KIC LLC

Patent Trials and Appeals Board

Apr 2, 2020

15019830 - (D) (P.T.A.B. Apr. 2, 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.
15/019,830 02/09/2016 OMAR J. FAKHOURY 405379-0046 8976
20575 7590 04/02/2020
Miller Nash Graham & Dunn
3400 U.S. Bancorp Tower
111 SW Fifth Avenue
PORTLAND, OR 97204
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
eofficeaction@appcoll.com
patdocketing@millernash.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte OMAR J. FAKHOURY and JOHN SCHNEIDER
____________________

Appeal 2018-004384
Application 15/019,830
Technology Center 3600
____________________

Before MICHAEL L. HOELTER, BRADLEY B. BAYAT, and
FREDERICK C. LANEY, Administrative Patent Judges.

LANEY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 3, 4, 6–8, 12, 13, and 15–17 (entered Aug. 28,
2017, “Final Act.”).2 Appellant’s counsel appeared for an oral hearing on
February 28, 2020. 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 KIC LLC as the real party in interest.
Appeal Br. 2.
2 Claims 1–2, 5, 9–11, 14, 18, and 19 have been cancelled. Id. at 15–17
(Claims App.).
Appeal 2018-004384
Application 15/019,830

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THE CLAIMED SUBJECT MATTER
Appellant’s Specification describes the invention as relating to a
“wheel hub and bearing assembly including a pair of bearing and a wheel
hub configured to receive the pair of bearings.” Abstract.
Claims 3 and 12 are independent. Claim 3 is reproduced below and is
illustrative of the claimed subject matter.
3. A wheel hub assembly, comprising:
a wheel hub having a pair of bearing lands spaced an axial
distance apart; and
a bearing assembly having a first tapered roller bearing
and a second tapered roller bearing, each tapered roller bearing
including:
a bearing cup having an angled inner circumference and
configured to rest on one of the bearing lands,
a bearing cone having a radially angled groove about an
outer circumference and disposed within the bearing cup, and
a plurality of rollers disposed within the radially angled
groove between the angled inner circumference of the bearing
cup,
wherein the bearing cone of the first tapered roller bearing
is configured to abut the bearing cone of the second tapered roller
bearing at a point along the axial distance, and
wherein the bearing cone of the first tapered roller bearing
has an axial length different than an axial length of the bearing
cone of the second tapered roller bearing.

REJECTIONS
References Basis 35 U.S.C. Claims Rejected
Braun3 § 102 3, 4, 6, 7, 12, 13, 15, 16,
Braun § 103 8, 17

3 US 6,200,037 B1, iss. Mar. 13, 2001 (“Braun”).
Appeal 2018-004384
Application 15/019,830

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ANALYSIS
In this appeal, Appellant disputes a single issue regarding the
Examiner’s rejections: whether a preponderance of the evidence supports the
Examiner’s finding that Figure 1 of Braun discloses bearing cones with
different axial lengths, as recited in both independent claims 3 and 12.
Appeal Br. 9–14.
Citing Figure 1 of Braun, reproduced below, the Examiner finds “the
cone 22 includes 16 which makes this bearings cone longer than the other
bearings cone which only includes 24.” Final Act. 3.

Above Figure 1 discloses “a cross-sectional view of the unitized wheel hub
and bearing assembly having an oil distribution vane.” Braun, 2:60–61.
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Application 15/019,830

