Ex Parte Labuschagne

Board of Patent Appeals and Interferences

Apr 24, 2009

09819194 (B.P.A.I. Apr. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAN H. LABUSCHAGNE
____________

Appeal 2008-4519
Application 09/819,194
Technology Center 3600
____________

Decided:1 April 24, 2009
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Jan H. Labuschagne (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-12 and 19-29, which are
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Railcar wheel sets are periodically removed from service and the
bearings for the wheel sets are stripped and replaced with new or
reconditioned bearings. Spec. 2:8-12. The bearings that are removed are
then reconditioned and installed on another wheel set. Spec. 2:12-13.
Reconditioning bearings requires equipment and skills not ordinarily found
in a typical wheel shop, so the wheel shop ordinarily sends the bearings to a
separate reconditioning facility. Spec. 2:15-18. The Appellant’s claimed
invention is directed to a portable facility for reconditioning antifriction
bearings. Spec. 3:6-7. Claims 1 and 20, reproduced below, are
representative of the subject matter on appeal.
1. A portable facility for reconditioning an
antifriction bearing having components including a
race provided with a raceway and rolling elements
that roll along the raceway, said facility
comprising:
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an enclosure that is portable in the sense that
it can be moved by a transport vehicle;
means within the enclosure for inspecting
components of the bearing;
more means within the enclosure for
repairing defects in components of the bearing;
and
spare races and rolling elements located
within the enclosure to replace damaged races and
rolling elements.
20. A portable facility for reconditioning an
antifriction bearing that was used on the journal of
an axle for a railcar or locomotive and includes
inner and outer races provided with opposed
raceways, and rolling elements located between
the races and along the raceways, said facility
comprising:
an enclosure that is portable in the sense that
it can be moved by a transport vehicle;
a washer containing a solution for removing
grease from the races and rolling elements;
equipment within the enclosure for
inspecting the races;
equipment within the enclosure for repairing
the bearing; and
spare inner and outer races and rolling
elements located within the enclosure to replace a
damaged race or rolling element.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Beach US 1,276,013 Aug. 20, 1918
Colson US 2,034,507 Mar. 17, 1936
James US 2,274,964 Mar. 3, 1942
Schaub US 2,594,810 Apr. 29, 1952
Sturm, Jr. (“Sturm”) US 3,139,748 Jul. 7, 1964
Bellas US 3,308,845 Mar. 14, 1967
Parker US 3,402,349 Sep. 17, 1968
Dalton US 3,580,059 May 25, 1971
Boyce US 5,165,169 Nov. 24, 1992
Fetty US 5,588,752 Dec. 31, 1996
Rich Diegle, “Dakota Wheel Bearing Noise” Adams Business Media
Motor Service, No. 9, Vol. 80, p. 70 (Sept. 1, 2001) (“Diegle”).
The Appellant seeks review of the following Examiner’s rejections:
1. Claims 1-7 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Bellas, Diegle, Sturm, and James.
2. Claims 8, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over
Bellas, Diegle, Sturm, Colson, and Boyce.
3. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Bellas, Diegle,
Sturm, Colson, Boyce, and Schaud.
4. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over Bellas,
Diegle, Sturm, Colson, Boyce, and Dalton.
5. Claims 20, 26, and 29 under 35 U.S.C. § 103(a) as unpatentable over
Bellas, Boyce, and Diegle.
6. Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Bellas,
Boyce, Diegle, and Fetty.
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7. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over Bellas,
Boyce, Diegle, and Parker.
8. Claims 23, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over
Bellas, Boyce, Diegle, and Colson.
9. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Bellas,
Boyce, Diegle, Beach, and Fetty.
10. Claim 25 under 35 U.S.C. § 103(a) as unpatentable over Bellas,
Boyce, Diegle, Beach, Fetty, and Colson.2

ISSUE
The Examiner found that Bellas discloses a portable facility having an
enclosure with means within the enclosure for lubricating bearings, and that
it would have been obvious, in view of the teachings of various other
references describing the servicing and reconditioning of bearings, to modify
Bellas so as to have means for inspecting and repairing bearing components
at the location near the defective bearing, race, and rolling element.
Ans. 4-5.
The Appellant notes that Bellas serves as the primary reference in
each of the rejections and contends that one having ordinary skill in the art

2 The Appellant also seeks the Board’s review of the Examiner’s objection
to the drawings. Reply Br. 1-3. Such objections are reviewable by petition
under 37 C.F.R. § 1.181 (see Manual of Patent Examining Procedure
(MPEP) §§ 1002 and 1201) and are not within the jurisdiction of the Board.
In re Mindick, 371 F.2d 892, 894 (CCPA 1967).

