Schaeffler Technologies AG & Co. KG

Patent Trials and Appeals Board

May 27, 2020

2019006855 (P.T.A.B. May. 27, 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.
15/091,025 04/05/2016 Michael White LUK-PT101
P160008-00US
2810
111122 7590 05/27/2020
Volpe and Koenig, P.C. DEPT. SCHAEFFLER
TECHNOLOGIES AG & Co. KG
30 South 17th Street-18th Floor
Philadelphia, PA 19103
EXAMINER
HOLLY, LEE A
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
05/27/2020 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):
eoffice@vklaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL WHITE

Appeal 2019-006855
Application 15/091,025
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, Schaeffler Technologies AG & Co. KG,1 appeals under 35
U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1– 18.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
The Specification
The Specification “relates to devices for insulating shaft electrical
currents in electrical machines such as AC and DC electrical motors,
generators, alternators, and other rotating shaft machines” and, in particular,
“electrically insulated rolling element bearings.” Spec. ¶1.
The Claims
Claims 1–18 are rejected. Final Act. 1. No other claims are pending.
Id. Claims 1 and 12 are independent. Appeal Br. 25–28 (Claims App.).
Claims 1 and 12 reproduced below.
1. A method for providing an electrically insulating
coating to a bearing component, comprising:
[A] providing a bearing component formed from bearing
grade steel and machined or otherwise formed to a near net
shape;
[B] electro-chemically depositing a high purity aluminum
on the steel bearing component using a non-aqueous electrolyte
in an inert environment to form a high purity aluminum coating
at least over a portion of the steel bearing component; and
[C] converting a surface of the high purity aluminum
coating using an acid-bath into aluminum oxide to form an
insulating layer.
12. A rolling bearing comprising:
an inner ring;
an outer ring;
a plurality of rolling elements located between the inner
ring and the outer ring;
wherein at least one of the inner ring or the outer ring
include, at least over a portion thereof, an insulating coating
arrangement comprised of a layer of high purity aluminum
located on a bearing grade steel base component used to form
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the inner ring or the outer ring and an aluminum oxide
insulating layer formed on the high purity aluminum.
Id. at 25, 27.
The Examiner’s Rejections
The rejections before us, all pursuant to 35 U.S.C. § 103, are:
1. claims 1–6, 9, and 11–18 over Bristol2 and Kenworthy3 (Final
Act. 2);
2. claim 7 over Bristol, Kenworthy, and Larsen4 (id. at 11);
3. claim 8 over Bristol, Kenworthy, and Wong5 (id. at 12);
4. claim 10 over Bristol, Kenworthy, and Kamamoto6 (id. at 13).
DISCUSSION
Rejection 1
Bristol is directed to bearing assemblies and methods of making them
and is thus clearly analogous art. Bristol ¶1. Kenworthy relates to “the field
of semiconductor material processing.” Kenworthy ¶1.
In rejecting claim 1, the Final Action relies on Bristol for step [A] and
Kenworthy for steps [B] and [C]. Final Act. 2–3. The Examiner concluded:
It would have been obvious to one of ordinary skill in the art,
before the effective filing date of the claimed invention, to
improve the method of assembling a roller bearing of Bristol by
aluminum plating and forming an anodized layer on the surface
of at least one component of the Bristol roller bearing as taught
by Kenworthy in order to provide components that are resistant
to wear when exposed to corrosive and erosive gases (Kenworthy
Page 2, Para [0013]). See MPEP §2143 C which describes the

