Ex Parte Smook et al

Patent Trial and Appeal Board

Jul 30, 2014

10563461 (P.T.A.B. Jul. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WARREN SMOOK and ROGER BOGAERT
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Appeal 2011-010049
Application 10/563,4611
Technology Center 3600
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Before STEFAN STAICOVICI, EDWARD A. BROWN, and
JILL D. HILL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1–13, 15, and 16.2 Appeal Br. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The real party in interest is Hansen Transmissions International, Naamloze
Vennootschap. Appeal Br. 1.
2 Claim 14 is cancelled. Appeal Br. 1.
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Claimed Subject Matter
Claim 1 is the sole independent claim and reads as follows:
1. A planetary gear transmission unit comprises sun, planet
and ring gears and a planet carrier, said planet carrier having
circumferentially spaced studs which support a planet bogie
plate, the planet bogie plate providing support for
circumferentially spaced shafts, which support and locate
circumferentially spaced planet gear bearings on which planet
gears are mounted, and at least some of said planet gear
bearings being taper roller bearings.

Rejections
The following rejections are before us for review:
I. Claims 1–12, 15, and 16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Christensen (WO 02/079644 A1, published Oct. 10,
2002) and De Wilde ’398 (WO 01/57398 A1, published Aug. 9, 2001).
II. Claims 1–13, 15, and 16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Flamang (WO 02/014690 A1, published Feb. 21, 2002)
and De Wilde ’398.
III. Claims 1–13, 15, and 16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over De Wilde ’566 (WO 03/014566 A1, published Feb. 20,
2003) and De Wilde ’398.
IV. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Christensen, De Wilde ’398, Flamang, and De Wilde ’566.

ANALYSIS
Rejection I
Appellants argue claims 1–12, 15, and 16 as a group (Appeal Br. 5–
15), and also present separate arguments for claims 5 and 6 (Appeal Br. 15–
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17). We select claim 1 as representative of claims 1–4, 7–12, 15, and 16,
with claims 2–4, 7–12, 15, and 16 standing or falling with claim 1, and also
consider claims 5 and 6 separately. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 1–4, 7–12, 15, and 16
The Examiner finds that Christensen discloses all of the limitations of
claim 1 except for planet gear bearings that are taper roller bearings. Ans. 4.
Christensen discloses that roller bearings 25 used with planetary wheels 17a,
17b can be double spherical roller bearings 25. Christensen p. 5, ll. 17–22;
Fig. 3.
The Examiner finds that De Wilde ’398 discloses a planetary gear
transmission having sun, planet, and ring gears, a carrier, and
circumferentially spaced shafts 30, which support and locate
circumferentially spaced planet gear bearings 32 on which the planet gears
are mounted. Ans. 4. The Examiner also finds De Wilde ’398 discloses that
planet gear bearings 32 are taper roller bearings. Id. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to replace Christensen’s planet gear bearings with tapered roller bearings in
view of De Wilde ’398 to better distribute contact pressure of the rollers. Id.
The Examiner also cites paragraphs [0025] to [0029] of De Wilde ’398 for
providing further reasons to use tapered roller bearings. Id.
Appellants acknowledge that one skilled in the art would recognize
that “tapered roller bearings are known and may provide advantages in
certain cases” (citation omitted), but contend that “such advantages apply
only to cylindrical bearings for a gear unit that does not include a bogie
plate.” Appeal Br. 5.
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Appellants contend De Wilde ’398 discloses “a so-called ‘cage type’
planet carrier, and only single planet gears are used instead of pairs of planet
gears at opposite sides of a bogie plate,” whereas Christensen discloses a
bogie plate 21. Appeal Br. 5–6. Appellants contend that “[i]n a cage type
planet carrier, the designers have chosen a rigid, non-resilient option in
distinction from a more elastic, resilient design utilized in [Christensen].”
Id. at 7. Appellants contend that one of ordinary skill in the art would
understand that Christensen “corresponds to a resilient/elastic” design,
whereas De Wilde ’398 is a rigid design. Id. Appellants also contend that
“[a] configuration with a bogie plate is much more complicated than a
configuration with a cage type planet carrier.” Reply Br. 5. Appellants
further contend that the reason one of ordinary skill in the art of designing
gear transmissions decides to use a bogie plate, instead of a rigid cage type
planet carrier, must be that the structure is elastic and resilient, and more
compact. Appeal Br. 10. Appellants thus contend that it would not have
been obvious to simply decide to substitute the tapered roller bearings of De
Wilde ’398 in the configuration of Christensen. Id. See also Appeal Br. 12.
Appellants also contend Christensen teaches using spherical roller
bearings to avoid high stresses in the gear teeth when the elastic structure is
deforming. Appeal Br. 10. Appellants contend “[o]ne would not further
include a rigid bearing with a lower degree of freedom, such as a taper roller
bearing” in Christensen. Id. Appellants also contend one of ordinary skill in
the art would not replace the bearing in Christensen’s elastic design having a
bogie plate with a tapered roller bearing, which does not provide a better
load distribution compared to the spherical roller bearing. Id. at 12.
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Appellants contend that the advantages of tapered roller bearings
disclosed in De Wilde ’398 would not be applicable in the configuration of
Christensen. Appeal Br. 11; Reply Br. 4–5. Appellants contend the
advantage of a tapered roller bearing providing better distribution of contact
pressure is from a comparison to cylindrical bearings where the loading is
not inclined. Id. (citing De Wilde ’398, Fig. 2a). Appellants also contend
that the application of tapered roller bearings to a planet gear with bogie
plate will result in less stability, certainly for certain moment loads. Id. at
12–13 (citing De Wilde ’398, ¶ 26).
In response, the Examiner states that although the carrier of De Wilde
’398 does not use a bogie plate, “the advantages disclosed in paragraphs
[0023] to [0029] for using tapered bearings would lead one skilled in the art
to recognize that taper[ed] bearings can be used for supporting planet gears
mounted in any type of carrier,” and that the “advantages are provided based
on how the taper[ed] bearings support the planet gears,” not on the type of
carrier used. Ans. 10–11. The Examiner also states that De Wilde ’398
provides the teaching and suggestion to combine, by disclosing multiple
advantages for using tapered roller bearings for supporting planet gears in
the same type of gearbox used in Christensen. Id. at 11. The Examiner
finds that although the designs of the Christensen and De Wilde ’398
carriers are different, the bearing support of the planet gears in both
references is the same, except for the type of bearings used. Id. The
Examiner explains that Christensen discloses spaced shafts 44 to support and
locate circumferentially spaced planet gear bearings 25 on which the planet
gears 17 are mounted, and De Wilde ’398 discloses circumferentially spaced
shafts 30 to support and locate circumferentially spaced planet gear bearings
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32, in the form of tapered roller bearings, on which planet gears 33 are
mounted. Id. at 11-12. The Examiner further states that the structure recited
in claim 1 is known in the prior art via Christensen in which a spherical
roller bearing is used to support planet gears in a windmill gearbox;
Appellants are merely altering the bearing support of Christensen with
