ROLLER BEARING COMPANY OF AMERICA, INC.

Patent Trials and Appeals Board

Mar 19, 2021

2020004885 (P.T.A.B. Mar. 19, 2021)

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.
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Application 14/438,785

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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;
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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).
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Application 14/438,785

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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”).
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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.
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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
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Application 14/438,785

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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:
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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
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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.
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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
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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
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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
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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.
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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).

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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
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“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.
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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.
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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
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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).
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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
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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
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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
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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.