Ex Parte Ni et al

Patent Trial and Appeal Board

Jan 31, 2017

13034864 (P.T.A.B. Jan. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/034,864 02/25/2011 WeishunNi PA16469US;67036-420PUS1 1652
26096 7590 02/02/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
DAVIS, MARY ALICE
ART UNIT PAPER NUMBER
3748
NOTIFICATION DATE DELIVERY MODE
02/02/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEISHUN NI,
SATISH SHANTILAL SHAH
and TIMOTHY P. WALGREN
Appeal 2015-004638
Application 13/034,864
Technology Center 3700
Before JOHN C. KERINS, JAMES P. CALVE, and WILLIAM A. CAPP,
Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1—7 and 9-24. Appeal Br. 7. Claim 8 was cancelled. Amendment,
filed Feb. 28, 2014, at 2, 6. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-004638
Application 13/034,864
CLAIMED SUBJECT MATTER
Claims 1,11, and 17 are independent. Claim 1 is reproduced below.
1. A bearing comprising:
a bridge land geometry having a finger cut that defines a
width ISW, a center of said width ISW displaced from an axis a
radial distance ISR, a ratio of ISW/ISR between 0.074—0.293.
REJECTIONS1
Claims 1—7, 9, 10, 20, 23, and 24 are rejected under 35 U.S.C.
§ 102(b) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Halter (US 6,042,352, iss. Mar. 28, 2000).
Claims 11—19, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Halter and Lauck (US 3,003,426, iss. Oct. 10, 1961).
ANALYSIS
Claims 1—7, 9, 10, 20, 23, and 24 anticipated by or unpatentable over Halter
The Examiner found that Halter discloses bearing 10 with bridge land
geometry, finger cut 24, 27 that defines a width ISW, and a center of width
ISW displaced from an axis by radial distance ISR, wherein the ratio of ISW
to ISR ranges between 0.074—0.293. Final Act. 3. The Examiner found that
Figure 2 appears to show the relative dimensions of a bridge land geometry
with a finger cut, ISW, ISR, and a ratio of 0.074—0.293, wherein the ratio is
deemed inherent absent evidence to the contrary. Id. The Examiner also
determined that the claimed ratio would have been obvious because the
general conditions of a claim are disclosed in the prior art and discovery of
optimum or workable ranges involves only routine skill in the art. Id. at 4.
1 The Examiner withdrew the rejection of claims 13—15 under 35 U.S.C.
§ 112, second paragraph, as being indefinite. See Ans. 2.
2
Appeal 2015-004638
Application 13/034,864
There are two issues before us. First, we consider whether Halter
anticipates the claimed bearing, particularly the claimed ratio of ISW to ISR.
Second, we consider whether Halter renders obvious the claimed bearing
and its claimed ratio of 0.074—0.293.
Anticipation by Halter
Appellants argue that the Examiner has not established inherency of
the claimed ratio because the Examiner has not shown that the claimed ratio
is necessarily present in Halter, as required. Appeal Br. 3. Appellants also
argue that the Examiner even acknowledges that the ratio is not inherent by
asserting that the ratio “appears to be in the claimed range.” Id. Appellants
further argue that a mere presence in Halter of a finger cut and bridge land
feature is not sufficient to establish the claimed ratio, especially when Halter
does not disclose dimensions or relationships of the features. Id. at 4—5.
While we appreciate the Examiner’s position that Figure 2 of Halter
discloses features that correspond to the claimed finger cut including a width
and radial distance that are depicted with dimensions that provide a ratio, the
Examiner has not established that these features necessarily yield a ratio of
ISW/ISR between 0.074—0.293, as claimed. In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999) (“The mere fact that a certain thing may result from a
given set of circumstances is not sufficient.”).
The Examiner has not established that Halter’s figures are drawn to
scale or that Halter discloses dimensions for the claimed features. “[I]t is
well established that patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” See Hockerson-Halberstadt,
Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000).
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Appeal 2015-004638
Application 13/034,864
The Examiner is correct that drawings can be relied upon for what
they show and can be cited against claims of a utility patent. In re Aslanian,
590 F.2d 911, 914 (CCPA 1979). If claim 1 recited a bridge land geometry
having a finger cut that defines a width ISW, a center of which is displaced
from an axis by a radial distance ISR, Figure 2 of Halter would anticipate.
However, claim 1 recites a precise ratio based on the relative dimensions and
proportions of the width ISW of the finger cut to its radial distance. Halter
does not provide such a disclosure in Figure 2 or the specification sufficient
to anticipate that claimed ratio, expressly or inherently. See Halter, 3:16—19.
We do not sustain the rejection of claim 1 as anticipated by Halter.
Obviousness of Claim 1
Appellants also argue that the claimed ratio is not obvious because the
Examiner has not explained how the general conditions of the claim would
lead to the claimed ratio or why a skilled artisan would recognize the ratio.
Id. at 5. Appellants argue that only result effective variables are optimized
and a particular parameter must be recognized as a result-effective variable
with objective evidence disclosing the claimed relationship. Id. Appellants
also argue that the Examiner’s annotation on Figure 2, allegedly showing the
claimed ratio, is not proper because Halter is silent regarding dimensions of
these features or the figures being drawn to scale. Id. at 6—7. We agree.
The Examiner has not made sufficient findings to establish the general
conditions of the prior art such that it would have been obvious to arrive at
the claimed ratio of ISW/ISR of 0.074—0.293 by discovering the optimum or
workable ranges using routine skill in the art. The Examiner’s conclusory
determination does not provide the necessary factual findings to support an
obvious determination on this ground. See Final Act. 4; Ans. 6, 7—8.
4
Appeal 2015-004638
Application 13/034,864
The rule regarding discovering workable or optimum ranges based on
the disclosure of the general conditions of a claim in the prior art “is limited
to cases in which the optimized variable is a ‘result-effective variable.’” In
re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (citations
omitted). “A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” Id. at 1297. An
“absence of any disclosure regarding the relationship between the variable
and the affected property may preclude a finding that the variable is result-
effective,” however. Id. (prior art taught that claimed groove dimensions on
polishing pads were result-effective and modifiable to affect pad traits).
In this case, the Examiner did not identify any disclosure in Halter or
the prior art generally that skilled artisans recognized the ratio of ISW to ISR
or even the ISW or ISR individually as affecting a property of a gear pump.
In this regard, Halter discloses an improved bearing with a pulsed bleed hole
configuration that minimizes cavitation in the gear pump. Halter, 1:5—9. As
shown in Figures 2—7, pulse bleed hole 44 is formed in bearing dams 14, 16,
which correspond to the claimed finger cut, to pulse fluid into the inter-tooth
volume 54 between interlocking gears 50 and minimize formation of vapor
cavities that cause cavitation during tooth mesh cycle. Id. at 3:19-46, 3:64—
4:19. Halter discloses different configurations for the bleed holes and their
respective efficacy in reducing cavitation. Id. at 4:20—56, Figs. 3—7. Bleed
holes are located at a bottom of each dam 14 (Fig. 3), but the Examiner has
not identified any recognition in Halter that the width or radial distance of
each dam (or the bleed hole therein) affects cavitation or any other property
such that a skilled artisan would have been motivated to optimize the values
as claimed. See In re Urbanski, 809 F.3d 1237, 1242 (Fed. Cir. 2016).
5
Appeal 2015-004638
Application 13/034,864
Absent such findings by the Examiner, we do not sustain the rejection
of claim 1 as unpatentable over Halter.2 The Examiner’s findings that Halter
teaches features of dependent claims 2—7, 9, 10, 20, 23, and 24 do not cure
these deficiencies. Thus, we do not sustain the rejection of those claims.
Claims 11—19, 21, and 22 as unpatentable over Halter andLauck
Independent claim 11 recites a gear pump comprising a first shaft, a
first gear, and a first bearing with the claimed geometry and ratio recited in
claim 1. Independent claim 17 recites a method of installing a gear within a
gear pump with a first bearing including the ratio recited in claim 1.
The Examiner found that Halter discloses a gear pump including first
bearing 10 that supports a first gear where first bearing 10 includes a finger
cut that defines a width ISW, a center of width ISW displaced from a first
axis by a radial distance ISR, wherein a radio of ISW to ISR ranges between
0.074—0.293. Final Act. 7, 10. The Examiner found that Figure 2 appears to
show dimensions of a bridge land geometry and a finger cut defining a width
ISW, radial distance ISR, and a ratio of ISW/ISR of 0.074—0.293 inherently.
Id. The Examiner determined the claimed ratio would have been obvious as
the general conditions are disclosed in the prior art and discovering optimum
or workable ranges involves routine skill in the art. Id. at 8. The Examiner
relied on Lauck to teach a first shaft and first gear recited in claim 11. Id.
Appellants assert the same arguments against the claimed ratio as for
claim 1. Appeal Br. 3—7. Those arguments are persuasive for the reasons
discussed above for claim 1. Thus, we do not sustain this rejection.
2 Appellants disclose the claimed ratio as facilitating critical fluid
interchange at the main stage gear mesh. Spec. 139.
6
Appeal 2015-004638
Application 13/034,864
DECISION
We reverse the rejections of claims 1—7 and 9—24.
REVERSED
7