Ex Parte N¿th et al

Patent Trial and Appeal Board

Oct 31, 2017

12738541 (P.T.A.B. Oct. 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.
12/738,541 08/17/2010 Mathias N^th DE 07040 US 2401
81598 7590
Mark Ussai
SKF USA Inc.
890 Forty Foot Road
PO Box 352
Lansdale, PA 19446
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
ipr@skf.com
mark.ussai@skf.com
bry an. peckj ian @ skf. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIAS NOTH and TRISTAN KAISER1
Appeal 2016-001856
Application 12/738,541
Technology Center 3600
Before CARL W. WHITEHEAD JR., JOSEPH P. LENTIVECH, and
DAVID J. CUTITTAII, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 21, 22, 26—36, 38—40, 44, and 45, all pending claims of the
application.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Aktiebolaget SKF.
Appeal Br. 3.
2 Claims 1—20, 23—25, 37, 41—43, and 46 are cancelled. See Appeal Br. 20,
22, 23.
Appeal 2016-001856
Application 12/738,541
STATEMENT OF THE CASE
Invention
According to Appellants, the invention relates to a roller bearing
having a two track element arrangement in which the design of each of the
two track elements includes a track base and shoulders that are eccentric,
rather than concentric to each other. Spec. | 6.3
Exemplary Claims
Claims 21 and 33 are independent claims. Claims 21, 27, 33, and 34
are exemplary and are reproduced below with disputed limitations italicized:
21. A roller bearing comprising:
an inner track element;
an outer track element; and
at least one set of roller bodies deposed in an annular
manner between the inner track element and the outer track
element, wherein the inner track element includes a first track
formed therein for receiving the at least one set of roller bodies,
a base, a first shoulder on a first side of the base, and a second
shoulder on a second side of the base,
wherein a circumference of the base defines a first circular
plane and a first center point disposed in the first circular plane,
a circumference of the first shoulder defines a second circular
plane and a second center point disposed in the second circular
plane, and a circumference of the second shoulder defines a third
circular plane and a third center point disposed in the third
circular plane,
3 This Decision refers to: (1) Appellants’ Specification, filed April 16, 2010,
as amended by the amendments to the Specification filed January 21, 2013,
May 28, 2013, and November 12, 2014 (“Spec.”); (2) the Final Office
Action (“Final Act.”) mailed December 2, 2014; (3) the Appeal Brief
(“Appeal Br.”) filed April 27, 2015; and (4) the Examiner’s Answer
(“Ans.”) mailed September 2, 2015.
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Application 12/738,541
wherein the first, second, and third center points are
different, as viewed in a single view perpendicular to each of the
first, second, and third circular planes, and wherein the first
circular plane, the second circular plane, and the third circular
plane are parallel to one another.
27. The roller bearing according to claim 21, wherein
the second and third center points are disposed in a point-
symmetric manner relative to the first center point.
33. A roller bearing comprising:
a first track element including a track having a track base,
a first shoulder, and a second shoulder, wherein the first shoulder
and the second shoulder are disposed on opposite sides of the
track base, and
at least one set of roller bodies disposed in an annular
manner around the first track element,
wherein the track base, the first shoulder, and the second
shoulder are eccentricly [sic] disposed with respect to one
another, as viewed in a single view perpendicular to each of the
track base, the first shoulder, and the second shoulder, wherein a
circumference of the track base defines a first circular plane, a
circumference of first shoulder defines a second circular plane,
and a circumference of the second shoulder defines a third
circular plane, the first circular plane, the second circular plane,
and the third circular plane being parallel to one another.
34. The roller bearing of claim 33, wherein the first
track element is configured to rotate about a rotational axis that
is oblique relative to a line perpendicular to the circular plane
defined by the base, so that a rocking motion is performed
relative to the rotational axis during each revolution of the first
track element.
Appeal Br. 20—22.
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Application 12/738,541
REFERENCE AND REJECTIONS
(1) Claims 21, 22, 26—36, 38-40, 44, and 45 are rejected under 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act. 4—9.
