Ex Parte Uehara et al

Patent Trial and Appeal Board

Jul 19, 2018

12994052 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/994,052 03/07/2011
826 7590 07/23/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Samantha Uehara
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.
033794/398834 1344
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMANTHA UEHARA, ERIK ALMEIDA ALVES, and
PAULO SEISHIRO TERAMOTO
Appeal2017-005165
Application 12/994,052 1
Technology Center 3600
Before STEFAN STAICOVICI, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Samantha Uehara et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision (mailed Dec. 23, 2015, hereinafter "Final
Act.") rejecting claims 11-17 under 35 U.S.C. § 103(a) as unpatentable in
view of Yang (US 2002/0094143 Al, pub. July 18, 2002), Titus (US
6,929,402 Bl, iss. Aug. 16, 2005), Thompson (US 5,363,557, iss. Nov. 15,
1 According to Appellants, the real party in interest is Mahle Metal Leve
S/A. Appeal Br. 3 (entered May 13, 2016).
Appeal2017-005165
Application 12/994,052
1994), and Everitt (US 5,520,466, iss. May 28, 1996). 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
Appellants' invention relates to a crankshaft bearing with "flanges
designed to accommodate high thrust loads and whose profile promotes a
better oil film construction." Spec. 1 :2--4.
Claim 11, which is independent and representative of the claimed
invention, reads as follows:
11. A flange particularly developed for use on a flanged
bearing, the flange ( 4) being able to flex radially when an axial
load is applied, wherein:
the flange defines an 180° arc relative to a radius point of
the flange;
the flange ( 4) has a smooth and rounded profile that
comprises at least three projections (7) and at least three
channels (8), the at least three projections (7) extending radially
inward from said flange, the at least three channels (8) having
respective longitudinal axes each extending radially outward
from the radius point of said flange, the at least three channels
(8) further being equidistantly distributed across the 180° arc of
said flange so as to define a space between each of said at least
three channels (8);
the defined space consists of a first portion, a second
portion, and a third portion;
the first portion defines a first straight inclined ramp (9)
having a length and a depth extending from a first one of the at
least three channels (8) and ending at the beginning of the
second portion (10);
the second portion ( 10) is arcuate;
the third portion defines a second straight inclined ramp
(9) having a length and a depth equal to the first portion, the
2 Claims 1-10 have been canceled. Appeal Br. 18 (Claims App.).
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Application 12/994,052
third portion extending from the second portion (10) and
transitioning to a second one of the at least three channels (8);
the second portion ( 10) is intermediate the first and the
second straight inclined ramps; and
each of the first and the second straight inclined ramps
(9) have a length to depth ratio of substantially 35.
ANALYSIS
Appellants argue for patentability of claims 11-17 together as a
group. See Appeal Br. 7, 16-17. We select claim 11 as representative, and
claims 12-17 stand or fall with claim 11. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2018).
Rejecting claim 11, the Examiner determines the disclosure of Yang,
Titus, Thompson, and Everitt evidence the recited combination that would
have been obvious to a skilled artisan at the time of the invention. Final Act.
2---6. Appellants' challenge of this determination focuses on whether the
sub-combination of the teachings of Titus and Thompson disclose the
claimed "defined space" with the first, second, and third portions that claim
11 recites. Appeal Br. 8. More specifically, Appellants argue the Examiner
relies on a flawed reasoning for combining Titus and Thompson to show it
would have been known to configure the defined space with an arcuate
second portion between the straight inclined ramp first and third portions.
Id. at 9-16.
The Examiner finds that Yang, as modified by Titus, discloses the
recited "defined space" configuration, except it does not disclose the second
portion is arcuate. Final Act. 4. Nevertheless, the Examiner finds
Thompson shows an arcuate second portion was a known alternative to a flat
second portion, as Titus discloses. See id. at 5; see also Ans. 7-9. As
support, the Examiner identifies Thompson's teaching that "[a]lthough it is
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Application 12/994,052
advantageous to provide a flat land surface 59 between each ramp surface
57, 58, a rounded or peaked region could be substituted for the land surface
59." Thompson 5: 14--16. In addition, the Examiner finds skilled artisans
knew that an arcuate second portion would contribute to "achieving a
hydrodynamic support action suitable for handling relative[ly] high thrust
loads." Final Act. 5 (citing Thompson 5:21-23). Thus, for the flat second
portion of the defined space that Yang, as modified by Titus, discloses, the
Examiner concludes that modifying it to have an arcuate second portion, as
taught by Thompson, would have been an obvious change at the time of the
invention. Id.
Appellants contend the Examiner's position is "tenuous" because
"Thompson explicitly states that its flat surfaces are its preferred
embodiment; thus, without reference to Appellant[ s'] own disclosure,
Appellant[ s] submit[] that no motivation or teaching exists therein for those
of ordinary skill in the art to have departed from Thompson's own admitted
preferred embodiment." Appeal Br. 12. Appellants assert, "those of
ordinary skill in the art, if considering the cited references in their entirety,
simply would not have substituted the preferred and explicitly advantageous
flat regions for an arcuate portion, as in the claimed configuration." Id. at
15. Appellants argue,
the proposed combination of Thompson with Titus so as to
somehow arrive there-between at a configuration having a
second portion that is arcuate is ( 1) deficient because both teach
preferred flat land surfaces only, and (2) improper because the
supposition that those of ordinary skill in the art would have been
led by the disclosure of Thompson alone to depart from its
preferred flat land surfaces and to somehow substitute therefor
the claimed arcuate surfaces goes directly against the express
teachings of Thompson itself.
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Application 12/994,052
Id. While we appreciate Appellants' argument, it is not persuasive.
Appellants notably do not cite to any precedent to suggest that a
skilled artisan's preference for one of several known alternatives is evidence
of non-obviousness. To the contrary, the Court has recognized that "when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result." KSR Int'! Co. v.
Teleflex Inc., 550 U.S. 398,416 (2007) (citing United States v. Adams, 383
U.S. 39, 40 (1966)). Appellants neither argue, nor offer any persuasive
evidence, that anything unexpected resulted from the claimed combination
having an arcuate second portion. Furthermore, Appellants do not dispute,
or otherwise undermine, the Examiner's factual finding that it was
recognized in the prior art that an arcuate second portion would contribute to
achieving a hydrodynamic support action suitable for handling relatively
high thrust loads. See Thompson, col. 5, 11. 20-24. Even giving Appellants
the fact that Thompson and Titus demonstrate skilled artisans generally
preferred to use a flat second portion for this purpose, "[a] reference does
not teach away if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed." Polaris Indus., Inc. v. Arctic Cat,
Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (internal citations and quotations
omitted).
Hence, Appellants' arguments do not persuasively demonstrate the
Examiner's obviousness determination of claim 11 was made in error.
Therefore, we sustain the Examiner's rejection of claims 11-17.
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DECISION
We affirm the Examiner's decision to reject claims 11-17.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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