Ex Parte Oishi et al

Patent Trial and Appeal Board

Jun 26, 2018

12991487 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/991,487 11/08/2010
22902 7590 06/26/2018
CLARK & BRODY
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
FIRST NAMED INVENTOR
Shinji Oishi
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.
12112-0067 9299
EXAMINER
MCGOVERN, BRIAN J
ART UNIT PAPER NUMBER
3656
MAILDATE DELIVERY MODE
06/26/2018 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 and KOUHEI KONDOU
Appeal2017-008084
Application 12/991,487
Technology Center 3600
Before CHARLES N. GREENHUT, LEE L. STEPINA, and
JASON W. MEL VIN, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection of claims
1--4, 6-8, and 11-22. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as NTN Corp. Appeal Br. 3.
Appeal2017-008084
Application 12/991,487
CLAIMED SUBJECT MATTER
The claims are directed to a roller bearing cage, roller bearing, and
method for producing roller bearing cage. Claims 1 and 15 are independent,
and claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A roller bearing cage comprising a pair of annular ring
parts, and a plurality of column parts to mutually connect said
pair of ring parts, and having pockets to house rollers between
adjacent ones of the plurality of column parts, wherein
each column part includes a first roller stopper part
arranged on a radial inner side to prevent one of the rollers from
escaping to the radial inner side, and a second roller stopper part
arranged in a radial outer side to prevent the one of the rollers
from escaping to the radial outer side, each first roller stopper
part and second roller stopper part arranged on wall surfaces of
column parts opposed to a respective one of the pockets, and
each first roller stopper part and second roller stopper part
is formed by a process only from one radial side,
wherein each column part includes a column center part
positioned on the radial inner side in an axial center region, a pair
of column end parts positioned on the radial outer side in axial
end regions, and a pair of column slope parts positioned between
said column center part, and said pair of column end parts, and
each first roller stopper part is provided in a respective one
of the column center parts at two spaced apart axial end portions
thereof and each second roller stopper part is provided in a
respective one of the pairs of column end parts at a radial outer
side position spaced from each axial end portion thereof, and
each second roller stopper part projects to a pocket side in
a manner that an amount of projection on the radial outer side is
larger than that on the radial inner side,
each first roller stopper part has a non-contact surface
recessed from the wall surface of a respective one of the column
center parts and a projecting surface located on the radial inner
side of said non-contact surface projecting from the wall surface
of the respective one of the column center parts, the non-contact
surface is recessed from the wall surface so as to form a
predetermined spaced between the non-contact surface and the
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Application 12/991,487
one of the rollers adjacent to the non-contact surface, thus
preventing contact between the non-contact surface and the one
of the rollers,
oil grooves are provided on both sides of the non-contact
surface of each first roller stopper, and
the non-contact surface of each first roller stopper part is
inclined such that the predetermined space between the non-
contact surface and the one of the rollers increases in distance in
a direction from the projecting surface of the first roller stopper
part, along the noncontact surface, and toward the radial outer
side,
wherein each first roller stopper is a burnished claw and
each second roller stopper part is a caulked claw.
Appeal Br. 37-38 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Benson
Vannest
Furukawa
Terada2
Saito3
us 3,494,684
us 3,628,839
us 6,039,475
JP 2000-01825 8
JP2001314921
Feb. 10, 1970
Dec. 21, 1971
Mar. 21, 2000
Jan. 18,2000
Nov. 13, 2001
2 Our references to Terada are to the English-language machine-translation
cited by the Examiner.
3 Our references to Saito are to the English-language machine-translation
cited by the Examiner.
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REJECTIONS
(I) Claims 11-15, and 22 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. 4
(II) Claims 1--4 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson and Terada.
(III) Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson, Terada, and Saito.
(IV) Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson, Terada, and Furukawa.
(V) Claims 1, 11, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson, Vannest, and Terada.
(VI) Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Benson, Vannest, Terada, and Furukawa.
(VII) Claims 15-18 and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson, Vannest, Furukawa, and Terada.
(VIII) Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Benson, Vannest, Furukawa, Terada, and Saito.
4 The heading for this rejection lists claims 1--4, 6-8, and 11-22 as being
indefinite, but the body of the rejection discusses a lack of clarity in only
claims 11-15 and 22. See Final Act. 2--4.
