Aktiebolaget SKF

Patent Trials and Appeals BoardMay 14, 2021

2020003082 (P.T.A.B. May. 14, 2021)

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. 15/798,543 10/31/2017 Ralph Horchheimer 2016P00095 US 5899 16284 7590 05/14/2021 SKF GmbH IA & IP Gunnar-Wester-Strasse 12 Schweinfurt, 97421 GERMANY EXAMINER EMPIE, NATHAN H ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 05/14/2021 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): eofficeaction@appcoll.com ipr@skf.com skf_notification@jtek-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RALPH HORCHHEIMER and GREGOR SCHNABL Appeal 2020-003082 Application 15/798,543 Technology Center 1700 Before CATHERINE Q. TIMM, N. WHITNEY. WILSON, and SHELDON M. MCGEE, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6–8, 14, 17–19, and 21–24. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Aktiebolaget SKF. Appeal Br. 1. Appeal 2020-003082 Application 15/798,543 2 CLAIMED SUBJECT MATTER The claims are directed to a coating method for bearing ring. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of producing a bearing ring of a rolling element bearing, external surfaces of the bearing ring being provided with an electrically insulating coating, the method comprising the steps of: (i) providing a prefinished bearing ring made of bearing steel, wherein the bearing ring has a hardened and machined raceway surface for accommodating at least one row of rolling elements; (ii) providing a first coating on all surfaces of the bearing ring; (iii) removing the first coating from the external surfaces of the bearing ring; and (iv) providing the electrically insulating coating on the external surfaces of the bearing ring. Appeal Br. 9 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kitaoka US 3,924,906 Dec. 9, 1975 Tamada US 5,150,974 Sept. 29, 1992 Warren US 6,260,383 B1 July 17, 2001 Inukai US 2004/0066997 A1 Apr. 8, 2004 REJECTIONS Claims 1–4, 6–8, 14, and 17–19 are rejected under 35 U.S.C. § 103 as being unpatentable over Tamada in view of Kitaoka and lnukai. Final Act. 3. Appeal 2020-003082 Application 15/798,543 3 Claims 21–24 are rejected under 35 U.S.C. § 103 as being unpatentable over Tamada, Kitaoka, and lnukai, and further in view of Warren. Final Act. 5. OPINION Obviousness over Tamada, Kitaoka, and Inukai Turning first to the Examiner’s rejection of claims 1–4, 6–8, 14, and 17–19 as obvious over Tamada in view of Kitaoka and lnukai, we note that Appellant presents arguments for claims 1 and 2. Appeal Br. 3–4. We address the issues arising for the rejection of each of these claims below. Claim 1 We begin with claim 1. The issue is: Has Appellant identified a reversible error in the Examiner’s finding that Tamada teaches or suggests providing a first coating on all surfaces of the bearing ring as required by claim 1? Compare Appeal Br. 3–4, and Reply Br. 1–2, with Final Act. 3, and Ans. 3–5. Appellant has not identified such an error. The dispute for the rejection of claim 1 arises because Tamada’s Figure 1 depicts an oxide layer 5 as limited to the rolling surface 4 of bearing ring 2, but conversely Tamada discloses the process of forming the oxide as a process of immersing in a caustic solution, which suggests that the entire ring surface is oxidized not just the rolling surface 4. Tamada col. 3, ll. 40–44. Tamada includes no discussion of masking or any other process that would prevent the oxide from forming on other surfaces of the immersed ring. Thus, there is some inconsistency between Tamada’s disclosure and the depiction of oxide layer 5 in Figure 1. Appeal 2020-003082 Application 15/798,543 4 In view of the inconsistency in Tamada, we must consider what Tamada would have suggested to the ordinary artisan. “[T]he question under 35 U.S.C. [§] 103 is not merely what the references expressly teach, but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” In re Lamberti, 545 F.2d 747, 750 (CCPA 1976). We determine that Tamada might suggest masking or otherwise preventing the non-rolling surfaces from oxidizing, but so too does Tamada suggest simply immersing the ring and forming the oxide on all surfaces. This is particularly so given Tamada focuses on the ability of the oxide layer to prevent peeling on the rolling surface, but is not concerned with preventing the application of the oxide on the other ring surfaces. Tamada col. 1, ll. 12–64. Under the circumstances, it is reasonable to conclude that Tamada would have suggested to the ordinary artisan allowing the immersion process to oxidize the entire ring surface because doing so would involve fewer steps and because there is no disclosure of preventing any surface from oxidizing when immersing the ring in caustic solution. Appellant’s contentions regarding inherency are unavailing. Appeal Br. 4. We do not agree that an additional step, such as masking, must necessarily occur. Tamada does not indicate that the oxide layer is problematic or unwanted on the non-rolling surfaces. We are concerned here with what Tamada suggests to the ordinary artisan. “[A] prior art reference must be ‘considered together with the knowledge of one of ordinary skill in the pertinent art.’” In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). Appellant’s contentions overlook the ordinary artisan’s knowledge. Appeal 2020-003082 Application 15/798,543 5 Appellant has not identified a reversible error in the