ROLLER BEARING COMPANY OF AMERICA, INC.Download PDFPatent Trials and Appeals BoardMar 19, 20212020004885 (P.T.A.B. Mar. 19, 2021) Copy Citation 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. 14/438,785 04/27/2015 Scott McNeil 1001-0259WOUS 6656 140282 7590 03/19/2021 Murtha Cullina LLP One Century Tower 265 Church Street New Haven, CT 06510 EXAMINER PILKINGTON, JAMES ART UNIT PAPER NUMBER 3656 NOTIFICATION DATE DELIVERY MODE 03/19/2021 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): ipdocketing@murthalaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SCOTT MCNEIL, SCOTT CROSSMAN, DAVID COOMBE, CHEWTON KEYNSHAM, and JAY PHOENIX Appeal 2020-004885 Application 14/438,785 Technology Center 3600 Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. Opinion for the Board filed by FITZPATRICK, Administrative Patent Judge Opinion Concurring filed by CAPP, Administrative Patent Judge FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, Roller Bearing Company of America, Inc.,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 26–29, 32, 33, 41, 43, and 51. We have jurisdiction under 35 U.S.C. § 6(b). A telephonic oral hearing was held February 22, 2021. A transcript of the hearing was entered in the record. We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies itself as the sole real party in interest. Appeal Br. 3. Appeal 2020-004885 Application 14/438,785 2 STATEMENT OF THE CASE The Specification The Specification states that the claimed “invention is directed to bearings and, more particularly, to hybrid bearings for use in fixed wing aircraft flap hinge arms.” Spec. ¶1. The Specification explains: Because the flaps are mounted along the wings in the directions in which the wings extend, increasing the curvature of a wing causes stress at the points at which the flaps are coupled to the wing. Bearings are used at these points in conjunction with linkages to enable the flaps to be extended and angled in response to pilot control. Placing stresses on the points at which the flaps are coupled to the wings may compromise the operation of the bearings, which in turn may affect the positioning of the flaps and operation of the aircraft. Id. ¶2. The Claims Claims 26–29, 32, 33, 41, 43, and 51 are rejected. Final Act. 1. Claims 1–25, 30, 31, 34–40, 42, 44–50, and 52–55 are cancelled. Appeal Br. Claims App. No other claims are pending. Id. Independent claim 26 is representative and reproduced below. 26. A flap hinge arm (40) of a fixed wing aircraft, comprising: an arm (42); a connecting rod (44) pivotally connected to the arm (42) and pivotally connectable to a flap (54); and a bearing assembly (10, 110, 210, 310, 410) positioned on the arm and connectable to a wing of the fixed wing aircraft, the bearing assembly comprising: a bearing comprising: an outer race (14, 114, 214, 314, 414) having an inner surface (26) defining a concave contour; Appeal 2020-004885 Application 14/438,785 3 an inner race (12, 112, 212, 312, 412) positioned in the outer race (14, 114, 214, 314, 414), the inner race (12, 112, 212, 312, 412) having an inner surface (18) defining a bore (22) therethrough and an outer surface (20) defining at least one groove (17) circumscribing the outer surface (28); the bearing assembly further comprising a shaft (23) extending through the bore (22) of the inner race (12, 112, 212, 312, 412), the shaft (23) having an exterior surface (25) a plurality of rolling elements (16, 116, 216, 316, 416) rollably located in the at least one groove and in rolling contact with the inner surface (26) of the outer race (14, 114, 214, 314, 414); and a lubricious liner (36, 136, 236, 336, 436) having an inner liner-surface (36B) and an exterior liner-surface (36A), the inner liner-surface (36B) engaging the exterior surface (25) of the shaft (23), the exterior liner-surface (36A) engaging the inner surface (18) defining the bore (22), the lubricious liner (36, 136, 236, 336, 436) is an angular misalignment feature disposed between the shaft (23) and the inner race (12, 112, 212, 312, 412) and a torque dependent rotational fail-safe mechanism; wherein the angular misalignment feature is configured to accommodate angular misalignment between the shaft (23) and the inner race (12, 112, 212, 312, 412); and wherein during normal operation the bearing assembly is configured to accommodate rotation of the outer race (14, 114, 214, 314, 414) relative to the inner race (14, 114, 214, 314, 414) and to rotationally fix the inner race (12, 112, 212, 312, 412) relative to the shaft (23) when a torque exerted on the outer race (14, 114, 214, 314, 414) is up to a first torque magnitude 11, and wherein during anomalous operation or when the bearing seizes, the torque exerted on the outer race (14, 114, 214, 314, 414) is of a second torque magnitude that exceeds the first torque magnitude t1 and the torque dependent rotational fail-safe mechanism is configured to accommodate rotation of the inner race (12, 112, 212, 312, 412) relative to the shaft (23). Appeal 2020-004885 Application 14/438,785 4 Claims App. The Examiner’s Rejections The following rejections, all pursuant to 35 U.S.C. § 103(a), are as follows: 1. claims 26, 33, 41, and 43 as unpatentable over Uchida2 and Tsumori3 (id. at 3); 2. claim 27 as unpatentable over Uchida, Tsumori, and Grafstrom4 (id. at 6); 3. claims 28 and 29 as unpatentable over Uchida, Tsumori, and Tanaka5 (id.); 4. claim 32 as unpatentable over Uchida, Tsumori, and Gyuricsko6 (id. at 7); and 5. claim 51 as unpatentable over Uchida, Tsumori, Gyuricsko, and Hamel7 (id. at 8). DISCUSSION Rejection 1 Claim 26 Uchida “relates to an aircraft control surface operating device, and more particularly relates to an aircraft control surface operating device which incorporates at least one bearing joint.” Uchida ¶2. The Examiner 2 US 2012/0091283 A1, published Apr. 19, 2012 (“Uchida”). 