Ex Parte Smetz

Board of Patent Appeals and Interferences

Jul 23, 2009

10499157 (B.P.A.I. Jul. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte REINHARD SMETZ
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Appeal 2009-003403
Application 10/499,157
Technology Center 3600
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Decided:1 July 24, 2009
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Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY
and KEN B. BARRETT, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

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Application 10/499,157

2
STATEMENT OF THE CASE 1
The Appellants appeal under 35 U.S.C. § 134 (2002) from the 2
Examiner’s decision finally rejecting claims 1, 4, 8, 17 and 21 under 35 3
U.S.C. § 103(a) (2002) as being unpatentable over Leichs (DE 100 13 845 4
A1, publ. Sep. 27, 2001) and LaCount (US 4,708,382, issued Nov. 24, 5
1987); finally rejecting claims 2, 5, 10, 12, 14, 15 and 18 under § 103(a) as 6
being unpatentable over Leichs, LaCount and Fredriksson (US 5,248,176, 7
issued Sep. 28, 1993); finally rejecting claims 1, 4-8, 14 and 17-21 under 8
§ 103(a) as being unpatentable over Smetz (DE 100 13 846 A1, publ. Sep. 9
27, 2001) and LaCount; and finally rejecting claims 2, 10, 12 and 15 under 10
§ 103(a) as being unpatentable over Smetz, LaCount and Fredriksson.2 We 11
have jurisdiction under 35 U.S.C. § 6(b) (2002). 12
We AFFIRM. 13
Claim 1 is typical of the claims on appeal: 14
15
1. An attachment device for attaching 16
slinging or lashing means to articles which are to 17
be transported or lashed, said attachment device 18
having a fastening element (1) for fastening said 19
attachment device to said articles, said fastening 20
element formed by a bolt, having an attachment 21
element (11, 16) for the slinging or lashing means, 22
and having a connecting element (10, 15) which 23
connects the fastening element (1) to the 24
attachment element (11, 16) such that the 25
connecting element is rotatable relative to the 26
fastening element (1), on a two-part bushing (4) 27
enclosing the fastening element (1) over part of a 28
length of the fastening element, an axial position 29

2 Page citations to Leichs and Smetz will be to English-language
translations entered in the record of the underlying application.
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of the connecting element on the two-part bushing 1
(4) being secured by annular flanges (6, 7) 2
arranged at opposite ends of the bushing (4), 3
characterized in that the connecting element 4
(10, 15) is supported on the bushing (4), in the 5
region of each of the annular flanges (6, 7) of the 6
bushing (4), by a series of rolling-contact bodies 7
(12, 13). 8
9
ISSUES 10
The Appellant directs no arguments against the rejections of 11
dependent claims 2, 4-8, 10, 12, 13, 15 and 17-20 separate from those 12
directed against the rejection of claims 1 and 21. (App. Br. 6). In other 13
words, the Appellant argues claims 1, 4, 8, 17 and 21 as a group for purposes 14
of the rejection under § 103(a) over Leichs and LaCount. The Appellant 15
also argues claims 1, 4-8, 14 and 17-21 as a group for purposes of the 16
rejection under § 103(a) over Smetz and LaCount. Independent claims 1 and 17
21 are representative of both groups. See 37 C.F.R. § 41.37(c)(1)(vii) 18
(2008). The rejection of claims 2, 5, 10, 12, 14, 15 and 18 as being 19
unpatentable over Leichs, LaCount and Fredriksson raises no issue separate 20
from the issues raised concerning the rejection of claims 1, 4, 8, 17 and 21 as 21
being unpatentable over Leichs and LaCount. The rejection of claims 2, 10, 22
12 and 15 as being unpatentable over Smetz, LaCount and Fredriksson raises 23
no issue separate from the issued raised concerning the rejection of claims 1, 24
4-8, 14 and 17-21 over Smetz and LaCount. 25
The Appellant concedes that Leichs and Smetz “represent known 26
devices serving as the starting point for the improvements resulting in the 27
devices defined by appealed independent Claims 1 and 21.” (App. Br. 8). 28
Having made that concession, the Appellant contends that LaCount would 29
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have provided one of ordinary skill in the art no reason to improve either 1
known device so that the connecting element is supported on the bushing, in 2
the region of each of the annular flanges of the bushing, by a series of 3
rolling-contact bodies as recited in claim 1 or so that two series of rolling-4
contact bodies are mounted between the connecting element and the annular 5
flanges of the bushing as recited in claim 21. (App. Br. 11). 3 6
This appeal turns on one issue: 7
Has the Appellant shown that the Examiner failed to 8
articulate reasoning with some rational underpinning sufficient 9
to support the conclusion that one of ordinary skill in the art 10
would have had reason to substitute a bearing having rolling-11
contact bodies comparable to that disclosed by LaCount for 12
plain bearings in the attachment devices disclosed by Leichs 13
and Smetz? 14
15
FINDINGS OF FACT 16
The record supports the following findings of fact (“FF”) by a 17
preponderance of the evidence. 18
1. Leichs discloses an attachment device including a fastening 19
element 1 formed by a bolt or screw; a connecting element 15; a connecting 20
part 12; and a two-part bushing 8, 9. The connecting part 12 (which 21
corresponds to the connecting element recited in appealed claims 1 and 21) 22
connects the fastening element 1 to the connecting element 15 (which 23
corresponds to the attachment element recited in appealed claims 1 and 21). 24

