Ex Parte Wolf

Patent Trial and Appeal Board

Jul 12, 2016

12743150 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
121743, 150
81598 7590
Mark Ussai
SKF USA Inc.
890 Forty Foot Road
PO Box 352
Lansdale, PA 19446
FILING DATE FIRST NAMED INVENTOR
09/21/2010 Thomas Wolf
07114/2016
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.
2007P00173WOUS 1786
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
07/14/2016 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 THOMAS WOLF
Appeal2014-006993
Application 12/743,150
Technology Center 3600
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Wolf (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-7. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant's invention relates to a pinion shaft bearing unit. Claims 1
and 7 are independent. Claim 1 is illustrative of the claimed invention and is
reproduced below:
1. A bearing unit for supporting a pinion shaft, the pinion
shaft having at one end a pinion head bearing unit comprising:
Appeal2014-006993
Application 12/743,150
two bearings, a taper roller bearing and an angular ball
bearing, the two bearings having a common outer race ring and
each of the two bearings having a separate inner race ring, the
two inner race rings being spaced apart a distance along the
pinion shaft,
wherein the taper roller bearing has a contact angle within
a range of about 15° to about 20° so as to primarily absorb a
radial component of a force applied to the pinion head and the
angular ball bearing has a contact angle within a range of
between about 35° and about 45° so as to primarily absorb an
axial force component of the force on the pinion head and an
axial force induced by the taper roller bearing.
THE REJECTIONS
The Examiner has rejected:
(i) claims 1 and 7 under 35 U.S.C. § 103(a) as being unpatentable over
Huber1 (US 4,729,252, iss. Mar. 8, 1988), Leimann (WO 02/073051 A2,
pub. Sept. 19, 2002), and Kawamura (US 2007/0104403 Al, pub. May 10,
2007);
(ii) claim 2 under 35 U.S.C. § 103(a) as being unpatentable over
Huber, Leimann, Kawamura, and Smith (US 6,135,641, iss. Oct, 24, 2000);
(iii) claim 3 under 35 U.S.C. § 103(a) as being unpatentable over
Huber, Leimann, Kawamura, and Takemura (US 2006/0204157 Al, pub.
Sept. 14, 2006); and
The first named inventor for US 4,729,252 is correctly spelled as
"Huber." However, to maintain consistency with the spelling used by the
Examiner and Appellant, we use "Huber" to refer to this reference.
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Application 12/743,150
(iv) claims 5 and 6 under 35 U.S.C. §103(a) as being unpatentable
over Huber, Leimann, Kawamura, and Gradu (US 6,293,704 Bl, iss. Sept.
25, 2001).
Appellant canceled claim 4 in an Amendment filed subsequent to the
Final Office Action on October 2, 2013. That Amendment was entered in an
Advisory Action dated October 16, 2013. As such, the rejections ofnow-
canceled claim 4 that are present in the Final Office Action are effectively
moot in view of the cancellation of claim 4, notwithstanding that the
Examiner's Answer does not identify the rejections as having been
withdrawn.
The Final Action additionally includes what is identified as a statutory
double patenting rejection under 35 U.S.C. § 101 of claims 1 and 7 as being
drawn to identical subject matter. Final Act. 8-9. The Examiner's Answer
appears to indicate that only the rejections under 35 U.S.C. § 103(a) are
maintained, notwithstanding that no explicit withdrawal of the § 101
rejection is present. Ans. 2 ("The following ground(s) of rejection are
applicable to the appealed claims," followed by a discussion of only the
§ 103 rejections). Given that double patenting rejections are not appropriate
for claims within the same application, we will treat the rejection as being
withdrawn. The section of the Final Action in which this rejection was
made also includes an objection under 37 C.F.R. § 1.75 as to claims 1 and 7
being substantial duplicates. Final Act. 9. To the extent that the Examiner
has maintained this objection, review thereof is a petitionable matter that is
not within the jurisdiction of the Board.
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ANALYSIS
Claims 1 and 7--0bviousness--Huber/Leimann/Kawamura
Claim 1 recites, in part,
wherein the taper roller bearing has a contact angle within
a range of about 15° to about 20° so as to primarily absorb a
radial component of a force applied to the pinion head and the
angular ball bearing has a contact angle within a range of
between about 35° and about 45° so as to primarily absorb an
axial force component of the force on the pinion head and an
axial force induced by the taper roller bearing.
The Examiner finds that Huber discloses a taper roller bearing 13
having a contact angle and an angular ball bearing 12 having a contact angle,
but does not disclose a value or range of values for these contact angles.
Final Act. 3--4 (citing Huber, Figs. 1 and 2, with lines 21 and 26 of Fig. 2
denoting the contact angle lines). The Examiner relies on Leimann as
teaching "a contact angle in a taper roller bearing that is less than 30 degrees
(see abstract), preferably between 10 and 20 degrees (see page 3, 11. 4--5)."