2 US 2010/0247018 Al, published Sept. 30, 2010 (“Bristol”).
3 US 2008/0241517 Al, published Oct. 2, 2008 (“Kenworthy”).
4 US 2014/0030632 A1, published Jan. 30, 2014 (“Larsen”).
5 US 4,071,415, issued Jan. 31, 1978 (“Wong”).
6 US 2013/0326880 Al, published Dec. 12, 2013 (“Kamamoto”).
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prima facie obviousness of the use of a known technique to
improve similar devices (methods, or products) in the same way.
In this instance, the bearing of Bristol is improved by the method
of Kenworthy.
Final Act. 3. The Examiner relies on virtually the same findings and
conclusion in rejecting independent claim 12. Final Act. 8–9.
Appellant argues that the Examiner has erred because Kenworthy is
not analogous art. Appeal Br. 13. “Although § 103 does not, by its terms,
define the ‘art to which [the] subject matter [sought to be patented] pertains,’
this determination is frequently couched in terms of whether the art is
analogous or not, i.e., whether the art is ‘too remote to be treated as prior
art.’ In re Sovish, 769 F.2d 738, 741, 226 USPQ 771, 773 (Fed. Cir. 1985).”
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two criteria have evolved
for determining whether prior art is analogous: (1) whether the art is from
the same field of endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” Id. at 658–59.
Kenworthy is not analogous art under the first Clay criterion because
it is directed to a different field than the inventor’s endeavor. See
Kenworthy ¶1 (“semiconductor material processing”); Spec. ¶1 (“electrically
insulated rolling element bearings.”). The Examiner, however, found that
Kenworthy is analogous art under the second Clay criterion “because
Kenworthy is reasonably pertinent to the problem faced by the inventor -
providing an electrically insulating coating to a workpiece.” Final Act. 15
(emphasis added).
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Appellant argues that “using the term ‘workpiece’ for both a bearing
component and a semiconductor” is overly broad and “ignore[s] the problem
to be solved as explained in the Background of the Specification.” Appeal
Br. 14–15.
With respect to Appellant’s first point, the Examiner responds that
“Kenworthy recites both extremely broad terms and a significant range of
devices when describing the specific implementations of the Kenworthy
invention.” Ans. 6 (citing Kenworthy ¶¶14, 15, 17). The Examiner quotes
Kenworthy as stating:
Depending on the type and construction of an apparatus, the parts
[subject to the coating] can be, e.g., chamber walls, chamber
liners, substrate supports, baffles (e.g., provided in showerhead
electrode assemblies above the showerhead electrode), gas
distribution plates, gas distribution rings, chucking mechanisms
(e.g., electrostatic chucks), focus rings for substrate supports, gas
nozzles, fasteners, heating elements, plasma screens and the like.
Id. (quoting Kenworthy ¶17). But this quoted statement immediately
follows language, consistent with the rest of Kenworthy, that places such
“parts” in the context of “manufacturing various substrates including, e.g.,
semiconductor wafers, flat panel display substrates and the like.”
Kenworthy ¶17.
With respect to Appellant’s second point, the Examiner finds that,
although the Specification is concerned with “solving the problems of
Electrical Discharge Machining (EDM)” (Spec. ¶2), it is ultimately
concerned with “physical mechanical damage” caused by EDM, and
“Kenworthy was also concerned with physical mechanical damage of a steel
component.” Ans. 7–8. However, the Specification targets “EDM damage
to … bearings” (Spec. ¶3) as the problem the applicant seeks to solve,
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which, if successful, leads to the benefit of preventing physical mechanical
damage.
Considering both of Appellant’s points, Appellant has the better
position overall. The Examiner has not shown how Kenworthy, which does
not relate to bearing assemblies or EDM, is reasonably pertinent to the
particular problem with which the inventor is involved.
Appellant additionally argues the Examiner has not shown a
satisfactory reason why a person of ordinary skill in the art would modify
Bristol in view of Kenworthy (assuming it were analogous art). Appeal Br.
21. The Examiner’s stated reason was: “in order to provide components
that are resistant to wear when exposed to corrosive and erosive gases.”
Final Act. 3 (emphasis added). Appellant argues:
the corrosive and erosive gases in Kenworthy are clearly
limited to being used in the formation of semiconductors, and
the formation processes of steel bearing components are
completely different than the material processing required in
semiconductors, such as plasma etching, chemical vapor
deposition (CVD), resist stripping, etc.
Appeal Br. 22. This argument is persuasive in view of the lack of any
finding by the Examiner that Bristol’s bearings are subject to corrosive or
erosive gases.
For the foregoing reasons, we reverse the rejection of independent
claims 1 and 12, as well as that of claims 2–6, 9, 11, and 13–18, each of
which ultimately depends from claim 1 or claim 12. See In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious under
section 103 if the independent claims from which they depend are
nonobvious.”).
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Rejections 2–4
Claims 7, 8, and 10 depend from claim 1. The rejections of these
claims all rely on the Examiner’s application of “Bristol in view of
Kenworthy as applied to claim 1.” Final Act. 11 (regarding claim 7), 12
(regarding claim 8), 13 (regarding claim 10). Because the Examiner does
not apply any of the additional references in a manner that could cure the
deficiencies noted above with respect to the rejection of claim 1, we likewise
reverse the rejections of claims 7, 8, and 10.

SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–6, 9, 11–18 103 Bristol,
Kenworthy
1–6, 9,
11–18
7 103 Bristol,
Kenworthy,
Larsen
7
8 103 Bristol,
Kenworthy,
Wong
8
10 103 Bristol,
Kenworthy,
Kamamoto
10
Overall
Outcome
1–18

REVERSED