Ex Parte Champion

Patent Trial and Appeal Board

Nov 30, 2018

14752458 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/752,458
89941 7590
HONEYWELL/S&S
Patent Services
115 Tabor Road
P.O.Box 377
FILING DATE
06/26/2015
12/04/2018
MORRIS PLAINS, NJ 07950
FIRST NAMED INVENTOR
Jon Champion
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
H0045610-1160/1147-104USO 9234
EXAMINER
KOTTER, KIP T
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
patentservices-us@honeywell.com
pairdocketing@ssiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON CHAMPION1
Appeal2018-000945
Application 14/752,458
Technology Center 3600
Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Honeywell International Inc. ("Appellant") is the Applicant as provided in
3 7 C.F .R. § 1.46 and is identified as the real party in interest. Appeal Br. 3.
Appeal2018-000945
Application 14/752,458
THE CLAIMED SUBJECT MATTER
Claims 1, 8, and 12 are independent. Claim 1 is reproduced below.
1. A vehicle ,vheel assembly comprising:
an axle;
a bearing assembly comprising a bearing spacer: and
a hub configured to rotate relative to the axle and defining
a bearing bore, wherein the bearing assembly is positioned
between the axle and the hub, the bearing spacer being
configured to engage with the hub within the bearing bore, and
the bearing bore being con figured such that an interface bet ween
the hub and the bearing spacer does not include a surface that is
perpendicular to an axis of rotation of the axle, and wherein the
bearing bore is con figured such that a reaction between the ax1e
~, ...__,
and the hub results in a first reaction force FR applied to the hub,
the first reaction force FR having a radial cornponent, and a
second reaction fi..)rce FN applied to the hub, the second reaction
force FN having both a radial and an axial component.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Grant
Hogan
Long
Proeschel
Li2
us 543,301
us 3,237,288
us 5,862,890
US 8,444,324 B2
CN 201380719 U
THE REJECTIONS
July 23, 1895
Mar. 1, 1966
Jan. 26, 1999
May 21, 2013
Jan. 13,2010
I. Claims 1, 3, 5, 12, and 14 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Li. Final Act. 3-5.
2 Unless otherwise noted, citations to "Li" in this opinion will be to the
English language translation entered into the record as an attachment to the
Examiner's Answer.
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II. Claims 1, 3, 5, 12, and 14 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Grant. Id. at 6-7.
III. Claims 2, 7, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over either Li or Grant and also Proeschel. Id. at 8-9.
IV. Claims 4 and 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Grant and Long. Id. at 9-10.
V. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable
over either Li or Grant. Id. at 10.
VI. Claims 8-11 stand rejected under 35 U.S.C. § 103 as unpatentable
over either Li or Grant and also Hogan. Id. at 10-11.
OPINION
Rejection I
Claim 1
The Examiner finds that Li discloses all of the limitations of
independent claim 1, including "the bearing bore being configured such that
an interface between the hub and the bearing spacer does not include a
surface that is perpendicular to an axis of rotation of the axle." Final Act. 3-
4 ( citing Li Fig. 2). In particular, the Examiner finds that Figure 2 of Li
"shows the interface between the hub 1 and the bearing spacer 2 as only
including a portion that is generally parallel to the axis of rotation of the axle
that transitions to a portion that is angled with respect to the axis of rotation
of the axle" and that "only a non-interface portion of the bearing spacer 2 of
Li is generally perpendicular to the axis of rotation of the axle." Ans. 3, 4
( emphasis omitted).
Appellant argues that "FIG. 2 of Li appears to depict an interface
between element 1 and element 2 that includes a surface that is
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perpendicular to an axis of rotation of the axle." Appeal Br. 7. In particular,
Appellant argues that "Li does not describe the white rectangle between the
bearings as anything but a portion of the hub." Reply Br. 4. Appellant also
argues that "the quality and resolution of FIG. 2 of Li is not sufficient for
one of ordinary skill in the art to discern the orientation of an interface
between element 1 and element 2." Reply Br. 3. Appellant further argues
that because the reference does not disclose that the drawings are to scale
and the reference is silent as to dimensions, the Examiner's reliance on
Figure 2 of Li to support the rejection is in error. Id. at 3, 4, 5.
