James Downs et al.

Patent Trials and Appeals Board

Nov 12, 2020

15213602 - (D) (P.T.A.B. Nov. 12, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/213,602 07/19/2016 James P. Downs 9539-000262-US-COI 2860
131303 7590 11/12/2020
BURRIS LAW, PLLC (AAM)
300 River Place Drive, Suite 1775
Detroit, MI 48307-4291
EXAMINER
LE, HUAN G
ART UNIT PAPER NUMBER
3659
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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):
docketing@burrisiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES P. DOWNS and PAUL J. VALENTE

Appeal 2020-003042
Application 15/213,602
Technology Center 3600
____________

Before KENNETH G. SCHOPFER, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–4 and 7–14.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as American
Axle & Manufacturing, Inc. Appeal Br. 2.
2 The Examiner has indicated that claims 6 and 15–28 include allowable
subject matter. Final Act. 8.
Appeal 2020-003042
Application 15/213,602

2
BACKGROUND
The Specification discloses axle assemblies including “an axle
assembly that includes a housing, an input pinion, a ring gear, a ring gear
bearing and a pair of axle shafts.” Spec. ¶ 7.
ILLUSTRATIVE CLAIM
Claim 3 is the only independent claim on appeal and recites:
3. An axle assembly comprising:
a carrier housing;
an input pinion received in the carrier housing and
rotatable about a first axis, the input pinion having a plurality of
pinion teeth;
a ring gear received in the carrier housing and rotatable
about a second axis that is not parallel to the first axis, the ring
gear having a plurality of ring gear teeth;
a case received in the carrier housing and coupled to the
ring gear for rotation about the second axis;
a first bearing assembly supporting the input pinion for
rotation about the first axis relative to the carrier housing, the
first bearing assembly having a first outer bearing race that is
mounted to the carrier housing at a location along the first axis
between the case and a radially inner side of the ring gear teeth;
a second bearing assembly supporting the input pinion for
rotation about the first axis relative to the carrier housing,
wherein the pinion teeth are disposed along the first axis between
the first bearing assembly and the second bearing assembly; and
a third bearing assembly supporting the ring gear for
rotation about the second axis relative to the carrier housing, the
third bearing assembly being disposed along the second axis on
a side of the ring gear teeth that is opposite the first axis;
wherein the third bearing assembly comprises a plurality
of bearing elements that are disposed about the second axis,
wherein the bearing elements are disposed radially outward of a
Appeal 2020-003042
Application 15/213,602

3
circumferential surface formed on the ring gear, and wherein the
third bearing assembly is an angular contact bearing.
Appeal Br., Claims App. A-1–A-2.
REJECTIONS
1. The Examiner rejects claims 2–4 and 12–14 under 35 U.S.C. § 102(a)(1)
as anticipated by Leipert.3
2. The Examiner rejects claims 7–10 under 35 U.S.C. § 103 as unpatentable
over Leipert in view of Stockton.4
3. The Examiner rejects claim 11 under 35 U.S.C. § 103 as unpatentable
over Leipert in view of Baer.5
DISCUSSION
Anticipation
We are persuaded of error in the rejection of independent claim 3, as
discussed below.
With respect to claim 3, the Examiner finds that Leipert discloses an
axle assembly as claimed, including, inter alia, a third bearing assembly g
that is an angular contact bearing. Final Act. 3–5 (discussing previously
presented claims 1–3, which have been incorporated by amendment into
claim 3). Further, in response to Appellant’s arguments, the Examiner finds,
“[u]sing the broadest reasonable interpretation, the bearings taught by
Leipert can be interpreted as angular contact bearings as Leipert clearly
teaches bearings that are in angular contact (e.g., shoulder & angle, see
annotated Fig.1 Leipert below) with the bearing races, wherein the races

3 Leipert, US 1,657,510, iss. Jan. 31, 1928.
4 Stockton, US 3,344,687, iss. Oct. 3, 1967.
5 Baer et al., US 2009/0263064 A1, pub. Oct. 22, 2009.
Appeal 2020-003042
Application 15/213,602

4
possess shoulders.” Ans. 4. In support, the Examiner relies on the following
annotated Figure 1 of Leipert:

Above is an annotated version of Figure 1, which is a “horizontal
sectional view showing an axle and rear end drive” and including the
Examiner’s annotation of an angle and a shoulder relative to the bearings g.
Liepert 1, left col., ll. 41–42; Ans. 5.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
Appeal 2020-003042
Application 15/213,602

5
631 (Fed. Cir. 1987). ). “Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks
omitted).
Even assuming that the Examiner has correctly interpreted the claims,
we are persuaded of error in the rejection because the rejection relies on
unfounded speculation regarding the structure of Liepert’s bearings g. With
respect to these bearings, Liepert discloses that “the ring gear d is formed
upon a unitary supplemental carrier f which floats in bearings g.” Leipert 1,
right col., ll. 68–70. Leipert does not otherwise explain the relationship
between bearings g and any other portion of Leipert’s device. Both the
Examiner and the Appellant speculate regarding the relationship between
Leipert’s bearings g and the housing/shoulders, but Leipert does not provide
clarity either in the drawings or the written description regarding these
bearings.
With respect to the Examiner’s finding in the Answer, we disagree
with the Examiner’s statement that “Leipert clearly teaches bearings that are
in angular contact . . . with the bearing races, wherein the races possess
shoulders.” Ans. 4. Leipert does not provide a description of the bearings in
the written disclosure, and we do not agree that these characteristics can be
discerned from the figures alone. Thus, to the extent the Examiner finds that
Leipert expressly discloses a third bearing assembly with bearings that are in
angular contact with bearing races, we disagree. And, to the extent the
Examiner is relying on inherency with respect to this feature, the Examiner
Appeal 2020-003042
Application 15/213,602

6
has not established that the third bearing assembly in Leipert necessarily
includes angular contact between the bearings and any bearing races.
Based on the foregoing, we are persuaded of error in the rejection of
independent claim 3. For the same reasons, we are persuaded of error in the
rejection of dependent claims 2, 4, and 12–14. Accordingly, we do not
sustain the anticipation rejection of claims 2–4 and 12–14. With respect to
the obviousness rejections of dependent claims 7–11, the Examiner does not
rely on any evidence or otherwise provide any reasoning that cures the
deficiency in the rejection of independent claim 3. Accordingly, we also do
not sustain the obviousness rejections of claims 7–11.
CONCLUSION
We REVERSE the rejections of claims 2–4 and 7–14.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–4, 12–14 102(a)(1) Leipert 2–4,
12–14
7–10 103 Leipert, Stockton 7–10
11 103 Leipert, Baer 11
Overall
Outcome
2–4,
7–14

REVERSED