Ex parte Hill

Board of Patent Appeals and Interferences

Nov 24, 1998

08168669 (B.P.A.I. Nov. 24, 1998)

Application for patent filed December 16, 1993. According to appellant, the1
application is a division of 08/050,507, filed April 20,1993, now U.S. Patent No.
5,271,633, issued December 21, 1993.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM C. HILL, JR.
__________
Appeal No. 96-1602
Application 08/168,6691
___________
ON BRIEF
___________
Before CALVERT, STAAB and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of claims 1-9. Claims
10 and 11, the only other claims pending in the application, have been withdrawn from
Appeal No. 96-1602
Application 08/168,669
Rejections (b) and (c) are new rejections made for the first time in the examiner’s2
answer. In the statement of these new rejections in the answer, the examiner inadvertently
identified dependent claim 9 rather than independent claim 7 as one of the claims subject
to the new rejections.
The final rejection also included a rejection of the appealed claims as being3
unpatentable over Muck in view of Marsh and Miyazawa. In that this rejection was not
repeated in the answer, it is presumed to have been withdrawn. See Ex parte Emm, 118
USPQ 180, 181 (Bd. App. 1957).
2
further consideration under 37 CFR § 1.142(b) as not readable on the elected invention.
Upon further consideration, the examiner objected to claims 5, 6, 8 and 9, but indicated
that they would be allowable if rewritten in independent form. Accordingly, only the
rejections of claims 1-4 and 7 remain before us for review.
Appellant’s invention pertains to a skate bearing insert. Independent claim 1, a
copy of which is found in the appendix to appellant’s main brief, is illustrative of the
appealed subject matter.
The references of record relied upon by the examiner in support of rejections under
35 U.S.C. § 103 are:
Muck 1,393,813 Oct. 18, 1921
Skorka 1,572,567 Feb. 9, 1926
Parrish 2,073,708 Mar. 16, 1937
Hoerle 2,105,354 Jan. 11, 1938
Marsh 3,348,289 Oct. 24, 1967
Miyazawa et al. (Miyazawa) 4,940,342 Jul. 10, 1990
The following rejections under 35 U.S.C. § 103 are before us for review:2,3
Appeal No. 96-1602
Application 08/168,669
3
(a) claims 1-4 and 7, unpatentable over Skorka in view of Parrish, Muck, Marsh and
Miyazawa;
(b) claims 1-4 and 7, unpatentable over Hoerle in view of Marsh and Miyazawa; and
(c) claims 1-4 and 7, unpatentable over Skorka in view of Hoerle, Marsh and
Miyazawa.
Considering first rejection (a), independent claim 1 calls for, inter alia, “means along
the inner circumference of the inner race for cooperating with a bearing insert tool for
removing and inserting the bearing insert from the hub of the skate wheel . . . .”
Independent claim 7 contains a similar limitation but specifies the means in question as
being “an annular inner groove formed within the central axis bore along the inner
circumference of the inner race . . . .” The examiner concedes that Skorka, the primary
reference, does not teach this claimed feature. Nevertheless, the examiner has taken the
position that
Miyazawa et al. discloses using a groove 221a for cooperation with a
bearing puller to remove a bearing. Accordingly, one having ordinary skill in
the art would have found it obvious to provide a groove on the bearing
inserts of Skorka in order to provide for quick and easy removal of the
inserts by engagement of the groove with a bearing puller. [Answer, page 4.]
Recognizing that this modification would not necessarily result in a construction that
would correspond to the claimed subject matter (the claims call for the means for removing
and inserting, or annular groove, to be located along the inner circumference of the inner
Appeal No. 96-1602
Application 08/168,669
4
bearing race whereas Miyazawa’s groove is located on the outer circumference of the
outer bearing race), the examiner further posits that
. . . one having ordinary skill in the art is deemed to be of sufficient
intelligence to realize that the environment in which the bearing inserts are
utilized will dictate the location of this groove. Thus, because the inner and
outer circumferences of the inner race and the inner circumference of the
outer race of Skorka are the only surfaces accessible to a bearing puller
once axle 10 has been removed[,] one having ordinary skill in the art would
have found it obvious to provide the groove on any of these circumferences.
[Answer, page 4.]
A rejection based on § 103 must rest on a factual basis, with the facts being
interpreted without hindsight reconstruction of the invention from the prior art. In making
this evaluation, the examiner has the initial duty of supplying the factual basis for the
rejection he advances. He may not, because he doubts that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
In the present instance, even if we were to accept the examiner’s foundation
position that it would have been obvious to provide a groove on the bearing inserts of
Skorka for the purpose taught by Miyazawa at column 3, lines 33-41, we cannot accept the
examiner’s further position that it would also have been obvious to one of ordinary skill in
the art to provide a bearing puller groove at the specific location called for by the appealed
claims (i.e., along the inner circumference of the inner bearing race). The only applied
Appeal No. 96-1602
Application 08/168,669
5
reference relied upon by the examiner for a teaching of means for cooperating with a
bearing insert tool for removing and inserting a bearing insert is Miyazawa, which
discloses a bearing puller groove 221a provided on the outer circumference of the outer
bearing race for this purpose. In our opinion, the examiner’s position to the effect that it
would have been within the realm of skill in the art to provide the bearing puller groove of
Miyazawa on the inner circumference of the inner bearing race of Skorka is speculative,
based on hindsight, and not fairly suggested by the reference teachings themselves.
We have also reviewed the Parrish, Muck and Marsh references applied by the
examiner against the appealed claims in rejection (a), but find nothing therein which makes
up for the deficiencies of Skorka and Miyazawa noted above. Accordingly, we cannot
sustain the examiner’s rejection of the appealed claims under 35 U.S.C. § 103 as being
unpatentable over Skorka in view of Parrish, Muck, Marsh and Miyazawa.
Turning to rejection (c), this rejection is likewise founded in part on the proposition
that it would have been obvious to one of ordinary skill in the art to provide a groove on the
inner circumference of the inner race of Skorka’s bearing insert in view of Miyazawa. For
the reasons discussed above, the examiner’s position in this regard is not well taken.
Further, the Hoerle, and Marsh references additionally relied on do not make up for the
deficiencies of Skorke ad Miyazawa. It follows that this rejection also cannot be sustained.
Appeal No. 96-1602
Application 08/168,669
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As to rejection (b), we observe that the inner races 17, 18 of the bearing inserts of
Hoerle, the primary reference, are welded together (page 1, right column, lines 6-8), such
that the bearing inserts form a unified structure with the skate wheel. Accordingly, there
would be no logical reason in the first instance for providing a bearing puller groove of the
sort disclosed by Miyazawa at element 221a in Hoerle at any location,
much less at the specific location called for in the appealed claims. Hence, rejection (b)
likewise cannot be sustained.
The decision of the examiner is reversed.
Reversed.
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS/pgg
Appeal No. 96-1602
Application 08/168,669
7
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