Ex Parte Perry et al

Patent Trial and Appeal Board

Aug 8, 2017

13469656 (P.T.A.B. Aug. 8, 2017)

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.
P001241-R&D-SDJ 3458
EXAMINER
YABUT, DANIEL D
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
13/469,656 05/11/2012
104102 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
08/09/2017
Thomas A. Perry
08/09/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS A. PERRY, EDWARD P. BECKER, EMERSON J.
ADAMS, and ANIL K. SACHDEV
Appeal 2016-006070
Application 13/469,656
Technology Center 3600
Before ST. JOHN COURTENAY III, TERRENCE W. McMILLIN, and
JASON M. REPKO, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
rejection of claims 1 and 3—8, which are all the claims pending in this
application.1 Claim 2 was cancelled. Claims 9—15 were withdrawn. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer herein to the Final Office Action, mailed March 31, 2015; the
Appeal Brief, filed on September 30, 2015; the Examiner’s Answer, mailed
March 21, 2016; and the Reply Brief filed on May 23, 2016.
Appeal 2016-006070
Application 13/469,656
STATEMENT OF THE CASE
Invention
The disclosed and claimed invention on appeal “generally relates to
products including automotive powertrain component and bearing
assemblies, and to ways of facilitating movement between automotive
powertrain components and bearings.” (Spec. 11).
Claim 1 is representative, and is reproduced below:
1. A product comprising:
an automotive powertrain component having a first
surface, the automotive powertrain component constructed and
arranged to move during use of the automotive powertrain
component;
a bearing constructed and arranged to facilitate movement
of the automotive powertrain component during use of the
automotive powertrain component, the bearing having a second
surface constructed and arranged to oppose the first surface when
the bearing is facilitating movement of the automotive
powertrain component; and
[L] a plurality of micropores located on at least a
portion of the first surface, of the second surface, or of both
the first and second surfaces, the plurality of micropores
constructed and arranged to retain lubricant therein, wherein the
lubricant retained in the plurality of micropores is lifted above
respective openings of the plurality of micropores during use of
the automotive powertrain component and into a space located
between the first surface and the second surface and wherein the
automotive powertrain component comprises a camshaft and the
bearing comprises a bushing and journal assembly, wherein the
first surface comprises a journal surface of the camshaft and the
second surface comprises an inboard surface of the bushing, and
wherein the plurality of micropores are located on the journal
surface.
2
Appeal 2016-006070
Application 13/469,656
(Bracketed matter and emphasis added with respect to contested limitation
L)-
Rejections
A. Claims 1, 3, and 7 are rejected under pre-AIA 35 U.S.C. § 102(b), as
being anticipated by Gunji et al. (JP 06174051 A) (hereinafter
“Gunji”).
B. Claims 1, 5, and 6 are rejected under pre-AIA 35 U.S.C. § 103(a), as
being obvious over the combined teachings and suggestions of
Maurin-Perrier et al. (US 2010/0024592 Al) (hereinafter “Maurin-
Perrier”) in view of Gunji.
C. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a), as being
obvious over the combined teachings and suggestions of Gunji in
view of Rivere (US Patent 4,565,168).2
D. Claims 1 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a), as
being obvious over the combined teachings and suggestions of Mori
(US 4,105,267) in view of Gunji.
Grouping of Claims
Based upon Appellants’ arguments, we decide the appeal of § 102
rejection A of claims 1,3, and 7 on the basis of representative independent
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We decide the appeal of § 103
2 The Examiner transposes digits and references an incorrect patent number
for Rivere (4,656,168 — Final Act. 7), instead of the correct patent number
(Rivere, US Patent 4,565,168, “VALVE CONTROL DEVICE,
PARTICULARLY FOR VALVES OF INTERNAL COMBUSTION
ENGINES,” issued Jan. 21, 1986). We consider this as a typographical
error, and have corrected the Rivere patent number in Rejection C above.
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Appeal 2016-006070
Application 13/469,656
rejection B of claims 1, 5, and 6 on the basis of representative independent
claim 1, and we decide the appeal of § 103 rejection D of claims 1 and 8 on
the basis of representative independent claim 1. We address remaining
rejection C of claim 4, infra. To the extent Appellants have not advanced
separate, substantive arguments for particular claims, or other issues, such
arguments are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We find Appellants’ arguments unpersuasive, for the reasons
discussed infra. Regarding rejections A, B, C, and D, we adopt as our own:
(1) the findings and legal conclusions set forth by the Examiner in the Final
Office Action from which this appeal is taken (Final Act. 2—10), and (2) the
findings, legal conclusions, and explanations set forth in the Answer (2—6) in
response to Appellants’ arguments. We highlight and address specific
findings and arguments for emphasis in our analysis below.
Rejection A of Representative Independent Claim 1 under § 102(b)
Issue: Under § 102(b), did the Examiner err in finding the cited Gunji
reference expressly or inherently discloses contested limitation L:
a plurality of micropores located on at least a portion of the first
surface, of the second surface, or of both the first and second surfaces\f
within the meaning of representative claim l?3 (emphasis added).
3 We give the contested claim limitation the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
4
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Application 13/469,656
Regarding representative claim 1, Appellants reference a “statement
of facts” (SF), listed on page 16 of the Appeal Brief, and contend, inter alia
Regarding claim 1; Gunji does not disclose "a plurality of
micropores located on at least a portion of the first surface, of
the second surface, or of both the first and second surfaces" as
recited in claim 1. (SF1-SF5) Gunji merely discloses pillar­
shaped metallic crystals 6 consisting of face centered cubic
structure (fee structure) on parent metal 2 and troughs 8
between adjacent pillars. (SF1, SF2) Gunji discloses that the
pillars may form pyramids or truncated pyramids with troughs
there between. (SF1, SF2) Based on the Gunji disclosure,
clearly the troughs are on the atomic scale and at best have
dimensions on the angstrom level (one hundred-millionth of a
centimeter, 10'10). Gunji explains that the FCC structure of the
surface is what defines the pyramids and troughs. (SF1, SF3,
SF4) In claim 1, the prefix "micro" references a millionth.
Therefore, a micropore is a pore having dimensions in a
range one or more millionth of a meter. (SF4) The Examiner
suggested that because Figure is a "microphotograph" that the
pyramids of Gunji must therefore be micropores. Applicant
disagrees. One of ordinary skill in the art would appreciate that
pyramids and troughs on the angstrom scale is not equivalent to
a plurality of pores on a micro-scale. Gunji does not disclose a
micropore. (SF1-SF5)
(App. Br. 10-11) (emphasis added).
The Examiner disagrees (Ans. 3):
In response, nowhere in Gunji does it disclose or
reasonably suggest that the troughs 8 are "on the atomic scale."
Appellant insinuates that, because of the mere mention of
metallic crystals having an FCC orientation, the "pyramid" or
"peak" parts 7 must be dimensioned at an angstrom level.
1048, 1054 (Fed. Cir. 1997). Cf. Spec. 134: “The above description of
embodiments of the invention is merely illustrative in nature and, thus,
variations thereof are not to be regarded as a departure from the spirit and
scope of the invention.”
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Appeal 2016-006070
Application 13/469,656
Appeal Br. 10-11. However, the mere mention of an FCC
structure does not automatically require or suggest that the
troughs 8 are dimensioned on the "angstrom level."
Rather, Gunji discloses that the "pyramid" or "peak" arts
7 are formed from "an aggregate of a metallic crystals] with a
face centered cubic structure (fee structure)" (emphasis) that
"grows more nearly pillar-shaped" until "it makes ... the shape
of a pyramid or the shape of a truncated pyramid." Gunji at |
[0008]-[0009]. Appellant wholly ignores the aspect that both
the peaks 7 (and therefore troughs 8) are formed from an
aggregate of crystals that have an FCC structure. Gunji at |
[0008]-[0009]. As such, Appellant's assumption that the
troughs 8 are dimensioned at the "angstrom level" is an
unsupported assertion.
The Examiner further finds:
Moreover, Gunji ostensibly discloses that the troughs 8
are indeed dimensioned to be on the micro level. Figure 8 in
Gunji illustrates a microphotograph indicating a scale at the
micro level because the lower portion therein indicates a "5
pm" unit of measurement. The appendix attached herein
includes a partial human translation of Gunji (Steve Spar,
"Partial Translation of JP 6-174051 A," Mar. 9, 2016, Scientific
& Technical Information Center: Translations Service Center:
"Partial Translation) which also conveys that the aggregate of
metallic crystals are observable in the microphotograph ("a
large number of (3hhh) orientation Ni crystals comprised of
square cones are observed”; Partial Translation at | [0022]) and
thus measureable by the scale bar indicating "5 pm".
Furthermore, Gunji discloses in Table 5 that the "particle
diameter" of each sliding surface 4a having various crystal
modes may range anywhere from 0.5 to 3 pm. Partial
Translation at | [0021], As such, given the preponderance of
the evidence, Gunji indeed discloses the troughs 8 as being
dimensioned to be at the "micro" level.
(Ans. 3—4).
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Appeal 2016-006070
Application 13/469,656
Claim Construction
This appeal turns upon claim construction regarding the claim term
“micropores.” (Claim 1). Turning to Appellants’ Specification (| 17) for
context, we agree with the Examiner’s finding that “Gunji indeed discloses a
‘micropore’ given its broadest reasonable interpretation.” (Ans. 4). See n.3,
supra.
Instead of a definition, we find Appellants’ description of a
“micropore” in the Specification (| 17) is merely exemplary and non­
limiting. We reproduce 117 in pertinent part below:
Each micropore 14 may have a diameter and depth, each
ranging approximately between 1 microns to 100 microns. And
each micropore 14 may have a density ranging between 1
micropore/mm2 to 1 micropore/10mm2, and may be spaced 10
microns to 1000 microns apart from one another at their closest
proximity. Of course, other shapes, dimensions, and
frequencies are possible.
(emphasis added).
Given the absence of a limiting definition in the claim or Specification
regarding the size of the contested “micropores”, on this record, we are not
persuaded the Examiner’s reading is overly broad, unreasonable, or
inconsistent with the Specification.4 (See Final Act. 2—3; Ans. 2—5).
Moreover, the Examiner has provided in the record a (human) partial
translation of Gunji (H 21—22) that clearly indicates (in column 3 of Table
4 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007).
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Application 13/469,656
5) particle diameters on the order of microns: “About 2” pm (i.e., where one
“micrometer” (American spelling) = 1 x 10'6 of a meter = one “micron”).
For at least the aforementioned reasons, and based upon a
preponderance of the evidence, we do not find persuasive Appellants’
arguments alleging the Examiner has not shown Gunji anticipates contested
limitation L of claim 1. (App. Br. 10—13). Therefore, we sustain the
Examiner’s rejection A under § 102(b) of independent representative claim 1,
and grouped dependent claims 3 and 7, also rejected under rejection A. See
Grouping of Claims, supra.
Claims 1, 4—6 and 8 Rejected under §103
Regarding §103 rejections B, C, and D, Appellants urge that the
addition of the cited secondary references does not overcome the
deficiencies of Gunji. (App. Br. 13—15). However, we find no deficiencies
regarding Gunji, for the reasons discussed above regarding § 102 rejection A
of claim 1.
Regarding §103 rejections B, C, and D of claims 1, 4—6, and 8, we
note with emphasis Appellants’ statement in the Appeal Brief (13) that Gunji
is “a prior art reference that is only ‘substantially the same’ to claim l.”5
(emphasis added).
5 See 37 C.F.R. § 1.104(c)( 3)(“In rejecting claims the examiner may rely
upon admissions by the applicant, or the patent owner in a reexamination
proceeding, as to any matter affecting patentability and, insofar as rejections
in applications are concerned, may also rely upon facts within his or her
knowledge pursuant to paragraph (d)(2) of this section.”) See also MPEP
§ 2129(1), regarding admissions generally.
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Given Appellants’ admission (id.), and the evidence relied upon by
the Examiner (Final Act. 4—10), we find the contested limitations of claims
1, 4—6, and 8 are at least suggested by the proffered combinations of Gunji
and the additionally cited references: i.e., Maurin-Perrie, Rivere, and Mori,
regarding §103 rejections B, C, and D, respectively. Our reviewing court
guides: ‘“the question under [35 U.S.C. § 103] is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made. Merck & Co.
v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989), cert,
denied, 493 U.S. 975 (1989); see also MPEP § 2123.
Applying this reasoning here, we agree with and adopt the Examiner’s
findings regarding claims 1, 4—6, and 8, rejected under §103 rejections B, C,
and D. (Final Act. 4—10).
Nevertheless, Appellants urge that one of ordinary skill in the art
would not have been motivated to combine Gunji with Maurin-Perrie,
Rivere, and Mori, respectively (regarding rejections B, C, and D), “because
doing so would not arrive at the same elements as recited in claim 1.” (App.
Br. 13).
We find this argument unavailing, because the hypothetical artisan
would have had no knowledge of the elements of Appellants’ claim 1, nor
have Appellants advanced a substantive argument alleging the Examiner has
relied on impermissible hindsight reconstruction. Instead, Appellants
merely cite to W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
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Application 13/469,656
1553 (Fed. Cir. 1983), as case law, without any supporting substantive
arguments alleging hindsight. (See App. Br. 9).
We find the Examiner has set forth sufficient “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). See also 35
U.S.C. § 132(a) (regarding the notice requirement to establish a prima facie
case). Appellants have not substantively traversed the Examiner’s specific
motivation findings for rejections B, C, and D under §103. (See Final Act.
5—6, 7, and 8—9).
Moreover, Appellants have not provided persuasive evidence that
combining the respective teachings of the references (as proffered by the
Examiner — Final Act. 4—9) would have been “uniquely challenging or
difficult for one of ordinary skill in the art,” or that such a combination
would have “represented an unobvious step over the prior art.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Nor have Appellants provided any objective evidence of secondary
considerations, which our reviewing court guides, “operates as a beneficial
check on hindsight.” Cheese Systems, Inc. v. Tetra Pak Cheese and Powder
Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Because we find no deficiencies with Gunji, and for the additional
reasons discussed above, we also sustain the Examiner’s §103 rejections B,
C, and D of claims 1, 4—6, and 8.
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Reply Brief
To the extent Appellants advance new arguments in the Reply Brief
not in response to a shift in the Examiner’s position in the Answer, we note
arguments raised in a Reply Brief that were not raised in the Appeal Brief or
are not responsive to arguments raised in the Examiner’s Answer will not be
considered except for good cause. See 37 C.F.R. § 41.41(b)(2).
DECISION
We affirm the Examiner’s decision rejecting claims 1,3, and 7 under
pre-AIA 35 U.S.C. § 102(b).
We affirm the Examiner’s decision rejecting claims 1, 4—6 and 8
under pre-AIA 35 U.S.C. § 103(a).
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a) (1) (iv). See 37 C.F.R. § 41.50(f).
AFFIRMED
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