Ex Parte Zhong et al

Patent Trial and Appeal Board

Oct 22, 2012

10841209 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PING ZHONG and GABRIEL DAMON RUPERTUS
____________________

Appeal 2010-010264
Application 10/841,209
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, JAMES P. CALVE and
SCOTT A. DANIELS, Administrative Patent Judges.

DANIELS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-010264
Application 10/841,209
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
28-36. Claims 1-27 are canceled and claims 37-44 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ invention relates to a bearing assembly for a rotating
shaft, for example a rotating drive shaft of a large synchronous motor, and
more particularly to an insulation assembly which insulates the bearing
assembly from high and low frequency current. Spec. 14, Abstr. and Fig. 5.
Claim 28, reproduced below, is representative of the claimed subject
matter:
28. An apparatus comprising:
a bearing assembly configured to be positioned in a bearing
assembly opening of a bearing bracket of a rotating machine,
the bearing assembly including:
a rolling element bearing configured to surround a
shaft of the rotating machine, the rolling element bearing
having an inner bearing side, an opposite outer bearing side,
and an outer race that has a radial outer surface;
an inner cap having a portion facing the inner bearing
side;
an outer cap having a portion facing the outer bearing
side; and
an insulation assembly configured to substantially insulate
the rolling element bearing, the insulation assembly having:
a portion positioned between the inner bearing side of
the rolling element bearing and the inner cap that will always be
closer to the inner bearing side than will the inner cap;
a portion that separates the radial outer surface of the
outer race of the rolling element bearing from any other portion
of the apparatus; and
Appeal 2010-010264
Application 10/841,209
3
a portion positioned between the outer bearing side of the
rolling element bearing and the outer cap that will always be
closer to the outer bearing side than will the outer cap.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Libert
Cotton
Bramel
US 2,509,775
US 4,714,576
US 7,071,589 B2
May 30, 1950
Dec. 22, 1987
Jul. 4, 2006

REJECTIONS
The Examiner made the following rejections:
Claims 28-36 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Ans. 3.
Claims 28, 29, 31, 33, 35, and 36 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Libert. Ans. 3-4.
Claim 30 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Libert and Bramel. Ans. 5.
Claims 32 and 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Libert and Cotton. Ans. 6.

ANALYSIS
Claims 28-36 as indefinite
Where claim 28 is the only independent claim at issue, and claims 29-
36 depend either directly or indirectly from claim 28, the Examiner found
that the separate recitations of the term(s) “‘a portion’” in claim 28 are
indefinite because it is unclear whether these recitations “are referring to the
same portion or different portions of an insulation assembly.” Ans. 3. We
Appeal 2010-010264
Application 10/841,209
4
agree with Appellants that a person of ordinary skill in the art would
understand what is claimed when claim 28 is read in light of Appellants’
Specification which discloses that the insulation assembly 300 includes an
inner insulating ring 310, an outer insulating bushing 320 configured to
electrically insulate the bearing 130 by defining a portion 322 of bushing
320 circumferentially surrounding the outer race 134 of bearing 130, and
that additional portions of bushing 320 and ring 310 are disclosed as
positioned between the bearing 130 and the outer bearing cap 255 and the
inner bearing cap 260 respectively. See Spec. 13-14; Fig. 5 and Br. 3-4.
Additionally, claim 28 recites in appropriate antecedent form each “a
portion” as an independent element including appropriate functional and
structural distinctions from each of the other “a portion” elements. These
functional and structural distinctions are commensurate in scope with, and
fully supported by, Appellants’ Specification sections and Figure 5 noted
above. See Br. Clms. Appx. Thus, we cannot sustain the rejection of claims
28-36 as indefinite.
Claims 28-29, 31, 33 and 35-36 as being anticipated by Libert.
The Examiner found that Libert’s Figure 1 disclosed all the elements
of the claimed bearing assembly as recited in claim 28 including the
respective three “a portion” elements of the insulation assembly 300, more
specifically, (a) “a portion positioned between the inner bearing side [131]
of the rolling element bearing [130];” (b) “a portion (34) that separates the
radial outer surface of the outer race of the rolling element bearing from any
other portion of the apparatus”; and (c) “a portion positioned between the
outer bearing side of the rolling element bearing and the outer cap.” Ans. 4.
Emphasis Added. The Examiner also found that Libert discloses a seal 16
including the structural and positional limitations of the insulating structure
Appeal 2010-010264
Application 10/841,209
5
portion (a) noted above, “that will always be closer to the inner bearing side
than will the inner cap [because] (the right side of 16 will always be closer to
the inner bearing side than will the inner cap (the left side closer to 44)[)].”
Id. Similarly, the Examiner found that Libert’s seal 18 discloses the relevant
limitations relating to insulating structure portion (c) above, “that will
always be closer to the outer bearing side than will the outer cap (the left
side of 18 will always be closer to the outer bearing side than will the outer
cap (a portion of 12 that is located closer to 22.)[]” Id. Libert’s Figure 1
discloses two opposing seals 16 and 18 on either side of the rolling bearing
element 10, where seal 16 is generally located between the inner cap (plate
28) and bearing element 10 on one hand, and on the other hand seal 18 is
located generally between the outer cap (cover plate 12) and bearing element
10. Appellants’ annotated Figure 1 of Libert is reproduced below:
App
App
inner
that,
Br.
eal 2010-0
lication 10
Appellan
cap 28 w

