Ex parte RAO et al.

Board of Patent Appeals and Interferences

Oct 31, 1997

08115974 (B.P.A.I. Oct. 31, 1997)

Application for patent filed September 3, 1993. 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journal and (2) is not binding precedent of the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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte VEMULAPALLI D. N. RAO, HARRY A. CIKANEK,
DANIEL GERMAN and DANIEL M. KABAT
____________
Appeal No. 96-3374
Application No. 08/115,9741
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, and
MEISTER and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
Appeal No. 96-3374
Application No. 08/115,974
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3, 5 through 18 and 20, which
are all of the claims pending in this application.
We AFFIRM-IN-PART and enter new rejections pursuant to
37 CFR § 1.196(b).
Appeal No. 96-3374
Application No. 08/115,974
3
BACKGROUND
The appellants' invention relates to a low friction cam
shaft. Claims 1, 13 and 20 are representative of the subject
matter on appeal and copies of those claims are attached to
this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Lachnit 3,958,541 May 25,
1976
Lehtinen et al. 4,558,960 Dec. 17,
1985
(Lehtinen)
Umeha et al. 4,644,912 Feb. 24,
1987
(Umeha)
Oda 4,871,266 Oct. 3,
1989
Rao et al. 4,872,432 Oct. 10,
1989
(Rao)
Hiraoka et al. 4,969,262 Nov.
13, 1990
(Hiraoka)
Appeal No. 96-3374
Application No. 08/115,974
4
Claims 1 through 3, 5 through 7, 9 and 12 through 16
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Oda in view of Hiraoka and Rao.
Claims 8, 10 and 17 stand rejected under 35 U.S.C. § 103
as being unpatentable over Oda in view of Hiraoka, Rao and
Umeha.
Claims 11, 18 and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Oda in view of Hiraoka, Rao, Umeha,
Lehtinen and Lachnit.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the § 103
rejections, we make reference to the final rejection (Paper
No. 12, mailed January 30, 1995) and the examiner's answer
(Paper No. 21, mailed March 4, 1996) for the examiner's
complete reasoning in support of the rejections, and to the
appellants' brief (Paper No. 20, filed December 28, 1995) and
reply brief (Paper No. 22, filed April 8, 1996) for the
appellants' arguments thereagainst.
Appeal No. 96-3374
Application No. 08/115,974
5
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 96-3374
Application No. 08/115,974
6
The obviousness issue
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in
evaluating such references it is proper to take into account
not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be
expected to draw therefrom. In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
The appellants have provided three groups of claims as
follows: Group I, claims 1 through 3 and 5 through 12; Group
II, claims 13 through 18; and Group III, claim 20. See pages
5-7 of the appellants' brief. In accordance with 37 CFR §
1.192(c)(7), we have selected claims 1, 13 and 20 from the
appellants' three groups of claims to decide the appeal on the
rejections under
35 U.S.C. § 103.
Appeal No. 96-3374
Application No. 08/115,974
7
Appeal No. 96-3374
Application No. 08/115,974
8
Claim 1
We will sustain the rejection of claim 1 under 35 U.S.C.
§ 103.
Independent claim 1 sets forth a low friction cam shaft
comprising, inter alia, a shaft member and a cam secured to
the shaft member. The cam has a base circle portion and a
lobe portion made of one metal material having one density.
The base circle portion has an interior portion made of
another metal material of another density. The interior
portion has a porosity less than the lobe portion and the
remainder of the base circle portion. The base circle portion
and the lobe portion have an outer surface with an open
porosity and a solid film lubricant is impregnated in the open
porosity of that outer surface of the cam.
As shown in Figure 2, Oda discloses a tappet cam assembly
including a metal cam 11 and a ceramic tappet 13. The outer
surface of the metal cam 11 is coated with a solid lubricant
and a binder 12 to provide excellent wear-resisting and
Appeal No. 96-3374
Application No. 08/115,974
See column 5, lines 32-35, and column 6, lines 3-11, of2
Oda.