(2) Claims 21, 22, 26—36, 38-40, 44, and 45 are rejected under 35
U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. Final Act. 10—13.
(3) Claims 21, 22, 26—36, 38-40, 44, and 45 are rejected under 35
U.S.C. § 102(b) as anticipated by Oetjen (EP 1750010 Al; published Feb. 7,
2007). Final Act. 13-20.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv), 41.39(a)(1).
ISSUES
(1) Whether the Examiner errs in finding the Specification lacks
written support for the limitation “the first circular plane, the second circular
plane, and the third circular plane are parallel to one another,” as recited in
claim 21 and similarly recited in claim 33.
(2) Whether the Examiner errs in finding the Specification lacks
written support for the limitation “wherein the second and third center
points are disposed in a point-symmetric manner relative to the first center
point,” as recited in claim 27.
(3) Whether the Examiner errs in finding indefinite the limitation
“the first circular plane, the second circular plane, and the third circular
plane are parallel to one another,” as recited in claim 21 and similarly
recited in claim 33.
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Application 12/738,541
(4) Whether the Examiner errs in finding there is insufficient
antecedent basis for the limitation “the circular plane,” as recited in claim
34.
(5) Whether the Examiner errs in finding Oetjen discloses “wherein
the first circular plane, the second circular plane, and the third circular plane
are parallel to one another,” as recited in claim 21.
ANALYSIS
Issue 1 —Rejection of Claims 21 and 33 Under § 112, first paragraph
The Examiner finds Appellants’ Specification (or the “Specification”)
lacks written support for the limitation “the first circular plane, the second
circular plane, and the third circular plane are parallel to one another,” as
recited in claim 21 and similarly recited in claim 33. Specifically, the
Examiner finds “the limitation . . . has not been described in the
specification, or illustrated in the drawings, in such a way that one of
ordinary skill in the art can make or use the invention, and therefore, to
reasonably convey . . . that the inventor had possession of the claimed
invention.” Final Act. 6. The Examiner further finds a review of Figure 1 of
Appellants’ Specification demonstrates the limitation is not supported
“because Figure 1 clearly illustrates the first circular plane (50) is non­
parallel to the second (54) and third (52) circular planes.” Ans. 4. With
respect to the Specification, the Examiner concludes “the specification
provides antecedent basis for the claim limitations, however, the
specification does not explicitly describe any specific identifying
characteristics that allow for the limitations to be achieved.” Ans. 5.
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Appellants, in turn, argue “[t]his element of claim 21 finds support” at
least at paragraph 10 of Appellants’ Specification. Appeal. Br. 8.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. Id. But the Specification must convey with
reasonable clarity to those skilled in the art that, as of the filing date,
Appellants were in possession of the claimed invention. See id.
We have reviewed the cited portion of the Specification on which
Appellants rely. We are persuaded that the Specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date,
Appellants were in possession of the claimed limitation. Although the
Examiner’s finds Figure 1 of Appellants’ Specification contradicts the
limitation, the Examiner does not adequately address Appellants’ contention
that paragraph [0010] supports the limitation. The Examiner also appears to
conflate the written description requirement with the enablement
requirement by concluding the Specification is insufficient to allow one of
skill in the art to make or use the invention. See Final Act. 4.
The Examiner also finds the Specification lacks written support for
the limitation “wherein the first, second, and third center points are different,
as viewed in a single view perpendicular to each of the first, second, and
third circular planes.” Final Act. 4—5; Ans. 2-3. With respect to this
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limitation and the first rejected limitation discussed directly above, “the
Examiner notes that the limitations necessarily require each other and define
the same final product. For example, in order for a single view to be
perpendicular to each of the first, second, and third circular planes, the first,
second, and third circular planes must be parallel to each other.” Ans. 2-3.
Accordingly, the Examiner finds the Specification cannot support “as
viewed in a single view perpendicular to each of the first, second, and third
circular planes” as recited in claim 21, “because Figure 1 clearly illustrates
the first circular plane (50) is non-parallel to the second (54) and third (52)
circular planes and thus no view perpendicular to all planes is shown.”
Ans. 4. Here also, we determine the Examiner does not adequately address
Appellants’ contention that paragraph [0010] supports the limitation.
Accordingly, we cannot sustain the Examiner’s rejection of claims 21
and 33, under 35 U.S.C. § 112, first paragraph. For similar reasons, we also
cannot sustain the Examiner’s rejection of claims 22, 26, 28—32, 34—36, 38—
40, 44, and 45 under 35 U.S.C. § 112, first paragraph.
Issue 2 — Rejection of Claim 27 Under § 112, first paragraph
The Examiner finds the Specification lacks written support for the
limitation “wherein the second and third center points are disposed in a
point-symmetric manner relative to the first center point,” as in claim 27.
Final Act. 7. The Examiner finds the Specification does not describe how
the base and the shoulders are defined relative to each other and so does not
describe how the first, second, and third center points are defined relative to
each other. Final Act. 8. The Examiner also finds the replacement figures
do not show relative positions of center points. Final Act. 8.
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Appellants argue this limitation of claim 27 finds support at claim 5 of
the Specification as originally filed. Appeal. Br. 11.
We find Appellants’ argument persuasive because the Examiner does
not adequately address Appellants’ contention that original claim 5 supports
the limitation. See generally Ans. 7—8. Accordingly, we cannot sustain the
Examiner’s rejection of claim 27, under 35 U.S.C. § 112, first paragraph.
Issue 3 —Rejection of Claims 21 and 33 Under § 112, second paragraph
The Examiner finds “the limitation ‘the first circular plane, the second
circular plane, and the third circular plane are parallel to one another,”’ as
recited in claim 21, and similarly recited in claim 33, is indefinite under 35
U.S.C. § 112, second paragraph. Final Act. 10. Specifically, the Examiner
finds the Specification fails to describe:
how the base is defined within the device relative to any other
structure feature; what points of the base are used as a datum for
defining the first circular plane (50); how either the first or
second shoulders (14, 16) are defined relative to the base; [and]
what points of the first and second shoulders are used as datums
for defining the second and third circular planes.
Final Act. 11.
Appellants argue “Appellant’s specification describes that the planes
are defined by the circumferential lines of the shoulders and base, e.g., such
that a rocking motion is produced during rotation.” Appeal Br. 14 (citing
Spec. H9, 11). “Accordingly, Appellant’s specification and claims
consistently recite that circumferential lines defined by each of the shoulders
and base are parallel. One of ordinary skill in the art would be able to
interpret the metes and bounds of three parallel planes.” Appeal Br. 14—15.
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“In the USPTO, an applicant’s ‘claim is, or is supposed to be,
examined, scrutinized, limited, and made to conform to what he is entitled
to.’” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). “The legal
standard for definiteness is whether a claim reasonably apprises those of
skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed.
Cir. 1994). “[A] claim is indefinite when it contains words or phrases whose
meaning is unclear.” Packard, 751 F.3d at 1310, 1314—15.
After review of the respective positions provided by Appellants and
the Examiner, we agree with the Examiner that “the limitations are achieved
through some specific cross sectional shape of the inner track element and
some specific shape of the race/groove.” Ans. 11. Because the “limitation
covers every conceivable shape or structural feature that provides the
relative positional relationship, however, the specification of the instant
application has not conceived of a single way of providing the relative
positional relationship.” Id. We, thus, agree with the Examiner that the
Specification does not sufficiently describe the specific structural features
necessary to render this limitation definite.
Accordingly, we sustain the Examiner’s rejection of claims 21 and 33,
under 35 U.S.C. § 112, second paragraph. We also sustain the Examiner’s
indefmiteness rejection of claims 22, 26—32, 35, 36, 38-40, 44, and 45,
which are not argued separately.
Issue 4 —Rejection of Claim 34 Under § 112, second paragraph
The Examiner finds “[tjhere is insufficient antecedent basis for the
limitation ‘the circular plane,”’ as recited in claim 34. Final Act. 13.
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Appellants argue “[s]ince the claims only recite one circular plane
defined by the base (i.e., the first circular plane), a subsequent reference to
‘the circular plane defined by the base’ has one and only one possible
antecedent. Thus, the claim is not indefinite.” Appeal Br. 16.
We find Appellants’ argument unpersuasive. We agree with the
Examiner that neither claim 33 nor claim 34 provides sufficient antecedent
basis for the limitation “the circular plane defined by the base.” Appeal
Br. 22. We agree with Appellants that claim 34 “only recite[s] one circular
plane defined by the base.” Appeal Br. 16. As Appellants note, however,
this circular plane is recited in claim 33 as “the first circular plane” rather
than as “the circular plane.” Appeal Br. 22 (emphasis added). Accordingly,
both claims 33 and 34 lack antecedent basis for “the circular plane.” In view
of this antecedent basis issue, we agree that claim 34 is indefinite. We
recommend Appellants amend the claim to recite “the first circular plane,”
to overcome the rejection.
Issue 5 — Rejection of Claim 21 Under §102
With respect to claims 21, 22, 26—36, 38-40, 44, and 45, Appellants
argue the claims together. Appeal Br. 16. We select independent claim 21
as the representative claim for the group. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue Oetjen fails to disclose “‘wherein the first circular plane,
the second circular plane, and the third circular plane are parallel to one
another,’ as recited in claim 21” because “the planes drawn in the Figure of
Oetjen by the Examiner are not parallel.” Appeal Br. 17—18 (emphasis
omitted) (allegedly citing Figure 3 from Oetjen as annotated by the
Examiner in the December 2, 2014 Office Action).
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The Examiner responds:
[T]he annotated figure to which Applicant refers is not the
interpretation set forth in the Final Rejection dated 12/2/2014,
and thus Applicant’s arguments are related to an interpretation of
Oetjen not relied on in the current rejection. The Examiner notes
that the annotated figure to which Applicant refers was provided
in a Non-Final Rejection dated 8/12/2014 on page 12. The
Examiner notes the Non-Final Rejection addressed claims filed
5/12/2014 that did not include the limitation “being parallel to
each other.” The Examiner notes that the limitation “being
parallel to each other” was added to the claims on 11/12/2014.
Accordingly, Applicant’s amendments and the addition of the
limitation “being parallel to each other” necessitated a new
interpretation of the base of Oetjen. This was clearly explained
by the Examiner on page 20, lines 8-12, of the Final Rejection
dated 12/2/2014. Additionally, the Examiner provided an
additional annotated figure on pages 15 and 19 of the Final
Rejection dated 12/2/2014 illustrating the new interpretation of
the base of Oetjen.
Ans. 13—14. Thus, the Examiner clarifies the grounds of the rejection in the
Answer, by identifying that the Figure found on pages 15 and 19 of the
December 2, 2014 Office Action illustrates the new interpretation of the
base of Oetjen. Ans. 14. We agree with the Examiner that Appellants’
arguments attempt to distinguish the disputed limitation over a Figure no
longer relied upon by the Examiner for the rejection, while not responding to
the Figure actually used in the rejection. See Appeal Br. 14. Appellants,
moreover, do not respond to the Examiner’s clarifications in the Answer
(Ans. 13—16) by filing a Reply Brief. Consequently, Appellants have not
shown error in the Examiner’s factual findings or conclusion of anticipation
and we therefore sustain the 35 U.S.C. § 102(b) rejection of representative
independent claim 21.
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We also sustain the Examiner’s rejection of independent claim 33,
which recites similar limitations and is not argued separately. See Appeal
Br. 18—19. Dependent claims 22, 26—32, 34—36, 38-40, 44, and 45, fall with
their respective independent claims.
DECISION
We reverse the Examiner’s decision rejecting claims 21, 22, 26—36,
38-40, 44, and 45 under 35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s decision rejecting claims 21, 22, 26—36,
38-40, 44, and 45 under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s decision rejecting claims 21, 22, 26—36,
38-40, 44, and 45 under 35 U.S.C. § 102(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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