Ex Parte Oishi et al

Patent Trial and Appeal Board

Nov 28, 2017

12810627 (P.T.A.B. Nov. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/810,627 06/25/2010 Shinji Oishi 12112-0061 8016
22902 7590 11/28/2017
TT ARK ^ RRODY EXAMINER
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
11/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINJI OISHI, KATSUFUMI ABE, and
YUGO YOSHIMURA
Appeal 2015-008110
Application 12/810,627
Technology Center 3600
Before CHARLES N. GREENHUT, LEE L. STEPINA, and
JASON W. MELVIN, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 the Examiner’s decision to
reject claims 1—5.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 An oral hearing was conducted on November 21, 2017.
Appeal 2015-008110
Application 12/810,627
CLAIMED SUBJECT MATTER
The claims are directed to “a roller bearing retainer having a
strengthened bended part.” Spec. 1:30—31. Claim 1, reproduced below with
emphases added, is illustrative of the claimed subject matter.
1. A roller bearing retainer comprising:
a plurality of column parts each containing a column
center part positioned in an axial center region on a radial inner
side comparatively, a pair of column end parts positioned in
axial end regions on a radial outer side comparatively, and a
pair of column sloped parts positioned between said column
center part and each of said pair of column end parts; and
a pair of annular ring parts, each annular ring part
connected to one of said pair of column end parts, and each
annular ring part connected to a flange, each flange extending
toward the radial inner side, wherein
said column center part, said pair of column end parts,
and said pair of column sloped parts are formed by expanding
both axial ends of a cylindrical member having a diameter equal
to that of said column center part substantially, and
said flange part is formed by compressing said
cylindrical member in an axial direction, and
a plurality of boundary parts, each boundary part between
the column center part and an adjacent one of said pair of
column sloped parts, between one of said pair of column sloped
parts and an adjacent one of said pair of column end parts,
between the each flange part and an adjacent one of said pair of
annular ring parts, and a thickness of each boundary part is
made larger than a thickness of each of the column end parts,
the column center part, each of the column sloped parts, each
of the annular ring parts, and each of the flange parts,
at least said pair of column sloped parts serve as a roller
guide surface, and
a thickness of both ends of said column sloped parts is
thicker than a thickness of said column center parts and column
ends parts, and
wherein each said annular ring is an integrated ring part
continuous in a circumferential direction and each said
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Application 12/810,627
boundary part includes a projection side and a recess side and
the thickness of the boundary part designates a length of a line
connecting a center part of the projection side and a center part
of the recess side.
Appeal Br. 24—25 (Claims App.). The Appeal Brief refers to Appellants’
Figure 3, among other portions of the disclosure, in summarizing the subject
matter recited in claim 1, and we reproduce Appellants’ Figure 3 below.
FIG, 3
33\
Appellants’ Figure 3 is a perspective view of a portion of a circular roller
bearing retainer 33, including column center part 16, paired column end
parts 17, and paired column sloped parts 18 positioned between the column
center part 16 and the column end parts 17. Spec. 5:2—3, 6:10-14.
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Application 12/810,627
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ito JP 2000-257638 Sept. 19,2000
Saito2 JP 2001-314921 Nov. 13,2001
REJECTIONS
I. Claims 1—5 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
II. Claims 1—5 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
III. Claims 1—5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ito and Saito.
OPINION
Rejection I; Written Description
The Examiner finds that “the limitation ‘a thickness of both ends of
said column slope parts is thicker than a thickness of said column center
parts and column end parts’ constitutes new matter.” Final Act. 3. The
Examiner explains that the Specification describes the column sloped parts,
column center parts, or column end parts as having a constant thickness, and
this contradicts a recitation that the ends of the column sloped parts are
thicker than a thickness of the column center parts and column end parts. Id.
at 3^4. The Examiner also finds that Figures 4 and 5 depict the column
2 Our references to text of Saito are to the machine-translation of this
reference made of record on June 17, 2013.
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Application 12/810,627
center parts, the column end parts, and the column sloped parts as having a
constant thickness. Id. at 4.
Appellants concede “that there is no specific written description that
‘thickness of both ends of said column slope parts fare] thicker than a
thickness of said column center parts and column end parts,’” but assert “the
drawings when read in light of the [Specification provide support for the
limitation in question.” Appeal Br. 16, 17. In this regard, Appellants
provide an annotated copy of Figure 4 {id. at 29 (Evidence App.)), which we
reproduce below.
FIG,. 4
Appellants’ Figure 4 is a cross-section view of circular roller bearing
retainer 33 with “thicknesses of the column center part 16, the column end
part 17, the column sloped part 18, and the ring part 14, and the flange part
19 ... set to be equal to a thickness ti substantially.” See Spec. 5:5—6, 7:11—
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Application 12/810,627
14. Appellants’ annotations to Figure 4 include reference characters A, B,
C, and D. Appeal Br. 16.
Appellants contend that reference character A identifies the thickness
of each end of the column sloped parts as t2. Id. Appellants further contend
that because the Specification discloses that t2> ti, the Figures, in
combination with the Specification, support the limitation “a thickness of
both ends of said column sloped parts is thicker than a thickness of said
column center parts and column ends parts” in claim 1. Id. at 17.
In response, the Examiner finds “page 7, lines 15-20 of the
[Specification of the instant application defines the thickness of the
boundary parts as illustrated in Figure 4 as ‘t2’ and thus the thickness of the
‘ends’ cannot be denoted by ‘t2’ because ‘t2’ in Figure 4 is directed to the
thickness of the boundary parts.” Ans. 2—3 (emphasis added). Thus, the
Examiner finds that the use of reference indicator “t2” to define the thickness
of the ends of the sloped parts is inconsistent with the Specification because
this reference indicator is already used to define the thickness of the
boundary parts. See id. at 2-4.
We agree with the Examiner on this point. Appellants concede that
the Specification does not provide written description support for the above-
noted feature. Appeal Br. 16. Further, the feature in question contradicts the
Specification, which states that the column sloped parts have a thickness ti,
no part of the column sloped parts is described as having any thickness other
than ti, and only the boundary parts are described as having a thickness t2,
which is greater than ti. See, e.g., Spec. 7:11—23. Appellants’ discussion of
Figure 4 is unavailing inasmuch as the annotations provided by Appellants
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Application 12/810,627
are inconsistent with the description of Figure 4 provided in the
Specification. Thus, we sustain Rejection I.
Rejection II; Indefiniteness
Regarding the language in claim 1 discussed above, the Examiner
determines “[i]t is unclear if the ‘ends’ of the column slope part are the same
structural features as the boundary parts defined between each column slope
part and the column center part, and between each column slope part and an
adjacent column end part.” Final Act. 5.
Appellants contend that claim 1 is not indefinite because the ends of
the column sloped parts “can be reasonably viewed as an alternative to the
boundary parts, not the recitation of a unique structure that presents a
conflict with the already recited structure having the larger thickness.”
Appeal Br. 18. In this regard, Appellants argue “the later recitation of ‘ends
of the column sloped parts’, which may be redundant given the earlier
recitation of the boundary parts, does not make the claim unable to be
understood from the standpoint of the person of skill in the art.” Id. at 19
(emphasis added).
The Examiner responds, and we agree, that (i) Appellants’
interpretation of claim 1 is inconsistent with the Specification because the
sloped parts are disclosed only as distinct from the boundary parts, and (ii)
Appellants’ interpretation of claim 1 requires the same element to be recited
by two different terms. Ans. 4—5. Thus, we sustain Rejection II.
Rejection III; Ito and Saito
The Examiner finds that Ito discloses all of the elements required by
claim 1 except for the relative thicknesses of the recited parts. Final Act. 6—
8. To address this deficiency, the Examiner refers to Saito, finding that
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Saito discloses a rotary part in which comer section 5 has a thickness greater
than other portions of the part. Final Act. 8—9. The Examiner reasons that it
would have been obvious to modify Ito such that the boundary portions
between adjacent portions would have a thickness greater than those
portions “for the purpose of improving the rigidity of a roller bearing cage
(the rotary part).” Id. at 9.
Appellants contend that Saito is non-analogous art inasmuch as “it is
clear that the work form of Saito is not analogous to a roller bearing retainer
as is the case with Ito ... [, and] it is error for the Examiner to analogize the
work form of Saito as one that is involved in high speed rotation like the
roller bearing retainer of Ito.” Appeal Br. 19—20.3
In response, the Examiner finds that Saito is in the same field of
endeavor as the claimed invention and reasonably pertinent to the problem
with which Appellants were concerned. Ans. 5. In this regard, the
Examiner finds that Appellants’ disclosed method of producing a roller
bearing involves “obtaining a cylindrical member 22 from a steel plate” and,
thus, the Examiner finds, “one of ordinary skill in the art recognizes that the
field of [Appellants’] endeavor is a roller bearing retainer, which is a rotary
part, provided from a plate or sheet of metal.” Id. at 6 (citing Spec. 10:9—
10). The Examiner finds that the cup-shaped product disclosed by Saito is
made via a similar methods and, therefore, Saito is in Appellants’ field of
endeavor. Id.
Next, the Examiner finds “the particular problem with which
Applicant was concerned was improving the strength of a bended part by
3 Appellants provided a partial, non-machine translation of Saito in support
of the argument that Saito is non-analogous art. See Appeal Br. 27—28.
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increasing the thickness of the bended part.” Ans. 6—7 (citing Spec. 1:30-
31, 2:1—17). The Examiner finds that Saito addresses a similar problem. Id.
(citing Saito 14).
We agree with the Examiner that Saito is reasonably pertinent to the
problem addressed by Appellants. Both Appellants and Saito were
concerned with the strength of the bended parts. See Spec. 1:30-31 (“It is an
object of the present invention to provide a roller bearing retainer having a
strengthened bended part.”); see also Saito 14.4 Thus, we find Appellants’
argument that Saito is non-analogous art to be unavailing.
Appellants next argue that Saito teaches thickening only one bend or
comer in a bowl or cup-shaped product, and there is no reason, based on
Saito, to modify Ito so as to thicken the particular boundary parts recited in
claim 1. See Appeal Br. 20—22; see also Reply Br. 1—13.
The Examiner finds that Saito’s teaching of thickening a comer
portion to increase rigidity applies to more than the specific comer explicitly
disclosed in Saito. Ans. 7—8.
The Examiner has the better position. Although Saito may not
disclose thickened comers in the specific locations recited in claim 1, the
disclosure in Saito is sufficient to teach that thickening comers relative to
portions adjacent the comers increases rigidity. See Saito 14. Thus, the
Examiner’s reasoning for the proposed modification, “for the purpose of
improving the rigidity of a roller bearing cage (the rotary part)” (Final Act.
9) is supported by rational underpinnings. Accordingly, we sustain the
4 Appellants’ partial, non-machine translation of Saito states, “The present
invention relates to a method of thickening a local portion by a press work
and . . . thickening the thickness of at least a comer portion of an upright
flange portion formed at the end of a plate material.” Appeal Br. 27.
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rejection of claim 1 as unpatentable over Ito and Saito. Appellants make no
separate argument against the rejection of claims 2—5 as unpatentable over
Ito and Saito, and these claims fall with claim 1. See Appeal Br. 19—22.
DECISION
The Examiner’s decision to reject claims 1—5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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