Ex Parte McKisic et al

Patent Trial and Appeal Board

Nov 30, 2012

10939667 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AUBRA D. McKISIC and JOHN G. FARYNIAK
____________

Appeal 2010-007727
Application 10/939,667
Technology Center 3600
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Before JOHN C. KERINS, EDWARD A. BROWN and
BENJAMIN D.M. WOOD, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Aubra D. McKisic and John G. Faryniak (Appellants) seek our review
under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1, 3-19 and 21-
36. Claims 2 and 20 are canceled. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
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THE INVENTION
Appellants’ claimed invention is to a modular base and cage for a rail
vehicle side bearing assembly. Claim 1, reproduced below, is illustrative:
1. A modular base and cage for a rail vehicle side
bearing assembly, the modular base and cage
comprising:
a. a cage having upstanding side walls, said cage
defining a bearing cavity for receiving a bearing
element, said cage having and open bottom; and
b. a modular base receivable in said open bottom
of said cage, said modular base forming a bottom
surface of said bearing cavity for supporting said
bearing element.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 6, 13-19, 24 and 31-36 under 35 U.S.C. § 103(a) as being
unpatentable over Sunderman (US 5,682,822, iss. Nov. 4, 1997) in view of
Neumann (US 3,748,001, iss. Jul. 24, 1973); and
(ii) claims 3-5, 7-12, 21-23 and 25-30 under 35 U.S.C. § 103(a) as
being unpatentable over Sunderman in view of Neumann and Gams (US
5,451,110, iss. Sep. 19, 1995).1

1 The Examiner denominated these rejections as new grounds of rejection in
the Examiner’s Answer, due to some apparent confusion as to which claims
the Gams reference was applied against. Ans. 4, 8. Appellants’ Brief on
Appeal addresses a rejection of all claims over Sunderman, Neumann and
Gams; Appellants’ Reply Brief addresses the grounds of rejection as stated
herein.
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ANALYSIS
Claims 1, 6, 13-19, 24 and 31-36--Sunderman/Neumann
Appellants present separate arguments for patentability directed to
each of the rejected claims.
The Examiner found that Sunderman discloses all limitations set forth
in these claims, with the exception that element 24 corresponding to the
claimed cage does not have an open bottom. Ans. 5. The Examiner cited to
the Neumann patent as teaching a tubular base or cage having an open
bottom, and concluded that it would have been obvious to modify the
Sunderman structure such that the Sunderman cage 24 would have an open
bottom. Ans. 5-6.
Claim 1
Appellants argue that neither reference discloses or suggests that
resilient elements (26 in Sunderman, 34 in Neumann) “can sit on a modular
base that forms the bottom of the bearing cavity,” and thus the claim
limitation directed to a “modular base forming a bottom surface of said
bearing cavity for supporting said bearing element” is not met by the
combination.2 Appeal Br. 19; Reply Br. 19-20. This argument, however,
does not address the Examiner’s application of the teachings of Sunderman,

2 Appellants also maintain that, “[c]laim 1 requires the modular base to be
receivable in ‘said central bottom opening”; and the modular base must have
a ‘central portion defining a bottom surface of said bearing cavity.” Reply
Br. 20. Claim 1 instead calls for the modular base to be receivable in “said
open bottom of said cage,” and that the modular base is to “form[] a bottom
surface of said bearing cavity.” Nowhere do the terms “central” and “central
portion” appear in claim 1. Those terms were deleted from claim 1 in a
“RESPONSE AND AMENDMENT” filed contemporaneously with a
Request for Continued Examination on October 23, 2006.
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in that the Examiner regards element 28 as corresponding to the claimed
modular base, and resilient (spring) element 36 as corresponding to the
bearing element3 that is to be supported on a bottom surface 54 of the
modular base in the bearing cavity. Ans. 5, 7. The argument thus does not
apprise us of error in the Examiner’s position.
Appellants assert, with respect to the proposed combination, that “the
removal of the bottom of cage 24 in the [Sunderman] patent would
necessitate destroying the operation of the detent device 28, the heart of the
[Sunderman] teachings.” Reply Br. 20. While Appellants go on to discuss
certain aspects of the operation of the Sunderman device, none of that
discussion persuades us that the proposed modification would have the
effect of destroying the operation of the detent device.
Appellants further argue that: (1) element 28 in Sunderman is not a
modular base as claimed; (2) the bearing element in Sunderman is a pair of
elastomeric compressible blocks 26; (3) element 28 does not support the
compressible blocks 26; (4) compressible blocks 26 are instead supported by
base plate 44; and (5) the structure that includes element 28 is a detent
mechanism and provides no dampening for a constant contact side bearing.
Reply Br. 21. While points (3) and (4) are accurate, as is point (5), to the
extent that Appellants are referring to dampening of vertical forces, their
potential relevance to the rejection are premised on assertions (1) and (2)
being accepted. Those assertions, however, do not appear to be
commensurate in scope with the claims.
Appellants’ assertion that element 28 is not a “modular base as
[claimed]” appears to be founded on the assertion that the bearing element is