3 JP9-236120, published Sept. 19, 1997 (“Tsumori”). Our citations to Tsumori are to the English translation in the file history. 4 US 5,119,446, issued June 2, 1992 (“Grafstrom”). 5 US 7,938,583 B2, issued May 10, 2011 (“Tanaka”). 6 US 2011/0220762 A1, published Sept. 15, 2011 (“Gyuricsko”). 7 US 8,034,865 B2, issued Oct. 11, 2011 (“Hamel”). Appeal 2020-004885 Application 14/438,785 5 found that Uchida substantially discloses the subject matter of claim 26 except for the specifics of the bearing assembly. Final Act. 3. In particular, the Examiner read claim 26’s “arm (42)” on Uchida’s “drive link 126,” claim 26’s “connecting rod (44)” on Uchida’s “first swing arm portion 180,” and claim 26’s “flap (54)” on Uchida’s “flap 116.” Id.; see also Uchida ¶¶28, 52, 54, Figs. 9–11. Tsumori “relates to an automatic aligning roller bearing for rotatably supporting a guide roll or the like.” Tusmori ¶1. The Examiner found that Tsumori teaches a bearing assembly having the features recited in claim 26. Final Act. 3–4 (citing Tsumori reference numerals 11–16, 30, and 31). The Examiner concluded: It would have been obvious to one having ordinary skill in the art to modify Uchida and substitute any previously known bearing configuration, including one that includes using rolling elements on a concave surface to allow pivoting and a liner to accommodate misalignment, as taught by Tsumori, since substituting a plain spherical bearing for a roller spherical bearing provides the same predictable result of allowing rotation between relative parts while accommodating for pivoting or misalignment. Id. at 5; see also id. at 10–11 (“The use of previously known bearings in a different device is within the level of ordinary skill and replacing one bearing with another does not destroy the function of the original device as relative motion would still be supported via a bearing element.”). Appellant argues the “Examiner has failed to provide any articulated reasoning with factually based rational underpinning to support the modification of Uchida with the bearing of Tsumori.” Appeal Br. 10. This is erroneous, as evident from the Examiner’s reasoning we have quoted. Appeal 2020-004885 Application 14/438,785 6 Appellant argues “one of ordinary skill in the field of flap hinge arms of a fixed wing aircraft would not have had any knowledge of bearings outside of this field, such as the alignment needs of the continuous casting of high temperature steel ingot supporting guide rolls of Tsumori.” Id. However, Tsumori clearly provides such knowledge. The extent of to whom Tsumori provides that knowledge is the issue. Thus, the question becomes whether Tsumori is analogous art, i.e., whether it should be treated as prior art here. See In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two criteria have evolved for determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 658–59. Appellant argues that Tsumori is not analogous art under either prong. Appeal Br. 11–16. With respect to the first prong, Appellant argues that Applicant’s field is “flap hinge arms of a fixed wing aircraft (see the Background section of the present application at paragraphs [0002] and [0003]),” whereas “Tsumori’s field of endeavor is guide rolls for supporting steel ingots in a high temperature continuous casting system (see Tsumori translation, paragraphs [0002] to [0007]).” Appeal Br. 11. The Examiner responds that Applicant’s field is broader as extending to bearings generally. Ans. 5 (citing Spec. ¶1, original claim 1). We agree with the Examiner, as the Specification states that “[t]he present invention is directed to bearings” even though it also discloses a particular use for them in fixed wing aircraft flap Appeal 2020-004885 Application 14/438,785 7 hinge arms. Spec. ¶1. Also, original claim 1 indeed was directed to: “A bearing assembly.” Appellant cites Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380 (Fed. Cir. 2019) as holding that “the field of endeavor [can be] based on an express disclosure in the Background of the Invention section of the applicant’s specification.” Appeal Br. 11. Appellant then cites the “Background” section of the Specification. Id. (citing Spec. ¶¶2–3). Airbus, however, is not contrary to the Examiner’s finding here, which is based on the Specification’s “Technical Field” section (i.e., Spec. ¶1) and the preamble of original claim 1. Although Airbus may bless consulting the “Background of the Invention section,” it does not foreclose consulting other aspects of the Specification. In fact, Appellant itself, after citing Airbus, identifies a different reference (Uchida) based on its title. See Appeal Br. 11 (“Uchida’s field of endeavor is an aircraft control surface operating device (Uchida, Title).”). It was entirely appropriate for the Examiner to find Tsumori’s field of endeavor based on Tsumori’s explicit identification of its “Technical Field.” It was also appropriate for the Examiner to base that finding additionally upon the preamble of Appellant’s original claim 1. See Airbus, 941 F.3d at 1380–81 (affirming Board’s field of endeavor finding based on “the title of the ’752 patent and the preamble of a single claim not at issue on appeal”). Although Tsumori need only satisfy one prong of the Clay test in order to qualify as analogous art and we find that it satisfies the first prong, we nonetheless address the second prong. With respect to the second prong, Appellant argues: Appeal 2020-004885 Application 14/438,785 8 One skilled in the art would not have logically commended itself to considering Tsumori to solve the problem of aircraft which are exposed to sub-freezing temperatures (see Inv. Decl. para. 3) in which stresses on the points at which the flaps are coupled to the wings during angling the flaps and increasing the curvature of the wing which may compromise the operation of the bearings that can affect operation of the aircraft, faced by Applicant. (See Second Sub. Spec. para. [0003]). Appeal Br. 14 (emphasis added); see also id. at 15 (“The presently claimed invention is directed to bearings employed in aircraft wings at sub-freezing temperatures.” (emphasis added)). The cited declaration testimony states: “Because of the high elevation that aircrafts operate at (e.g., 30,000 to 40,000 feet), the aircraft wing and bearings therein are exposed to subfreezing temperatures of -40º F to -70º F.” McNeil Decl. ¶3. The Examiner responds that “the claim has nothing to do with specific material or temperatures.” Ans. 7. The Examiner further responds: [T]he disclosure of the instant application is not concerned specifically with operation conditions of the aircraft and overall bearing function but is rather focused on one particular problem within the bearing which is related to misalignment and excessive torque between the shaft and bearing, these are problems that are not isolated to aircraft but is rather a problem in all bearings. Thus as this argument is focused solely on aircraft considerations, or considerations of the environment of the intended use, they are not persuasive as the pertinent problem addressed by Appellant in the disclosure is in the relationship of the inner ring to the shaft. Id. For multiple reasons, Appellant’s arguments do not apprise us of error. First, as the Examiner points out, claim 26 does not recite limitations directed to the operating temperature of the bearings. Second, although Appellant cites testimony that airplanes are intended to operate at high elevations and thus subfreezing temperatures (see Appeal Br. 14 (citing Appeal 2020-004885 Application 14/438,785 9 McNeil Decl. ¶3)), Appellant does not cite evidence probative that flaps are designed to operate at those elevations, i.e., “30,000 – 40,000.” At best, Appellant offered attorney argument during the hearing that, although flaps are not typically operated at those high elevations, they might need to be. See Tr. 11:20–23 (“It’s possible that, you know, you could have some type of loss of cabin pressure or something that would require a quick descent, or to avoid some upcoming turbulence, and at that point you’d have to operate during the sub-freezing temperatures.”). But attorney argument is not evidence. Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is no substitute for evidence.”). Third, we agree with the Examiner that the particular problem with which applicant was involved was “related to misalignment and excessive torque between the shaft and bearing” and not to operating temperature. Ans. 7. Fourth, and even assuming that operation of flaps at sub-freezing temperatures was the particular problem with which the inventor was involved, Appellant conceded that “pack[ing] the bearings with grease to withstand severe sub- freezing temperatures” was “well known in the art.” Tr. 10:24–11:2. In other words, Tsumori cannot be considered not reasonably pertinent to the problem of operating flaps at sub-freezing temperatures because the person of ordinary skill in the art would have known that the purported impediment could be remedied by choosing an appropriate grease for the bearings. We have considered all of Appellant’s arguments regarding Tsumori’s status as analogous art, but we find that Tsumori is analogous art under either Clay prong. We turn now to Appellant’s argument that modifying Uchida in view of Tsumori would render Uchida in operable for its intended purpose. Appeal 2020-004885 Application 14/438,785 10 Appellant argues that “Uchida’s bolts 161 and bearings are both axially locked in place in the structures 146 and 170 and modifying Uchida’s structure to allow axial movement of the bearings relative to the shaft as suggested by the Examiner, would create unpredictable movement and inconsistent control of the flap.” Appeal Br. 16. Appellant further argues that “modifying Uchida’s structure to allow the bolts to axially move would result in loss of the ability to secure the bearing in place.” Id. The Examiner responds, in part, by correctly pointing out that bodily incorporation is not a requirement for obviousness. Ans. 8 (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Keller, 642 F.2d at 425. The Examiner further responds that “Tsumori is concerned with an arrangement that can absorb alignment error, [which can be accomplished] in Uchida without destroying the overall function of the bearing and hinge.” Ans. 9. The Examiner has the better position, as Appellant’s arguments appear erroneously premised on a person of ordinary skill being an automaton and lacking ordinary creativity and skill. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). In particular, Appellant stresses that, “[i]f one skilled in the art was to replace Uchida’s bearing 158 that is secured to the swing arm 170 via the bolt assembly 163 with Tsumori’s bearing 10 with the axially sliding shaft 31, the modification would render Uchida’s drive link inoperable for its intended purpose, at least because of the failure to secure the bearing to the swing arm 170, as required by Uchida.” Appeal Br. 17 (emphasis added). But the Examiner Appeal 2020-004885 Application 14/438,785 11 cogently responds that “relative axial movement would still be limited by the swing arm 170 as this forms a u-shaped bracket that surrounds the bearing and thus limiting any relative movement to a confined range, this range would be used to compensate for misalignment and actually would not prevent the hinge from functioning and thus would not destroy the intended purpose or operation of Uchida.” Ans. 9. And the ordinary skilled artisan possesses the requisite skill and creativity to adjust the width of the bracket as needed, as well as make other obvious modifications. Appellant argues “the principles of operation of Uchida’s drive link device (e.g., bearing 158 secured between the opposing legs of the U-Shaped swing arm) would have to be changed to accommodate the axial sliding of Tsumori’s guide shaft.” Appeal Br. 19. The Examiner responds that the modification does not change the principle of operation, explaining as follows: The bearing itself would still function the same and support the moving parts of the hinge. The bearing would still be placed in the u-shaped swing arm and any axial movement in the system would be bound by the swing arm this would not change the principles of operation but rather provide a mechanism to compensate for misalignment due to a number of factors including thermal changes. The fact that the bearing is configured to allow for the shaft to move within the bearing as the shaft expands or contracts does not change how the bearing itself functions, the bearing still functions by supporting a rotating element relative to a stationary one, this would still be the case in Uchida even if the bearing does move along the shaft from time to time, the movement between the parts would be compensated for by the fact that the bearing is a pivot bearing and can account for misalignment of the linkage arm. Ans. 10. Again, the Examiner has the better position. First, Appellant’s argument is based on a misidentification of Uchida’s principle of operation Appeal 2020-004885 Application 14/438,785 12 as “bearing 158 secured between the opposing legs of the U-Shaped swing arm.” (Appeal Br. 19) as opposed to “supporting a rotating element relative to a stationary one” (Ans. 10). Second, in the modification, Tsumori’s bearing is secured (e.g., confined within a range) between the opposing legs of the u-shaped bracket. Appellant argues that the proposed modification does not satisfy the “angular misalignment feature” of claim 26. Appeal Br. 19–20. The relevant portion of claim 26 recites: an angular misalignment feature disposed between the shaft (23) and the inner race (12, 112, 212, 312, 412) and a torque dependent rotational fail-safe mechanism; wherein the angular misalignment feature is configured to accommodate angular misalignment between the shaft (23) and the inner race (12, 112, 212, 312, 412); and wherein during normal operation the bearing assembly is configured to accommodate rotation of the outer race (14, 114, 214, 314, 414) relative to the inner race (14, 114, 214, 314, 414) and to rotationally fix the inner race (12, 112, 212, 312, 412) relative to the shaft (23) when a torque exerted on the outer race (14, 114, 214, 314, 414) is up to a first torque magnitude t1, and wherein during anomalous operation or when the bearing seizes, the torque exerted on the outer race (14, 114, 214, 314, 414) is of a second torque magnitude that exceeds the first torque magnitude t1 and the torque dependent rotational fail-safe mechanism is configured to accommodate rotation of the inner race (12, 112, 212, 312, 412) relative to the shaft (23). Claims App. (emphasis added). Appellant argues that the italicized limitations “define structure of the bearing” that is “not