Schaeffler Technologies AG & Co. KG

Patent Trials and Appeals Board

Jan 24, 2022

2021003900 (P.T.A.B. Jan. 24, 2022)

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. 16/334,782 03/20/2019 Markus Oswald P161883 WO-US 6037 94547 7590 01/24/2022 Schaeffler Group USA, Inc. Intellectual Property Legal Department 1750 E. Big Beaver Road Troy, MI 48083-2010 EXAMINER KRUG, RANDELL J ART UNIT PAPER NUMBER 3658 NOTIFICATION DATE DELIVERY MODE 01/24/2022 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): PatentMail-TRY@SCHAEFFLER.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARKUS OSWALD, DIETER ADLER, and SIGURD WILHELM Appeal 2021-003900 Application 16/334,782 Technology Center 3600 ____________ Before, CHARLES N. GREENHUT, MICHAEL L. HOELTER, and WILLIAM A. CAPP, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 6, 8-10 and 16. See Appeal Br. Title Page. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM the Examiner’s rejection of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Schaeffler Technologies AG & Co. KG.” Appeal Br. 1. Appeal 2021-003900 Application 16/334,782 2 CLAIMED SUBJECT MATTER The disclosed subject matter “concerns a ball screw drive.” Spec. ¶ 2. Apparatus claim 1 is independent, is illustrative of the claims on appeal, and is reproduced below. 1. A ball screw drive, comprising: a threaded spindle having a spindle axis, a threaded nut arranged on the threaded spindle, and balls arranged between the threaded spindle and the threaded nut in several endless ball channels arranged along the spindle axis, each ball channel having a deflecting portion that connects a start and an end of a load portion of a helical winding, wherein an outer casing surface of the threaded nut is configured as an outer cylindrical sealing face, wherein the outer cylindrical sealing face is arranged axially at least overlapping the several endless ball channels, and wherein each of the deflecting portions is formed by one of several deflecting pieces distributed circumferentially over an inner periphery and arranged axially successively in recesses, the recesses being provided on the inner periphery of the threaded nut and formed inside a wall thickness of the threaded nut. EVIDENCE Name Reference Date Kircher et al. (“Kircher”) US 4,658,939 Apr. 21, 1987 Perni et al (“Perni”) US 2005/0000309 A1 Jan 6, 2005 REJECTION Claims 1, 6, 8-10, and 16 are rejected under 35 U.S.C. § 103 as unpatentable over Kircher and Perni. Appeal 2021-003900 Application 16/334,782 3 ANALYSIS Appellant argues claims 1, 6, 8-10, and 16 together. See Appeal Br. 4-6. We select independent claim 1 for review, with the remaining claims (i.e., dependent claims 6, 8-10, and 16) standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Claim 1 recites a “spindle,” a “nut,” and a plurality of “balls” arranged between them. Claim 1 recites that these balls are arranged in “several endless ball channels . . . along the spindle axis” with “each ball channel having a deflecting portion.” Claim 1 also recites that “each of the deflecting portions is . . . arranged axially successively in recesses” with “the recesses being provided on the inner periphery of the threaded nut and formed inside a wall thickness of the threaded nut.” Thus, as per Appellant, claim 1 “requires two things regarding the recesses: i) that they are provided on the inner periphery of the threaded nut, and ii) that they be formed inside a wall thickness of the threaded nut.” Appeal Br. 4. The Examiner does not disagree. See Final Act. 2-3. The Examiner relies primarily on Kircher for disclosing many of the limitations of claim 1, but acknowledges that “Kircher does not expressly disclose the specific deflecting portions/deflecting pieces recited in amended Claim 1.” Final Act. 3; see also Ans. 7. The Examiner relies on Perni for (likewise) teaching “several endless ball channels 9, 10 arranged along the spindle axis” while further finding that Perni teaches “each have a deflecting portion 20.” Final Act. 3; see also Ans. 8. In fact, the Examiner states that “it is nearly impossible to form a nut having a re-circulatory ball channel without such deflecting portions.” Final Act. 3; see also Ans. 7. The Appeal 2021-003900 Application 16/334,782 4 Examiner additionally finds that Perni also teaches “recesses 19 being provided on the inner periphery of the threaded nut 6 formed inside a wall thickness of the threaded nut 6” in accordance with claim 1. Final Act. 3. The Examiner concludes that it would have been obvious “to modify the closed spirals disclosed by Kircher, in view of the Perni teaching, such that each ball channel [has] a separate deflecting portion.” Final Act. 4. The Examiner’s stated motivation for the combination paraphrases Paragraph 5 of