3 Claim 1 does not positively recite a bearing element.
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the compressible blocks 26 and not resilient element 36. In this regard,
Appellants have not pointed to any language in claim 1 that structurally
distinguishes the recited modular base over element 28 in Sunderman,
except that, as argued previously, the claimed modular base is to form a
bottom surface for supporting the bearing element. Appellants have not,
however, shown why the Examiner’s position that resilient element 36 is a
bearing element is unreasonable. This is especially the case where the
bearing element is not positively recited and thus is not structurally or even
functionally defined in the claim. We are not apprised of error in the
Examiner’s position.
Claim 6
Appellants’ argument with respect to claim 6 is closely akin to that
advanced with respect to claim 1, i.e., that the modular base 28 relied on by
the Examiner “neither supports the block/bearing assemblies 26 nor does it
capture them within the cage.” Reply Br. 25. Again, this argument fails to
take into account that the Examiner does not rely on “block/bearing
assemblies 26” as the bearing element recited in claim 6.
Claim 13
Appellants again argue that the combination of Sunderman and
Neumann does not have a modular base. Reply Br. 30-31. Appellants
further maintain that the combination contains no teachings to the effect that
a thickness of the modular base corresponds to a force level of a bearing
element, and that, in “the invention of the application, the thicker the
modular base, the higher the force rating as originally assembled for a given
block height.” Id. Claim 13, however, merely structurally requires that the
modular base have a “thickness,” which functionally corresponds to some
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indeterminate “force level” of a “bearing element” that is not even positively
recited, when the modular base is assembled with the cage and a bearing
element.
The Examiner found that bottom plate 54 of modular base 28 has a
thickness, which Appellants do not dispute. Ans. 5. The bottom plate
constrains or supports resilient bearing element 36, at a lower end, and thus
the thickness of the bottom plate corresponds to a force level of that bearing
element. We are not apprised of error in the Examiner’s position.
Claim 14
Appellants argue that the references do not teach a modular element,
nor do they teach a boss. Reply Br. 31. Appellants point out that, “the
blocks of elastomeric material 26 shown in the [Sunderman] patent are solid
and have no central hole or bore.” Once again, the argument advanced does
not address the Examiner’s actual position, and thus does not apprise us of
error.
Claims 15 and 16
As discussed in greater detail below, these claims are subject to a new
ground of rejection under 35 U.S.C. § 112, second paragraph, as being
indefinite. Because a determination of the scope of the claims would require
us to resort to speculation and/or assumptions, any determination on the
merits of the Examiner’s rejection is imprudent. See In re Steele, 305 F.2d
859, 862 (CCPA 1962). As such, we are constrained to reverse the rejection
of claims 15 and 16 under 35 U.S.C. § 103(a), without reaching the merits of
the rejection.
Claim 17
Appellants maintain that neither Sunderman nor Neumann discloses a
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plurality of grooves in an underside of a modular base. Reply Br. 33. The
Examiner found that Figure 4 of Sunderman “shows an annular groove in
the bottom surface of the bottom plate 54 for accepting and placing the
bearing elements 54 [sic, 36].” Ans. 5. However, Figure 4 of Sunderman
does not show the underside or bottom surface of modular base element 28,
as evidenced by the description that “FIG. 4 is a plan elevational view taken
at lines 4-4 in FIG. 3,” and by reference to Figure 3 itself. Sunderman, col.
2, ll. 33-34. It thus appears that the Examiner is relying on one or more
grooves that are not on an underside of modular base element 28 in making
this rejection, and we are unable to ascertain whether any grooves actually
are present on the underside of that element. As such, we are constrained to
reverse the rejection of claim 17 over Sunderman and Neumann.
Claim 18
Appellants argue that none of the cited references have a cavity
defined as the cage with the modular base defining the bottom surface of the
cavity. Reply Br. 34. The argument fails to apprise us of error in the
Examiner’s position. The modular base element 28 in Sunderman defines
the bottom of a cavity that retains bearing element 36 therein. Sunderman,
Fig. 2.
Claim 19
Appellants’ arguments with respect to independent claim 19 are
essentially the same as those advanced for independent claim 1. Appeal Br.
33-35; Reply Br. 34-36. For the same reasons as noted in the analysis of that
claim, we are not persuaded of error on the part of the Examiner in rejecting
claim 19.
Claim 24
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Claim 24 depends from claim 19, and further requires that the
modular base be “captured against said cage when said cage is attached to
said rail vehicle.” Appellants maintain that, even considering element 28 of
Sunderman to be the claimed modular base, it is not captured against the
cage as recited in claim 24. Reply Br. 39-40. The Examiner’s finding in
this respect is that “modular base 28 is inserted and captured in the cavity.”
Ans. 5 (emphasis added). This finding is inadequate to meet the claim 24
limitation, and we do not readily see where modular base 28 would be
captured against cage 24 when the Sunderman device is deployed in a rail
vehicle. The rejection will not be sustained.
Claim 31
Appellants’ arguments advanced with respect to claim 31 are
essentially the same as those advanced for claim 13 discussed above. For
the same reasons as presented in the analysis of that claim, the rejection of
claim 31 is sustained.
Claim 32
Appellants’ arguments advanced with respect to claim 32 are
essentially the same as those advanced for claim 14 discussed above. For
the same reasons as presented in the analysis of that claim, the rejection of
claim 32 is sustained.
Claims 33 and 34
As discussed in greater detail below, these claims are subject to a new
ground of rejection under 35 U.S.C. § 112, second paragraph, as being
indefinite. Because a determination of the scope of the claims would require
us to resort to speculation and/or assumptions, any determination on the
merits of the Examiner’s rejection is imprudent. See Steele, 305 F.2d at 862-
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63. As such, we are constrained to reverse the rejection of claims 33 and 34
under 35 U.S.C. § 103(a), without reaching the merits of the rejection.
Claim 35
Claim 35 depends from claim 19, and contains the limitation that the
modular base defines a plurality of annular grooves in the underside thereof.
For the same reasons discussed with respect to claim 17 above, which
contains a similar limitation, the rejection of claim 35 is not sustained.
Claim 36
Appellants’ arguments in support of the patentability of claim 36 are
essentially the same as those presented for claim 19. For the same reasons
presented in the analysis of that claim, the rejection of claim 36 is sustained.
Claims 3-5, 7-12, 21-23 and 25-30--Sunderman/Neumann/Gams
Each of claims 3, 7, 21 and 25 contains a limitation that the modular
base has at least one identification portion externally visible of the cage
when the modular base is assembled with the cage. The Examiner cites to
the Gams patent as teaching the use of wear indicators that can provide a
visual indication of excessive wear in a bearing assembly, and concludes
that it would have been obvious to have applied similar wear indicators to
the bearing assembly resulting from the combination of Sunderman and
Neumann, “with the expected result of giving visible, easily identifiable
indicators, . . . , that the bearings of the train cars are nearing repair and
replacement . . . .” Ans. 6.
Appellants maintain that the Examiner has not shown how, even if
wear indicators of the type disclosed by Gams were somehow included on
the bearing assembly resulting from the combined teachings of Sunderman
and Neumann, there would be any identification portion on the modular base
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that would be visible externally of the cage as claimed. Reply Br. 22, 26,
37, 40-41. We agree with Appellants that the Examiner has not adequately
explained how the combination of the teachings of Gams with those of
Sunderman and Neumann would teach or render obvious the subject matter
of claims 3, 7, 21 and 25. The remaining claims that are subject to this
ground of rejection each depends from one of these claims. Accordingly,
the rejection of claims 3-5, 7-12, 21-23 and 25-30 as being unpatentable
over Sunderman, Neumann and Gams is not sustained.

