Ex Parte Maeda et al

Patent Trial and Appeal Board

Mar 7, 2016

11878678 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111878,678 07/26/2007
20277 7590 03/09/2016
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
KikuoMaeda
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.
070456-0207 2125
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
03/09/2016 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIKUO MAEDA and HISASHI OHTSUKI
Appeal2013-005125
Application 11/878,678
Technology Center 3600
Before MICHAEL L. HOELTER, JAMES P. CALVE, and
MICHAEL L. WOODS, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 and 3-9. See Appeal Br. 3-7. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Appeal2013-005125
Application 11/878,678
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A bearing apparatus for a wheel, comprising:
an outer member having multiple rows of annular outer
raceway surfaces on an inner circumferential surface;
an inner member having multiple rows of annular inner
raceway surfaces opposing said outer raceway surfaces; and
a rolling element in freely rolling contact with said outer
raceway surface and said inner raceway surface;
said inner member including a flanged member that is
made of steel and has a wheel attachment flange formed thereon,
said flanged member having:
a portion hardened to attain at least 50 HRC as a result of
quench hardening,
a non-hardened portion, and
a residual compressive stress in a range from at least 50
MPa to at most 500 MPa remaining in a surface of said non-
hardened portion as a result of a thermal refining step followed
by a turning step and/or a broaching step, wherein:
the thermal refining step includes a quenching step and a
tempering step,
the tempering step is performed at a temperature from at
least 400°C to at most 700 ° C,
said flanged member has an insertion hole for insertion of
another member formed in a region including a central axis of a
raceway of said rolling element, and
a sidewall of said insertion hole is included in said non-
hardened portion where the residual compressive stress in a range
from at least 50 MPa to at most 500 MPa remains in the surface
of said non-hardened portion.
REJECTIONS
Claims 1, 3---6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hirai (US 2004/0252927 Al, pub. Dec. 16, 2004), Ouchi
(US 6,749,517 B2, iss. June 15, 2004), and Okasaka (US 2005/0141798 Al;
pub. June 30, 2005).
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Appeal2013-005125
Application 11/878,678
Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hirai, Ouchi, Okasaka, and Webb (US 2001/0020329 Al, pub. Sept.
13, 2001).
ANALYSIS
Claims 1, 3-6, 8, and 9 as unpatentable over Hirai, Ouchi, and Okasaka
The Examiner found that Hirai discloses a wheel bearing, as recited in
claim 1, except a sidewall of the insertion hole being a non-hardened portion
and a thermal refining step including a quenching step and tempering step.
Final Act. 2-3. The Examiner found that Ouchi teaches a non-hardened
sidewall of insertion hole (15). Id. at 3 (citing Ouchi, Fig. 4, col. 7, 11. 8-32).
The Examiner found that Okasaka teaches the thermal refining of a wheel
bearing (outer member 5, hub 25) with quenching and tempering (para. 42)
where tempering is performed at a temperature from at least 400 QC to at
most 700 QC (paras. 42, 4 7) to provide high strength and durability (para. 8).
Id. at 3. The Examiner also found Okasaka teaches in paragraph 0039 that
the whole bearing assembly is tempered at a temperature value defined in
the claim and a hardened layer is formed by induction hardening. Ans. 3--4.
Appellants argue that Okasaka does not disclose a tempering step for
the non-hardened portion that is from at least 400 QC to at most 700 QC, as
claimed. Appeal Br. 3. Appellants argue that Okasaka instead discloses a
tempering step for a hardened wheel bearing that results in a portion that is
54 HRC rather than a non-hardened portion of a hardness less than 50 HRC.
Id. at 4. Appellants also argue that Okasaka does not disclose the thermal
refining step because Okasaka fails to disclose a quenching step as part of
the thermal refining step. Reply Br. 3. Appellants further argue that there is
no suggestion in Okasaka that the non-hardened portion exhibits a residual
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Appeal2013-005125
Application 11/878,678
compressive stress in a range from at least 50 MPa to at most 500 MPa in a
surface of a non-hardened portion, as claimed, and because Okasaka lacks
the claimed thermal refining step, the surface strength of the non-hardened
portion will be different from the claimed residual compressive stress. Id.
The Examiner has not established by a preponderance of evidence that
Hirai, Ouchi, and Okasaka teach or suggest a non-hardened portion having a
residual compressive stress of at least 50 MPa to at most 500 MPa remaining
