Ex Parte Naumann

Patent Trial and Appeal Board

Sep 23, 2013

11522104 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte HANS J. NAUMANN
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Appeal 2011-010927
Application 11/522,104
Technology Center 3700
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Before JAMES P. CALVE, NEIL T. POWELL, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010927
Application 11/522,104

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STATEMENT OF THE CASE
Hans J. Naumann (Appellant) appeals under 35 U.S.C. § 134 from a
final rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claimed subject matter relates to stabilizing a deep rolling unit
employing an axial guide roller that grips the crankshaft in the working
position of the deep rolling unit and stabilizes the deep rolling unit in the
direction of the crankshaft's axis of rotation. See Spec., p. 2, ll. 22-31.
Claim 1 represents the subject matter on appeal and is reproduced below
with the key disputed limitation emphasized.
1. A deep rolling machine for crankshafts with
several deep rolling units in a scissor-type configuration
which are with lateral distances one next to another
hinged to the deep rolling machine in the direction of
the axis of rotation of the crankshaft, so that some deep
rolling units are provided for the deep rolling of the
main bearing journals and other deep rolling units for
the deep rolling of the pin bearing journals of the
crankshaft and the deep rolling units at the outer ends of
their two scissor-type arms carry a deep rolling head
and a supporting roller head respectively that form
together a deep rolling tool where the deep rolling units
have respectively a width that is small when compared
to their length, wherein at least one of the deep rolling
units intended for the deep rolling of the main bearing
journals or of the pin bearing journals features a device
that attacks the crankshaft when the at least one of the
deep rolling units is in its working position and that
stabilises the deep rolling units in the direction of the
axis of rotation of the crankshaft.

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Application 11/522,104

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EVIDENCE
The Examiner relies on the following evidence:

Bagusche US 2005/0066699 A1 Mar. 31, 2005
REJECTION
Claims 1 - 10 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Bagusche. Ans. 3.
ANALYSIS
Anticipation under 35 U.S.C. § 102 requires that “each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999).
Regarding claim 1, the Examiner finds that Bagusche discloses,
among other things, a deep rolling unit 8 including a device (axial guide 27)
that attacks the crankshaft. Ans. 4-5. The Examiner explains that the
limitation “attack” is narrowly construed by Appellant to mean to contact or
grip, but the Examiner construes “attack” as not requiring such contact and
being satisfied by the teaching of the axial guide enclosing a rotational axis
of the crankshaft, and by the teaching that the axial guide 27 comes very
close (i.e. 0.25 mm) to the crankshaft. Ans. 5, 10.
A review of pages 4 and 5 of Appellant’s Specification and Figures 2
and 3, however, shows that the term “attack” should be construed to require
contact. Appellant clearly considered contact of the guide 27 and the
crankshaft to be necessary in the context of the invention to stabilize the
crankshaft. In Appellant’s Specification, “grip” and “attack” appear to be
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used interchangeably, implying that “attacking” means “gripping,” which
requires contact. See Spec. p. 2, ll. 26-27.
The Examiner finds that, if the axial guide 27 is required to contact
the crankshaft to meet the “attack” language of claim 1, axial guide 27 is
inherently capable of performing this function, because axial guide 27 is
adjustable along axis 41 by the socket screw 42 that facilitates proper
placement of the axial guide 27 and can cause the axial guide 27 to contact
the crankshaft. Ans. 5, 11.
The claim limitation “a device that attacks,” however, is not a
functional limitation, and therefore Bagusche’s guide 27 being inherently
capable of attacking the crankshaft is not a sufficient teaching to establish
anticipation under 35 U.S.C. § 102(b).
Appellant argues that Bagusche does not expressly or inherently
disclose a device that attacks the crankshaft when a deep rolling unit is in its
working position, because Bagusche discloses providing a spacing of 0.25
mm between the guide 27 and the adjacent oil collars 25, 26 in the closed
position of the deep rolling device, rendering Bagusche's guide 27 incapable
of functioning as Appellant's claimed device that attacks the crankshaft.
App. Br. 9-11.
Neither Bagusche nor the discussion of Bagusche in Appellant’s
specification discloses that Bagusche's device includes “a device that attacks
the crankshaft” as recited in claim 1. Rather, Appellant's specification states
that axial guide rollers (including Bagusche’s guide 27) were known in the
art in configurations that did not “attack” the crankshaft. See Spec., pp. 1-3.
Bagusche specifically teaches providing a spacing of 0.25 mm between the
guide 27 and adjacent oil collars 25, 26 in the closed position of the deep
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rolling device (Bagusche, paras. [0038] and [0039]), rendering Bagusche's
guide 27 incapable of attacking the crankshaft. Therefore, the Examiner has
not adequately established that Bagusche is capable of attacking the
crankshaft due to the adjustability of the axial guide 27 along the axis 37
where Bagusche instead teaches that a spacing of 0.25 mm is provided
between the guide 27 and oil collars 25, 26. The Examiner responds that, in
addition to being within 0.25 mm of the crankshaft, Bagusche’s guide 27 is
taught to enclose the rotational axis 4 of the crankshaft, which the Examiner
rephrases as “‘the longitudinal axis 41 can swing about the rotational axis.’”
Ans. 11 (citing Bagusche, para. [0033]). It is unclear, however, how
Bagusche’s guide 27 enclosing the rotational axis 4 of the crankshaft teaches
the claimed “attacking” limitation.
The Examiner further responds that one having ordinary skill would
have recognized that crankshafts of varying diameters would have been
capable of being deep rolled in Bagusche, and that a crankshaft having a
sufficient size would have contacted the axial guide 27. Ans. 11. The
Examiner, however, has rejected the claims as anticipated by Bagusche
under Section 102(b), and obviousness of guide-crankshaft contact to one
skilled in the art is insufficient to establish anticipation, which requires that
the prior art reference teach each and every element set forth in the claim.
See In re Robertson, at 745.
For the reasons set forth above, we disagree with the Examiner that
the claim term “attacks” does not require touching, that Bagusche’s inherent
capability of adjusting the guide 27 position meets the claim limitation
“device that attacks,” and that obviousness of a larger diameter crankshaft
causing the guide to attack the crankshaft establishes anticipation. We
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therefore do not sustain the rejection of claim 1 as anticipated by Bagusche.
Claims 2-10 depend from claim 1 and we therefore do not sustain the
rejection of claims 2-10 for at least the same reasons.
DECISION
We REVERSE the rejection of claims 1-10 under 35 U.S.C. § 102(b)
as anticipated by Bagusche.

REVERSED

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