Ex Parte Shibata et al

Patent Trial and Appeal Board

Aug 25, 2017

12867768 (P.T.A.B. Aug. 25, 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.
12/867,768 08/16/2010 Kiyotake Shibata 2010-1095A 2739
513 7590 08/29/2017
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
EXAMINER
YABUT, DANIEL D
ART UNIT PAPER NUMBER
3656
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
ddalecki@wenderoth.com
eoa@ wenderoth. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KIYOTAKE SHIBATA, ISAO HIRAI, KEIZO KOBAYASHI,
and EDI HORA
Appeal 2017-004829
Application 12/867,768
Technology Center 3600
Before THU A. DANG, MICHAEL J. STRAUSS, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 21, 22, 24, and 26. Br. I.2 Claims 1—20, 23, 25, and 27—
34 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
1 Appellants identify the real party in interest as NTN Corporation of Osaka,
Japan. Br. 2.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed April 21, 2016, (2) the Appeal Brief (“App. Br.”) filed September 9,
2016, and (3) the Examiner’s Answer (“Ans.”) mailed December 7, 2016.
Appeal 2017-004829
Application 12/867,768
THE INVENTION
Appellants’ invention is a wheel-bearing device for a vehicle.
Spec. 11. Claim 21 is reproduced below with our emphasis:
21. A wheel bearing device comprising:
a hub wheel comprising:
a wheel attachment flange integrally provided at one end
portion of the hub wheel; and
a smaller-diameter step portion extending in an axial
direction from the wheel attachment flange via a shoulder
portion, and
a wheel bearing press-fitted onto the smaller-diameter step
portion of the hub wheel with a predetermined tightening margin,
the wheel bearing comprising:
an outer member including double-row arcuate
outer rolling surfaces formed integrally on an inner
periphery of the outer member;
a pair of inner races, each of the inner races
including an arcuate inner rolling surface opposed to the
double-row outer rolling surfaces, and the arcuate inner
rolling surfaces being disposed on an outer periphery of
the respective inner race;
double-row balls housed between both the rolling
surfaces of the inner races and the outer member; and
seals mounted into opening portions of an annular
space formed between the outer member and the inner
race, the pair of inner races having smaller-end surfaces
which abut against each other to constitute a double-row
angular bearing,
wherein:
the pair of inner races comprise at least one inner race on
an outboard side, the at least one inner race being provided with
an extended portion extending in an axial direction from a larger-
diameter side of the inner rolling surface of the at least one inner
race;
the at least one inner race has a uniform thickness entirely
along the axial direction of the hub wheel;
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Appeal 2017-004829
Application 12/867,768
a comer portion formed by a shoulder portion of the hub
wheel and the smaller-diameter step portion of the hub wheel is
constituted by a composite recessed curved surface including a
recessed curved surface on a shoulder portion side, a recessed
curved surface on a smaller-diameter step portion side, and a
tangential line connecting the recessed curved surfaces, and the
tangential line constitutes a tapered surface that is gradually
reduced in diameter from the recessed curved surface on the
shoulder portion side toward the recessed curved surface on the
smaller-diameter step portion side;
a clearance is formed between the at least one inner race
and the hub wheel such that the at least one inner race is out of
contact with the hub wheel at a position where an action line
intersects with the hub wheel, the action line being a contact
angle of the balls on the outboard side with the at least one inner
race, with a large-diameter side radially inner surface of the at
least one inner race being formed as a curved surface on an
opposite side of the at least one inner race from the inner rolling
surface of the at least one inner race;
Rb < Ra< Re, where Ra is a maximum curvature radius of
a virtual arc having a first convergence point on an outer
diameter end of the recessed curved surface on the shoulder
portion side of the hub wheel, and a second convergence point
on an extended line of the smaller-diameter step portion of the
hub wheel toward the shoulder portion side, the curvature radius
of the virtual arc being constant, Rb is a curvature radius of the
recessed curved surface on the shoulder portion side, and Re is a
curvature radius of the recessed curved surface on the smaller-
diameter step portion side;
the curvature radius Re is twice or more as large as the
curvature radius Rb;
a length of the tangential line is longer than an arc-length
of the recessed curved surface on the shoulder portion side, and
an axial dimension La of the corner portion of the hub wheel is
1.5 times or more as large as a radial dimension Lr of the corner
portion of the hub wheel; and
a distance between the tangential line and a center of the
virtual arc is less than a distance between the virtual arc and the
center of the virtual arc.
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Appeal 2017-004829
Application 12/867,768
THE REJECTIONS
The Examiner relies on the following as evidence:
Andersson US 5,193,916
Norimatsu et al. JP 2007210356 A
Kubota et al. JP 2008002607 A
Mar. 16, 1993
Aug. 23, 2007
Jan. 10, 2008
Claims 21, 22, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Norimatsu and Andersson.3 Final Act. 2—8.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Norimatsu, Andersson, and Kubota. Final Act. 8—9.
THE REJECTION OVER NORIMATSU AND ANDERSSON
The Examiner finds that Norimatsu teaches every limitation of claim 1
except (1) the inner race having a uniform thickness along an axial direction,
(2) the shape of the recessed curved surface on the shoulder portion side, and
(3) the dimensions of a comer portion. Final Act. 2—7. In concluding that
claim 21 would have been obvious, the Examiner cites Andersson for the
first limitation missing from Norimatsu. Id. at 5. For the other limitations
not found in Norimatsu, the Examiner finds that the only difference between
the prior art and the claims are the device’s relative dimensions, and these
differences would not cause the claimed device to perform differently from
3 The Examiner includes claim 24 in the heading of the § 103 rejection over
Norimatsu and Andersson but does not provide a substantive rejection of
claim 24 over these references. See Final Act. 2—8. For the purposes of this
appeal, we treat claim 24 as rejected over Norimatsu, Andersson, and
Kubota, as stated by the Examiner in the Answer (Ans. 2).
The Examiner’s Findings
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Appeal 2017-004829
Application 12/867,768
the prior-art device. Id. at 5—7 (citing Gardner v. TEC Sys., Inc., 725 F.2d
1338 (Fed. Cir. 1984)). According to the Examiner, Norimatsu’s comer
portion provides the same advantages as Appellants’ comer portion, and
thus, modifying the dimensions of Norimatsu’s comer portion would have
been an obvious matter of design choice. Ans. 6.
Appellants ’ Contentions
Appellants argue that, contrary to the Examiner’s findings, the
claimed dimensions confer an advantage over the prior art. Br. 8.
According to Appellants, the recited comer portion is shaped to suppress
stress when a load is applied to the hub when the vehicle turns. Id. (citing
Spec. 1118).
Issue
Under § 103, has the Examiner erred in rejecting independent claim
21 by finding that it would have been an obvious matter of design choice to
modify an axial dimension of the comer portion of the hub wheel to be 1.5
times or more as large as a radial dimension of the comer portion of the hub
wheel?
Analysis
The disputed limitation of claim 21 calls for, in part, “an axial
dimension La of the comer portion of the hub wheel is 1.5 times or more as
large as a radial dimension Lr of the comer portion of the hub wheel.”
Differences between the prior art and the claimed invention are in these
dimensional limitations. For the reasons discussed below, we are persuaded
the Examiner erred in concluding it would have been an obvious matter of
design choice to modify the prior art to arrive at the claimed invention.
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Application 12/867,768
Specifically, the Examiner’s reliance on Gardner is misplaced. See
Final Act. 5—7; Ans. 5—6. In Gardner, the Federal Circuit affirmed a district
court’s decision invalidating claims where “the dimensional limitations did
not specify a device which performed and operated any differently from the
prior art.” 725 F.2d at 1349.
Unlike the dimensional limitations in Gardner, Appellants have
shown that the limitation at issue here does provide an advantage over the
prior art. Br. 8 (citing Spec. 1118). In particular, the Specification
discloses that the comer portion’s axial dimension (La) is set to 1.5 times or
more as large as its radial dimension (Lr). Spec. 1118. The Specification
discloses this setting suppresses stress generated in the comer portion even
when a vehicle’s turn applies a large moment load on the hub wheel. Id.
According to the Specification, the comer portion’s claimed dimensions
provide improved strength and durability for a part with its size and weight.
Id.
Although the Examiner finds that Norimatsu’s comer portion serves
the same function as the claimed device (Ans. 5—6), the Examiner has not
adequately explained why Norimatsu’s dimensions are insignificant to
performing this function. See Final Act. 6. Such an explanation is
particularly important here because Appellants disclose that the claimed
dimensions do affect the device’s performance. See Spec. 1118, cited in
Br. 8. On this record, the Examiner’s obviousness rationale is based on the
unsupported finding that the claimed dimensional limitations do not specify
a device that performs any differently from Norimatsu’s device
(Final Act. 6). Therefore, Appellants’ argument regarding the comer
portion’s dimensions (Br. 8) is persuasive.
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Application 12/867,768
Because we find this argument (id.) persuasive, we need not reach
Appellants’ remaining arguments (id. at 5—9).
Accordingly, we do not sustain the rejection of independent claim 21
and dependent claims 22 and 26 for similar reasons.
THE REJECTION OVER NORIMATSU, ANDERS SON, AND KUBOTA
We do not sustain the Examiner’s rejection of dependent claim 24 for
the same reasons discussed above in connection with claim 21. The
additional reference, Kubota, is not relied upon to teach the limitation that is
missing from Norimatsu, and, thus, does not cure the deficiency discussed
above. See Final Act. 8—9.
DECISION
We reverse the Examiner’s rejection of claims 21, 22, 24, and 26.
REVERSED
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