Ex Parte Knuth

Patent Trial and Appeal Board

Sep 29, 2016

13029833 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/029,833 02/17/2011
23409 7590 10/03/2016
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Jason Knuth
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
043020-9059-01 1432
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
10/03/2016 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON KNUTH
Appeal2014-008775 1
Application 13/029,833 2
Technology Center 3600
Before CYNTHIA L. MURPHY, BRADLEYB. BAY AT, and
TARA L. HUTCHINGS Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, and 5-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed Dec.
27, 2013) and Reply Brief ("Reply Br.," filed Aug. 8, 2014), and the
Examiner's Answer ("Ans.," mailed June 11, 2014), and Final Office Action
("Final Act.," mailed Aug. 2, 2013).
2 Appellant identifies Hamischfeger Technologies, Inc. as the real party in
interest. App. Br. 2.
Appeal2014-008775
Application 13/029,833
CLAIMED fNVENTION
Appellant's claimed invention relates to "[ r ]oller and rail
configurations for the roller circle assembly of heavy machinery, such as
draglines, power shovels, and the like." Spec. i-f 2.
Claims 1, 9, and 14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A heavy earth-moving machine comprising:
a lower structure;
an upper structure supported by the lower structure and
rotatable with respect thereto;
a substantially circular lower rail mounted on the lower
structure;
a substantially circular upper rail mounted on the upper
structure; and
a plurality of tapered rollers engaging and positioned
between the upper rail and the lower rail, each of the plurality of
tapered rollers including
a substantially frustoconical body portion having an
enlarged end, a reduced end, and a roller surface extending
between the enlarged end and the reduced end, the body
portion defining a roller axis; and
a flange portion extending radially from the reduced
end of the body portion and including a convex flange
contact surface facing toward the enlarged end, wherein
the flange contact surface defines a concave radiused edge
recessed relative to the lower rail.
2
Appeal2014-008775
Application 13/029,833
REJECTIONS 3
Claims 1, 2, 5, 6, and 9--17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kallenberger (US 5,67 6,4 71, iss. Oct. 14, 1997) and
Lothrop (US 2,015,230, iss. Sept. 24, 1935). 4
Claims 7, 8, and 18-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kallenberger, Lothrop, and Bock (US 1, 177 ,595,
iss. Apr. 4, 1916).
ANALYSIS
Independent Claims 1, 9, and 14, and Dependent Claim 2, 5, 6, 10-13, and
15-17
We are persuaded by Appellant's argument that the Examiner erred in
rejecting claims 1, 9, and 14 under 35 U.S.C. § 103(a) because Lothrop does
not disclose or suggest "the flange contact surface defines a concave
radiused edge recessed relative to the lower rail," as recited in claim 1, and
similarly recited in claims 9 and 14. App. Br. 6-7; see also id. at 9. The
Examiner relies primarily on Kallenberger as disclosing the limitations of
claims 1, 9, and 14. Final Act. 3. But the Examiner acknowledges that
Kallenberger does not disclose the claimed flange contact surface defining a
concave radiused edge recessed relative to the lower rail, as recited in each
of claims 1, 9, and 14, and relies on Lothrop to cure the deficiency. Id. at 3-
4 (citing Lothrop, Fig. 3, near "a").
3 The rejection of claim 3 under 35 U.S.C. § 112, first paragraph, has been
withdrawn. Final Act. 19.
4 We treat the Examiner's reference to canceled claims 3 and 4 as
inadvertent error. See Final Act. 3.
3
Appeal2014-008775
Application 13/029,833
Lothrop is directed to bearings of the tapered roller type. Lothrop, 1,
col. 1, 11. 1-3. Lothrop describes that tapered roller 3 includes a main body
portion 8, a flange 9, and a recessed portion 10 integrally connecting body
portion 8 and flange 9. Id. at 1, col. 2, 11. 19-25. Lothrop describes with
reference to Figure 3 that "thrust surface 11 of flange 9 ... is of spherical
contour, as indicated at 'y' ." Id. at 1, col. 2, 11. 29-31.
The Examiner finds that Lothrop' s flange contact surface at the
junction with recessed portion 10 defines a concave radiused edge recessed
relative to the lower rail, as required by claims 1, 9, and 14. Final Act. 4.
However, Lothrop describes the contact surface of flange 9 as convex only.
See Lothrop, Fig. 3, "y"; see also id. at 1, col. 2, 11. 29-36. To the extent the
Examiner relies on a surface of Lothrop' s recessed portion 10 as meeting the
argued claim limitation, recessed portion 10 is not a flange, but instead a
separate structure connecting flange 9 and body 8. We find nothing in the
cited portions of Lothrop that discloses or suggests a flange contact surface
that defines a concave radiused edge, as called for in claims 1, 9, and 14.
In response to Appellant's arguments, the Examiner seemingly
contradicts the findings in the Final Action and determines that
"Kallenberger already discloses a concave radiused edge." Ans. 2. In this
regard, the Examiner reasons that Kallenberger must inherently provide a
concave radiused edge, because Kallenberger describes a convex flange
contact surface 130 oriented in a different direction from a roller surface.
Ans. 2-3. The Examiner makes a similar argument regarding Lothrop. Id.
at 3--4 ("[i]n order for each of the roller surface and the convex flange
contact surface to be oriented in different directions, a concave radiused
edge ... must inherently be provided.")
4
Appeal2014-008775
Application 13/029,833
However, we agree with Appellant that the Examiner has not shown
that a concave radiused edge is necessarily present in Kallenberger or
Lothrop. See Reply Br. 2-3; see also Continental Can Co. USA, Inc. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991) (the Examiner must
provide evidence and/ or technical reasoning that makes "clear that the
missing descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.")
In view of the foregoing, we do not sustain the Examiner's rejection
of claims 1, 9, and 14 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner's rejection of dependent claims 2, 5, 6, 10-
13, and 15-17.
Dependent Claims 7, 8, and 18-20
Each of claims 7, 8, and 18-20 ultimately depends from one of
independent claims 1 and 14. The Examiner's rejection of claims 7, 8, and
18-20 based on Bock, in combination with Kallenberger and Lothrop, does
not cure the deficiency in the Examiner's rejection of claims 1 and 14.
Therefore, we do not sustain the Examiner's rejection of claims 7, 8, and
18-20 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to claims 1 and 14.
DECISION
The Examiner's rejections of claims 1, 2, and 5-20 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
5