Perni also indicating the proposed combination would resolve the drawbacks stated therein, and additionally provides: “to overall decrease costs of manufacturing a closed spiral that is integrally formed within a nut.” Final Act. 4; Ans. 8. Appellant disagrees with the Examiner’s findings stating that in Perni, “the recesses are not formed inside the wall thickness of the threaded nut.” Appeal Br. 4; see also Reply Br. 1. Instead, as per Appellant, “the recesses include a hole 22 formed through the nut crosswise to the axis” and as such, item ii) above “is missing from the Perni reference.” Appeal Br. 4. Appellant’s focus on Perni’s screw hole 22 does not detract from the Examiner’s finding that Perni’s recess 19 is located and formed as recited. In other words, Appellant’s focus on screw hole 22 appears to be an attempt to incorporate more structure from the cited art than the Examiner relied upon. In fact, Perni states that use of a screw hole to retain deflecting portion 20 within recess 19 is optional since “[i]n alternative embodiments not shown, each member 20 is retained inside respective cavity 19 by retaining means other than screws 21, e.g. adhesive.” Perni ¶ 18. Thus, Perni teaches that alternate embodiments would not require screws or screw holes, thereby undermining Appellant’s contention above focusing on screw Appeal 2021-003900 Application 16/334,782 5 hole 22. Accordingly, Appellant’s contention above is not persuasive the Examiner erred by relying on Perni for teaching the recited recesses into which the recited deflecting portions 20 are placed. Appellant also contends that “[t]he Examiner’s obviousness rejection of claim 1 lacks a proper motivation to combine the references.” Appeal Br. 5; Reply Br. 1. Appellant discusses the drawbacks that “Perni seeks to overcome” and that “Perni addresses a problem that does not exist in Kircher.” Appeal Br. 5, 6. There is no evidence the drawbacks or problems addressed by Perni (see Perni ¶ 5) are present or lacking in Kircher because Kircher does not provide sufficient detail regarding the path of the ball tracks. In any case, it is not critical for a reference to identify its own shortcoming to support a rejection predicated on improving those aspects of the prior art. Furthermore, the Examiner also expressed the reason “to overall decrease costs of manufacturing a closed spiral that is integrally formed within a nut.” Final Act. 4. Appellant contends that “the Examiner provides no evidence, beyond his own opinion, that a person of skill in the art would expect the proposed modification of Kircher to produce those effects.” Reply Br. 1. On this point, we have been instructed that the Examiner need articulate a reason to combine the references with some rational underpinning to support the legal conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); see also Ans. 8 (referencing MPEP § 2142). We have also been instructed that the reason to combine “can be found explicitly or implicitly in the prior art references themselves, in market forces, [or] in design incentives.” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1359 (Fed. Cir. 2017). Hence, the Examiner’s reason “to Appeal 2021-003900 Application 16/334,782 6 overall decrease costs of manufacturing” (Final Act. 4) is a proper reason to combine references since cost reduction is a facet of “market forces” and/or “design incentives.” See also DyStar Textilfarben GmbH & Co. v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“Because the desire to enhance commercial opportunities by improving a product or process is universal-and even common-sensical-we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.”). Indeed the goal of reducing cost is expressly mentioned at paragraph 6 of Perni. The Examiner’s reasoning is further supported by rationale underpinnings because, as the Examiner indicates (Final Act. 4), one skilled in the art would reasonably expect integrally formed intricate ball return tracks within the nut such as those that appear to be illustrated in Kircher to be more costly and/or more difficult to manufacture than the use of separate diverting members that can be accommodated in a nut without the need for intricate machining of the nut, as in Perni. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in combining Kircher and Perni for the reasons stated. We sustain the Examiner’s rejection of claims 1, 6, 8-10, and 16 as being obvious over Kircher and Perni. CONCLUSION The Examiner’s decision to reject claims 1, 6, 8-10, and 16 is affirmed. DECISION SUMMARY In summary: Appeal 2021-003900 Application 16/334,782 7 Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 6, 8-10, 16 103 Kircher, Perni 1, 6, 8-10, 16 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED