Ex Parte Shook

Patent Trial and Appeal Board

Apr 26, 2018

12380919 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/380,919 0310512009
3404 7590 04/27/2018
PURDUE LAW OFFICES
2735 N. HOLLAND-SYLVANIA ROAD
SUITE B-2
TOLDEO, OH 43615
FIRST NAMED INVENTOR
William Shook
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.
500.0017 7244
EXAMINER
CHAU, TERRY C
ART UNIT PAPER NUMBER
3655
MAILDATE DELIVERY MODE
04/27/2018 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 WILLIAM SHOOK
Appeal2016-002988
Application 12/380,919
Technology Center 3600
Before STEVEND.A. McCARTHY, MICHELLE R. OSINSKI and
PAUL J. KORNICZKY, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge.
DECISION ON APPEAL
1 STATEMENT OF THE CASE
2 The Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
3 final decision rejecting claims 24--41 under pre-AIA 35 U.S.C. § 103(a) as
4 being unpatentable over Dughera (US 1,429,196, issued Sept. 12, 1922);
5 Osplack (US 2,352,911, issued July 4, 1944); Barr (US 2,724,624, issued
6 Nov. 22, 1955); and Kanehisa (US 6,497,314 B2, issued Dec. 24, 2002). A
7 hearing was conducted on April 17, 2018. We have jurisdiction under 35
8 U.S.C. § 6(b ).
9 We REVERSE.
The Appeal Brief identifies the Appellant as the real party in interest.
Appeal 2016-002988
Application 12/380,919
1 The appealed claims are directed to a coaster or freewheel mechanism
2 for use in a bicycle. (See Spec. 1 ). Claims 24, 32 and 39 are independent.
3 Claim 24 recites:
4 24. A bicycle coasting mechanism including a one way
5 torque transmitting drive system, said one way torque
6 transmitting drive system comprising:
7 a drive body with bearing races and a contact surface;
8 a driven body with matching bearing races and a contact
9 surface; and
10 elastically flexible rolling bearing elements in said bearing
11 races that support a gap between said contact surfaces during
12 coasting;
13 wherein at least one of said drive body and driven
14 body are made of a light weight material comprising
15 aluminum, magnesium, or engineering plastic with
16 integral bearing races, and wherein said rolling element
17 bearings are made of plastic or rubber; said rolling bearing
18 elements are elastically flexible enough not to damage the
19 light weight material forming the bearing races;
20 wherein during the application of a sufficiently high
21 driving force to the drive body in a first direction, said
22 bearing elements flex sufficiently to close said gap, the
23 one way torque transmitting system engages the drive
24 body with the driven body so that the contact surfaces of
25 the drive body and the driven body contact each other and
26 do not slide relative to each other, and driving force loads
2 7 are primarily transferred through said contact surfaces,
2 8 and the one way torque transmitting system transfers
29 torque created from said driving force from the drive body
30 to the driven body in one direction; and
31 wherein the one way torque transmitting system
32 disengages the drive body from the driven body, and said
33 bearing elements spring back, without damage, with
34 removal of said driving force, to act as rolling element
2
Appeal 2016-002988
Application 12/380,919
1 bearings during coasting in the direction opposite that of
2 the one way torque transmitting drive system.
3 Dughera describes a free-wheel device for a bicycle including two
4 rims 1, 2 spaced concentrically by bearing balls 7. The radially-inner
5 surface of the outer rim 1 has ratchet teeth 3. A spring stirrup 6 biases pawls
6 5 mounted on the inner rim 2 toward engagement with the ratchet teeth 3.
7 (See generally Dughera, 11. 34---65 & Fig. 1 ). This arrangement permits the
8 outer rim 1 to rotate independently of the inner rim 2 in one angular
9 direction while constraining the two rims to rotate as a unit in the other
10 angular direction. (See Dughera, 11. 8-13).
11 Osplack describes an annular bearing for supporting rotating parts in
12 precision machinery. (See Osplack 1, first col., 11. 1-5; second col., 11. 16-
13 18; & Fig. 2). The annular bearing depicted in Figure 2 of Osplack includes
14 concentric inner and outer members 40, 43 defining facing bearing surfaces
15 42, 44; and bearing balls 41 radially separating the inner and outer members.
16 (See Osplack 2, first col., 11. 2-13 & Fig. 2). Osplack teaches that precision
17 bearings of this type ordinarily are produced from metal; and that such
18 bearings ordinarily operate at forces below the elastic limit of the metal.
19 (See Osplack 1, first col., 11. 34--45). In this sense, the Examiner correctly
20 finds that Osplack describes a bearing having elastic bearing elements. (See
21 Final Office Action, mailed Nov. 6, 2014 ("Final Act."), at 4).
22 Dughera is silent as to the materials from which the components of the
23 free-wheel device, other than the spring stirrup 6, were fabricated. Dughera
24 is also silent as to any deformation of the bearing elements during normal
25 operation of the device. Nevertheless, the Examiner concludes that:
26 It would have been obvious to replace the bearings of Dughera
27 with elastically flexible rolling bearings, wherein during the
3
Appeal 2016-002988
Application 12/380,919
1 application of a sufficiently high driving force to the drive body
2 in a first direction, said bearing elements flex[ ed] sufficiently to
3 close said gap, since such an arrangement [would have]
4 prevent[ ed] permanent deformation of the rolling bearing
5 elements by accounting for momentary overload or shock.
6 (Final Act. 5 (citing Osplack 1, first col., 11. 24--32)).
7 We need not address whether one familiar with the teachings of
8 Dughera and Osplack might have had reason to substitute elastically flexible
9 bearing elements for the bearing balls described by Dughera. Osplack does
10 not teach or suggest any reason why one might wish a rolling bearing flex
11 sufficiently to close the gap between the inner and outer raceways. (See
12 generally "Applicant's Brief on Appeal," dated June 2, 2015 ("Br."), at 10-
13 12). Indeed, Osplack disparages the application of excessive loads on
14 rolling bearings used in precision tools, since such loads might cause
15 permanent damage to the bearings. (See generally Osplack 1, first col., 11.
16 13-53). In this sense, Osplack teaches away, at least in the context of
17 precision machinery, from configuring a rolling bearing so as to flex
18 sufficiently to close the gap between the inner and outer raceways during an
19 application of a sufficiently high driving force.
20 Therefore, the combined teachings of Dughera and Osplack would not
21 have provided one of ordinary skill in the art reason to modify Dughera' s
22 free-wheel device so as to satisfy the functional limitations of claim 24.
23 Neither the teachings of Barr, nor those of Kanehisa, remedies this
24 deficiency. (See Br. 13). Barr describes a plastic bearing having concentric
25 inner and outer raceways 1, 2 separated by interspersed polymeric bearing
26 balls 12, 13. (See Barr, col. 1, 1. 55 - col. 2, 1. 5 & Fig. 1 ). The Examiner
27 correctly finds that "Barr discloses elastically flexible rolling element
28 bearings (12, 13) ... made of plastic or rubber." (Final Act. 5).
4
Appeal 2016-002988
Application 12/380,919
1 Nevertheless, even assuming that it would have been obvious "to form the
2 elastically flexible rolling bearing elements from plastic or a rubber material
3 in view of the teaching of Barr that such material may be selected for a[ n]
4 elastically flexible rolling bearing element" (Final Act. 6), Barr would not
5 have taught or suggested the functional limitations of claim 24.
6 Kanehisa teaches that a freewheel device for a bicycle may include
7 aluminum components. (See Kanehisa, col. 9, 11. 47--49 & col. 10, 11. 10-
8 13). This teaching would not have provided one of ordinary skill in the art
9 reason to modify Dughera's free-wheel device to satisfy the functional
10 limitations of claim 24.
11 Therefore, we do not sustain the rejection of claims 24--31 under
12 § 103(a) as being unpatentable over Dughera, Osplack, Barr and Kanehisa.
13 For similar reasons, we do not sustain the rejection of claims 32--41 under
14 § 103(a), either.
15
16 DECISION
17 We REVERSE the Examiner's decision rejecting claims 24--41.
18
19 REVERSED
5