Ex Parte ASAKURA et al

Patent Trials and Appeals BoardApr 25, 2019

14279737 - (D) (P.T.A.B. Apr. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/279,737 05/16/2014 25944 7590 04/29/2019 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 FIRST NAMED INVENTOR Toshihiro ASAKURA 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. 160941 4629 EXAMINER WILLIAMS, MAURICE L ART UNIT PAPER NUMBER 3611 NOTIFICATION DATE DELIVERY MODE 04/29/2019 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHIHIRO ASAKURA, HIROTSUGU KUSANO, and HIROKAZU TOJ0 1 Appeal2017-008124 Application 14/279,737 Technology Center 3600 Before: LYNNE H. BROWNE, MICHELLE R. OSINSKI, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134 from a rejection of claims 1- 7 and 9. A hearing was conducted on April 18, 2019. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 The Appeal Brief indicates that JTEKT Corporation, Appellant, is the real party in interest. Appeal Br. 1. Appeal2017-008124 Application 14/279,737 CLAIMED SUBJECT MATTER The claims are directed to an electric power steering system. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. An electric power steering system comprising: a steered shaft configured to move in an axial direction along with a rotation of a steering; a housing containing the steered shaft therein so that the steered shaft is movable in the axial direction; a ball screw nut engaged threadedly to the steered shaft via a plurality of balls and configured to move the steered shaft in the axial direction when the ball screw nut is rotationally driven via a drive source; a double row angular contact ball bearing including a toric outer ring portion having an outer peripheral surface making contact with an inner peripheral surface of the housing, a toric inner ring portion placed inside the outer ring portion and retaining the ball screw nut thereinside, and balls configured to roll between the outer ring portion and the inner ring portion and arranged in several lines along the axial direction, the double row angular contact ball bearing configured to support the ball screw nut rotatably relative to the housing; a pulley fixed to the ball screw nut beside the double row angular contact ball bearing, the pulley being driven by the drive source; a wall portion placed at either side of the double row angular contact ball bearing in the axial direction of the steered shaft, the wall portion being formed integrally with the housing; and an elastic member provided between the wall portion and the outer ring portion and configured to retain the double row angular contact ball bearing to be elastically displaceable in the axial direction. Appeal Br. A-1 (Claims App.). 2 Appeal2017-008124 Application 14/279,737 REFERENCES RELIED ON BY THE EXAMINER Yamada Pajewski Yamamoto Ince us 4,033,645 US 2011/0135382 Al US 2012/0018242 Al US 8,591,120 B2 July 5, 1977 June 9, 2011 Jan.26,2012 Nov. 26, 2013 THE REJECTIONS ON APPEAL I. Claims 1, 2, 6, and 9 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Yamamoto and Pajewski. II. Claims 3 and 4 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Yamamoto, Pajewski, and Ince. III. Claims 5 and 7 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Yamamoto, Pajewski, and Yamada. 2 OPINION Rejection I Claims 1, 6, and 9 The Examiner finds that Yamamoto discloses many of the elements recited in claim 1, but does not disclose the use of double row angular bearings. Final Act. 2. The Examiner relies on Pajewski to remedy this deficiency. Id. at 2-3 (citing Pajewski, Fig. 1, outer race 14). The Examiner reasons "[i]t would have been obvious to a person having ordinary skill in the art at the time of the invention to include double row bearings, as taught 2 The rejection of claim 5 is presented under a heading separate from the heading for the rejection of claim 7, but both claims are rejected as unpatentable over Yamamoto, Pajewski, and Yamada. See Final Act. 4--5. 3 Appeal2017-008124 Application 14/279,737 by Pajewski in order to yield the predictable result of providing additional support along the ball nut mechanism." Id. at 3. Appellant asserts that neither Yamamoto nor Pajewski teaches or suggests any advantages associated with using a double row angular contact ball bearing in an electric power steering system as recited in claim 1. See Appeal Br. 6-8. Appellant notes that the arrangement recited in claim 1 (i) allows the use of a thinner outer ring and (ii) "allows the double row angular contact ball bearing to support the ball screw nut with relatively high rigidity even in a cantilever manner." Id. at 7-8. Appellant concludes that "[t]he structure of claim 1 to include the double row angular contact ball bearing solves a problem that is not disclosed or suggested by Yamamoto." Id. at 8 ( emphasis added). Appellant's arguments related to the advantages of the claimed arrangement are not persuasive because they do not adequately address the Examiner's finding that modifying the system disclosed by Yamamoto to include a double row angular contact ball bearing as claimed would provide additional support along the ball nut mechanism. See Final Act. 3. It is not necessary that the improvement provided by the Examiner's proposed modification address the same problem addressed by the inventor. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed."); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) ("[T]he skilled artisan need not be motivated to combine [a prior art reference] for the same reason contemplated by [ the inventor]." 4 Appeal2017-008124 Application 14/279,737 With respect to the Examiner's finding that the proposed modification to the structure taught by Yamamoto would "provid[ e] additional support along the [bearing]" (Final Act. 3), Appellant asserts, "there is no rational reason to believe that this benefit could have been achieved based on Yamamoto or Pajewski, individually or in combination, using the double row angular contact ball bearing of claim 1." Reply Br. 2. Specifically, Appellant contends, "Pajewski ... does not consider the double row ball bearing assembly to be a piece of structure that can achieve any benefit." Reply Br. 2; see also Appeal Br. 8. Appellant's argument on this point does not apprise us of Examiner error. Although the Examiner did not provide a reference explaining the benefits associated with a double row angular contact ball bearing, as is made clear in its name, a double row angular contact ball bearing provides two rows of balls. A person of ordinary skill in the art would understand that the addition of a second row of balls increases support relative to an arrangement similar in size and material having only one row of balls. Appellant does not dispute that increased support would be the result of the Examiner's proposed combination. Rather, Appellant appears to acknowledge it in the Appeal Brief. "[A] double row angular contact ball bearing has high[ er] stiffness for inclination than that of a single ball bearing." Appeal Br. 9. Appellant next contends that the proposed modification to the system disclosed by Yamamoto would unacceptably increase the stiffness of the bearing, would undesirably increase the thickness of the bearing, and would not have provided a predictable result. See Appeal Br. 9. 5 Appeal2017-008124 Application 14/279,737 None of these assertions apprises us of Examiner error inasmuch as (i) the Examiner's reasoning for making the proposed modification is supported by rational underpinnings, (ii) Appellant's assertion that the result of the proposed combination would have been unpredictable is not supported by any sound technical reasoning or objective evidence, and (iii) the alleged drawbacks mentioned by Appellant are, at most, tradeoffs that would have been weighed against the benefit of providing increased support. We do not agree that increasing the size and stiffness of the bearing would outweigh any benefit provide by the Examiner's proposed modification. We have considered all of Appellant's arguments in support of the patentability of claim 1, but find them unavailing. Appellant makes no separate arguments for the patentability of claims 6 and 9. See Appeal Br. 6-11. Accordingly, we sustain the rejection of claim 1 and associated dependent claims 6 and 9 as unpatentable over Yamamoto and Pajewski. Claim 2 Claim 2 depends from claim 1 and recites, a ball retaining hole configured to retain the balls in a rollable manner is formed on an inner peripheral surface of the outer ring portion; and a raceway bottom thicknesses from a vertex of the ball retaining hole in the outer ring portion to an outer surface of the outer ring portion is set to 25% to 30% of a ball diameter. Appeal Br. A-2 (Claims App.). The Examiner finds that providing a thickness as recited would have been a matter of optimization. Final Act. 3. The Examiner also appears to address a previous communication by Appellant, stating, "[r]egarding Applicant's argument that the change in bearing dimension is not considered an optimum range, the Examiner maintains that a change in dimensions of 6 Appeal2017-008124 Application 14/279,737 parts in a structure would have been obvious to a person having ordinary skill in the art." Final Act. 7 ( emphasis added). The Examiner reiterates this statement on page 10 of the Answer. This statement by the Examiner indicates that the Examiner finds the recited thickness percentage to be a mere change in dimensions lacking any criticality. See Ans. 9. Appellant contends The claimed raceway bottom thicknesses is not recognized by Yamamoto and