in the surface. The Examiner recognized the prior art does not disclose this
feature expressly. Final Act. 4 ("Hirai in view of Ouchi and Okasaka does
not disclose that residual compressive stress in a range from at least 50MPa
to at most 500MPa is remaining in a surface of said non-hardened portion.").
Instead, the Examiner found that the prior art discloses a similar process of
tempering in the claimed temperature range, forging, turning, and induction
heat treating of the same material, and reasoned that "the final product will
have a compressive residual stress in the 50-500 MPa range defined by the
claim." Ans. 5; see also Final Act. 4.
The Examiner did not have a sound basis to reasonably conclude that
the prior art processes are the same or similar enough to the claimed process
to yield a non-hardened portion with the claimed compressive stress. See In
re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("when the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.") (citation
omitted); In re Best, 562 F.2d 1252, 1254--55 (Fed. Cir. 1977) ("where the
Patent Office has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter may, in fact, be
an inherent characteristic of the prior art, it possesses the authority to require
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Application 11/878,678
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on.") (citation omitted).
The Examiner's finding that Okasaka teaches a tempering step that is
performed at a temperature from at least 400 QC to at most 700 QC as claimed
is not supported by a preponderance of evidence. See Final Act. 3; Ans. 3.
Paragraphs 39, 42, and 47, upon which the Examiner relies for this finding,
disclose that wheel hub 1 "is tempered at high temperature above 400Q C"
(Okasaka i-f 39), outer member 5 "is heat treated by high frequency/high
temperature tempering at a temperature higher than 400Q C" (id. i-f 42), and
wheel hub 25 is "heat treated after lathe cutting by the high frequency/high
temperature tempering above 400[Q CJ" (id. i-f 47). These paragraphs do not
disclose an upper temperature limit of at most 700 QC. See Appeal Br. 3;
Reply Br. 2. Thus, the Examiner did not have a sound basis to conclude that
Okasaka's process necessarily produces the claimed residual compressive
stress. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) ("Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.") (citation omitted). This is particularly true where Appellants
disclose that the quenching step occurs at temperatures between 800 QC and
900 QC followed by a tempering step at temperatures of at least 400 QC to at
most 700 QC, as claimed. Spec. 26:14--28, 27:22-28. If Osaka's tempering
step occurred at temperatures above 7 00 QC to include between 800 QC and
900 QC, those temperatures are disclosed by Appellants as being suitable for
quenching a steel material to increase its strength before the tempering step.
Appellants also disclose that tempering a quenched steel member at
the claimed temperature range of at least 400 QC to at most 7 00 QC results in
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Application 11/878,678
a surface hardness not higher than 35 HRC. Spec. 26:23-27:5. Okasaka's
high frequency/high temperature tempering increases the surface hardness of
wheel hub 1, outer member 5, and wheel hub 25 to 54 HRC. Okasaka i-fi-139,
42, and 47. These elements therefore correspond to the claimed hardened
portion, i.e., "a portion hardened to attain at least 50 HRC." Appeal Br. 4
("the tempering step of Okasaka is directed to a hardened wheel bearing").
Okasaka's heat treating process changes the metallographic structure
to troostite or sorbate, the same structure Appellants disclose for the thermal
refining step. Ans. 4; see also Okasaka i139, and Spec. 27: 11-13. This fact
is insufficient to establish that Okasaka's tempering process necessarily will
produce the claimed surface residual compressive stress, because Okasaka' s
tempering yields a surface hardness of 54 HRC, while Appellants' tempering
process yields a surface hardness of not more than 35 HRC. See Howmedica
Osteonics Corp. v. Zimmer, Inc., Nos. 2015-1498, 2015-1503, 2016 WL
760552, * (Fed. Cir. Feb. 26, 2016) (a sound basis does not require absolute
certainty but sufficient factual findings so it can reasonably be inferred that
the prior art product and claimed product are the same).
We do not sustain the rejection of claim 1 or claims 3-6, 8, and 9.
Claim 7 as unpatentable over Hirai, Ouchi, Okasaka, and Webb
The Examiner relied on Webb to teach features of claim 7, rather than
to cure deficiencies of Hirai, Ouchi, or Okasaka, noted above for claim 1.
Final Act. 6-7; see Appeal Br. 6. We do not sustain the rejection of claim 7.
DECISION
We REVERSE the rejections of claims 1 and 3-9.
REVERSED
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