See column 6, lines 10-28, of Rao.3
9
friction-resisting performances can be obtained even at high
temperature with dry conditions in which engines are used.2
Rao discloses to decrease the friction between an
annular body 20 on a piston 13 and an opposing cylinder wall
12, a solid film lubricant coating 35 (see Figure 6)
containing either BN or MoS with graphite may be applied to2
the cylinder wall. Rao teaches that this coating comprises
about 40% by weight of a high temperature thermoplastic resin
such as polyarylsulfone, 40% graphite, and 20% of either MoS2
or BN. Rao further discloses that a suitable resin that is
thermally stable up to about 700°F. is polymer 360, known as
Astrel, manufactured by Minnesota Mining and Manufacturing
Company. Rao teaches that after the cylinder wall surface is
thoroughly cleaned to remove any oxidation, such wall may be
grit blasted to increase porosity and thereby the reception of
the coating. Rao discloses that BN will break down as a3
structural solid at about 750°F. and MoS will do so at about2
Appeal No. 96-3374
Application No. 08/115,974
See column 6, lines 48-57, of Rao.4
10
600°F. Rao further teaches that to permit such substances to
continue providing antifriction characteristics after such
breakdown, the supporting surface may be provided with
reservoirs 43 or grooves to capture or retain the solid film
lubricant coating 44, much in the manner of porosity.4
As shown in Figures 1 and 2, Hiraoka discloses that two
different liquid phase sinterable materials A and B are molded
into a green cam piece composed of outer and inner layers,
which are respectively formed out of the materials A and B.
Hiraoka teaches that the outer-layer forming material A is of
Fe-C-Ni-Cr-Mo system alloy which is prepared to have a
shrinkage of 8% with respect to the axial direction of a
camshaft. Hiraoka further teaches that the inner-layer
forming material B is of Fe-C-P or Fe-C-P-Mo system alloy
which is prepared to have a shrinkage of 4% with respect to
the axial direction. As shown in Figure 3, the green cam
piece is assembled to a steel shaft
Appeal No. 96-3374
Application No. 08/115,974
See column 3, lines 46-59, of Hiraoka.5
See column 4, lines 17-28, of Hiraoka.6
11
10. Thereafter, the assembly is sintered at a predetermined
temperature in which a liquid phase yields to form a cam piece
20 sintered on the shaft. Hiraoka further discloses that in5
general, the material B is more fluidal and easily compacted
to a high density than the material A. When both materials A
and B are filled to the same height in molding, there is a
tendency that the material B has a higher density than the
material A. Therefore, when the material B is filled to half
the axial height of the material A, the material B is much
more dense than the material A. The higher the density, the
lower the shrinkage. Hiraoka states that this means that the
materials A and B are easily prepared to have the respectively
desired shrinkages which differ by a preselected value from
each other.6
After the scope and content of the prior art are
determined, the differences between the prior art and the
Appeal No. 96-3374
Application No. 08/115,974
12
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Oda and claim 1, it
is our opinion that the differences between Oda and claim 1
are the limitations that (1) the cam is made of a plurality of
metal materials wherein the base circle portion and the lobe
portion of the cam are made of a metal material having one
density and the base circle portion has an interior portion
made of another metal material of another density and has a
porosity less than the lobe portion and the remainder of the
base circle portion, and (2) a solid film lubricant is
impregnated in the porosity of the outer surface of the base
circle portion and the lobe portion to promote rapid formation
of a stable oil film to reduce friction.
In applying the above noted test for obviousness, we
reach the conclusion that it would have been obvious to one of
ordinary skill in the art at the time of the appellants'
invention to make Oda's cam of two metal layers of different
densities as taught by Hiraoka. Additionally, it would have
Appeal No. 96-3374
Application No. 08/115,974
Particularly since the solid film lubricant disclosed by7
Rao is the same as the solid film lubricant disclosed by the
appellants, there is a reasonable basis to conclude that the
solid film lubricant 35 of Rao inherently has an affinity for
oil and promotes rapid formation of a stable oil film to
reduce friction.
13
been obvious to one of ordinary skill in the art at the time
of the appellants' invention to utilize the solid film
lubricant of Rao (which impregnates the surface) for the7
solid film lubricant on the outer surface of Oda's modified
cam to further decrease friction.
The arguments advanced by the appellants (brief, pp. 11-
14 and reply brief, pp. 2-3) do not persuade us that claim 1
is unobvious over the applied prior art for the following
reasons. First, as to the appellants arguments regarding the
deficiencies of each reference on an individual basis, we note
that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon
a combination of prior art disclosures. See In re Merck & Co.
Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Lastly, the appellants argue that there is no suggestion to
combine the references absent the application of impermissible
Appeal No. 96-3374
Application No. 08/115,974
14
hindsight. However, it is our opinion as set forth above that
the applied prior art does provide the suggestion or
motivation to make the selection made by the appellants. The
extent to which such suggestion must be explicit in, or may be
fairly inferred from, the references, is decided on the facts
of each case, in light of the prior art and its relationship
to the appellants' claimed invention. It is our determination
that Hiraoka and Rao suggest the desirability, and thus the
obviousness, of modifying Oda to make the claimed combination.
Claims 2, 3 and 5 through 12
As set forth previously, the appellants have grouped
claims 1 through 3 and 5 through 12 as standing or falling
together. Thereby, in accordance with 37 CFR § 1.192(c)(7),
dependent claims 2, 3 and 5 through 12 fall with independent
claim 1. Thus, it follows that the examiner's rejections of
claim 2, 3 and 5 through 12 under 35 U.S.C. § 103 are also
sustained.
Claim 13
Appeal No. 96-3374
Application No. 08/115,974
15
We will not sustain the examiner's 35 U.S.C. § 103
rejection of claim 13. Based on the evidence (i.e., the
applied prior art) adduced by the examiner in the rejection of
claim 13, we are constrained to reverse the rejection for the
following reason.
Claim 13 sets forth the same basic elements (e.g., shaft
member, cam, base circle portion, lobe portion, etc.) as claim
1. In addition, claim 13 recites that the shaft member has an
outer surface which is impregnated with a solid film lubricant
which also impregnates the outer surface of the cam.
We agree with the appellants that the applied prior art
fails to provide the needed suggestion or motivation to one of
ordinary skill in the art at the time of the appellants'
invention to impregnate the outer surface of the shaft member
with a solid film lubricant. In fact, none of the applied
prior art teaches that it is known to apply a solid film
lubricant to the outer surface of the shaft member. Thus, the
limitation that "said first and second outer surfaces having
an open porosity and are impregnated with a solid film
Appeal No. 96-3374
Application No. 08/115,974
16
lubricant comprised of graphite and at least one of molybdenum
disulfide and boron nitride in either one of a high
temperature polymer and epoxy base, the solid film lubricant
has an affinity for oil and promotes rapid formation of a
stable oil film to reduce friction therebetween" is not taught
or suggested by the applied prior art.
Claims 14 through 18
We have also reviewed the Umeha, Lehtinen and Lachnit
references additionally applied in the rejection of claims 17
and 18 but find nothing therein which makes up for the
deficiency discussed above with respect to independent claim
13. Since all the limitations recited in independent claim 13
are not taught or suggested by the applied prior art for the
reasons expressed supra, we cannot sustain the examiner's
rejections of dependent claims 14 through 18 under 35 U.S.C. §
103.
Claim 20
We will not sustain the examiner's 35 U.S.C. § 103
rejection of claim 20. Based on the evidence (i.e., the
Appeal No. 96-3374
Application No. 08/115,974
17
applied prior art) adduced by the examiner in the rejection of
claim 20, we are constrained to reverse the rejection for the
following reason.
Claim 20 sets forth the same basic elements (e.g., shaft
member, cam, base circle portion, lobe portion, etc.) as claim
1. In addition, claim 20 recites that a solid film lubricant
which impregnates the outer surface of the cam also
impregnates the outer surfaces of the shaft member and a
bearing member on the shaft member.
We agree with the appellants that the applied prior art
fails to provide the needed suggestion or motivation to one of
ordinary skill in the art at the time of the appellants'
invention to impregnate the outer surfaces of the shaft member
and the bearing member with a solid film lubricant. In fact,
none of the applied prior art teaches that it is known to
apply a solid film lubricant to the outer surface of the shaft
member or that it is known to apply a solid film lubricant to
the outer surface of the bearing member. Thus, the limitation
that "said first and second and third outer surfaces having an
Appeal No. 96-3374
Application No. 08/115,974
18
open porosity and are impregnated with a solid film lubricant,
the solid film lubricant has an affinity for oil and promotes
rapid formation of a stable oil film to reduce friction
therebetween" is not taught or suggested by the applied prior
art.
