11632269 (B.P.A.I. Aug. 15, 2012)

Ex Parte Tanida et al

Board of Patent Appeals and InterferencesAug 15, 2012

11632269 (B.P.A.I. Aug. 15, 2012)

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. 11/632,269 01/11/2007 Masayuki Tanida 8470J-000005/US/NP 4018 27572 7590 08/16/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 EXAMINER COLEMAN, KEITH A ART UNIT PAPER NUMBER 3783 MAIL DATE DELIVERY MODE 08/16/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES Ex Parte MASAYUKI TANIDA and KENICHI YARIMIZU Appeal 2010-008321 Application 11/632,269 Technology Center 3700 Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD and REMY J. VANOPHEM, Administrative Patent Judges VANOPHEM, Administrative Patent Judge DECISION ON APPEAL Appeal No. 2010-008321 Application No. 11/632,269 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b). CLAIMED SUBJECT MATTER Claim 1 is illustrative of the subject matter on appeal. 1. A sealing device with an encoder comprising a combination of an oil seal mounted in an inner periphery of a shaft hole of an engine block and a magnetic encoder mounted on an end portion of a crank shaft inserted in the shaft hole, wherein the oil seal is provided with a metal ring including an outer cylindrical portion engaged in the inner periphery of the shaft hole and an inner cylindrical portion formed integrally with the outer cylindrical portion through an end face portion, and a seal lip attached to the inner cylindrical portion and a seal lip formed from a rubber-like elastic body with facing toward an interior side, wherein the magnetic encoder has a holder fixed on the crank shaft, and a cylindrical encoder main body attached to an outer surface of a cylindrical portion provided on the holder, said encoder main body having a sensing unit attached to an end portion of the engine block to read magnetic signals, and wherein the metal ring is configured such that the inner cylindrical portion is made longer so as to more protrude toward the exterior side than the outer cylindrical portion, and the front edge at the exterior side of the inner cylindrical portion is inserted in the inner peripheral side of the cylindrical portion of the holder from the interior side, whereby the oil seal and the magnetic encoder are overlapped with each other in the axial direction. Appeal No. 2010-008321 Application No. 11/632,269 3 REJECTIONS Claims 1-3 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the teachings of Rigaux et al. (U.S. Pat. 5,382,098; iss. Jan. 17, 1995) in view of the teachings of Guth et al. (U.S. Pat. 6,345,825 B1; iss. Feb. 12, 2002). PRINCIPLES OF LAW The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, and (3) the level of skill in the art. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Further, the Federal Circuit has stated that “rejections on obvious ground cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). GROUPING OF CLAIMS Based on Appellants’ arguments in the brief, we decide the appeal on the basis of representative claim 1. Dependent claims 2 and 3 will stand or fall with the respective independent claim. ANALYSIS With regards to claim 1, the Examiner contends the patent to Rigaux “discloses all the limitations of the claimed subject matter including a sealing Appeal No. 2010-008321 Application No. 11/632,269 4 device (15) with an encoder (i.e. permanent magnet 14 and 9, col. 2, ll. 20- 25) comprising a seal (1) mounted in an inner periphery of a shaft hole (1 comprising parts 8 and 9 appear to be on the inner periphery of a shaft hole in FIGS. 4 and 2) of a housing (2) and slidably contacted on an outer periphery of a rotating shaft (3, col. 2, ll. 8-12), and a magnetic encoder (14 and 9, col. 2, ll. 20-25) mounted on the rotating shaft (via bearing 2 supporting the rotary shaft, see col. 2, ll. 20-25) so as to be rotated with the rotating shaft (col. 2, ll. 20-25), wherein said seal (15) is provided with a metal ring (9, see FIG. 3) having at least a part thereof disposed at an inner periphery side of the magnetic encoder (14 and 9, see FIG. 4) so that the seal (15) and magnetic encoder (14) are overlapped with each other in an axial direction (see FIG. 4), except positively disclosing such device being used in an engine and specifically mounted on a crankshaft.” Ans. 3-4. The Examiner also found that “Guth discloses mounting a magnetic encoder on a crankshaft with a similar structure (see col. 2, ll. 15-25).” Ans. 4. The Examiner concedes that Rigaux explicitly states in col. 1, ll. 5-10 that “[t]he present invention relates to a sealing device which is used in particular to provide sealing for bearings.” The Examiner further contends that “the device includes a built-in encoding element intended to determine the characteristics of rotation of the rotating part of the bearing with respect to the non-rotating part of the bearing. The invention also relates to a bearing equipped with such a sealing device.” And Guth explicitly states in col. 2, ll. 15-25 that “[f]or such an application, the sealing arrangement is especially advantageous because the rear end of the crankshaft is the ideal location for determining the running smoothness of the crankshaft, it Appeal No. 2010-008321 Application No. 11/632,269 5 would have been obvious to a person of ordinary skill in the art at the time the invention was made to provide the encoder of Rigaux, et al. with wherein the device is