Ex parte WEST

Board of Patent Appeals and Interferences

Apr 26, 2000

08512656 (B.P.A.I. Apr. 26, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WILLIAM A. WEST
_____________
Appeal No. 1999-1785
Application 08/512,656
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT, and STAAB, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 11, 12, 15 and 17 through 20 as amended
subsequent to the final rejection in a paper filed October 14,
Appeal No. 1999-1785
Application No. 08/512,656
2
1997 (Paper No. 10). Claims 21 through 34 are withdrawn from
consideration as drawn to non-elected inventions. Claims 1
through 9 and 16 are allowed. Claims 10, 13 and 14 have been
canceled.

BACKGROUND
The appellant's invention relates to an improved bearing
assembly. An understanding of the invention can be derived
from a reading of exemplary claim 11, which appears as
follows:
11. An improved bearing comprising:
(1) an internal member;
(2) an external member disposed upon said internal
member, said external member and said internal
member forming a seat for at least one seal member
between said external member and said internal
member for sealing between said external member and
said internal member, at least a portion of one of
said members extending beyond at least a portion of
the other of said members thereby forming said seat.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Appeal No. 1999-1785
Application No. 08/512,656
Claim 13 also stands rejected under 35 U.S.C. § 102(b)1
as being clearly anticipated by Bechman, however, we note that
claim 13 has been canceled by appellant in an amendment
subsequent to the final rejection (Paper No. 10, filed October
14, 1997).
3
Bechman 2,349,898 May 30,
1944
Totten 4,979,722 Dec. 25,
1990
Claims 11, 12, 15, 18 and 19 stand rejected under 35
U.S.C. § 102(b) as being clearly anticipated by Totten.
Claims 11, 12, 15, 18 and 20 stand rejected under 35
U.S.C. 102(b) as being clearly anticipated by Bechman. 1
Claim 17 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Totten.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 16, mailed June 25, 1998) for the examiner's complete
reasoning in support of the rejections, and to the appellant’s
Appeal No. 1999-1785
Application No. 08/512,656
Our review of the application file reveals that the2
specification, claims and drawings are replete with errors,
too numerous to list in total. Examples of such errors are:
(1) Claim 1 contains improper capital letters in lines 3, 4
and 6, (2) on page 5, line 10 --with-- is misspelled, (3) the
description of Figures 6 and 6A found on page 7 of the
specification refers to reference numerals 46 and 57, however,
these reference numerals are not shown on the appropriate
drawing figures, (4) reference numerals 49 and 49A shown at
the top of Figure 6 appear to be inappropriately placed, (5)
Figure 5C has reference numerals that do not match those found
in the description of the figure at the bottom of page 8 in
the specification, etc. These issues should be addressed by
the examiner and the appellant upon further prosecution of the
application.
4
brief (Paper No. 15, filed June 2, 1998) for the arguments
thereagainst.
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 references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the2
determinations which follow.
Initially, we observe that the brief contains arguments
Appeal No. 1999-1785
Application No. 08/512,656
5
concerning the propriety of the examiner's final rejection.
In that regard, appellant argues that the finality of the
rejection was premature, and that the examiner failed to
sufficiently explain the pertinency of the cited references to
the claims on appeal. We must point out, however, that under
35 U.S.C. § 134 and 37 CFR § 1.191, appeals to the Board of
Patent Appeals and Interferences are taken from the decision
of the primary examiner to reject claims. We exercise no
general supervisory power over the examining corps, and
decisions of primary examiners to issue final rejections and
the completeness of those rejections are not subject to our
review. See MPEP §§ 706.07(c), 1002.02© and 1201 (7th ed.,
Jul. 1998). Thus, the relief sought by the appellant would
have properly been presented by a petition to the Commissioner
under 37 CFR § 1.181. Accordingly, we will not further
comment on or consider this issue.
The examiner states (answer, page 2) that “[t]he
rejection of claims 11, 12, 15 and 18-20 stand or fall
together because appellant’s brief does not include a
statement that this grouping of claims does not stand or fall
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Application No. 08/512,656
6
together and reasons in support thereof.” However, we observe
that appellant has separately argued the patentability of
dependent claims 12, 15 and 18 through 20 apart from
independent claim 11 with a reasonable degree of specificity
(brief, pages 6-9). As a result of the foregoing, we will
treat claims 12, 15 and 18 through 20 separately, and not in
the manner stated by the examiner as standing or falling on
the limitations of claim 11.
