Ex Parte Tsujimoto

Board of Patent Appeals and Interferences

Aug 30, 2011

11212908 (B.P.A.I. Aug. 30, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TAKASHI TSUJIMOTO
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Appeal 2010-003516
Application 11/212,908
Technology Center 3600
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Before JOHN C. KERINS, KEN B. BARRETT, and JAMES P. CALVE,
Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003516
Application 11/212,908

2
STATEMENT OF THE CASE
Takashi Tsujimoto (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-6. We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.
THE INVENTION
The claimed invention relates to a tapered roller bearing. Claim 1,
which is set forth below, is representative of the claimed invention:
1. A tapered roller bearing comprising an inner ring,
an outer ring, a plurality of tapered rollers rollably
disposed between the inner and outer rings, and a cage
for holding said tapered rollers in predetermined
circumferentially spaced relation, wherein the roller
coefficient exceeds 0.94 and the roller abutting width of
the pocket pole surface is secured across 10% or more of
the pocket length on the right and left sides with respect
to the axial central position of the pocket.

THE REJECTIONS
The Examiner relies on the following as evidence of unpatentability:
Matsui US 6,599,019 B2 July 29, 2003
Abe JP 2002-276672 Sep. 25, 2002

The following grounds of rejection are before us for review:
1. The Examiner provisionally rejected claims 1-6 for
obviousness-type double patenting over claims 1-4 of co-pending
application 11/143,960 and claims 1-20 of co-pending application
11/578,327.
2. The Examiner rejected claims 1-6 under 35 U.S.C. § 103(a) as
being unpatentable over Abe and Matsui.
Appeal 2010-003516
Application 11/212,908

3
CONTENTIONS AND ISSUES
The Examiner rejected claims 1-6 based on Abe and Matsui. Ans. 3-
4. Appellant argues that Abe does not disclose an inner ring, as recited in
claim 1. App. Br. 7-8. Appellant also argues the Examiner lacks a reason to
combine Abe and Matsui to arrive at the claimed invention. App. Br. 9.
The issue presented by this appeal is:
Did the Examiner err in finding that Abe and Matsui disclose an inner
ring, as recited in claim 1?
ANALYSIS
Rejection of claims 1-6 under 35 U.S.C. § 103(a)
Claim 1 recites a tapered roller bearing comprising an inner ring, an
outer ring, a plurality of tapered rollers disposed between the inner and outer
rings, and a cage for holding the rollers in a predetermined spaced relation.
The Examiner found that surfaces of shafts 23a, 23b in Abe correspond to
the claimed inner ring. Ans. 5. The Examiner also found that figure 8 of
Appellant’s Specification discloses an outer ring raceway formed on a
surface of a main drive gear just as Abe discloses an inner ring formed on a
surface of a drive shaft. Ans. 5.
Appellant argues that the shaft in Abe does not constitute an inner ring
as recited in claim 1. Reply Br. 2-3. Although figure 7 of Abe teaches that
the roller bearings 31 rest on the surface of the shafts 23a, 23b, Appellant
argues that this does not mean the outer surfaces of the shafts 23a, 23b are
an inner ring because the shaft 23 is not shaped as a ring and persons skilled
in the art would not understand the shaft 23 to be a ring. Reply Br. 3.
Appellant also argues that the Specification identifies the claimed inner ring
as element 2 in figure 1A and that element is not the surface of a shaft.
Appeal 2010-003516
Application 11/212,908

4
Reply Br. 4. Appellant asserts that figure 8 of the Specification teaches that
a raceway for bearings can be formed on a drive gear, but figure 8 does not
teach an outer ring formed on a drive gear or other component. Reply Br. 4.
We agree with Appellant. The ordinary and customary meaning of
“ring” includes “a circular band for holding, connecting, hanging, pulling,
packing, or sealing.” MERRIAM WEBSTER’S COLLEGIATE® DICTIONARY 1074
(11th ed. 2005). This meaning is consistent with Appellant’s Specification,
which discloses an inner ring 2 with a tapered raceway 2a and an outer ring
3 with a tapered raceway 3a. Spec. 12, ll. 1-4; figs. 1A, 1B. The Examiner’s
finding that the surface of solid drive shaft 23a, 23b is an inner ring is not
consistent with the ordinary meaning of the term “ring” or the term “inner
ring” as used in the Specification.
To the extent the Examiner relies on Matsui to disclose an inner ring
(see Ans. 5), the Examiner has not provided a sufficient reason to combine
Matsui’s inner ring with Abe (see Ans. 5-7). Abe discloses a roller bearing
with a cage 1 and rollers 2. Abe [0012]; figs. 1-5. Unlike conventional
bearings, the rollers in Abe are held together by the cage 1 and do not come
apart. Abe [0015]. Therefore, Abe’s roller bearings do not require an inner
ring. Accordingly, there would be no reason for a person skilled in the art to
add an inner ring to Abe from Matsui. In view of these findings, Matsui’s
teaching of applying improvements in cylindrical bearings to tapered roller
bearings is not a sufficient basis to add an inner ring to Abe. See Ans. 7.
There is insufficient evidence to support the Examiner’s findings that
Abe discloses an inner ring, or that Matsui’s inner ring can be combined
with Abe to yield the claimed inner ring of claim 1. Accordingly, we
reverse the rejection of claims 1-6.
Appeal 2010-003516
Application 11/212,908

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Obviousness-Type Double Patenting Rejections of Claims 1-6
The Examiner also rejected claims 1-6 for obviousness-type double
patenting over claims 1-4 of co-pending application 11/143,960 and over
claims 1-20 of co-pending application 11/578,327. Appellant requests
withdrawal of the rejections and deferral of a decision until this application
or the other applications issue. App. Br. 6. The Examiner did not withdraw
the rejections but indicated the rejections are in abeyance until the claims of
the present application are in condition for allowance. Ans. 3.
The status of the Examiner’s provisional rejections of claims 1-6 for
obviousness-type double patenting is unclear. For this reason and in view of
our reversal of the rejection under § 103(a), we do not reach the Examiner’s
provisional rejection of claims 1-6 on the grounds of non-statutory
obviousness-type double-patenting. See Ex parte Moncla, 95 USPQ 2d
1884 (BPAI 2010). However, we note that application 11/143,960 has
issued as United States Patent US 7,753,593 B2 and that application
11/578,327 is still pending.
CONCLUSION
The Examiner erred in finding that the combination of Abe and
Matsui disclose an inner ring, as recited in claim 1.
DECISION
The Examiner’s decision to reject claims 1-6 under 35 U.S.C. § 103(a)
as unpatentable over Abe and Matsui is REVERSED.

REVERSED

JRG