Ex Parte Theriault

Patent Trial and Appeal Board

Jul 21, 2017

14161205 (P.T.A.B. Jul. 21, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/161,205 01/22/2014 Philip Christopher Theriault R2058-700520(l 1-1736) 5248
84250 7590 07/25/2017
LANDO & ANASTASI, LLP
R2013
ONE MAIN STREET, SUITE 1100
CAMBRIDGE, MA 02142
EXAMINER
PICHLER, MARIN
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
07/25/2017 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):
DOCKETING@LALaw.COM
CKent@LALaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYTHEON COMPANY1
Appeal 2016-005666
Application 14/161,2052
Technology Center 2800
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
MONTE T. SQUIRE, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter “Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 1—13.3
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Philip Christopher Theriault is named as the sole inventor.
2 The real party in interest is identified as “RAYTHEON COMPANY”
(Appeal Brief filed November 3, 2015, hereinafter “Appeal Br.,” at 3).
3 Appeal Br. 5—7; Reply Brief filed March 10, 2016, hereinafter “Reply Br.,”
at 1—3; Final Office Action entered July 13, 2015, hereinafter “Final Act.,”
at 3—12; Examiner’s Answer entered February 25, 2016, hereinafter “Ans.,”
at 2—6.
Appeal 2016-005666
Application 14/161,205
A. BACKGROUND
The subject matter on appeal relates to a method of fabricating
bearing seats for a hinge assembly of a moving optical assembly
(Specification, hereinafter “Spec.,” at 10,11. 7—16). According to the
Appellant, the method is “capable of providing a reliable and accurate
interface between the bearing and the bearing seat” (id. at 14—16).
Representative claim 1 is reproduced from page 8 of the Appeal Brief
(Claims Appendix), with key limitations highlighted in italicized and bolded
text, as follows:
1. A method of fabricating bearing seats for a hinge
assembly of a movable optical assembly, the method comprising:
providing a first body of the hinge assembly having a first
surface;
positioning a first bearing on the first surface of the first
body; and
grinding a first bearing seat with the first bearing so that
a profile for the first bearing seat matches an outer surface of
the first bearing.
B. REJECTIONS ON APPEAL
On appeal, the Examiner maintains a rejection under pre-AIA 35
U.S.C. § 103(a) of claims 1—7, 10, and 11 as unpatentable over Hiley et al.4
(hereinafter “Hiley”) in view of Zernov5 (Ans. 2; Final Act. 3—7). In
addition, the Examiner maintains two other rejections under pre-AIA 35
U.S.C. § 103(a) of claims 8, 9, 12, and 13 as unpatentable over Hiley and
Zernov, further in view of one or more additional references (Ans. 2; Final
Act. 7-9).
4 US 2005/0046979 Al, published March 3, 2005.
5 US 2,703,263, issued March 1, 1955.
2
Appeal 2016-005666
Application 14/161,205
C. DISCUSSION
The Examiner finds that Hiley describes a method of fabricating
bearing seats for a hinge assembly of a movable optical assembly including
all three steps recited in independent claim 1 (Final Act. 3—4). Regarding
the grinding step, the Examiner finds that although Hiley is silent regarding
grinding a bearing seat with a bearing, it discloses that “recess surface 52 is
in direct contact with the rotational bearing surface 36, 36A, as clearly
depicted in Figs. 1-3, paragraph [0032], and therefore these two surfaces,
i.e. [,] the recess surface 52 and the rotational bearing surface 36, 36A,
contact and grind against each other” {id. at 4). Alternatively, the Examiner
finds that Zernov teaches a method for making bearing portions for
connecting rods with bearings, wherein the reference teaches boring out a
bearing opening and then, after the parts are assembled, finishing the
grinding with the bearing itself {id. at 4, 10). The Examiner concludes that
it would have been obvious to one having ordinary skill in the art
... to apply the boring and grinding methods of providing
bearing hole surfaces according to Zernov to the recess surfaces
of Hiley in order to provide finished grinding surface for the
bearing, while reducing time and simplifying the making process
{id. at 4).
We agree with the Appellant that the Examiner’s rejection of claim 1
is not well-founded. Because we are in complete agreement with the
Appellant’s analyses on the issues presented (Appeal Br. 5—7; Reply Br. 1—
3), we adopt them as our own and add the following for emphasis.
Contrary to the Examiner’s findings (Final Act. 3—4), Hiley does not
describe a method of fabricating any bearing seat but, rather, a mirror
displacement assembly and its method of operation (| 10). Referring to
Figure 3, Hiley teaches that two flexure pivots 36 are secured to pivot
3
Appeal 2016-005666
Application 14/161,205
mounts 50A, 50B and to pivot bores 34A, 34B (shown in Figure 4) in the
backside of mirror 12, thereby permitting the mirror 12 to rotate about the
axis R, but otherwise restrict movement of the mirror 12 for all other degrees
of freedom (| 32). The Examiner does not direct us to sufficient evidence or
technical reasoning to establish—in the first instance—that normal operation
of Hiley’s mirror displacement assembly would inherently or necessarily
result in the flexure pivots grinding the pivot bores or flexure pivot mounts
so that profile(s) for the pivot bores or the recesses in the pivot mounts
match the outer surface(s) of the flexure pivots, as required by claim l.6 To
the contrary, a person having ordinary skill in the art would have expected
that any grinding during normal operation would result in normal wear and
tear of the surfaces, which, as the Appellant points out (Appeal Br. 6), would
have been expected to result in a further deviation from profile matching.
The Examiner’s reliance on Zernov does not rescue the rejection.
Zernov does teach that “[i]f desired, after the parts have been assembled
together, the bore . . . may be given a finished grinding” (col. 2,11. 16—18).
But, as the Appellant points out {id. at 6), “[tjhere is absolutely no disclosure
in Zernov of grinding a bearing seat with the bearing so that the profile of
the bearing seat matches the outer surface of the bearing” as required by
claim 1. Zernov’s reference to assembled parts has not been shown to
include the bearings, much less that the bearings are used to provide the
finished grinding (col. 2,11. 7—22).
For these reasons and those given by the Appellant, we do not sustain
the Examiner’s rejection of claim 1. Because all other claims on appeal
6 See, e.g., In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
4
Appeal 2016-005666
Application 14/161,205
depend from claim 1, our ruling on claim 1 is dispositive. In re Fine, 837
F.2d 1071, 1075, 1076 (Fed. Cir. 1988).
SUMMARY
The Examiner’s final decision to reject claims 1—13 is reversed.
REVERSED
5