We turn first to the examiner’s rejection of claim 11
under 35 U.S.C. § 102(b) as being clearly anticipated by
Totten. Totten discloses (e.g., in Fig. 3) a butterfly
actuator having a bearing assembly comprising an internal
member 88, and an external member 92 disposed upon the
internal member. The external member 92 and the internal
member 88 form a seat for at least one seal member 104 between
the external member and the internal member for sealing
between the external member and the internal member. At least
a portion of one of the members extends beyond at least a
portion of the other of the members thereby forming the seat.
The appellant argues that “the claimed invention does not
Appeal No. 1999-1785
Application No. 08/512,656
7
contain a groove for a seal as required by the Totten
reference and Totten accordingly does not anticipate
applicant’s invention claimed in twice-amended Claim 11”
(brief, page 6). We do not agree. A prior art reference
anticipates the subject of a claim when the reference
discloses every feature of the claimed invention, either
explicitly or inherently (see Hazani v. Int'l Trade Comm'n,
126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and
RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984)); however, the
law of anticipation does not require that the reference teach
what the appellants are claiming, but only that the claims on
appeal "read on" something disclosed in the reference (see
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026
(1984)). Appellant’s claim 11 on appeal merely requires that
the external member and the internal member form a “seat” for
the at least one seal member. We observe that appellant’s
groove 59 in external member 52" (Figure 6C) defines, at least
in part, a recess or “seat” for seal member 54. Similarly,
Totten shows grooves 166, 168 which at least in part define
Appeal No. 1999-1785
Application No. 08/512,656
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the recess or “seat” which receives seals 104. Therefore,
because Totten shows a “seat” as broadly claimed and discloses
each and every element of claim 11, we will thus sustain the
examiner’s rejection of this claim under 35 U.S.C. § 102(b).
In looking at the examiner’s rejection of Claim 12 on
appeal under 35 U.S.C. § 102(b) as being clearly anticipated
by Totten, we see that dependent claim 12 expressly requires
that the external member define at least one groove for
receiving the seal member. The appellant’s argument that
“[n]o such groove between an external member and an internal
member appears in Totten” (brief, page 7) is not understood
and would seem to be directly in conflict with appellant’s
argument (brief, page 6) regarding Totten and its use against
independent claim 11 on appeal. As we stated above, Totten
clearly shows grooves 166, 168 in external member 92 for
receiving seal member 104. Thus, we will sustain the
examiner’s rejection of claim 12 under 35 U.S.C. § 102(b) as
being clearly anticipated by Totten.
We turn to the rejection based on Totten under 35 U.S.C.
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Application No. 08/512,656
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§ 102(b) of claims 15 and 18. We see that claims 15 and 18
require that a seal member be disposed in the seat, and that
the internal member and external members be “fitted together”,
respectively. Appellant’s argument (brief, page 7), with
respect to each of these claims, is simply that no such
element appears in, or is disclosed in Totten. Again, it is
quite clear to us that Totten does indeed show a seal 104
disposed in a seat defined between the internal and external
members, and the internal member 88 being “fitted together”
with external member 92 in the assembled actuator depicted in
Figure 3 of the patent. We will, therefore, sustain the
examiner’s rejection of claims 15 and 18 under 35 U.S.C. §
102(b) as being clearly anticipated by Totten.
Looking at the rejection of claim 19 under 35 U.S.C.
§ 102(b) as being clearly anticipated by Totten, we see that
claim 19 recites that the “internal member defines an internal
bore.” The patent to Totten shows an internal member 88 that
appears to be solid, and thus includes no such internal bore.
Accordingly, we must agree with appellant that “an internal
bore in the internal member . . . . does not appear in Totten”
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Application No. 08/512,656
10
(brief, page 7). Since each and every element of appellant’s
claim 19 is not shown, either explicitly or inherently in
Totten, the examiner’s rejection of claim 19 under 35 U.S.C. §
102(b) based on Totten will not be sustained.
We turn now to the examiner’s rejection of claim 11 under
35 U.S.C. § 102(b) as being clearly anticipated by Bechman.
We find that Bechman discloses (Figure 2) a track roller
having a lubricated bearing assembly with an internal member
18, and an external member 19 disposed upon the internal
member 18. The external member and the internal member form a
seat for at least one seal member 25 between the external
member and the internal member, for sealing between the
external member 19 and the internal member 18. At least a
portion of one of the members extends beyond at least a
portion of the other of the members thereby forming the seat.
We are unpersuaded by appellant’s arguments (brief, page 8)
regarding Bechman. These arguments are not well taken, as
they are directed to the lubrication fitting shown in Figure 4
of Bechman, and do not address the disclosed features of the
bearing assembly noted above. Since Bechman discloses each
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Application No. 08/512,656
11
and every feature of claim 11, we will thus sustain the
examiner’s rejection of claim 11 under 35 U.S.C.
§ 102(b) under Bechman.
We next consider the examiner’s rejection of claims 12,
15, and 18 under 35 U.S.C. § 102(b) as being clearly
anticipated by Bechman. In that regard, we observe that
Bechman additionally discloses external member 19 defining at
least one groove for receiving the seal member 25 (appellant’s
claim 12), a seal member 25 disposed in the seat (appellant’s
claim 15), and an internal member 18 and external member 19
fitted together (appellant’s claim 18). Appellant’s arguments
again do not properly address the issues at hand. Appellant’s
arguments are primarily directed to the lubrication fitting of
Figure 4, rather than the bearing assembly itself (Bechman,
Figure 2). As before, since each and every feature of
appellant’s claims 12, 15 and 18 are disclosed in Bechman we
will, therefore, sustain the examiner’s rejection of theses
claims under 35 U.S.C. § 102(b).
We next review the examiner’s rejection of claim 20 under
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Application No. 08/512,656
12
35 U.S.C. § 102(b) as being clearly anticipated by Bechman.
We note that claim 20 requires that the “internal member is
substantially solid.” This claim appears to be directed to
the embodiment of appellant’s invention seen in Figure 7 of
the application, where the internal member 32" is shown to be
a solid shaft. In looking at the bearing assembly of Bechman,
we see an internal member 18 having an internal pocket or
chamber 21. It appears to us that the internal member of
Bechman is not “substantially solid”, as required by
appellant’s claim 20 on appeal. We must agree with appellant
that a “substantially solid” internal member does not appear
in Bechman (brief, page 8). Since each and every feature of
appellant’s claim 20 is not explicitly or inherently shown in
Bechman, we will, therefore, not sustain the examiner’s
rejection of claim 20 under 35 U.S.C. § 102(b).
We next review the examiner’s rejection of claim 17 under
35 U.S.C. § 103(a) as being unpatentable over Totten. Claim
17 recites that:

said seal member includes a seal body and a seal lip
and wherein said seal body seats against said
Appeal No. 1999-1785
Application No. 08/512,656
The mere fact that the prior art structure could be3
modified does not make such a modification obvious unless the
prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir.1984).
13
internal member and said seal lip contacts said
external member.
The examiner determined that the bearing assembly of Totten
lacks a seal body seating against an internal member and a
seal lip contacting an external member and concluded that:
[i]t would have been obvious to one of ordinary
skill in the art at the time the invention was made
to have the lip portion contact the external member
and the body portion on the internal member as this
would have been an obvious variant to one of
ordinary skill in the art.
We do not agree. Essentially, it is the examiner’s position
that one of ordinary skill in the art would have found it
prima facie obvious to modify the Totten device without
evidence or prior art in support thereof. In the absence of
evidence or compelling argument in support thereof, however,
we are not persuaded that this would have been the case. In3
our view, the only suggestion for modifying Totten in the
Appeal No. 1999-1785
Application No. 08/512,656
In October, 1997, 37 CFR 1.196(b) was amended to permit4
this Board to enter a new ground of rejection against “any
pending claim”, including any claim previously allowed by the
examiner or indicated by the examiner to contain allowable
subject matter.
14
manner proposed by the examiner to meet the above-noted
limitations of appellant’s claim 17 stems from hindsight
knowledge derived from the appellant’s own disclosure. The
use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C. § 103 is, of course, impermissible.
See, for example, W. L. Gore and Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It follows that we
cannot sustain the examiner's rejection of claim 17 under
35 U.S.C. § 103(a) as being unpatentable over Totten.
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection against appellant’s claims
1, 2, 3, 4, 6, 16, 19 and 20.4
Claims 1, 2, 6 and 20 are rejected under 35 U.S.C. §
102(b) as being clearly anticipated by Totten. Having
previously discussed Totten, we further note that Totten
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Application No. 08/512,656
15
discloses a unitary butterfly actuator assembly 80, a journal
member 98 “disposed” upon substantially solid internal member
88, and an external member 92 “disposed” upon the journal
member 98. As noted before, external member 92 includes
grooves 166, 168 that in part define a seat between the
internal and external members for receiving seal member 104.
