Ex Parte Bartosch

Patent Trial and Appeal Board

Dec 28, 2016

11487638 (P.T.A.B. Dec. 28, 2016)

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.
11/487,638 07/17/2006 Georg Bartosch 05955 - P0001A 6476
24126 7590 12/30/2016
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
YABUT, DANIEL D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORG BARTOSCH
Appeal 2014-009423
Application 11/487,638
Technology Center 3600
Before GEORGE R HOSKINS, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Georg Bartosch (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1—3, 7—10, 12, 14—16, and 20.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
The claimed invention is directed to a cam or rail follower with a
polyamide outer racer. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
Appeal 2014-009423
Application 11/487,638
1. A follower, comprising:
a shaft;
a bearing arranged to rotate about the shaft, the bearing
including an inner wall and an outer wall and two faces
connecting the inner and outer walls, each face arranged
substantially perpendicular to the inner wall and outer wall; and
an outer racer coupled to the outer wall and a portion of
the faces of the bearing and arranged to rotate about the shaft, the
outer racer being constructed from a polyamid[e] shock
absorbing material applying a radial compressive force directly
coupling the outer racer to the outer wall of the bearing and
applying an axial compressive force directly coupling the outer
racer to the faces of the bearing, the radial and axial force
securing the bearing relative to the outer racer, the compressive
forces being present when the follower is in a loaded and an
unloaded configuration.
Appeal Br. 30 (Claims App.).
REFERENCES RELIED ON BY THE EXAMINER
Hill US 3,815
Carr US 3,869
Rosin US 4,019
Bartosch US 6,164
,959 June 11, 1974
,89 Mar. 11, 1975
,789 Apr. 26, 1977
,109 Dec. 26, 2000
Jean M. Hoffman, Picking A Winning Nylon For The Roller Derby,
Machine Design, Mar. 23, 2000,
http://machinedesign.cpm/article/picking-a-wirming-nylon-for-the-
roller-derby-0323, last visited Dec. 16, 2016 (“Picking A Winning
Nylon”).
Knovel.com — Material Property Data Sheet, EMS-Grivory Grilflex®,
ELG 3630 natural Low Viscosity Nylon 12 Dry,
http://eontent.knovel.com/, last visited Dec, 13, 2016 (“Kipp”).
THE REJECTIONS ON APPEAL
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Application 11/487,638
(I) Claims 1—3, 8—10, 12, 14, 15, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hill, Carr, and Kipp.
(II) Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hill, Carr, Kipp, and Rosin.
(III) Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Hill, Carr, Kipp, and Bartosch.
(IV) Claims 1, 10, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Picking A Winning Nylon and Hill.
ANALYSIS
For rejections (I) and (IV), Appellant argues independent claims 1, 10,
and 20 as a group. See Appeal Br. 16, 25, 26, and 28. We select claim 1 as
representative. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection (I)
The Examiner finds that Hill discloses most of the structure recited in
claim 1, but does not disclose the construction of the outer racer as being
from a polyamide shock absorbing material. See Non-Final Act. 3^4.
Nonetheless, the Examiner finds that Carr teaches an outer racer constructed
from a polyamide shock absorbing material (such as, for example, nylon 12)
for the purpose of reducing the rate of wear of the racer. Id. at 4. The
Examiner reasons that it would have been obvious “to modify Hill to
incorporate the outer racer being constructed from a polyamide shock
absorbing material, as taught by Carr, for the purpose [of] reducing the rate
of wear of the outer racer.” Id. Moreover, the Examiner determines that it
would have been obvious to make the above-noted modification to Hill as it
would have been “within the general skill of a worker in the art to select a
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known material on the basis of its suitability for the intended use as a matter
of obvious design choice.” Id. (citing In re Leshin, 277 F.2d 197 (CCPA
I960)). The Examiner also states:
Additionally, regarding the polyamide materials taught by
Carr, the Kipp publication teaches a type of nylon 12
characterized as EMS-Grivory Grilflex ® ELG 3630 natural Low
Viscosity Nylon 12 Dry that provides a Shore D hardness 36
(pg. 1, 2nd bullet) which, by conversion, supports that a type of
nylon 12 that indeed falls within the range of85-95 Shore A was
known to the one having ordinary skill in the art at the time of
the invention.
