Ex parte Okita et al.

Board of Patent Appeals and Interferences

May 17, 2001

08251575 (B.P.A.I. May. 17, 2001)

-1-
The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte SHIGERU OKITA, YASUO UTSUMI
and AKIHIRO KIUCHI
________________
Appeal No. 1998-0123
Application No. 08/251,575
________________
HEARD: April 11, 2001
________________
Before KIMLIN, KRATZ and JEFFREY T. SMITH, Administrative
Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-5,
all the claims in the present application. Claim 1 is
illustrative:
1. A rolling bearing comprising components of an inner
race, an outer race and a plurality of rolling elements, at
least one of the components being made from an alloy steel
Appeal No. 1998-0123
Application No. 08/251,575
-2-
comprising 0.1 wt% up to 1.2 wt% of carbon and the balance
being Fe, the one of the components having a hardened layer
with a grinding allowance portion after being subjected to
carbonitriding and hardening heat treatments, followed by
grinding the grinding allowance portion to obtain a finished
component part having a surface layer which removes the
grinding allowance portion from the hardened layer,
wherein said surface layer comprises:
carbon in a range from 0.9 wt% up to 1.6 wt%;
nitrogen in a range from 0.05 wt% up to 0.3 wt%;
said nitrogen content being at least 0.05 wt% at a depth
of 2% of a diameter of the finished component part inwardly
from a surface of the surface layer; and
a nitrogen gradient, which is the rate of change in the
concentration of nitrogen in the depth direction of said
surface layer, not exceeding 0.5 wt%/mm.
The examiner relies upon the following references as
evidence of obviousness:
Furumura et al. 4,871,268 Oct. 3, 1989
(Furumura)
Hoshino (JP '257) 3-24257 Feb. 1, 1991
(Japanese Published Unexamined Patent Application)
Appellants' claimed invention is directed to a rolling
bearing that has been subjected to carbonitriding and
hardening, followed by grinding to provide a surface layer
comprising carbon and nitrogen in the recited amounts and
possessing a nitrogen gradient not exceeding 0.5 wt%/mm. The
Appeal No. 1998-0123
Application No. 08/251,575
-3-
nitrogen gradient is the rate of change in the concentration
of nitrogen in the depth direction of the surface.
Appealed claim 2 stands rejected under 35 U.S.C. § 112,
fourth paragraph. Claims 1-5 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over either Furumura or JP '257.
We have thoroughly reviewed the respective positions
advanced by appellants and the examiner. In so doing, we will
sustain neither of the examiner's rejections for essentially
those reasons expressed by appellants.
Regarding the rejection under § 112, fourth paragraph, we
concur with appellants' reasoning espoused at pages 19 and 20
of the Brief. In our view, claim 2 further defines the
grinding allowance portion remaining after the carbonitriding
and hardening steps recited in claim 1.
We now turn to the examiner's rejection under § 103. The
examiner points out that both references disclose rolling
bearings having a surface comprising carbon and nitrogen in
amounts which overlap the recited ranges, and the examiner
also cites Furumura's disclosure that the solid solution of
carbon and nitrogen is uniformly formed at the surface. As a
result, even though neither reference discloses the claimed
Appeal No. 1998-0123
Application No. 08/251,575
-4-
nitrogen gradient, the examiner reasons that the rolling
bearings of the references are sufficiently substantially
similar to the claimed rolling bearing to shift to appellants
the burden of establishing that the claimed product is
patentably distinct from the rolling bearings of the cited
references. As further support for the examiner's position,
the examiner states that "[i]t is known in the art that the
hardness due to carbonitriding is related to the diffused N
concentration" (page 6 of Answer). Hence, since Furumura
discloses that there is little if any difference in hardness
between the surface portion and core portion of the bearing,
it follows that there is little if any nitrogen gradient
throughout the surface portion.
It is well settled that when a claimed product reasonably
appears to be substantially the same as a product disclosed by
the prior art, the burden is on the applicant to prove that
the prior art product does not necessarily or inherently
possess characteristics attributed to the claimed product. In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir.
1990); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
(CCPA 1977). However, it is also fundamental that the
Appeal No. 1998-0123
Application No. 08/251,575
-5-
examiner bears the initial burden of presenting objective
evidence to support the conclusion that the claimed and prior
art products are substantially the same. In the present case,
appellants have substantively challenged the examiner's
finding that hardness due to carbonitriding is related to the
diffused nitrogen concentration. Appellants submit at page 10
of the Brief that "[t]here is no objective evidence in the
record of this alleged relationship between N gradient and
)HRC" and "[t]here is no evidence in the record that hardness
variation depends only on N concentration and nothing else"
(page 11 of Brief). Also, appellants illustrate Figure D at
page 13 of the Brief for demonstrating that "it is difficult
to discern any relationship between nitrogen content and
hardness, for those few examples in Furumura which actually
contain nitrogen" (page 13 of Brief).
In addition, there is no evidence that the rolling
bearings of the cited references are prepared in the same
manner disclosed in appellants' specification, such that a
reasonable conclusion can be drawn that substantially the same
processes of preparation produce substantially the same
rolling bearing. Appellants disclose the following process
Appeal No. 1998-0123
Application No. 08/251,575
-6-
for producing the claimed rolling bearing at page 6 of the
specification:
To produce the rolling bearing of the
present invention, the carbonitriding
treatment is advantageously performed by
either one of the following schemes: it is
performed at a temperature in excess of
900EC; or it is first performed at a
temperature not exceeding 900EC and then
replaced by a diffusion treatment; or it is
first performed at a temperature not
exceeding 900EC and then at a temperature in
excess of 900EC.
This is in contrast with performing the carbonitriding at
temperatures in the range of about 650-900EC, which appellants
refer to as the "common treatment temperatures," which results
in a more-than-necessary large amount of nitrogen "in the
grinding allowance portion after carbonitriding and hardening
heat treatments" (see paragraph bridging pages 11 and 12 of
specification). The examiner has not pointed to any
disclosure in the cited references for the preparation process
disclosed in appellants' specification, and we find none
therein.
Consequently, we find that the examiner has failed to
establish a prima facie case of inherency which places upon
appellants the burden of demonstrating that the rolling
Appeal No. 1998-0123
Application No. 08/251,575
-7-
bearings of the cited references do not contain the claimed
nitrogen gradient in the surface portion.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
PETER F. KRATZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
ECK:clm
Appeal No. 1998-0123
Application No. 08/251,575
-8-
Sughrue, Mion, Zinn, MacPeak & Seas
2100 Pennsylvania Ave., N.W.
Washington, DC 20037