mounted on a crankshaft of an engine in view of the teaching to Guth et al., in order to determine the running smoothness of the crankshaft (Col. 2, Lines 15-25 from Guth, et al.).” Ans. 4 (emphasis in original). Appellants take issue with the Examiner’s findings and conclusion by contending “at the outset, Appellants note that the rejection of claim 1 maintained in the final Office Action mailed March 18, 2009 indicated that Rigaux discloses “a sealing device (1)” and “a rotating shaft (col. 2, lines 8-12).” While these two features are both mentioned in Rigaux, both are not supported in the context suggested by the Office Action. Specifically, the rotating shaft discussed in col. 2, lines 8-12 is included for discussion of the “Background Discussion” of prior art. The sealing device (1) “is disclosed in the ‘Detailed Description of the Drawings.” The sealing device (1) does not include a rotating shaft.” App. Br. 4-5(emphasis in original). Appellants contend that Rigaux teaches “a sealing device (1) … mounted on one end of a bearing 2 for a motor vehicle wheel” (col. 4, lines 6-8). Rigaux discloses element 4 (part of bearing (2)) as “non-rotating internal half races” and further states that “[t]he internal half races 4 [of the bearing 2] are mounted axially side by side about a non-rotating shaft, or stub axle” (col. 4, lines 9-10, 12-14). App. Br. 5. Therefore, Appellants contend that “a rotating shaft is not disclosed in combination with the sealing device (1) and Rigaux cannot properly be interpreted as disclosing or rendering obvious a seal (1) … slidably Appeal No. 2010-008321 Application No. 11/632,269 6 contacted on an outer periphery of a rotating shaft as suggested in the final Office Action.” Id. Additionally, the Appellants argue that “the Office Action improperly interprets the stationary permanent magnet (14) of Rigaux as being mounted on the rotating shaft. The Office Action indicates that Rigaux discloses ‘a magnetic encoder (14, col. 2, lines 20-25) mounted on the rotating shaft (via bearing 2 supporting the rotary shaft, See col. 2, lines 20-25).’ Col. 2, lines 20-25 merely recite ‘[t]he object of the present invention is to propose a sealing device for a bearing into which is built an encoding element for generating variations in magnetic field strength without the drawbacks of the state of the art as discussed hereinabove.’” App. Br. 5-6. Appellants again contend that “there is no rotating shaft disclosed in Rigaux. However, the permanent magnet (14) would not be rotated even if Rigaux could be interpreted as disclosing a rotating shaft, [since Rigaux teaches] the permanent magnet (14) is mounted to first piece (8) (FIG. 4) which is mounted to the non-rotating internal race (4). Therefore, magnet (14) is clearly not mounted on a rotating shaft (or any other rotating member). Rather magnet (14) is rotationally fixed.” App. Br. 6 (emphasis in original). Claim 1 recites “a combination of an oil seal mounted in an inner periphery of a shaft hole of an engine block and a magnetic encoder mounted on an end portion of a crank shaft inserted in the shaft hole.” App. Br. 10. Rigaux teaches a sealing device (1) as including “a first piece 8 mounted securely on the non-rotating internal race 4, and a second piece 9 … mounted securely on the rotating external race 3” on an inner face thereof (col. 4, ll. 29-32; fig. 4). The seal 15 is coupled to the second piece (9), and Appeal No. 2010-008321 Application No. 11/632,269 7 therefore fixed for rotation with the rotating external race (3). Rigaux discloses a permanent magnet 14 fixed to a magnet support tab 8b extending radially from cylindrical axial part 8a of first piece 8 (col. 4, ll. 55-62). Guth’s encoder (multipole ring 5) is mounted via carrier ring 6 onto the outer peripheral surface of rotating crankshaft 3 and moves therewith, and Guth’s ring gasket 1 is sealed adjacent its outer end on the rear end of the stationary engine block via sealing lip 15 and on the crankshaft via sealing lips 2, not mounted in an inner periphery of a shaft hole of the engine block (col. 2, ll. 40-43, 47-48; fig. 4). How the Examiner is attempting to combine the teachings of Rigaux with the teachings of Guth to arrive at the invention is not clear from the Examiner’s contentions. The Examiner’s statement that it would have been obvious “to provide the encoder of Rigaux, et al. with wherein the device is mounted on a crankshaft of an engine in view of the teaching to Guth et al., in order to determine the running smoothness of the crankshaft” is insufficiently illuminating to apprise us how the references are being combined. Moreover, the Examiner’s determination of obviousness appears to be premised at least in part on an erroneous finding that Rigaux discloses a seal mounted in an inner periphery of a shaft hole of a housing and slidably contacted on an outer periphery of a rotating shaft 3. Therefore, the Examiner’s findings and conclusions of obviousness lack articulated reasoning with the rational underpinning in the prior art reference Rigaux. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (rejection on obvious grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness). As such, we cannot sustain the Examiner’s rejections of claims 1-3. Appeal No. 2010-008321 Application No. 11/632,269 8 CONCLUSION The rejection of claims 1-3 under 35 U.S.C. § 103(a) are reversed. DECISION REVERSED Klh