In view of the foregoing, it is our opinion that Totten shows
each and every element of the invention recited in appellant’s
claims 1, 2, 6 and 20.
Claims 1, 3, 4, 6 and 19 are rejected under 35 U.S.C.
§ 102(b) as being clearly anticipated by Bechman. Having
previously discussed Bechman, we further observe that Bechman
discloses a unitary assembly having a generally hollow
internal member 18 having channels and an internal bore or
chamber 21, a journal member 24 “disposed” on the internal
member, and an external member 19 “disposed” upon the journal
member 24. As noted supra, in our discussion of the
examiner’s rejections of claims 11 and 12, the external member
19 of Bechman defines a groove for receiving seal member 25.
In view of the foregoing, it is our opinion that Bechman shows
Appeal No. 1999-1785
Application No. 08/512,656
16
each and every feature of the invention recited in appellant’s
claims 1, 3, 4, 6 and 19.
Claim 16 is rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the appellant,
at the time the application was filed, had possession of the
claimed invention.
The written description requirement serves "to ensure
that the inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him; how the specification accomplishes this is not
material." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96
(CCPA 1976). In order to meet the written description
requirement, the appellant does not have to utilize any
particular form of disclosure to describe the subject matter
claimed, but "the description must clearly allow persons of
ordinary skill in the art to recognize that [he or she]
invented what is claimed." In re Gosteli, 872 F.2d 1008,
Appeal No. 1999-1785
Application No. 08/512,656
17
1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Put another way,
"the applicant must . . . convey with reasonable clarity to
those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention." Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117
(Fed. Cir. 1991). Finally, "[p]recisely how close the
original description must come to comply with the description
requirement of section 112 must be determined on a
case-by-case basis." Eiselstein v. Frank, 52 F.3d 1035, 1039,
34 USPQ2d 1467, 1470 (Fed. Cir. 1995) (quoting Vas-Cath, 935
F.2d at 1561, 19 USPQ2d at 1116).
With this as background, we conclude that there is no
evidence of record that appellant had possession of the
subject matter recited in claim 16 at the time of filing the
application. In particular, we can find no description in the
specification or showing in the drawings that would convey to
one of ordinary skill in this art that appellant was, as of
the filing date of the application, in possession of a seat
for a seal member wherein at least a portion of the seat is
beveled, and wherein the seal lip contacts the internal member
Appeal No. 1999-1785
Application No. 08/512,656
18
at the beveled portion. In that regard, we do not consider
that one of ordinary skill in the art would have viewed the
arcuate cutout in the internal member 31' seen in Figure 5C of
the application as providing a seat with a beveled portion.

CONCLUSION
To summarize, the decision of the examiner to reject
claims 19 and 20 under 35 U.S.C. § 102(b) is reversed, the
decision of the examiner to reject claim 17 under 35 U.S.C. §
103(a) is reversed and the decision of the examiner to reject
claims 11, 12, 15 and 18 under 35 U.S.C. § 102(b) is affirmed.
New rejections of claims 1, 2, 3, 4, 6, 19 and 20 under 35
U.S.C.
§ 102(b) have been added pursuant to the provisions of 37 CFR
§ 1.196(b), and a new rejection of claim 16 under 35 U.S.C.
§ 112, first paragraph, has also been added pursuant to the
provisions of 37 CFR § 1.196(b).
We AFFIRM-IN-PART and enter new grounds of rejection
pursuant to 37 CFR 1.196(b).
Appeal No. 1999-1785
Application No. 08/512,656
19
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains new grounds of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53, 131, 53,
197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that
“new grounds of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision. . . .
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
grounds of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
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Application No. 08/512,656
20
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and Interferences
upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §
141 or 145 with respect to the affirmed rejections, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejections
are overcome.
If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejections, including any timely
request for rehearing thereof.
Appeal No. 1999-1785
Application No. 08/512,656
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 1999-1785
Application No. 08/512,656
22
CEF:lmb
JOSEPH R. EVANNS
EVANNS AND WALSH
119 NORTH SAN VICENTE BOULEVARD #206
BEVERLY HILLS, CA 90211