taught or suggested by the proposed combination of Uchida and Tsumori.” However, Appellant does not articulate what that structure would be. The only structure identified in the claim is “the lubricious liner,” which itself “is an angular Appeal 2020-004885 Application 14/438,785 13 misalignment feature.” Claims App. We agree with the Examiner that (1) “[a]ny liner can compress to some degree to accommodate misalignment,” (2) “any liner, if not adhered to both the inner ring and shaft, can allow slipping between the parts,” and (3) “Tsumori only discloses that the liner is adhered to the inner ring.” Ans. 11. Appellant’s conclusory arguments about the angular misalignment feature do not apprise us of error. Lastly, Appellant argues that the proposed modification does not satisfy the limitation of claim 26 that “the torque exerted on the outer race is of a second torque magnitude that exceeds the first torque magnitude.” Appeal Br. 20. Appellant argues that “Tsumori’s liner is at a high temperature via contact with the high temperature shaft and the liner would not operate at the same at subfreezing temperatures at least because the liner has a higher coefficient of friction at sub-freezing temperatures.” Id. This argument is not persuasive because claim 26 does not recite that the normal and anomalous operations occur at subfreezing temperatures. Rather, as the Examiner responds, the “recitation [about torque magnitudes] is merely defining how a slip sleeve functions.” Ans. 12. It “rotates with the shaft until torque gets too high and then allows the sleeve to slip on the shaft.” Id. Appellant has not apprised us of error in the rejection of claim 26. Accordingly, we affirm the rejection of claim 26. Claims 33, 41, and 43 Appellant argues against the rejection of claims 33, 41, and 43 only on the basis of their dependency from claim 26. Appeal Br. 21. Because Appellant does not apprise us of error in the rejection of claim 26 as discussed above, we likewise affirm the rejection of claims 33, 41, and 43. Appeal 2020-004885 Application 14/438,785 14 Rejections 2–5 For each of these rejections, the Examiner relies on Uchida and Tsumori in view of one or more additional references. Final Act. 6–10. Appellant’s sole argument against these rejections is that the additional references do not cure the alleged deficiencies in the rejection of claim 26 over Uchida and Tsumori. See, e.g., Appeal Br. 21 (“Grafstrom fails to remedy the deficiencies of Uchida in view of Tsumori.”). Because Appellant does not show any such deficiency in the rejection of claim 26 as discussed above, we affirm these additional rejections. SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 26, 33, 41, 43 103 Uchida, Tsumori 26, 33, 41, 43 27 103 Uchida, Tsumori, Grafstrom 27 28, 29 103 Uchida, Tsumori, Tanaka 28, 29 32 103 Uchida, Tsumori, Gyuricsko 32 51 103 Uchida, Tsumori, Gyuricsko, Hamel 51 Overall Outcome 26–29, 32, 33, 41, 43, 51 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SCOTT MCNEIL, SCOTT CROSSMAN, DAVID COOMBE, CHEWTON KEYNSHAM, and JAY PHOENIX Appeal 2020-004885 Application 14/438,785 Technology Center 3600 OPINION CONCURRING CAPP, Administrative Patent Judges I concur in the result reached by the panel in all respects. I write separately to express concern over Appellant’s candor or, rather, lack thereof, regarding its temperature related evidence and argument before the Examiner and before the Board. The Federal Circuit substantially revised the standards for establishing inequitable conduct in the case of Therasense, Inc. v. Becton, Dickenson and Co., 649 F.3d 1276 (Fed. Cir. 2011). However, one principle of inequitable conduct that remains in our post-Therasense world is that when a patent applicant engages in affirmative acts of egregious misconduct, such as the filing of an unmistakably false or misleading affidavit, such conduct is material. Id. at 1292. “There is no room to argue that submission of false affidavits is not material.” Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 1571 (Fed. Cir. 1983). Appeal 2020-004885 Application 14/438,785 2 As articulated in the panel decision, the use of bearings is ubiquitous in vehicles and machinery. It is common that a particular bearing design may be useful in a broad array of product applications. In selecting a particular design of a bearing for a particular product application, we would expect a person of ordinary skill in the art to look at factors such as the forces encountered in use. Of considerably less importance would be if the bearing happens to be used in a bulldozer, a piece of industrial machinery, or an airplane. During prosecution prior to the instant appeal, the Examiner entered a final rejection on June 10, 2019. Among other things, the Examiner rejected claim 26 over Uchida and Tsumori. Office Action June 10, 2019. In response to the office action, Appellant filed amended claims, a request for continued examination, and an affidavit. Amendment, Request for Continued Examination, and Affidavit dated Sept 6, 2019. In the Remarks accompanying the amendment, Appellant argued that Tsumori is non- analogous art. Amendment, Sept. 6, 2019, p. 9. Appellant