another bearing support (tapered bearings) known in the field via De Wilde
’398; and the advantages in De Wilde ’398 for using tapered roller bearings
for supporting planet gears in a windmill gearbox suggest that Appellants’
improvement would yield no more than a predictable result. Id. at 14.
Appellants’ arguments are not persuasive. Appellants do not identify
any disclosure in Christensen that spherical roller bearings must be used in
combination with a bogie plate. In addition, Christensen discloses that
“[t]he carrier plate 21 can be slightly resilient” (Christensen, p. 5, l. 27; Fig.
3), which does not indicate that carrier plate 21 must be resilient, or more
than “slightly resilient.” Christensen also does not indicate that tapered
roller bearings could not be used with a planetary gear arrangement
including a bogie plate.
De Wilde ’398 discloses “two bearings are axially spaced relative to
the axis of rotation of the planet gear and at least one of the bearings is a
tapered bearing.” See Abstr. De Wilde ’398 also discloses “[i]n
consequence of the provision of tapered roller bearings in a gear unit having
helical type planet gears it is found possible to attain at least some of the
following advantages.” Id. at 4. These statements do not specify any type of
planet carrier that must be used with the tapered roller bearings to attain
advantages. Appellants do not direct us to any disclosure in De Wilde ’398
that indicates either use of tapered roller bearings, or the advantages they
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provide, is limited to certain rigid designs or planetary gears with “cage
type” planet carriers, as Appellants contend. Thus, Appellants do not direct
us to any disclosure in De Wilde ’398 that indicates that the tapered roller
bearings could not be applied to a planetary gear arrangement as in
Christensen. In short, Appellants do not identify any disclosure in the cited
references that supports their stated reasons as to why one skilled in the art
would not have substituted Christensen’s planet gear bearings with DeWilde
’398’s planet gear bearings in the form of tapered roller bearings.
Appellants address one of the advantages described by De Wilde ’398
regarding use of tapered roller bearings (see p. 4, ll. 15–18) and contend that
it pertains to a cage type planet carrier being present. Reply Br. 7–8.
However, even assuming this contention is correct, challenging one
advantage does not by itself demonstrate that all of the advantages described
in De Wilde ’398 are necessarily only in relation to a cage type planet carrier
with cylindrical bearings, and thus, that De Wilde ’398’s teachings are
inapplicable to Christensen’s different configuration. See id. at 8–9.
Appellants address the Examiner’s position that the combination of
Christensen and De Wilde ’398 would yield predictable results. Reply Br. 9.
For example, Appellants refer to “a configuration with a bogie plate, when
rigid bearings are used. . . .” Id. (citing “WO ’644, page 1, Background”).
However, we do not see where Christensen explicitly discloses a bogie plate
with rigid bearings at this location on page 1. We also do not find
persuasive Appellants’ contention that because the configuration of
Christensen is flexible, whereas that of DeWilde ’398 is rigid,“[w]hen one of
ordinary skill in the art analyzes the teachings of the prior art, one is clearly
instructed not to use tapered roller bearings in a configuration with a bogie
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plate.” Reply Br. 9-10. Although neither Christensen nor De Wilde’ 398
explicitly discloses use of tapered roller bearings with a bogie plate, there is
no requirement that the prior art must provide such explicit teaching.
Appellants do not identify any explicit description in either Christensen or
De Wilde ’398 to not use tapered roller bearings with a bogie plate.
Although we appreciate that the choice of a bearing to be used in a given
structure depends on the specific loading of the structure, nonetheless,
Appellants’ general descriptions of the structures of Christensen and De
Wilde’ 398 as merely “flexible” and “rigid,” respectively, does not explain
why a person having ordinary skill in the art would not have used the
tapered roller bearings of De Wilde ’398 in the structure of Christensen.
Even if the tapered roller bearings of De Wilde ’398 may not be an
optimum substitute for the spherical roller bearings in Christensen’s
planetary gear transmission, Appellants have not provided persuasive
argument or evidence to show that the tapered roller bearings of De Wilde
’398 would not function as required (i.e., would be inoperable) when
installed as planet gear bearings in Christensen’s planetary gear
transmission. For example, Appellants have not shown that the tapered
roller bearings of De Wilde ’398 would be unable to withstand the specific
forces that Christensen’s planetary gear transmission would be subjected to
during use. To the extent that the modified planetary gear transmission of
Christensen might even be inferior for certain purposes as compared to the
unit disclosed in Christensen, “[a] known or obvious [product] does not
become patentable simply because it has been described as somewhat
inferior to some other product for the same use.” In re Gurley, 27 F.3d 551,
554 (Fed. Cir. 1994).
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Appellants provide a “Declaration under Rule 132” by Warren
Smook, one of the named inventors, filed November 19, 2009 (“Decl.”).
Appeal Br., Evid. App.; Appeal Br. 17–18. The Declarant states one of
ordinary skill in the art did not consider using taper roller bearings in
combination with a bogie plate because of loss of degrees of freedom
relative to a combination of a bogie plate and a spherical roller bearing.
Decl. 4. The Declarant also states “it was discovered, counter to
expectations, that not having the added degrees of freedom of the planets on
SRBs did not impact significantly on the load distribution between the
planets on each shaft nor on the face load distribution of each individual
planet.” Decl. 5 (emphasis added). The Declarant states that “the
combination of a bogie plate with TRBs [tapered roller bearings] still allows
a good load distribution.” Decl. 5.
The Declarant does not indicate that although taper roller bearings
represent a loss of degrees of freedom, the “good load distribution” is as
good as the load distribution provided by the combination of a bogie plate
and spherical roller bearing. To the extent the “good load distribution” is
less optimum, this would appear to be an expected result, i.e., due to
increased bearing rigidity, and not an unexpected result.
The Declarant also states that “the recited bogie plate combined with
TRB planet bearings was never proposed before because it was believed that
such a design would potentially suffer from face load distribution problems
at the time of filing based on a lack of degree of freedom.” Decl. 6.
Emphasis added. Firstly, Appellants do not provide evidence that others in
the art believed “that such a design would potentially suffer from face load
distribution problems.” Id. Emphasis added. Secondly, the Declarant’s use
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of “would potentially suffer” appears to imply that “face distribution
problems” were a possibility, but not necessarily expected.
Nor have Appellants provided any objective evidence (i.e.,
comparative test results) to show how the load distribution for the claimed
planetary gear transmission unit actually compares to that of the closest prior
art (i.e., Christensen) when subjected to the same testing conditions. We
find the Declarant’s statements to be insufficient to establish unexpected
results. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)
(“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.”) (citation omitted). See also In re Wood, 582 F.2d 638, 642 (CCPA
1978) (objective evidence needed to establish unexpected results).
The Declarant also states that “it was expected that a bogie plate with
TRB planet bearings would be able to fulfill the first function (1) but would
perform less well in the latter (2),” and indicates that the “first function” is
“(1) proper load distribution between the planets on a shaft,” and the latter
(2) is “for proper face load distribution for each individual planet.” Decl. 6.
The Declarant does not indicate that one of ordinary skill in the art would
not use a bogie plate with tapered planet bearings to fulfill function (1).
Also, Appellants have not shown that all of the advantages of using tapered
roller bearings in a planetary gear transmission disclosed in De Wilde ’398
would be inapplicable to Christensen’s configuration. The reason to modify
a reference may often prompt a person of ordinary skill in the art to do what
the inventors have done, but for a different purpose or to solve a different
problem. It is not necessary that the prior art suggest the combination to
achieve the same advantage or result discovered by an applicant. See, e.g.,
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In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006). In addition, “[t]e fact that
the motivating benefit comes at the expense of another benefit . . . should not
nullify its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another.” Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000).
Thus, we sustain the rejection of claim 1, and claims 2–4, 7–12, 15,
and 16, which fall with claim 1
Claim 5
Claim 5 depends from claim 1 and recites “wherein each planet gear
of a pair is mounted on a pair of tapered roller bearings.”
The Examiner found that Christensen discloses separate bearings 25
formed into a pair for planetary wheels 17a, 17b, and De Wilde ’398 teaches
that taper bearings can be used as the pair of roller bearings. Ans. 5.
Appellants contend “[o]ne of ordinary skill in the art would recognize
that a spherical bearing has two rows of rollers, but that it is still just one
bearing and not a pair of bearings.” Appeal Br. 15. Appellants provide a
catalog page from SKF company and a printed web site page from Timken
company to “show that a spherical roller bearing has two ro[w]s of rollers.”
Appeal Br. 15–16, Evid. App.
Appellants’ contention is persuasive. The Examiner has not provided
evidence that a spherical roller bearing, as disclosed in Christensen,
corresponds to a pair of bearings, rather than a single bearing. We note that
Christensen discloses that each planetary wheel 17a, 17b can be mounted on
bogie shaft 19 by a double spherical roller bearing 25 having rollers 25’. See
col. 5, ll. 17–21. This disclosure appears to be consistent with Appellants’
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evidence showing that a spherical roller bearing is known in the bearing art
to include two rows of rollers. As such, replacing Christensen’s spherical
roller bearings 25 with the tapered roller bearings of De Wilde ’398 would
not result in the subject matter of claim 5. Thus, we do not sustain the
rejection of claim 5.
Claim 6
Claim 6 depends from claim 1 and further calls for “a pair of tapered
roller bearings arranged in an O configuration.” The Examiner found that
De Wilde ’398 discloses this limitation. Ans. 5 (see De Wilde ’398, p. 4, ll.
15–18).
Appellants contend that “in an elastic design [tapered roller bearings
in an O configuration] is not necessary and may not in fact be desired”
“[b]ecause the planet shafts are only supported at one side on a bogie plate.”
Appeal Br. 16.
We do not find persuasive Appellants’ contentions regarding why it
would not have obvious to substitute the tapered roller bearings of De Wilde
’398 in the planetary gear transmission of Christensen. Appellants have not
provided any persuasive argument or evidence to show that the disclosed
“better stability” provided by the O-arrangement of two tapered bearings in
De Wilde ’398 would be unsuitable in Christensen’s arrangement. Thus, we
sustain the rejection of claim 6.
Accordingly, we sustain the rejection of claims 1–4, 6–12, 15, and 16,
and reverse the rejection of claim 5, as unpatentable over Christensen and
De Wilde ’398.

