Aktiebolaget SKF

Patent Trials and Appeals Board

Jul 26, 2021

2021000677 (P.T.A.B. Jul. 26, 2021)

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.
16/166,208 10/22/2018 Bryan Allison 2018P00088US 1001
16284 7590 07/26/2021
SKF GmbH
IA & IP
Gunnar-Wester-Strasse 12
Schweinfurt, 97421
GERMANY
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
07/26/2021 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
ipr@skf.com
skf_notification@jtek-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN ALLISON
Appeal 2021-000677
Application 16/166,208
Technology Center 3600
Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
LEE L. STEPINA, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision, set forth in the Non-Final Office Action issued April
28, 2020 (hereinafter “Non-Final Act.”),2 to reject claims 8–15. 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(a). Appellant identifies the real party in interest as
Aktiebolaget SKF. Appeal Br. 1.
2 The Examiner issued this Office Action as a Final Action, but the finality
of the Office Action was withdrawn in a Decision on Petition dated July 10,
2020.
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Application 16/166,208

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a “rolling bearing comprising an
outer ring and an inner ring, wherein rolling elements are arranged between
the outer ring and the inner ring, and wherein the rolling elements are spaced
apart by a cage being arranged between the outer ring and the inner ring.”
Spec. ¶ 1. Claims 8 and 14 are independent. Claim 8, reproduced below, is
illustrative of the claimed subject matter.
8. A rolling bearing comprising:
an outer ring and an inner ring, wherein the outer ring
and/or the inner ring is formed from a steel with carbide
precipitation,
a bearing cage between the inner ring and the outer ring;
and
a plurality of rolling elements retained by the cage, the
cage maintaining a spacing of the plurality of rolling elements;
wherein the cage comprises reinforcing fibers in a
polymer matrix, and
wherein particles of the steel are completely embedded in
the polymer matrix.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nagai US 7,766,553 B2 Aug. 3, 2010
Maejima US 8,523,450 B2 Sept. 3, 2013

REJECTIONS
Claims 8–15 stand rejected under 35 U.S.C. § 112(b) as failing to set
forth the subject matter the inventor regards as the invention and as being
indefinite.
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Claims 8–12 and 14 stand rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Maejima.
Claims 13 and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Maejima and Nagai.
OPINION
Rejections Under 35 U.S.C. § 112(b)
The Examiner rejects claims 8–15 as failing to set forth what the
inventor regards as the invention. Non-Final Act. 2. The stated basis for
this rejection is that, as evidenced by the disclosure in paragraphs 28 and 32
of the Specification, which describe what may occur if there is
contamination when the bearing is used, Appellant “is attempting to define
the invention based on what it may become if it were exposed to
contamination, claiming what the device becomes during use is not claiming
what the device is, the invention being a cage made out of a specific resin
and fiber combination.”3 Non-Final Act. 2–3. According to the Examiner,
“[w]hat the invention may become if used is not the actual invention or the
product that would be marketed to a consumer.” Ans. 4.
Appellant argues that “[t]he claims define a physical apparatus, and
there is no legal requirement that only ‘unused’ devices can be claimed.”
Appeal Br. 4. The Examiner does not cite any authority to support the
position that 35 U.S.C. § 112(b) prohibits an applicant from claiming a
product in a state in which it exists after being used, or restricts product

3 The use of the term “may” in paragraphs 28 and 32 of the Specification
contemplates that particles may not migrate from the rings or may not
penetrate and become embedded in the cage. However, claims 8–15
encompass only rolling bearings in which this has occurred.
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claims to a product that would be marketed to a consumer. Accordingly, this
is not a basis for a sustainable rejection under 35 U.S.C. § 112(b).
The Examiner also rejects claims 8–15 as being indefinite on the basis
that they are “incomplete for omitting essential elements/features, such
omission amounting to a gap between the elements.” Non-Final Act. 3. The
Examiner explains that “[t]he omitted element/feature is that the bearing has
to be in use to generate the particles so that the particles are separated from
the steel rings, as stated in” paragraph 28 of Appellant’s Specification.
Non-Final Act. 3. According to the Examiner, because “the particles
‘originate’ from the rings during use of the bearing,” this “is essential to
understanding the claim and the invention,” and, thus, the claims must recite
“that the bearing be in use to generate the particles” or recite “a conditional
requirement of contamination being present.” Non-Final Act. 3.
Appellant emphasizes that claims 8–15 are apparatus claims which
“define a rolling bearing having certain physical characteristics.” Appeal
Br. 4. Appellant characterizes the Examiner’s rejection as holding apparatus
claims “indefinite unless they also recite the method by which certain
physical characteristics of the claimed invention came into existence.”
Appeal Br. 4. Appellant contends that “[t]here is no legal requirement that a
claim define how each claimed structure came into existence or into the
form being claimed.” Appeal Br. 4.
In responding to Appellant’s argument, the Examiner does not cite
any authority to support the position that apparatus or article claims must
recite the process by which the claimed structure of the apparatus or article
came into existence. See Ans. 6 (stating that, “[i]f Appellant wishes to claim
a bearing that is being used or has been used this condition should be set
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forth for completeness” and that “[t]he disclosure does not cover a bearing
that is made with the features but rather a bearing that upon use may have
the features, since this is conditional in the disclosure the conditions should
also be claimed to properly claim what Appellant appears to be seeking
coverage for”).
It is the function of the specification, not the claims, to set forth the
practical limits of operation for an invention. One does not look to claims to
find out how to practice the invention they define, but to the specification.
See In re Johnson, 558 F.2d 1008, 1017 (CCPA 1977) (holding the PTO in
error for, in essence, requiring “the claims to set forth the practical limits for
the invention and [thereby] effectively ignor[ing] the scope of enablement
provided by the specification as a whole”). The Examiner does not assert
that Appellant’s Specification is deficient in explaining the physical
mechanisms by which the claimed invention (a bearing with particles of
steel from the rings completely embedded in the polymer matrix of the cage)
was formed or persuasively explain why those of skill in the art would be
confused about the scope of the claims. Accordingly, the Examiner does not
set forth a sustainable basis for concluding that the claims are indefinite for
omitting essential elements.
Finally, the Examiner determines that the claims are indefinite
because, according to the Examiner, there is insufficient antecedent basis for
“the limitation ‘particles of the steel’” in claims 8 and 14. Non-Final Act. 3.
Appellant submits that “[c]laims 8 and 14 positively recite ‘a steel,’ which
provides antecedent basis for a later reference to ‘the steel.’”4 Appeal Br. 4.

4 We further note that claims 8 and 14 recite, more specifically, that at least
one of the rings “is formed from a steel with carbide precipitation.” Appeal
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Appellant correctly explains that the recitation “particles of the steel” is the
first positive recitation of particles and requires no antecedent basis. The
skilled artisan would understand that, in the claimed bearing, particles of the
steel from which the at least one ring is formed are completely embedded in
the cage. Accordingly, the recitation of “particles of steel” in claims 8 and
14 does not render the claims indefinite.
For the above reasons, we do not sustain any of the rejections of
claims 8–15 under 35 U.S.C. § 112(b).
Rejection Under 35 U.S.C. § 102(a)(1)
The Examiner finds that Maejima discloses a rolling bearing
comprising, in relevant part, inner and outer rings formed from a steel with
carbide precipitation and a cage comprising reinforcing fibers in a polymer
matrix (PEEK with glass or carbon fibers). Non-Final Act. 4 (citing
Maejima, col. 6, ll. 38–49 regarding carburized steel rings; Maejima, col. 6,
l. 66–col. 7, l. 9 regarding cage material). The Examiner finds that “when
the bearing is operational[,] particles of steel that have separated from the
steel rings (hard particle contamination) can be completely embedded in the
polymer matrix” because Maejima’s cage is “made out of the same general
materials, PEEK with a reinforcing material, as in the instant application.”
Non-Final Act. 4 (emphasis added). According to the Examiner, Maejima’s
cage, “based on being made of the same material [as Appellant’s cage,] is
capable of performing the function of absorbing hard particles that might

Br. 9 (Claims App.). A person having ordinary skill in the art would
understand that this means that there will be particles from the steel that can
potentially migrate from the steel ring.
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contaminate the bearing including hard particles that may separate from the
rings as the rings wear.” Non-Final Act. 5 (emphasis added).
The Examiner characterizes the rejection as having stated that “all
steels have some degree of carbide precipitation” as this “is an inherent
property of all steels.” Non-Final Act. 8. The Examiner appears to have at
least implicitly retracted this position, or at least does not persist in this
position.5
The Examiner additionally finds, however, that
Maejima also discloses that the steel can be carburized which
would be a means of controlling the carbon and thus the carbide
precipitation within the steel to control the level of hardness
and finally that carburizing is a process that allows steel to
absorb more carbon, the introduction of carbon causes reactions
in the host metal to form carbides, thus the process applied in
Maejima is a process used to form carbides thus carbide
precipitation must be present.
Ans. 7 (citing Carburizing – Wikipedia,
https://en.wikipedia.org/wiki/Carburizing, accessed Oct. 24, 2019)
(hereinafter “Carburizing –Wikipedia”)); see also Non-Final Act. 8 (setting
forth this position). According to the Examiner, Carburizing –Wikipedia
states that “‘carburizing’ results in one of two things, added carbon or
carbide being formed, thus carbide is inherently present in carburized steel.”
Ans. 7 (emphasis added).