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Appellant argues that Braun actually teaches “a conventional three-
part spacer and bearing race configuration” in which item 16 is a spacer
situated between cones 22 and 24, although it “might appear” that spacer 16
and cone 22 are continuous in Figure 1. Appeal Br. 9. The Examiner
counters that “even if the drawing is made in error, the configuration
illustrated by Braun was made available to the public prior to the invention
by [Appellant] and thus the alleged invention by [Appellant] was disclosed
prior to [Appellant’s] submission.” Ans. 3.
This is a close call, but we are persuaded the Examiner’s finding that
Braun discloses bearing cones with different axial lengths is not supported
by a preponderance of the evidence. “In the prosecution of a patent, the
initial burden falls on the PTO examiner to set forth the basis for any
rejection,” but afterwards “the burden shifts to the applicant to rebut the
prima facie case with evidence and/or argument.” In re Packard, 751 F.3d
1307, 1312 (Fed. Cir. 2014). Although Figure 1 of Braun may be sufficient
to carry the Examiner’s initial burden of showing Braun discloses bearing
cones with different axial lengths, we find that the evidence and argument by
Appellant rebuts persuasively this showing.
Federal Circuit “precedent has held that drawings can be used as prior
art, without referring to the surrounding description, only if the prior art
features are clearly disclosed by the drawing,” but it has also “reject[ed]
[the] argument that each drawing in a prior art reference must always be
viewed in isolation from the rest of a reference.” PlaSmart, Inc. v. Kappos,
482 Fed.Appx. 568, 572 (Fed. Cir. 2012) (citing In re Wagner, 63 F.2d 987,
988 (CCPA 1933); In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972); In re
Seid, 161 F.2d 229, 231 (CCPA 1947) (emphasis added)). While it is thus
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appropriate for an Examiner to rely solely on a prior art drawing to show a
particular feature was known, Appellant may rebut this finding with
evidence and arguments to establish the drawing does not clearly disclose
the claimed feature to a skilled artisan. Our task, as it is here, is to evaluate
all of the evidence and arguments to determine whether a preponderance of
the evidence supports the Examiner’s finding.
In this case, Figure 1 has specific call-outs for the different parts
depicted and specifically identifies parts 24, 16, and 22, moreover, there is a
line that appears to separate item 16 from item 24 without a corresponding
line between items 16 and 22. See Braun, Fig. 1. Based on this distinction
in Figure 1, the Examiner finds that the length of bearing cone 22 includes
the length of spacer 16 up to the line separating bearing cone 24 and, thus,
shows a different axial length for bearing cones 22 and 24. Final Act. 3;
Ans. 3. The Examiner states, “the drawing clearly does show a split line
between 16 and 24, a similar line is not present between 22 and 16, this in
combination with the parts having the same hatching is suggestive that they
are actually one piece and not two as Appellant is alleging.” Ans. 3
(emphasis added).
Appellant argues that a skilled artisan would not view Figure 1 as
disclosing items 16 and 22 as one piece because Braun describes item 16 as
a separate, independent part. Appeal Br. 9–12 (citing Braun, 3:25–36, 4:6–
8, 7:14–16, Figs. 2–6). In particular, referring to Figure 1, Braun discloses
that the “radially inner bearing races 22 and 24 are fitted into the primarily
radially outer cylindrical surface of mounting sleeve 14” and “bearing
spacer 16 is . . . positioned onto the outer surface of mounting sleeve 14
between the inner bearing races 22, 24 of bearings 6 and 8.” Braun, 3:23–28
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Application 15/019,830

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(emphasis added). Braun additionally describes the purpose of spacer 16 as
“positions the inner bearing races 22 and 24 in precise axial relationship to
each other, along with their respective outer races 18, 20.” Id. at 3:29–31.
Appellant argues that a skilled artisan would also recognize from the
additional views of item 16, Figures 2–6, which show it as separate and
independent of items 22 and 24, that items 16, 22, and 24 are separate parts.
Appeal Br. 11–13. Lastly, Appellant notes Braun teaches that the inventive
vane for the described wheel hub and bearing assembly can be mounted
directly to the axle 32 or mounting sleeve 14, “[i]n the absence of the
bearing spacer.” Id. at 11.
Appellant’s rebuttal evidence and arguments persuade us that a skilled
artisan would not view Figure 1 as clearly disclosing items 16 and 22 as a
single piece. Figure 1 is ambiguous because it is a drawing identifying the
different parts of a wheel hub and bearing assembly and identifies,
separately, bearing cone 22, bearing cone 24, and bearing spacer 16. We are
not persuaded that Figure 1 shows clearly to a skilled artisan that bearing
cone 22 and bearing spacer 16 are a single structure simply because there is
not a specific line identifying where the parts meet. Once the description of
Figure 1 is considered, however, it becomes clear that Braun would lead a
skilled artisan to view bearing cone 22, bearing cone 24, and bearing spacer
16 as structurally separate parts. In particular, Braun describes bearing
cones 22 and 24 as being “fitted into the primarily radially outer cylindrical
surface of mounting sleeve 14” and describes bearing spacer 16 as being
“positioned onto the outer surface of mounting sleeve 14 between the
[bearing cones] 22, 24 of bearings 6 and 8.” Braun, 3:23–28 (emphasis
added). As a result, we find the Examiner’s finding regarding Braun’s
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disclosure of bearing cones with different axial lengths to lack support by a
preponderance of the evidence.
Therefore, because we find the Examiner’s rejection of independent
claims 3 and 12 to be deficient, we do not sustain the Examiner’s rejections
of 3, 4, 6–8, 12, 13, and 15–17.
CONCLUSION
The Examiner’s rejections of claims 3, 4, 6–8, 12, 13, and 15–17 are
reversed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis

Affirmed Reversed
3, 4, 6, 7,
9, 10, 12,
13, 15, 16,
18, 19
102 Braun 3, 4, 6, 7,
12, 13, 15,
16
8, 17 103 Braun 8, 17
Overall
Outcome
3, 4, 6–8,
12, 13, 15–
17
REVERSED