argued that flap bearings in fixed wing aircraft are subject to sub-freezing temperatures due to the cruising altitudes at which they fly. Id. p. 10. Appellant also submitted an Affidavit of Scott McNeil, a co-inventor of the instant application. Inventor Declaration Sept. 6, 2019. In the affidavit, Mr. McNeil testifies that aircraft wings and bearings are exposed to sub-freezing temperatures. Id. ¶ 3. Mr. McNeil then testifies that the coefficient of friction of lubricious liners increases with decreasing temperature. Id. ¶ 4. Mr. McNeil then testifies that his employer constructed a specialized test facility and conducted tens of thousands of hours of testing of bearings with lubricious liners. Id. ¶¶ 5–6. Mr. McNeil then provides a graph depicting Appeal 2020-004885 Application 14/438,785 3 “portions” of the test results and explains that the graph shows that the coefficient of friction of certain otherwise unidentified, unspecified materials increases as temperature decreases to approximately -55o C. Id. ¶¶ 7–8. Mr. McNeil then reaches the following conclusions: 9. Based on my experience and the above described testing, one skilled in the relevant art would be discouraged from choosing a bearing that has a lubricious liner in flaps on an aircraft wings [sic] as it will take more force to actuate the actuation system for the flaps because of the higher coefficient of friction as shown in the graph above. 10. Based on my experience and the above described testing, one skilled in the relevant art would be discouraged from choosing a bearing that includes a liner used in flaps on an aircraft wing because the coefficient of friction increases with decreasing temperature and the aircraft wing is exposed to temperatures as low as -55°C, described above. Id. ¶¶ 9–10. It is clear from his testimony that Mr. McNeil intends to convey that he contemplates that an aircraft would extend or retract its flaps at cruise altitude. Id. at 9 (“it will take more force to actuate the actuation system for the flaps because of the higher coefficient of friction”). In the Remarks that accompany Appellant’s Amendment and Affidavit, Appellant argues that the Tsumori reference is non-analogous to the instant application because Tsumori allegedly operates at relatively high temperatures whereas the invention under review operates at “sub-freezing” temperatures. Amendment Sept. 6, 2019, pp. 10–11. Appellant explicitly argues that Appellant’s wing flap bearings operate at sub-freezing temperatures. Id. at 11. 8 “[T]he coefficient of friction for bearings with 8 When Appellant represents that flaps “operate” at such temperatures, we interpret this to mean that the flaps are extended and/or retracted, as opposed to remaining in a fully stowed position. Appeal 2020-004885 Application 14/438,785 4 liners is substantially higher at the sub-freezing temperatures that bearings in aircraft wing flaps operate in compared to those operated at high temperatures.” Id. Thus, at the time of submitting the September 6, 2019, Amendment, Appellant embarked on a deliberate strategy to distinguish the claimed invention from the Tsumori reference based on the temperatures at which the respective devices allegedly operate. At this juncture, it bears mention that Appellant’s bearing is designed and intended to operate under: (1) a normal operating condition; and (2) an “anomalous” operating condition. Spec. ¶¶ 28–30. “Anomalous” operation occurs when the balls in the bearing race seize. Id. Specifically, under the “anomalous” operating condition, when rotation of outer race 14 relative to inner race 12 is impeded by seizure of balls 16, inner race 12 and lubricious liner 36 move relative to shaft 23 and exterior surface 25 slides relative to lubricious liner 36. Id. ¶ 30. Appellant refers to this mode of operation as a “fail-safe” mechanism. Id. ¶ 31.9 Thus, when Appellant presents Affidavit testimony and argument concerning operation of wing flaps at cruise altitude, Appellant contemplates operating the flaps not only under normal operating conditions, but also under the “anomalous” operating condition. Id. Thus, Appellant contemplates operating the flaps by sliding along the lubricious liner at cruise altitude and its attendant temperatures. Id. Appellant’s lubricious liner 36 comprises polytetrafluoroethylene fibers as is known to be used in fabrics such NOMEX® and KEVLAR®. 9 MR. MUTCHLER: “[I]n our invention, with the failsafe, it just has to operate for a couple of times to get that plane landed, and that's it. So it’s not like, you know, multiple, multiple revolutions where the liner's get worn out or something.” TR 9:4–6. Appeal 2020-004885 Application 14/438,785 5 Spec. ¶ 35. Tsumori’s liner is made of tetrafluoroethylene that is described as having “excellent sliding ability.” Tsumori ¶¶ 30–31. In its monomeric molecular form, tetrafluoroethylene is a gas, consequently, it is reasonable to infer that Tsumori contemplates using polymers of tetrafluoroethylene or, in other words, polytetrafluoroethylene, commercially known under its brand name “Teflon®.”10 Although Appellant presents Affidavit testimony regarding “tens of thousands” of hours of