Ex Parte Lugt et al

Board of Patent Appeals and Interferences

Jan 12, 2007

10297832 (B.P.A.I. Jan. 12, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PIETER MARTIN LUGT, EUSTHATIOS IOANNIDES,
INGRID VICTORIA WIKSTROM, JOHN HOWARD TRIPP,
MARIE-LAURE DUMONT, ANTONIO GABELLI and
BENOIT CLEMENT JACOD
____________

Appeal No. 2006-0833
Application No. 10/297,832
____________

ON BRIEF
____________

Before CRAWFORD, BAHR and LEVY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 and 3
to 10. Claim 2 has been cancelled and claim 11 is objected to.
1
Appeal No. 2006-0833
Application No. 10/297,832

The appellants’ invention relates to a rolling element bearing (specification, p. 1).
A copy of the claims under appeal is set forth in the appendix to the appellants’ brief.
THE PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Akamatsu et al. (Akamatsu ‘947) 5,642,947 Jul. 1, 1997
Akamatsu et al. (Akamatsu ‘672) 5,967,672 Oct. 19, 1999

THE REJECTIONS

Claims 1, 3, 5, 6, 8, and 9 stand rejected under 35 U.S.C. § 102(a) as being
anticipated by Akamatsu ‘947.
Claims 4 and 7 stand rejected under 35 U.S.C. §102(a) as being anticipated by
Akamatsu ‘672.
Claim 10 stands rejected under 35 U.S.C. §103 as being unpatentable over
Akamatsu ‘947 and further in view of engineering design choice.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the answer
(mailed August 25, 2005) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed June 6, 2005) and reply brief (filed October 25, 2005)
for the appellants’ arguments thereagainst.

2

Appeal No. 2006-0833
Application No. 10/297,832

OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner’s rejection of claims 1, 3, 5, 6, 8 and 9 under
35 U.S.C. §102 as being unpatentable over Akamatsu ‘947. The examiner finds that
Akamatsu ‘947 discloses:
“rolling element [2] bearing” with an [axially] inner [race] ring
(3) and an outer [race] ring (1), the surface of each rolling
element having “minute recesses” or grooves (5) randomly
oriented and thus isotropic. Lubricant is employed (col. 4,
lines 19-28). [Answer at page 3].

The examiner, reasons that Akamatsu ‘947 need not expressly disclose the
displacement of the meniscus or that the lubricant meniscus forms a non-zero pressure
gradient. The examiner states:
There is reason to believe, based on the similarity of
structure, that the functional limitation(s) of displacement of
the meniscus, non-zero pressure gradient, etc. may be
inherent characteristic(s) of Akamatsu ‘947. . . [Answer at
page 4][emphasis added].

The examiner is correct that a prior art reference need not expressly disclose
each claimed element in order to anticipate the claimed invention. See Tyler
Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 689, 227 USPQ 845, 846-847 (Fed.
Cir. 1985). Rather, if a claimed element (or elements) is inherent in a prior art
reference, then that element (or elements) is disclosed for purposes of finding
3

Appeal No. 2006-0833
Application No. 10/297,832

anticipation. See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d at 631-33, 2 USPQ2d
at 1052-54.
However, it is well settled that the burden of establishing a prima facie case of
anticipation resides with the Patent and Trademark Office (PTO). See In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). When relying upon the
theory of inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art. See
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749
(F.3d Cir. 1991); Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Patent App. & Int. 1990).
Inherency, however, can not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not sufficient. Id
at 1269, 20 USPQ2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323,
326 (CCPA 1981).
In the instant case the examiner has not established that the displacement of the
meniscus layer or that a non-zero pressure gradient between the meniscus and the
raceway necessarily occurs in the Akamatsu ‘947 reference. Therefore, the examiner
has not established a prima facie case of anticipation and thus we will not sustain this
rejection.
We will likewise not sustain the examiner’s rejection of claims 4 and 7 under
35 U.S.C. § 102(b) as being anticipated by Akamatsu ‘672. Claims 4 and 7 depend
from claim 1 and thus include the subject matter related to the displacement of the
4

Appeal No. 2006-0833
Application No. 10/297,832

meniscus and the formation of a non-zero pressure gradient between the meniscus
layer and the raceway. The examiner, as in the above discussed rejection has not
established that these features of claim 1 necessarily occur in the Akamatsu ‘672 (see
answer at page 4).
In regard to the rejection of claim 10 under 35 U.S.C. §103 as being
unpatentable over Akamatsu ‘947 in view of engineering design choice, we note that
claim 10 is dependent on claim 1 and thus includes the subject matter related to the
meniscus displacement and the formation of the non-zero pressure gradient which is
not disclosed, or suggested for that matter, in the Akamatsu ‘947 reference. As such,
we will not sustain this rejection for the same reasons discussed above in regard to the
rejection of claim 1 under 35 U.S.C. § 102(a).

5

Appeal No. 2006-0833
Application No. 10/297,832

The decision of the examiner is reversed.

REVERSED

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
6

Appeal No. 2006-0833
Application No. 10/297,832

Oliff & Berridge
Post Office Box 19928
Alexandria, VA 22320

MEC/ki

7