3 The Appellant does not appear to dispute that the claim term “rolling-
contact bodies” is sufficiently broad to encompass balls.
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Figure 1 of Leichs shows the two-part bushing 8, 9 enclosing the fastening 1
element 1 over part of the length of the fastening element 1. (Leichs 3, l. 23 2
– 4, l. 10 and fig. 1). 3
2. Leichs discloses that the axial position of the connecting part 12 4
on the two-part bushing 8, 9 is secured by annular flanges 10, 11 arranged at 5
opposite ends of the bushing 8, 9. (Leichs 4, ll. 4-10). 6
3. Leichs discloses that the connecting part 12 is rotatable, that is, 7
capable of turning, relative to the fastening element 1 on the bushing 8, 9. 8
(Leichs 4, ll. 6-10). 9
4. Figure 1 of Leichs shows the two-part bushing 8, 9 positioned 10
within the connecting part 12 to form a plain bearing on which the 11
connecting part 12 turns. 12
5. Smetz discloses an attachment device including a fastening 13
element 1 formed by a bolt or screw; a connecting element 5; and a two-part 14
bushing 3, 4. The connecting element 5 includes an integral attachment 15
element with a hole 6. The connecting element 5 connects the fastening 16
element 1 to the attachment element. Figure 2 of Smetz shows the two-part 17
bushing 3, 4 enclosing the fastening element 1 over part of the length of the 18
fastening element 1. (Smetz 3, l. 22 – 4, l. 3 and fig. 2). 19
6. Figure 2 of Smetz shows annular flanges arranged at opposite 20
ends of the two-part bushing 3, 4 to secure the axial position of the 21
connecting element 5 on the bushing 3, 4. 22
7. Smetz discloses that the connecting element 5 is rotatable, that 23
is, capable of turning, relative to the fastening element 1 on the bushing 3, 4. 24
(Smetz 3, ll. 24-25). 25
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8. Figure 2 of Smetz shows the two-part bushing 3, 4 positioned 1
within the connecting element 5 to form a plain bearing on which the 2
connecting element 5 turns. 3
9. LaCount discloses a lifting hook assembly 10 including a hook 4
portion 14, a retaining portion 16, and a chain engagement portion 18. 5
(LaCount, col. 1, ll. 63-65 and fig. 3). LaCount’s retaining portion 16 6
includes a torroidal member 40 which cooperates with wedge members 50 to 7
retain a machined taper 28 at the top of the hook portion 14. (LaCount, col. 8
2, ll. 8-11, 20-21 and 35-37). LaCount’s chain engagement portion 18 9
includes a cylindrical housing partially closed at a lower end by a radially 10
inwardly extending web. (LaCount, col. 2, ll. 39-42 and fig. 3). The 11
housing 30 receives the torroidal member 40. (Id.) 12
10. LaCount discloses forming a race 49 in the bottom of the 13
torroidal member 40. Ball bearings 80 fit within the race 49. (LaCount, col. 14
2, l. 26 and 43-44). 15
11. LaCount describes providing sufficient clearance between the 16
side 48 of the torroidal member 40 and the inner surface of the housing 30 to 17
allow for rotation of the torroidal member 40 (and of the hook portion 14) on 18
the ball bearings 80. (LaCount, col. 2, ll. 43-47). 19
12. Fig. 3 of LaCount shows the ball bearings 80 positioned 20
between the bottom of the torroidal member 40 and the radially inwardly 21
extending web of the housing 30. One of ordinary skill in the art would 22
have recognized that the net force acting on the ball bearings 80 would have 23
had a component perpendicular to the facing surfaces of the torroidal 24
member 40 and the radially inwardly extending web of the housing 30, that 25
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is, a component parallel to the axis of relative rotation of the torroidal 1
member 40 and the housing 30. 2