New grounds of rejection
Inasmuch as the basic thrust of our affirmance of the
35 U.S.C. § 103 rejections of claims 1 through 3 and 5 through
12 differs from the rationale advanced by the examiner for
the rejection, we hereby designate the affirmance to be new
grounds of rejection pursuant to 37 CFR § 1.196(b) to allow
the appellants a fair opportunity to react thereto (see In re
Kronig, 539 F.2d 1300, 1302-03, 190 USPQ 425, 426-27 (CCPA
1976)).
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 3 and 5 through 12 under 35 U.S.C. § 103 is
affirmed, with the affirmance constituting new grounds of
rejection under 37 CFR § 1.196(b) and the decision of the
Appeal No. 96-3374
Application No. 08/115,974
19
examiner to reject claims 13 through 18 and 20 under 35 U.S.C.
§ 103 is reversed.
Any request for reconsideration or modification of this
decision by the Board of Patent Appeals and Interferences
based upon the same record must be filed within one month from
the date of the decision. 37 CFR § 1.197. Should the
appellants elect to have further prosecution before the
examiner in response to the new rejections under 37 CFR §
1.196(b) by way of amendment or showing of facts, or both, not
previously of record, a shortened statutory period for making
such response is hereby set to expire two months from the date
of this decision.
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
HARRISON E. McCANDLISH, Senior )
Appeal No. 96-3374
Application No. 08/115,974
20
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-3374
Application No. 08/115,974
21
BLISS MCGLYNN, P.C.
2075 WEST BIG BEAVER ROAD
SUITE 600
TROY, MI 48084
Appeal No. 96-3374
Application No. 08/115,974
1
APPENDIX
1. A low friction cam shaft for actuating at least one
valve of an internal combustion engine comprising:
a shaft member extending longitudinally;
at least one cam secured to said shaft member; and
said at least one cam being made of a plurality of
density metal materials, said at least one cam having a base
circle portion and a lobe portion made of one of said density
metal materials, said base circle portion having an interior
portion made of another of said density metal materials, said
interior portion having a porosity less than said lobe portion
and a remainder of said base circle portion, said base circle
portion and said lobe portion having an outer surface with an
open porosity and are impregnated with a solid film lubricant
that has an affinity for oil and promotes rapid formation of a
stable oil film to reduce friction therebetween.
13. A low friction cam shaft for actuating at least one
valve of an internal combustion engine comprising:
a shaft member extending longitudinally and having a
first outer surface;
at least one cam secured to said shaft member having a
base circle portion and lobe portion, said base circle and
lobe portions having a second outer surface, said first and
second outer surfaces having an open porosity and are
Appeal No. 96-3374
Application No. 08/115,974
2
impregnated with a solid film lubricant comprised of graphite
and at least one of molybdenum disulfide and boron nitride in
either one of a high temperature polymer and epoxy base, the
solid film lubricant has an affinity for oil and promotes
rapid formation of a stable oil film to reduce friction
therebetween.
20. A low friction cam shaft for actuating at least one
valve of an internal combustion engine comprising:
a shaft member extending longitudinally and having a
first outer surface;
at least one cam secured to said shaft member having a
base circle portion and lobe portion, said base circle and
lobe portions having a second outer surface,
wherein an interior portion of said base circle portion
is a soft low carbon steel;
wherein said lobe portion and a remainder of said base
circle portion are formed of a porous medium to high carbon
Ni-Cr alloy steel; and
at least one bearing member on said shaft member having a
third outer surface with at least one furrow extending along
the longitudinal direction of said shaft member;
said first and second and third outer surfaces having an
open porosity and are impregnated with a solid film lubricant,
the solid film lubricant has an affinity for oil and promotes
Appeal No. 96-3374
Application No. 08/115,974
3
rapid formation of a stable oil film to reduce friction
therebetween.
APPEAL NO. 96-3374 - JUDGE NASE
APPLICATION NO. 08/115,974
APJ NASE
APJ MEISTER
APJ McCANDLISH
DECISION: AFFIRMED-IN-PART
1.196(b)
Prepared By: Delores A. Lowe
DRAFT TYPED: 24 Oct 97
1st Rev. 29 Oct 97
FINAL TYPED: