Ex Parte Tegeltija et al

Patent Trial and Appeal Board

Nov 30, 2018

14390654 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/390,654 10/03/2014
26646 7590 12/04/2018
HUNTON ANDREWS KURTH LLP
200 Park A venue
NEW YORK, NY 10166
FIRST NAMED INVENTOR
Miki Tegeltija
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.
512604.0238971 (112) 3656
EXAMINER
ELAHMADI, ZAKARIA
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKI TEGEL TIJA and OLIVER BURN
Appeal2018-002256
Application 14/390,654
Technology Center 3600
Before MICHAEL L. HOELTER, RICHARD H. MARSCHALL, and
FREDERICK C. LANEY, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 16-33. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant is the Applicant, Sew-Eurodrive GMBH & Co. KG, which the
Appeal Brief identifies as the real party in interest. Appeal Br. 2.
Appeal2018-002256
Application 14/390,654
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a gear unit having a first and a
second housing part." Spec. 1. 2 Claim 16 is the only independent claim,
and is reproduced below.
16. A gear unit, comprising:
a first housing part;
a second housing part; and
an intermediate shaft mounted via two bearings in a
bushing accommodating the bearings, the bushing centering the
first housing part against the second housing part.
Appeal Br., Claims App. 1.
THE REJECTIONS
Appellant seeks review of the following rejections on appeal:
1. Claims 16-20, 23, and 30-33 under 35 U.S.C. § I02(b) as
anticipated by Nied. 3
2. Claims 21 and 22 under 35 U.S.C. § 103 as unpatentable over Nied
and Alexandroff. 4
3. Claims 24--29 under 35 U.S.C. § 103 as unpatentable over Nied
and Garcia. 5
2 Appellant's "Marked-Up Version of Substitute Specification" dated
October 3, 2014 lacks both line and paragraph numbering. Accordingly, we
reference the above Specification via page number only.
3 U.S. Patent No. 7,651,276 B2, issued January 26, 2010 ("Nied").
4 U.S. Patent No. 2,958,563, issued November 1, 1960 ("Alexandroff').
5 U.S. Patent Pub. No. 2006/0089226 Al, published April 27, 2006
("Garcia").
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Application 14/390,654
ANALYSIS
Anticipation
In the rejection of claim 16, the Examiner found that Nied discloses "a
first housing part (2.2); a second housing part (1 ); and an intermediate shaft
(3) mounted via two bearings (2a, 2b) in a bushing (2.1)." Final Act. 2. The
Examiner also found that bushing (2.1) centers the first housing part (2.2)
against the second housing part (1 ). Id.
Appellant argues that Nied fails to disclose the "centering" limitation
because Figure 1 of Nied shows an upper gap between drive housing 1 (the
alleged second housing part) and the outer circumference of the bushing
(2.1), but not a similar lower gap. Appeal Br. 3. Appellant also argues that
Nied employs threads to mount the bushing to bearing housing part 2.2 (the
alleged first housing part), and the bearing housing part is in tum mounted to
the drive housing (the alleged second housing part) via bolts 13. Id. at 3--4
( citing Nied, 5: 8-17, Fig. 1 ). Appellant contends that the bushing 2.1 cannot
serve to center bearing housing part 2.2 to drive housing 1 given this
arrangement. Id. at 4. Appellant also contends that bushing 2.1 includes
areas of reduced diameter at recesses 8, 8 ', 8" that prevent bushing 2.1 from
performing the centering function. Reply Br. 2-3; see also Nied Fig. 3.
We are not persuaded that the Examiner erred in the rejection of claim
16. Although Appellant points to a gap on one side of the bushing in Nied's
Figure 1, we view that gap as corresponding to the recess formed by the
flattened area 8 shown in Figure 3. See Nied, Figs. 1 and 3. Figures 1 and 3
of Nied are reproduced below.
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Application 14/390,654
Fig. 3
Figure 3 of Nied is described as a top view of the overall bearing unit, that
includes bearing bush 2.1, whereas Figure 1 of Nied is described as a
sectional view of bearing bush 2.1. See Nied 4:51-54. Figure 1 depicts the
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Application 14/390,654
gap that Appellant points out between the inner circumference of housing 1
and bushing 2.1, while Figure 3 depicts recesses 8, 8', 8" around the
circumference of bushing 2.1. Nied, Figs. 1, 3. Because recess 8 is depicted
at the top of Figure 3, we understand the sectional view of Figure 1 to be
looking along that recess, and hence the illustration in Figure 1 of an upper
gap, but not a lower one. Figure 3 also shows two additional recesses 8' and
8'' but no recesses that would form any gap between the bushing 2 .1 and
housing 1 around the remainder of the circumference of bushing 2 .1 from
the perspective of Figure 1. See id. Accordingly, the recesses 8, 8 ', 8'' and
the gap shown in Figure 1 do not establish that bushing 2.1 is not centered
nor would not be capable of performing a centering function. Nied itself
supports this interpretation, by noting that, in operation, the parts are "play
free," meaning that any gaps are eliminated or at least substantially reduced.
See Nied, 6:41. The intermittent gaps around the circumference of the
bushing allow lubricant to flow, and given the "play free" nature of the
remainder of the fit, do not prevent the bushing from performing the
"centering" function as Appellant contends. See id. at 6:2---6; Reply Br. 2-3.
As to Appellant's argument that the bushing cannot perform the
"centering" function due to the threaded connection between bushing 2 .1
and housing part 2.2, and also bolting the housing part and housing 1
together, Appellant fails to acknowledge that its own specification also
discloses the use of bolts to fix the two housing parts together. See Spec. 2.
It appears, based on the specification, that the claimed bushing performs
some undefined "centering" function before the parts are threaded together,
a reading that would also cover Nied. See Spec. 5. Nied suggests that the
parts are put together prior to the using bolts 13 to connect the housing parts,
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Application 14/390,654
which supports the finding that at least some centering occurs prior to using
the bolts. See Nied, 5: 18-33 ( describing assembly of device, concluding
with "the support cover 2.2 is screwed to the drive housing 1 "). Moreover,
Nied's bushing "is mounted in the radial direction in a drive housing 1,"
supporting the Examiner's finding that the mating engagement at the fitting
surface serves to center the parts. See Ans. 15; Nied, 5:8-10. Appellant
does not claim any particular degree of centering necessary to meet the
claim requirements, or propose a specific construction for "centering" that
would suggest a certain tolerance between the bushing and housing is
required to center the parts as claimed. In addition, the specification does
not define the term or provide any disclosure regarding the degree to which
the bushing centers the parts in order to achieve the claimed purpose.
Instead, the specification simply states that centering is performed by
bushing 11 during assembly by inserting the bushing on the first part and
"slip[ing]" the second housing part on the end of the bushing. See Spec. 1, 5
("The housing of the gear unit has at least two housing parts 12, 14, which
are centered relative to each other by bushing 11."). Appellant has not
apprised us of an error with the apparent construction of the term
"centering" by the Examiner. In addition, Appellant does not provide a
basis to conclude that "centering" does not cover any amount of centering
performed by the bushing during the assembly of the device, including a
bushing "mounted" to a housing using a "fitting surface" as disclosed by
Nied. See Ans. 15. We therefore sustain the rejection of claim 16 as
anticipated by Nied.
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Application 14/390,654
Appellant does not separately argue any of the other claims subject to
the anticipation rejection in the Appeal Brief, and we therefore also sustain
the rejection of claims 17-20, 23, and 30-33. 6
Obviousness
The only argument Appellant raises regarding any claim other than
claim 16 relates to the obviousness rejection of dependent claim 25. 7 Claim
25 depends from claim 24, which in tum depends from claim 1. Claims
App. 2. Claim 25 requires "the further toothing part is bounded axially by a
retaining ring." Id. The Examiner found that Garcia discloses toothing part
80 and a retaining ring, which the Examiner identified as "R" in an
annotated version of Garcia's Figure 4. Final Act. 6, 11.
Appellant argues that Garcia does not number or describe the structure
the Examiner relied on as disclosing the claimed retaining ring. Appeal Br.
6-7. According to Appellant, "it is untenable" to consider Garcia discloses
the limitations of claim 25, and the rejection of claim 25 is therefore "not
based on substantial evidence." Id. at 7.
We agree with the Appellant. The Examiner points to a circular item
in an exploded view in Garcia's Figure 4, but Garcia lacks any discussion of
the part or its role in the assembled device. See Final Act. 7. The item itself,
while circular, does not disclose that the item retains anything, and the
Examiner's finding that Garcia discloses a retaining ring lacks substantial
6 Appellant raises new arguments in the Reply Brief regarding claims 30, 32,
and 33 that are not responsive to new issues raised by the Examiner in the
Answer. See Reply Br. 4--5. We therefore treat those arguments as waived.
7 Appellant raises new arguments regarding claims 21 and 22 in the Reply
Brief that are not responsive to new issues raised by the Examiner in the
Answer. See Reply Br. 5. We therefore treat those arguments as waived.
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Application 14/390,654
evidence. The Examiner goes on to find that it would have been obvious "to
have placed a retaining ring to the gear side to retain the gear in place and
also to prevent any gear contamination," but this finding appears to rest on
the finding that Garcia discloses such a retaining ring. See id. To the extent
that Examiner determined that the limitation in claim 25 would have been
obvious even if Garcia did not disclose a retaining ring, that finding lacks an
adequate evidentiary basis as well. Based on the foregoing, we do not
sustain the rejection of claim 25.
DECISION
We affirm the decision of the Examiner to reject claims 16-24 and
26-33. We reverse the decision of the Examiner to reject claim 25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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