Ex Parte Sanz

Patent Trials and Appeals Board

Feb 22, 2019

15106526 - (D) (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
15/106,526
81598 7590
Mark Ussai
SKF USA Inc.
890 Forty Foot Road
PO Box 352
Lansdale, PA 19446
FILING DATE FIRST NAMED INVENTOR
06/20/2016 Alejandro Sanz
02/26/2019
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.
2013P00391WOUS 1096
EXAMINER
PILKINGTON, JAMES
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
ipr@skf.com
mark.ussai@skf.com
bryan. peckj ian @skf.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEJANDRO SANZ
Appeal2018-006573 1
Application 15/106,5262
Technology Center 3600
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims 4
and 17-20. 3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Feb. 22,
2018), the Reply Brief ("Reply Br.," filed June 1, 2018), the Examiner's
Answer ("Ans.," mailed Apr. 3, 2018), and the Final Office Action ("Final
Act.," mailed Sept. 20, 2017).
2 According to Appellant, the real party in interest is Aktiebolaget SKF.
Appeal Br. 1.
3 Claims 1-3, 5-14, and 16 have been cancelled. See Amendment filed
Nov. 20, 2017. The Examiner has indicated that claim 15 includes allowable
subject matter. Final Act. 10.
Appeal2018-006573
Application 15/106,526
BACKGROUND
According to Appellant, "[t]he invention relates to a cage for securing
a position of rolling elements in a bearing. The invention further relates to a
bearing and to a method of producing the cage." Spec. 1, 11. 5-7.
CLAIMS
Claims 4 and 17 are the independent claims on appeal and recite:
4. A cage for securing a position of rolling elements in a
bearing, the cage comprising:
a plurality of pockets at least partially surrounding the
rolling elements, wherein
the cage includes a first material and a second material, the
first material being a first printed material being printed via an
additive manufacturing process and having different properties
than the second material, wherein
the first material is printed in the pockets wherein
the rolling elements at least occasionally contact the
pockets, and wherein
the cage further comprises a functionally graded interface
layer at one of the interfaces between the first material and the
second material, a composition of the functionally graded
interface layer is configured to gradually change from the first
material via a mixture of the first material and the second
material to the second material.
17. A method of producing a bearing cage having a plurality
of pockets, each pocket being configured to receive a bearing
rolling element, the method comprising:
forming a bearing cage body having a plurality of pockets
from a first material, each of the pockets having a plurality of
side walls; and
printing a second material on at least some of the plurality
of side walls by an additive manufacturing process, the second
material having different properties than the first material.
2
Appeal2018-006573
Application 15/106,526
Appeal Br. 7.
REJECTION
The Examiner rejects claims 44 and 17-20 under 35 U.S.C. § I03(a)
as unpatentable over Braun 5 in view of Turchan. 6
DISCUSSION
Claim 4
We are persuaded of error in the rejection of claim 4 by Appellant's
argument that the Examiner has not established that the art of record renders
the claim obvious. See Appeal Br. 3--4. In particular, we agree that neither
Braun nor Turchan teaches "a functionally graded interface layer" as
claimed, and the Examiner has not established that the combination would
result in such an interface layer.
With respect to claim 4, the Examiner finds that Braun teaches a cage
for securing the position of rolling elements including a plurality of pockets,
first and second materials, and that "the rolling elements at least
occasionally contact the pockets." Final Act. 2. The Examiner finds that
Braun teaches that the first material "can be applied by a [Physical Vapor
Deposition ("PVD") or Chemical Vapor Deposition ("CVD")] process and
4 After the Final Action was mailed, Appellant amended the claims,
indicating that "claim 4 has been rewritten in independent form but the
scope of claim 4 has not been changed." See Remarks/ Arguments filed
Nov. 20, 2017; see also Advisory Action mailed Nov. 28, 2017 (entering
Appellant's amendment). Thus, the rejection of claims 1 and 4 in the Final
Action is applicable to claim 4 as amended. See Final Act. 2--4.
5 Braun, DE 10 2010 034 962 Al, pub. Feb. 23, 2012. Appellant and the
Examiner use Braun, US 2013/0216174 Al, pub. Aug. 22, 2013 ("Braun
174"), as a translation for DE 10 2010 034 962. We will do the same herein.
6 Turchan et al., US 5,635,243, iss. June 3, 1997.
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Appeal2018-006573
Application 15/106,526
does not disclose that the first material is a printed material applied via an
additive process." Id. at 3. However, the Examiner finds that "Turchan
teaches that an additive manufacturing process can be used in place of a
PVD of CVD process to make a coating, the resulting coating being a
printed material ... for the purpose of improving manufacturing and
reducing cost." Id. (citing Turchan background; col. 7, 1. 65---col. 8, 1. 18).