[b
of
no
16
si
be
be
po
cl
w
7-8. Emph
10264
/841,209
ts’ annota
ith seal 16
]ecause pl
bearing 1
t meet th
will not
de of bear
cause plat
aring 10,
rtion C.[]
oser to the
ill plate 12
asis added
ted Figure
, and outer
ate 28 tou
0 (see arro
e claimed
always be
ing 10 th
e 12 touch
oil seal 1
That is, o
outer bea
.
.
6
1 of Libe
cap 12 w
ches the
w 1 abov
portion A
closer to
an will p
es the ou
8 does not
il seal 18
ring side
rt depicts b
ith seal 18
inner bear
e), oil seal
. That is
the inner
late 28. S
ter bearin
meet the
will not a
of bearing
earing ele
. Appellan
ing side
16 does
, oil seal
bearing
imilarly,
g side of
claimed
lways be
10 than

ment 10,
ts explain
Appeal 2010-010264
Application 10/841,209
7
We agree with Appellants that a portion of each of the inner cap 28
and outer cap 12 extends axially past the respective inner and outer seals 16
and 18 to bear on the respective inner and outer races of the bearing element
10, thus bringing a portion of each of the inner and outer cap 28, 12 closer to
the bearing than the seals 16, 18. The Examiner’s interpretation of the
positionally limiting phrase of “a portion … that will always be closer to the
inner bearing side than will the inner cap;” is unreasonably broad and
inconsistent with Appellants’ Claims and Specification. To the contrary,
Appellants’ Specification describes no portion of the inner bearing cap 260
as being closer to the bearing assembly 250 than the respective insulating
portion 310 of the insulating assembly and further reveals no portion of the
outer bearing cap 255 being closer to the bearing assembly 250 than the
insulation assembly portion 320.1 See Spec. 14, fig. 5. See also, Br. 5. As
such we cannot sustain the anticipation rejection of claims 28-29, 31, 33 and
35-36.
Claim 30 as being obvious over Libert and Bramel, and claims 32 and 34 as
obvious over Libert and Cotton.

Turning to the obviousness rejections with regards to claims 30, 32
and 34, the addition of neither Bramel nor Cotton remedies the deficiencies
of Libert as described supra. Thus, the rejections of claim 30 over the
combined teachings of Liber and Bramel and of claims 32 and 34 over the
combined teaching of Libert and Cotton likewise cannot be sustained.

1 Appellants’ annotated Figure on page 5 of the Appeal Brief illustrates by
way of example the drawing disclosure of insulation portions A, B and C
and relative structural and positional relationships corresponding to the three
claimed “a portion” elements of the insulation assembly.
Appeal 2010-010264
Application 10/841,209
8
DECISION
For the above reasons, the Examiner’s rejections of claims 28-36 are
reversed.

REVERSED

hh