testing and reports “portions” of the test results, Appellant never identifies which materials were tested as candidates for the lubricious liner. See generally McNeil Aff. More specifically, Appellant presents no evidence that the polytetrafluoroethylene materials used in Appellant’s invention is different from Tsumori’s tetrafluoroethylene material or that it performs differently under similar operating conditions. Furthermore, based on the test results shown in paragraph 7 of the McNeil Affidavit, it appears that all tested materials experience an increase in coefficient of friction as temperature decreases. McNeil Aff. ¶ 11. Thus, an increasing friction coefficient appears to be an unavoidable consequence no matter what material is used for the liner. Moreover, it appears that a certain amount of friction between the liner and shaft is desirable. Spec. ¶¶ 29–31. During normal operation, it is desired that the coefficient of friction of liner 36 is such that relative motion between inner race 12 and shaft 23 is prevented. Id. ¶ 29. “The lubricious liner 36 has a static coefficient of friction of a sufficient magnitude to maintain the shaft 23 in a substantially fixed relation to the inner race 12 and the lubricious liner 36 10 https://en.wikipedia.org/wiki/Tetrafluoroethylene Appeal 2020-004885 Application 14/438,785 6 during normal operation.” Id. In other words, when certain rotational forces are encountered, it is desirable for the liner not to slip relative to the shaft and inner race, whereas at increased rotational forces encountered when the ball bearings seize, it is desirable for the liner to allow the shaft to slip. Conspicuously absent from Appellant’s Specification, briefing and Affidavit is any technical analysis regarding how the relationship of increasing coefficient of friction and decreasing temperature is accounted for in designing the lubricious liner interface between the inner race and the shaft. Also conspicuously absent from Appellant’s briefing and Affidavit is any technical analysis regarding how the inner race-to-shaft interface would be affected, if at all, by using Tsumori’s tetrafluoroethylene liner material instead of Appellant’s polytetrafluoroethylene material. Although Appellant presents Affidavit testimony and partial test results on how the coefficient of friction increases with decreasing temperature, Appellant provides no scientific data or technical explanation as to the effect such increasing friction has on the forces encountered at the inner race-to-shaft interface under normal and anomalous operating conditions and how such change in force is accounted for in the engineering and product design process. It goes without saying that, if Appellant does not provide such information on its own lubricious liner, it certainly remains mute as to Tsumori’s liner material. On appeal to the Board, Appellant maintains its strategy of distinguishing its invention over Tsumori based on allegedly differing temperature conditions in which the respective devices operate. Appeal Br. 14, 15, 16, 20; Reply Br. 6–8, 10, 13 (“operation at a wide range of temperatures including subfreezing temperatures.” Reply Br. 8). Appeal 2020-004885 Application 14/438,785 7 One skilled in the relevant art would not look to Tsumori 's field of high temperature ingot handling equipment for designing bearings for use in the field of flap hinge arms of a fixed wing aircraft because if the disparate problems address in the two different fields of endeavor. Reply Br. 8. Aviators and aircraft designers understand how wing flaps are used in the operation of an aircraft. Basically, they are used in the takeoff and landing phases of flight. Generally, on takeoff, they are extended to a partially extended position prior to commencement of the takeoff roll on the runway and are fully retracted almost immediately after the aircraft becomes airborne. During approach and landing, the flaps are extended in stages incrementally as the aircraft approaches the runway and typically reach the fully extended position when the aircraft is quite near, a few hundred feet or less, to the ground. In short, aircraft wing flaps are extended and retracted at roughly the same ambient temperatures that are experienced by non-flying vehicles, equipment, and machinery. Extending wing flaps increases the chord length of the wing and lowers the stall speed of the aircraft, thereby allowing the aircraft to fly at lower airspeeds than when the flaps are retracted. This is useful for shortening takeoff roll, shortening the landing roll, and reducing the final approach speed of the aircraft. Although it may be true that wing flap mechanisms are exposed to cold temperatures at cruise altitude, such mechanisms have ample time to warm up during the gradual descent to lower altitudes before landing. When fully extended, wing flap systems, such as depicted in Appellant’s Figure 11, are relatively fragile. Fig. 11. Aircraft manufacturers place strict upper limits on the airspeeds with which flaps may be operated. An aircraft operating at a cruise altitude of 35,000 feet and cruise airspeed of Appeal 2020-004885 Application 14/438,785 8 about 450 knots