Examiner’s rejection of claim 1. Claim 2 Turning to claim 2, the issue is: Has Appellant identified a reversible error in the Examiner’s finding that the combination of Tamada and Kitaoka would have suggested removing Tamada’s oxide layer with Kitaoka’s sandblasting step? Appellant has not identified such as error. As discussed above, Tamada teaches immersing a bearing ring in a caustic solution to create an oxide layer and Tamada is particularly concerned with using that oxide layer to prevent peeling on the rolling surface of the bearing ring. Kitaoka is concerned with depositing an insulating coating onto the external surfaces of a bearing ring. Kitaoka col. 3, ll. 43–58. Kitaoka teaches preparing the external surface for deposition by roughening the surface by sandblasting. Kitaoka col. 5, ll. 48–50. Appellant points out that Kitaoka does not teach removing a coating by the sandblasting process. Appeal Br. 5. Kitaoka is not particularly concerned with the particulars of the bearing ring, but instead focuses on the insulating coating. Appellant further contends that “nothing in the record suggests that the sandblasting required to prepare a surface for receiving a coating will be sufficient to remove all the black oxide coating from the external surfaces of a coated ring” and “a person of ordinary skill in the art would have no reasonable expectation of success in attempting to apply an insulating coating over areas of still-remaining black oxide coating if the coating is not completely removed by the sandblasting.” Appeal Br. 5. Appeal 2020-003082 Application 15/798,543 6 These contentions are unpersuasive because they do not consider the suggestions that arise from the combination of Tamada and Kitaoka nor the skill of the ordinary artisan. According to Tamada, the oxide layer created by immersing the bearing ring in caustic solution is minimally thick, i.e., only 0.1–2.5 microns. Tamada col. 4, ll. 8–12. Sandblasting would be reasonably expected to remove such a thin coating and removal would be desired to obtain a workably or optimally adhered insulating coating. After all, Appellant acknowledges that “a person of ordinary skill in the art would have no reasonable expectation of success in attempting to apply an insulating coating over areas of still-remaining black oxide coating if the coating is not completely removed by the sandblasting.” Appeal Br. 5. Appellant has not identified a reversible error in the Examiner’s rejection of claim 2. Rejection adding Warren The rejection of claims 21–24 as obvious over Tamada, Kitaoka, and lnukai, and further in view of Warren, stands on a different footing. We agree with Appellant that Warren is non-analogous art. Appeal Br. 7. The Examiner applies Warren to support the conclusion that it would have been obvious to the ordinary artisan to mount the bearing ring on a shaft (claim 21) and to cover at least the coated, hardened and machined raceway surface as required by claims 21 and 22. Final Act. 5–6. Warren is directed to a method of making jewelry rings machined from a piece of silver or gold stock. Warren col. 4, ll. 56–65. After machining, polishing, and stamping, the rings are placed on an arbor and Appeal 2020-003082 Application 15/798,543 7 sandblasted to give a white finish in previously machined recesses. Warren col. 8, ll. 31–37. “Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). We agree with Appellant that Warren does not meet either of these tests. There is no real question that Warren is not within Appellant’s field of endeavor. Thus, the question becomes whether Warren is reasonably pertinent to a problem of concern to Appellant. Warren is not particularly concerned with covering a previously coated ring surface before removing that coating from the non-covered surfaces. Warren is focused on sandblasting a piece of jewelry to give a white finish in recesses. Thus, Warren does not meet either the first or the second test. Even if we were to find that Warren was within the scope of prior art an ordinary artisan would have considered, we determine that the Examiner’s finding of a suggestion to use Warren’s arbor is based on improper hindsight reconstruction. “A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Interpreting the facts without hindsight reconstruction requires the decision maker “cast the mind back to the time the invention was made to occupy the mind of the ordinary artisan who is presented only with the references, and who is normally guided by the then- Appeal 2020-003082 Application 15/798,543 8 accepted wisdom in the art.” In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). The Examiner has not established that the suggestion to use Warren’s arbor to cover a coated, hardened, and machined bearing ring raceway surface before removing the coating from the external surfaces of the bearing ring is based on the teachings of the prior art or from the knowledge of the ordinary artisan. Appellant has identified a reversible error in the Examiner’s rejection of claims 21–24. CONCLUSION The Examiner’s decision to reject claims 1–4, 6–8, 14, 17–19, and 21–24 is affirmed in part. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–8, 14, 17–19 103 Tamada, Kitaoka, Inukai 1–4, 6–8, 14, 17–19 21–24 103 Tamada, Kitaoka, Inukai, Warren 21–24 Overall Outcome 1–4, 6–8, 14, 17–19 21–24 RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART