Ex Parte Clarke et al

Patent Trial and Appeal Board

Mar 22, 2017

12571984 (P.T.A.B. Mar. 22, 2017)

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.
12/571,984 10/01/2009 Donovan S. Clarke 50100/09-405 3002
89881 7590 03/24/2017
Caterpillar/ Miller, Matthias & Hull LLP
One North Franklin Street
Suite 2350
Chicago, IL 60606
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
03/24/2017 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):
tmiller@ millermatthiashull. com
mloye @ millermatthiashull. com
us_docket_clerk@cat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONOVAN S. CLARKE and KEVIN L. STEINER
Appeal 2015-002178
Application 12/571,984
Technology Center 3600
Before ANNETTE R. REIMERS, LISA M. GUIJT, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—20. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is identified as Caterpillar Inc. App. Br. 2.
Appeal 2015-002178
Application 12/571,984
Claimed Subject Matter
Claims 1 and 17, reproduced below, illustrate the claimed subject
matter.
1. A bushing, comprising:
a hollow unitary cylindrical wall having an inner diameter
and an outer diameter; and
an annular cavity extending circumferentially around the
inner diameter of the cylindrical wall, the cylindrical wall,
having a thickness of A and the annular cavity having a width of
B, the ratio of A to B being about 1 to about 1.
17. A bushing having a hollow unitary cylindrical wall with
an inner diameter, an outer diameter, and an annular lubrication
cavity, the bushing having a Clarke Factor of less than about 1.
Rejection
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Murakami et al. (US 2005/0077093 Al, published Apr. 14, 2005,
“Murakami”). Final Act. 2—3.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (App. Br. 11—17; Reply Br. 1—5). We are not persuaded by
Appellants’ arguments. We adopt as our own the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and in
the Answer. We highlight and address specific arguments and findings for
emphasis as follows.
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Appellants argue claims 1—20 as a group.2 App. Br. 11—17. We select
claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue the Examiner does not provide a citation showing
that Murakami’s ring 10 has an annular cavity. App. Br. 12. The Examiner
finds Murakami clearly shows element 10 having an annular cavity that
cooperates with lubrication hole 18 of track pin 14, and provides an
annotation on Murakami’s Figure 2 showing the annular cavity. Ans. 3^4.
Appellants agree that the Examiner’s “reproduction of Figure 2 may point
out, generally, an annular cavity.” Reply Br. 2. We agree with the
Examiner’s finding that Murakami teaches an annular cavity, and this
finding is not persuasively challenged by Appellants.
Appellants next contend “Murakami does not disclose any ratios or
dimensions associated with a cylindrical wall or annular cavity of a
bushing.” App. Br. 13; see also Reply Br. 2. Appellants argue the Examiner
errs in finding that one of ordinary skill in the art would have been
motivated to “form the cavity of the bushing of Murakami et al with
dimensional ratios sufficient to allow adequate lubrication of the bushing
and track pin interface, to prevent undue wear therebetween, without
compromising the strength of the bushing” (Final Act. 3). App. Br. 13.
Appellants’ argument is premised on the position that “Murakami does not
teach or suggest any such motivation to modify the invention using the
2 Although not presented under a heading separate from any other claim,
some of Appellants’ arguments refer to the “Clarke Factor,” which is not
recited in claim 1. See App. Br. 14. These arguments do not identify the
claims to which they pertain, but from our review of the claims, a “Clarke
Factor” is recited in claims 17 and 20. Although not properly presented as
separate arguments for these claims, see 37 C.F.R. 41.37(c)(l)(iv), for
completeness we address these arguments infra.
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Application 12/571,984
dimension ratios of the currently pending claims.” App. Br. 13; see also
Reply Br. 3. Appellants argue that “such ‘obvious to try’ rationales are
made in err[or] ‘where the prior art gave either no indication of which
parameters were critical or no direction as to which of many possible
choices is likely to be successful.’” App. Br. 13 (quoting In re O’Farrell,
853 F.2d 894, 903 (Fed. Cir. 1988)). Appellants also argue that data
submitted in the inventors’ declaration “illustrates the failures of prior-art
track bushings to establish a long-felt need and also provides finite element
analysis, modeling results corroborating unexpected results of Applicants’
track bushing.” Id. at 15.
Appellants’ arguments do not apprise us of error in the Examiner’s
rejection of claim 1. Appellants do not persuasively challenge the
Examiner’s finding that “there are a finite number of bushing configurations,
having a finite number of dimensional relationships.” Final Act. 3.3 Rather,
Appellants argue that “[bjecause Mur[a]kami lacks any information
regarding the importance of the various dimensional ratios and lacks any
information showing how to achieve the proper configuration of the cavity
to reduce stress on a track bushing, the Examiner has erred in asserting his
‘obvious to try’ rationale.” App. Br. 14. We agree with the Examiner’s
finding, however, that one of ordinary skill in the art would have understood
that varying the dimensions of Murakami’s cavity would vary the strength
and amount of lubrication of the bushing. See Final Act. 2—3. The finding is
supported by basic engineering principles, which indicate that a wider or
3 We note that, although many different numerical values may be used for
the depth and width of the annular cavity, these values are limited by the
thickness of the bushing wall and the length of the bushing.
