
the Inventor Declaration (see supra) are not persuasive of error in view of
the teachings found in the Handbook. Further, Appellants’ discussion of
unexpected results is not persuasive of error since the Handbook discusses
the use of PTFE in such situations.7 See App. Br. 13—15; Reply Br. 8—10.
However, because we rely on additional evidence not relied on by the
Examiner in supporting the rationale advanced by the Examiner, we
designate our action a NEW GROUND of rejection to provide Appellants a
full and fair opportunity to respond.
For the above reasons, we affirm the Examiner’s rejection of claim 1,
but we designate this affirmance a NEW GROUND of rejection. We elect
not to specifically address dependent claims 2, 3, 5—7, and 11 under this
NEW GROUND, leaving that for the Examiner to consider.
The rejection of claims 4, 8, and 9
as unpatentable over Jaggard, Doll, Ryan, and Butler
Appellants contend, “Butler fails to remedy the deficiencies”
previously discussed. App. Br. 16. In view of the above NEW GROUND
of rejection, we are not persuaded there are deficiencies to be cured.
6 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
7 Additionally, Appellants’ arguments regarding Doll are not persuasive
since the Examiner relied on either Jaggard for such teachings or such
teachings can also be found in Ryan (alone) or its combination with Jaggard.
App. Br. 11—13; see also Reply Br. 4—8.
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Accordingly, and as above, we leave it to the Examiner to consider
dependent claims 4, 8, and 9 in view of the new evidence (i.e., Handbook)
not previously relied upon by the Examiner.
DECISION
We REVERSE the Examiner’s decision to reject claims 1—9 and 11
under 35 U.S.C. § 103(a), however, as indicated supra, we designate our
decision to reject claim 1 as a NEW GROUND of rejection because the
Board relies on reasons and evidence different from and/or additional to
those stated by the Examiner, and also to provide Appellants a fair
opportunity to respond.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
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claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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