Ex Parte Osterlaenger et al

Patent Trial and Appeal Board

Nov 26, 2013

12802108 (P.T.A.B. Nov. 26, 2013)

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.
12/802,108 05/28/2010 Juergen Osterlaenger 188.599-DIV-2 5346
7590 11/27/2013
Charles A. Muserlian
317 Bliss Lane
Valley Cottage, NY 10989
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
11/27/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JUERGEN OSTERLAENGER, RALF MAYER, and
HORST MUENCK
____________________

Appeal 2012-000678
Application 12/802,108
Technology Center 3600
____________________

Before: PHILLIP J. KAUFFMAN, NEIL T. POWELL, and
BEVERLY M. BUNTING, Administrative Patent Judges.

BUNTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000678
Application 12/802,108
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a ball screw. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A ball screw, having a spindle nut, on the inner
circumference of which a helically wound ball groove is
formed, a return tube being provided for balls, in which the
balls are returned from an end to a beginning of the ball groove,
lubricant channels provided with lubricant being formed on the
inner circumference of the return tube, wherein an injection
molded plastic return tube is longitudinally divided along a
parting plane (E) into two half-tubes, the lubricant channels
being arranged on both sides of the parting plane (E), wherein
the lubricant channels are arranged without any undercut in
transverse direction to the parting plane.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Gates
Chiu
Izawa
US 2,855,792
US 6,851,722 B2
JP 63-001852 A
Oct. 14, 1958
Feb. 8, 2005
Jan. 6, 1988

REJECTION
The Examiner made the following rejection:
Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Izawa, Chiu, and Gates. Ans. 3.
Appeal 2012-000678
Application 12/802,108
3
ANALYSIS
Appellants argue claims 1-3 together as a group, we select claim 1 as
representative, while claims 2 and 3 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Izawa discloses the ball screw substantially
as claimed, and concedes that Izawa does not disclose that the return tube is
longitudinally divided along a parting plane into two half-tubes, and the
lubricant channels are arranged on both sides of the parting plane, without
any undercut in the transverse direction to the parting plane. Ans. 4-5, citing
Izawa, figs. 1-7. Relying on Chiu to teach a return tube that is longitudinally
divided along a parting plane into two half-tubes, and the parting plane is
arranged in the longitudinal mid-plane of the return tube, the Examiner
reasons it would be obvious to modify the return tube of Izawa to
longitudinally divide the return tube along a parting plane into two half-
tubes to simplify the molding process and to cut down on production costs.
Id. at 5, citing Chiu, col 1, ll. 7-11; fig. 2. Since the lubricant channels of
Izawa are symmetrically arranged along the inner surface of the return tube,
the Examiner maintains that, once divided in this manner, Izawa’s return
tube meets the limitation "the lubricant channels are arranged without any
undercut in the transverse direction to the parting plane." Id. at 5-6. The
Examiner then relies on Gates to disclose an injection molded plastic return
tube (i.e. product by process), and reasons it would have been obvious to
have formed the return tube of Izawa from plastic as taught by Gates to
provide a high production and low cost molding method of manufacture. Id.
at 6, citing Gates, col. 1, ll. 29-33, col. 2, ll. 62-66.
Appellants initially argue that the Examiner erred since Izawa only
discloses one single return tube in the tube with lubricant groove; Chiu
Appeal 2012-000678
Application 12/802,108
4
discloses two halves of a metal return tube without lubricant grooves; and
Gates discloses a single plastic return tube without lubricating grooves and
having a single return channel. App. Br. 4. Appellants’ argument regarding
the features of Izawa, Chiu, and Gates individually is not persuasive since
the Examiner’s findings rely on the combined teachings regarding the ball
screw of Izawa, positioning of a longitudinally oriented parting line of Chiu
and plastic return tube of Gates.1 The Examiner correctly points out that
Chiu explicitly teaches that a longitudinally oriented parting line simplifies
the molding process and cuts down production costs. Ans. 7, citing Chiu,
col. 1, ll. 7-11. As noted by the Examiner, Gates explicitly teaches that
forming the return tube from plastic has the benefit of high production and
low cost molding. Id. at 7-8, citing Gates, col. 1, ll. 29-33, col. 2, ll. 62-66.
Appellants’ assertion that the “injection molded plastic return tube” is a
product by process limitation that positively defines a structural feature of
the return tube, does not explain or inform us why the Examiner’s articulated
reason to modify the metal return tube of Izawa using plastic as taught by
Gate’s to provide for high production at low cost, is in error.2 Reply Br. 1.

1 Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
2 “The patentability of a product does not depend on its method of
production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citing In re
Pilkington, 411 F.2d 1345, 1348 (CCPA 1969)). “If the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.” Thorpe, 777 F.2d at 697 (citing In re Marosi, 710
F.2d 799, 803 (Fed. Cir. 1983); Johnson & Johnson v. W.L. Gore, 436
F.Supp. 704, 726 (D. Del. 1977); and In re Fessman, 489 F.2d 742, 744
(CCPA 1974)).

Appeal 2012-000678
Application 12/802,108
5
Appellants then argue that the Examiner erred since none of the
references discloses an undercut-free half of a return tube and the advantage
thereof. App. Br. 4. According to Appellants, Figure 3 of Izawa shows that
there would be an undercut at the lubrication groove when looking in the
transverse direction if the return tube was divided in half, which is the
direction of opening the injection molding tool. Appellants contend it would
be impossible to separate the molded half from the injection tool, since the
undercut would result in a form-fit construction between the tool and the
half. Id. at 4. Appellants further contend that Izawa, Chiu, or Gates are not
concerned with the problem of producing the tube by injection molding. Id.
at 4.
The Examiner explains how Figure 7 of Izawa discloses that the
lubricating channels 3b are arranged symmetrically around the center point
of the return tube, and Figure 2 of Chiu discloses how the return tube is
divided vertically through the center of the return tube. Thus, the Examiner
reasonably demonstrates how Figure 7 of Izawa can be modified using the
teachings of Chiu to show how the lubricant channels are arranged without
any undercut as required by claim 1. Ans. 8, citing Izawa, fig. 7; Chiu, fig.
2. As the Examiner points out, the proposed modification is consistent with
the definition of undercut provided in Appellants’ Specification. Ans. 8,
citing Spec. pg. 4, ll. 11-30.

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Appeal 2012-000678
Application 12/802,108
7
To further support Appellants’ position that the tube of Izawa has an
undercut, Appellants provided their own annotation of Figure 7. Reply Br.
4. Appellants assert that an “undercut” refers to an overlap of the molded
part with the molding tool in the direction of the parting plane. Id. at 2.
Appellants further assert that the undercut is represented by the angle alpha
formed by the intersection of the straight line “f” (an elongation of the flank
of the groove) with the vertical symmetry axis. According to Appellants, the
angle alpha is zero when there is no undercut. Id. at 2-4. We have carefully
studied Appellants’ annotation of Figure 7 of Izawa. Appellants’ argument
is not convincing, since claim 1 does not define the term “undercut” in this
manner, nor have Appellants adequately explained how this proposed
definition is supported by the Specification, including Appellants’ own
figures. We note that the Specification does not define the angle alpha or the
line “f”. In comparison, the Examiner has reasonably explained how the
lubrication channel of Izawa, if separated in half by a parting line, would not
have an “undercut in [a] transverse direction to the parting plane” as
required by claim 1. See Spec. pg. 4, ll. 11-30.
For these reasons, Appellants do not apprise us of error in the
Examiner’s findings or conclusion of obviousness. As such, the rejection of
claim 1 is sustained, and claims 2 and 3 fall therewith.

DECISION
The Examiner’s rejection of claims 1-3 is affirmed.

Appeal 2012-000678
Application 12/802,108
8
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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