Ex parte HAMAEKERS

Board of Patent Appeals and Interferences

Jul 15, 1998

08287432 (B.P.A.I. Jul. 15, 1998)

Application for patent filed August 8, 1994.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ARNO HAMAEKERS
________________
Appeal No. 97-0996
Application 08/287,4321
________________
ON BRIEF
________________
Before ABRAMS, STAAB and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1-9, all the claims in the application.
Appellant’s invention pertains to a method of manufacturing
a metal ring element for use in a hydraulically dampened machine
support. Independent claims 1 and 5 are illustrative of the
Appeal No. 97-0996
Application 08/287,432
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appealed subject matter and read as follows:
1. A method for manufacturing a bearing comprising an
elastic spring element made of rubber that is affixed to a ring
element made of an elastically deformable material, comprising
the steps of:
bending a lamellar section of sheet metal into a cylindrical
shape; and
deforming the sheet metal into the shape of a ring element
having a uniform thickness.
5. A method for manufacturing a metal ring element for use
in a bearing, comprising the steps of:
bending a lamellar section of sheet metal into a cylindrical
shape; and
deforming the sheet metal into a shape comprising a conical
portion and a contiguous disk-like portion that is set at an
angle with respect to the conical portion so that the ring
element is of uniform thickness.
The following reference of record is relied upon by the
examiner in support of the rejections:
Ingersoll 2,382,485 Aug. 14, 1945
In addition, the examiner relies upon appellant’s admitted
prior art (AAPA) as set forth on pages 1 and 2 of the
specification.
Claims 1-9 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ingersoll.
Appeal No. 97-0996
Application 08/287,432
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Claims 1-9 stand further rejected under 35 U.S.C. § 103 as
being unpatentable over AAPA in view of Ingersoll.
Independent claim 1 calls for the step of deforming the
sheet metal into the shape of a ring element having a uniform
thickness. Independent claim 5 contains similar language.
Ingersoll pertains to a method of manufacturing conical
disks suitable for heavy load purposes such as in the
construction of wheels for tractors and other vehicles. In order
to combine maximum strength with economy of material, the disk
“is desirably tapered in thickness from center to periphery”
(column 1, lines 7-9). Several methods of manufacturing the disk
are disclosed. In each instance, the thickness of the side wall
of the disk is tapered so as to gradually decrease in thickness
toward the smaller end of the conical shape of the finished
product. See, for example, column 2, lines 33-46; column 2, line
55 through column 3, line 5; and column 3, lines 2-4. Also see
Figures 2, 4, 6, 8, 12 and 13, wherein the tapering of the side
wall of the conical disk is clearly seen.
AAPA, pages 1-2 of appellant’s specification, states that in
hitherto known methods of making the ring element of the support,
an annular disc was punched out of a piece of flat sheet metal,
Appeal No. 97-0996
Application 08/287,432
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and thereafter, the annular disc “reshaped” into a finished ring
element. According to the specification, page 2,
the reshaping operation results in the ready-to-fit
ring element having sections of varying material
strength along its axial extent, the lowest material
strengths occurring, depending upon the particular
manufacturing method employed, in the area of the
lateral edges of the ring element, where the elastic
spring element and the bearing support are affixed.
This weakening of the material is caused by the plastic
stretching it undergoes during reshaping and the
resultant loss of thickness in these regions.
It is the examiner’s foundation position that the thickness
of the Ingersoll ring element, or the ring element of AAPA made
in accordance with the teachings of Ingersoll, “is uniform in
thickness around the circumference at either terminal end, or at
any point along the length thereof, thus the limitation of the
ring ‘having a uniform thickness’ or ‘of a uniform thickness’ as
required by the claims is met by Ingersoll” (answer, page 3).
In responding to appellant’s argument, the examiner further
explains his position as follows:
Appellant’s threshold argument is that Ingersoll fails
to teach a ring element having a uniform thickness. In
fact, according to Appellant, Ingersoll teaches a
tapered thickness, which teaches away from the present
invention. The Examiner agrees with Appellant’s
interpretation of Ingersoll in that the element formed
by the process disclosed in Ingersoll does indeed have
a tapered form, when viewed along the longitudinal axis
of the element as seen in, for instance, figure 12 of
Ingersoll. The tapered ring element in Ingersoll is
Appeal No. 97-0996
Application 08/287,432
To the extent this quote is intended to reflect the2
terminology of independent claim 5, it is inaccurate. Claim 5
does not include the word “a.”
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indeed not uniform in thickness along this axis.
However, the claims only require forming a ring element
having a uniform thickness. As stated in the above
rejections, which were repeated from the final
rejection, the ring element of Ingersoll does indeed
have a uniform thickness around the circumference at
either terminal end, or at any point along the length
thereof. Therefore, the limitation of the ring “having
a uniform thickness” or “of a uniform thickness” as[2]
required by the claims is met by Ingersoll. This
interpretation of the limitation of a “uniform”
thickness not only conforms with the well accepted
definition of the word “uniform” but also conforms with
it’s [sic, its] broadest reasonable interpretation.
[answer, pages 4-5]
We appreciate the point the examiner is trying to make. We
agree with appellant, however, that the examiner’s position “is
simply not a reasonable interpretation of the plain meaning of
the words employed in the claims or of the structure and method
shown in Ingersoll” (brief, page 5). More particularly, while it
is true that terms in a claim are to be given their broadest
reasonable interpretation in proceedings before the PTO, this
interpretation must be consistent with the specification and the
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
Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990);
Appeal No. 97-0996
Application 08/287,432
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In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983). Here, appellant’s specification as a whole makes it clear
that the ring element does not merely include end and/or cross
sectional portions of what may be termed uniform thickness, but
rather that the ring element itself is of uniform thickness. We
can think of no circumstances under which the artisan, consistent
with appellant’s specification, would construe the conical
elements of Ingersoll, with its progressively thinning side wall,
as corresponding to the claimed ring element of uniform
thickness. This being the case, we will not sustain the
examiner’s rejections of the appealed claims under either 35
U.S.C. § 102(b) or 35 U.S.C. § 103.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-0996
Application 08/287,432
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