Ex Parte Nakatani et al

Patent Trial and Appeal Board

Oct 17, 2014

11630838 (P.T.A.B. Oct. 17, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SHINYA NAKATANI, KENTAROU SAKAGAMI,
YUJIROU TODA, and MAMORU SATOU
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Appeal 2012-009594
Application 11/630,838
Technology Center 3600
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Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
JILL D. HILL, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Shinya Nakatani et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s final decision rejecting under 35 U.S.C. § 103(a)
claims 1–3, 6–9, and 12 as being unpatentable over Terada (US 6,343,682
B1, issued Feb. 5, 2002), Mikami (US 2002/0107150 A1, published Aug. 8,
2002), Naka (US 5,498,357, issued Mar. 12, 1996), and Kondo (US
6,037,314, issued Mar. 14, 2000). App. Br. 9. Claims 4, 5, 10, and 11 have

1 According to Appellants, the real party in interest is NSK, LTD. App.
Br. 2.

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Application 11/630,838
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been canceled. Id. at 4. We have jurisdiction over this appeal under 35
U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellants’ invention relates to “a one-way clutch-containing rotation
transmission apparatus.” Spec. 1, para. 1.
Claims 1 and 7 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A one-way clutch-containing rotation transmission
apparatus comprising a pair of rotary members disposed
concentrically, a rolling bearing disposed between mutually
opposed peripheral surfaces of the pair of rotary members and
serving to support the pair of rotary members so as to be freely
rotatable each other, and a one-way clutch disposed between the
mutually opposed peripheral surfaces of the pair of rotary
members and serving to transmit a rotary power for rotating one
of the rotary members with respect to the other only in a
predetermined direction, wherein
a grease composition is sealed in the rolling bearing and
the one-way clutch, the grease composition containing a
synthetic oil as a base oil having a dynamic viscosity of 20 to
200 mm2/s at 40°C, at least either of an urea compound and a
metal soap as a thickener in an amount of 10 to 30 % mass with
respect to the entire amount of the grease, a non-barium type
antirust agent in an amount of 1.0 to 10 mass % with respect to
the entire amount of the grease, and an antiabrasive agent,
wherein the non-barium type antirust agent is a
compound selected from the group consisting of a carboxylic
acid, a carboxylic acid salt, a fatty-acid-polyhydric alcohol
partial ester, an amine, a thiadiazole, and a benzotriazole,
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Application 11/630,838
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the antiabrasive agent contains at least one of a
dithiophosphate metal compound, a dithiocarbamate metal
compound, and a sulfur-phosphor compound,
wherein an amount of the antiabrasive agent is 1 to 10
mass % with respect to the entire amount of the grease, and
wherein the grease composition further contains an
antioxidant in an amount of 0.5 mass % or more with respect to
the entire amount of the grease.

ANALYSIS
Appellants have not presented arguments for the patentability of
claims 2, 3, 6–9, and 12 apart from independent claim 1. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2, 3, 6–9, and 12 standing or falling with claim 1.
The Examiner finds that Mikami discloses the use of dithiozinc
phosphate in a lubricant composition as both an anti-abrasive and an
antioxidant agent. Ans. 6 (citing Mikami, para. 38). The Examiner further
finds that Kondo discloses a grease composition having 0.1 to 15 % by
weight zinc dithiophosphate. Id. at 7 (citing Kondo, col. 4, ll. 21–67).
Thus, according to the Examiner, “some of the zinc dithiophosphate is
interpreted to be the anti-abrasive agent and the remainder of the zinc
dithiophosphate is interpreted to be the antioxidant.” Id. at 8 (underlining
omitted).
In response, Appellants argue that “[i]t is entirely illogical and
irrational to allege that a single compound would be divided into two mass
% in a single composition” because “if an additional amount of the same
compound were added . . . the end result is that the compound would have a
higher mass%.” App. Br. 11. According to Appellants, “if a cake mix
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already contains one cup of sugar and then you add one more cup of sugar,
the amount of sugar with respect to the ‘entire’ cake mix is two cups.” Id. at
12; see also Reply Br. 6. Furthermore, Appellants contend that because
claim 1 recites both anti-abrasive and antioxidant elements having respective
mass % amounts, this indicates that they are “distinct” (separate) elements.
Reply Br. 4; see also App. Br. 10.
We are not persuaded by Appellants’ contentions because limitations
not appearing in the claims cannot be relied upon for patentability. In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). In this case, independent claim 1
does not require that the claimed anti-abrasive and antioxidant agents be
“distinct” (separate) compounds, because, as the Examiner correctly notes,
the specific anti-abrasive and antioxidant agents are not recited, but are
merely referred to in terms of their properties, i.e., anti-abrasive and
antioxidant. See Ans. 10.
At most, claim 1 requires a grease composition containing, inter alia,
an anti-abrasive agent that “contains at least one of a dithiophosphate metal
compound, a dithiocarbamate metal compound, and a sulfur-phosphor
compound” in an amount of 1 to 10 mass % and an antioxidant agent in an
amount of 0.5 mass % or more, with respect to the entire grease
composition. See App. Br. 15–16, Claims. App. As the Examiner correctly
finds, Mikami discloses a lubricant composition containing “an extreme
pressure agent including dithiozinc phosphate2” and an “antioxidant [agent]
including . . . dithiozinc phosphate,” whereas Kondo discloses a grease
composition containing zinc dithiophosphate in an amount 0.5 to 10% by
weight based on the weight of the entire composition. See Ans. 6–7; see

2 Dithiozinc phosphate (or zinc dithiophosphate) constitutes a sulfur-
phosphor compound. See Kondo, col. 4, ll. 21–23
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also Mikami, para. 38 and Kondo, col. 4, ll. 44–45. As such, we agree with
the Examiner’s example that if the grease composition of Terada, Mikami,
Naka, and Kondo contains 1.5 mass % zinc dithiophosphate, with respect to
the entire grease composition, “the first .5 mass % of the zinc
dithiophosphate is interpreted to be the antioxidant, and the next 1 mass % is
interpreted to be the anti[-]abrasive agent.” Ans. 8. (underlining omitted).
Similarly, in Appellants’ cake mix analogy, if a cake mix contains 1 cup of
sugar, a portion (1 teaspoon) is used to activate the yeast and the remainder
portion to sweeten the resulting cake.
Accordingly, for the foregoing reasons, we sustain the rejection of
independent claim 1, and claims 2, 3, 6–9, and 12 falling with claim 1, under
35 U.S.C. § 103(a) as being unpatentable over Terada, Mikami, Naka, and
Kondo.

SUMMARY
We affirm the Examiner’s decision to reject claims 1–3, 6–9, and 12.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Ssc