Pajewski as a result-effective variable, i.e., Yamamoto and Pajewski both fail to recognize that, even if the raceway bottom thickness is set thinner than a conventionally general outer ring portion, it is possible to reduce the reaction force that the outer ring portion in the bearing receives from the housing (the wall portion). Appeal Br. 10. Thus, Appellant contends, the recited thickness is not recognized by either of Yamamoto and Pajewski as a result-effective variable, and, therefore, the Examiner's reference to optimization is in error. Appellant's argument is not persuasive. Although we disagree with the Examiner's finding that providing the thickness recited in claim 2 would have been a matter of optimization of a result-effective variable, we agree with the Examiner's finding that the recited thickness is a mere change in dimensions. See Ans. 10. Specifically, a person of ordinary skill in the art would select a thickness sufficient for the loads presented by the system in which the bearing is to be installed. As discussed in paragraphs 20-22 of the Specification, the raceway bottom thicknesses (from a vertex of the ball retaining hole in the outer ring portion to an outer surface of the outer ring portion) set to 25% to 30% of a ball diameter is merely a result enabled by the use of a double row angular contact ball bearing. In other words, the use of this type of bearing "makes it possible to form the outer ring portion thinly." Spec. ,r 20. Once the system of Yamamoto is modified to use a 7 Appeal2017-008124 Application 14/279,737 double row angular contact ball bearing as recited in claim 1, the particular thickness of the raceway bottom recited in claim 2 would have been a matter of design choice based on the loads present in the system. The Specification provides no indication that the claimed thickness of the raceway bottom, itself, leads to any unpredictable result. We sustain the rejection of claim 2 as unpatentable over over Yamamoto and Pajewski. Rejection II Claim 3 Claim 3 depends from claim 1 and recites "a plate including a retaining portion configured to support the elastic member from a direction opposed to a gravitational direction, the plate being provided between the elastic member and the wall portion." Appeal Br. A-2 (Claims App.). The Examiner relies on Ince to teach a plate (ring profile 5, Fig. 1) as recited in claim 3. Final Act. 4. The Examiner reasons that including such a plate in the modified structure of Yamamoto would "yield the predictable result of providing a means of maintaining the position of the elastic member during operation." Id. Appellant argues: As is clear from Yamamoto' s Fig. 2, the radial length of the 0- rings 38, 39 is shorter than the radial length of the outer ring 22b. In order to modify Yamamoto in view of Ince based on what the references disclose, a radial depression would need to be placed on the outer surface of Yamamoto' s outer ring 22b in order to position Ince' s leg 5a. In addition, a protrusion would need to be formed on the lower surface of Yamamoto' s outer ring 22b and Ince' s leg 5b would need to angularly stretch from Yamamoto' s shorter 0-rings 38, 39 to this protrusion. It would not have been reasonably predictable to make these additional changes to Yamamoto. 8 Appeal2017-008124 Application 14/279,737 Appeal Br. 11. Thus, Appellant asserts that various mechanical modifications would be required in the structure of Yamamoto before including a device such as ring profile 5 of Ince. Appellant's argument does not apprise us of Examiner error because it depends on a bodily incorporation of the structure of Ince in the arrangement disclosed by Yamamoto, and there is no requirement that the teachings of the cited references be able to be bodily incorporated. See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Rather, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR, 550 U.S. at 417. Assuming, arguendo, that the specific adjustments to the structure of Yamamoto that Appellant asserts would be required are indeed necessary, Appellant makes no assertion that these adjustments would have been beyond the level of ordinary skill in the art. We sustain the rejection of claim 3 as unpatentable over Yamamoto, Pajewski, and Ince. Claim 4 Appellant makes no additional argument for the patentability of claim 4 (see Appeal Br. 10-11 ), and, therefore, claim 4 falls with claim 3 from which it depends. 9 Appeal2017-008124 Application 14/279,737 Rejection III Claims 5 and 7 Appellant makes no additional arguments for the patentability of claims 5 and 7, which depend from claims 3 and 6, respectively. See Appeal Br. 6-11. Accordingly, claims 5 and 7 fall with claims 3 and 6. DECISION We affirm Rejections I-III. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 10