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would not have been led to a portable facility for reconditioning bearings in
light of the teaching in Bellas of a mobile automobile service unit in
combination with any of the additional references relied upon by the
Examiner. App. Br. 20-26.
The issue presented by this appeal is:
Has the Appellant demonstrated the Examiner erred in concluding that
one having ordinary skill in the art would have been led to modify the
mobile unit of Bellas to include the claimed means or equipment for
inspecting and means or equipment for repairing in view of the prior art?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. The Appellant’s Specification describes a cone inspection station
92 as follows:
At the cone inspection station 92 a workman
places the cone assembly 28 in a fixture which
shines light into the cone 22 at the small ends of
the rollers 24 around it such that the light passes
between the cage 26 that confines the rollers 24
and the raceway 36 of the cone 22. While the cone
22 rotates slowly, the workman looks at the cone
raceway 36 from the large ends of the rollers 24,
that is over the thrust rib 38. By this visual
observation as well as by touch and by a probe, the
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workman determines if the raceway 36 exhibits
damage, such as spalling or water etching or
brinelling. The workman also inspects the rollers
24 for damage.
Finally, the workman, using a cone bore
gauge at the station 92, measures the diameter of
the bore that extends through the cone 22.
Spec. 11, l. 17 – Spec. 12, l. 4.
2. The Appellant’s Specification describes a cup inspection and repair
station 94 as follows:
At the station 94 a workman examines the cup 20,
particularly its raceways 32, to determine if either
raceway 32 exhibits excessive spalling or
brinelling or bears water etching. Being rust,
water etching is usually removed simply with a
polishing tool. Some spalling can be removed
with a hand-held grinding tool, but excessive
spalling or overly deep brinell marks require
replacement of the cup 20. With gauges the
workman at the station 90 also measures the
outside diameter of the cup 20 and the diameters of
the counterbores 34.
Spec. 13, l. 21 – Spec. 14, l. 4.
3. The Appellant’s Specification describes a cone repair station 114
as follows:
At the cone repairing station 114, a
workman examines the raceway 36 of the cone 22
to determine if the raceway 36 can be restored. If
the cone 22 contains too much spalling or
excessive brinell markings, the cone 22 is
discarded. In the case of minor spalling, the
workman removes the spalling with a hand-held
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grinder. The workman will also remove water
etchings with a polishing tool. The cone 22, when
so reconditioned, is joined with the rollers 24 on
the transfer surface 100 that leads to the roller
sizing station 116.
Spec. 12, l. 19 – Spec. 13, l. 2.
4. Bellas discloses a mobile unit for servicing automobiles including
a van body portion that has sufficient side working space to enable
mechanics to grease and replace wheel bearings. Bellas, col. 1, ll.
9-10 and col. 6, ll. 25-29.
5. Bellas does not disclose using its mobile unit to recondition wheel
bearings. i.e., inspect and repair bearing components. In particular,
Bellas does not disclose a workstation having a fixture capable of
holding and rotating a bearing component and having a light, a
probe, and one or more gauges capable of measuring bearing
components; a work station having a polishing tool and a hand-
held grinding tool; equipment for inspecting bearing races; or
equipment for repairing a bearing.

PRINCIPLES OF LAW
When a claim uses the term “means” to describe a limitation, a
presumption inheres that the inventor used the term to invoke § 112, ¶ 6.
Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). “This
presumption can be rebutted when the claim, in addition to the functional
language, recites structure sufficient to perform the claimed function in its
entirety.” Id.
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Once a court concludes that a claim limitation is a means-plus-
function limitation, two steps of claim construction remain: 1) the court must
first identify the function of the limitation; and 2) the court must then look to
the specification and identify the corresponding structure for that function.
Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205,
1210 (Fed. Cir. 2003).
“[T]he ‘broadest reasonable interpretation’ that an examiner may give
means-plus-function language is that statutorily mandated in paragraph six.”
In re Donaldson, 16 F.3d 1189, 1194-95 (Fed. Cir. 1994) (en banc). “[O]ne
construing means-plus-function language in a claim must look to the
specification and interpret that language in light of the corresponding
structure, material, or acts described therein, and equivalents thereof, to the
extent that the specification provides such disclosure.” Id. at 1193. “[T]he
PTO may not disregard the structure disclosed in the specification
corresponding to such language when rendering a patentability
determination.” Id. at 1195.
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
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the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 406 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at 418.

