Ex Parte Sasaki et al

Patent Trial and Appeal BoardAug 1, 2017

12998580 (P.T.A.B. Aug. 1, 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. 12/998,580 05/05/2011 Katsuaki Sasaki 1761.1186 4224 21171 7590 08/03/2017 STA AS fr HAT SFY T T P EXAMINER SUITE 700 PILKINGTON, JAMES 1201 NEW YORK AVENUE, N.W. WASHINGTON, DC 20005 ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 08/03/2017 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): ptomail @ s-n-h.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KATSUAKI SASAKI AND TAKAHIRO WAKUDA1 Appeal 2015-003534 Application 12/998,580 Technology Center 3600 Before JENNIFER D. BAHR, AMANDA F. WIEKER, and SEAN P. O’HANLON, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Katsuaki Sasaki and Takahiro Wakuda (“Appellants”) appeal under 35 U.S.C. § 134(a) from the Examiner’s non-final rejection of claims 1, 2, and 1—9.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is NTN Corporation. Appeal Br. 2 (filed Oct. 30, 2014). 2 Claims 3 and 4 were cancelled. Id. at 10 (Claims App.). Additionally, the Examiner indicated that claims 5 and 6 contain allowable subject matter. Id. at 5; Non-Final Act. 5 (mailed July 9, 2014). Appeal 2015-003534 Application 12/998,580 CLAIMED SUBJECT MATTER The invention concerns “a seal equipped bearing assembly for use in a transmission of a type used in automotive vehicles.” Spec. 1. Claim 1 is illustrative of the subject matter on appeal, and recites: 1. A seal equipped bearing assembly comprising: a plurality of rolling elements interposed between opposite raceway surfaces defined in respective raceway rings; and a sealing member to seal a bearing space delimited between the raceway rings, the sealing member having a base end secured to one of raceway rings and a sealing lip held in contact with the other of the raceway rings when the bearing assembly is in a non-rotating state; and a gap formation facilitating element to facilitate a wear of a forefront portion of the sealing lip, defined in a seal contact face in the other of the raceway rings, the gap formation facilitating element being a projection provided in a circumferential portion of the seal contact face in the raceway ring, the gap formation facilitating element being configured to render the sealing member to be a non- contact seal or to contact so that the contact pressure is approximately zero when the bearing assembly is in a rotating state. Appeal Br. 10 (Claims App.) (emphasis added). 2 Appeal 2015-003534 Application 12/998,580 REJECTION Claims 1,2, and 7—9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hideki (JP2005-106078, pub. Apr. 21, 2005).3 ANALYSIS With respect to independent claim 1, the Examiner finds that Hideki discloses a seal equipped bearing assembly comprising a plurality of rolling elements 5 that are located between raceway rings 2a/2b. Non-Final Act. 2. The assembly includes sealing member 7 with sealing lip 7a and gap formation facilitating element 7b that is in contact with a seal contact face 2d of the raceway ring. Id. at 2—3. The Examiner finds that although Hideki’s gap facilitating element is a projection, it is not provided on the seal contact face of the raceway ring, as claimed. Id. at 3. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to have “position[ed] the projection on the seal contact face of the raceway ring instead of on the seal lip, since it has been held that rearranging parts of an invention involves only routine skill in the art.” Id. (citing In re Japikse, 86 USPQ 70 (CCPA 1950)). The Examiner also concludes that the proposed rearrangement of parts “provides the same predictable result of creating a small gap to permit air to escape the bearing to prevent an increase in air pressure in the bearing.” Id. The Examiner finds that in such a modified assembly, the gap formation element is capable of facilitating wear on a 3 The record includes a translation of Hideki, which was mailed on December 9, 2013, with the Examiner’s Office Action. See Dec. 9, 2013 PTO-892; see also Dec. 9, 2013 Office Action, 4—6 (rejection over Hideki). 3 Appeal 2015-003534 Application 12/998,580 forefront portion of the sealing lip, because “the seal lip will rub against the projection and thus wear.” Id. at 3^4; see also Ans. 3. According to Appellants, Hideki discloses that the height of projection 7b wears away to zero during repeated sliding motion, i.e., it “is a temporary structure configured to wear off.” Appeal Br. 7. Thus, Appellants contend that Hideki’s projection does not perform the claimed function of “facilitating] a wear of a forefront portion of the sealing lip” but, rather, forms a tight seal once the height of the projection is worn away to zero. Id.', see also id. at 8; Reply Br. 2—3 (filed Jan. 20, 2015). We are not persuaded by Appellants’ argument. As an initial matter, Appellants purport to quote paragraph 27 of Hideki as stating that “the projection 7b wears off such that the projection height of the projection 7b is zero.” Appeal Br. 7. However, the translation of Hideki that is part of the record before us, see supra n.3, does not contain this statement. Instead, the record translation states that “the seal 7 of the inner ring 2b is the amount of projection of the projection 7b worn soon after repeated sliding [] brought into close contact with the sliding surface 2d.” Hideki, p. 3 114. Nonetheless, we accept Appellants’ position that Hideki discloses that at least some amount of projection 7b is worn away upon repeated contact, even if the projection is not disclosed as being worn away to “zero.” See id. However, even if Hideki’s projection 7b is partially worn away after “repeated sliding,” this does not demonstrate that the initial contact between modified projection 7b (i.e., projection 7b when moved to the raceway as the Examiner proposes) and the sealing lip fails to cause the forefront portion of the sealing lip to wear to at least some extent. Importantly, claim 1 does not 4 Appeal 2015-003534 Application 12/998,580 require that the projection facilitate wear of the sealing lip for the entire period of operation, e.g., after “repeated sliding,” nor does claim 1 require a specific amount of wear on the sealing lip. See Appeal Br. 10 (Claims App.). Instead, the claim broadly requires that the projection “facilitate a wear of a forefront portion of the sealing lip.” Id. As such, Appellants have not demonstrated error in the Examiner’s conclusion that Hideki’s modified projection 7b facilitates at least some amount of wear to the sealing lip. See Ans. 3 (“The rubbing of the rubber projection on the rubber lip seal will wear the lip seal.... The resulting configuration of the modification to Hideki may also cause wear to the projection, however the resulting device still has all the structural limitations of the claim and is a configuration which can function in the same manner (wearing the lip seal).”). Accordingly, we sustain the Examiner’s rejection of claim 1, as well as claims 2 and 7—9 for which no separate argument was presented. See Appeal Br. 8. DECISION The Examiner’s decision to reject claims 1, 2, and 7—9 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 5