Ex Parte Leimann

Board of Patent Appeals and Interferences

Dec 22, 2009

10473414 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DIRK-OLAF LEIMANN
____________

Appeal 2009-000001
Application 10/473,414
Technology Center 3700
____________

Decided: December 22, 2009
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and MICHAEL W.
O’NEILL, Administrative Patent Judges.

KERINS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2009-000001
Application 10/473,414

2
STATEMENT OF THE CASE
Dirk-Olaf Leimann (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-10 and 13-18 and 20.1
Claims 11 and 19 were canceled during prosecution, and claim 12 has been
withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention is to a method for forming an assembly
of a pair of taper roller bearings including providing an axially outermost
first bearing ring of at least one of the taper roller bearings in a loose fit on a
first or second spacing member, and axially moving the loosely fit first
bearing ring in a direction toward the second bearing ring to create a
preload, and then increasing the degree of preload by further axially moving
the first bearing ring to elastically deform the ring to create a shrink fit
interface to the first or second member. (Appeal Br., Claims Appendix,
Claim 1). Independent claim 1 is reproduced below, as being representative
of the overall claimed subject matter:

1 Appellant incorrectly includes claim 12 in the identification of the appealed
claims in the “Status of Claims” section of the Appeal Brief. The Examiner
did not note the error in the Examiner’s Answer. The Final Rejection
identifies that claim 12 is withdrawn from consideration, and neither the
Final Rejection nor the Examiner’s Answer contains any rejection of claim
12.
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1. A method for forming an assembly of a pair of
taper roller bearings in which inner bearing rings
are axially spaced apart by a first member and
outer bearing rings are maintained spaced apart by
a second member with a first of the inner and
outer bearing rings of each taper roller bearing
being an axially outermost bearing ring which is
spaced axially further than a second of the inner
and outer bearing rings of that taper roller bearing,
said method comprising the sequential steps of:

forming an assembly of said two members and
taper roller bearings in which the axially outermost
first bearing ring of at least one of the taper roller
bearings is in a loose fit on one of the first and
second members, and

axially moving said axially outermost first bearing
ring of said one taper roller bearing, which is in the
loose fit, in a direction towards the second bearing
ring to create a pre-load, and

increasing the degree of pre-load by sufficient
further movement of said axially outermost first
bearing ring in said direction to elastically deform
said axially outermost first bearing ring, which
initially was a loose fit, to create a shrink fit
interface load between said axially outermost first
bearing ring and the one of the first and second
members.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Damm US 4,441,570 Apr. 10, 1984
Wagner US 6,149,244 Nov. 21, 2000

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The Examiner has rejected:
(i) claims 1-4, 6, 13, 14, 16, 18 and 20 under 35 U.S.C. § 102(b) as
being anticipated by Wagner; and
(ii) claims 5, 7-10, 15 and 17 under 35 U.S.C. § 103(a) as being
unpatentable over Wagner in view of Damm.

ISSUES
The Examiner found that the Wagner procedure for forming a bearing
assembly identically discloses the claimed process. In particular, the
Examiner found that at least one of the axially outermost, radially innermost,
bearing rings of Wagner is provided on a wheel axle in a loose, sliding fit,
prior to an axle nut being tightened onto an axle.
Appellant contends that Wagner does not disclose the first two steps
of the claimed method, because Wagner does not disclose that either axially
outermost bearing is provided in a loose fit on the wheel axle. Appellant
further contends that the Wagner assembly process is not capable of
performing the third step of the claimed process, namely, increasing the
degree of pre-load by sufficient further movement of the axially outermost
bearing ring, because, in Wagner, the bearing rings are held apart by a
spacer which prevents further axial movement of the bearing rings toward
one another.
The issue to be decided on appeal is whether Appellant has
demonstrated that the Examiner erred in finding that the Wagner method for
forming a bearing assembly discloses each of the claimed method steps.