Claims 15, 16, 33 and 34--Indefiniteness--35 U.S.C. §112, 2nd paragraph
Claim 15 depends from independent claim 1. Claim 1 requires that
“[a] modular base form[s] a bottom surface of said bearing cavity for
supporting said bearing element.” Claim 15, in turn, recites that “said
modular base further defines a central opening, such that said thickness is
zero.”
While “said thickness” lacks formal antecedent basis, taken in context
it appears to relate to a thickness of the modular base. However, when, as
set forth in claim 15, the modular base defines a central opening, and has a
thickness of “zero,” it is unclear how the modular base “form[s] a bottom
surface of said bearing cavity for supporting said bearing element.” In other
words, it is not clear how a “central opening” can “form[] a bottom surface,”
nor is it clear how such a “central opening” would be capable of “supporting
said bearing element.”
Indeed, Appellants’ Specification, in discussing an embodiment in
which the modular base has a central opening, and the central base portion
has zero thickness, points out that the “bearing element 49 is not supported
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on the modular base 70, but rather is supported by the mounting surface on
the bolster to which the cage 32 is attached.” Spec., p. 16, ll. 21-23; see also
Spec., p. 16, ll. 1-20; Figs. 23-25, 30, 31. Accordingly, the scope of claim
15 is, at a minimum, sufficiently inconsistent with the subject matter of
claim 1 that ascertaining the scope of claim 15 requires considerable
speculation, and fails to give notice to the public of the extent of the legal
protection afforded by the claims, so that interested members of the public,
including competitors of Appellants, can determine whether or not they
infringe. All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d
774, 779-80 (Fed. Cir. 2002).
As such, claim 15 is rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim that which Appellants regard as their invention. Claim 33
suffers from the same inconsistency with respect to independent claim 19,
from which it depends, and is thus rejected on the same basis. Claims 16
and 34 depend, respectively, from claims 15 and 33, and are thus, too,
rejected on this basis.