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OPINION
Rejection (I); Indefiniteness
Claims 11-13, 15, and 22; the first/second roller stopper
Claim 11 recites, in part, "[t]he roller bearing cage according to claim
1, wherein the first roller stopper has a protruding flat portion." Appeal Br.
40 (Claims App.) (emphasis added).
The Examiner determines that claims 11-13, 15, and 22 are indefinite
because independent claims 1 and 15 introduce "a plurality" of first (and
second) roller stopper parts, but claims 11-13, 15, and 22 further define "the
first" or "the second" roller stopper (part) without indicating whether this
refers to one of the stoppers or each (all) of the stoppers. Final Act. 3.
Appellants assert that the language in question would be understood
by a person of ordinary skill in the art, when read in light of the
Specification. Appeal Br. 33. In particular, Appellants contend,
Id.
saying that "the first roller stopper part" and "the second roller
stopper part" have additional features as claims 11-13, 15, and
22 recite clearly implies that each of the roller stopper parts have
the additional features and this language is readily understood by
the person of skill in the art.
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
when it "contains words or phrases whose meaning is unclear." In re
Packard, 751F.3d1307, 1314 (Fed. Cir. 2014) (approving, for pre-issuance
claims, the standard from MPEP § 2173.05(e)); see also Ex parte McAward,
Appeal 2015-006416, 2017 WL 3669566, at 5 (PTAB Aug. 25, 2017)
(precedential) (adopting the approach for assessing indefiniteness approved
by the Federal Circuit in Packard). We disagree with Appellants' argument
because, as the Examiner points out (Ans. 3), the meaning of the word "the"
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Application 12/991,487
is not identical to the meaning of the word "each," which results in the
ambiguity in claims 11-13, 15, and 22. Although it is plausible that the
language at issue could be understood to mean what Appellants contend it
means, Appellants do not direct our attention to any portion of the
Specification requiring such an interpretation. See Appeal Br. 33. The
Specification provides no guidance on this issue. Although Appellants'
Figures appear to show first roller stoppers having identical configurations
(see Figures 3-5, 23-25), we see no reason to limit Appellants' claims to the
specific embodiment depicted in the Figures inasmuch as the phrase "the
first roller stopper" is, on its face, singular. In this regard, the Figures
support both interpretations of the language at in question, i.e., claim 11 may
be referring to only one first roller stopper or to all first roller stoppers. "[I]f
a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite" Ex
Parte Miyazaki, 89 USPQ2d 1207, 1211(BPAI2008). Accordingly, we
agree with the Examiner that claim 11 and similarly rejected claims 12, 13,
15, and 22 are unclear.
Claims 11 and 15; protruding flat portion, step portion, inclined
portion
The Examiner also determines that claims 11 and 15 are indefinite
because it is unclear whether the recited "protruding flat portion" is (i) part
of the previously recited projecting surface, or, (ii) a separate structure.
Final Act. 3. Further, the Examiner determines claims 11 and 15 are
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indefinite because it is unclear whether the "inclined portion" is part of the
non-contact surface or something distinct from it. Id.
Appellants contend that "the fact that claims 11 and 15 may have a
redundancy concerning the incline of the non-contact surface does not mean
that the claim cannot be understood." Appeal Br. 33. Appellants also
contend that "the fact that claims 11 and 15 do not relate to the projecting
surface recited in claim 1 or earlier in claim 15 does not mean that the more
detailed description of the first roller stopper part cannot be understood,"
and these claims "merely further define the shape of the first roller stopper
part in terms of the protruding portion and step portion and these claims are
easily understood in the context of claim 1 and the previously-recited parts
of claim 15, respectively." Id.
We do not agree with Appellants' arguments on this point because
they do not respond to the rejection and amount to a bare assertion that the
Examiner's determination is incorrect. There is no dispute as to whether the
limitations further define the shape of the first roller stopper. The Examiner
set forth two possible interpretations of limitations in claims 11and15, and
Appellants' argument does not indicate which one is correct, much less
explain why one interpretation must be chosen over the other so as to resolve
the ambiguity.
Claims 12 and 15; the column end part-Claims 14 and 15; the
pocket
The Examiner determines that claims 1 and 15 recite a plurality of
column end parts, and the additional recitation, in claims 12 and 15 of "the
column end part" makes claims 12 and 15 unclear. Final Act. 4. Likewise,
the Examiner determines that the lack of agreement between the plural
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"pockets" recited in claims 1 and 15 and the later singular "pocket" recited
in claims 14 and 15 makes claims 14 and 15 unclear.
