James Downs et al.

Patent Trials and Appeals Board

Jun 24, 2021

2021000328 (P.T.A.B. Jun. 24, 2021)

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.
15/470,118 03/27/2017 James P. Downs 9539-000262-US-COJ 4239
131303 7590 06/24/2021
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
06/24/2021 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 2021-000328
Application 15/470,118
Technology Center 3600
____________

Before JAMES P. CALVE, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, 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 1–32. 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.
Appeal 2021-000328
Application 15/470,118

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BACKGROUND
The Specification discloses various embodiments of axle assemblies.
See, e.g., Spec. ¶¶ 7–16.

CLAIMS
Claims 1 and 17 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. An axle assembly comprising:
a housing;
an input pinion having a pinion gear and a pinion shaft, the
input pinion being received in the housing and being rotatable
about a first axis;
a ring gear meshed with the pinion gear and rotatable
about a second axis that is transverse to the first axis;
a differential assembly having a differential input and a
pair of output members, the differential input being driven by the
ring gear; and
a first bearing and a second bearing for supporting the
input pinon for rotation relative to the housing about the first
axis, the first bearing being a four-point angular contact bearing
having a first outer bearing race, a first inner bearing race and a
single row of bearing elements that are disposed between the first
outer bearing race and the first inner bearing race.
Appeal Br., Claims App. A-1.
REJECTIONS
1. The Examiner rejects claims 1–7, 9, 10, 14, 17–23, 25, 26, and 30 under
35 U.S.C. § 103 as unpatentable over Asberg2 in view of Knappe.3

2 Åsberg, US 3,792,625, iss. Feb. 19, 1974.
3 Knappe et al., US 4,588,313, iss. May 13, 1986.
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Application 15/470,118

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2. The Examiner rejects claims 1, 3–5, 7, 9, 10, 14–17, and 30–32 under
35 U.S.C. § 103 as unpatentable over Stockton4 in view of Knappe.
3. The Examiner rejects claims 8 and 24 under 35 U.S.C. § 103 as
unpatentable over Asberg in view of Knappe and Wingquist.5
4. The Examiner rejects claims 11–13 and 27–29 under 35 U.S.C. § 103 as
unpatentable over Asberg in view of Knappe and Loughrin.6
DISCUSSION
Rejection over Asberg and Knappe
With respect to claim 1, the Examiner finds that Asberg teaches an
axle assembly as claimed except for “the first bearing being a four-point
angular contact bearing having a first outer bearing race, a first inner bearing
race and a single row of bearing elements that are disposed between the first
outer bearing race and the first inner bearing race.” Non-Final Act. 3–4
(citing Asberg Fig. 1). The Examiner relies on Knappe as teaching “a four
point angular contact bearing” including inner and outer races and bearing
elements as claimed, and determines “it would have been obvious for one
having ordinary skill in the art at the time the invention was effectively filed
to utilize the teaching of a four point angular contact bearing as taught by
Knappe to be used in the system of Asberg to achieve the predictable result
of reducing rotational resistances between two rotating elements.
Additionally to effectively transmit large pressure angles.” Id. at 4 (citing
Knappe Fig. 1, col. 1).

4 Stockton, US 3,344,687, iss. Oct. 3, 1967.
5 Wingquist, GB 191106765, pub. Mar. 14, 2012.
6 Loughrin et al., US 7,314,416 B2, iss. Jan. 1, 2008.
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Application 15/470,118

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We are persuaded of error by Appellant’s argument that the Examiner
has not set forth an adequate reason to support the combination proposed.
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418
(brackets in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
The Examiner first determines that the proposed modification of
Asberg based on Knappe would “achieve the predictable result of reducing
rotational resistances between two rotating elements.” Non-Final Act. 4.
Appellant argues, and we agree, that this statement is conclusory and the
Examiner has not provided sufficient evidence or explanation showing that
one of ordinary skill in the art would have recognized that the combination
proposed would achieve the benefit of reducing rotational resistances
between two rotating elements. In the Answer, the Examiner explains that
“[i]t is well known in the art that four-point angular contact bearings reduce
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Application 15/470,118

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friction between the surfaces of the rotating components they are placed
between” because “rolling produces less friction as opposed to sliding when
bearings are not present.” Ans. 4. The problem with this explanation, as
noted by Appellant, is that Asberg already teaches rotating components
supported by bearings, and the Examiner has not explained how the
modification would result in the less friction in Asberg’s device. Thus,
absent any further evidence or explanation, the Examiner has not adequately
supported the determination that the combination would have produced the
result of reducing rotational resistance.
Alternatively, the Examiner supports the conclusion of obviousness
because “the four-point angular contact bearing taught by Knappe does
effectively transmit large pressure loads.” Ans. 4 (citing Knappe col. 1, ll.
57–63). Knappe does disclose “a four-point contact bearing . . . which is
suitable for rotary movements but which avoids bottleneck effects and is
also suitable for large pressure angles.” Knappe col. 1, ll. 57–61. However,
the Examiner merely cites this portion of Knappe without explaining its
relevance to the proposed combination, and thus, the Examiner has failed to
explain adequately why one of ordinary skill in the art would have modified
any bearing in Asberg based on this disclosure.
Based on the foregoing, we are persuaded of reversible error in the
rejection of claim 1 over Asberg in view of Knappe. The Examiner relies on
substantially the same reasoning in rejecting independent claim 17 and
dependent claims 2–7, 9, 10, 14, 18–23, 25, 26, and 30, and, we are also
persuaded of error in the rejection of these claims for the reasons discussed.
See Non-Final Act. 4–7. Accordingly, we do not sustain the rejection of
claims 1–7, 9, 10, 14, 17–23, 25, 26, and 30 over Asberg in view of Knappe.
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Application 15/470,118

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Rejection over Stockton and Knappe
Here, the Examiner finds that Stockton teaches an axle assembly as
claimed except for the four-point angular contact bearing. Non-Final Act. 8.
The Examiner relies on Knappe to cure this deficiency in the same manner
in which Knappe was relied upon in the rejection above. The Examiner
relies on substantially the same reasoning, evidence, and explanation here in
rejecting claims 1, 3–5, 7, 9, 10, 14–17, and 30–32 as relied upon in the
rejection over Asberg and Knappe. We determine that the Examiner’s
reasoning and explanation is lacking here for the same reasons as those
discussed above. Accordingly, we also do not sustain the rejection of claims
1, 3–5, 7, 9, 10, 14–17, and 30–32 over Stockton in view of Knappe.
Remaining Rejections
In rejecting dependent claims 8, 11–13, 24, and 27–29, the Examiner
does not provide any further evidence or explanation that would cure the
deficiency in the rejection of the independent claims, as discussed above.
Thus, we also do not sustain the rejection of these dependent claims.
CONCLUSION
We REVERSE the rejections of claims 1–32.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9, 10,
14, 17–23,
25, 26, 30
103 Asberg, Knappe 1–7, 9, 10,
14, 17–23,
25, 26, 30
1, 3–5, 7, 9,
10, 14–17,
30–32
103 Stockton, Knappe 1, 3–5, 7,
9, 10, 14–
17, 30–32
8, 24 103 Asberg, Knappe,
Wingquist
8, 24
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Application 15/470,118

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–13, 27–
29
103 Asberg, Knappe,
Loughrin
11–13,
27–29
Overall
Outcome
1–32

REVERSED