Ex Parte Winkler

Board of Patent Appeals and Interferences

Dec 15, 2009

10484831 (B.P.A.I. Dec. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte INA SCHAEFFLER KG
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Appeal 2009-006731
Application 10/484,831
Technology Center 3600
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Decided: December 15, 2009
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Before RICHARD E. SCHAFER, JAMESON LEE, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, INA
SCHAEFFLER KG (“ISK”), under 35 U.S.C. § 134(a) from a final rejection
of claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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References Relied on by the Examiner
Church 2,022,618 Nov. 26, 1935
Hofmann et al. (“Hoffman”) 4,398,775 Aug. 16, 1983
Hupfer et al. (“Hupfer”) 5,044,787 Sep. 3, 1991
Vignotto et al. (“Vignotto”) US 2002/0054722 May 9, 2002

The Rejections on Appeal
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Hofmann and Church.
The Examiner rejected claims 1-3 under 35 U.S.C. § 103(a) as
unpatentable over Hofmann, Church, and Vignotto.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Hofmann, Church, Vignotto, and Hupfer.

The Invention
The invention relates to a bearing arrangement of a gearwheel that
rotates on a shaft of a mechanical gearwheel transmission of an automotive
vehicle. (Spec. 1:1-5.) The gearwheel is coupled to the shaft via a pair of
roller crown rings that include cylindrical rolling elements separated by a
central cage portion. (Id. at 2:1-5.) The cage portion includes at least one
projection that engages a groove in the hub of the gearwheel and maintains
the gearwheel and cylindrical crown rings as a single unit during mounting.
(Id. at 2:6-11.)
Claim 1 is reproduced below (Br. 8, Claims App’x.):
A mechanical gearwheel transmission of an automotive
vehicle, comprising a gearwheel that rotates loosely on a shaft and is
coupled through a coupling element to the shaft, cylindrical rolling
elements being arranged radially between an inner raceway associated
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to the shaft and an outer raceway associated to a hub of the gearwheel,
wherein the gearwheel is mounted through radially outward oriented
projections engaged into a groove to two spaced apart roller crown
rings comprising cylindrical rolling elements and cages which
comprise radially outward oriented projections of the cage which
engage into a groove in the gearwheel arranged between the outer
raceways of the roller crown rings in a radially inward pointing center
flange of the gearwheel.
B. ISSUES
1. Has ISK shown that the Examiner erred in determining that a
person of ordinary skill in the art would have had adequate reason to
combine the teachings of Hofmann and Church?
2. Has ISK shown that the Examiner erred in determining that a
person of ordinary skill in the art would have had adequate reason to
combine the teachings of Hofmann, Church, and Vignotto?
3. Has ISK shown that the Examiner incorrectly determined that
the prior art satisfies all the requirements of ISK’s claims?
C. FINDINGS OF FACT
1. Hofmann discloses an improved bearing arrangement that
remains assembled as a unit prior to mounting or demounting of the bearing.
(Hofmann 2:5-10.)
2. The benefit of Hofmann’s bearing arrangement is that even
when the bearing is separated from other mounting structures, the bearing
components remain connected and are prevented from being inadvertently
mislaid. (Id. at 3:60-63.)
3. Hofmann does not disclose that its bearing arrangement
includes a gearwheel and is incorporated in a mechanical gearwheel
transmission of an automotive vehicle.
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4. Hofmann also does not disclose that roller elements of its
bearing arrangement are separated by multiple cages. Each of Hofmann’s
embodiments shows a single cage joining its roller elements. (Hofmann,
elements 6, 14, and 24; Figs. 1-3.)
5. Church generally discloses a gearwheel transmission system
that incorporates bearing assemblies and includes gearwheels associated
with the bearing assemblies. (Church p. 1, col. 1, l. 48 – col. 2, l. 30.)
6. Vignotto discloses a bearing unit in which cylindrical rollers
12A and 12B are separated by a pair of cages 13A and 13B. (Vignotto 1:¶
0017.)
D. PRINCIPLES OF LAW
A prior art reference must be considered for everything it teaches by
way of technology and is not limited to the particular invention it is
describing and attempting to protect. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985).
A person of ordinary skill is also a person of ordinary creativity, not
an automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
E. ANALYSIS
The Examiner rejected (1) claim 5 as unpatentable over Hofmann and
Church, (2) claims 1-3 over Hofmann, Church, and Vignotto, and (3) claim
4 as unpatentable over Hofmann, Church, Vignotto, and Hupfer.
Claim 5
Turning first to claim 5, the Examiner found that Hofmann discloses a
bearing arrangement substantially as described in the claim including a cage
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that separates a pair of cylindrical rolling elements and having a pair of
radially outward oriented projections. (Ans. 7:7-17.) The Examiner found
that Hoffmann does not disclose that its bearing arrangement is part of a
mechanical gearwheel transmission of an automotive vehicle. The Examiner
also found that Hofmann lacks a gearwheel. (Id. at 7:18-20.) To account for
those missing features, the Examiner pointed to Church as disclosing a
mechanical gearwheel transmission that includes a bearing arrangement with
a gearwheel. (Id. at 8:1-5.) The Examiner reasoned that it would have been
obvious to a person of ordinary skill in the art to implement Hofmann’s
bearing system in the gearwheel transmission environment disclosed in
Church thereby associating a gearwheel with that bearing system as required
by claim 5. (Id. at 8:7-11.)
ISK challenges the Examiner’s obviousness determination but has not
set forth a persuasive argument. ISK first argues that the Examiner has
characterized Hoffmann as disclosing a mechanical gearwheel transmission.
That argument is misdirected. The Examiner did not rely on Hofmann as
disclosing such a transmission. That is a feature that the Examiner found
lacking in Hofmann. The Examiner pointed to Church as teaching the use of
a bearing arrangement in a gearwheel transmission system.
ISK also contends that a person with ordinary skill in the art would
have no incentive to combine the teachings of Hofmann and Church. The
basis of that contention, however, is not adequately explained. ISK simply
describes the teachings of Hofmann and then summarily concludes that
those teachings would not have been combined with Church by one with
ordinary skill in the art. (Br. 5:11-18.) The contention is unpersuasive.
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Hofmann discloses an improved bearing arrangement that remains
assembled as a unit prior to mounting or demounting of the bearing.
(Hofmann 2:5-10.) The benefit of the bearing arrangement is that even
when the bearing is separated from other mounting structures, the bearing
components remain connected and are prevented from being inadvertently
mislaid. (Id. at 3:60-63.) Church generally discloses a gearwheel
transmission system that incorporates bearing assemblies associated with
gearwheels. (Church p. 1, col. 1, l. 48 – col. 2, l. 30.) A person of ordinary
skill in the art would have readily appreciated that the improved bearing
assembly of Hofmann would also provide the above-noted benefit when
implemented in Church’s gearwheel transmission system. It is not explained
by ISK why one with ordinary skill in the art would not use the improved
bearing arrangement of Hofmann in a gearwheel transmission system which
uses a bearing assembly.
ISK also contends that even if the teachings of Hofmann and Church
are combined “no assembly corresponding to that of the invention with
gearwheel and crown races is formed whose components are inseparably
retained on one another.” (Br. 6:7-9.)
That contention is misplaced. ISK’s claim does not require
components that are “inseparably retained.” In any event, even if that
relationship is required by the claim, as noted above, the configuration of
Hofmann’s bearing assembly provides that its components remain
assembled to one another even when the bearing is removed from its
mountings. That is, the disclosed benefit of Hofmann’s bearing assembly is
that its bearing components remain inseparably retained as much as it is so
for ISK’s disclosed embodiments. ISK does not explain why that benefit
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would not be maintained when the bearing is implemented in a gearwheel
transmission system, such as that of Church.
For the foregoing reasons, we sustain the rejection of claim 5 as
unpatentable over Hofmann and Church.
Claims 1-4
The Examiner rejected claims 1-3 as unpatentable over Hofmann,
Church, and Vignotto and rejected claim 4 as unpatentable over Hofmann,
Church, Vignotto, and Hupfer. Claims 1-4 are argued collectively based on
features of independent claim 1. Claim 1 is similar in scope to claim 5 but
requires multiple cages joining the cylindrical rolling elements rather than a
single cage. Hofmann discloses a single cage that joins its cylindrical rolling
elements. To account for multiple cages, the Examiner turned to Vignotto.
Vignotto discloses a bearing unit in which cylindrical rollers 12A and
12B are separated by a pair of cages 13A and 13B. (Vignotto 1:¶ 0017.)
The Examiner determined that one of ordinary skill in the art would have
recognized that the multiple cage configuration of one bearing, as in
Vignotto, may be substituted for a single cage configuration of another
bearing, as in Hofmann. (Ans. 11:4-13.)
ISK attacks the Examiner’s rejection by focusing on the combination
of Vignotto and Church. According to ISK, those references cannot be
combined because Vignotto is directed to a wheel bearing while Church is
directed to a transmission bearing. (Br. 6:15-20.)
ISK’s argument is not persuasive. The Examiner relied on the
combined teaching of Hofmann, Church, and Vignotto in rejecting claim 1.
Each of those references discloses a bearing assembly. While the bearing
assembly of Vignotto’s invention is described as operating in one area of a
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vehicle, i.e., a wheel hub, the teachings of that reference are not disclosed as
being limited solely to that area. A prior art reference must be considered
for everything it teaches by way of technology and is not limited to the
particular invention it is describing and attempting to protect. EWP Corp.,
755 F.2d at 907. A person of ordinary skill is also a person of ordinary
creativity, not an automaton. KSR Int’l Co., 550 U.S. at 421.
Here, the level of ordinary skill in the bearing art is such that one with
ordinary skill would have recognized Vignotto as teaching that multiple
cages may be employed for joining the roller elements of a bearing in place
of a single cage, such as in Hofmann, that performs the joining function. A
person with ordinary skill and creativity would also have recognized that the
bearing assembly taught by Hofmann and Vignotto would adequately
operate as a bearing when implemented in another bearing environment,
such as Church’s gearwheel transmission system. ISK’s argument that the
teachings of the references cannot be combined simply because the bearings
of the references are used in different parts of a vehicle presumes little skill
and no creativity on the part of a person of ordinary skill. ISK does not
meaningfully explain why a skilled artisan familiar with the operation of
bearing assemblies would not have readily realized that the features of one
bearing assembly may be implemented into another assembly that
accomplishes a similar bearing function irrespective of the particular
environment in which each bearing is employed.
For the foregoing reasons, we sustain the rejection of claims 1-3 as
unpatentable over Hofmann, Church, and Vignotto and the rejection of claim
4 as unpatentable over Hofmann, Church, Vignotto, and Hupfer.
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F. CONCLUSION
1. ISK has not shown that the Examiner erred in determining that
a person of ordinary skill in the art would have had adequate reason to
combine the teachings of Hofmann and Church.
2. ISK has not shown that the Examiner erred in determining that
a person of ordinary skill in the art would have had adequate reason to
combine the teachings of Hofmann, Church, and Vignotto.
3. ISK has not shown that the Examiner incorrectly determined
that the prior art satisfies all the requirements of ISK’s claims.
G. ORDER
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over Hofmann and Church is affirmed.
The rejection of claims 1-3 under 35 U.S.C. § 103(a) as unpatentable
over Hofmann, Church, and Vignotto is affirmed.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Hofmann, Church, Vignotto, and Hupfer is affirmed.
No time period for taking any subsequent action in connection with
the appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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