Ex parte Kusser

Board of Patent Appeals and Interferences

Jul 19, 1999

08385356 (B.P.A.I. Jul. 19, 1999)

Application for patent filed February 8, 1995.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOSEF KUSSER
_____________
Appeal No. 98-1447
Application 08/385,3561
______________
ON BRIEF
_______________
Before COHEN, MEISTER and McQUADE, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 31. Subsequent to the final rejection and the entry
Appeal No. 98-1447
Application 08/385,356
2
of a new ground of rejection in the main answer, amendments
were filed and entered such that the status of the claims is
as follows.
Claims 32 and 33 stand allowed, and the examiner has indicated
that claims 9 through 16 and 24 through 31 are objected to but
would be allowable in independent form. Thus, we have before
us
for review on appeal a rejection of claims 1 through 8 and 17
through 23.
Appellant’s invention pertains to a base bearing assembly
for bearing an upright ornamental object. An understanding of
the invention can be derived from a reading of exemplary claim
1, a copy of which appears in APPENDIX B of the reply brief
(Paper No. 15).
As evidence of obviousness, the examiner has applied the
documents listed below:
Blizard 2,695,199 Nov. 23, 1954
Appeal No. 98-1447
Application 08/385,356
It is clear to us that the inclusion of the rejection of claims 8 through 162
and 23 through 31 under 35 U.S.C. 112, first paragraph, in the answer was inadvertent
since this rejection was indicated to have been overcome and obviously withdrawn (Paper
No. 10). Further, it is noted that the new ground of rejection under 35 U.S.C. 112,
second paragraph, appearing on page 6 of the main answer, was overcome as specified on
page 2 of the supplemental answer (Paper No. 21).
3
Unterberger 3,537,763 Nov. 3, 1970
The following rejection is before us for review.2
Claims 1 through 8 and 17 through 23 stand rejected under
35 U.S.C. § 103 as being unpatentable over Unterberger in view
of Blizard.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the main and
supplemental answers (Paper Nos. 14 and 21), while the
Appeal No. 98-1447
Application 08/385,356
In our evaluation of the applied references, we have considered all of the3
disclosure of each patent for what it would have fairly taught one of ordinary skill in
the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510(CCPA 1966). Additionally,
this panel of the board has taken into account not only the specific teachings, but also
the inferences which one skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
complete statement of appellant’s argument can be found in the
main and reply briefs (Paper Nos. 13, 15, and 17).

OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered
appellant’s specification and claims, the applied patents,3
and the respective viewpoints of appellant and the examiner.
As a consequence of our review, we make the determination
which follows.
Appeal No. 98-1447
Application 08/385,356
Hydrostatic relates to liquids at rest or the pressures they exert or transmit. 4
Webster’s New Collegiate Dictionary, G. & C. Merriam Company, Springfield,
Massachusetts, 1979.
5
We affirm the rejection of claim 1, but reverse the
rejection of claims 2 through 8 and 17 through 23. Our
reasoning appears below.
Claim 1 is drawn to a base bearing assembly for bearing
an upright object comprising, inter alia, a pedestal arranged
on a base, with the pedestal borne by a film of liquid,
floatingly rotatable about a perpendicular axis on the base.
A reading of the Unterberger document reveals to us the
teaching of a hydrostatic air-bearing system, preferably for4
precision round tables. Unterberger discloses (Fig. 1) a
round table mounting plate 17 for work piece 20 secured to
Appeal No. 98-1447
Application 08/385,356
The test for obviousness is what the combined teachings of references would5
have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981).
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bearing inner part 10 (pedestal), with the spherically formed
bearing parts 10, 10' cooperating with spherically formed
bearing carrying faces of housing 12 (base) and having
pressurized air therebetween.
The patent to Blizard addresses a bearing (Fig. 1)
wherein a supported element 11 (hollow sphere) is floated on a
bearing provided by a cup-shaped support 12. The patentee
expressly indicates that air, or other fluids such as liquids
and other gases may be used as a lubricant (column 1, lines 30
through 33).
Blizard recognizes the compressible nature of air as a
disadvantage (column 1, lines 46 through 51). Of additional
interest is Fig. 6 of this reference, wherein a bearing with a
truncated conoid shape is depicted (column 4, lines 35 through
41).
In applying the test for obviousness, this panel of the5
Appeal No. 98-1447
Application 08/385,356
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board makes the determination that it would have been obvious
to one having ordinary skill in the art to substitute a liquid
for air in the bearing of Unterberger, based upon the
knowledge in the art as reflected in the teaching of Blizard.
As we see it, the motivation on the part of one having
ordinary skill for making this modification would have simply
been to obtain the expected benefit of a liquid, when the
known compressibility disadvantage of air would be adverse for
a particular use. Our position on this matter presumes skill,
of course, on the part of those practicing this art, not the
converse. See In re Sovish, 769 F.2d 738, 742, 226 USPQ 771,
774 (Fed. Cir. 1985).
The argument of appellant in the main and reply briefs
does not persuade us of error on the part of the examiner in
rejecting claim 1 under 35 U.S.C. § 103. Unlike appellant
(main brief, page 12), we concluded, supra, that the combined
teachings of the applied references would have been suggestive
of using liquid with the bearing of Unterberger and thereby
Appeal No. 98-1447
Application 08/385,356
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effect the broadly recited base bearing assembly of claim 1.
In particular, and contrary to the view advocated (reply
brief, page 3), it is our opinion that one of ordinary skill
in the art would have expected liquid to function
appropriately with the spherical surface bearing arrangement
of Unterberger, particularly in light of the applicability of
air or liquid for a spherical surface bearing as taught by
Blizard. No evidence has been proffered by appellant to
persuade us otherwise.
We turn now to the remaining claims on appeal.
Claims 2 and 17, claims from which all other claims on
appeal respectively depend directly or indirectly, require,
inter alia, an annular bottom surface of the pedestal and an
annular top surface for the base in opposition to the bottom
surface, with a film of liquid between the bottom surface of
the pedestal and the top surface of the base. Consistent with
appellant’s underlying disclosure (specification, page 7), the
claimed film of liquid maintained between the pedestal bottom
surface and the base top surface is fairly understood to
Appeal No. 98-1447
Application 08/385,356
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assist in having the pedestal borne practically frictionlessly
by the base.
Simply stated, a review of the overall teachings of
Unterberger (Fig. 1) and Blizard (Fig. 6) does not reveal to
us a suggestion for the content of claims 2 and 17, in
particular. In our opinion, one having ordinary skill in the
art would not have derived from the applied teachings,
assessed alone and in combination, any suggestion for a film
of liquid acting between an annular pedestal bottom surface
and an annular base top surface for bearing or supporting the
pedestal.
In summary, this panel of the board has affirmed the
rejection of claim 1, but has reversed the rejection of claims
2 through 8 and 17 through 23 under 35 U.S.C. § 103 as being
unpatentable over Unterberger in view of Blizard.
Appeal No. 98-1447
Application 08/385,356
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The decision of the examiner is affirmed-in-part.
AFFIRMED-IN-PART
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 98-1447
Application 08/385,356
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ICC/kis
Don W. Bulson
RENNER, OTTO, BOISSELLE & SKLAR
1621 Euclid Avenue
19th Floor
Cleveland, OH 44115
Appeal No. 98-1447
Application 08/385,356
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