Ex Parte Stanczak

Board of Patent Appeals and Interferences

Jan 19, 2005

09973741 (B.P.A.I. Jan. 19, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDMUND A. STANCZAK
____________
Appeal No. 2004-1903
Application No. 09/973,741
____________
ON BRIEF
____________
Before RUGGIERO, BLANKENSHIP, and SAADAT, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection of
claims 1-7, 9-12, 14, 15, and 21-23. Claims 17-20 have been
canceled, and claims 8, 13, 16 have been indicated by the Examiner
to contain allowable subject matter subject to being rewritten in
independent form. An amendment filed October 6, 2003 after final
rejection was denied entry by the Examiner.
The claimed invention relates to a wheel hub assembly having
first and second bearing assemblies which are positioned on
Appeal No. 2004-1903
Application No. 09/973,741
1 In response to the final Office action mailed August 5, 2003 (Paper
No. 9), the Appeal Brief was filed January 12, 2004 (Paper No. 13). In
response to the Examiner’s Answer dated April 5, 2004 (Paper No. 14), a Reply
Brief was filed June 9, 2004 (Paper No. 15), which was acknowledged and
entered by the Examiner as indicated in the communication dated June 25, 2004
(Paper No. 16).
2
opposite sides of a spacer. The spacer structure includes at least
one opening which allows lubricant to flow through the spacer and
fill a cavity created around the wheel spindle.
Representative claim 1 is reproduced as follows:
1. A wheel hub assembly comprising:
first and second bearing assemblies;
a spacer disposed between said bearing assemblies
said spacer defining at least one opening such that lubricant
may flow through said spacer.
The Examiner relies on the following prior art:
Rode 6,283,639 Sep. 04, 2001
(filed Jul. 01, 1998)
Harbottle et al. (Harbottle) 6,505,972 Jan. 14, 2003
(filed Sep. 01, 2000)
Claims 1-7, 9-12, 14, 15, and 21-23, all of the appealed
claims, stand finally rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combined teachings of Rode and Harbottle.
Rather than reiterate the arguments of Appellant and the
Examiner, reference is made to the Briefs1, the final Office
action, and Answer for the respective details.
Appeal No. 2004-1903
Application No. 09/973,741
3
OPINION
We have carefully considered the subject matter on appeal, the
rejection advanced by the Examiner, the arguments in support of the
rejection, and the evidence of obviousness relied upon by the
Examiner as support for the rejection. We have, likewise, reviewed
and taken into consideration, in reaching our decision, Appellant’s
arguments set forth in the Briefs along with the Examiner’s
rationale in support of the rejection and arguments in rebuttal set
forth in the Examiner’s Answer. It is our view, after
consideration of the record before us, that the evidence relied
upon and the level of skill in the particular art would have
suggested to one of ordinary skill in the art the obviousness of
the invention as set forth in claims 1-7, 9-12, 14, 15, and 21-23.
Accordingly, we affirm.
Appellant’s arguments in response to the Examiner’s rejection
of the appealed claims are organized according to a suggested
grouping of claims indicated at page 4 of the Brief. We will
consider the appealed claims separately only to the extent separate
arguments for patentability are presented. Any dependent claim not
separately argued will stand or fall with its base claim. Note In
re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986);
In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Appeal No. 2004-1903
Application No. 09/973,741
4
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have
made but chose not to make in the Briefs have not been considered
and are deemed to be waived [see 37 CFR § 41.37(c)(1)(vii)].
As a general proposition in an appeal involving a rejection
under 35 U.S.C. § 103, an Examiner is under a burden to make out a
prima facie case of obviousness. If that burden is met, the burden
of going forward then shifts to Appellant to overcome the prima
facie case with argument and/or evidence. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Hedges, 783 F.2d
1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
With respect to independent claim 1, the representative claim
for Appellant’s first suggested grouping (including claims 1-7, 9,
and 21-23), Appellant’s arguments in response to the Examiner’s
35 U.S.C. § 103(a) rejection assert a failure to establish a prima
facie case of obviousness since proper motivation for the proposed
combination of Rode and Harbottle has not been established.
Appeal No. 2004-1903
Application No. 09/973,741
5
Initially, Appellant contends (Brief, page 5; Reply Brief, page 2)
that, since Rode’s spacer is designed to remain fixed during use
while Harbottle’s spacer continually flexes, the Examiner’s
proposed combination of Rode and Harbottle would destroy the
intended operation of Rode.
After reviewing the applied prior art references in light of
the arguments of record, however, we are in general agreement with
the Examiner’s position as articulated in the Answer. It is
apparent to us from the line of reasoning expressed in the Answer
that the Examiner is not suggesting the bodily incorporation of
Harbottle’s spacer and bearing structural arrangement into the
wheel assembly device of Rode. Rather, it is the disclosed
technique in Harbottle (column 7, lines 18-27) of providing
openings in the spacer to allow for lubrication that is being
relied upon as a suggestion for the proposed combination. “The
test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the
primary reference.... Rather, the test is what the combined
teachings of those references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). See also In re Sneed, 710 F.2d 1544,
Appeal No. 2004-1903
Application No. 09/973,741
6
1550, 218 USPQ 385, 389 (Fed. Cir. 1983) and In re Nievelt, 482
F.2d 965, 967, 179 USPQ 224, 226 (CCPA 1973).
We further find to be unpersuasive Appellant’s arguments
(Brief, page 5; Reply Brief, page 1) that providing spacer openings
for lubrication would serve no purpose in Rode where the bearings
are outside the spacer. We agree with the Examiner, however, that
applying the teachings of Harbottle to provide openings in the
spacer of Rode would clearly provide for lubricant to reach the
cavity between the spacer and the wheel spindle. It is noteworthy,
as pointed out by the Examiner, that Rode would benefit from spacer
openings for lubrication just as Appellant’s device would since in
Appellant’s device the bearing assembly is also outside the spacer.
We further find to be without merit Appellant’s argument
which attacks the Examiner’s proposed combination by asserting that
the applied Rode and Harbottle references are from unrelated arts
since Rode is directed to bearings for a vehicle wheel hub while
Harbottle is directed to bearings for a machine tool spindle. We
note that the test for non-analogous art is first whether the art
is within the field of the inventor's endeavor and, if not, whether
it is reasonably pertinent to the problem with which the inventor
was involved. In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174
(CCPA 1979). A reference is reasonably pertinent if, even though
Appeal No. 2004-1903
Application No. 09/973,741
7
it may be in a different field of endeavor, it logically would have
commended itself to an inventor's attention in considering his
problem because of the matter with which it deals. In re Clay, 966
F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992).
Our review of the disclosures of Rode and Harbottle finds it
apparent, as asserted by the Examiner, that both references are
directed to anti-friction bearing arrangements for rotating
spindles. In our view, the skilled artisan, when considering the
recognized problems associated with spacer adjustment as disclosed
by Rode, would logically have consulted the teachings of Harbottle
to address the problem.
For the above reasons, since it is our opinion that the
Examiner’s prima facie case of obviousness has not been overcome by
any convincing arguments from Appellant, the Examiner’s 35 U.S.C.
§ 103(a) rejection of representative claims 1, as well as claims
2-7, 9, and 21-23 which fall with claim 1, is sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of independent claim 10, the representative
claim for Appellant’s second suggested grouping, we also sustain
the rejection of this claim as well as claims 11, 12, 14, and 15
which fall with claim 10. Appellant’s arguments (Brief, page 7;
Reply Brief, page 2) direct attention to the language “free flow of
Appeal No. 2004-1903
Application No. 09/973,741
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lubricant” in claim 10 as allegedly distinguishing over the
lubricant injector arrangement of Harbottle. It is our view,
however, that, even accepting Appellant’s characterization of an
injector as a metered device which typically provides flow in only
one direction, there is nothing in the language “free flow” which
distinguishes over a metered unidirectional flow since it is
apparent from Harbottle that during injector operation lubricant
will in fact flow freely.
In summary, we have sustained the Examiner’s 35 U.S.C.
§ 103(a) rejection of all of the claims on appeal. Therefore, the
decision of the Examiner rejecting claims 1-7, 9-12, 14, 15, and
21-23 is affirmed.
Appeal No. 2004-1903
Application No. 09/973,741
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv)(effective September 13, 2004; 69 Fed. Reg. 49960
(August 12, 2004); 1286 Off. Gaz. Pat. and TM Office 21
(September 7, 2004)).
AFFIRMED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
HOWARD B. BLANKENSHIP ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JFR/lp
Appeal No. 2004-1903
Application No. 09/973,741
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