Ex Parte Yamashita et al

Patent Trial and Appeal Board

Nov 20, 2014

12076233 (P.T.A.B. Nov. 20, 2014)

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.
12/076,233 03/14/2008 Kiichiro Yamashita K06-246870/TBS 4364
21254 7590 11/21/2014
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
CHARLES, MARCUS
ART UNIT PAPER NUMBER
3656
MAIL DATE DELIVERY MODE
11/21/2014 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 KIICHIRO YAMASHITA, MASAO TAKIMOTO, and
YOUICHI TSUZAKI
____________

Appeal 2012-008297
Application 12/076,233
Technology Center 3600
____________________

Before STEFAN STAICOVICI, JILL D. HILL and
TIMOTHY J. GOODSON, Administrative Patent Judges

GOODSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants Kiichiro Yamashita et al. appeal under 35 U.S.C. § 134(a)
from the rejection of claims 1, 2, 4–6, 8–10, and 12. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
The claims are directed to a tapered roller bearing. Claim 1 illustrates
the subject matter on appeal and is reproduced below:

Appeal 2012-008297
Application 12/076,233

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1. A tapered roller bearing apparatus comprising:
an outer ring that includes an outer-ring raceway formed
in an inner circumferential surface thereof;
an inner ring which includes a large-diameter portion
including a cylindrical portion with a substantially uniform
outer diameter, a large rib portion including an outer
circumferential surface and a guide surface continued to the
outer circumferential surface, an inner-ring raceway, and a
small-diameter cylindrical portion which are sequentially
formed from one end to the other end, and are subjected to a
heat treatment to have a surface-hardened layer;
a plurality of tapered rollers which are rollably disposed
between the inner-ring raceway and the outer-ring raceway, a
large-diameter end surface of the tapered roller being guided by
the guide surface,
wherein an angle formed between the guide surface and
the outer circumferential surface is obtuse, and
wherein an angle α formed between a line parallel to an
axis and the outer circumferential surface of the large rib
portion is in a range of 45° < α < 90°.

PRIOR ART
The Examiner relies on the following evidence:
Ohtsuki
Hacker
US 6,280,093 B1
US 6,644,861 B2
Aug. 28, 2001
Nov. 11, 2003

GROUND OF REJECTION
Claims 1, 2, 4–6, 8–10, and 12 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hacker in view of Ohtsuki. Ans. 4.

OPINION
Claim 1 recites that the inner ring “includes a large-diameter portion
including a cylindrical portion with a substantially uniform outer diameter.”
App. Br. 21, Clms. App. Independent claims 5 and 9 recite an inner shaft
Appeal 2012-008297
Application 12/076,233

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that includes this same limitation. Id. at 22–23. The Examiner’s rejection of
claims 1, 5, and 9 is predicated on a finding that Hacker discloses the
claimed large diameter portion. Ans. 4 (citing Hacker, Fig. 8). The Answer
includes an annotated reproduction of Hacker’s Figure 1 in which the
Examiner has added a label indicating where the Examiner finds that the seal
is “contacting the cylindrical portion.” Id. at 8. Appellants challenge the
Examiner’s finding that Hacker teaches the claimed large-diameter portion,
arguing that the portion of Hacker’s inner ring to which the Examiner refers
is “inclined” and therefore does not have “a substantially uniform outer
diameter,” as claimed. App. Br. 11.
We agree with Appellants that the evidence of record does not support
the Examiner’s finding that Hacker teaches a large-diameter portion as
claimed. In the region that the Examiner has identified as the “cylindrical
portion,” it is not clear whether a cylindrical portion exists. Rather, the outer
diameter appears to be increasing in the left-to-right direction. Thus, the
Examiner does not establish a sound basis that Hacker teaches “a large-
diameter portion including a cylindrical portion with a substantially uniform
outer diameter.” Furthermore, the Examiner’s use of the disclosure of
Ohtsuki does not remedy the deficiency of Hacker as discussed above. See
Ans. 4–5. Accordingly, because the Examiner has not provided any
persuasive evidence or technical reasoning why the cited references render
obvious “a large-diameter portion including a cylindrical portion with a
substantially uniform outer diameter,” the Examiner fails to carry the burden
of establishing unpatentability as to claims 1, 5, and 9. See In re Warner,
379 F.2d 1011, 1016 (CCPA 1967) (“[T]he precise language of 35 U.S.C.
§ 102 that ‘(a) person shall be entitled to a patent unless,’ concerning
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Application 12/076,233

4
novelty and unobviousness, clearly places a burden of proof on the Patent
Office which requires it to produce the factual basis for its rejection of an
application under sections 102 and 103.”).
Claims 2 and 4 depend from claim 1. Claims 6 and 8 depend from
claim 5. Claims 10 and 12 depend from claim 9. The deficiency of the
Examiner’s rejection of claims 1, 5, and 9 likewise applies to claims 2, 4, 6,
8, 10, and 12. For the foregoing reasons, we do not sustain the Examiner’s
rejection of claims 1, 2, 4–6, 8–10, and 12.

DECISION
We REVERSE the Examiner’s rejection of claims 1, 2, 4–6, 8–10,
and 12.

REVERSED

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