True Airspeed, which roughly equates to an Indicated Airspeed of about 250 knots, is operating well above the maximum safe airspeed for flap extension for virtually all modern commercial jet aircraft using a flap system as depicted in Figure 11. Aircraft, such as a Boeing 737, do not extends their flaps fully until at or below 200 knots indicated airspeed. Operating flaps at an “over speed” condition can cause severe damage to the flap actuation mechanism and airfoil surfaces, which could potentially result in an in-flight catastrophe. Consequently, aircraft manufacturers publish operating manuals warning against operating flaps at airspeeds above specified upper limits and, in some cases, equip aircraft with lockout sub-systems to prevent operating the flaps at inappropriate airspeeds and altitudes. With the foregoing in mind, during the oral hearing, Appellant’s counsel was asked to identify and describe any scenario in which an aircraft would be called upon to operate its flaps system at cruise altitude and airspeed. Appellant’s counsel offered the following response. MR. MUTCHLER: . . . you could have some type of loss of cabin pressure or something that would require a quick descent, or to avoid some upcoming turbulence, and at that point you’d have to operate during the sub-freezing temperatures. And regardless of the amount of times that you would operate it, you just can’t not design an aircraft with that backup failsafe capability, because it very well can happen and be required to operate at the sub-freezing temperatures. TR 11:20–26 (emphasis added). In reality, a pilot would never extend the flaps when conducting an emergency descent to lower altitude following loss of cabin pressure. If an aircraft lost cabin pressure at a cruise altitude of, say, 35,000 feet, the aircraft would be flying at a cruise airspeed that is well over the upper limit Appeal 2020-004885 Application 14/438,785 9 for flap operation. A pilot faced with loss of cabin pressure would never slow the speed of the aircraft to a safe flap extension speed before descending. A pilot faced with loss of cabin pressure would descend at a relatively high speed and descent rate and would never perform an emergency descent at an airspeed that was slow enough to permit safe flap operation. Flaps are used to increase the lift generated by an aircraft wing. The very last thing a pilot needs when performing an emergency descent from cruise altitude is increased lift. In the case of Refac Int'l, Ltd. v. Lotus Dev. Corp., 81 F.3d 1576, 1583 (Fed. Cir. 1996), the court found that the intentional omission of a declarant’s employment with the inventor's company rendered the affidavit false. The court found that the false affidavit was both material to patentability and submitted with an intent to deceive the Patent Office. The inference of an intent to mislead arises not simply from the materiality of the affidavits, but from the affirmative acts of submitting them, their misleading character, and the inability of the examiner to investigate the facts. Id. at 1582 quoting Paragon Podiatry Lab., Inc. v. KLM Lab., Inc., 984 F.2d 1182, 1191 (Fed. Cir. 1993). Returning to the instant case, I consider Mr. McNeil’s affidavit to be materially false and misleading with respect to testimony concerning aircraft flap operations at high altitudes and cold temperatures. It is difficult for me to conceive that the affidavit testimony and the representations of counsel that rely thereon can be attributed to an “empty head – pure heart” scenario. Under the circumstances, the only reasonable explanation that I can arrive at for the carefully orchestrated combination of: (1) Appellant’s prosecution representations; (2) Appeal Brief arguments and representations; (3) Reply Appeal 2020-004885 Application 14/438,785 10 Brief arguments and representations; (4) Inventor Affidavit testimony, and (5) oral hearing representations is that Appellant deliberately seeks to obtain patent protection for an obvious invention by resorting to artifices of deceit to mislead the Examiner and the Board into believing that Appellant’s hybrid flap bearing might need to undergo “anomalous” operation using the lubricious liner at the sub-freezing temperatures of cruise altitude. Here, deceptive intent may be reasonably inferred not simply from the affirmative affidavit testimonial statements of the inventor and the representations of counsel, but also from the omission of factual information that was surely known but was carefully and selectively omitted to paint a misleading picture for the Examiner and Board. Rather than immediately referring this matter to the Office of Enrollment and Discipline, I would prefer to give Appellant an opportunity to supplement the record before the Examiner with information that purportedly furnishes an underlying good faith basis for the incorrect, if not deliberately misleading, factual representations and testimony discussed herein. In the absence of any such good faith basis, Appellant is admonished to take appropriate action to correct the record. Otherwise, I concur completely in the panel’s decision. Copy with citationCopy as parenthetical citation