Non-Final Act. 4 (emphasis added). Thus, relying in part on the teachings of
Kipp, the Examiner finds that the polyamide disclosed by Carr has a
Shore A hardness equivalent to the materials called for by Hill. See Non-
Final Act. 14. However, the Examiner also states: “the notion of utilizing a
material with a comparatively greater hardness is actually aligned with the
teachings of Hill since such a material would generally be less susceptible to
deformation and thus less susceptible to experiencing the internal friction
that Hill addresses as problematic.” Id. at 13.
Appellant argues that polyamide material would not have been
suitable for Hill’s intended use, and Hill “would have actually led one
skilled in the art away from the use of a polyamid[e] material.” Appeal Br.
18. In this regard, Appellant states “Hill explicitly and repeatedly teaches
that an elastomeric material is necessary for the tire (i.e., outer racer).
Specifically, the applications with which Hill is concerned require elastomer
to reduce noise and ‘bouncing’ when conveying people or industrial
objects.” Id. Appellant further asserts that polyamides do not have a
Shore A hardness “anywhere near” 85—95 (id. at 21) and “[bjecause of the
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applications with which Hill is concerned, hard polyamides will not work,
i.e. no one skilled in the art will consider hard material, e.g., 90 Shore D, for
these applications” {id. at 19). Appellant also asserts that the Examiner’s
reliance on Kipp is misplaced because (i) the copyright date of Kipp (2010)
is later than the filing date of the present Application (2006), and therefore,
Kipp is not prior art, (ii) there is no evidence the material described in Kipp,
namely, Grilflex®, qualifies as prior art, and (iii) Grilflex® refers to a
variety of materials and therefore does not support a finding of a particular
Shore hardness for the specific material taught by Carr. See Appeal Br. 23—
24.
The Examiner responds that Appellant’s characterization of the
teachings of Hill are unjustifiably narrow inasmuch as Hill does not describe
the use of an elastomer as critical. Ans. 3. In this regard, the Examiner
states, “Hill distinctly conveys that the use of strictly elastomeric material in
Hill is not quite the critical aspect of interest but rather the notion that a
material having the hardness of85—95 hardness shore A is indeed the
critical aspect of interest.” Id. (emphasis added). The Examiner reiterates
that a polyamide material, such as taught by Carr, is an equivalent to the
material used by Hill, within the context of the hardness range taught by
Hill. See, e.g., id. at 4. Citing column 6, lines 9-22 of Carr, the Examiner
finds that Carr teaches a polyamide (nylon 12) with a hardness within the
range of 40 Shore A to 100 Shore D. Id. The Examiner again refers to Kipp
to teach that nylon 12 has a Shore D hardness of 36, which the Examiner
finds falls within the range of 85—95 Shore A. Id. at 4—5. The Examiner
provides two appendices (Exhibit A and Exhibit B) indicating that Kipp was
published as early as 2004, and therefore, qualifies as prior art. See id. at 7.
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The Examiner does not address whether Grilflex® refers specifically to
polyamides. See id. at 8.
In reply, Appellant asserts that Hill teaches away from the use of a
non-elastomeric material, the use of an elastomer in Hill is critical, and, as
Hill is concerned with improving an elastomeric tire, it would not have been
an obvious design choice to use a non-elastomeric material. See Reply Br.
2—3. Further, Appellant asserts “the Examiner again attempts to point to an
incredibly broad teaching of Carr ... to support a contention that a huge
range of materials can be considered ‘equivalent’ simply because they fall
within a huge range of hardnesses (i.e., about 40 Shore A to about 100 Shore
D).” Id. at 3. In this regard, Appellant asserts that nylon 12, as described in
Carr, has a hardness higher than Shore A 95, and “Appellant is at a complete
loss as to how it can possibly be asserted that Carr . . . teaches that simply
because the hardness of nylon 12 falls within this huge range [Shore A 40
through Shore D 100], it must have a hardness of between 85-95 Shore A or
be ‘equivalent’ to a material having a hardness of between 85-95 Shore A.”
Reply Br. 4. As for whether Kipp supports the Examiner’s findings
regarding the hardness or softness of nylon 12, Appellant asserts that Kipp is
a compendium of various material data sheets, including ones that were
added year-by-year, and the Examiner’s reference to a publication of Kipp,
as an edition of the compendium, in 2004, does not remedy the deficiency in
Kipp pointed out by Appellant, namely, that the sheet from Kipp upon which
the Examiner relies has a copyright date of 2010. See Reply Br. 6—7.