3
PRINCIPLES OF LAW 4
“[W]hen a patent claims a structure already known in the prior art that 5
is altered by the mere substitution of one element for another known in the 6
field, the combination must do more than yield a predictable result.” KSR 7
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). 8
9
ANALYSIS 10
Both the attachment device disclosed by Leichs and the attachment 11
device disclosed by Smetz have two-part bushings positioned within 12
connecting elements to form plain bearings on which the connecting element 13
turn relative to fastening elements. (FF 3, 4, 7 and 8). Both the bushing 8, 9 14
described by Leichs and the bushing 3, 4 described by Smetz have annular 15
flanges arranged at opposite ends of the bushings. The axial positions of 16
both the connecting part 12 of Leichs and the connecting member 5 of Smetz 17
are secured by the annular flanges. (FF 2 and 6). 18
LaCount discloses positioning ball bearings 80 in a race 49 formed in 19
the bottom of a torroidal member 40 facing a radially extending web of a 20
housing 30. (See FF 10 and 12). LaCount describes providing sufficient 21
radial clearance between the side 48 of the torroidal member 40 and the 22
inner surface of the housing 30 to allow for rotation of the torroidal member 23
40 on the ball bearings 80. (FF 11). 24
It would have been obvious to substitute one or more rolling bearings 25
of the type known from LaCount for the plain bearings disclosed by Leichs 26
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and Smetz. More specifically, one of ordinary skill in the art would have 1
had reason to substitute for the plain bearing disclosed by Leichs or Smetz a 2
pair of rolling bearings at opposite ends of the connecting part 12 of Leichs 3
or the connecting element 5 of Smetz. The orientation of LaCount’s race 49 4
with respect to the radially extending web of the housing 30 would have 5
suggested fabricating the substituted rolling bearings by positioning balls in 6
races opening axially from the opposite end faces of the connecting part 12 7
of Leichs toward the axially extending flanges 10, 11 of the bushing 8, 9 or 8
in races opening axially from the opposite end faces of the connecting 9
element 5 of Smetz toward the flanges of the bushing 3, 4. The use of two 10
races, one on each opposite end of the connecting part or connecting 11
element, would have been obvious: The use of a single race facing only one 12
of the flanges would have allowed for planar, non-rolling contact between 13
the bushing and the end of the connecting part or connecting element 14
opposite the end with the race. LaCount also would have suggested 15
providing sufficient radial clearance between the connecting part 12 and the 16
bushing 8, 9 of Leichs or between the connecting element 5 and the bushing 17
3, 4 of Smetz to allow for rotation of the connecting part 12 or the 18
connecting element 5 on the ball bearings. In particular, one of ordinary 19
skill in the art would have recognized that the force acting on the bearing 20
balls of LaCount’s bearing would have at least a component parallel to the 21
axis of relative rotation of the torroidal member 40 and the housing 30. 22
The Examiner’s reasoning (see Ans. 3-5), that the substitution would 23
improve the attachment devices of Leichs and Smetz by providing a smooth 24
rotational movement of the connecting part 12 of Leichs or the connecting 25
element 5 of Smetz relative to the bushing, is correct. The resulting 26
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improvement would result in attachment devices characterized either in that 1
the connecting elements are supported on the bushings in the regions of each 2
