Ex parte Wershe

Board of Patent Appeals and Interferences

Apr 24, 2001

08893890 (B.P.A.I. Apr. 24, 2001)

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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD WERSHE
____________
Appeal No. 2001-0090
Application No. 08/893,890
____________
ON BRIEF
____________
Before ABRAMS, NASE, and GONZALES, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection (Paper No. 8, mailed July 13, 1999) of claim 1. On
page 2 of the answer (Paper No. 14, mailed June 2, 2000), the
examiner allowed claims 7 to 12 and objected to claims 2, 3
and 6 as depending from a non-allowed claim. On page 5 of the
brief (Paper No. 11, filed March 20, 2000), the appellant
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Application No. 08/893,890
We view this as the appellant's acquiesce in the1
examiner's earlier determination (Paper No. 5, mailed November
5, 1999) that claims 4 and 5 were not readable on the elected
species of Figures 1-6.
provided that for purposes of this appeal, claims 4 and 5 are
assumed to be withdrawn. 1
We REVERSE.
BACKGROUND
The appellant's invention relates generally to improved
spacers for the bearing assemblies for mounting the wheels of
in-line roller skates (specification, p. 1). Claim 1 under
appeal reads as follows:
In a bearing spacer device for axially separating
ball bearings in a skate wheel hub, the device
comprising:
an generally cylindrical center portion having an
outer surface extending between first and second axially
opposite center portion ends and a central longitudinal
axis extending between the first and second center
portion ends; a pair of radial shoulders disposed at
the first and second center portion ends to abut and
axially space the individual ball bearings within the
skate wheel hub;
a central bore extending coaxially through the
center portion to receive an axle pin for mounting the
skate wheel to a skate;
the improvement comprising:
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Application No. 08/893,890
Ex parte Jepson, 1917 C.D. 62, 243 O.G. 525 (Ass't2
Comm'r Pat. 1917), incorporated into the rules as 37 CFR §
1.75(e).
a discontinuity formed in the outer surface of the
center portion.
The prior art of record relied upon by the examiner in
rejecting the appealed claims is:
Bescoby et al. (Bescoby) 4,896,975 Jan. 30,
1990
In addition, the examiner also relied upon the appellant's
admission of prior art set forth in the preamble of claim 1
since claim 1 is drafted as a Jepson type claim in which the2
preamble of the claim is an admission of prior art. Note, In
re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982). (Admitted
Prior Art)
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the Admitted Prior Art in view of Bescoby.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the final rejection and the
answer for the examiner's complete reasoning in support of the
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rejection, and to the brief for the appellant's arguments
thereagainst.
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Application No. 08/893,890
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. Upon
evaluation of all the evidence before us, it is our conclusion
that the evidence adduced by the examiner is insufficient to
establish a prima facie case of obviousness with respect to
claim 1 under appeal. Accordingly, we will not sustain the
examiner's rejection of claim 1 under 35 U.S.C. § 103. Our
reasoning for this determination follows.
The Admitted Prior Art clearly teaches all the
limitations of claim 1 except for "a discontinuity formed in
the outer surface of the center portion."
Bescoby's invention relates in particular to an apparatus
and method for providing a cooled bearing surface for a
ceramic shaft. Figure 1 perspectively shows a ceramic shaft
12 having a plurality of fins 14 extending radially outward
from a central portion thereof. A bearing runner 16 in the
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Application No. 08/893,890
shape of a thin cylindrical sleeve is mounted at the radially
outward ends of the fins 14, bearing runner 16 being axially
concentric with the ceramic shaft 12. Figure 2 shows a cross
sectional view of a turbomachine 20 which includes the ceramic
shaft 12, fins 14, and bearing runner 16 as an integral member
therein. The turbomachine 20 includes a turbine 22 and a
compressor 24 attached to opposite ends of the ceramic shaft
12, mounted within a housing 26 which includes a central body
28, a turbine scroll 30, and a compressor scroll 32. The
central body 28 contains a fluid bearing 34 mounted therein
and positioned radially outward from the bearing runner 16.
Annular cavities 36, 38 are defined within the central body at
opposite axial ends of the bearing runner 16.
Bescoby's turbomachine 20 operates on a flow of high
pressure fluid which is directed upon the turbine 22 which
extracts useful work therefrom. The turbine 22 in turn
drives the compressor 24 which pressurizes a fluid from a
first low pressure source to a higher pressure. Within the
central body 28 the fluid bearing 34 utilizes the rotation of
the shaft 12 and bearing runner 16 to produce a hydrodynamic
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Application No. 08/893,890
film of fluid between the fluid bearing 34 and the bearing
runner 16 to support the shaft 12.
Bescoby teaches that in order to provide a flow of
cooling fluid to the matrix of fins 14 as well as the fluid
bearings 34, the central body may include first, second and
third passageways
40, 42, 44. The first and third passageways 40, 44 are
connected via a conduit 48 to a source of pressurized air
which may be taken from downstream of the compressor 24. In
order to recirculate the process fluid, the second passageway
42 is connected to a second conduit 50 which returns the
process fluid to a low pressure location upstream of the
compressor 24. By this assembly, pressurized process fluid
flows into annular cavity 36, through the fins 14 to annular
cavity 38, thereby the fins 14 act as a heat exchanger,
reducing heat transfer to the bearing runner 16.
As set forth on page 3 of the final rejection, the
examiner applied the test for obviousness set forth in In re
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Application No. 08/893,890
The test for obviousness is what the combined teachings3
of the references would have suggested to one of ordinary
skill in the art.
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In3
applying that test, the examiner then determined that it would
have been obvious to a person having ordinary skill in the art
to provide the Admitted Prior Art's spacer with longitudinally
extending grooves in view of the teaching of Bescoby of doing
so for the purpose of cooling.
The appellant argues (brief, pp. 7-9) that the applied
prior art does not suggest the subject matter of claim 1. We
agree.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." Id. But it "cannot be established by combining
the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
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Application No. 08/893,890
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing a
discontinuity formed in the outer surface of the center
portion of the bearing spacer device (e.g., reduction in
weight, dissipates more heat) are not appreciated by the prior
art applied by the examiner. In fact, as correctly pointed
out by the appellant in the brief (p. 8), Bescoby does not
teach or suggest any discontinuity formed in the outer surface
of bearing runner 16.
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It is essential
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Application No. 08/893,890
that "the decisionmaker forget what he or she has been taught
. . . about the claimed invention and cast the mind back to
the time the invention was made . . . to occupy the mind of
one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted
wisdom in the art." Id. Since all the limitations of claim 1
are not taught or suggested by the applied prior art, we will
not sustain the 35 U.S.C. § 103 rejection of claim 1.
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CONCLUSION
To summarize, the decision of the examiner to reject
claim 1 under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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Application No. 08/893,890
STEVEN L. PERMUT
REISING ETHINGTON BARNARD & PERRY
PO BOX 4390
TROY, MI 48099-9998
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Application No. 08/893,890
JVN/jg