Ex Parte Vissers et alDownload PDFPatent Trial and Appeal BoardSep 13, 201613087551 (P.T.A.B. Sep. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/087,551 81598 7590 Mark Ussai SKF USA Inc. 890 Forty Foot Road PO Box 352 Lansdale, PA 19446 FILING DATE FIRST NAMED INVENTOR 04/15/2011 Cornelius Petrus Antonius Vissers 09/15/2016 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. IT 10302 US 6473 EXAMINER PILKINGTON, JAMES ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 09/15/2016 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): ipr@skf.com mark.ussai@skf.com bryan. peckj ian @skf.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CORNELIUS PETRUS ANTONIUS VISSERS and PAOLO RE Appeal2014-009932 Application 13/087 ,551 1 Technology Center 3600 Before ANTON W. PETTING, KENNETH G. SCHOPPER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1, 2, 5-7, 9, 11-17, 19-22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. BACKGROUND According to Appellants, "[t]he present invention relates to bearings, and more particularly to a lightweight, flanged bearing ring for the hub of a motor vehicle wheel." Spec. 1, 11. 9-10. 1 According to Appellants, the real party in interest is Aktiebolaget SKF. Appeal Br. 1. Appeal2014-009932 Application 13/087,551 CLAHvIS Claims 1, 2, 5-7, 9, 11-17, and 19-22 are on appeal. Claims 1 and 16 are the independent claims on appeal, are illustrative of the appealed claims, and recite: 1. A flanged bearing ring for a motor vehicle wheel, the ring compnsmg: a radially inner, generally annular insert formed of a first material with a first thermal expansion coefficient, the insert having a central axis, at least one raceway extending about the axis, a radially outer surface, and at least one projection extending generally radially from the outer surface; and a radially outer body formed of a second material with a second thermal expansion coefficient, the second coefficient being greater than the first coefficient, the outer body being disposed about the insert and having a radially outwardly extending flange and at least one radial recess configured to receive the at least one projection of the insert so as to interlock and prevent relative axial displacement between the insert and the outer body, wherein the at least one projection of the insert has an undercut engageable with the at least one recess of the outer body so as to prevent relative radial movement between the outer body and the insert, and wherein the at least one projection has two conical surf aces tapering in a same direction, one of the two conical surfaces forming the undercut. 16. A flanged bearing ring for a motor vehicle wheel, the ring compnsmg: a radially inner, generally annular insert formed of a first material with a first thermal expansion coefficient, the insert having an insert axial length, a central axis, at least one raceway extending about the axis, a radially outer surface, and at least one projection extending generally radially from the outer surface; and 2 Appeal2014-009932 Application 13/087,551 a radially outer body formed of a second material with a second thermal expansion coefficient, the second coefficient being greater than the first coefficient, the outer body being disposed about the insert and having an outer body axial length equal to the insert axial length, a radially outwardly extending flange and at least one radial recess configured to receive the at least one projection of the insert so as to interlock and prevent relative axial displacement between the insert and the outer body. Appeal Br. 11-13. REJECTIONS 1. The Examiner rejects claims 1, 2, 5-7, 9, 11-15, and 20 under 35 U.S.C. § 103(a) as unpatentable over Dougherty2 in view of Matsui. 3 2. The Examiner rejects claims 16, 17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Dougherty in view of Scharpf.4 3. The Examiner rejects claims 21 and 22 under 35 U.S.C. § 103(a) as unpatentable over Dougherty in view of Scharpf and iviatsui. DISCUSSION Claim 1 The Examiner finds that Dougherty discloses a flanged bearing ring as claimed, except for projection having an undercut and two conical surfaces, one of which forms the undercut. Final Act. 2-3. The rejection relies on 2 Dougherty, US 6,485,188 Bl, iss. Nov. 26, 2002. 3 Matsui et al., US 5,079,825, iss. Jan. 14, 1992. 4 Scharpf, GB 1,510,546, pub. May 10, 1978. 3 Appeal2014-009932 Application 13/087,551 ivfatsui as disclosing two conical surfaces having the "same shape as the instant application." Final Act. 3--4. We are persuaded by Appellants' arguments that the Examiner erred in rejecting claim 1 as obvious over Dougherty and Matsui. In particular we agree that the projections disclosed in Matsui are not conical as claimed, and we agree that the Examiner has not otherwise adequately shown that the use of conical surfaces as claimed would have been obvious. The Examiner finds that Matsui discloses a composite structure formed of two materials connected together including a projection 7 with two conical surfaces as claimed. Final Act. 3--4 (citing Matsui, Figs. 1 b, 3, 5). More specifically, the Examiner indicates that Matsui's projection includes two conical surfaces because they have the "same shape as the instant application." Id. at 4. However, we agree with Appellants that while Matsui's projection may have the same cross-sectional shape as a cone, Matsui does not actually disclose that the projection is coned shaped and teaches that the shape relied upon is the cross-section of what may described as a pointed ridge. See Appeal Br. 4--5; Matsui, Fig. 8. In response to Appellants' arguments, the Examiner finds that the rejection relies on a combination of Matsui and Dougherty and "the resulting configuration will clearly have the conical surfaces recited by the claim since the structure of Matsui would extend around the device of Dougherty (revolving the cross-sectional shape of Matsui forms a conical surface like in