12357696 (P.T.A.B. Jun. 25, 2014)

Ex Parte Eschenburg et al

Patent Trial and Appeal BoardJun 25, 2014

12357696 (P.T.A.B. Jun. 25, 2014)

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. 12/357,696 01/22/2009 Dale Eschenburg MERIT080085PUS 1173 113600 7590 06/26/2014 Brooks Kushman P.C. / Meritor Twenty Second Floor 1000 Town Center Southfield, MI 48075 EXAMINER BELLINGER, JASON R ART UNIT PAPER NUMBER 3617 MAIL DATE DELIVERY MODE 06/26/2014 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 DALE ESCHENBURG and DAVID GONSKA ____________________ Appeal 2012-001346 Application 12/357,696 Technology Center 3600 ____________________ Before: CHARLES N. GREENHUT, BART A. GERSTENBLITH, and FRANCES L. IPPOLITO, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 22. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a spindle for controlling wheel end endplay and preload. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A spindle for a vehicle axle comprising: a body having an inboard end and an outboard end, said body having an outer peripheral surface; Appeal 2012-001346 Application 12/357,696 2 an air passage formed within said body, said air passage having an inlet to be associated with a pressurized air source; an inboard bearing shoulder formed about said outer peripheral surface adjacent said inboard end of said body to seat an inboard cone of an inboard bearing; an outboard bearing shoulder formed about said outer peripheral surface to seat an outboard cone of an outboard bearing wherein said inboard cone is in direct abutting engagement with said inboard bearing shoulder and said outboard cone is in direct abutting engagement with said outboard bearing shoulder; and wherein said outboard bearing shoulder is spaced axially outboard of said inboard bearing shoulder by a predetermined distance such that the outboard bearing is positioned relative to the inboard bearing to control endplay and preload without requiring bearing adjustment. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Goodell Kawamura Wernick US 4,431,043 US 6,196,727 B1 US 6,199,611 B1 Feb. 14, 1984 Mar. 6, 2001 Mar. 13, 2001 REJECTIONS Claims 1-22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over either Goodell or Wernick, in view of Kawamura. Ans. 4- 5. OPINION In rejecting all twenty-two of the pending claims, the Examiner simply states, regarding the Examiner’s reliance on Goodell and Wernick, “Goodell et al [or Wernick] shows a spindle and hub assembly having all of Appeal 2012-001346 Application 12/357,696 3 the properties as set forth in the above claims.” Ans. 4-5. The Examiner, citing Kawamura’s nut 11 and inner ring member 8, which the Examiner interprets as an “outboard cone,” proposes to provide Goodell or Wernick “with the fastening arrangement of Kawamura” in order to yield the subject matter of each of the independent claims involved in this appeal, claims 1, 4, and 9. Id. at 5. The Examiner further asserts that “it would have been obvious to one of ordinary skill in the art at the time of the invention to provide the spindle of Goodell et al [or Wernick] with the fastening arrangement of Kawamura, as a substitute equivalent method of securing and preloading the outboard bearing on the spindle.” Id. at 5-6 Initially, we note that it is not clear why the Examiner interprets Kawamura’s inner ring member 8, which appears to be on the inboard end of Kawamura’s spindle as an “outboard” cone. In any case, it is not apparent what structure in Goodell or Wernick is relied upon by the Examiner to disclose “all of the properties as set forth in the above claims.” Ans. 4-5. For example, the Examiner’s analysis does not identify what disclosure in Goodell or Wernick is relied upon to meet the limitations recited in the claims. Additionally, it is also not apparent how the Examiner proposes to modify Goodell or Wernick to arrive at the claimed subject matter. Although the Examiner points to features of Kawamura’s “fastening arrangement,” (id. at 5-6), it is also not apparent what aspects of Kawamura the Examiner proposes to incorporate into Goodell or Wernick and how. Both Goodell or Wernick already appear to have a structure against which the outboard bearing cones are axially seated and those structures play important roles in each design. Thus, on this record, the Examiner has not established that the claimed subject matter would have been obvious. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“[T]he precise language of Appeal 2012-001346 Application 12/357,696 4 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103.”) The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-1077 (BPAI 2010)(precedential). For that review to be meaningful it must be based on some concrete evidence in the record to support the Examiner’s factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). A rejection must be set forth in sufficiently articulate and informative manner as to meet the notice requirement of § 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F. 3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” It is neither our place, nor Appellants’ burden, to speculate as to the basis for rejecting claims. In re Stephan, 660 F. 3d 1341, 1345 (Fed. Cir. 2011)(It is the PTO’s obligation to provide prior notice to the applicant of all matters of fact and law asserted prior to an appeal hearing before the Board.) DECISION The Examiner’s rejections are reversed. REVERSED Appeal 2012-001346 Application 12/357,696 5 mls