5 The Examiner has not cited any evidence to support this statement that
some degree of carbide precipitation is an inherent characteristic of all
steels. Thus, to the extent the rejection is premised on such an unsupported
finding, it is not sustainable.
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The Examiner’s position is untenable. The Examiner’s very
characterization of Carburizing – Wikipedia’s discussion of the method of
carburization, which is an accurate characterization, demonstrates that
carbide is not inherently, or necessarily, present in carburized steel.
Carburizing –Wikipedia teaches that during the process of carburization,
carbon atoms diffuse into the crystal structure of the metal and either remain
in solution within the metal crystalline matrix (which normally occurs at
lower temperatures) or react with elements in the host metal to form carbides
(which normally occurs at higher temperatures). Carburizing –Wikipedia,
p. 2. If the carbon remains in solid solution, the steel is then heat treated to
harden it. Carburizing –Wikipedia, p. 2. Thus, according to Carburizing –
Wikipedia, depending at least in part on the temperature at which the steel is
carburized, a carburized steel may or may not contain carbide precipitates.
In other words, the reference on which the Examiner relies as purportedly
supporting the finding that carbide precipitation must be present in
carburized steel in fact contradicts the Examiner’s finding of inherency. See
Appeal Br. 6 (making this point). Indeed, the Examiner acknowledges that
Appellant’s argument in this regard “is a valid argument.” Ans. 8.
Nonetheless, the Examiner insists that Appellant’s argument regarding
the two possibilities set forth in Carburizing –Wikipedia “would still not
overcome the prior art” because, according to the Examiner, Maejima’s
disclosure of carburized steel for the rings “encompasses all types of
carburized steel including ones that would have free carbon or carbon that
has reacted to form carbide.” Ans. 8. Appellant contends that the
Examiner’s position lacks a legal basis and “is directly contrary to the
holding of Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370
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F.3d 1354, 1367 (Fed. Cir. 2004) (‘A prior art reference that discloses a
genus still does not inherently disclose all species within that broad
category’).” Reply Br. 3.
Appellant’s argument is persuasive. Maejima discloses that, “[w]hile
materials of the inner ring 1 and the outer ring 2 are not particularly limited,
. . . a carburized bearing steel . . . is more preferable.”6 Maejima, col. 6,
ll. 38–41. Maejima further discloses using “a material produced by applying
a carburizing treatment . . . to an alloy steel in which alloy elements such as
silicon, manganese, chromium and molybdenum are added to a medium
carbon steel.” Maejima, col. 6, ll. 41–45. Maejima does not expressly
disclose either a carburized steel produced by applying a carburizing
treatment that leaves the carbon in solid solution or a carburizing treatment
in which the carbon reacts with elements in the steel to form carbides, but,
rather, discloses only the genus of carburized steels.
Thus, for the above reasons, the Examiner does not establish, by a
preponderance of evidence, that Maejima discloses, either expressly or under
the principles of inherency, a bearing wherein the outer ring and/or the inner
ring is formed from a steel with carbide precipitation. Moreover, even
assuming that carbide precipitation is present in either of Maejima’s
carburized steel rings, the Examiner’s finding that Maejima’s cage “is

6 We express no opinion on whether it would have been obvious, in view of
Maejima’s disclosure that the materials of the rings “are not particularly
limited” (Maejima, col. 6, ll. 38–39), to use either carburized steel having
carbide precipitation or carburized steel in which carbide is not present, as
the Examiner’s rejection is predicated on a finding that Maejima either
inherently or expressly discloses carburized steel having carbide
precipitation, not a determination that this would have been obvious.
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capable of performing the function of absorbing hard particles that might
contaminate the bearing including hard particles that may separate from the
rings as the rings wear” (Non-Final Act. 5 (emphasis added)) is insufficient
to establish anticipation. To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either expressly or
inherently. Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed.
Cir. 2016). “Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (quoting Continental Can Co. v. Monsanto Co., 948 F.2d 1264,
1269 (Fed. Cir. 1991) (quoting In re Oelrich, 666 F.2d 578, 581 (CCPA
1981))).
For the above reasons, the Examiner fails to establish, by a
preponderance of evidence, that Maejima anticipates the subject matter of
claim 8 or claim 14. Accordingly, we do not sustain the rejection of claims
8 and 14, or of claims 9–12, which depend from claim 8, as being
anticipated by Maejima.
Rejection Under 35 U.S.C. § 103
The deficiency in the rejection of claims 8 and 14 as being anticipated
by Maejima pervades the Examiner’s rejection of claims 13 and 15 as being
unpatentable over Maejima and Nagai. The Examiner’s application of the
teachings of Nagai in regard to the use of steel fibers in place of glass carbon
fibers for reinforcing resin cages does not make up for this deficiency. See
Non-Final Act. 7. Accordingly, we do not sustain the rejection of claims 13
and 15 as being unpatentable over Maejima and Nagai.
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CONCLUSION
The Examiner’s rejections under 35 U.S.C. §§ 112(b), 102(a)(1), and
103 are all REVERSED.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8–15 112(b) Indefiniteness 8–15
8–12, 14 102(a)(1) Anticipation 8–12, 14
13, 15 103 Obviousness 13, 15
Overall
Outcome
8–15

TIME PERIOD FOR RESPONSE
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)(1)(iv).
REVERSED