Aktiebolaget SKF

Patent Trials and Appeals Board

Mar 11, 2022

2021003154 (P.T.A.B. Mar. 11, 2022)

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. 16/162,837 10/17/2018 Daniel P. Sottiaux 2018P00148US 9505 16284 7590 03/11/2022 SKF GmbH IA & IP Gunnar-Wester-Strasse 12 Schweinfurt, 97421 GERMANY EXAMINER WAITS, ALAN B ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 03/11/2022 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 DANIEL P. SOTTIAUX, JEFFREY L. GEORGE, and DEREK R. WRIGHT ____________ Appeal 2021-003154 Application 16/162,837 Technology Center 3600 ____________ Before ANTON W. FETTING, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-3, 5-15, and 19-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Aktiebolaget SKF. (Appeal Br. 1.) Appeal 2021-003154 Application 16/162,837 2 CLAIMED SUBJECT MATTER Appellant’s invention relates “to an elastomeric bearing having a reduced-weight end cap and, more specifically, to an elastomeric bearing having and [sic] end cap formed with an at least partially hollow interior and/or by an additive manufacturing process.” (Spec. ¶ 1.) Claims 1, 10, and 19 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. An elastomeric bearing comprising: a first race having an axis of rotation; a second race coaxially arranged relative to the first race and spaced from the first race by a gap; a bearing body in the gap connecting the first race to the second race, the bearing body comprising a plurality of first laminae coaxial with the first race and a plurality of second laminae coaxial with the first race, the first laminae being formed from a different material than the second laminae; and a metal end cap connected to the first race or to the second race, wherein the metal end cap includes an at least partially hollow interior, and wherein the interior includes an annular upper support member, an annular lower support member and a plurality of struts extending from the upper support member to the lower support member. REJECTIONS2 Claims 1-3, 5, and 6 are rejected under 35 U.S.C. § 103 as unpatentable in view of Foskey (US 2015/0239555 A1, pub. Aug. 27, 2015) and Krebs (US 2017/0002866 A1, pub. Jan. 5, 2017). 2 We treat the rejection of claim 22 under 35 U.S.C § 112(b) as withdrawn in view of the cancellation of claims 22 and 23. (See Amendment filed Appeal 2021-003154 Application 16/162,837 3 Claims 7-15 and 19 are rejected under 35 U.S.C. § 103 as unpatentable in view of Foskey, Krebs, Nussenblatt (US 2017/0297691 A1, pub. Oct. 19, 2017), and Kenmochi (US 2014/0193111 A1, pub. July 10, 2014). Claims 20 and 21 are rejected under 35 U.S.C. § 103 as unpatentable in view of Foskey and Hosaka (US 2017/0097042 A1, pub. Apr. 6, 2017).3 ANALYSIS Obviousness is a legal conclusion involving a determination of underlying facts. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)). Claims 1-3, 5-9, 13-15, and 19 With regard to the scope and content of the prior art, the Examiner finds that Foskey does not disclose a metal end cap including “an at least August 24, 2020; see also Advisory Action mailed April 9, 2021 (entering the amendment cancelling claims 22 and 23).) For the same reason, we treat the rejection of claims 22 and 23 under 35 U.S.C. § 103 as withdrawn. 3 Claims 20 and 21 depend from claim 1. Unlike claims 20 and 21, claim 1 is rejected over Foskey and Krebs. Appeal 2021-003154 Application 16/162,837 4 partially hollow interior.” (Final Action 3.) The Examiner finds that “Krebs teaches making bearing parts with an at least partially hollow interior ([0016]) for the purpose of reducing the overall weight of the bearing by using printed material having cavities, especially in applications related to aviation and aerospace ([0017]).” (Id.) The Examiner finds that Krebs discloses a plurality of struts extending from the upper support member to the lower support member. (Id. at 4.) Appellant argues that “[t]he fact that an outer ring of a radial bearing can include cavities as taught by Krebs does not mean that a structurally and functionally different end cap of an elastomeric bearing can be formed in a similar [sic] and be expected to continue to perform its intended function.” (Appeal Br. 5.) Appellant further argues that “nothing in the record teaches to form the interior [of Foskey’s end cap] with annular upper and lower support members and a plurality of ‘struts’ as recited in claim 1.” (Id. at 6.) Foskey teaches “an elastomeric bearing assembly for rotorcraft.” (Foskey ¶ 1.) Figure 4 of Foskey, as annotated by the Examiner, is reproduced below. Figure 4 “is a side section view of an elastomeric bearing assembly.” (Id. ¶ 7.) Foskey teaches that Appeal 2021-003154 Application 16/162,837 5 elastomeric bearing assembly 200 may include a spindle 260, a housing 230, a shear bearing 270, a centrifugal force bearing 210, a cone set 240, and a cap 250. Outboard portion 264 of spindle 260 can pass through the center of shear bearing 270, housing 230, centrifugal force bearing 210, and cap 250. Centrifugal force bearing 210 can be vulcanized to the outboard end of housing 230 and held in place by cone set 240, which can be two separate pieces that form a cone shape, and cap 250. (Id. ¶ 18.)4 Krebs teaches “a ring for a bearing in which the ring comprises printed material printed via additive manufacturing.” (Krebs ¶ 5.) An annotated Figure 3A from Krebs is reproduced below. Figure 3A “shows a cross-sectional view of a . . . bearing comprising printed material.” (Krebs ¶ 26.) In relevant part, Krebs teaches: [0007] The ring in accordance with the first aspect of the invention comprises a raceway ring being a hardened steel metal ring comprising a raceway surface configured and constructed 4 Cap 250 is not labeled in Figure 4, but corresponds to “C” in the annotated figure. “D” and “E” correspond to upper and lower axially facing surfaces, respectively, of cap 250. (See Final Action 4.) Appeal 2021-003154 Application 16/162,837 6 for supporting and guiding rolling elements of the bearing, the ring further comprises printed material bonded to the steel of the raceway ring, the printed material being material printed via an additive manufacturing process. [0008] The inventors have realized that a main requirement of the material when used in a bearing is to withstand wear and rolling contact fatigue due to the contact forces on the rolling elements of the bearing in use. To be able to withstand this wear and rolling contact fatigue, the raceway surface is typically produced from hardened steel. The current additive manufacturing processes cannot produce hardened metal material in line with the requirements of a rolling element bearing. So the inventors have realized that the use of a raceway ring manufactured according to the first aspect of the invention enables to have the relatively high wear and rolling contact fatigue requirements imposed on the raceway surface, while allowing printed material to be attached to the raceway ring for generating the required shape of the inner ring or outer ring for a bearing and to carry the structural loads on the bearing and transmit them to the bearing housing or the shaft. (Id. ¶¶ 7-8 (emphasis added).) Krebs further teaches that the printed material comprises structural material for carrying a load for strengthening the raceway ring. This allows the bearing to carry larger radial and axial loads and increases the robustness of the bearing application. In a further embodiment of the ring, the printed material comprises a press-fit element for fitting the ring to a shaft or to a bore. Using printed material for generating the press-fit element allows using a relatively standard bearing which may be adapted to fit a specific customized element. (Id. ¶ 16.) Figure 3A of Krebs, as annotated by the Examiner is reproduced below. Appeal 2021-003154 Application 16/162,837 7 As noted above, Figure 3A “shows a cross-sectional view of a . . . bearing comprising printed material.” (Krebs ¶ 26.) Based on Figure 3A, the Examiner finds that Krebs “discloses a plurality of struts (solid portions between 367, Fig. 3A; dashed lines in annotated Figure 3A [immediately above]) extending form [sic] the upper support member (F) to the lower support member (G).” (Final Action 4.) The Examiner determines that “[i]t would have been obvious to one of ordinary skill in the art to modify Foskey and provide the metal end cap includes an [sic] at least partially hollow interior for the purpose of reducing the overall weight of the bearing by using printed material having cavities.” (Id. at 3.) As an initial matter, we interpret the term “strut.” Figures 6 and 9 of Appellant’s application are reproduced below. Appeal 2021-003154 Application 16/162,837 8 “Figure 6 is a perspective view of an end plate for use in an elastomeric bearing” and “Figure 9 is a perspective view of an internal structure of the end plate of Figure 6.” (Spec. ¶¶ 15, 18.) We find no definition or special meaning in the Specification for the claim term “strut.” Applying plain meaning, and in view the disclosures in the Specification, we determine that, under a broadest reasonable interpretation,5 the claim term “strut” includes: “[a] bar, rod, or built-up member, of wood, iron, etc., designed to resist pressure or thrust in a framework; e.g. a diagonal timber which acts as a brace to support a principal rafter.” (Oxford English Dictionary, www.oed.com/view/Entry/ 191970?rskey=4qd3qa&result=2&isAdvanced=false#eid, def. n.2 (last visited Mar. 8, 2022).) The Examiner applies a similar claim interpretation. (Answer 10 (“Merriam-Webster defines ‘strut’ as ‘a structural piece 5 “During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). Appeal 2021-003154 Application 16/162,837 9 designed to resist pressure in the direction of its length.”).) Figure 9 in Appellant’s application shows a plurality of struts 56 connecting the upper and lower support members. (See Spec. ¶ 24.) With regard to Figure 3A of Krebs, the solid portions between cavities 367, denoted by the dashed lines in the Examiner-annotated Figure 3A, at best, indicate walls, not struts, extending between upper and lower support members.6 Specifically, the Examiner does not indicate where, save for cavities 367 and bore 365, Krebs suggests anything other than solid printed material extending between upper and lower support members, i.e., front and back surfaces of the printed matter 360. Therefore, we disagree with the Examiner that Krebs discloses a plurality of struts. In view of the foregoing, we determine that the Examiner does not sufficiently explain why the teaching in Krebs of cavities, at best forming walls in the printed material, would have made obvious at the time of Appellant’s invention the use of struts between upper and lower support members of an end cap. Therefore, we will reverse the rejection of claim 1 and the rejection of independent claim 19 which includes similar language. For the same reason, we will also reverse the rejection of dependent claims 2, 3, 5-9, and 13-15. 6 When a strut is defined as a “bar, rod, or built-up member,” it is reasonably clear which dimension constitutes its length. It is unclear which dimension of the walls between cavities 367 in Krebs would constitute the length, as opposed to the height, of the wall/strut. Appeal 2021-003154 Application 16/162,837 10 Claim 10-12 With regard to independent claim 10, it recites (emphasis added): 10. An elastomeric bearing comprising: a first race having an axis of rotation; a second race coaxially arranged relative to the first race and spaced from the first race by a gap; a bearing body in the gap connecting the first race to the second race, the bearing body comprising a plurality of elastomeric first laminae coaxial with the first race and a plurality of second laminae coaxial with the first race, the second laminae comprising polyether ether ketone having embedded carbon fibers; and a metal end cap connected to the first race or to the second race, wherein the metal end cap is formed by an additive manufacturing process. The Examiner finds that “Foskey discloses rigid layers may be made of any rigid materials,” but that “Foskey does not specifically disclose the second laminae are carbon fiber reinforced.” (Final Action 8.) The Examiner finds that “Nussenblatt teaches elastomeric bearings comprising rigid laminae constructed of fiber composite materials ([0027]).” (Id. (brackets in original).) The Examiner determines that “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the steel of Foskey with that of a fiber composite material.” (Id.) However, the Examiner finds that “Nussenblatt does not disclose the fiber to be carbon fiber.” (Id.) The Examiner finds that “Kenmochi discloses a bearing element used in aviation comprising a fiber composite material ([0001] and [0040]; carbon fiber and PEEK [polyetheretherketone resin]).” (Id.) The Examiner determines that “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to substitute the generic fiber composite Appeal 2021-003154 Application 16/162,837 11 material of Nussenblatt with any well-known specific fiber composite material used in bearings such as the carbon fiber and PEEK material taught by Kenmochi.” (Id.) Appellant argues that “there is no evidence in the record to support the assumption that materials suitable for forming bearing cages are also suitable for use in laminae of elastomeric bearings, especially in view of the functional and structural differences between cages and laminae.” (Appeal Br. 9.) The Examiner answers: Kenmochi discloses a bearing part used in the same environment (aviation; [0001]) as that of Foskey and Nussenblatt. Furthermore, Kenmochi specifically states the bearing is required to undergo high loads in high-speed rotation in paragraph [0001]. This is the same requirements of the bearing elements of Foskey and Nussenblatt. Kenmochi’s carbon fiber and PEEK are a specific example of the “fiber composite” of Nussenblatt. Therefore, one of ordinary skill in the art would indeed look to Kenmochi for a specific fiber composite used in an aviation bearing. (Answer 11 (brackets in original).) Kenmochi teaches “[a] cage 11 for holding a plurality of rolling elements 20 incorporated between an inner ring and an outer ring by a plurality of pockets with their centers arranged at regular intervals in the revolving direction of the rolling elements 20.” (Kenmochi, Abstract.) Figure 1A of Kenmochi is reproduced below. Appeal 2021-003154 Application 16/162,837 12 Figure 1A is a perspective view of “a cage according to a first embodiment of the invention.” (Id. ¶ 30.) “In a cage, rolling elements [e.g., balls] are stored with clearances formed between the rolling elements and cage in order that the rolling elements rotating on their axes by the rotation of inner and outer rings can be prevented from touching each other.” (Id. ¶ 2; see also id. ¶ 10.) Kenmochi teaches that “[t]he cage 11 may preferably be formed of: plastic materials (including reinforcing materials such as glass fibers, carbon fibers and aramid fibers) generally used as cage materials such as phenolic resin, nylon resin, polyetheretherketone resin (PEEK) and polyphenylenesulfide resin (PPS).” (Id. ¶ 40.) If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. KSR Int’l Co., 550 U.S. at 417. We agree with the Examiner that Kenmochi teaches “a bearing part used in the same environment (aviation; [0001]) as that of Foskey and Appeal 2021-003154 Application 16/162,837 13 Nussenblatt.” (Answer 11 (brackets in original).) We also agree with the Examiner that “Kenmochi specifically states the bearing is required to undergo high loads in high-speed rotation” and that this is the same requirement for the bearing elements of Foskey and Nussenblatt. (Id.) Appellant does not persuasively argue why the Examiner erred in determining that one of ordinary skill in the art at the time would have looked to Kenmochi for a specific fiber composite to use in an aviation bearing subject to such high loads in a similar environment. We are not persuaded that the Examiner erred in rejecting claim 10. Claim 11 recites: “The elastomeric bearing according to claim 10, wherein the metal end cap has an at least partially hollow interior.” The Examiner finds that “Krebs explicitly states that printed material can carry loads in multiple directions ([0016]) as is required by the end cap of Foskey. The end cap of Foskey and the printed material of portion of [sic] Krebs are both support elements to their respective bearings.” (Answer 6.) The Examiner further finds that Krebs teaches the broad concept of making bearing components, especially in the aviation and aerospace field, out of printed materials. One of ordinary skill in the art would further recognize that aircraft bearings, such as the one disclosed by Krebs, are subject to various loading conditions including axial, radial, bending and torsional loads due to the extreme environment in which aircraft operate. Such loading is due to a variety of factors such as vibrations from engines (especially in rotorcraft), temperature extremes, and speeds to name only a few. Thus, one of ordinary skill in the art would reasonably conclude that the material of Krebs would also be capable of supporting such loads. Appeal 2021-003154 Application 16/162,837 14 (Id. (emphasis omitted).) The Examiner also finds that “Krebs teaches making bearing parts with an at least partially hollow interior.” (Final Action 3 (citing Krebs ¶ 16).) As discussed above, Appellant argues that “[t]he fact that an outer ring of a radial bearing can include cavities as taught by Krebs does not mean that a structurally and functionally different end cap of an elastomeric bearing can be formed in a similar [sic] and be expected to continue to perform its intended function.” (Appeal Br. 5.) Appellant does not, however, persuasively argue why the Examiner erred in finding that the aircraft bearings disclosed by Krebs are subject to axial, radial, bending, and torsional loads. (See Answer 3.) Nor does Appellant present evidence to refute the finding. In view of the foregoing, we are not persuaded that the Examiner erred in determining that “[i]t would have been obvious to one of ordinary skill in the art to modify Foskey [in view of Krebs] and provide the metal end cap” made by Krebs’ additive process, including “an at least partially hollow interior.” (Id.) Therefore, we are not persuaded that the Examiner erred in rejecting claim 11. Claim 12 depends from claim 11 and is not separately argued. It falls with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv). Claims 20 and 21 Claim 20 recites: 20. The elastomeric bearing according to claim 1, wherein the annular upper support member comprises an upper plate having a top surface and a bottom surface, and the annular lower support member comprises a lower plate having a top surface and a bottom surf ace, and Appeal 2021-003154 Application 16/162,837 15 wherein the plurality of struts extend from the bottom surface of the upper plate to the top surface of the lower plate. The Examiner finds that Hosaka teaches making bearing elements comprising metal ([0075]) having an at least partially hollow interior (Fig. 14), the interior includes a first support member (left wall including 12), a second support member (right wall including 12) and a plurality of struts (21 and 23) extending from the upper support member to the lower support member. (Final Action 14.) Further, the Examiner determines: It would have been obvious to one of ordinary skill in the art to modify Foskey and provide the metal end cap includes [sic] an at least partially hollow interior, the interior includes an annular upper support member, an annular lower support member and a plurality of struts extending from the upper support member to the lower support member . . . for the purpose of realizing a remarkable decrease in weight. (Id.) Appellant argues that “there is nothing about the structure of a linear truss that suggests changing the internal structure of a generally round bearing end cap.” (Appeal Br. 11.) More specifically, Appellant argues that “there is no evidence or line of reasoning in the record to suggest a person of ordinary skill in the art would look at what is essentially a truss and think that the round end cap of an elastomeric bearing should be configured to include upper and lower plates and struts extending therebetween.” (Id. at 11-12.) Hosaka teaches “[a] rolling device includes an inner member that has a raceway face formed on an outer face and an outer member that has a raceway face facing the raceway face of the inner member and is disposed at Appeal 2021-003154 Application 16/162,837 16 the outside of the inner member.” (Hosaka ¶ 2.) Figure 14 of Hosaka, cited by the Examiner, is reproduced below. Figure 14 “is an enlarged perspective view illustrating a part of the track rail” on which a movement block may travel. (Id. ¶ 23.) Figure 10 of Hosaka is reproduced below. Figure 10 “is an external perspective illustrating the rolling device” including the movement block 13 and the track rail 11. (Id. ¶¶ 19, 36.) The Examiner does not sufficiently explain why one of ordinary skill in the art would have been motivated to modify Foskey in view of Hosaka, Appeal 2021-003154 Application 16/162,837 17 i.e., why the teaching in Hosaka of a particular internal track structure would have motivated one of ordinary skill in the art modify the end cap 250 of Foskey. Therefore, we will reverse the rejection of claim 20 and claim 21 which depends from claim 20. CONCLUSION The Examiner’s rejections of claims 1-3, 5-9, 13-15, and 19-21 are reversed. The Examiner’s rejection of claims 10-12 under 35 U.S.C. § 103 is affirmed. Specifically: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5, 6 103 Foskey, Krebs 1-3, 5, 6 7-15, 19 103 Foskey, Krebs, Nussenblatt, Kenmochi 10-12 7-9, 13- 15, 19 20, 21 103 Foskey, Hosaka 20, 21 Overall Outcome 10-12 1-3, 5-9, 13-15, 19-21 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). AFFIRMED-IN-PART