CONCLUSIONS
The subject matter of claims 15, 16, 33 and 34 is indefinite for failing
to particularly point out and distinctly claim that which Appellants regard as
their invention.
Appellants have not persuaded us that the Examiner erred in rejecting
claims 1, 6, 13, 14, 18, 19, 31, 32 and 36 as being unpatentable over
Sunderman and Neumann.
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Appellants have persuaded us that the Examiner erred in rejecting
claims 17, 24 and 35 as being unpatentable over Sunderman and Neumann.
Appellants have persuaded us that the Examiner erred in rejecting
claims 3-5, 7-12, 21-23 and 25-30 as being unpatentable over Sunderman,
Neumann and Gams.

DECISION
Claims 15, 16, 33 and 34 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. This is a new ground of rejection under 37
C.F.R. § 41.50(b).
The decision of the Examiner to reject claims 1, 6, 13, 14, 18, 19, 31,
32 and 36 as being unpatentable over Sunderman and Neumann is
AFFIRMED.
The decision of the Examiner to reject claims 15-17, 24 and 33-35 as
being unpatentable over Sunderman and Neumann is REVERSED.
The decision of the Examiner to reject claims 3-5, 7-12, 21-23 and 25-
30 as being unpatentable over Sunderman, Neumann and Gams is
REVERSED.
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
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Section 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner . . .
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same record . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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