ANALYSIS
Claim Construction
Independent claims 1 and 8 use “means” to describe several claim
limitations. The broadest reasonable interpretation that we may give means-
plus-function language is statutorily mandated in 35 U.S.C. § 112, paragraph
six. Donaldson, 16 F.3d at 1194-95. Claim 1 recites a portable facility for
reconditioning an antifriction bearing including means for inspecting
components of the bearing and means for repairing defects in components of
the bearing. Claim 8 more specifically recites a portable facility for
reconditioning a tapered roller bearing including means for inspecting the
cone assembly, means for inspecting and repairing the raceway of the cup,
and means for repairing the raceway of the cone.
The Appellant identified stations 92 and 94 as corresponding to the
means for inspecting and stations 94 and 114 as corresponding to the means
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for repairing of claims 1 and 8. App. Br. 3, 5. For claim 1, the function
recited in the means for inspecting components of the bearing is inspecting
bearing components, and the structure described in the Appellant’s
Specification corresponding to this function is a work station including a
fixture capable of holding and rotating a bearing component and having a
light, a probe, and one or more gauges capable of measuring the components
(Facts 1, 2). The function recited in the means for repairing components of
the bearing is repairing bearing components. The structure described in the
Appellant’s Specification corresponding to this function is a work station
including a polishing tool and a hand-held grinding tool (Facts 2, 3).
For claim 8, the function recited in the means for inspecting the cone
assembly is inspecting the cone assembly, and the structure described in the
Appellant’s Specification corresponding to this function is a work station
including a fixture capable of holding and rotating a bearing component and
having a light, a probe, and a gauge (Fact 1). The functions recited in the
means for inspecting and repairing the raceway of the cup are inspecting and
repairing the raceway of the cup, and the structure described in the
Appellant’s Specification corresponding to these functions is a work station
including gauges capable of measuring the outside diameter of the cup and
the diameters of the counterbores, a polishing tool, and a hand-held grinding
tool (Fact 2). The function recited in the means for repairing the raceway of
the cone is repairing the raceway of the cone, and the structure described in
the Appellant’s Specification corresponding to this function is a work station
including a polishing tool and a hand-held grinding tool (Fact 3).
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Claim 20 recites “equipment within the enclosure for inspecting the
races” and “equipment within the enclosure for repairing the bearing.”
Because the Appellant used “equipment” in place of “means” to recite the
inspecting and repairing structure, we presume that the Appellant did not
intend to invoke interpretation of the claimed “equipment” under § 112,
sixth paragraph. The word “equipment,” however, does not provide
sufficient structure to define what is being claimed by this element. As such,
we conclude that the “equipment … for” language invokes § 112, sixth
paragraph.3 For claim 20, the function recited in the equipment for
inspecting the races is inspecting races, and the structure described in the
Appellant’s Specification corresponding to this function is a work station
including a fixture capable of holding and rotating the cone and having a
light, a probe, and a gauge capable of measuring the cone (Fact 1). The
function recited in the equipment for repairing the bearing is repairing the
bearing. The structure described in the Appellant’s Specification
corresponding to this function includes a work station having a polishing
tool and a hand-held grinding tool (Facts 2, 3).

3 The Appellants admit that the equipment within their portable enclosure is
conventional. App. Br. 15-16, citing to Spec. 9, first full para. (“The facility
A includes a variety of conventional equipment for reconditioning bearings
B”). Compare Ex parte Miyazaki, 89 USPQ2d 1207, 1216-17 (BPAI 2008)
(in which the Board declined to presume non-means language invoked
§ 112, sixth paragraph, when the claimed “sheet feeding area” at issue was
the point of novelty of the invention.).
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Rejection of claims 1-7 and 19
Claims 1-7 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bellas, Diegle, Sturm, and James. Ans. 4-6. Bellas
discloses a mobile unit for servicing automobiles including a van body
portion that has sufficient side working space to enable mechanics to grease
and replace wheel bearings (Fact 4). As noted by the Appellant, servicing a
wheel bearing by greasing or replacing the bearing is different from
reconditioning a bearing, which requires the technician to remove the
bearing from the wheel unit and disassemble, clean, inspect, repair, and
reassemble the bearing components. App. Br. 15-16. Bellas does not
disclose using its mobile unit to recondition, i.e., inspect and repair, wheel
bearings (Fact 5). With respect to claim 1, Bellas does not disclose a
workstation having a fixture capable of holding and rotating a bearing
component and having a light, a probe, and one or more gauges capable of
measuring bearing components or a work station having a polishing tool and
a hand-held grinding tool or equivalents thereof (Fact 5). Thus, Bellas does
not disclose the claimed means for inspecting or means for repairing bearing
components, as recited in claim 1.
The Examiner relied on Diegle to teach removing, inspecting,
cleaning, and replacing defective bearing parts and relied on Sturm and
James to disclose means for inspecting and repairing bearing components.
Ans. 5. However, neither Diegle, nor Sturm, nor James discloses or suggests
that it would be desirable to recondition bearings in a mobile facility. Thus,
absent hindsight, we see no reason, and the Examiner has not provided an
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adequate articulation of a reason, why one having ordinary skill in the art
would have been led in view of the disclosures in Bellas, Diegle, Sturm, and
James to modify the mobile unit of Bellas to include workstations having the
claimed means for inspecting and means for repairing bearing components.

Rejections of claims 8-12
Claims 8-12 are rejected under 35 U.S.C. § 103 as being unpatentable
over Bellas, Diegle, Sturm, Colson, and Boyce (claims 8, 11, and 12) and
further in view of Schaud (claim 9) or Dalton (claim 10).
As discussed supra, Bellas does not disclose using its mobile unit to
recondition bearings, i.e., inspect and repair bearing components (Fact 5).
With respect to claim 8, Bellas does not disclose a work station including a
fixture capable of holding and rotating a cone assembly and having a light, a
probe, and a gauge; a work station including gauges capable of measuring
the outside diameter of the cup and the diameters of the counterbores, a
polishing tool, and a hand-held grinding tool; or a work station including a
polishing tool and a hand-held grinding tool (Fact 5). Thus, Bellas does not
disclose the claimed means for inspecting the cone assembly, means for
inspecting and repairing the raceway of the cup, and means for repairing the
raceway of the cone, as recited in claim 8.
The Examiner relied on Diegle to teach removing, inspecting,
cleaning, and replacing defective bearing parts, Sturm to teach means for
inspecting the cone assembly, Colson to teach means for inspecting and
repairing the raceway of the cup and the raceway of the cone, Boyce to teach
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means for opening the cage and releasing the rollers and means for closing a
new cage about the rollers on the cone, Schaub to teach means for installing
a seal into a cup, and Dalton to teach means for measuring the end play in
the bearing. Ans. 7-8. However, neither Diegle, nor Sturm, nor Colson, nor
Boyce, nor Schaub, nor Dalton discloses or suggests that it would be
desirable to recondition bearings in a mobile facility. Thus, absent
hindsight, we see no reason, and the Examiner has not provided an adequate
articulation of a reason, why one having ordinary skill in the art would have
been led in view of the disclosures in Bellas, Diegle, Sturm, Colson, and
Boyce, and further in view of Schaub or Dalton, to modify the mobile unit of
Bellas to include workstations having the claimed means for inspecting the
cone assembly, means for inspecting and repairing the raceway of the cup,
and means for repairing the raceway of the cone.

Rejections of claims 20-29
Claims 20-29 are rejected under 35 U.S.C. § 103 as being
unpatentable over Bellas, Boyce, and Diegle (claims 20, 26, 29) and further
in view of Fetty (claim 21), or Parker (claim 22), or Colson (claims 23, 27,
and 28), or Beach and Fetty (claim 24), or Beach, Fetty, and Colson
(claim 25).
As discussed supra, Bellas does not disclose using its mobile unit to
recondition bearings, i.e., inspect and repair bearing components (Fact 5).
With respect to claim 20, Bellas does not disclose a work station including a
fixture capable of holding and rotating a cone and having a light, a probe,
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and a gauge; or a work station including a polishing tool and a hand-held
grinding tool (Fact 5). Thus, Bellas does not disclose the claimed equipment
for inspecting the races and equipment for repairing the bearing, as recited in
claim 20.
The Examiner relied on Diegle to teach removing, inspecting,
cleaning, and replacing defective bearing parts, Boyce to teach equipment
for inspecting the races and equipment for repairing the bearing, Fetty to
teach a bearing having seals located on the bearings, Parker to teach
equipment for inspecting the races including a fixture which shines a light
on the inner race, and Colson to teach equipment for inspecting the bearing
including a gauge that measures the diameter of a bore that extends through
the inner race. Ans. 9-11. However, neither Diegle, nor Boyce, nor Fetty,
nor Parker, nor Colson discloses or suggests that it would be desirable to
recondition bearings in a mobile facility. Thus, absent hindsight, we see no
reason, and the Examiner has not provided an adequate articulation of a
reason, why one having ordinary skill in the art would have been led in view
of the disclosures in Bellas, Diegle, Boyce, Fetty, Parker, and Colson to
modify the mobile unit of Bellas to include workstations having the claimed
equipment for inspecting the races and equipment for repairing the bearing.

CONCLUSIONS
The Appellant has demonstrated the Examiner erred in concluding
that one having ordinary skill in the art would have been led to modify the
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mobile unit of Bellas to include the claimed means or equipment for
inspecting and means or equipment for repairing in view of the prior art.

DECISION
The decision of the Examiner to reject claims 1-12 and 19-29 is
REVERSED.

REVERSED

Vsh

POLSTER, LIEDER, WOODRUFF & LUCCHESI
12412 POWERSCOURT DRIVE SUITE 200
ST. LOUIS MO 63131-3615