of the annular flanges of the bushing by series of rolling-contact bodies or in 3
that pairs of series of rolling-contact bodies are mounted between the 4
connecting elements and the annular flanges of the bushings. The Appellant 5
does not appear to dispute that the disclosures of Leichs, Smetz and LaCount 6
would have been sufficient to enable one of ordinary skill in the art to 7
implement the proposed improvement or to provide the one of ordinary skill 8
reason to predict that the improvement would succeed in providing an 9
operable connecting element with smooth rotational movement. 10
The Appellant argues (see Reply Br. 4) that LaCount does not teach 11
expressly that a rolling bearing having rolling-contact members positioned 12
axially-opening races might counteract forces acting perpendicular to the 13
axis of rotation. The combined teachings of Leichs and LaCount or of 14
Smetz and LaCount would have provided one of ordinary skill in the art 15
reason to make the simple substitution of pairs of series of rolling-contact 16
members as recited in claims 1 and 21 for the plain bearings taught by 17
Leichs and Smetz. The subject matter of claims 1 and 21 would have been 18
obvious even if an inherent advantage of the subject matter recognized by 19
the Appellant, namely, resistance to tilting, might not have been recognized 20
by one of ordinary skill in the art at the time the subject matter was made. 21
See In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990)(en banc)(recognition of 22
a new or unexpected advantage of a known structure does not impart 23
patentability to the structure); see also KSR Int’l, 550 U.S. at 419 (“In 24
determining whether the subject matter of a patent claim is obvious, neither 25
the particular motivation nor the avowed purpose of the patentee controls.”). 26
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CONCLUSIONS 1
The Appellant has not shown that the Examiner failed to articulate 2
reasoning with some rational underpinning sufficient to support the 3
conclusion that one of ordinary skill in the art would have had reason to 4
substitute a bearing having rolling-contact bodies comparable to that 5
disclosed by LaCount for the plain bearings in the attachment devices 6
disclosed by Leichs and Smetz. Therefore, the Appellant has not shown that 7
the Examiner erred in rejecting representative claims 1 and 21 along with 8
grouped claims 4, 8 and 17 under § 103(a) as being unpatentable over Leichs 9
and LaCount. Neither has the Appellant shown that the Examiner erred in 10
rejecting representative claims 1 and 21 along with grouped claims 4-8, 14 11
and 17-20 under § 103(a) as being unpatentable over Smetz and LaCount. 12
The Appellant directs no separate arguments against the rejection of 13
claims 2, 5, 10, 12, 14, 15 and 18 under § 103(a) as being unpatentable over 14
Leichs, LaCount and Fredriksson or against the rejection of claims 2, 10, 12 15
and 15 under § 103(a) as being unpatentable over Smetz, LaCount and 16
Fredriksson. Therefore, the Appellant has not shown that the Examiner 17
erred in rejecting claims 2, 5, 10, 12, 14, 15 and 18 under § 103(a) as being 18
unpatentable over Leichs, LaCount and Fredriksson or in rejecting claims 2, 19
10, 12 and 15 under § 103(a) as being unpatentable over Smetz, LaCount 20
and Fredriksson. 21
22
DECISION 23
We AFFIRM the rejection of claims 1, 2, 4-8, 10, 12, 14, 15 and 17-24
21. 25
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 2
§ 1.136(a)(1)(iv) (2007). 3
4
AFFIRMED 5
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LV 21
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MARK P. STONE, ATTORNEY AT LAW 24
50 BROADWAY 25
HAWTHORNE, NY 10532 26