Ex Parte SEKITA

Patent Trial and Appeal Board

Sep 18, 2018

13625882 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/625,882 09/25/2012
31561
JCIPRNET
7590
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
09/20/2018
FIRST NAMED INVENTOR
YUKITERU SEKITA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
43825-US-372 4176
EXAMINER
LETTMAN, BRYAN MATTHEW
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
09/20/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USA@JCIPGROUP.COM
Belinda@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKITERU SEK.IT A
Appeal 2018-001106
Application 13/625,882
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yukiteru Sekita ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1, 3, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Tollner (US 2010/0068054 Al, pub. Mar. 18,
2010), Klusman (US 2007/0086685 Al, pub. Apr. 19, 2007), and Stout
(US 7,517,155 B2, issued Apr. 14, 2009). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Shimadzu Corporation.
Appeal Br. 2.
Appeal 2018-001106
Application 13/625,882
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A vacuum pump using a ball bearing for supporting a rotor
formed with an exhaust function portion and using a motor to
make the rotor rotate for vacuum exhaustion, comprising:
a holding mechanism, clamping an outer race of the ball
bearing in an axial direction and holding the outer race in a
manner that the outer race is adapted to move in a radial
direction;
a housing, formed on a pump seat and accommodating
the holding mechanism; and
an elastic member, located in the housing and disposed
adjacent to an outer circumference of the outer race, wherein
the elastic member has a top surface which faces the motor in
the axial direction and a bottom surface which faces away from
the motor in the axial direction,
wherein the elastic member is a ring-shaped elastic
member,
a gap is formed between the outer circumference of the
outer race and an inner circumference of the ring-shaped elastic
member, wherein the gap extends from the top surface of the
ring-shaped elastic member to the bottom surface of the ring-
shaped elastic member; and
at least an oil or a grease is injected into the gap, wherein
the at least the oil or the grease contacts with the outer
circumference of the outer race and the inner circumference of
the ring-shaped elastic member,
wherein when the outer race vibrates along the radial
direction, the at least the oil or the grease is in contact with the
outer race, so that the at least the oil or the grease injected into
the gap exerts a function of a damper,
and wherein in a case of large vibration of the outer race
along the radial direction, the ring-shaped elastic member also
contacts with the outer race, and the ring-shaped elastic member
also exerts a function of a damper in addition to the at least the
oil or the grease.
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Application 13/625,882
DISCUSSION
In rejecting claim 1, the Examiner finds that Tollner discloses, in
relevant part, "a vacuum pump (10) using a ball bearing (42) for supporting
a rotor (22)" and comprising "a holding mechanism ( 60, 90)" and "a housing
(the portion of 12 which surrounds bearing 42, as shown in Fig. 2)" (Final
Act. 3--4), but does not disclose "a ring-shaped elastic member adjacent the
outer race" of the ball bearing (id. at 4 ). However, the Examiner finds that
Klusman discloses, in relevant part, "a [ ring-shaped] member 24 ...
disposed adjacent to an outer circumference (30) of an outer race (36),"
wherein "a gap (31) is formed between the outer circumference (30) of [the]
outer race (36) and an inner circumference (27) of the ring-shaped member
(24), ... and at least an oil or a grease (100) is injected into the gap (31 )."
Id. at 4. The Examiner finds that Klusman discloses that, "in a case of large
vibration ... of the outer race (36) along the radial direction, the ring-shaped
member (24) also moves into contact with the outer race (36) (this is
inherent of the Klusman design)." Id. at 5. The Examiner determines that it
would have been obvious "to modify the vacuum pump taught by Tollner
with the ring shaped member taught by Klusman in order to dampen shaft
vibrations (paragraph [0002])." Id. The Examiner also finds that "Klusman
is silent as to the material of the ring-shaped member" (id.), but determines
that it would have been obvious to make the ring-shaped member
from an elastic material since, as evidenced by Stout, it is well
known in the art to do so ( col. 4 lines 19-25), and since it has
been held to be within the general skill of a worker in the art to
select known material on the basis of its suitability for the
intended use as a matter of obvious design choice.
Id. at 5---6 (citing In re Leshin, 277 F.2d 197, 199 (CCPA 1960)).
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Application 13/625,882
Appellant argues "that neither of Klusman nor Stout teaches a ring-
shaped elastic member having the features recited in claim 1." Appeal Br. 8.
In particular, Appellant asserts that "body/housing 24 of Klusman is
inappropriately construed as the ring-shaped elastic member (shown as 49 in
FIG. 4) of the claimed invention." Reply Br. 2. According to Appellant,
"the body/housing 24 of Klusman, at most, can be only construed as 'the
housing or the holding mechanism[,'] but not 'the ring-shaped elastic
