Ex Parte Hoff

Patent Trial and Appeal Board

Jun 17, 2016

12349902 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/349,902 0110712009
23464 7590 06/21/2016
BUCHANAN INGERSOLL & ROONEY PC
P.O. BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Klaus Hubert Hoff
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
080869 5884
EXAMINER
PRATHER, GREGORY T
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS HUBERT HOFF
Appeal2014-002261
Application 12/349 ,902
Technology Center 3600
Before JOHN C. KERINS, MICHAEL L. HOELTER, and,
JILL D. HILL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-20. App. Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "concerns a cross head bearing, in
particular for stroke piston machines, including a bearing surface that
contains multiple oil ways running axially, each of which is connected
Appeal2014-002261
Application 12/349,902
through a rearward borehole to a lubricant supply." Spec. il L Claims 1, 10,
and 11 are independent. Claim 1 is representative of the claims on appeal
and is reproduced below:
1. A crosshead bearing for stroke piston machines,
compnsmg:
a bearing surface having a plurality of lubricating
oil ways running axially, each of which is connected through a
rearward borehole to a lubricant supply; and
wherein said bearing surface comprises opposing central
load positions, wherein the opposing central load positions
comprise a first opposing central load position and a second
opposing central load position, the first opposing central load
position opposing the second opposing central load position;
and
wherein a first lubricating oil way of the plurality of
lubricating oil ways is located at the first opposing central load
position and a second lubricating oil way of the plurality of
lubricating oilways is located at the second opposing central
load position; and
wherein the first lubricating oil way at the first opposing
central load position of the bearing surface is designated as a
first main discharge oilway and the second lubricating oilway
at the second opposing central load position of the bearing
surface is designated as a second main discharge oilway; and
wherein at least one of the first main discharge oil way
and the second main discharge oilway run axially straight on
the bearing surface.
REFERENCES RELIED ON BY THE EXAMINER
Mori
Aube le
us 4, 105,267
US 2006/0002643 Al
Aug. 8, 1978
Jan.5,2006
Appellant's Admitted Prior Art (APA) as shown in Figure 1 of the instant
application.
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Application 12/349,902
THE REJECTIONS ON APPEAL 1
Claims 1-3, 6-15, and 202 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mori and Aubele.
Claims 4, 5, and 16-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mori, Aubele, and AP A.
ANALYSIS
The rejection of claims 1-3, 6-15, and 20
as unpatentable over Mori and Aubele
Appellant argues claims 1-3 and 6-9 together (App. Br. 12-17), while
also presenting additional arguments for claim 1 (App. Br. 18-20) and claim
6 (App. Br. 20-21 ). Appellant further presents separate arguments for claim
10 (App. Br. 21-22), claims 11-19 together (App. Br. 22-23), and
arguments specifically with respect to claim 13 (App. Br. 23-24). We select
claims 1, 6, 10, 11, and 13 for review with the remaining claims standing or
falling with their respective group. See 37 C.F.R. § 41.37(c)(l)(vii).
Claim 1
Claim 1 is directed to a bearing surface having least one lubricating
oilway running "axially straight on the bearing surface." The Examiner
relies on the teachings of Figure 12 of Mori, along with those of Aubele, for
disclosing the limitations of claim 1 (Final Act. 4--6; Ans. 18), but the
Examiner acknowledges, "Figure 12 of Mori does not expressly show at
least one of the [oilways running] axially straight on the bearing surface."
1 The Examiner withdrew the rejection of claims 1-20 under 35 U.S.C. 112,
second paragraph, as being indefinite. Ans. 14; Final Act. 2.
2 "Claim 20 has been rejected but that rejection is not being appealed." App.
Br. 1. We summarily sustain the Examiner's rejection of claim 20.
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Application 12/349,902
Final Act. 6. For this teaching, the Examiner relies on Figures 1--4 of Mori
with illustrate oilways running "axially straight on the bearing surface for
the purpose of causing fatigue failure (Cl/L40)." Final Act. 6; see also Ans.
18. The Examiner then asks the question, "Why might fatigue failure be
desirable?" before providing answers thereto. Final Act. 6. The Examiner
provides such answers as
to increase money made on maintenance and repairs, or perhaps
to encourage the purchasing of a replacement device again, or
perhaps to cause the bearing to fail before some other part of an
engine so that [the] other part of the engine might be serviced
before a more catastrophic failure.
Final Act. 6. In any event, the Examiner states, "there are circumstances
under which fatigue failure can be desirable" and hence, it would have been
obvious to modify Mori with axially straight oilways "for the purpose of
causing fatigue failure." Final Act. 6.
Appellant presents several arguments disputing the Examiner's
rejection (see App. Br. 13-17; Reply Br. 1-6, 9-10), but we address
Appellant's assertion that "Mori and Aubele Teach Away From the
Limitations of Claim 1" and also its related argument, "There is Not a
Motivation to Combine Mori and Aubele." App. Br. 18-20; Reply Br. 6-
9.
Appellant explains that, regarding bearings formed with axially
straight oilways, "Mori describes this configuration as being particularly
unfavorable." App. Br. 18 (referencing Mori 1:34--41); see also Reply Br. 6.
This portion of Mori states that grooves formed axially have "the defect that
an excessive Hertz's stress is put on the areas in the vicinity of the grooves
in the axial direction," which, in tum, "tends to cause flowing, crushing,
fatigue failure and cracking of the portions near the edges 4 of the grooves."
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Appeal2014-002261
Application 12/349,902
Mori 1:34--41. Hence, although Mori discloses that it is known to align the
grooves axially straight (see Mori Figs. 1--4 (identified as "Prior Art")), Mori
seeks to "eliminate the causes of the above-mentioned failures" by forming
the grooves at an angle or obliquely to the axis of the bearing. Mori 1 :42-
43; see also Mori 2:8-11, 2:59---63, Figs. 5-8.
Appellant also explains that Aubele is disenchanted with the use of
grooves in general because, as stated in Aubele:
Experiments with oil grooves in the bearing receptacle have
proven complex and cost-intensive. A further disadvantage is
that such grooves have to extend from the bearing housing as far
as into the bearing cap, such that material weakening in the area
between bearing housing and bearing cap leads to problems of
stability. Furthermore, the space available is very small, due to
the retaining screw located therein.
It has been demonstrated that it is easier to introduce an oil-
conveying groove into the backing material of the bearing shell
than into the bearing receptacle, wherein at the same time
\~1eakening of the material in the area of transition bet\~1een
bearing housing and bearing cap is avoided.
App. Br. 19 (referencing Aubele i-fi-13, 7); see also Reply Br. 6.
Hence, according to Appellant, Mori and Aubele each "teach away
from the limitations of claim 1" because each "discourages oilways that run
axially straight on a bearing surface." App. Br. 18-19; see also Reply Br. 6-
7. Appellant contends that, instead, "[b ]oth Mori and Aubele teach that
longevity is desired, not failure." App. Br. 20 (referencing Mori 1 :42--43
and Aubele i-f 7); Reply Br. 8. 3
3 Mori states that it is "[a]n object of this invention to eliminate the causes of
the above-mentioned failures." Mori, 1 :42--43. Paragraph 7 of Aubele
states, "[ w ]eaking of the material of the bearing shell [as compared with the
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Application 12/349,902
Our reviewing court has stated, "The prior art's mere disclosure of
more than one alternative does not constitute a teaching away from any of
these alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed." In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (emphasis added). In the matter before us, however,
one skilled in the art reading both Mori and Aubele would realize that
axially straight grooves (or grooves in general) are being criticized,
discredited, or otherwise discouraged from use. Nevertheless, the Examiner
seeks to combine Mori and Aubele "for the purpose of causing fatigue
failure" (Final Act. 6), which is exactly that which Mori and Aubele seek to
avoid. See supra. The Examiner provides no other reason for their
combination. Consequently, Appellant contends, "there is no support in the
art for this statement as a reason to combine ... Mori and Aubele[,] and [the
Examiner's reason to combine] is directly opposite to the goals of Mori and
Aubele." Reply Br. 7.
There is merit to Appellant's contentions because the Examiner has
failed to provide "some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness" when
combining Mori and Aubele. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007). See also Reply Br. 8. As a result, it appears the Examiner is
relying on improper hindsight by expressing a desire to cause failure as the
basis for employing axially straight grooves, when both Mori and Aubele
seek to avoid the failure of bearings having axially straight grooves.
bearing surface] does not have any negative effects on the load-carrying
capacity and service life of the bearing shell."
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Accordingly, and based on the record presented, we reverse the
Examiner's rejection of claims 1-3 and 7-9.
Claim 6
Claim 6 depends from claim 1. Claim 6 has been rejected by the
Examiner as being obvious over Mori and Aubele. Final Act. 7-8.
Appellant relies on the same "teaching away" arguments as presented with
respect to claim 1. App. Br. 21. We find such argument persuasive for the
reasons previously stated. We reverse the Examiner's rejection of claim 6.
Claim 10
Independent claim 10 has also been rejected under the combination of
Mori and Aubele. Final Act. 9-10. However, unlike claim 1, claim 10 does
not include the limitation that an oilway extends "axially straight." Instead,
claim 10 recites that the oil way be "placed at an angle of between 20Q-40Q
relative to an adjacent main discharge oilway." Appellant recites the various
limitations found in claim l 0 and simply states, "neither Aubele nor iviori
teach or suggest, alone or in combination" the recited limitation. App. Br.
21-22. Appellant's contention provides no explanation as to why the
combination of Mori and Aubele fails to disclose the limitations of claim 10
as expressed by the Examiner. See Final Act. 9-11. In short, Appellant's
general allegation of error fails to meet the requirements of 3 7 C.F .R.
§ 41.37(c)(l)(iv) and is thus unpersuasive. In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art."). We affirm the Examiner's
rejection of independent claim 10.
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Application 12/349,902
Claim 11
Independent claim 11, like claim 1, includes the limitation of an
oilway that runs "axially straight on the bearing surface." Appellant relies
on the argument previously presented that "Mori and Aubele teach away"
from this limitation. App. Br. 23. For the same reasons previously
expressed, we reverse the Examiner's rejection of independent claim 11 and
dependent claim 12 and 14--19.
Claim 13
Claim 13 depends from claim 12, which, in tum, depends from
independent claim 11. As above, Appellant contends, "Mori discourages
oilways that run axially straight on a bearing surface and thus teaches away
from such limitations." App. Br. 24. For the same reasons previously
expressed, we reverse the Examiner's rejection of claim 13.
The rejection of claims 4, 5, and 16-19
as unpatentable over Mori, Aubele, and AP A
The parent of these dependent claims includes the limitation of an
oilway that extends "axially straight." The Examiner relies on AP A for
teaching a position of an oilway on the bearing, but not for any teaching that
the oilway extends in an "axially straight" direction. Final Act. 13-15.
Accordingly, the Examiner's additional reliance on AP A does not cure the
defect above and consequently, the rejection of claims 4, 5, and 16-19 is
reversed.
DECISION
The Examiner's rejection of claim 10 is affirmed.
The Examiner's rejections of claims 1-9 and 11-19 are reversed.
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We also summarily sustain the Examiner's rejection of claim 20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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