Id. The Examiner concludes that it would have been obvious at the time of
the invention "to modify Huber and select a contact angle in the range of
about 15° to about 20°, as taught by Leimann, for the purpose of providing a
tapered bearing that is suitable for use in radially directed high load
conditions." Id. at 4 (citing Leimann, p. 4, 1. 25-p. 5, 1. 4). The Examiner
then relies on Kawamura as teaching "a contact angle in an angular contact
ball bearing that is in the range of about 35° and about 45°." Id. (citing
Kawamura,i-f 11 ). The Examiner concludes that it also would have been
obvious "to modify Huber and set the contact angle for the angular contact
ball bearing in the range of about 35° and about 45°, as taught by
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Application 12/743,150
Kawamura, for the purpose of providing an angular contact ball bearing with
a large load carrying capacity to an axial load." Id.
Appellant asserts that, "without impermissible hindsight reliance on
the present disclosure, there is nothing in Huber, Leimann or Kawamura that
would lead a person of ordinary skill in the art to modify Huber to produce
the claimed invention." Appeal Br. 3. Appellant argues that "Leimann is
structurally different from Huber and is directed to a problem not present in
Huber," and that the Examiner has not "relate[ d] a load carrying capacity of
Kawamura to a load carrying capacity of Huber," that would "provide[s] any
reason to change Huber based on Kawamura." Id. at 4--5. Appellant thus
argues that there is no proper reason for modifying Huber and that the reason
provided by the Examiner, namely, for the purpose of providing a tapered
bearing that is suitable for use in radially directed high load conditions, "is
essentially meaningless," because the Examiner fails to "explain[] what
makes a particular bearing 'suitable' for any use, and nothing in the record
allows the meaning of 'high load conditions' to be determined relative to
whatever conditions are experienced in Huber." Id. at 4.
In the Answer, the Examiner responds that "the rejection takes into
account knowledge that was within the level of ordinary skill in the art at the
time of the claimed invention." Ans. 2-3, citing In re McLaughlin, 443 F.2d
1392 (CCPA 1971). The Examiner also asserts that the reasoning for the
modification is proper, because "both Leimann and Kawamura provide
reasoning why the claimed ranges are desirable in the particular type of
bearing." Id. at 3.
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In reply, Appellant asserts that "there is no reason to think that contact
angles that are desirable for 'a particular type of bearing' are also desirable
for a bearing like the one disclosed in Huber, one which combines two
bearing types on a common race." Reply Br. 2. Appellant argues that,
"[a]ddressing the secondary references individually does not show how their
teachings can be used together in Huber." Id.
Appellant's argument with respect to the rejection being based on
impermissible hindsight is not persuasive. Leimann discloses how to orient
a taper bearing in order to accommodate a high load in the radial direction
(high radial stiffness). See Leimann, p. 4, 1. 25-p. 5, 1. 4. Kawamura
discloses how to orient a ball bearing in order to increase a load carrying
capacity to an axial load (increased axial stiffness). See Kawamura i-f 11.
One of ordinary skill in the art would readily see the applicability of these
teachings to the Huber bearing which includes both a taper roller bearing 13
and an angular ball bearing 12. Moreover, the Supreme Court has explicitly
held that it is error to require that the prior art address exactly the problem
faced and addressed by an inventor, in noting that, "familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle." KSR Int'! v. Teleflex Inc., 550 U.S. 398, 420
(2007).
Although the Examiner's rationale discussed above is sufficient to
establish the unpatentability of claim 1, the Examiner further considers that,
notwithstanding "the prior art demonstrating that the specified angles were
known at the time of filing," in addition, "it has been held that where the
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general conditions of a claim are disclosed in the prior art, discovering the
optimum or workable ranges involves only routine skill in the art." Final
Act. 5 (citing In re Aller, 105 USPQ 233 (CCPA 1955)).
Appellant argues that the Examiner's reliance on In re Aller for the
proposition that "'where the general conditions of a claim are disclosed in
the prior art, discovering the optimum ranges involves only routine skill in
the art,"' is improper, because "there is nothing in the present record that
shows what it means to optimize Huber's bearing or the particular
application the proposed modification optimizes for." Appeal Br. 5; see also
Reply Br. 2. Appellant asserts that "[ n ]othing in the record, for example,
suggests any quality or characteristic of the bearing that needs to be
maximized or minimized or optimized like the reaction yield in Aller." Id. at
6. Appellant argues that moreover, "[t]he contact angles of two different
roller elements must be considered when modifying a bearing as claimed,
and nothing in the record suggests that the contact angles of a pair of roller
elements, spherical and taper, sharing a common race is recognized as a
result-effective variable." Id.
We are also unpersuaded by this argument. As the Examiner correctly
notes, although the references do not explicitly disclose that "changing these
variables would lead to an 'optimization' one of ordinary skill in the art
understands that changing the load bearing capacity to a particular type of
load is indeed optimization of the bearing." Ans. 6. As the Examiner also
correctly notes, Kawamura discloses that, "the contact angle is adjusted to
change load carrying capacity," and as such, "adjusting the capacity for a
particular load is indeed optimization." Id. (citing Kawamura, i-f 11 ). Huber
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also recognizes that a change in contact angles affects bending (load on the
shaft). See Huber, col. 3, 11. 44--54, wherein a change in the length "a"
changes the contact angle of lines 21, 26; see also Final Act. 3. Moreover, at
least the embodiment of Figure 9 of Kawamura uses a common race, and
Appellant does not adequately explain why adjusting multiple contact angles
in a common race would be beyond the abilities of one of ordinary skill in
the art. See Kawamura ,-r 68; Fig. 9. For these reasons, we are not persuaded
that the Examiner's citation to In re Aller is improper. Therefore, we sustain
the rejection of claim 1 as being unpatentable over Huber, Leimann, and
Kawamura.
Appellant does not separately argue claim 7 and rather, asserts that,
"[i]ndependent claim 7 is submitted to be allowable for at least the same
reasons provided above in connection with claim 1." Appeal Br. 6. Thus,
we likewise sustain the rejection of claim 7 as being unpatentable over
Huber, Leimann, and Kawamura.
Claim 2--0bviousness--Huber/Leimann/Kawamura/Smith
Claims 5 and 6--0bviousness--Huber/Leimann/Kawamura/Gradu
Appellant does not provide separate arguments for the patentability of
claims 2, 5, and 6, and rather, relies on the same arguments provided for
claim 1. See Appeal Br. 6-8. Accordingly, for the same reasons discussed
supra with respect to claim 1, the rejection of claim 2 and the rejection of
claims 5 and 6 is sustained.
Claim 3--0bviousness--Huber/Leimann/Kawamura/Takemura
Claim 3 recites, in part, that the rollers of the taper roller bearing are
formed having a logarithmic profile for reducing edge pressure.
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The Examiner relies on Takemura as teaching "rolling elements,
including tapered rollers (see paragraph 0071 ), can be provided with a
logarithmic profile (see paragraph 0013) for the purpose of preventing
generation of an edge load (see paragraph 0013)." Final Act. 6. The
Examiner concludes that, "[i]t would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify Huber
and include tapered rollers with a logarithmic profile, as taught by
Takemura, for the purpose of preventing generation of an edge load." Id.
Appellant asserts that "[ e ]dge load is apparently a problem in
continuously variable belt transmissions, and Takemura thus suggests the
use of a logarithmic crowning to address this problem," but that "nothing in
the record suggests that edge load is a problem in a shaft bearing of a
machine element like the one disclosed in Huber." Appeal Br. 7. Appellant
thus asserts that it would not have been "obvious to modify Huber 'for the
purpose of preventing generating of an edge load' unless there is some
reason to think edge loads a) occur in Huber and b) cause problems in
Huber." Id. As such, Appellant asserts that, "[a] proper reason for
modifying Huber, Leimann and Kawamura based on Takemura has not been
provided, and claim 3 is submitted to further distinguish over the art of
record for this reason." Id.
In the Answer, the Examiner responds that, "[t]he primary reference
does not need to recognize the same particular problem of a teaching
reference in a rejection under 35 USC 103." Ans. 7. The Examiner takes
the position that, because Takemura discloses that logarithmic profiles were
known, "one of ordinary skill in the art has the ability of taking this teaching
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and modifying the device of Huber to provide the known benefits of the
logarithmic profile regardless of the fact that Huber may or may not [have]
considered a problem that could be solved using the profile." Id.
In reply, Appellant asserts that, "the fact that logarithmic profiles were
'known at the time of filing' does not make it obvious to use a logarithmic
profile in every environment." Reply Br. 3. Appellant argues that "[a]
logarithmic profile may provide 'known benefits' when supporting a belt in
Takemura's transmission, but there is no belt that needs supporting in Huber
and thus no reason to modify Huber based on Takemura." Id. Appellant
thus concludes that there is no "reason to use taper roller bearings having a
logarithmic profile in Huber, and the Examiner's Answer does not contain a
line of reasoning to justify this change to Huber." Id.
We do not find Appellant's arguments to be persuasive. Although the
invention of Takemura may be directed to roller bearings for use with a
continuously variable belt, the bearings of Takemura support a shaft upon
which the belt rotates (see Takemura, paragraphs 3---6) and, moreover, the
portion of Takemura upon which the Examiner relies, namely, paragraph 13,
discloses that, "in the utilization of a cylindrical roller bearing, generally, in
order to prevent the generation of edge load, a crowning is applied to a
raceway surface of a cylindrical roller or raceway surfaces of bearing rings."
Takemura i-f 13 (emphasis added). From this, we do not understand the
teachings of Takemura to be limited to bearings for continuously variable
belts, nor inapplicable to shafts in general. Moreover, in KSR, the Supreme
Court held that "if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
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similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. at 417. The Examiner has presented evidence and reasoning that
the Huber device would be improved by the proposed modification, and
Appellant does not contend that the implementation of the modification
would be beyond the abilities of one of ordinary skill in the art.
Accordingly, we sustain the rejection of claim 3 as being unpatentable
over Huber, Leimann, Kawamura, and Takemura.
DECISION
The rejections of claims 1-3 and 5-7 under 35 U.S.C. § 103(a) are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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