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FINDINGS OF FACT
The following enumerated findings of fact (FF) 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).
FF 1. Appellant’s Specification provides no lexicographic definition
of the claim term “loose fit”. (Spec., passim).
FF 2. Appellant’s Specification, in describing a preferred
embodiment of the method of forming a bearing assembly, sets forth that an
inner bearing ring 22 “is a loose, sliding fit” over the shaft 12. (Spec.,
p. 4, ll. 11-12). Appellant does not employ any other descriptors as to what
“loose” means in the context of the term “loose fit”. (Spec., passim).
Appellant contrasts a “loose fit” with a tight or press fit. (compare, Spec.,
p. 4, ll. 7-11, with, Spec., p. 4, ll. 11-12).
FF 3. The assembly procedure in the Wagner patent requires that the
distal end of central shaft or axle 50 be able to slide through the central bore
of axially outermost bearing ring (radially inner ring of bearing 22), and that
the proximal end of axle 50 be able to slide through the central bore of the
other axially outermost bearing ring (radially inner ring of bearing 20).
(Wagner, Figs. 1-3; col. 5, l. 56-col. 6, l. 34).
FF 4. Appellant presents no evidence as to what persons of ordinary
skill in the art would understand the term “firmly seats” to mean.
FF 5. A common and ordinary definition of “seat” that we find most
apt in the context of the assembly procedure described in Wagner is, “[t]o
rest on or fit into another part: The O-rings had not seated correctly in their
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grooves.” THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH
LANGUAGE (4th ed. 2009).
FF 6. Wagner discloses that, after the bearings are firmly seated to
the axle, either one or both of the bearing rings continues to be in a sliding or
loose fit relationship with axle 50, in that the tightening of nut 54 causes
bearings 20, 22 to move toward one another to close the distance of space 38
between bearing 20 and spacer 24. (Wagner, Figs. 2, 3; col. 6, ll. 29-32).
FF 7. Wagner contains no discussion of the bearings moving toward
one another at any point prior to the stage of tightening the nut on the axle,
such that the loose fit of the bearings on the axle would be converted to a
tight or shrink fit. Wagner further contains no discussion of using another
procedure or technique, such as the use of heat or significant axial force
(examples given at page 1, lines 25-26 of Appellant’s specification), to
transform an initial loose fit into a tight or shrink fit. (Wagner, passim).
FF 8. In Wagner, as the axle nut is tightened and the bearings move
toward one another, either one or both of the axially outermost bearing rings
must move axially relative to the axle, because the nut 54 at the one end and
the shoulder 50 provided on the axle at the other end, are in contact only
with the axially outermost bearing rings at their respective ends. (Wagner,
Fig. 3). Thus, the tightening of the nut on the axle, which shortens the
distance between the nut and axle shoulder, can only take place if one or
both of the axially outermost bearing rings is axially displaced along the
surface of the axle.
FF 9. Wagner provides a spacer 24 that prevents further axial
movement of the bearing rings toward one another, once a gap between the
spacer and inner ring of bearing 20 has been closed due to the inner rings of
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bearings 20 and 22 being moved axially closer together. (Wagner, col. 5, ll.
49-55).
PRINCIPLES OF LAW
An appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1614 (BPAI 2008) (on appeal, applicant must show examiner erred);
Ex parte Fu, 89 USPQ2d 1115, 1123 (BPAI 2008); Ex parte Catan, 83
USPQ2d 1569, 1577 (BPAI 2007); and Ex parte Smith, 83 USPQ2d 1509,
1519 (BPAI 2007).
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). Under principles of inherency,
when a reference is silent about an asserted inherent characteristic, it must be
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. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268
(Fed. Cir. 1991).
Where claimed and prior art products
are produced by identical or substantially identical
processes, the [Patent and Trademark Office] can
require an applicant to prove that the prior art
products do not necessarily or inherently possess
the characteristics of [the] claimed product . . .
Whether the rejection is based on ‘inherency’
under 35 U.S.C. § 102, on ‘prima facie
obviousness’ under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and
its fairness is evidenced by the PTO’s inability to
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manufacture products or to obtain and compare
prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977); see also In re Spada, 911
F.2d 705, 708 (Fed Cir. 1990)(“[W]hen the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”)
A claim is unpatentable under 35 U.S.C. § 103(a) if, “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.” 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) 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 Int'l Co. v. Teleflex Inc., 550 U.S.
398, 407 (2007) (“While the sequence of these questions might be reordered
in any particular case, the [Graham] factors continue to define the inquiry
that controls.”).
ANALYSIS
Claims 1-4, 6, 13, 14, 16, 18 and 20--Anticipation by Wagner
Appellant argues these claims as a group, with no separate arguments
presented for any of the claims. Claim 1 will be taken as the representative
claim for the group, with the remaining claims standing or falling with claim
1. 37 C.F.R. §41.37(c)(1)(vii) (2009).
Appellant contends that Wagner does not disclose the steps of
“forming an assembly . . . in which the axially outermost first bearing ring . .
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. is in a loose fit on one of the first and second members”, and “axially
moving said axially outermost first bearing ring . . ., which is in a loose fit,
in a direction towards the second bearing ring to create a pre-load”. (Appeal
Br. 7). Appellant specifically argues that the Wagner bearing assembly does
not include an axially outermost first bearing ring of at least one of the taper
roller bearings that is in a loose fit on one of the first and second spacing
members. (Appeal Br. 9-11). Appellant points to two aspects of the
assembly procedure described in Wagner as purportedly evidencing that the
Wagner bearing assembly does not have at least one of the axially outermost
bearing rings in a loose fit on the central axle.
Appellant first recapitulates the assembly process of Wagner,
highlighting that, after the installer has pushed axle 50 into housing 12 a
distance sufficient to cause the axle to protrude through hole 36 in the
housing, “[t]he installer then firmly seats the bearings onto the axle and
removes the cap 34.” (Appeal Br. 9; Wagner, col. 6, ll. 20-22). Appellant
posits that this passage clearly indicates that there is no loose fit of either
one of the axially outermost bearing rings on the central axle. (Appeal Br.
9-10).
Appellant’s Specification provides no lexicographic definition of the
claim term “loose fit”. (FF 1). Indeed, about all that can be gleaned from
Appellant’s Specification to enable us to determine what a person of
ordinary skill in the art would regard as the broadest reasonable meaning of
that term, is that a loose fit is not a shrink fit or tight fit, as those terms are
contrasted with “loose fit” (FF 2), and that the fit is a sliding fit, in that
Appellant describes the relationship between an inner bearing ring and a
central shaft as being in a “loose, sliding fit”. (Id.). Accordingly, we will
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regard the term “loose fit” to be one which permits relative sliding
movement between the bearing ring and a member (central shaft, in
Appellant’s Fig. 1 and in Wagner) on which the bearing ring is supported.
The assembly procedure in the Wagner patent requires that the distal
end of central shaft or axle 50 be able to slide through the central bore of the
axially outermost bearing ring (radially inner ring of bearing 22), and that
the proximal end of axle 50 be able to slide through the central bore of the
other axially outermost bearing ring (radially inner ring of bearing 20). (FF
3). As such, both axially outermost bearing rings in Wagner are initially in a
loose fit on axle 50.
The passage in Wagner cited by Appellant, to the effect that the
installer then firmly seats the bearings onto the axle, does not evidence that
the initial loose fit is transformed into something other than a loose fit.
Appellant presents no evidence as to what persons of ordinary skill in the art
would understand the term “firmly seats” to mean. (FF 4). The dictionary
definition of “seat” that we find most apt in this context is, “[t]o rest on or fit
into another part: The O-rings had not seated correctly in their grooves.”
THE AMERICAN HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE (4th ed.
2009). (FF 5). Thus, this passage in Wagner is taken to mean essentially
that the installer firmly fits the axle into the housing and bearing assembly,
as in, ensuring that the axle is fully inserted to its proper position prior to
removing cap 34 and threading the axle nut 54 onto the axle.
Moreover, Wagner evidences that, even after the bearings are firmly
seated to the axle, either one or both of the bearing rings continues to be in a
sliding or loose fit relationship with axle 50, in that the tightening of nut 54
causes bearings 20, 22 to move toward one another to close the distance of
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space 38 between bearing 20 and spacer 24. (FF 6). Wagner contains no
discussion of the bearings moving toward one another at any point prior to
the stage of tightening the nut on the axle, such that the loose fit of the
bearings on the axle would be converted to a tight or shrink fit. (FF 7).
Wagner further contains no discussion of using another procedure or
technique, such as the use of heat or significant axial force (examples given
at page 1, lines 25-26 of Appellant’s specification), to transform the initial
loose fit into a tight or shrink fit. (Id.).
Appellant’s other contention regarding the alleged lack of disclosure
in Wagner of a loose fit between one of the bearing rings and the axle is that:
[t]he tightening of the axle nut 54 clearly indicates
a large force is needed in order to move the
bearings together. This would not be the case if
one bearing right [sic] was in a loose fit. The
WAGNER axially outermost bearing rings are in
tight fit prior to the axle nut being tightened.
(Appeal Br. 10).
Appellant has presented no evidence that anything in the Wagner
disclosure “clearly indicates” that a large force is needed in order to move
the bearings together. The entire assembly procedure in Wagner is
discussed from the perspective that the “installer” is a human being, in that
Wagner notes that, because of the size and weight of most heavy-duty hubs,
“it is necessary for the installer to use both hands” to effect the installation.
(Wagner, col. 1, ll. 16-17). While we do not doubt that the installer would
have at his or her disposal tools that would be capable of exerting a large
force on the axle nut, the mere disclosure that an axle nut is to be tightened
on the axle falls well short of evidencing that a large force must be applied at
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the outset, due, in particular, to the bearing rings being tightly fitted to the
axle.
If it is Appellant’s position that this mere disclosure of the use of
threaded members to complete the assembly of the joint necessarily
connotes, to a person of ordinary skill in the art, a need for application of
large forces, thus also evidencing the absence of a loose fit between the
bearings and the axle, that position appears to be completely at odds with
Appellant’s own disclosure. Appellant himself states that:
[t]o complete the aforedescribed assembly the lock
nut 24 is fitted to the end of the shaft 12 and
tightened to bear against the inner ring 22
[previously disclosed as being in a loose, sliding fit
over the shaft] and urge that inner ring axially
toward the other bearing 15.
(Spec., p. 4, ll. 15-17).
The Wagner patent no more clearly indicates that a large force is
needed to initially tighten the axle nut on the axle than does Appellant’s
above disclosure of using threaded members to complete the assembly.
Appellant has failed to demonstrate that the Examiner erred in finding that
Wagner discloses providing a bearing assembly in which at least one of the
axially outermost first bearing rings is in a loose fit with respect to the
central axle.
Appellant further contends that Wagner fails to disclose the step of:
increasing the degree of pre-load by sufficient
further movement of said axially outermost first
bearing ring in said direction to elastically deform
said axially outermost first bearing ring, which
initially was a loose fit, to create a shrink fit
interface load between said axially outermost first
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bearing ring and the one of the first and second
members.
(Appeal Br., Claims Appendix, Claim 1).
Appellant reiterates the contention that the bearing rings of Wagner
are already tightly seated against the housing and shaft, and then describes
the tightening of the axle nut to move the bearings toward one another as
being for the purpose of allowing the bearings to,
shift slightly axially in their cups 26 and move
toward one another to adjust the bearings, the
length of the spacer limiting the amount of axial
movement of the bearings.
(Appeal Br. 11).
This description, even if completely accurate, falls short of painting
the complete picture. Appellant neglects to acknowledge that, as the axle
nut is tightened and the bearings move toward one another, either one or
both of the axially outermost bearing rings must move axially relative to the
axle. (FF 8). This is so because the nut 54 at the one end and the shoulder