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Application 12/571,984
deeper cavity within the bushing wall will tend to weaken the bushing but
allow more lubricant to enter the cavity. Conversely, a smaller cavity will
tend to strengthen the bushing but provide less lubricant. The dimensions of
the cavity would, therefore, have been recognized by one of ordinary skill in
the art as result-effective variables. See In re Applied Materials, Inc., 692
F.3d 1289, 1296 (Fed. Cir. 2012) (holding the Examiner’s explanation based
on a “basic engineering principle” supported the finding that a dimension
would have been recognized by one of ordinary skill to affect a particular
result). Thus, Appellants’ argument that “Murakami fails to provide any
direction as to which configuration of its assembly would likely be
successful in achieving the structural improvements of the instant
application” (App. Br. 14) does not apprise us of Examiner error.
Because the particular dimensions of Murakami’s annular cavity
would have been recognized as result-effective variables, we agree with the
Examiner that the claimed dimensional ratios would have been obvious to
one of ordinary skill in the art. See Final Act. 2—3. “[WJhere the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.” In re
Aller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch, 617 F.2d 272,
276 (CCPA 1980) (recognizing “the rule that discovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art”); In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled
principle of law that a mere carrying forward of an original patented
conception involving only change of form, proportions, or degree, ... is not
such an invention as will sustain a patent, even though the changes . . . may
produce better results than prior inventions.”). Given Murakami’s teaching
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of an annular cavity extending circumferentially around the inner diameter
of the wall of the bushing, and the tradeoff between strength and lubrication
in widening the cavity, making the width of the cavity about the same as the
thickness of the bushing, as required by claim 1, or dimensioning the width
and depth of the cavity such that their sum is less than the bushing wall
thickness, relevant to claim 17,4 involves no more than ordinary skill.
“The outcome of optimizing a result-effective variable may still be
patentable if the claimed ranges are ‘critical’ and ‘produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art.’” Applied Materials, 692 F.3d at 1289 (quoting
Aller, 220 F.2d at 456). Here, however, we agree with the Examiner (Ans.
5—6) that the declaration submitted by Appellants does not establish
unexpected results.
The declaration of the named inventors describes a finite element
analysis (FEA) to test the magnitude of stress on five track bushing designs
under a load. Declaration of Donovan S. Clarke and Kevin L. Steiner
(hereinafter “Inventor Deck”) paras. 12—14. The FEA was conducted on
five designs with different widths of the annular cavity relative to the
baseline, which had a lubrication cavity “extending along a majority of the
length of the track bushing.” Id. at paras. 8, 12. The inventors conclude
that, “[generally speaking, the magnitude of stress depends on the thickness
of the track bushing at the location of the load and length for which
4 Claim 17 recites that the bushing has “a Clarke Factor of less than about
1.” The Specification defines the “Clarke Factor” as the sum of the annular
cavity width and depth, divided by the bushing wall thickness. See Spec,
paras. 34—39. Therefore, when the sum of the cavity width and depth is less
than the bushing wall thickness, the Clarke Factor will be less than 1.
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Application 12/571,984
thickness of the track bushing is reduced.” Id. at para. 15. We find this
conclusion is not surprising, given the basic engineering principles discussed
above. That is, one of skill in the art would expect greater stress where a
larger cavity is present in the inner diameter of the bushing. Not
surprisingly, therefore, the “best design for structural integrity” was the one
having no lubrication cavity. See Inventor Deck para. 16. This design,
however, was “not feasible due to its inability to fill the track bushing-track
pin interface with oil which is required for lubricating the contact areas with
the track pin.” Id. The “next best design,” the “C4” design, had the
narrowest lubrication cavity at 14 millimeters wide. See id. at paras. 12, 17.
The C4 design “exhibited] a ten percent less stress at the center of the track
bushing and sixty percent less stress when the load is thirty millimeters from
the end of the track bushing compared to the baseline.” Id. at para. 17.
In the Appeal Brief, Appellants contend that “the tests and the
inventors’ statements illustrate that among the several designs tested, only
the bushing formed according to the claimed ratios and the claimed Clarke
Factor prevailed in terms of load handling and overall structural integrity,
among other unexpected improvements.” App. Br. 17. The Inventor
Declaration, however, does not state the measured width of the cavity of the
baseline bushing or provide the wall thickness for any of the bushings. The
Declaration also does not state which designs do or do not meet the
limitations of any specific claim before us on appeal, such as having an
annular cavity width and bushing wall thickness ratio of “about 1 to about
1,” as recited in claim 1, or “a Clarke Factor of less than about 1,” as recited
in claim 17. The Declaration states that the designs that were tested “were
also used to derive the Clarke Factor,” but does not describe any particular
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Application 12/571,984
relationship of the designs to the claimed “Clarke Factor.” Inventor Decl.
para. 12.5 Therefore, we agree with the Examiner that the declaration
“provides no nexus between the claimed invention and the data provided in
the declaration.” Ans. 5—6.
Even if we were to assume, without evidence, that the C4 design falls
within the scope of claim 1 or claim 17 and all other designs do not, we are
not persuaded that the results of the tests described in the Declaration were
unexpected. Although the C4 design “exhibit[ed] a ten percent less stress at
the center of the track bushing and sixty percent less stress when the load is
thirty millimeters from the end of the track bushing compared to the
baseline” (Inventor Decl. para. 17), Appellants do not explain why this result
should be considered unexpected or compare this result to what one of
ordinary skill in the art would have expected. As discussed above, one of
ordinary skill in the art would expect an increase in strength when the cavity
size is decreased. Appellants do not acknowledge that one of ordinary skill
in the art would have understood this relationship, let alone explain why the
amount of increased strength of the C4 design would have been more than
expected. See Bristol-Myers Squibb Co. v. leva Pharm. USA, Inc., 752
F.3d 967, 977 (Fed. Cir. 2014) (“To be particularly probative, evidence of
unexpected results must establish that there is a difference between the
results obtained and those of the closest prior art, and that the difference
would not have been expected by one of ordinary skill in the art at the time
5 We note that the quoted paragraph beginning “More specifically, the
inventors found . . .,” located at pages 16—17 of the Appeal Brief and page 5
of the Reply Brief, does not appear to be a quote from the Inventor
Declaration, but no other source is identified.
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Application 12/571,984
of the invention.”). Accordingly, we agree with the Examiner that
Appellants have not shown unexpected results.
We also are not persuaded that Appellants have established a long-
felt, but unmet need. “Evidence that an invention satisfied a long-felt and
unmet need that existed on the patent’s filing date is a secondary
consideration of nonobviousness.” Perfect Web Techs., Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1332 (Fed. Cir. 2009). As in Perfect Web, however,
Appellants “provided no evidence to explain how long this need was felt, or
when the problem first arose.” Id. (citing Tex. Instruments v. US. Int’l
Trade Comm’n, 988 F.2d 1165, 1178 (Fed.Cir.1993) (“[F]ong-feltneed is
analyzed as of the date of an articulated identified problem and evidence of
efforts to solve that problem.”)).
Appellants rely on “the failures of prior-art track bushings” to show a
long-felt need. App. Br. 15. Appellants cite specifically to paragraphs 9 and
10 of the Inventor Declaration, which state that “[w]hen the SystemOne™
undercarriage is used with large track-type tractors, such as CAT’s D8
model, the undercarriage puts great stress on the track bushing specifically
and causes it to crack and fail,” and that “similar failures were often
observed in the track bushings of the older undercarriage designs.” App. Br.
15—16. These paragraphs fail to indicate how long the need was felt or
whether it was recognized by others. Indeed, the only evidence of record
indicates that the SystemOne™ undercarriage design began to be used in
2002 (Inventor Decl. para. 7), so problems associated with its use can only
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have arisen after that date.6 In addition, the lack of evidence that the need
described by Appellants was felt by others weighs against finding a long-felt
need. See In re Gershon, 372 F.2d 535, 538 (CCPA 1967) (“Since the
alleged problem in this case was first recognized by appellants, and others
apparently have not yet become aware of its existence, it goes without
saying that there could not possibly be any evidence of either a long-felt
need in the . . . art for a solution to a problem of dubious existence or failure
of others skilled in the art who unsuccessfully attempted to solve a problem
of which they were not aware.”). Moreover, for the same reasons discussed
above as to unexpected results and the lack of a nexus to the claimed
invention, Appellants have not shown that an invention defined by the
claims is what filled the need for a stronger bushing.
Accordingly, for the reasons discussed above and by the Examiner,
we are not apprised of error in the Examiner’s rejection of representative
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Murakami. Thus, we
sustain the rejection of claim 1, and, for the same reasons, the rejection of
claims 2—20, which are not argued separately.
DECISION
We affirm the Examiner’s decision to reject claims 1—20.
6 We note also that the Specification describes “track-type tractors which
employ Center Tread Idlers (CTIs) that input additional load on such
bushings” as “more recent.” Spec. para. 4.
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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)(l)(iv).
AFFIRMED
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