Ex parte Ohira

Board of Patent Appeals and Interferences

Dec 23, 1999

08571471 (B.P.A.I. Dec. 23, 1999)

Application for patent filed December 13, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KOYA OHIRA
____________
Appeal No. 1999-0608
Application No. 08/571,4711
____________
ON BRIEF
____________
Before CALVERT, PATE and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
Appeal No. 1999-0608
Application No. 08/571,471
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, which are all of the claims
pending in this application.
We AFFIRM and enter new rejections under 37 CFR §
1.196(b).
Appeal No. 1999-0608 Page 3
Application No. 08/571,471
Copies of English language translations of Dan'hata and Matsumoto,2
prepared by the Patent and Trademark Office, are appended hereto.
Appellant has not challenged the examiner's characterization of this3
subject matter as admitted prior art.
BACKGROUND
The appellant's invention relates to a rolling bearing
for supporting a shaft of a hand-piece to which a dental
rotary cutting tool is attached. It is important to appellant
that the bearing comprise a retainer which is a sintered
polyimide member formed by sintering a polyimide resin powder,
having 5-20% by volume pores, and a fluorinated oil
impregnated into the sintered member and filling the pores. A
copy of the claims on appeal is contained in the appendix to
the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Dan'hata JP 02-118216 May 2, 1990
Matsumoto JP 03-272320 Dec. 4, 19912
Appellant's Admitted Prior Art on pages 2, 3 and 6 of the
specification (APA)3
References made of record by this panel of the Board are:
Manwiller 4,238,538 Dec. 9, 1980
Appeal No. 1999-0608 Page 4
Application No. 08/571,471
This is the examined Japanese patent publication mentioned on page 24
of the appellant's specification. An English language translation of this
reference, prepared by the Patent and Trademark Office, is appended hereto.
Moriguchi JP 05-043884 Jul. 2, 19934
The following rejection is before us for review.
Claims 1 through 3 stand rejected under 35 U.S.C. § 103
as being unpatentable over appellant's APA in view of
Matsumoto and Dan'hata.
Reference is made to the brief (Paper No. 9) and reply
brief (Paper No. 11) and the answer (Paper No. 10) for the
respective positions of the appellant and the examiner with
regard to the merits of this rejection.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 1999-0608 Page 5
Application No. 08/571,471
Before addressing the examiner's rejections based upon
prior art, it is essential that the claimed subject matter be
fully understood. Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. §§ 102 and 103 begins with
a determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art.
Claim interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472
(Fed. Cir. 1988). Accordingly, we will initially direct our
attention to appellant's claim 1 to derive an understanding of
the scope and content thereof.
Claim 1 recites, inter alia, a "retainer being a
substantially polyimide sintered member formed by sintering a
polyimide resin powder" (emphasis added).
The term "substantially" is a term of degree. When a
word of degree is used, such as the term "substantially" in
claim 1, it is necessary to determine whether the
specification provides some standard for measuring that
degree. See Seattle Box Company, Inc. v. Industrial Crating &
Appeal No. 1999-0608 Page 6
Application No. 08/571,471
Claim 1 was first amended to include the term "substantially" in Paper5
No. 6.
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed.
Cir. 1984).
Having carefully reviewed appellant's specification,
including the original claims, we find that, with the
exception of claim 1 , the term "substantially" is not used. 5
Appellant's specification states: (1) on page 5, a polyimide
(PI) resin known as MELDIN made by Dixon may be used as theTM
resin of the invention; (2) on page 7, the inventive retainer
of Example 1 was
made by immersing a porous PI member (MELDIN 8100 by Dixon,
17% porosity) in fluorinated oil; (3) on page 9, the inventive
retainer of Example 2 was formed from a porous PI member
(MELDIN 9000 by Dixon, 20% porosity) and (4) on page 9, the
inventive retainer of Example 3 was formed from a porous
member of PI resin (UIP-S by Ube Kosan, 8% porosity).
While these portions of the specification disclose a
polyimide resin retainer, they do not provide explicit
guidelines defining the terminology "substantially polyimide"
as used in claim 1. Furthermore, there are no guidelines that
Appeal No. 1999-0608 Page 7
Application No. 08/571,471
The fundamental purpose of a patent claim is to define the scope of6
protection and hence what the claim precludes others from doing. All things
considered, because a patentee has the right to exclude others from making,
using and selling the invention covered by a United States letters patent, the
public must be apprised of what the patent covers, so that those who approach
the area circumscribed by the claims of a patent may more readily and
accurately determine the boundaries of protection in evaluating the
possibility of infringement and dominance. See In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970).
would be implicit to one skilled in the art defining the term
"substantially" as used in the terminology "substantially
polyimide" that would enable one skilled in the art to
ascertain what is meant by "substantially." For example, one
cannot ascertain with any certainty whether the polyamideimide
resin of the APA (or the Moriguchi patent publication
mentioned therein) is "substantially polyimide" or whether the
resin taught by Dan'hata comprising 20 to 40% polyimide resin
is "substantially polyimide." Absent such guidelines, we are
of the opinion that a skilled person would not be able to
determine the metes and bounds of the claimed invention with
the precision required by the second paragraph of 35 U.S.C. §
112.6
Accordingly, it is our opinion that claim 1 is indefinite
for failing to particularly point out and distinctly claim the
invention. Thus, we enter a new ground of rejection of claim
Appeal No. 1999-0608 Page 8
Application No. 08/571,471
1, and claims 2 and 3 which depend therefrom, under 35 U.S.C.
§ 112, second paragraph, as set forth infra.
Next we turn to the examiner's rejection of claims 1
through 3 under 35 U.S.C. § 103 as being unpatentable over
appellant's APA in view of Matsumoto and Dan'hata. We
recognize the inconsistency implicit in our holding that
claims 1 through 3 are rejectable under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the invention with a holding that these
claims are unpatentable under 35 U.S.C. § 103. Normally, when
substantial confusion exists as to the interpretation of a
claim and no reasonably definite meaning can be ascribed to
the terms in a claim, a determination as to patentability
under 35 U.S.C. § 103 is not made. See In re Steele, 305 F.2d
859, 134 USPQ 292 (CCPA 1962) and In re Wilson, 424 F.2d 1382,
165 USPQ 494 (CCPA 1970). However, in this instance, we
consider it to be desirable to avoid the inefficiency of
piecemeal appellate review. See Ex parte Ionescu, 222 USPQ
537 (Bd. App. 1984). Therefore, in the interest of judicial
economy, we interpret "substantially polyimide" in appellant's
claim 1 as requiring a retainer formed from a material
Appeal No. 1999-0608 Page 9
Application No. 08/571,471
containing polyimide resin and, for the reasons set forth
below, conclude that the combined teachings of appellant's
APA, Matsumoto and Dan'hata are sufficient to have suggested
to one of ordinary skill in the art at the time of appellant's
invention the subject matter of the appealed claims.
The APA discussed on page 2 of the appellant's
specification discloses a rolling bearing comprising a
retainer made of a polyamideimide resin and impregnated with a
completely fluorinated oil.
Dan'hata discloses a sliding material for use in a
bearing comprising a mixture of 40 to 70% of an ethylene
tetrafluoride resin (PTFE), 20 to 40% polyimide resin as a
heat-resistant resin and a solid lubricant resin (translation,
pages 3 and 4). The sliding material has a porosity of 10 to
20%. According to Dan'hata, the resulting material is a wear-
resistant material having outstanding frictional
characteristics and improved holding capacity for lubricating
oils, as compared with PTFE alone.
Matsumoto discloses molding and sintering of a mixture of
boron carbide and mesophase carbon spherocrystal (translation,
page 2).
Appeal No. 1999-0608 Page 10
Application No. 08/571,471
We find the combined teachings of appellant's APA and
Dan'hata sufficient, even without the teachings of Matsumoto,
to have suggested modification of the APA retainer by
replacing the polyamideimide resin with the PTFE-polyimide-
lubricant resin mixture having a porosity of 10 to 20% as
taught by Dan'hata to obtain a sliding material having
desirable wear resistance, friction properties and oil holding
capacity. Further, we consider the inclusion of 20 to 40%
polyimide resin in the retainer material sufficient to meet
the limitation in claim 1 that the retainer be a
"substantially polyimide" member, given our interpretation of
"substantially polyimide" as requiring a retainer formed from
a material containing polyimide resin.
Appellant's argument on page 5 of the brief that "[t]here
is no teaching, suggestion, or disclosure in any of the art of
record that sintering of a polyimide resin powder formed body
is even possible" cannot be an argument that sintering of
polymer resins such as polyamideimides and polyimides is not
known in the art, as appellant's own specification (page 2)
indicates that NTN Corporation proposed use of a sintered
polyamideimide resin (Moriguchi translation, page 7) as a
Appeal No. 1999-0608 Page 11
Application No. 08/571,471
bearing holder in the Moriguchi patent publication 05-043884
and as appellant has not challenged the examiner's
characterization of this disclosure as admitted prior art.
Moreover, although Dan'hata does not use the term "sinter,"
the processing of the resin material disclosed in the last
seven lines of the first full paragraph of page 5 of the
translation thereof appears to us to inherently be a sintering
process. Thus, in our opinion, the combined teachings of
appellant's APA and Dan'hata, even without the teachings of
Matsumoto, would have suggested to one of ordinary skill in
the art at the time of the appellant's invention sintering of
the polyimide-containing resin material taught by Dan'hata to
form the sliding material having a porosity of 10 to 20%.
Accordingly, we shall sustain the examiner's 35 U.S.C. §
103 rejection of claim 1, and claims 2 and 3 which stand or
fall therewith according to page 4 of the appellant's brief.
See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528
(Fed. Cir. 1987) and 37 CFR §§ 1.192(c)(7) and
1.192(c)(8)(iv).
NEW GROUNDS OF REJECTION
Appeal No. 1999-0608 Page 12
Application No. 08/571,471
Pursuant to the provisions of 37 CFR § 1.196(b), we enter
the following new grounds of rejection:
1. Claims 1 through 3 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which appellant regards as the invention.
As discussed above and incorporated herein, our review of
the appellant's specification leads us to conclude that one of
ordinary skill in the art would not be able to understand the
metes and bounds of the terminology "substantially polyimide"
in independent claim 1. As claims 2 and 3 depend from claim 1
and thus incorporate all of the limitations therein, these
claims are likewise indefinite.
2. Claims 1 through 3 are rejected under 35 U.S.C. § 103 as
being unpatentable over the admitted prior art of Figure 1 as
described on page 1, third paragraph, of the appellant's
specification in view of Manwiller and Moriguchi.
According to Figure 1 and page 1 of the appellant's
specification, a conventional, or prior art, dental hand-piece
comprises a rolling bearing assembly (2), including a retainer
(1) disposed between inner and outer members, for rotatably
Appeal No. 1999-0608 Page 13
Application No. 08/571,471
supporting a shaft (4) on which a dental cutting tool (3) is
detachably mounted. This admitted prior art does not specify
the material of the retainer (1).
Manwiller discloses sintered polyimide resin articles
(column 8, lines 60-68) which have desirable electrical,
physical and chemical characteristics, such as corrosion
resistance and resistance to melting upon exposure to high
temperatures for extended periods of time, such that they
retain their strength and exhibit excellent response to work-
loading at elevated temperatures for prolonged periods of time
(column 7, line 65, to column 8, line 13). Manwiller further
teaches that such articles are useful "as high temperature
mechanical and electrical parts, such as bearings and seals,
particularly those requiring low thermal expansion" (column
13, lines 52-55).
The selection of a known material based upon its
suitability for the intended use is a design consideration
within the skill of the art. In re Leshin, 277 F.2d 197, 199,
125 USPQ 416, 418 (CCPA 1960).
Appeal No. 1999-0608 Page 14
Application No. 08/571,471
It would have been obvious to one of ordinary skill in
the art to use a sintered polyimide resin as the retainer
material in the rolling bearing of appellant's admitted prior
art in view of the teaching by Manwiller of the desirable
strength and temperature and wear resistance properties of
sintered polyimide resins and of their suitability for use in
bearings.
Further, Moriguchi discloses the impregnation of a
sintered polymer bearing holder with fluorinated oils such as
perfluoropolyether and perfluoropolyalkylether to render the
bearing holder self-lubricating. Moriguchi further teaches
that a 7 to 17 percent volume percentage of continuous pores
is desirable so as to optimize the oil retention percentage of
the retainer (translation, page 6).
In view of the teachings of Moriguchi, it would have been
obvious to one of ordinary skill in the art at the time of
appellant's invention to have further modified the sintered
polyimide retainer of appellant's admitted prior art (as
already modified in view of Manwiller, as discussed above) by
impregnating it with a fluorinated oil such as
perfluoropolyether or perfluoropolyalkylether to render the
Appeal No. 1999-0608 Page 15
Application No. 08/571,471
retainer self-lubricating and by providing a 7 to 17 percent
volume percentage of continuous pores in the sintered
polyimide retainer so as to optimize the oil retention
percentage of the retainer.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 3 under 35 U.S.C. § 103 is affirmed. New
rejections of claims 1 through 3 under 35 U.S.C. §§ 112,
second paragraph, and 103 are added pursuant to the provisions
of 37 CFR § 1.196(b).
In addition to affirming the examiner's rejection of one
or more claims, this decision contains new grounds of
rejection pursuant to 37 CFR § 1.196(b)(amended effective Dec.
1, 1997, by final rule notice, 62 Fed. Reg. 53131, 53197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. Office 63, 122 (Oct. 21,
1997)). 37 CFR § 1.196(b) provides, "A new ground of
rejection shall not be considered final for purposes of
judicial review."
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
Appeal No. 1999-0608 Page 16
Application No. 08/571,471
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
Appeal No. 1999-0608 Page 17
Application No. 08/571,471
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.
Appeal No. 1999-0608 Page 18
Application No. 08/571,471
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED; 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0608 Page 19
Application No. 08/571,471
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