Ex Parte Nishikawa

Patent Trial and Appeal Board

Nov 19, 2018

14006816 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/006,816 09/23/2013
513 7590 11/21/2018
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Makoto Nishikawa
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2013-1411A 4192
EXAMINER
WAITS,ALANB
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAKOTO NISHIKAWA
Appeal2017-008852
Application 14/006,816
Technology Center 3600
Before WILLIAM A. CAPP, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 7-12. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 NTN Corporation is identified as the real party in interest. Br. 3.
Appeal2017-008852
Application 14/006,816
THE CLAIMED SUBJECT MATTER
Appellant's invention relates to a retainer for a thrust bearing. Spec.
,r 1. Claim 1, reproduced below, is representative of the claimed subject
matter.
1. A retainer for a thrust bearing, comprising an annular
member formed with plural pockets for holding rollers, wherein
the annular member is made of a flat steel plate and has a
main body area of a constant thickness in its widthwise
intermediate region, an outer circumferential engagement edge
circumferentially outside the main body area, and an inner
circumferential engagement edge circumferentially inside the
main body area;
the outer circumferential engagement edge has a top
surface lower than a top surface of the main body area and has a
thinner thickness than the main body area;
the inner circumferential engagement edge has a bottom
surface higher than a bottom surface of the main body area and
has a thinner thickness than the main body area;
the outer circumferential engagement edge has a greater
width than the inner circumferential engagement edge;
the pockets are equi-spaced in a circumferential direction
of the main body area and are provided by through-holes in a
thickness direction; and
each pocket has its guide surface formed with anti-
dropping projections for preventing at least one of said rollers
from dropping.
REJECTIONS
1) Claims 1, 7, 8, and 10-12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Koch (US 5,110,223, issued May 5, 1992) and
Obayashi (US 2008/0025661 Al, published Jan. 31, 2008).
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Appeal2017-008852
Application 14/006,816
2) Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Koch, Obayashi, and Murphy (US 3,414,341, issued Dec. 3,
1968).
DISCUSSION
Rejection 1
Appellant argues claims 1, 7, 8, and 10-12 as a group. Br. 4--6. We
select claim 1 as representative of the group and claims 7, 8, and 10-12
stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(iv).
The Examiner finds that the combined teachings of Koch and
Obayashi disclose all the limitations of claim 1 except for "the outer
circumferential engagement edge [having] a greater width than the inner
circumferential engagement edge." Final Act. 3--4. The Examiner
determines that it would have been obvious to provide Koch's device with
an outer circumferential engagement edge having
a greater width than the inner circumferential edge since, it has
been held that where the only difference between the prior art
and the claims was a recitation of relative dimensions of the
claimed device and a device having the claimed relative
dimensions would not perform differently than the prior art
device, the claimed device was not patentably distinct from the
prior art device.
Id. (citing MPEP § 2144.04 (IV)(A)).
Appellant contends that Paragraph 24 of the Specification describes
engaging hooks 28 shown in Appellant's Figure 3 "are 'inwardly bent
extending over the track surface 21, so that the bearing can have a large
inner gap."' Br. 4. Based on this, according to Appellant:
There are cases where an outer ring and an inner ring in thrust
bearings are eccentric by e.g., manufacturing errors, assembling
errors, or the like, and when the outer ring 11 and the inner ring
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Appeal2017-008852
Application 14/006,816
12 are eccentric, such a gap can absorb the eccentricity because
the annular member can move with the gap relative to the outer
nng.
Id. Appellant argues that presence of the recitation in claim 1 of an outer
engagement edge wider than the inner engagement edge creates the gap for
absorbing the eccentricity. Id. Appellant also contends that the recited
annular member "performs differently than an annular member with outer
and inner engagement edges of the same width [ as disclosed in Koch]
because the wider outer circumferential engagement edge allows for long
protrusions" such as engaging hooks 28 shown in Appellant's Figure 3
"which are 'inwardly bent extending over the track surface 21, so that the
bearing can have a larger inner gap."' Id. at 5. According to Appellant, the
structural differences "between the claimed invention ( outer edge wider than
inner edge) result in a difference in performance over the prior art, i.e., Koch
( outer edges and inner edges of same width.). Id. at 5-6.
The Examiner responds that "the device of Koch and that of Fig. 3 of
the application are very similar in design and shape" and provides a side by
side comparison of Figure 5 of Koch and Applicant's Figure 3. Ans. 4.
According to the Examiner, the major difference is the "dimension 72 of
Koch vs. the dimension 18 of the application." Id. The Examiner also
responds that "Appellant's assertion regarding correcting eccentricity are
nowhere to be found in the Specification." Id. at 5. The Examiner notes that
Paragraph 24 of Appellant's Specification describes a "height gap, not a gap
afforded by the outer circumferential edge. As noted in Appellant's
Figure 3, the only gaps illustrated are (xl, x2, hl and h2)." Id. For the
following reasons, we sustain the rejection of claim 1.
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Appeal2017-008852
Application 14/006,816
Element 14 shown in Appellant's Figure 3 is described as the retainer
and "is formed of a flat annular member 15." Spec. ,r 20, Fig. 3. Element 14
has outer circumferential engagement edge 18 and inner circumferential
engagement edge 20. Id. ,r 20. Element 11 is an outer ring and element 12
is an inner ring. Id. ,r 19, Fig. 3. Outer ring 11 "has an outer circumferential
edge formed with an axially erected flange 27." Id. ,r 24. "The flange 27
has an engaging hook 28 at its tip edge." Id.
Claim 1 recites "[a] retainer for a thrust bearing comprising an annular
member." The inner ring and outer ring are not recited in claim 1. Because
engaging hook 28 is part of outer ring 11, any vertical or horizontal gap
formed between annular member 15 and flange 27 is not related to the
structure of the annular member recited in claim 1. Rather, the gap is a
function of the geometry of the outer ring relative to the recited annular
member. Appellant's arguments based on this gap are thus, not persuasive
because the arguments are not commensurate with the scope of claim 1.
Even if the arguments were commensurate with the scope of the claim,
Appellant does not provide persuasive argument or technical reasoning that
the difference in dimensions between the Koch device and the claimed
subject matter result in a patentably distinct different performance as
opposed to a mere difference in degree of performance due to the differing
dimensions. Finally, we agree with the Examiner that Appellant's argument
that "such a gap can absorb the eccentricity because the annular member can
move with the gap relative to the outer ring" is not supported by the
Specification or other evidence. We, thus, sustain the rejection of claim 1.
Claims 7, 8, and 10-12 fall with claim 1.
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Appeal2017-008852
Application 14/006,816
Rejection 2
Claim 9 depends from claim 1. Br. 8 (Claims App.). Appellant does
not raise additional arguments for the patentability of claim 9 but relies on
the arguments raised in connection with claim 1. Id. at 6. We sustain the
rejection of claim 9 for the reasons discussed above.
DECISION
The Examiner's decision rejecting claims 1 and 7-12 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)(l )(iv).
AFFIRMED
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