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Rejection II
Appellants contend “[f]or all of the same reasons as detailed above,”
“the combined teachings of WO ’690 [Flamang] and WO ’398 fails to teach
or suggest, and would not have rendered obvious, a planetary gear
transmission unit having the combination and arrangement of features set
forth in claims 1–13, 15 and 16.” Appeal Br. 18–19.
Appellants do not provide any separately distinct argument for any of
the dependent claims. Thus, because Appellants have not shown
persuasively error in the Examiner’s combination of Christensen and De
Wilde ’398 for the rejection of claim 1, we sustain the obviousness rejection
of claims 1–13, 15, and 16 over Flamang and De Wilde ’398.
Rejection III
Appellants contend “[f]or all of the same reasons as detailed above”
“the combined teachings of WO ’566 [De Wilde ’566] and WO ’398 fails to
teach or suggest, and would not have rendered obvious, a planetary gear
transmission unit having the combination and arrangement of features set
forth in claims 1–13, 15 and 16.” Appeal Br. 19.
Appellants do not provide any separately distinct argument for any of
the dependent claims. Thus, because Appellants have not shown
persuasively error in the Examiner’s combination of Christensen and De
Wilde ’398 for the rejection of claim 1, we sustain the obviousness rejection
of claims 1–13, 15, and 16 over De Wilde ’566 and De Wilde ’398.

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Rejection IV
Appellants contend “[f]or at least the reason that the cited references,
. . . alone or in any combination, fail to teach or suggest the planetary gear
transmission unit as featured in claim 1, then these references cannot render
dependent claim 13 obvious.” Appeal Br. 20.
For the reasons discussed above, we are not persuaded. Accordingly,
we sustain the obviousness rejection of claim 13 over Christensen, De Wilde
’398, Flamang, and De Wilde ’566.

DECISION
We affirm the rejection of claims 1–4, 6–12, 15, and 16, and reverse
the rejection of claim 5, as unpatentable over Christensen and De Wilde
’398.
We affirm the rejection of claims 1–13, 15, and 16 as unpatentable
over Flamang and De Wilde ’398.
We affirm the rejection of claims 1–13, 15, and 16 as unpatentable
over De Wilde ’566 and De Wilde ’398.
We affirm the rejection of claim 13 as unpatentable over Christensen,
De Wilde ’398, Flamang, and De Wilde ’566.
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

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