50 provided on the axle at the other end, are in contact only with the axially
outermost bearing rings at their respective ends. (Id.) Thus, the tightening
of the nut on the axle, which shortens the distance between the nut and axle
shoulder, can only take place if one or both of the axially outermost bearing
rings is axially displaced along the surface of the axle. (Id.).
In view of our conclusion above that the term “loose fit” is a fit that
allows for sliding movement, and in view of the fact that the tightening of
the axle nut requires such sliding movement, this further contravenes
Appellant’s characterization of Wagner as disclosing bearing rings that are
initially tightly fitted to the axle, or as failing to disclose the provision of a
loose fit for at least one of the axially outermost bearing rings.
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Appellant further appears to characterize the Wagner assembly
process, relative to the terminology employed in the claims, as not being
capable of performing the step of increasing the degree of pre-load by
sufficient further movement of the axially outermost bearing ring, because,
in Wagner, the bearing rings are held apart by spacer 24 which prevents
further axial movement of the bearing rings toward one another. (Appeal
Br. 11-12).
Appellant is correct that Wagner provides a spacer 24 that prevents
further axial movement of the bearing rings toward one another. (FF 9).
However, this does not establish that the Examiner erred in finding that
Wagner discloses the claimed step, in that the Examiner does not rely on the
further tightening of the nut once the spacer prohibits further axial
movement of the bearing rings as meeting the claim limitation. The
Examiner finds instead that an initial tightening of the nut moves the bearing
rings toward one another, creating a pre-load, and that more tightening of the
nut further moves the bearing rings axially toward one another, increasing
the degree of pre-load and elastically deforming the bearing ring that was
initially in a loose fit to create a shrink fit interface with the axle. (Answer
4). In other words, the Examiner finds the two steps to be met by the
initiation of relative axial movement of the bearing rings toward one
another, and then the continued relative axial movement of the bearing rings
toward one another, prior to the spacer eventually precluding further
movement. We are not persuaded that this finding is in error.
Much of the Examiner’s discussion of elastically deforming the
bearing ring to create a shrink fit interface is implicitly grounded in the
understanding that the geometry of the inner and outer bearing rings and
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interposed bearings will inherently, when moved toward each other while
constrained against radial movement, create radial forces tending to
compress the inner rings and expand the outer rings. Appellant’s
Specification confirms this understanding. (Spec., p. 4, l. 18-p. 5, l. 2). The
Examiner also points out that Appellant has not characterized in any
particular manner what constitutes a shrink fit interface load. (Answer 10).
In our view, the Examiner’s findings that Wagner discloses structural
elements identical to those claimed, and assembled in a manner identical to
the claimed steps, clearly establishes a prima facie case of anticipation,
shifting the burden to Appellant to produce evidence establishing that the
prior art does not identically disclose the claimed invention. In re Best, 562
F.2d at 1255; In re Spada, 911 F.2d at 708; see also, In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). No such evidence has been produced in
this case.
We will sustain the rejection of claims 1-4, 6, 13, 14, 16, 18 and 20
under 35 U.S.C. § 102(b) as being anticipated by Wagner.

Claims 5, 7-10, 15 and 17--Obviousness--Wagner in view of Damm
Appellant relies solely on the arguments for patentability advanced
with respect to the alleged failure of the Wagner patent to anticipate claim 1.
(Appeal Br. 12). For the same reasons as set forth above, we will sustain
the rejection of these claims under 35 U.S.C. § 103(a).

CONCLUSIONS
Appellant has not established that the Examiner erred in rejecting
claims 1-4, 6, 13, 14, 16, 18 and 20 under 35 U.S.C. § 102(b) as being
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anticipated by Wagner. Appellant also has not established that the Examiner
erred in rejecting claims 5, 7-10, 15 and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Wagner and Damm.

DECISION
The decision of the Examiner to reject claims 1-10, 13-18 and 20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Klh

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