member[,'] recited in claim I." Appeal Br. 8. This argument is not
responsive to the rejection presented, which, as discussed above, relies on
Klusman only for disclosing a ring-shaped member spaced from the outer
race of a ball bearing by a gap containing at least oil or grease, and relies on
Stout only as evidence that it was known in the art to make ring-shaped
members for supporting a bearing from elastic material. See Final Act. 5.
"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., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413,425 (CCPA 1981)).
Appellant argues that it would not have been obvious to use an elastic
material for Klusman's body/housing 24. See Appeal Br. 7-8; Reply Br. 1-
5. In particular, Appellant asserts that,
[ s ]ince the body/housing 24 of Klusman is a component for
supporting the bearing 23 and the shaft 16 and held stationary
in the bearing housing 26, the body/housing 24 is supposed to
be rigid, and the person skilled in the art will not use an elastic
material to make the body/housing 24.
Appeal Br. 8; see also Reply Br. 2-3 (asserting, with reference to paragraph
20 of Klusman, that "body/housing 24 is fixed in a station, namely the
body/housing 24 is immobile, is not moving, is incapable of being moved"
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Application 13/625,882
( emphasis omitted)). We are not persuaded by this argument. Appellant
does not offer any evidence to support the position that providing support for
bearing 23 and shaft 16 would require a rigid material for body/housing 24.
In this regard, Appellant's assertion amounts to nothing more than attorney
argument unsupported by evidence and, thus, is entitled to little, if any,
weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (An attorney's arguments in a
brief cannot take the place of evidence.). Moreover, although Klusman does
disclose that "body/housing 24 is held stationary relative to the rotatable
shaft 16" (Klusman ,r 20 (boldface omitted)), Appellant does not
persuasively explain why such disclosure would preclude body/housing 24
from being made of elastic material, as proposed by the Examiner. In other
words, we are not convinced that holding body/housing 24 stationary
relative to shaft 16 necessarily would require that body/housing 24 be made
of something other than an elastic material.
Appellant argues that Klusman's "system is supposed to be devised so
that the outer bearing race 36 of the bearing 23 does not collide with the
body/housing 24 and the fluid [ f]low should be controlled so that it can
damp with the fluid alone." Appeal Br. 8; see also id. (asserting that
Klusman does not disclose "using an extra component which is made of
elastic material so as to provide a damping function in addition to the
fluid"). According to Appellant, contact between Klusman's body/housing
24 and outer bearing race 3 6 during operation may damage the system or
render it inoperable. See Appeal Br. 7-8; Reply Br. 3. This line of
argument is unpersuasive because Appellant does not specifically address or
identify error in the Examiner's finding that Klusman's design allows
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Application 13/625,882
contact between outer race 36 and body/housing 24. See Final Act. 5; see
also Ans. 7 ( explaining that "the Klusman design inherently allows the
claimed contact between the outer race and the ring shaped member"). In
other words, even assuming arguendo that Klusman intends for there to be
no contact between outer race 36 and body/housing 24 under normal
operation ( e.g., so as to avoid damage), this does not persuasively refute the
Examiner's position that Klusman's design is inherently capable of such
contact ( e.g., in a case of large vibration).
Although we appreciate Appellant's observation that Klusman does
not disclose using an elastic material for body/housing 24 so that it provides
a damping function in addition to the oil (see Appeal Br. 8), we note that a
reason to modify a reference may often prompt a person of ordinary skill in
the art to do what the inventor has done, but for a different purpose or to
solve a different problem; it is not necessary that the prior art suggest the
modification to achieve the same advantage or result discovered by an
applicant. See In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). As discussed
above, the Examiner has articulated reasoning having rational underpinnings
for modifying the ring-shaped member (body/housing 24) of
Tollner/Klusman's bearing arrangement to be made of elastic material. See
Final Act. 5-6; Ans. 7-8. In this regard, Appellant does not address the
Examiner's articulated reasoning or explain why the reasoning is in error.
For the above reasons, Appellant does not apprise us of error in the
Examiner's determination that the subject matter of independent claim 1
would have been obvious. Accordingly, we sustain the rejection of
independent claim 1, and its dependent claims 3 and 9, for which Appellant
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relies on the same arguments (see Appeal Br. 9), under 35 U.S.C. § 103(a) as
unpatentable over Tollner, Klusman, and Stout.
DECISION
The Examiner's decision rejecting claims 1, 3, and 9 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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