Appellant also asserts “Hill adequately addressed the problems he was
attempting to remedy, i.e., heat and premature failures in wheels formed
from elastomer materials, by employing relief chambers. Thus, there would
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have been no reason for those skilled in the art to keep looking for another
solution.” Appeal Br. 19. Further, Appellant states “the Examiner
completely guts all teachings of Hill, both concerning the problem to be
solved as well as the inventive solution (which would no longer make sense
if one skilled in the art could simply ignore the teachings of Hill concerning
the criticality of using an elastomer).” Reply Br. 5.
We have considered all of Appellant’s arguments against the rejection
of claim 1 as unpatentable over Hill, Carr, and Kipp, but we find them to be
unpersuasive. Even assuming, for the sake of argument, that Kipp is not
prior art and its teachings may not be used to characterize the properties of
the materials disclosed by Carr, we agree with the Examiner’s reasoned
conclusion that it would have been obvious use the polyamide material
taught by Carr in combination with the structure taught by Hill as proposed
by the Examiner. Appellant provides no persuasive argument that the
Examiner’s first rationale for modifying Hill, “for the purpose [of] reducing
the rate of wear of the outer racer” (Non-Final Act. 4), is inadequate.
Weighing the teachings of Hill regarding the elastomeric tire Hill discloses,
we do not agree that, as asserted by Appellant, polyamide material would
not have been suitable for Hill’s intended use, Hill teaches away from the
use of a polyamide material, or “Hill explicitly and repeatedly teaches that
an elastomeric material is necessary for the tire.” See Appeal Br. 18.
Although Hill teaches a solution to problems associated with elastomeric
tires (see, e.g., Hill 3:19—56), Hill does not teach that elastomeric tires
themselves are critical. Appellant provides no citation in Hill for the
assertion that “the applications with which Hill is concerned require
elastomer to reduce noise and ‘bouncing’ when conveying people or
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industrial objects” (see Appeal Br. 18), and we find no discussion of this
alleged requirement in Hill.1 Rather, Hill teaches that when elastomeric tires
are used, problems associated with them may be ameliorated with the relief
structure Hill provides. Hill 3:19—56. In any event, to the extent that a
reduction in noise and/or “bouncing” would be desirable in Hill, “[t]he fact
that the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.” Winner Int 7 Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). In this regard, weighing
any benefits lost against those gained, we find that the Examiner’s reason for
modifying Hill (to reduce the rate of wear), such that the outer racer is
constructed from a polyamide shock absorbing material, is supported by
rational underpinnings, even without relying on the disclosure of Kipp.
We are unpersuaded by Appellant’s argument that Hill already solves
any problem related to elastomeric tires and therefore there would have been
no further reason to improve Hill’s tire. The Examiner’s reasoning that
implementation of the polyamide material taught by Carr would reduce wear
is supported by rational underpinnings, and we see no reason why a person
of skill in the art would not seek to further improve the tire taught by Hill,
1 Although we do not rely upon this disclosure in our decision, we note that
Rosin, cited in Rejection (II) for teaching a threaded shaft (Non-Final Act.
7), discusses the use of Delrin®, an acetal resin, for a tire in a trolley wheel
assembly described as “noiseless.” See Rosin 2:41—49, 5:46—66. Further,
“acetals” are described in Appendix A of the Amendment after Final (filed
April 26, 2013) as having a greater hardness than nylons.
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even if a solution exists that reduces certain detrimental effects associated
with tires made from elastomeric material.
We also agree with the Examiner’s application of In re Leshin, 277
F.2d 197 (1960), inasmuch as Appellant’s arguments regarding the criticality
of the use of an elastomer or material with a particular hardness in Hill are
not supported by objective evidence or persuasive technical reasoning. Hill
and Carr both relate to external rolling surfaces mounted on bearings, and, in
light of the similar uses of the devices in Hill and Carr, the implementation
of a polyamide as taught by Carr in the tire taught by Hill would have been
the selection of a known material based on its suitability for the intended
use. Accordingly, without resorting to reliance on Kipp, we affirm the
Examiner’s rejection of claims 1, 10, and 20 as unpatentable over Hill and
Carr.
Appellant relies on the arguments discussed above for the
patentability of claims 2, 3, 8, 9, 12, 14, and 15 (see Appeal Br. 25), which
all depend from one of claims 1 and 10. Accordingly, these dependent
claims fall with claims 1 and 10.
Rejections (II) and (III)
Appellant makes no additional arguments for the patentability of
claims 7 and 16, which depend from claims 1 and 10, respectively. See
Appeal Br. 25—26. Accordingly, claims 7 and 16 fall with claims 1 and 10.
