Ex Parte Pan et al

Patent Trial and Appeal Board

Mar 28, 2013

11701812 (P.T.A.B. Mar. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAW-PING PAN, DAVID PLATNER,
HUSSEIN MAHER KALAOUI and JACK R. McKENZIE
____________

Appeal 2011-001988
Application 11/701,812
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jaw-Ping Pan et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision to reject under 35 U.S.C. § 103(a): (1) claims
1, 2, 6-9, 13, 14, 17 and 18 as unpatentable over Bornholdt (EP 1028273 A2;
published Jun. 16, 2000),1 Smith (US 3,770,994; issued Nov. 6, 1973) and
Krisher (US 6,474,873 B1; issued Nov. 5, 2002); (2) claims 3-5 as
unpatentable over Bornholdt, Smith, Krisher and Glaze (US 4,733,578;
issued Mar. 29, 1988); (3) claim 11 as unpatentable over Bornholdt, Smith,
Krisher and Nelson (US 3,448,635; issued Jun. 10, 1969); and (4) claims 10,
12, 15 and 19 as unpatentable over Bornholdt, Smith, Krisher and Guo (US
6,813,972 B2; issued Nov. 9, 2004). Claim 16 has been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ invention relates to a differential assembly, a method for
adjusting a differential assembly and a method of assembling a differential
into a carrier. See Spec. para. [0007]; fig. 1.
Claim 1is illustrative of the claimed invention and reads as follows:
1. A differential assembly comprising:
a first differential case member;
a second differential case member mounted to said
first differential case member to provide a cavity for
receiving a differential gear assembly;
a first tapered roller bearing associated with said
first differential case member and defined by a first taper

1 We derive our understanding of this reference from the translation
provided by the USPTO, mailed Jan. 15, 2010. All references to the text of
this document are to portions of the translation.
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that diverges in a direction facing the differential gear
assembly;
a second tapered roller bearing associated with
said second differential case member and defined by a
second taper that diverges in a direction that faces away
from the differential gear assembly;
at least one shim positioned on one side of the
differential assembly;
a single adjusting ring positioned on an opposite
side of the differential assembly from said at least one
shim, said single adjusting ring being adjustable to set a
bearing preload for both said first and said second
tapered roller bearings.

ANALYSIS
Claims 1, 2, 6-9, 13, 14, 17 and 18
Independent claim 1 recites a differential assembly including “a single
adjusting ring positioned on an opposite side of the differential assembly
from said at least one shim, said single adjusting ring being adjustable to set
a bearing preload for both said first and said second tapered roller bearings.”
App. Br., Claims Appendix. Independent claims 14 and 17 recite similar
language. The Examiner found that Bornholdt discloses the limitations of
claim 1 except (1) at least one shim positioned on one side of the differential
assembly; and (2) a single adjusting ring positioned on an opposite side of
the differential assembly from said at least one shim, said single adjusting
ring being adjustable to set a bearing preload for both said first and said
second tapered roller bearings. Ans. 4-6. The Examiner further found that
Smith discloses “a differential 16 having an adjustment mechanism 24
positioned on both sides of the differential 16. There is a shim 43 positioned
on one side of the differential assembly and a single adjusting ring 30
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positioned on the opposite side of the differential 16.” Ans. 5; see also
Smith, col. 2, ll. 20-55; fig. 1. The Examiner also found that Krisher
discloses “a differential 14 having a single adjusting ring 32 positioned on
one side of the differential to set a bearing preload for both a first and second
tapered roller bearings 22a, 22b.” Ans. 6; see also Krisher, col. 4, ll. 19-29;
figs. 1 and 3. The Examiner concluded that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to modify
Bornholdt to include the shim, as taught in the Smith, “in order to hold the
differential assembly in place,” and to have preloaded both bearings on both
sides of the differential by using one adjusting ring, as taught by the Krisher,
“in order to reduce the amount of parts needed for assembly of the
differential and housing.” Ans. 7.
In addition, the Examiner took the position that claim 1 “was read as
not claiming the exclusive use of only one adjusting ring but only that there
is at least a single adjusting ring that is opposite at least one shim.” Ans. 12.
The Examiner further took the position that “the adjusting assembly 30 [of
Krisher] is made up of multiple parts 32, 34.” Ans. 13. The Examiner also
took the position that Krisher (1) “was cited to show the teaching of setting
preload on both sides of a differential assembly can be set using a single
adjusting assembly 30 on one side of the differential;” and (2) “was not cited
for its adjusting ring structure but for the teaching of using only one
adjusting ring assembly for adjusting the preload on both sides of the
differential assembly.” Id.
Appellants argue that “[Appellants have] claimed a single adjusting
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ring.”2 App. Br. 7. Appellants further argue that “Krisher does not disclose
a single adjusting ring.” Id. Specifically, Appellants argue that “Krisher
does not teach that there is only a single adjusting ring on each side. Krisher
teaches that there is a single adjustment assembly on one side that includes
multiple adjusting rings.” Reply Br. 3.
Claims are construed with an eye toward giving effect to all terms in
the claim. Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006).
The term “single” is typically understood to mean “consisting of or having
only one part, feature, or portion.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (11th ed. 2005); see also App. Br. 7.
The Examiner’s interpretation of the phrase “a single adjusting ring”
as covering at least a single adjusting ring, in effect renders meaningless, or
superfluous, the phrase “a single adjusting ring.” Emphasis added. We thus
conclude that the Examiner’s claim construction is flawed.
Although we agree with the Examiner that the adjusting assembly 30
of Krisher is located on one side of the differential assembly, nonetheless, as
correctly pointed out by Appellants, the adjustment assembly3 30 of Krisher
“is comprised of two separate rings 32, 34 in combination with [an] indexing

