Ex Parte Goppelsroder et al

Patent Trial and Appeal Board

Nov 25, 2013

10516142 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EGON GOPPELSRODER, EBERHARD TUNGLER,
and RENE RICHERT
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Appeal 2012-001126
Application 10/516,142
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, JOHN W. MORRISON, and
HYUN J. JUNG, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001126
Application 10/516,142
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
71-76. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

CLAIMED INVENTION
Claim 71, reproduced below, is illustrative of the claimed subject
matter:
71. A drive, comprising:
at least one housing part;
an outgoing shaft supported in an output-side bearing;
and
an output-side shaft seal ring configured to seal on an
output side;
wherein the output-side shaft seal ring and the output-
side bearing are arranged between the outgoing shaft and an
intermediate flange, the intermediate flange arranged in the
housing part, for positioning, to abut against a bore configured
as a bearing seat and seat for the shaft seal ring, the
intermediate flange secured to the housing part by a releasable
connection, the intermediate flange machined to include a
connection arrangement for connection to a non-rotating part of
a device to be driven, a radial distance of the releasable
connection to an axis of rotation of the outgoing shaft smaller
than a diameter of at least one of:
(a) an inner ring of the output-side bearing;
(b) an outer ring of the output-side bearing; and
(c) an inside diameter of the output-side shaft seal ring.

REFERENCES
Mensing
Chihara
US 5,501,117
US 6,724,112 B2
Mar. 26, 1996
Apr. 20, 2004
Appeal 2012-001126
Application 10/516,142
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REJECTIONS1
Claims 71-74 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Mensing.
Claims 74-76 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Mensing and Chihara.

ANALYSIS
Anticipation by Mensing
The Examiner finds that Mensing discloses all of the recited
limitations of independent claim 71, including
the releasable connection can be considered either the threaded
fastener (61) or the projecting portion formed on the
intermediate flange member that extends into a bore of the
housing part (3), wherein both the threaded fastener and the
projecting portion are separate from the bore configured as the
bearing seat and the seat for the seal ring.
Ans. 6, citing Mensing figs. 3a-3b. From the drawings, the Examiner further
finds “both the threaded fastener and the flange projecting portion are
positioned from the output shaft axis at a distance that is smaller tha[n] a
diameter of an outer ring of the output-side bearing.” Id.
Appellants argue that “nowhere does Mensing [] disclose the claimed
features of claim 71, and any conclusory statement as to relative dimensions
drawn from the Figures of Mensing[] is purely speculation and conjecture.”
App. Br. 5. Appellants further argue that “since the specification of
Mensing[] is completely silent on the issue of dimensions and proportions of
the elements, the Figures of Mensing[] may not be relied on to show

1The rejections of claims 74-76 under 35 U.S.C. 112, second paragraph,
have been withdrawn. Ans. 4.
Appeal 2012-001126
Application 10/516,142
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particular sizes or relative proportions based on measurements of the
drawings.” Id. at 6.
We agree with Appellants. Appellants’ position is that reliance on the
drawings alone is not permitted under Federal Circuit precedent set forth in
Hockerson-Halberstadt, Inc. v. Avia Group Int’l., 222 F.3d 951 (Fed. Cir.
2000). This case stands for the proposition that where precise measurement
or considerable and careful evaluation of an illustration in a prior art
reference or in a prior application are required in order to demonstrate that
the illustration meets a dimensional limitation of a claim, findings or
conclusions based upon such evaluation will be disfavored or assigned little
weight when the prior art reference lacks explicit disclosure that the
drawings are to scale or that the particular elements at issue possess some
particular dimensional relationship.
The written disclosure of Mensing that describes the releasable
connection of the flange arrangement of Figures 3a-3b states:
The flange 51, which is identically constructed in both
FIGS. 3a and 3b, is fixed by means of screws 61 to the housing
3. The flange 51 is internally provided with a stepped bearing
ring 63 for a bearing 64 of the shaft 26a, which is axially
retained between the shoulder and a snap ring 67 inserted in a
ring flange 66 of the flange 51 and to which is externally
connected the radial shaft packing 44.
Mensing, col. 4, ll. 57-64. From this disclosure, we find no explicit
disclosure of dimensions or the ratio of dimensions claimed by Appellants.
Moreover, the Examiner has provided no evidence that the drawings are to
scale. As such, we are persuaded by the Appellants’ argument that the
Examiner has erred by relying on Mensing’s Figures 3a and 3b for the
disclosure of a particular dimensional relationship between the releasable
connection and the inside diameter of the output-side shaft seal ring.
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Application 10/516,142
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Accordingly, we do not sustain the rejection of independent claim 71, or
dependent claims 72-74 which depend therefrom, as anticipated by Mensing.

Obviousness over Mensing and Chihara
Claims 74-76 depend from independent claim 71. App. Br., Clms.
App’x. The rejection of claims 74-76 also relies on the erroneous finding of
the dimensional relationship between the releasable connection and seal ring
derived solely from the drawings of Mensing. The Examiner does not rely
upon Chihara for the disclosure of this dimensional relationship. See Ans. 6-
7. For the above reasons, we do not sustain the rejection of claim 74-76 as
unpatentable over Mensing and Chihara.

DECISION
For the above reasons, the Examiner’s decision to reject claims 71-76
is reversed.
REVERSED

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