Rejection (IV)
The Examiner finds that Picking A Winning Nylon discloses a
follower comprising a bearing and an outer racer constructed from a
polyamide shock absorbing material (nylon 12). Non-Final Act. 8. The
Examiner also finds that Picking A Winning Nylon teaches the process of
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heat shrinking the racer to the faces of the bearing, and “compressive force
[is] present when the follower is in a loaded and an unloaded configuration
([because] this limitation is a functionally inherent feature of a roller made
from a cast nylon 12 tire that is heat shrunk onto a bearing).” Id.
The Examiner finds that Picking A Winning Nylon does not disclose:
the follower comprising a shaft, the bearing arranged to rotate
about the shaft, the bearing including an inner wall and an outer
wall, two faces connecting the inner and outer walls, each face
rearranged substantially perpendicular to the inner and outer
wall, the outer racer coupled to the outer wall and a portion of
the faces of the bearing and arranged to rotate about the shaft.
Id. Nonetheless, the Examiner finds that the disclosure of Hill remedies
these deficiencies, and it would have been obvious to modify Picking A
Winning Nylon to incorporate the missing structure “for the purpose of
providing having bearing structure appropriate for an interference fit
between the outer racer and the bearing.” Id. at 9.
Appellant asserts “it certainly cannot be said, given the configuration
disclosed in [Picking A Winning Nylon], that axial forces are (much less
must be) present both when the roller is in the loaded and unloaded
configuration. Such is simply not the case, the Examiner’s baseless
conclusory statements notwithstanding.” Appeal Br. 27—28.
The Examiner provides two responses. First, the Examiner finds that
the heat shrinking process taught by Picking A Winning Nylon limits
slipping of its nylon tire. Ans. 9—10 (citing Picking A Winning Nylon 9).
From this, the Examiner finds that the tire disclosed by Picking A Winning
Nylon “indeed induces radial and axial compressive loads.” Ans. 10. Next,
the Examiner finds that the proposed combination of Picking A Winning
Nylon and Hill results in the recited axial loads, and “[observing the
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portions of the tire 10 surrounding seats 15 of bearings 17 seen in Figure 1,
one having ordinary skill in the art at the time of the invention would
indisputably conclude that such an interference fit there between apply both
radial and axial loads onto the bearings 17.” Ans. 10.
In reply, Appellant asserts that, although the shrink fit disclosed by
Picking A Winning Nylon would provide radial compressive force when the
tire is loaded and unloaded, and axial frictional force when the tire is axially
loaded, there would be not necessarily be axial compressive forces when the
tire is unloaded. Reply Br. 9.
We find Appellant’s arguments unpersuasive. Even assuming,
arguendo, that heat shrinking as described in Picking A Winning Nylon does
not result in an axial compressive force when there is no axial load on the
tire disclosed by Picking A Winning Nylon, Appellant’s argument does not
address the combination of references applied by the Examiner.
Specifically, the proposed combination of Picking A Winning Nylon and
Hill provides that the outer racer is coupled to the outer wall and a portion of
the faces of the bearing. See Hill, Fig. 1. Appellant does not explain
persuasively why the outer racer, in the Examiner’s proposed combination,
heat shrunk and in contact with the faces of the bearing, does not necessarily
produce axial load on these faces.
Additionally, referring to the arguments made against Rejection (I),
Appellant asserts “as explained in great detail above, Hill explicitly and
repeatedly teaches that an elastomeric material is necessary for the tire (i.e.,
outer racer), and in fact, it is the crux of the invention of Hill that an
elastomeric material must be used.” Appeal Br. 28 (emphasis added).
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We addressed the alleged requirement for Hill to use an elastomer
above, and, for the same reasons discussed above, we are not persuaded by
Appellant’s argument on this issue. Additionally, the Examiner’s proposed
combination of Picking A Winning Nylon and Hill modifies Picking A
Winning Nylon to incorporate certain structure from Hill. Appellant does
not persuasively explain why this structure, as opposed to the “relief’
structure Hill uses to reduce problems associated with elastomeric tires,
depends in any way on the use of an elastomer rather than the polyamide
disclosed by Picking A Winning Nylon. Accordingly, for this additional
reason, we find Appellant’s arguments to be unpersuasive, and we affirm the
Examiner’s rejection of claims 1, 10, and 20 as unpatentable over Picking A
Winning Nylon and Hill.
DECISION
The Examiner’s decision to reject claims 1—3, 7—10, 12, 14—16, and
20 is affirmed.
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)(l)(iv).
AFFIRMED
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