AKTIEBOLAGET SKF et al.

Patent Trials and Appeals Board

Jul 2, 2021

2020001180 (P.T.A.B. Jul. 2, 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.
15/307,060 10/27/2016 Michael Baumann 2014P00096WOUS 5433
81598 7590 07/02/2021
SKF GmbH
IA&IP
Gunnar-Wester-Strasse 12
Schweinfurt, 97421
GERMANY
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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):
ipr@skf.com
mark@jtek-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL BAUMANN,
PASCAL EHRET, PASCAL MANDOU, and
LARS ZIEMEN
__________

Appeal 2020-001180
Application 15/307,060
Technology Center 3600
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON REHEARING

STATEMENT OF THE CASE
Appellant1 filed a request for rehearing (“Req. Reh’g”) under 37
C.F.R. § 41.52 of our decision (“Decision”) dated November 3, 2020. In
that Decision, we: (1) reversed the Examiner’s rejection of claim 16 under

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as
Aktiebolaget SKF and SKF Blohm + Voss Industries GmbH. Appeal Brief
(“Appeal Br.”) 1, filed May 29, 2019.
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35 U.S.C. § 112(b),2 (2) reversed the Examiner’s rejection of claims 2, 9,
and 11 under 35 U.S.C. § 103,3 and (3) affirmed the Examiner’s rejection of
claims 3–8 and 16–22 under 35 U.S.C. § 103, designating our affirmance as
a NEW GROUND OF REJECTION.

ANALYSIS
The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the
Board. Arguments not raised, and Evidence not previously relied
upon, pursuant to §§ 41.37, 41.41, or 41.47 are not permitted in
the request for rehearing except as permitted by paragraphs (a)(2)
through (a)(4) of this section.
37 C.F.R. § 41.52(a)(1). A Rehearing is not an opportunity to rehash
arguments originally made in the Brief, neither is it an opportunity to merely
express disagreement with a decision.
Appellant contends claim 16 requires that the bellows have “a rest
configuration in which an opening of the channel has a first width” and this
limitation “seems to have been misapprehended or overlooked by the
Board.” Req. Reh’g 1 (emphasis omitted). Appellant argues that because
claim 16 recites “a bellows comprising an elastic annular body having a
radially outwardly facing U-shaped channel,” claim 16’s recitation of “rest
configuration” thus requires that “the bellows has a U-shaped channel even
when no forces are being applied thereto[] such as before the bellows is

2 The request for rehearing does not contend that the Board overlooked
anything in connection with the rejection under 35 U.S.C. § 112(b). See
Req. Reh’g passim.
3 The request for rehearing does not contend that the Board overlooked
anything in connection with the rejection of claims 2, 9, and 11 under 35
U.S.C. § 103. See Req. Reh’g passim.
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attached to any other structure.” Id. at 1–2. Appellant argues Knight,
however, discloses that “the seal element 13 . . . is elastically fixed to the
housing 3 and elastically urged against the seal element 11 . . . by preloading
the bellows 19 by bending the elastomer into the U-shaped configuration.”
Id. at 2 (emphasis added (quoting Knight, p. 6, last paragraph)). As such,
according to Appellant, Knight’s bellows, when in a rest configuration, i.e.,
before preloading or before bending, do not have a U-shaped configuration
(i.e., a “U-shaped channel,” as claimed). See id.

New Grounds of Rejection under 35 U.S.C. § 112(b)4
As an initial matter, we note the following discrepancy with the
recited language of claim 16. The penultimate clause of claim 16 recites, as
Appellant points out, “wherein the bellows has a rest configuration in which
an opening of the channel has a first width.” Appeal Br. 9 (Claims App.)
(emphasis added). The fourth clause of claim 16 recites,
a bellows comprising an elastic annular body having a radially
outwardly facing U-shaped channel, a first radially extending leg
and a second radially extending leg and a bight connecting the
first leg to the second leg, the channel being defined by an inner
surface of the first leg, an inner surface of the bight and an inner
surface of the second leg, and an outer surface of the bight
defining a central opening of the bellows.
Id. (emphases added). Thus, the outer surface of the bight connecting the
first leg to the second leg is all that is required to define the “central

4 Because Appellant’s application claims priority to an application that was
filed after September 16, 2012, the effective date of the amendments to 35
U.S.C. § 112 enacted by the Leahy-Smith America Invents Act (AIA), the
AIA version of the statute applies. See AIA, Pub. L. No. 112–29, § 4(e),
125 Stat. 284, 297 (2011).
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opening” according to the fourth clause of claim 16. Appellant’s
contentions above suggest that “the channel” of the penultimate clause is the
“radially outwardly facing U-shaped channel” of the fourth clause.
However, “an opening” is recited in the penultimate clause, rather than
referring back to “the central opening” previously recited. Consequently, by
virtue of the recitation “an” rather than “the,” “an opening” of the
penultimate clause is not necessarily understood as the “central opening” of
the fourth clause, and thus the “an opening” does not necessarily have a
“radially outwardly facing U-shaped channel.” Thus, as an initial matter, it
is unclear that “the channel” of the penultimate clause is the same as the “U-
shape channel” of the fourth clause. Accordingly, it is unclear whether
claim 16 requires that, in the rest configuration, the bellows includes a U-
shaped channel.
Claim 16 should be clarified by Appellant to indicate whether it is
directed to one of the possible interpretations above. In its current form,
claim 16 does not provide sufficient certainty for the potential infringer to
evaluate the possibilities of being held liable for direct and/or contributory
infringement. “[T]he claims must make it clear what subject matter they
encompass.” In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). For these
reasons, we reject claim 16 under 35 U.S.C. § 112, second paragraph, in
order to require this ambiguity to be definitively resolved, one way or
another, during prosecution. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211
(BPAI 2008) (precedential); accord In re Packard, 751 F.3d 1307, 1324
(Fed. Cir. 2014) (Plager, J., concurring); In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989).
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Additionally, turning to the meaning of “rest configuration” itself, in
connection to its arguments above, Appellant points out that, in the
Decision, the Board determined that “a skilled artisan would understand that
the term ‘rest configuration,’ when read in light of the Specification of the
subject invention, means a configuration in which the bellows are not under
stress or tension, e.g., are not compressed.” Req. Reh’g 2 (citing Dec. 3–4).
Upon reconsideration, we determine that we misapprehended the meaning of
this phrase and/or overlooked Appellant’s Specification for the following
reasons.
The Specification does not define nor recite “rest configuration.”
Spec. passim.5 The term “rest” is mentioned only once in the Specification.
More particularly, the Specification discloses that “[t]he bellows 10 in Fig. 1
is under tension, i.e., is compressed, e.g., by a factor smaller than 1/10, in the
axial direction with respect to its rest state.” Spec. ¶ 26 (emphasis added).6
This passage merely describes that the bellows depicted in Figure 1 is under
tension or is compressed in the axial direction with respect to its rest state.
In particular, it is unclear whether the term “rest configuration”
encompasses:

5 Specification (“Spec.”), filed Oct. 27, 2016.
6 We note that the term “tension” is defined as “the act or action of
stretching” or “the stress resulting from the elongation of an elastic body.”
https://www.merriam-webster.com/dictionary/tension (last accessed June 30,
2021). The term “compressed,” however, is defined as “pressed together.”
https://www.merriam-webster.com/dictionary/compressed (last accessed
June 30, 2021). Thus, the phase “under tension, i.e., is compressed,”
indicating that “under tension” is the same as “is compressed,” appears to be
somewhat inconsistent with the above-noted typical definitions.
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(1) a condition where absolutely no tension or compression is applied
to the bellows (i.e., the bellows is not compressed and there is no load),
regardless of whether the device is rotating;
(2) a condition where:
(i) the bellows is installed in a rotatable device, and may be
under some tension or is compressed albeit in an amount lower than
that purported to be illustrated in Figure 1 (i.e., the bellows is
compressed and there is some load (“pre-load”)), and
(ii) the device is not rotating; or
(3) either condition (1) or condition (2).
A skilled artisan upon reading Appellant’s Specification would not
understand what is meant by the term “rest configuration,” as recited in
claim 16. We note that under condition (2), the bellows could be under less
tension and stress than if the device is rotating. For example, during
rotation, the bellows could be at a state of being more or most compressed
(“full-load”). Thus, condition (2) may be considered a “rest configuration”
in comparison or relative to when the bellow is under “full-load.”
Consequently, these different conditions highlight the question of whether
Appellant’s recitation of the term “rest configuration” takes into
consideration the rotational aspect of the device. Thus, even in light of the
Specification, it is unclear what the term “rest configuration” encompasses.
As a result, it is unclear what subject matter claim 16 encompasses.
In view of the foregoing discussion, we now agree with the
Examiner’s ultimate decision to reject claim 16 as indefinite. See Non-Final
Act. 2–3; see also Ans. 3. Claims 2–9, 11, and 17–22 depend from claim 16
and are therefore indefinite by virtue of their dependencies. As we have
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supplemented the Examiner’s findings and reasoning, we designate this
decision as including a new ground of rejection under 37 C.F.R. § 41.50(b)
so as to afford Appellant the procedural options for response associated
therewith, i.e., a second request for rehearing is permitted, as noted below.

New Grounds of Rejection under 35 U.S.C. § 112(a)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
2–9, 11, and 16–22 under 35 U.S.C. § 112(a).
New or amended claims that introduce elements or limitations that are
not supported by the as-filed disclosure violate the written description
requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). The
purpose of the written description requirement is to prevent an applicant
from later asserting that he invented that which he did not; the applicant for
a patent is therefore required to recount his invention in such detail that his
future claims can be determined to be encompassed within his original
creation. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330
(Fed. Cir. 2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561
(Fed. Cir. 1991)). Although there is no in haec verba requirement, newly
added claim limitations must be supported in the specification through
express, implicit, or inherent disclosure. The fundamental factual inquiry is
whether the specification conveys with reasonable clarity to those skilled in
the art that, as of the filing date sought, applicant was in possession of the
invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563–64.
When an explicit limitation in a claim is not present in the written
description it must be shown that a person of ordinary skill would have
understood that the description requires that limitation. Hyatt v. Boone, 146
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F.3d 1348, 1353 (Fed. Cir. 1998). If the originally filed disclosure does not
provide support for each claim limitation, a new or amended claim must be
rejected under 35 U.S.C. § 112, first paragraph, as lacking adequate written
description.
Under the broadest reasonable interpretation, the term “rest
configuration” can encompass either condition (1) or condition (2) as
described above. As noted above, the term “rest configuration” is not
recited in the Specification. The term “rest configuration” is also not recited
in any of the original claims.7 This term was introduced in an amendment.8
Regardless of which of the above meanings is ascribed to the term “rest
configuration” the Specification, by virtue of the single sentence quoted
above, does not adequately demonstrate that Appellant was in possession of
the subject matter now defined by claim 16 as of the filing date sought.
Thus, we reject claim 16, and claims 2–9, 11, and 17–22 depending
therefrom, under 35 U.S.C. § 112(a) as failing to comply with the written
description requirement. In view of the foregoing discussion, we designate
this decision as including a new ground of rejection under 37 C.F.R. §
41.50(b) so as to afford Appellant the procedural options for response
associated therewith, , i.e., a second request for rehearing is permitted, as
noted below.

7 See original claims of the as-filed disclosure filed Oct. 27, 2016.
8 See fourth clause of “New” claim 15 in the amendment filed Oct. 27, 2016.
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Prior Art Rejection
We do not reach the merits of the prior art rejection because we are
unable to review them without having to make speculative assumptions
about the meaning of the language of the rejected claims, as discussed above
for the rejection under 35 U.S.C. § 112(b). Consequently, we are
constrained to reverse the rejection of claims 2–9, 11, and 16–22 as
unpatentable over Knight (see Final Act. 4–7). See In re Steele, 305 F.2d
859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the
hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language.); see
also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious—the claim becomes indefinite.”).

CONCLUSION
For the foregoing reasons, pursuant to our authority under 37 C.F.R.
§ 41.50(b), we reject claim 16, and those claims depending therefrom, as
failing to comply with 35 U.S.C. §112(a) and (b).
The Examiner’s obviousness rejection is reversed without reaching
the merits thereof.
DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Denied Granted
3–8, 16–22 103 Knight 3–8, 16–22
Overall
Outcome
3–8, 16–22
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Final Outcome of Appeal after Rehearing:
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed New
Ground
2–9, 11,
16–22
112(a) Written
Description
2–9, 11, 16–
22
16 112(b) Indefiniteness 169 2–9, 11, 16–
22
Overall
Outcome
2–9, 11, 16–
22

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.

9 Even though the Examiner did not do so, we include the dependent claims
in the rejection under §112(b) because they depend from an indefinite claim
and do not recite language curing the defects discussed above.
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
Because we reject the claims pursuant to our authority under 37
C.F.R. § 41.50(b) in this request for rehearing, a second request for
rehearing is permitted under 37 C.F.R. § 41.52(a)(1) (2011).
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).

GRANTED; 37 C.F.R. § 41.50(b)