Ex Parte Niedermeier et al

Patent Trial and Appeal BoardMar 7, 2017

12306398 (P.T.A.B. Mar. 7, 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. 12/306,398 08/18/2009 Herbert Niedermeier 08-1350 3265 20306 7590 03/07/2017 MrnnNNFT T ROFFTNFN HT TT RFRT Rr RFRGROFF T T P EXAMINER 300 S. WACKER DRIVE FERGUSON, MICHAEL P 3 2ND FLOOR CHICAGO, IL 60606 ART UNIT PAPER NUMBER 3679 MAIL DATE DELIVERY MODE 03/07/2017 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 HERBERT NIEDERMEIER and DIETER LEHMANN Appeal 2014-006505 Application 12/306,3981 Technology Center 3600 Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35U.S.C. § 134 from the Examiner’s final rejection of claims 8—14. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Appellants’ claimed invention relates to a cage for a rolling bearing. (Spec. 1.) 1 According to Appellants the real party in interest is Gebruder Reinfurt GMBH & Co. (Appeal Br. 1.) Appeal 2014-006505 Application 12/306,398 Claim 8 is the sole independent claim on appeal. It recites: 8. A cage for a rolling bearing in dental technology with a characteristic speed value n x dm > 1,000,000 mm/min, consisting of a polyamide imide with chemically coupled fluoropolymer and/or fluorocopolymer. REJECTION2 Claims 8—14 are rejected under 35 U.S.C. § 103(a) as unpatentable in view of Koyo Seiko (EP 0 896 164 Al, pub. Feb. 10, 1999) and Lehmann (US 6,770,378 Bl, iss. Aug. 3, 2004). ANALYSIS The Examiner finds that “Lehmann teaches a bearing consisting of only a polyamide imide chemically coupled to the fluorocopolymer.” (Final Action 3, citing Lehmann, col. 4,1. 20 — col. 5,1. 6.) The Examiner determines that “it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the cage disclosed by Koyo Seiko to consist of a chemically coupled polyamide imide- fluorocopolymer material as taught by Lehmann.” (Id. at 3^4; see also Answer 6.) Appellants argue that Lehmann does not disclose any compositions that include a polyamide imide. . . . The cited Lehman excerpt does not disclose the use of a polyamide imide for any purpose. Instead, the cited Lehmann excerpt is directed to compositions that include amides such as polyamide amides as an ingredients [sic]. (See, e.g., Lehmann at col. 2, line 66 to col. 3, line 12). 2 The rejection of claims 8—14 under 35 U.S.C. § 112, second paragraph (Final Action 2), was withdrawn (Answer 2). 2 Appeal 2014-006505 Application 12/306,398 Polyamide amides and polyamide imides are different compounds. Lehmann discusses the use of polyamide amides while the claims are directed to compositions that include polyamide imides. (Appeal Br. 8.) The portions of Lehmann cited by the Examiner clearly refer to polyamides. (See Lehmann, col. 4,1. 20 — col. 5,1. 6.) However, it is not clear where Lehmann discloses polyamide imides. Nor does the Examiner indicate what substances, if any, disclosed in Lehmann have imide functional groups. Therefore, we are persuaded that the Examiner erred in finding that Lehmann discloses polyamide imides. It follows that we are also persuaded that the Examiner erred in determining that it would have been obvious to modify “Koyo Seiko to consist of a chemically coupled polyamide imide-fluorocopolymer material as taught by Lehmann.” (See Final Action 3 4.) For the same reason, we are persuaded that the Examiner erred in rejecting dependent claims 9-14. DECISION The Examiner’s rejection of claims 8—14 under 35 U.S.C. § 103(a) is reversed. REVERSED 3