Ex Parte Maciag

Board of Patent Appeals and Interferences

Jul 29, 2011

10839079 (B.P.A.I. Jul. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALTER J. MACIAG
____________

Appeal 2009-012443
Application 10/839,079
Technology Center 3600
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Before JOHN C. KERINS, STEVEN D.A. McCARTHY, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/839,079

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STATEMENT OF THE CASE
Walter J. Maciag (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-7 and 12-25.1 Claims 8-11 appear to be
objected to as being dependent upon a rejected base claim. We have
jurisdiction under 35 U.S.C. § 6(b).

The Invention
The claims on appeal relate to a bearing assembly and a universal
joint. Claim 2, reproduced below, is illustrative of the subject matter on
appeal.
2. A bearing assembly, comprising:
a rotatable hub defining a load transfer surface;
a bearing surrounding and movable relative to said hub,
said bearing including bearing surfaces extending radially
toward said hub;
a grease disposed between said hub and said bearing, said
grease functioning as a lubricant between said hub and said
bearing that generally maintains separation between said
transfer surface and said bearing surfaces while simultaneously
removing debris from between one of said bearing surfaces and
said transfer surface.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 2, 12-14, 16, 17 and 25 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by the Society of Automotive Engineers (SAE)
Technical Paper Number 973178, written by Walter J. Maciag and Mark A.
Mushenski, and entitled “New Bearing Design Concept, An Innovative, U.S.

1 The Examiner withdrew the 35 U.S.C. § 103(a) rejection of claims 8-11 in
the Examiner’s Answer. Ans. 2-3.
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Army, Design Concept for Tactical Vehicle Bearings and Universal Joints”
(hereinafter referred to as the “SAE Report” to maintain consistency with the
Examiner’s Answer and Appellant’s Briefs).2, 3
Claims 3, 4, and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the SAE Report in view of the Shell Oil Company (SOC)
1061-12/02 document, entitled “Shell Retinax® Greases CMX and SDX”
(hereinafter referred to as the “SOC Document” to maintain consistency
with the Examiner’s Answer and Appellant’s Briefs).
Claims 1, 5-7, and 18-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the SAE Report, the SOC Document, and Mori (U.S.
Patent No. 5,704,718, issued Jan. 6, 1998).

SUMMARY OF DECISION
We REVERSE.

2 We have removed claim 15 from the claim listing in the ground of
rejection. Although the Examiner’s ground of rejection on page 3 of the
Answer lists claim 15 as being anticipated under 35 U.S.C. § 102 by the
SAE Report, the body of the rejection on pages 3-6 of the Answer does not
discuss the subject matter of claim 15. Thus, the listing of claim 15 in the
ground of rejection on page 3 of the Answer appears to be a typographical
error.
3 We changed the basis of the rejection of claims 2, 12-14, 16, 17 and 25
from 35 U.S.C. § 102(a) to 35 U.S.C. § 102(b). The present Application
(i.e., U.S. Patent Application Serial No. 10/839,079) was filed on May 5,
2004 and is a continuation-in-part (CIP) of parent U.S. Patent Application
Serial No. 09/436,592 filed Nov. 9, 1999. Even if the present claims do not
contain CIP subject matter so that they are entitled to the Nov. 9, 1999 filing
date of the parent application, this is still more than one year prior to the
latest publication date (i.e., Dec. 31, 1997) that the SAE Report could have
been published in 1997 and thus, the rejection appears to be proper under 35
U.S.C. § 102(b).
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OPINION
Anticipation based upon the SAE Report
The Examiner finds that the SAE Report anticipates independent
claims 2 and 25 because the SAE Report discloses lubricating oil associated
with a bearing assembly. Ans. 3-4 and 5-6. The Examiner reasons that
since a dictionary4 definition of “grease” is “an oily matter,” it is reasonable
to broadly interpret the lubricating oil disclosed in the SAE Report as
satisfying the claim limitation of grease. Ans. 3-4, 5-6, and 10.
Appellant contends that the SAE Report does not anticipate
independent claims 2 and 25 for failing to disclose grease. App. Br. 11 and
21. More particularly, Appellant contends that the SAE Report only
discloses lubricating oil for use with a bearing assembly and lubricating oil
cannot be considered to meet the claim limitation of grease because a person
of ordinary skill in the art would know that grease is a base lubricating oil
that has been thickened with a thickener or jelling agent such as soap. App.
Br. 5 and Reply Br. 3.
We agree with Appellant that the SAE Report does not anticipate
claims 2 and 25. While the Examiner is correct that pending claims in the
United States Patent and Trademark Office are to be given their broadest
reasonable interpretation, that interpretation must be consistent with the
specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (Claim language must be read in light of the specification as
it would be interpreted by one of ordinary skill in the art.). Based on
Appellant’s use of the term “grease” in the Specification, as well as the

4 The Examiner relies upon the Merriam-Webster Collegiate Dictionary,
Tenth Edition.
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description in the Kirk-Othmer Encyclopedia of Chemical Technology (App.
Br. 5), it appears that a person of ordinary skill in the art would understand
the term grease, as used in the claims, to refer to a semisolid lubricant
including a base oil and a thickener such as soap, not simply a lubricating oil
alone as is disclosed in the SAE Report.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 2, 12-14, 16, 17 and 25 under 35 U.S.C. § 102(b) as anticipated by
the SAE Report.

Obviousness based upon the SAE Report and the SOC Document
The Examiner finds that the SAE Report substantially discloses the
invention of claims 3 and 4, except for the grease including a calcogenide
component (i.e., molybdenum disulfide or moly or MoS2), a lithium
thickened complex soap, and a mid-range viscosity grade base oil, all of
which are taught by the SOC Document. Ans. 6. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art to
provide the bearing assembly of the SAE Report with the grease having the
specifics recited in claims 3 and 4 as taught by the SOC Document in order
“to lubricate points of all types of anti-friction bearing arrangements.” Id.
Appellant contends that the Examiner fails to put forth sufficient
evidence as to why a person of ordinary skill in the art would substitute the
grease of the SOC Document for the lubricating oil of the SAE Report.
App. Br. 8. Appellant also contends that a person of ordinary skill in the art
would not use the SOC Document’s particular greases, which are
employable in generally conventional bearing arrangements, in the
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unconventional bearing arrangement using lubricating oil of the SAE
Report. App. Br. 8-9.
The Examiner concludes that it would have been obvious “to provide
a grease including a calcogenide component, Molybdenum disulfide, and a
Lithium thickened complex soap and a mid-range viscosity grade base oil, to
lubricate points of all types of anti-friction bearing arrangements, as taught
by” the SOC Document. Ans. 6. The Appellant points out on page 9 of the
Appeal Brief that:
In disclosing an unconventional bearing
arrangement, the SAE Report discloses an
improved bearing arrangement that replaces the
conventional needle roller bearing. The
advantages of the improved bearing arrangement
include much easier installation of the needless
[sic., needleless] bearing onto a trunnion and
elimination of the need for relubrication during use
of such bearings (i.e., field lubrication). The SAE
Report bearing is a cup-shaped porous bearing that
includes bearing surfaces extending radially
toward a hub (such as a trunnion). The porous
bearing of the SAE Report is impregnated with a
lubricating oil (not a grease) which serves to
lubricate the bearing throughout its useful life.
Because the SAE Report bearing is specifically
designed for applications where relubrication is not
necessary, it is not employed in applications where
associated lubrication points are provided.
Apart from stating that the Geometrically Contoured Bearing (“GC
bearing”) described and tested in the SAE Report eliminated the need for
lubricating channels (SAE Report at 8), the SAE Report says little
concerning the lubrication mechanism within the bearing. The one positive
statement which the SAE Report appears to make concerning the lubrication
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mechanism of the GC bearing is that the “GC Bearing had the identical
powdered material and impregnating oil as the Self Lube Bearing.” (SAE
Report at 3). This statement supports the Appellant’s assertion that the
“porous bearing of the SAE Report is impregnated with a lubricating oil.”
The Examiner has not articulated a persuasive reason why it would
have been obvious to merely substitute a grease for the lubricating oil taught
by the SAE Report. It must be kept in mind that the mere substitution of a
grease for the lubricating oil taught by the SAE Report would imply
impregnating the sintered metal of the GC bearing with the grease. The
Examiner provides no persuasive explanation why either the SAE Report or
the SOC Document (or Mori) provides any basis for predicting with
reasonable certainty the results of attempting to impregnate the porous
sintered material of the GC bearing with a grease, that is a lubricating oil
thickened with a gelling agent such as a lithium based soap, rather than a
lubricating oil. Where, as here, the results of the substitution are not
predictable, the Examiner must articulate a persuasive reason why one of
ordinary skill in the art would have made the substitution notwithstanding
the lack of reasonable certainty as to the results. Since the SAE Report does
not expressly disclose or inherently require that the GC bearing have an
external lubrication system with lubrication points, the Examiner’s proposed
reason for replacing the lubricating oil taught by the SAE Report with grease
lacks a rational underpinning.
For these reasons, we do not sustain the rejection of claims 3, 4, and
15 under § 103(a) as being unpatentable over the SAE Report and the SOC
Document.

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Obviousness based upon the SAE Report, the SOC Document, and Mori
The Examiner finds that the combination of the SAE Report and the
SOC Document substantially discloses the invention of independent claims 1
and 18, except for the bearing base oil being substantially similar to the
grease base oil, which the Examiner finds to be taught by Mori. Ans. 7. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to modify the grease of the combination of the SAE Report and the
SOC Document to have a bearing base oil that is substantially similar to the
grease base oil as taught by Mori thereby “preventing scattering-about of the
oil.” Id. Appellant contends that Mori fails to teach a bearing base oil that
is substantially similar to a grease base oil. App. Br. 10 and 19.
We agree with Appellant that Mori fails to teach a bearing base oil
that is substantially similar to a grease base oil. The Examiner cites to
Mori’s column 2, lines 52-55 and column 4, lines 18-19 as supporting the
contention that Mori discloses a bearing base oil that is substantially similar
to a grease base oil. Ans. 7. We have reviewed these passages of Mori and
we see no evidence that Mori discloses a bearing base oil that is substantially
similar to a grease base oil. Since the Examiner has failed to establish by a
preponderance of the evidence that Mori discloses a bearing base oil that is
substantially similar to a grease base oil as is recited in independent claims 1
and 18, we cannot sustain the Examiner’s rejection of claims 1, 5-7, and 18-
24 under 35 U.S.C. § 103(a) as unpatentable over the SAE Report, the SOC
Document, and Mori.

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DECISION
We reverse the Examiner’s rejections of claims 2, 12-14, 16, 17, and
25 under 35 U.S.C. § 102(a) as anticipated by the SAE Report, of claims 3,
4, and 15 under 35 U.S.C. § 103(a) as unpatentable over the SAE Report in
view of the SOC Document, and of claims 1, 5-7, and 18-24 under 35 U.S.C.
§ 103(a) as unpatentable over the SAE Report, the SOC Document, and
Mori.

REVERSED

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