Although patent drawings not designated as being drawn to scale
cannot be relied upon to define precise proportions of elements if the
specification is completely silent on the issue, Hockerson-Halberstadt, Inc.
v. Avia Group Int'! Inc., 222 F.3d 951,956 (Fed. Cir. 2000), that does "not
mean that things patent drawings show clearly are to be disregarded." In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (emphasis omitted). A drawing
teaches all that it reasonably discloses and suggests to a person of ordinary
skill in the art. In re Aslanian, 590 F.2d 911,914 (CCPA 1979).
Hockerson-Halberstadt stands for the proposition that where precise
measurement or considerable and careful evaluation of an illustration in a
prior art reference are required to demonstrate that the illustration meets a
dimensional limitation of a claim, findings or conclusions based upon such
evaluation will be assigned little weight when the prior art reference lacks
explicit disclosure that the drawings are to scale or that the particular
elements at issue possess some particular dimensional relationship. See,
e.g., Nystrom v. TREX Co., 424 F.3d 1136, 1149 (Fed. Cir 2005) (holding
that the district court erred in relying on models made from drawings
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contained in a prior art reference as the basis for summary judgment of
invalidity of claims reciting a ratio of a thickness to a width of a board being
about 1 :40, which was not disclosed directly in the prior art).
In this case, simple observation of Figure 2 of Li would reveal to a
person of ordinary skill in the art that the interface between hub 1 and
bearing spacer 2 does not include a surface that is perpendicular to an axis of
rotation of the axle. 3 This claimed feature is reasonably disclosed through
observation. As the Court of Customs and Patent Appeals has noted,
although patent drawings are not working drawings, "we did not mean [in In
re Wilson, 312 F.2d449, 454 (CCPA 1963)] that things patent drawings
show clearly are to be disregarded." Mraz, 455 F.2d at 1072 (emphasis
omitted).
In Mraz, the claims were directed to de-burring rolls and recited an
edging roll comprised of a pair of roll members having mating portions of
the roll members defining a groove with inwardly converging inclined
surfaces at an angle, with respect to a plane perpendicular to the axis of the
roll member, not exceeding 15 degrees. Id. at 1070. Edge rolls depicted in a
figure of the prior art reference had a similar groove with inwardly
converging inclined surfaces, in which the angle at issue measured about 6
degrees on the drawing but the specification was silent as to the
measurement of the angle. Id. at 1071. On appeal, appellant argued that the
3 We are not persuaded that the Examiner's interpretation of "interface" as
"a surface regarded as the common boundary of two bodies, spaces, or
phases" (Ans. 4) is in error. We also are not persuaded that a preponderance
of the evidence supports that the so-called "white rectangle" identified by
Appellant in Figure 2 of Li (Reply Br. 4) is a portion of hub 1 as suggested
by Appellant (id.).
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Board erred in treating the diagrammatic drawings in the prior art as
working drawings and scaling the drawings to show the claimed angular
limitation. Id. at 1072. The court rejected appellant's argument, stating
"[ d]escription for the purposes of anticipation can be by drawings alone as
well as by words." Id. (quoting In re Eager, 47 F.2d 951, 953 (CCPA
1931)). The court affirmed the Board's decision, stating the prior art figure
"focuses on the edge rolls, showing them with great particularity and
showing the grooves thereon to have an angularity well within the range
recited in appellant's claims." Id.
In this case, the Examiner is not relying on the prior art drawing for
precise proportions or a specific ratio of the size of one element to the size of
another element. Instead, the claim calls for the bearing bore to be
configured such that an interface between the hub and the bearing spacer
does not include a surface that is perpendicular to an axis of rotation of the
axle. Thus, the Examiner is relying on the prior art drawing to show that a
surface where the hub and bearing spacer interface ( e.g., share a common
boundary) is not perpendicular to the axis of rotation of the axle. Figure 2 of
Li shows the interface between hub 1 and bearing spacer 2 as including a
portion that is generally parallel to the axis of rotation of the axle and that
transitions to a portion that is rounded. This can be ascertained without
taking precise measurements from the drawing. We agree that the
Specification lacks an express disclosure of the radius of the rounded
portion. However, given that it can be readily determined by observing
Figure 2 of Li that the rounded portion does not include a surface that is
perpendicular to the axis of rotation of the axle, as called for in claim 1,
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Figure 2 of Li discloses by a preponderance of the evidence the claimed
interface between the hub and bearing spacer. 4
For the foregoing reasons, we do not find that the Examiner erred in
finding that Li anticipates claim 1. We sustain the rejection of claim 1 under
35 U.S.C. § 102(a)(l) as anticipated by Li.
Claim 3
Dependent claim 3 recites that "the bearing bore is configured to
distribute the first reaction force and the second reaction force between the
hub and the axle through a thickest portion of the hub." Appeal Br. 26
(Claims App.). The Examiner finds that Li discloses such a bearing bore.
Final Act. 4--5 ( citing Li Fig. 2 and providing an annotated version of Li Fig.
2 illustrating such first and second reaction forces).
Appellant argues that the Examiner has "offered no technical
reasoning or citation to any portion of Li that supports that the forces FR and
FN added by the Examiner are ... how the forces would be distributed."
Reply Br. 7. The Examiner takes the position that
[i]t is clear to one of ordinary skill in the art that the reaction
forces between the axle and hub of Li would be distributed in the
manner indicated above due to the interaction (i.e.[,] the shape of
the corresponding interface) between the bearing structure
(e.g.[,] bearing spacers 2) and the bearing bore of the hub 1 as
shown in Fig. 2.
4 We have also considered Appellant's argument that the Examiner's failure
to provide a human English-language translation of Li "establishes an error
on which the rejection should be reversed." Appeal Br. 8. We are not
persuaded that any rejection that relies on Li must be reversed. The
Examiner attached such a translation to the Examiner's Answer, and
Appellant was afforded an opportunity to review the translation, or identify
any translation error.
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Ans. 10.
A patent applicant is free to recite features of an apparatus structurally
or functionally. See In re Swinehart, 439 F.2d 210,212 (CCPA 1971).
Where the Patent Office has reason to believe that a functional limitation is
an inherent characteristic of the prior art, it can require an applicant to show
that the prior art does not possess the claimed functional features. In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting Swinehart, 439
F.2d at 213); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
("when the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not" (citations omitted)); see also In re King, 801 F.2d
1324, 1327 (Fed. Cir. 1986) (finding it insufficient for an appellant to merely
assert that the prior art does not inherently possess the characteristic relied
on and challenge the PTO to prove the contrary by experiment or otherwise,
noting that "[t]he PTO is not equipped to perform such tasks.").
Because of the similarity in shape between Appellant's interface (see
Spec. Fig. 2) and Li's interface (see Li Fig. 2), we find the Examiner to be
on solid ground in finding that the reaction forces would be distributed
similarly. Compare Spec. Fig. 2 with Li Fig. 2. Considering that
"Appellant's disclosure describes that '[t]he thickness of hub 18 may be
measured in a direction from a surface of hub 18 defining bearing bore 22 to
an outer surface o[fJ hub 18"' (Reply Br. 7 (quoting Spec. ,r 36)), we note
that the Examiner's identified first and second reaction forces FR, FN appear
to extend through the thickest portion of hub 1 of Li (Ans. 9) at least to the
same extent as Appellant's first and second reaction forces extend through
the thickest portion of hub 18 (Spec. Fig. 2).
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For the foregoing reasons, we do not find that the Examiner erred in
finding that Li anticipates claim 3. We sustain the rejection of claim 3 under
35 U.S.C. § 102(a)(l) as anticipated by Li.
Claim 5
Dependent claim 5 recites that "the bearing spacer defines a
compound radius." Appeal Br. 27 (Claims App.) The Examiner finds that
Li discloses such a bearing spacer. Final Act. 4 ( citing Li Fig. 2). In
particular, the Examiner finds that
[ o ]ne of ordinary skill in the art would clearly understand that a
bearing spacer that extends substantially parallel to the axis of
rotation of the axle and then transitions to a portion that is angled
with respect to the axis of rotation of the axle would define a
compound radius (i.e., more than one radius).
Ans. 11. Appellant responds that "an interface with a straight line that
transitions to a fixed-radius arc, as described by the Examiner, does not have
a compound radius because the radius of the straight line would be infinite."
Reply Br. 9.
Appellant's Specification describes that "bearing bore 22 ... has a
non-constant radius of curvature defined by a compound radius" and
describes the compound radii of a bearing bore only in connection with the
rounded portion of the interface of the bearing bore and hub. Spec. ,r,r 39,
42--44; Figs. 4A--4B. We are persuaded by Appellant's argument that the
Examiner's position, which relies on the straight portion of the interface of
the bearing bore and hub in Li's Figure 2, and not just the rounded portion,
is in error. Moreover, it reasonably cannot be determined through
observation of Li's Figure 2 whether the rounded portion of the interface of
the bearing bore and hub in Li's Figure 2 has a compound radius.
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For the foregoing reasons, we find that the Examiner erred in finding
that Li anticipates claim 5. We do not sustain the rejection of claim 5 under
35 U.S.C. § 102(a)(l) as anticipated by Li.
Claims 12 and 14
Appellant presents similar arguments as discussed above in
connection with claims 1 and 3. Appeal Br. 11-12. For similar reasons as
those discussed above, we do not find these arguments persuasive.
Accordingly, we sustain the rejection of claims 12 and 14 under 35 U.S.C.
§ 102(a)(l) as anticipated by Li.
Re} ection II
Claim 1
The Examiner finds that Grant discloses all of the limitations of
independent claim 1, including "the bearing bore being configured such that
an interface between the hub and the bearing spacer does not include a
surface that is perpendicular to an axis of rotation of the axle." Final Act. 6-
7 ( citing Grant Fig. 1 ). In particular, the Examiner finds that Figure 1 of
Grant "shows the interface between the hub a and the auxiliary nut or
bearing spacer c2 as only including a portion that is generally parallel to the
axis of rotation of the axle that transitions to a portion that is angled with
respect to the axis of rotation of the axle" and that "only a non-interface
portion of the bearing spacer c2 of Grant is generally perpendicular to the
axis of rotation of the axle." Ans. 11-12 (emphasis omitted).
Appellant argues that "FIG. 1 of Grant appears to depict an interface
between the hub 'a' and the auxiliary nut c2 that includes a surface that is
perpendicular to an axis of rotation of axle b." Appeal Br. 13. Appellant
also argues that "the quality and resolution of FIG. 1 of Grant is not
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sufficient for one of ordinary skill in the art to discern the orientation of an
interface between hub 'a' and the auxiliary nut c2." Reply Br. 10. Appellant
further argues that because the reference does not disclose that the drawings
are to scale and the reference is silent as to dimensions, the Examiner's
reliance on Figure 2 of Li to support the rejection is in error. Id. at 10-12.
For similar reasons as described above in connection with Rejection I,
we do not determine that the Examiner is relying on the prior art drawing for
precise proportions or a specific ratio of the size of one element to the size of
another element, but rather to show a surface where the hub and bearing
spacer interface is not perpendicular to the axis of rotation of the axle.
Figure 1 of Grant shows the interface between hub a and bearing spacer c2
as including a portion that is generally parallel to the axis of rotation of the
axle and that transitions to a portion that is rounded. This can be ascertained
without taking precise measurements from the drawing. We agree that the
Specification lacks an express disclosure of the radius of the rounded
portion. However, given that it can be readily determined by observing
Figure 1 of Grant that the rounded portion does not include a surface that is
perpendicular to the axis of rotation of the axle, as called for in claim 1,
Figure 1 of Grant discloses by a preponderance of the evidence the claimed
interface between the hub and bearing spacer. The claimed feature is
reasonably disclosed through observation.
For the foregoing reasons, we do not find that the Examiner erred in
finding that Grant anticipates claim 1. We sustain the rejection of claim 1
under 35 U.S.C. § 102(a)(l) as anticipated by Grant.
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Claim 3
The Examiner finds that Grant discloses a bearing bore that is
configured to distribute the first and second reaction forces between the hub
and the axle through a thickest portion of the hub, as required by dependent
claim 3. Final Act. 6-7 ( citing Grant Fig. 1 and providing an annotated
version of Grant Fig. 1 illustrating such first and second reaction forces).
Appellant argues that the Examiner has "offered no technical
reasoning or citation to any portion of Grant that supports that the forces FR
and F N added by the Examiner are ... how the forces would be distributed."
Reply Br. 13. The Examiner takes the position that
[i]t is clear to one of ordinary skill in the art that the reaction
forces between the axle and hub of Grant would be distributed in
the manner indicated above due to the interaction (i.e.[,] the
shape of the corresponding interface) between the bearing
structure (e.g.[,] bearing spacer c2) and the bearing bore of the
hub a as shown in Fig. 1.
Ans. 17.
Because of the similarity in shape between Appellant's interface (see
Spec. Fig. 2) and Grant's interface (see Grant Fig. 1), we find the Examiner
to be on solid ground in finding that the reaction forces would be distributed
similarly. Compare Spec. Fig. 2 with Grant Fig. 1. We note that the
Examiner's identified first and second reaction forces FR, FN appear to
extend through the thickest portion of hub a of Grant (Ans. 16) at least to the
same extent as Appellant's first and second reaction forces extend through
the thickest portion of hub 18 (Spec. Fig. 2).
