Ex Parte Kumper

Patent Trial and Appeal BoardAug 26, 2013

11363539 (P.T.A.B. Aug. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/363,539 02/27/2006 Bernd Kumper 103821-16 6616 27388 7590 08/27/2013 Hildebrand, Christa Norris McLaughlin & Marcus PA 875 Third Avenue, 8th Floor New York, NY 10022 EXAMINER NGUYEN, XUAN LAN T ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 08/27/2013 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 PATENT TRIAL AND APPEAL BOARD ________________ Ex parte BERND KÜMPER ________________ Appeal 2011-002099 Application 11/363,539 Technology Center 3600 ________________ Before ANTON W. FETTING, JAMES A. TARTAL, and PHILIP J. HOFFMANN, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002099 Application 11/363,539 2 STATEMENT OF THE CASE1 Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 3-7, 10, and 14-18. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appellant’s claimed invention relates to a bush bearing and a method for producing a correspondingly formed axial limit stop in a bush bearing. Spec. para. [0001]. Claim 3, reproduced below, is illustrative of the subject matter on appeal: 3. A bush bearing configured for installation in a cylindrical receiving lug and comprising: a cylindrical metallic inner part having a uniform outer diameter in an axial direction, an elastomer bearing body surrounding the inner part and connected thereto by vulcanization, an outer sleeve receiving the inner part together with the bearing body, and at least one radially inwardly protruding bead formed in the region of at least one axial bearing end of the outer sleeve, wherein a radially inward apex of the at least one bead forms a radial limit stop and an outer sidewall of the bead is formed as a radially outwardly protruding flange, and wherein an outer surface of the flange is covered with an elastomer and forms an axial limit stop, 1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,” filed Dec. 2, 2009) and Reply Brief (“Reply Br.,” filed Oct. 8, 2010), and the Examiner’s Answer (“Ans.,” mailed Aug. 19, 2010). Appeal 2011-002099 Application 11/363,539 3 wherein the bead is formed continuous along the periphery of the outer sleeve so as to form the axial limit stop, wherein the at least one bead is pulled so deep into the material of the outer sleeve that an outside diameter of the flange covered by the elastomer is less than a minimum inside diameter of a receiving lug receiving the bearing. The Examiner relies upon the following evidence: Ikeda US 5,109,269 Mar. 2, 1993 Germano US 5,967,668 Oct. 19, 1999 Hettler US 2003/0001323 A1 Jan. 2, 2003 Sprang EP 0 528 253 A1 Feb. 24, 1993 Claims 3, 4, 10, 14, 15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Germano and Ikeda. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Germano, Ikeda, and Hettler. Claims 7 and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Germano, Ikeda, and Sprang. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). Appeal 2011-002099 Application 11/363,539 4 ANALYSIS Obviousness based on Germano and Ikeda Claims 3, 4, 10, 15, 17, and 18 Claim 3 requires “a cylindrical metallic inner part having a uniform outer diameter in an axial direction.” Under the broadest reasonable meaning of the claim terms, we agree with the Examiner that this limitation is disclosed by the bearing axle support 14 of Germano (Col. 2, l. 21 and figure 2). That a region of bearing axle support 14 of Germano is both cylindrical and has a uniform outer diameter in an axial direction is sufficient to meet the claimed limitation. As noted by the Examiner, “[t]he claim does not require the inner part to have a uniform outer diameter through the entire length of the inner part.” See Ans. 11-12. Moreover, since Germano discloses the claimed limitation without modification, Appellant’s argument that Germano teaches away from any modification is misplaced. See Rep. Br. 5. Accordingly, we conclude that Appellant has not overcome the Examiner’s rejection of claim 3, or its dependent claims 4, 10, 15, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Germano and Ikeda. Claim 14 Claim 14 further requires “wherein the bush bearing is made as a continuous piece in the axial direction.” We agree with Appellant that the Examiner has not shown where Germano discloses this limitation. The Examiner’s reasoning that “only the top half of [Germano’s bush] is used to meet the claimed limitations,” is unreasonable where Germano (col. 2, ll. 15- 16) expressly states that “[c]entral bearing 6 is formed by two separate Appeal 2011-002099 Application 11/363,539 5 bearing elements 7, 8.” See Ans. 5. The Examiner does not expressly contend, and has not otherwise shown, that Germano bearing elements 7 or 8 are, alone, a “bush bearing” as claimed. As a result, the Examiner cannot rely on only element 7 or element 8, each half of the bush bearing disclosed by Germano, to meet the claim limitation. Accordingly, we cannot sustain the Examiner’s rejection of claim 14 under 35 U.S.C. § 103(a) as being unpatentable over Germano and Ikeda. Obviousness based on Germano, Ikeda, and Hettler Claim 5 Claim 5 requires “each cavity disposed in a region of the bead.” Under the broadest reasonable meaning of claim terms, we agree with the Examiner that Hettler discloses cavities “in a region of” beads 12, 13. Appellant’s assertion that the cavities at each axial end are disposed preceding and following beads 12, 13 is simply not supported by figure 2 of Hettler. Accordingly, we conclude that Appellant has not overcome the Examiner’s rejection of claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Germano, Ikeda, and Hettler. Claim 6 Appellant raises essentially the same arguments with respect to claim 6 that Appellant asserts with regard to claim 5 concerning Hettler’s disclosure of cavities disposed in a region of the bead. Accordingly, we conclude that Appellant has not overcome the Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Germano, Ikeda, and Hettler for the same reasons discussed above with regard to claim 5. Appeal 2011-002099 Application 11/363,539 6 Obviousness based on Germano, Ikeda, and Sprang Claim 7 Claim 7 requires two flanges, one with an outside diameter “being less than a minimum inside diameter of the receiving lug receiving the bearing,” and the other with an outside diameter “being greater than a maximum inside diameter of the receiving lug.” The Examiner maintains that Germano discloses two flanges, both of which have outside diameters being less than a minimum inside diameter of the receiving lug. Ans. 13. The Examiner relies on Sprang for the disclosure of a flange with an outside diameter being greater than the inside diameter of the receiving lug. Id. The Examiner further reasons that it would be obvious to modify one of the two flanges of Germano in accordance with Sprang’s flange to provide a stop. See id. Appellant’s contention that the Examiner relies only on Sprang for the disclosure of this limitation is simply incorrect. See Rep. Br. 8. Thus, Appellant’s argument that Sprang discloses only a single bead is not persuasive because nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., Inc. 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant also raises the same arguments asserted with regard to claim 3, which are not persuasive for the same reasons discussed above with respect to claim 3. Accordingly, we conclude that Appellant has not overcome the Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable over Germano, Ikeda, and Sprang. Appeal 2011-002099 Application 11/363,539 7 Claim 16 Claim 16 requires “that an outside diameter of the flange at the one bearing end is less than the outside diameter of the flange at the other bearing end.” Similar to claim 7, Appellant argues that since Sprang only discloses a single bead there is no frame of reference to conclude whether the outside diameter of a flange at one end would be less than the outside diameter of a flange at the other axial end. See Rep. Br. 9. The Examiner, however, relies on a combination of Germano and Sprang for the disclosure of this limitation. See Ans. 10. Moreover, as discussed above with regard to claim 7, a combination of Germano and Sprang discloses two flanges, one with an outside diameter being less than a minimum inside diameter of the receiving lug receiving the bearing, and the other with an outside diameter being greater than a maximum inside diameter of the receiving lug. In other words, the outside diameter of the flange at one bearing end is less than the outside diameter of the flange at the other bearing end, as recited in claim 16. Appellant also raises the same arguments asserted with regard to claim 3, which are not persuasive for the same reasons discussed above with respect to claim 3. Accordingly, we conclude that Appellant has not overcome the Examiner’s rejection of claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Germano, Ikeda, and Sprang. DECISION We AFFIRM the decision of the Examiner to reject claims 3-7, 10, and 15-18. We REVERSE the decision of the Examiner to reject claim 14. Appeal 2011-002099 Application 11/363,539 8 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 rvb