Appellants make similar arguments regarding the incongruence of the
plural recitations in claims 1 and 15 and the singular recitations in claims 12,
14, and 15 as discussed above regarding the claims 11-13, 15, and 22 and
the first/second roller stopper. See Appeal Br. 33-34. For the same reason,
none of these arguments is availing. We sustain the Examiner's rejection of
claims 11-15, and 22.
Rejection (II); Benson5 and Terada
Claim 1 recites, in pertinent part:
the non-contact swface of each first roller stopper part is
inclined such that the predetermined space between the non-
contact surface and the one of the rollers increases in distance in
a direction from the projecting surface of the first roller stopper
part, along the noncontact surface, and toward the radial outer
side.
Appeal Br. 38 (Claims App.) (emphasis added).
The Examiner finds that Benson discloses most of the elements
recited in claim 1, and, specifically, that Benson teaches a "non-contact
surface of each first roller stopper part is inclined (fig 21 illustrates
trapezoidal pocket requiring 44 to be inclined with respect to a center axis of
the pocket)." Final Act. 6, see Final Act. 5-7.
The Examiner relies on Terada to teach that "oil grooves (7) are
provided on both sides (figs 1, 3, and 4) of the non-contact surface (8) of the
5 This rejection relies, in part, on the teachings of Figure 21 of Benson.
Final Act. 5. In contrast, Rejection (V) relies on the teachings of Figure 22
of Benson rather than those of Figure 21. Id. at 11.
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roller stopper part ( 6,8), for the purpose of preventing lubricative
deterioration (paragraph [0004])." See id. at 7.
Appellants argue, "Figures 21 and 22 of Benson cut the same kind of
grooves, just that the tool used to do it is different," and "[i]n either case, the
groove 44 being cut is straight and does not have an incline like that shown
in Figure 19 of the application." Appeal Br. 29.
We reproduce Figure 21 of Benson, cited by the Examiner (Final Act.
5---6), and Figure 20 of Benson below.
Figure 20 of Benson depicts punch-like member 37, which is
configured to engage strip 34 such that punch elements 43 are progressively
moved along the sides of the bar 36 to form grooves 44 and lugs 45.
Benson, 4:23---61.
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~1G.21 ' .
113!
Figure 21 of Benson depicts a cross-section of a retainer 1131, including
trapezoidal pockets 1133, and lugs 80 formed with a tool 81 including
structure similar to the tool depicted in Figure 20. Benson, 8:40-53.
Figures 20 and 21 support the Examiner's finding that non-contact
part 44 satisfies the "incline" requirement of claim 1 because, due to the
trapezoidal shape of opening 1133, the distance from the walls of opening
1133 and any roller positioned in opening 1133 will increase as the distance
from the lug 80 increases. In other words, in Figure 21, the distance
between the walls and the roller (not shown) increases from one end of the
opening to the other. Similarly, the distance between the surface of groove
44 will increase in accordance with the shape of the wall in which groove 44
is located. Thus, Appellants' argument on this point is unavailing.
Appellants next assert,
[ c ]laim 1 requires that the column center part "is positioned on
the radial inner side in an axial center region." This is clearly
seen in Figure 4 of the specification as well. In contrast to this
arrangement, the column center portion 51 of Benson in Figure
12 is in the radial outer side.
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Appeal Br. 29--30.
In response, the Examiner provides an annotated copy of Figure 12 of
Benson, turned upside-down, and finds
the column center part ( 51) of Benson is disposed on the radial
inner side in the same was as disclosed in Figure 4 of the instant
application, and the first roller stopper part ( 4 7) of Benson is
disposed on the radial inner side in the same way as disclosed in
Figure 4 of the instant application.
Ans. 30.
We agree with the Examiner. When considering the position of the
remainder of the bearing in Figure 12 of Benson (such as rims 3 5), it is clear
that the central part of the column, offset central portion 51, is disposed
radially inward relative to other structure. 6
Appellants next assert, "in Figure 4 of the specification, first roller
stopper part 16a is located in the radial inner side, whereas the first roller
stopper part 47 of Benson is in the radial outer side." Appeal Br. 30.
Appellants' argument on this point is incorrect for the same reason
discussed above regarding the position of the column center part.
