Ex Parte Zhong et al

Patent Trial and Appeal BoardOct 22, 2012

10841209 (P.T.A.B. Oct. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PING ZHONG and GABRIEL DAMON RUPERTUS ____________________ Appeal 2010-010264 Application 10/841,209 Technology Center 3700 ____________________ Before: STEFAN STAICOVICI, JAMES P. CALVE and SCOTT A. DANIELS, Administrative Patent Judges. DANIELS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010264 Application 10/841,209 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 28-36. Claims 1-27 are canceled and claims 37-44 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ invention relates to a bearing assembly for a rotating shaft, for example a rotating drive shaft of a large synchronous motor, and more particularly to an insulation assembly which insulates the bearing assembly from high and low frequency current. Spec. 14, Abstr. and Fig. 5. Claim 28, reproduced below, is representative of the claimed subject matter: 28. An apparatus comprising: a bearing assembly configured to be positioned in a bearing assembly opening of a bearing bracket of a rotating machine, the bearing assembly including: a rolling element bearing configured to surround a shaft of the rotating machine, the rolling element bearing having an inner bearing side, an opposite outer bearing side, and an outer race that has a radial outer surface; an inner cap having a portion facing the inner bearing side; an outer cap having a portion facing the outer bearing side; and an insulation assembly configured to substantially insulate the rolling element bearing, the insulation assembly having: a portion positioned between the inner bearing side of the rolling element bearing and the inner cap that will always be closer to the inner bearing side than will the inner cap; a portion that separates the radial outer surface of the outer race of the rolling element bearing from any other portion of the apparatus; and Appeal 2010-010264 Application 10/841,209 3 a portion positioned between the outer bearing side of the rolling element bearing and the outer cap that will always be closer to the outer bearing side than will the outer cap. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Libert Cotton Bramel US 2,509,775 US 4,714,576 US 7,071,589 B2 May 30, 1950 Dec. 22, 1987 Jul. 4, 2006 REJECTIONS The Examiner made the following rejections: Claims 28-36 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Ans. 3. Claims 28, 29, 31, 33, 35, and 36 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Libert. Ans. 3-4. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Libert and Bramel. Ans. 5. Claims 32 and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Libert and Cotton. Ans. 6. ANALYSIS Claims 28-36 as indefinite Where claim 28 is the only independent claim at issue, and claims 29- 36 depend either directly or indirectly from claim 28, the Examiner found that the separate recitations of the term(s) “‘a portion’” in claim 28 are indefinite because it is unclear whether these recitations “are referring to the same portion or different portions of an insulation assembly.” Ans. 3. We Appeal 2010-010264 Application 10/841,209 4 agree with Appellants that a person of ordinary skill in the art would understand what is claimed when claim 28 is read in light of Appellants’ Specification which discloses that the insulation assembly 300 includes an inner insulating ring 310, an outer insulating bushing 320 configured to electrically insulate the bearing 130 by defining a portion 322 of bushing 320 circumferentially surrounding the outer race 134 of bearing 130, and that additional portions of bushing 320 and ring 310 are disclosed as positioned between the bearing 130 and the outer bearing cap 255 and the inner bearing cap 260 respectively. See Spec. 13-14; Fig. 5 and Br. 3-4. Additionally, claim 28 recites in appropriate antecedent form each “a portion” as an independent element including appropriate functional and structural distinctions from each of the other “a portion” elements. These functional and structural distinctions are commensurate in scope with, and fully supported by, Appellants’ Specification sections and Figure 5 noted above. See Br. Clms. Appx. Thus, we cannot sustain the rejection of claims 28-36 as indefinite. Claims 28-29, 31, 33 and 35-36 as being anticipated by Libert. The Examiner found that Libert’s Figure 1 disclosed all the elements of the claimed bearing assembly as recited in claim 28 including the respective three “a portion” elements of the insulation assembly 300, more specifically, (a) “a portion positioned between the inner bearing side [131] of the rolling element bearing [130];” (b) “a portion (34) that separates the radial outer surface of the outer race of the rolling element bearing from any other portion of the apparatus”; and (c) “a portion positioned between the outer bearing side of the rolling element bearing and the outer cap.” Ans. 4. Emphasis Added. The Examiner also found that Libert discloses a seal 16 including the structural and positional limitations of the insulating structure Appeal 2010-010264 Application 10/841,209 5 portion (a) noted above, “that will always be closer to the inner bearing side than will the inner cap [because] (the right side of 16 will always be closer to the inner bearing side than will the inner cap (the left side closer to 44)[)].” Id. Similarly, the Examiner found that Libert’s seal 18 discloses the relevant limitations relating to insulating structure portion (c) above, “that will always be closer to the outer bearing side than will the outer cap (the left side of 18 will always be closer to the outer bearing side than will the outer cap (a portion of 12 that is located closer to 22.)[]” Id. Libert’s Figure 1 discloses two opposing seals 16 and 18 on either side of the rolling bearing element 10, where seal 16 is generally located between the inner cap (plate 28) and bearing element 10 on one hand, and on the other hand seal 18 is located generally between the outer cap (cover plate 12) and bearing element 10. Appellants’ annotated Figure 1 of Libert is reproduced below: App App inner that, Br. eal 2010-0 lication 10 Appellan cap 28 w [b of no 16 si be be po cl w 7-8. Emph 10264 /841,209 ts’ annota ith seal 16 ]ecause pl bearing 1 t meet th will not de of bear cause plat aring 10, rtion C.[] oser to the ill plate 12 asis added ted Figure , and outer ate 28 tou 0 (see arro e claimed always be ing 10 th e 12 touch oil seal 1 That is, o outer bea . . 6 1 of Libe cap 12 w ches the w 1 abov portion A closer to an will p es the ou 8 does not il seal 18 ring side rt depicts b ith seal 18 inner bear e), oil seal . That is the inner late 28. S ter bearin meet the will not a of bearing earing ele . Appellan ing side 16 does , oil seal bearing imilarly, g side of claimed lways be 10 than ment 10, ts explain Appeal 2010-010264 Application 10/841,209 7 We agree with Appellants that a portion of each of the inner cap 28 and outer cap 12 extends axially past the respective inner and outer seals 16 and 18 to bear on the respective inner and outer races of the bearing element 10, thus bringing a portion of each of the inner and outer cap 28, 12 closer to the bearing than the seals 16, 18. The Examiner’s interpretation of the positionally limiting phrase of “a portion … that will always be closer to the inner bearing side than will the inner cap;” is unreasonably broad and inconsistent with Appellants’ Claims and Specification. To the contrary, Appellants’ Specification describes no portion of the inner bearing cap 260 as being closer to the bearing assembly 250 than the respective insulating portion 310 of the insulating assembly and further reveals no portion of the outer bearing cap 255 being closer to the bearing assembly 250 than the insulation assembly portion 320.1 See Spec. 14, fig. 5. See also, Br. 5. As such we cannot sustain the anticipation rejection of claims 28-29, 31, 33 and 35-36. Claim 30 as being obvious over Libert and Bramel, and claims 32 and 34 as obvious over Libert and Cotton. Turning to the obviousness rejections with regards to claims 30, 32 and 34, the addition of neither Bramel nor Cotton remedies the deficiencies of Libert as described supra. Thus, the rejections of claim 30 over the combined teachings of Liber and Bramel and of claims 32 and 34 over the combined teaching of Libert and Cotton likewise cannot be sustained. 1 Appellants’ annotated Figure on page 5 of the Appeal Brief illustrates by way of example the drawing disclosure of insulation portions A, B and C and relative structural and positional relationships corresponding to the three claimed “a portion” elements of the insulation assembly. Appeal 2010-010264 Application 10/841,209 8 DECISION For the above reasons, the Examiner’s rejections of claims 28-36 are reversed. REVERSED hh