the instant application)." Ans. 3. The Examiner also finds "Matsui discloses the same general shape for a projection" and that one of ordinary skill in the art would have the ability and knowledge to substitute between different shapes of locking tab and projection configurations such that "[ w ]hen the 4 Appeal2014-009932 Application 13/087,551 shape of ivfatsui is applied to the tab/projection of Dougherty the resulting device will have the claimed conical surfaces." Id. at 4. We are not persuaded that these arguments adequately support the conclusion that it would have been obvious to use an insert having projections shaped as claimed. Regarding the Examiner's finding that revolving the cross-sectional shape would result in a conical surface, the Examiner has not provided any reason why one of ordinary skill would have found it obvious to take Matsui' s elongated flat composite structure and rotate it such that a projection is created with two conical surfaces as claimed. Further, we are not persuaded that Matsui's pointed ridge projections disclose the same "general shape" as a projection with two conical surfaces as claimed. Because the Examiner has not shown that the claimed projection shape was known in the art, we find that the Examiner has not adequately supported the conclusion that one of ordinary skill in the art would have the knowledge and ability to substitute between different shapes to arrive at a device having a projection with the claimed conical surfaces. For these reasons, on the record before us, we do not sustain the rejection of claim 1. We also do not sustain the rejection of claims 2, 5-7, 9, 11-15 and 20 for the same reasons. Claim 16 With respect to claim 16, the Examiner finds that Dougherty discloses a bearing ring as claimed except that Dougherty does not disclose that the insert and outer body have equal axial lengths. Final Act. 6-7. The Examiner relies on Scharpf as teaching a bearing member with an insert and an axial length that are equal in length. Id. at 7. The Examiner concludes 5 Appeal2014-009932 Application 13/087,551 that substituting between different lengths would provide a predictable result. Id. The Examiner further finds that it would have been obvious to modify Dougherty by lengthening the insert or shortening the outer member or a combination of both to achieve the claimed dimensions. Adv. Act. 2. Appellants argue that the proposed modifications of Dougherty would require cutting off parts of the outer hub or reducing their size, which would render Dougherty unsatisfactory for its intended purpose by sacrificing function and strength. Appeal Br. 7-8. Appellants also argue that lengthening the extent of the insert might be possible but would provide no benefit and "the record ... contains no reason for a person of ordinary skill in the art to make such a change." Id. at 8. Appellants further argue: Finally, the examiner asserts that a person of ordinary skill in the art would make one of the foregoing modifications to Dougherty based on the teachings of Scharpf. Scharpf teaches a hardened liner for an engine block cylinder. Scharpfs cylinder liner does not extend beyond the cylinder that it lines. The fact that a liner does not project out of the cylinder it lines will not lead a person of ordinary skill in the art to cut off part of Dougherty's hub R or extend Dougherty's raceway insert 132 to locations where there are no roller elements to support. Scharpf thus provides no suggestion to modify Dougherty as proposed in the rejection of claim 16. Appeal Br. 9. The Examiner responds that modifications to the size of Dougherty's components would be within the level of ordinary skill such that the outer portions or insert would be appropriately sized. Ans. 5---6. The Examiner also contends that lengthening the insert would "include an increased benefit based on the properties of the inner material." Id. at 6. The Examiner also finds that Scharpf need not provide an actual suggestion for the modification 6 Appeal2014-009932 Application 13/087,551 proposed and Scharpf is used to "demonstrate[] that the inner and outer member of a composite member can be made the same length." Id. at 6-7. We are persuaded of error in the rejection by Appellants' argument that "requiring unspecified changes to unspecified components in Dougherty, while providing no reason for making such changes, cannot properly be characterized as obvious." Reply Br. 2. While Scharpf need not provide a teaching, suggestion, or motivation to support the conclusion of obviousness, we are not persuaded that the Examiner has provided an adequate rationale for making the proposed combination. Specifically, we find that the Examiner's conclusion that one of ordinary skill in the art would have found it obvious to modify Dougherty based on Scharpf as a simple substitution of one known element for another that would do no more than yield predictable results is not supported by the record before us because the Examiner has not established that the art provides any teaching or suggestion, or that it would have otherwise been known or obvious to a person of ordinary skill in the art, to vary the axial length of bearing ring components or to make them equal to produce certain results. Based on the foregoing, we find that the Examiner erred in rejecting claim 16 as obvious over Dougherty and Scharpf. Accordingly, we do not sustain the rejection of claim 16. We also do not sustain the rejection of dependent claims 17 and 19 for the same reasons. Finally, with respect to claims 21 and 22, the Examiner has not cited to any portion of Matsui that cures the deficiency in the rejection of claim 16. Accordingly, we also do not sustain the rejection of claims 21 and 22. 7 Appeal2014-009932 Application 13/087,551 CONCLUSION For the reasons set forth above, we reverse the rejections of claims 1, 2, 5-7, 9, 11-17, and 19-22. REVERSED 8 Copy with citationCopy as parenthetical citation