Next, Appellants argue that the Examiner relied on impermissible
hindsight in proposing to combine the teachings of Benson and Terada as set
forth in the rejection of claim 1. Appeal Br. 30. Specifically, Appellants
assert,
the Examiner takes a completely different kind of retainer and
column part and conclude that one of skill in the art would take
the oil grooves of Terada, that are designed for the full width
6 Figures 6-12 of Benson show the central part disposed in multiple
configurations, including at the innermost edge of rims 3 5 and at the
outermost edge of rims 3 5.
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Application 12/991,487
column end part and use them in the column center part of
Benson so that the rejection can be made.
Id; see also Reply Br. 4--5 (asserting the Examiner is "picking and choosing"
features in order to make a rejection).
In response, the Examiner reiterates the findings set forth on page 7 of
the Final Action with respect to Terada and states, "[i]t cannot be said that
the combination is based on information gleaned from only applicant's
disclosure when Terada explicitly discloses the oil grooves." Ans. 32. The
Examiner also states, "the Final Rejection clearly articulated to Applicant
that Terada disclosed an explicit benefit of the oil grooves, and that this
teaching was the basis for the proposed combination." Id.
The Examiner has the better position on this point. We reproduce
Figure 3 of Terada below.
Figure 3 of Terada is a perspective view of pillar section 4 of a cage 1,
including oil grooves (slots) 7 disposed on both sides of inner claw 6 and
portion 8. Terada i-f 14, Brief Description of the Drawings. Paragraph 4 of
Terada states, "[t]he purpose of this invention is to provide the bearing for
connecting rod large ends of the engine which can prevent the lubricative
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deterioration." Id. i-f 4. Paragraph 5 of Terada continues the discussion from
paragraph 4, explaining,
[ s ]ince a slot and a concave part are formed near the inner claw
with the processing when forming an inner claw by ironing, the
slot and concave part serve as a passage of an oil, and when it
corresponds with an inner claw, a lubricating oil becomes is [sic]
easy to be supplied to the surface.
Thus, the Examiner's finding that Terada provides oil grooves 7 for the
purpose of preventing lubrication deterioration is supported by a
preponderance of the evidence, and, based on this purpose, the Examiner's
reasoning for modifying Benson to include such grooves is supported by
rational underpinning.
Appellants also assert, "[ t ]he limitations concerning forming the first
and second roller stopper parts formed by a process only from one radial
side and having burnished and caulked claws represents a structure not
taught or obvious from the prior art." Appeal Br. 31 (underlining omitted).
Appellants contend that the process limitations recited in claim 1 impart "a
unique structure to the roller bearing cage that is not found in the prior art."
Id. In this regard, Appellants assert:
The processing of using only one radial side of the cage and
making a burnished claw followed by a caulking claw is not
taught or suggested in the prior art. Because of the unique
processing, the first roller stopper part is provided with one
distinct structure from burnishing and the second roller stopper
part is given a second and different structure by caulking. These
structures are formed from only one radial side of the bearing
roller cage. This is the distinct structural characteristic of the
invention based on the processing of the invention and is one that
is not found in the prior art or obvious therefrom.
Id. at 31-32.
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In response, the Examiner reiterates the finding from pages 6-7 of the
Final Action that the shapes of the structures taught by Benson satisfy the
structural requirements of claim 1, and the processes by which these
structures are made do not patentably distinguish the claims. Ans. 4--7.
We agree with the Examiner on this point because Appellants'
argument merely asserts that there is a distinct structural characteristic
produced by a recited process without explaining what that characteristic is.
The Examiner is on solid ground in finding that the processes set forth in
Benson, for example, produce the same structure as the structure required by
claim 1. See Ans. 8-9 (discussing the similarities between the process used
by Benson and burnishing). Appellants' Specification fails to mention any
structural characteristic of the burnishing or caulking processes required that
distinguishes the first or second roller stopper from the structure formed in
Benson. In this regard, we note that Appellants' Specification appears to
emphasize the invention's benefit of simplifying manufacturing rather than
any particular structural difference from the prior art. For example, under
the heading "EFFECT OF THE INVENTION," the Specification states:
regarding the roller bearing cage according to the present
invention, each of the first roller stopper part positioned on the
radial inner side and the second roller stopper part positioned on
the radial outer side can be formed by the process only from the
one radial side, so that the process facility of the roller stopper
parts can be simple as compared with the conventional case.
Spec. i121.
We have considered all of Appellants' arguments regarding Rejection
(II), but determine the Examiner has the better position. We affirm the
rejection of claims 1--4 and 8 as unpatentable over Benson and Terada.
Rejection (III); Benson, Terada, and Saito
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Claim 6 requires that the thickness of each column center part, pair of
column end parts, and pair of column slope parts is less than the thickness of
boundary parts that are located between each column center part and
adjacent column slope parts and between each of the column slope parts and
adjacent column end parts. Appeal Br. 39 (Claims App.).
The Examiner finds Saito teaches "a thickness (t) of adjacent portions
(2,3) [that] is smaller than a thickness (T) of a boundary part (5) located
between said adjacent portions, for the purpose of improving the rigidity of a
rotary part (paragraph [0004])." Final Act. 8. The Examiner reasons that it
would have been obvious to modify the structure in Benson to include the
recited thickness in order to improve rigidity of the roller cage as the roller
cage. Id.
Appellants argue that Saito is non-analogous art and that, in view of
Saito' s teaching, the Examiner has not provided an adequate rationale for
modifying the structure disclosed by Benson.
Appellants' contentions are unavailing. As the Examiner correctly
finds, Saito relates to improving the rigidity of a rotary part. See Ans. 24--
26; see also Saito i-f 4 (stating, "when the above-mentioned work is a rotary
part, a limit is naturally shown also in planning rigidity improvement by
heavy-gage-ization of the comer part itself."). Likewise, the thickness
limitations recited in claim 6 are concerned with the strength of a rotary part
(solving the problem of weakness of the part). See Spec. i-f 37. The
Examiner also notes that both the claimed invention and Saito relate to
strengthening bent parts. Ans. 26. This finding is supported by a
preponderance of the evidence. See Saito Figs. 9--10; see also Spec. i-f 42.
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Accordingly, the teachings of Saito are reasonably pertinent to the problem
with which Appellants were concerned.
As for the Examiner's rationale, we find that Saito explicitly teaches
making the comers of a rotary part more rigid. See Saito i-f 4. Thus, the
Examiner's rationale that modifying the areas at issue in the structure of
Benson would provide this effect has adequate underpinning.
Appellants next contend that the thickened structure disclosed by
Saito does not apply to a portion other than the flange. See Appeal Br. 26-
28. We disagree. Although Saito may not disclose thickened comers in the
specific locations recited in claim 6, the disclosure in Saito is sufficient to
teach that thickening comers relative to portions adjacent the comers
increases rigidity. See Saito i-f 4. We affirm the rejection of claim 6 and of
claim 7 (for which Appellants make similar arguments) as unpatentable over
Benson, Terada, and Saito.
Rejection (IV); Benson, Terada, and Furukawa
Claim 12 recites, in part, "wherein the second roller stopper has a
recess formed in an outer radial side surface of the column end part as a
result of forming the caulked claw." Appeal Br. 40 (Claims App.). Claim
13 recites that "the second roller stopper has a shape imparted due to
caulking that is different from a shape of the first roller part imparted due to
burnishing." Id.
The Examiner finds that Benson teaches variability in its design, and
relies on Furukawa to teach the specific recess recited in claim 12. Final
Act. 10 (citing Benson, 1:52-56, 2:62---63, 6:50-53; Furukawa, Figs. 12, 23,
24, 1: 19-27). The Examiner reasons it would have been obvious to provide
the structure of Benson a recess "as taught by Furukawa, because a person of
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ordinary skill in the art has good reason to pursue the known options within
his or her technical grasp." Id. The Examiner determines that the proposed
combination would have a stopper from Furukawa and a stopper from
Benson and these would have different shapes. Id. at 11. The Examiner also
finds that the device of Benson would work equally as well with the recess
as it would without one, and the Examiner states, "Furukawa discloses a
roller stopper part that is formed by a process that does not remove material
and holds the roller securely (see Furukawa, column 1, lines 19-27), which is
the disclosed object of Benson (see Benson, column 2, lines 6-9)." Id. at
10-11.
Appellants contend that Benson relates to a scarfing process, which
provides significant advantages, and this fact would lead a person of
ordinary skill in the art away from using a caulking process. Appeal Br. 22;
see also Reply Br. 3--4.
Appellants' argument is unavailing because the fact that certain
advantages might exist in Benson's process does not, by itself, teach away
from using a caulking process. See In re Fulton, 391 F.3d 1195, 1200 (Fed.
Cir. 2004) (stating, "[the] law does not require that a particular combination
must be the preferred, or the most desirable, combination described in the
prior art in order to provide motivation for the current invention.").
Moreover, as the Examiner finds, the burnishing process recited in claim 12
and the process described in Benson are similar, if not identical. See
Benson, 2:5-17, 4:51-61. Thus, we do not agree that Benson would lead a
person of ordinary skill in the art away from the arrangement recited in
claim 12.
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Appellants next argue that "Furukawa also teaches away from the
modification that the Examiner proposes for Benson" and "Furukawa
addresses the caulking operation in terms of prior art techniques for forming
roller stopper parts and teaches that this operation is problematic." Appeal
Br. 22 (citing Furukawa, 1:35--44, Fig. 12); see also Reply Br. 4.
We disagree with Appellants' argument. To the extent that Furukawa
discusses problems associated with a caulking process, it is in the context of
performing this process on a structure having a broken dimensional surface
"b." Furukawa, 1:35--44, Figs. 10-12. Appellants do not explain adequately
how such a teaching would apply in the context of the process by which
Benson forms a surface corresponding to surface "b" in Furukawa. Further,
in contrast to Appellants' contention, Furukawa appears to implement a
caulking process in its preferred method of construction. See Furukawa,
1 :39--42, 2:61---64. Thus, if Furukawa teaches away from something, it is not
caulking, per se.
Appellants also argue that the Examiner's rationale for modifying the
structure of Benson in view of the teachings of Furukawa is inadequate.
Appeal Br. 22-24.
In reply, the Examiner further explains the rationale for modifying
Benson as "a simple substitution of one known element for another
(substituting known roller stopper parts)" and "combining known prior art
elements (known roller stopper parts) according to known methods to yield
predicable results." Ans. 22 (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 415--421 (2007)). The Examiner also explains that "design choice is an
acceptable rationale because the roller stopper parts of Benson and
Furukawa are structurally functionally equivalent and one of ordinary skill
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in the art as good reason to pursue known options within his or her technical
grasp." Id.
The Examiner has the better position on this point. We agree with the
Examiner's finding (Final Act. 10-11) that the stoppers disclosed in Benson
and Furukawa perform the same function and are formed by similar
processes. See, e.g., Furukawa, 3:35--47, Figs. 3-5; Benson, 4:51---61, Figs.
20-22. Appellants do not contest that the elements of claims 12 and 13 are
individually disclosed by each of Benson, Terada, and Furukawa. 7 Further,
we agree with the Examiner that, based on the similar function and
manufacturing methods disclosed in Furukawa and Benson, substituting one
stopper (a caulked stopper) from Furukawa for a stopper from Benson would
have had predictable results. Thus, the Examiner's reasoning for modifying
the structure of Benson in view of the teachings of Furukawa is supported by
rational underpinnings. Accordingly, we affirm the Examiner's rejection of
claims 12 and 13 as unpatentable over Benson, Terada, and Furukawa.
Rejection (V); Benson, Vannest, and Terada
Claims 1 and 11
Relying on the embodiment depicted in Figure 22 instead of the one
depicted in Figure 21 as was done in Rejection (II), the Examiner finds that
Benson teaches most of the elements recited in claim 1. Final Act. 11-12.
We reproduce Figure 22 of Benson below.
7 Appellants do not contest that the modification proposed by the Examiner
would provide the recess required by claim 12. See Appeal Br. 12-36.
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Figure 22 of Benson depicts a cross-section of a retainer 1231 with
lugs 86 formed with a tool 87, and, in contrast to the pockets depicted in
Figure 21, pockets 123 3 are rectangular in cross-section (the walls are
parallel to each other). Benson, 8:65-9: 14.
As the walls of pockets 1233 in Benson are parallel to each other, the
Examiner relies on Vannest (see Figs. 9-10) to teach, among other things,
that the non-contact surface of each first roller stopper part is inclined. Final
Act. 13. The Examiner finds that cusp 69 of Vannest corresponds to an
inclined non-contact surface that increases in distance from the rollers as one
moves toward the outer radial side, as recited, and the Examiner reasons that
implementing this shape in Benson's non-contact surface would have been a
matter of design choice. Id. The Examiner relies on Terada to teach oil
grooves as recited in claim 1. Id. at 14--15.
Appellants argue that Vannest uses a machining process to create its
structure and this means the Examiner's rejection must be based on
impermissible hindsight because Benson uses a different process in creating
its stoppers. See Appeal Br. 19 (stating, "Benson uses a scarfing technique
to displace material from one part to another part to create retainer lugs,
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Vannest employs a complicated machining process to form the retainer.").
In this regard, Appellants pose the inquiry, "[a]s the scarfing operation is the
core part of the invention of Benson, how does the person of skill in the art
make the modification of Benson knowing Vannest?" Id.
We find Appellants' argument to be unavailing. Appellants do not
explain why the difference in manufacturing techniques used by Benson and
Vannest makes the implementation of the shape of the stopper of Vannest in
Benson more difficult, let alone nonobvious to those of skill in the art. In
this regard, we note that the Examiner proposes to modify Benson to include
the stopper shape disclosed by Vannest; the Examiner does not modify
Benson to include the manufacturing process disclosed by Vannest. See
Final Act. 12.
Appellants also contend "there is nothing in Benson to suggest that
the non-contact part of Vannest can be made using the scarfing technique of
Benson." Appeal Br. 19.
However, Appellants provide no technical reasoning or evidence to
identify any specific obstacles associated with implementation, in Benson, of
the shape of the non-contact part taught by Vannest. The mere absence of an
express suggestion in the prior art to combine reference teachings does not
defeat a rejection under§ 103(a). In re Keller, 642 F.2d 413, 425 (CCPA
1981). We affirm the Examiner's rejection of claim 1 as unpatentable over
Benson, Vannest, and Terada.
In support of the patentability of claim 11, Appellants rely on the
same arguments discussed above regarding claim 1. Appeal Br. 20.
Accordingly, we affirm the rejection of claim 11 as unpatentable over
Benson, Vannest, and Terada.
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Claim 14
Claim 14 requires that "opposing wall surfaces of the pocket are
parallel to each other." Appeal Br. 40 (Claims App.). The Examiner relies
on Figure 22 of Benson to teach this feature. Final Act. 12.
Appellants assert, "Figure 22 of Benson does not have the
combination of parallel walls of the pocket and an inclined non-contact part
as claim 14 requires when combined with claim 1." Appeal Br. 20.
Appellants contend, "the combination of an inclined non-contact part and
parallel walls of the pockets are not taught in Benson and claim 14 is
separately patentable over Benson and Vannest." Id. at 21.
This argument is without merit because, in Rejection (V), the
Examiner relies on Vannest, not Benson, to teach inclination of the non-
contact surface. 8 See Final Act. 13. Thus, Appellants' argument does not
address the rejection made by the Examiner.
Rejection (VI); Benson, Vannest, Terada, and Furukawa
Claim 22 recites, in pertinent part, "the second roller stopper has a
recess formed in an outer radial side surface of the column end part as a
result of forming the caulked claw." Appeal Br. 43 (Claims App.).
Appellants make the same arguments regarding Rejection (VI) as
those discussed above regarding Rejection (IV). Appeal Br. 21-24. As
discussed above, we do not agree that Benson or Furukawa teaches away
from the Examiner's proposed modification to Benson. Accordingly, we
affirm the rejection of claim 22 as unpatentable over Benson, Vannest,
Terada, and Furukawa.
8 As the Examiner points out (Ans. 16-17), Rejection (II) relies on Figure 21
of Benson, which depicts inclined walls of the pocket, but Rejection (V)
relies on Figure 22 of Benson, which depicts parallel walls of the pocket.
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Rejection (VII); Benson, Vannest, Furukawa, and Terada
Appellants provide no new argument for the patentability of
independent claim 15 and claims 16-18 and 21 depending therefrom, 9 and,
instead, state, "[t]he arguments made above for claims 1 and 11-14 apply to
claim 15 and these arguments demonstrate that a prima facie case of
obviousness is not established against this claim and the rejection should be
reversed." Appeal Br. 25.
As we do not agree with Appellants' arguments made in support of
claims 1 and 11-14, we affirm the rejection of claims 15-18 and 21 as
unpatentable over Benson, Vannest, Furukawa, and Terada.
Rejection (VIII); Benson, Vannest, Furukawa, Terada, and Saito
Claims 19 and 20
Appellants make the same arguments regarding Rejection (VIII) as
those discussed above regarding Rejection (III). Appeal Br. 25-28. For the
same reasons discussed regarding the affirmance of Rejection (III), we
affirm Rejection (VIII).
DECISION
We affirm Rejections (!}-(VIII).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9 Claim 21 incorporates all of the limitations of claim 15 by reference.
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