Further, the Examiner finds that the combination of Braun and Turchan
teaches a functionally graded interface later because
when one layer is placed on another and bonded thereto the
interface between the two materials defines a graded interface
where that particular layer includes both the first and second
material mixed in some manner, for example one material filling
microscopic voids or cavities in the surface of the other material
and defines a gradual change from one material to the next.
Id. at 4.
We agree with Appellant that the Examiner does not support
adequately the finding that placing or bonding one layer to another "defines
a gradual change from one material to the next." We agree with Appellant
that the Examiner does not provide any evidentiary support for this finding.
See Final Act. 2--4; see also Ans. 4---6. Further, even if we were to agree
with the Examiner that the broadest reasonable interpretation of the term
"interface or mixture" encompasses two layers that are bonded together
(Ans. 5), the Examiner has not established that such a mixture results in "a
gradual change from one material to the next" as required by the claim. In
short, the Examiner's findings do not appear to address this claim
requirement. Thus, we do not sustain the rejection of claim 4.
4
Appeal2018-006573
Application 15/106,526
Claims 17-20
With respect to claim 17, the Examiner finds that Braun discloses a
method as claimed except that "Braun discloses that coating/first material
can be applied to the second material by a PVD or CVD process and does
not disclose that the first material is a printed material applied to the second
material via an additive manufacturing process." Final Act. 6. And, similar
to claim 4, the Examiner finds that
Turchan teaches that an additive manufacturing process can be
used in place of a PVD or CVD process to make a coating, the
resulting coating being a printed material that is applied to a first
material (see background and column 7, lines 65-column 8,
line 7, see Figure 10 showing the coating on a base body) for the
purpose of improving manufacturing and reducing cost ( see
column 8, lines 8-18).
Id. at 6. The Examiner concludes that it would have been obvious to modify
Braun to use an additive manufacturing process, as taught by Turchan, in
order to improve manufacturing and reduce costs. Id.
We are persuaded by Appellant's argument that the Examiner has not
set forth an adequate basis to conclude that it would have been obvious to
modify Braun to use an additive manufacturing process to print the second
material. See Appeal Br. 3, 5---6. Significantly, Braun distinguishes between
the use of a printing process in a first method step for creating the base body
of a roller bearing cage, and a second method step, using CVD or PVD, to
create a nanocrystalline coating on the printed base. See, e.g. Braun 17 4
,r,r 6, 7, 11, 12, 15. Braun indicates that the nanocrystalline structure is
coated on to portions of the base body "which are exposed to increased
friction with a high introduction of heat or to increased wear." Id. ,r 18.
Turchan discusses the use of a CVD/PVD process to form a thin film of
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Appeal2018-006573
Application 15/106,526
diamond or diamond-like carbon ("DLC") on a substrate. Turchan col. 3,
1. 50-col. 6, 1. 22. Turchan also discloses the use of stereolithography as a
process in "which three dimensional objects are fabricated from thin layers
of hardened cured liquid polymers." Id. at col. 7, 1. 65---col. 8, 1. 2.
Without further explanation, the Examiner has not adequately
established that one of ordinary skill in the art would have found it obvious
to modify Braun's method of producing a bearing cage to include a second
material printed via an additive manufacturing process as claimed. For
example, although Turchan indicates that CVD/PVD and stereolithography
are different methods of forming thin layers of material, the Examiner does
not point to any evidence showing they are interchangeable methods. And
because it is not clear that these processes are interchangeable, the Examiner
does not explain adequately why substituting a CVD/PVD process with a
stereolithography process provides the advantages asserted. Further,
because Turchan discloses that stereolithography is used to create rapid
prototypes from thin layers of cured liquid polymers, we agree with
Appellant that it is not clear if such a process would be of benefit in a
bearing cage such as Braun's device, which includes a nanocrystalline
metallic coating designed to withstand high heat and increased wear. See
Appeal Br. 3-5. Appellant, therefore, argues persuasively that the Examiner
does not establish that it would have been obvious to modify Braun's
methods to provide a second material printed via an additive manufacturing
process.
Accordingly, we do not sustain the rejection of claim 17 over Braun in
view of Turchan. We also do not sustain the rejection of dependent
claims 18-20 for the same reasons.
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Application 15/106,526
CONCLUSION
We REVERSE the rejection of claims 4 and 17-20.
REVERSED
7