For the foregoing reasons, we do not find that the Examiner erred in
finding that Grant anticipates claim 3. We sustain the rejection of claim 3
under 35 U.S.C. § 102(a)(l) as anticipated by Grant.
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Claim 5
The Examiner finds that Grant discloses a bearing spacer that defines
a compound radius, as required by dependent claim 5. Final Act. 6 ( citing
Grant Fig. 1 ). The Examiner and Appellant take the same positions as
described above in connection with Rejection I. Ans. 17-18; Reply Br. 15.
Again, we are persuaded by Appellant's argument that the Examiner's
position, which relies on the straight portion of the interface of the bearing
bore and hub in Grant's Figure 1, and not just the rounded portion, is in
error. Moreover, it reasonably cannot be determined through observation of
Grant's Figure 1 whether the rounded portion of the interface of the bearing
bore and hub in Grant's Figure 1 has a compound radius.
For the foregoing reasons, we find that the Examiner erred in finding
that Grant anticipates claim 5. We do not sustain the rejection of claim 5
under 35 U.S.C. § 102(a)(l) as anticipated by Grant.
Claims 12 and 14
Appellant presents similar arguments as discussed above in
connection with claims 1 and 3. Appeal Br. 16-17. For similar reasons as
those discussed above, we do not find these arguments persuasive.
Accordingly, we sustain the rejection of claims 12 and 14 under 35 U.S.C.
§ 102(a)(l) as anticipated by Grant.
Rejection III
In contesting the rejection of claims 2, 7, and 13, Appellant argues
that Proeschel does not overcome the deficiencies of Li and Grant. Appeal
Br. 17-18. Because we have found no deficiencies in Li and Grant for the
reasons discussed above, Appellant's argument does not apprise us of error.
Appellant also argues that "there would have been no apparent reason for
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one having ordinary skill in the art to have modified the method or system
described by Li or Grant in view of Proeschel in the manner proposed by the
Examiner." Id. at 17. Appellant, however, does not identify any flaw in the
Examiner's reasoning articulated in support of the conclusion of obviousness
(Final Act. 8-9) or adequately explain why this reasoning lacks rational
underpinnings. Accordingly, we sustain the rejection of claims 2, 7, and 13
under 35 U.S.C. § 103 as unpatentable over either Li or Grant and also
Proeschel.
Re} ection IV
Dependent claims 4 and 15 require the bearing assembly to
additionally include, in relevant part, "an axle sleeve configured to contact
the axle." Appeal Br. 27, 30 (Claims App.). The Examiner acknowledges
that Grant "fails to disclose an axle sleeve configured to contact the axle
such that the bearing cone is positioned between the bearing roller and the
axle sleeve." Final Act. 9. The Examiner finds that Long teaches axle
sleeve 26 configured to contact axle 23 such that a bearing cone is
positioned between the roller of roller bearing 21 and axle sleeve 26 (id.)
and concludes that it would have been obvious to modify Grant to include an
axle sleeve "to provide predictable results for protecting the axle from
physical damage during maintenance of the wheel assembly and during the
use of [the] wheel assembly" (id. at 9-10).
Appellant argues that "[a] person of ordinary skill in the art would
have had no apparent reason to add the 'removable sleeve 26' of Long to the
axle b of Grant because Grant already describes an inner sleeve a1 and a
second sleeve d1 ." Appeal Br. 20 (footnote omitted). Appellant also argues
that "adding the removable sleeve of Long to the axle of Grant would have
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interfered with the 'rollers [] revolv[ing] around said sleeve [i.e., Grant's
inner sleeve]."' Id. The Examiner maintains that a sleeve positioned
between the identified bearing cone d1 and the axle of Grant would
predictably protect the axle. We are not persuaded that the Examiner's
proposed modification of Grant to include a sleeve like Long would yield
anything other than a result that would have been predictable to one of
ordinary skill in the art. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007) ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results."). Appellant does not persuasively refute the Examiner's reasoning.
Accordingly, we sustain the rejection of claims 4 and 15 under 35 U.S.C.
§ 103 as unpatentable over Grant and Long.
Rejection V
Dependent claim 6 recites that "the bearing bore has a compound
radius comprising a first radius of about 1. 78 cm and a second radius of
about 5.94 cm." Appeal Br. 27 (Claims App). The Examiner finds that
although Li and Grant disclose bearing bores having a compound radius,
they "both fail to expressly disclose the compound radius comprising a first
radius of about 1.78 cm and a second radius of about 5.94 cm." Final Act.
10. The Examiner concludes that it would have been obvious
as a mechanical expedient, to have formed the bearing bore [ with
the particular recited radii] based upon a number of factors, such
as the dimensions of the bearing components, the materials of the
hub and bearing components, and the intended use of the wheel
assembly to ensure that the bearing assembly adequately
corresponds to the bearing bore so that the wheel can rotate
relative to the axle without binding between the bearing
assembly and bearing bore.
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Id. In the Answer, the Examiner maintains the foregoing and adds that "the
relative dimensions between the bearing bore and the bearing assembly are
optimized to ensure binding does not result during assembly of the
components." Ans. 20.
Appellant argues that the Examiner has not shown adequately that
"the radii of a bearing bore affects the prevention of binding between a
bearing assembly and a bearing bore." Appeal Br. 22. We agree with
Appellant that the Examiner has not explained adequately how a radius of a
bearing bore, much less first and second radii of a compound radius of a
bearing bore, is a result-effective variable that affects binding between a
bearing assembly and bearing bore. In re Applied Materials, Inc., 692 F.3d
1289, 1295 (Fed. Cir. 2012) (stating it is not inventive to discover the
optimum or workable ranges by routine experimentation unless the
optimized variable is a result-effective variable). The Examiner has also not
otherwise shown how the first and second radii of a compound radius are
result-effective variables subject to routine optimization, such that varying
the radii of the compound radius would achieve any particular result.
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of claim 6 would have been obvious over
Li or Grant. We do not sustain the rejection of claim 6 under 35 U.S.C.
§ 103 as unpatentable over either Li or Grant.
Re} ection VI
Claims 8-10
In contesting the rejection of claims 8-10, Appellant argues that
Hogan does not overcome the deficiencies of Li and Grant. Appeal Br. 23-
24. Because we have found no deficiencies in Li and Grant for the reasons
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discussed above, Appellant's argument does not apprise us of error.
Appellant also argues that "there would have been no apparent reason for
one having ordinary skill in the art to have modified the methods described
by Li or Grant in view of Hogan in the manner proposed by the Examiner."
Id. at 23. Appellant, however, does not identify any flaw in the Examiner's
reasoning articulated in support of the conclusion of obviousness (Final Act.
10-11) or adequately explain why this reasoning lacks rational
underpinnings. Accordingly, we sustain the rejection of claims 8-10 under
35 U.S.C. § 103 as unpatentable over either Li or Grant and also Hogan.
Claim 11
Dependent claim 11 is similar to dependent claim 6 in that it recites
"the bearing bore having a compound radius comprising a first radius of
about 1.78 cm and a second radius of about 5.94 cm." Appeal Br. 28
(Claims App.). The Examiner and Appellant take the same positions as
described above in connection with Rejection V. Final Act. 11; Ans. 20;
Appeal Br. 24. For the same reasons as described above in connection with
Rejection V, we find that the Examiner erred in concluding that the subject
matter of claim 11 would have been obvious over either Li or Grant and also
Hogan. We do not sustain the rejection of claim 11 under 35 U.S.C. § 103
as unpatentable over either Li or Grant and also Hogan.
DECISION
The Examiner's decision to reject claims 1, 3, 12, and 14 under
35 U.S.C. § 102(a)(l) as anticipated by Li is affirmed.
The Examiner's decision to reject claim 5 under 35 U.S.C. § 102(a)(l)
as anticipated by Li is reversed.
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The Examiner's decision to reject claims 1, 3, 12, and 14 under
35 U.S.C. § 102(a)(l) as anticipated by Grant is affirmed.
The Examiner's decision to reject claim 5 under 35 U.S.C. § 102(a)(l)
as anticipated by Grant is reversed.
The Examiner's decision to reject claims 2, 7, and 13 under 35 U.S.C.
§ 103 as unpatentable over either Li or Grant and also Proeschel is affirmed.
The Examiner's decision to reject claims 4 and 15 under 35 U.S.C.
§ 103 as unpatentable over Grant and Long is affirmed.
The Examiner's decision to reject claim 6 under 35 U.S.C. § 103 as
unpatentable over either Li or Grant is reversed.
The Examiner's decision to reject claims 8-10 under 35 U.S.C. § 103
as unpatentable over either Li or Grant and also Hogan is affirmed.
The Examiner's decision to reject claim 11 under 35 U.S.C. § 103 as
unpatentable over either Li or Grant and also Hogan is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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