2 Appellants’ Specification discloses that “[a] single adjusting ring 60 is used
to set and/or adjust bearing preload . . . a single adjusting ring 60 can be used
to adjust preload for both the first 30 and second 32 tapered roller bearings.
Rotating the adjusting ring 60 against the second tapered roller bearing 32
adjusts the preload on the first 30 and second 32 tapered roller bearings via
interaction with the plug case half 14 and plain case half 16.” Spec. para.
[0029]; see also fig. 1.
3 An ordinary and customary meaning of the term “assembly” is “6 a : the
fitting together of manufactured parts into a complete machine, structure, or
unit of a machine.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th
ed. 2005).

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spring 26.” App. Br. 6; see also Krisher, col. 4, ll. 19-28; figs. 2 and 3;
claim 1. In other words, the adjustment assembly 30 of Krisher is composed
of more than one (i.e., a single) component (i.e., rings 32, 34 and spring 26).
See Krisher, figs. 2-3. The claims of the subject invention require “a single
adjusting ring” not “a single adjusting ring assembly,” as proposed by the
Examiner. Thus, Krisher fails to disclose “a single adjusting ring . . . to set a
bearing preload for both the first and the second tapered roller bearings,” as
called for by the claims.
Moreover, the Examiner’s rejection appears to be the result of
hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418
(2007)) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”). Specifically, the reason proffered by the Examiner to modify
the teachings of Bornholdt to include the shim 43 of Smith, i.e., “in order to
hold the differential assembly in place” (Ans. 7), appears to already be
performed by Bornholdt’s differential assembly device. As correctly
pointed out by Appellants, “[t]he pins 40, 61, 62 of the Bornholdt
configuration already hold the differential [assembly], [i.e., differential
pinions 67-70] in place.” App. Br. 8; Reply Br. 4-5; see also, Bornholdt, fig.
2. The Examiner has not provided any findings that Bornholdt recognized a
problem with the pin/differential assembly configuration. Without a
persuasive articulated rationale based on rational underpinning for
modifying the reference as proposed, the Examiner’s rejection appears to be
the result of hindsight analysis. See In re Kahn, 441 F.3d 977, 988 (Fed.
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Cir. 2006) (cited with approval in KSR Int'l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007)) (“[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”). Therefore, absent hindsight, we fail to see why one having
ordinary skill in the art would have been led to include the shim 43 of Smith
in the differential assembly of Bornholdt, as the Examiner proposes.
Accordingly, the rejections of independent claims 1, 14 and 17, and
their respective dependent claims 2, 6-9, 13 and 18 under 35 U.S.C. § 103(a)
as unpatentable over Bornholdt, Smith and Krisher cannot be sustained.
Claims 3-5, 10-12, 15 and 19
The Examiner’s application of Glaze, Nelson and Guo as separate
additional references in conjunction with Bornholdt, Smith and Krisher does
not remedy the deficiencies of Bornholdt, Smith and Krisher as described
above. As such, the rejections under 35 U.S.C. § 103(a): (1) claims 3-5 as
unpatentable over Bornholdt, Smith, Krisher and Glaze; (2) claim 11 as
unpatentable over Bornholdt, Smith, Krisher and Nelson; and (3) claims 10,
12, 15 and 19 as unpatentable over Bornholdt, Smith, Krisher and Guo
likewise cannot be sustained.

DECISION
The decision of the Examiner is reversed as to claims 1-15 and 17-19.

REVERSED

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