Takehito Tamaoka et al.

Patent Trials and Appeals BoardAug 8, 2019

14149052 - (D) (P.T.A.B. Aug. 8, 2019)

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. 14/149,052 01/07/2014 Takehito Tamaoka P3567US00 3389 38834 7590 08/08/2019 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP 8500 Leesburg Pike SUITE 7500 Tysons, VA 22182 EXAMINER PRAGER, JESSE M ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 08/08/2019 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@whda.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TAKEHITO TAMAOKA and KAZUHIKO FUKUSHIMA1 ____________________ Appeal 2018-007348 Application 14/149,052 Technology Center 3700 ____________________ Before JENNIFER D. BAHR, JILL D. HILL, and LEE L. STEPINA, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1, 4–10, and 12–15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, designating portions of the affirmance as a NEW GROUND of rejection under 37 C.F.R. § 41.50(b). 1 NIDEC Corporation (Appellant) is the applicant as provided in 37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2. Appeal 2018-007348 Application 14/149,052 2 BACKGROUND Sole independent claim 1, reproduced below, illustrates the claimed invention: 1. A bearing mechanism comprising: a shaft arranged to have a central axis extending in a vertical direction as a center thereof; a sleeve in which the shaft is inserted, the sleeve having a lower surface having an inner circumferential edge and an outer circumferential edge, wherein the outer circumferential edge consists of a first part and a second part; a plate portion in a shape of a disk, arranged to have an upper surface extending radially outward from a lower end of the shaft, arranged opposite to the lower surface of the sleeve, and arranged to have a diameter smaller than that of the lower surface of the sleeve; a sleeve housing inside which the sleeve and the plate portion are arranged; an adhesive arranged to adhere the sleeve and the sleeve housing to each other; and a lubricating oil; wherein the sleeve housing includes: a cylindrical portion accommodating the sleeve and the plate portion thereinside; a plate surrounding space inside the cylindrical portion, the plate surrounding space radially extending between the sleeve and the plate portion; a bottom portion arranged to close a lower portion of the cylindrical portion; an inside corner where the cylindrical portion intersects with the bottom portion; and a plurality of projecting portions arranged at the inside corner such that each projecting portion is arranged to radially project from an inner circumferential surface of the cylindrical portion toward the plate portion and has an upper surface, the projecting portions being spaced from one another in a circumferential direction at the inside corner; Appeal 2018-007348 Application 14/149,052 3 the inner circumferential edge of the lower surface of the sleeve contacts the upper surface of the plate portion to serve as a thrust dynamic pressure bearing portion, a lower surface of the plate portion being opposed to and spaced from the bottom portion, the first part of the outer circumferential edge of the lower surface of the sleeve contacts the upper surface of each projecting portion, the second part of the outer circumferential edge of the lower surface of the sleeve is spaced from the sleeve housing, at least a portion of the adhesive is arranged to exist between an outer circumferential surface of the sleeve and the inner circumferential surface of the cylindrical portion; the lubricating oil is arranged to exist continuously in a gap between a portion including the sleeve and the sleeve housing and a portion including the shaft and the plate portion; and the shaft and the sleeve are arranged to have a radial dynamic pressure bearing portion defined therebetween. REJECTIONS I. Claims 1, 4–10, and 12–15 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 5. II. Claims 1, 4–8, 10, and 14 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Tamaoka ’438 (US 2009/0022438 A1, pub. Jan 22, 2009). Final Act. 6. III. Claims 1, 4–10, 14, and 15 stand rejected under 35 U.S.C. § 103 as unpatentable over Tamaoka ’438 and English (US 4,682,065, iss. July 21, 1987). Final Act. 10. IV. Claim 5 stands rejected under 35 U.S.C. § 103 as unpatentable over Tamaoka ’438, English, and Hori (US 2010/0166345 A1, pub. July 1, 2010). Final Act. 16. Appeal 2018-007348 Application 14/149,052 4 V. Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over Tamaoka ’438, English, and Teshima (US 2010/0054965 A1, pub. Mar. 4, 2010). Final Act. 16. VI. Claim 9 stands rejected under 35 U.S.C. § 103 as unpatentable over Tamaoka ’438. Final Act. 17. VII. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable over Tamaoka ’438 and Tamaoka ’024 (US 2008/0024024 A1, pub. Jan. 31, 2008). Final Act. 18. VIII. Claim 12 stands rejected under 35 U.S.C. § 103 as unpatentable over Tamaoka ’438, English, and Tamaoka ’024. Final Act. 19. IX. Claims 1 and 13 stand rejected under 35 U.S.C. § 103 as unpatentable over English and Tamaoka ’438. Final Act. 19. ANALYSIS Rejection I – Written Description The Examiner finds that claim 1 recites the inner circumferential edge of the lower surface of the sleeve contacting the upper surface of the plate portion, but there exists “a thrust gap 43 in between the lower surface of the sleeve 231 and the upper surface of the plate portion (page 24, lines 1-3),” such that the sleeve “does not appear to contact the rotating plate portion,” raising “doubt as to possession of the claimed invention at the time of filing.” Final Act. 5. Appellant argues claims 1, 4–10, and 12–15 as a group. Appeal Br. 8–11. We select claim 1 as representative. Claims 4–10 and 12–15 stand or fall with claim 1. Appellant argues, citing Figure 6 as amended August 29, 2017, that “the inner circumferential edge 231c of the lower surface of the Appeal 2018-007348 Application 14/149,052 5 sleeve contacts the upper surface 256a of the plate portion,” and the Specification defines a thrust gap 43 “‘between the lower surface of the sleeve 231 and the upper surface of the plate portion 256.’” Appeal Br. 9 (citing Spec. 24:1–3). The Examiner responds that the thrust gap 43 between Appellant’s plate and sleeve lower surface “is non-contacting.” Ans. 2. According to the Examiner, a skilled artisan “would appreciate that a fluid bearing . . . supports the bearing’s loads solely on a thin layer of liquid,” such that the dynamic pressure in Appellant’s oil 40 supports the surfaces, not direct contact in between the surfaces. Id. at 3. Appellant provides, in reply, a dictionary definition of the word “contact,” and argues that the Examiner’s construction of the term “contact” as “direct contact” is too narrow. Reply Br. 2 (citing https://www.merriam- webster.com/dictionary/contact (last visited July 29, 2019) (defining contact as “to get in communication with”)). Appellant contends that the word “contact” should be construed to include indirect contact, which is “apparent when reading the specification at paragraph [0053].” Id. Paragraph 53 of Appellant’s Specification does not, however, define or recite the word “contact.” It is unclear to us how a dictionary definition of “contact” as “in communication with” provides evidence that Appellant’s addition of the term “contact” in claim 1 was intended to cover indirect contact. Further, Appellant has not explained how its thrust gap can be considered to provide such indirect contact. We discern no error in the Examiner’s determination that Appellant’s thrust gap 43 does not provide written description support for claiming “contact” between the plate and the lower surface of the sleeve. Appeal 2018-007348 Application 14/149,052 6 For this reason, we sustain the Examiner’s written description rejection of claim 1. Claims 4–10 and 12–15 fall with claim 1. Rejection II - Anticipation The Examiner finds that Tamaoka ’438 discloses, inter alia, a sleeve 42 having a lower surface 424, a sleeve housing 41 having a cylindrical portion 411 accommodating the sleeve 42 and a plate 5 inside, and a bottom portion “(base of 41 including 412) arranged to close a lower portion of the cylindrical portion.” The Examiner finds that Tamaoka ’438 also discloses “an inside corner where the cylindrical portion intersects with the bottom portion,” and “projecting portions (associated with passages 66b) arranged at the inside corner such that each projecting portion is arranged to radially project from an inner circumferential surface of the cylindrical portion toward the plate portion.” Id. at 6–7. The Examiner further finds that Tamaoka ’438 discloses adhesive “between an outer circumferential surface of the sleeve and an inner circumferential surface of the cylindrical portion” of the sleeve housing 41, and lubricating oil in a gap between “the sleeve and the sleeve housing” and between “the shaft and the plate portion.” Id. at 7. Appellant argues claims 1, 4–8, 10, 14, and 15 as a group. Appeal Br. 11–15. We select claim 1 as representative. Claims 4–8, 10, 14, and 15 stand or fall with claim 1. Bottom Appellant argues that the proper construction of the term “‘bottom’ is ‘the lowest or deepest part of anything, as distinguished from the top,’” which construction is consistent with use of the term “bottom portion 62” in Appeal 2018-007348 Application 14/149,052 7 their Specification. Appeal Br. 12 (citing Spec. ¶ 67, Figs. 6 and 7, http://www.dictionary.com/browse/bottom). Appellant notes that claim 1 requires a bottom of the sleeve housing and, as a separate limitation, “a plurality of projecting portions arranged at the inside corner” of the sleeve housing. Id. Thus, Appellant argues, the Examiner’s construction of the term “bottom” is unreasonable, because it includes the step portion 412 as part of the bottom portion, which “ignores the claimed ‘projecting portions arranged at the inside corner.’” Id. Appellant further argues that the Examiner’s construction of the claimed “bottom portion” as including “projecting portions” contradicts the claim recitation of the “projecting portions arranged at the inside corner,” which is separate from the limitation of the “bottom portion.” Id. at 13. Appellant contends that the “projecting portions” should project from the “bottom portion” and the “insider corner.” Id. Appellant continues that, given the proper construction of the term “bottom portion,” the projections between Tamaoka’s passages 66b “are not provided or projected from the bottom portion.” Id. Further, Tamaoka discloses that lubricating oil, rather than adhesive, circulates through flow passages 66, such that a skilled artisan would have considered that, if adhesive enters a flow passage 66b, the flow passage 66b becomes “inoperative as a flow passage for lubricating oil.” Id. at 14. The Examiner disagrees with Appellant’s proffered construction of the term “bottom,” providing an alternate definition of “the underside of something,” and noting that the claim defines the function of the “bottom portion” as closing a lower portion of the cylindrical portion of the sleeve housing. Ans. 4. The Examiner contends that “a person giving a customary Appeal 2018-007348 Application 14/149,052 8 and ordinary meaning to the term ‘bottom’ would consider the entire structure that close[s] a lower portion of the cylindrical portion radial sides.” Id. The Examiner finds that the bottom portion of Tamaoka ’438 is the sleeve housing portion that closes the cylindrical portion 411, which includes the step feature 412. Id. According to the Examiner, if Appellant’s definition is applied, then the bottom portion would not include the step 412, and “would not close a lower portion of cylindrical portion (411)” as required by claim 1. Id. at 4–5. The Examiner further responds that “the projections of Tamaoka [’438] are defined in between its passages 66[b], and are provided at the inside comer where the cylindrical portion 411 intersects with the bottom portion 412.” Ans. 5. The Examiner argues that, while Tamaoka describes surplus adhesive, Tamaoka also discloses preventing surplus adhesive from entering the bearing portions and interrupting circulation of lubricant. Id. at 6 (citing Tamaoka ¶ 69). According to the Examiner, Tamaoka’s flow passages 66b are provided on a top surface 4121 of step 412, and “projecting portions are formed in between the radially extending grooves 661b . . . [and are] spaced from one another in a circumferential direction at the inside corner (pars. 86-91, Figs. 12-13).” Id. at 6. In the Reply Brief, Appellant contends, correctly, that claim 1 recites the plate being accommodated in the cylindrical portion of the sleeve housing. Reply Br. 3. Appellant also correctly contends that the plate 5 of Tamaoka ’438 is accommodated in its step portion 412, so that the step portion must be part of the cylindrical portion, rather than the bottom portion. Id. at 5–6. Appeal 2018-007348 Application 14/149,052 9 First, we note that the cross sectional shape of the sleeve housing of Figure 12 of Tamaoka ’438 appears to be very similar to the shape of Appellant’s sleeve housing, and the sleeve and plate appear to sit within the sleeve housing in a similar manner. Comparable portions of the embodiment of Figure 12 of Tamaoka ’438 (left) and the claimed invention, as illustrated in Appellant’s Figure 6, (right) are show below. Second, even if we agree with Appellant that step 412 of Tamaoka ’438 accommodates plate portion 5 and therefore is more likely part of its cylindrical portion than its bottom portion, we are not persuaded that any Examiner error in finding that step 412 is part of the bottom portion requires reversal of the pending rejection. The following amended version of Figure 12 of Tamaoka ’438 provides an alternative position for what constitutes the cylindrical portion, bottom portion, inside corner, and projections of Tamaoka ’438. Appeal 2018-007348 Application 14/149,052 10 According to the annotated version of Figure 12 above, Tamaoka ’438 discloses a cylindrical portion and a bottom portion that meet at an inside corner. The projection is defined by step portion 412 and raised portions between passages 66b. This interpretation/designation of the portions of the sleeve housing meets the sleeve housing of Tamaoka ’438 meets the limitations of claim 1. Projecting Portions Appellant argues that the Examiner admits that Tamaoka fails to disclose a plurality of projecting portions spaced from each other in a circumferential direction. Appeal Br. 14 (citing Final Act. 12:3–4 (“Tamaoka lacks the feature is a plurality of projecting portions, the Appeal 2018-007348 Application 14/149,052 11 projecting portions being spaced from one another in a circumferential direction.”)). In the rejection of claim 1 as anticipated by Tamaoka ’438, the Examiner explicitly finds that: (1) Tamaoka ’438 discloses projecting portions “spaced from one another in a circumferential direction at the inside corner;” and (2) “the claims do not positively recite structure or function that differentiates [the claimed projections] from the projecti[ng] portions of Tamaoka [’438].” Ans. 6, Final Act. 6–7. The Examiner’s statement at page 12, lines 3–4, that “Tamaoka lacks . . . a plurality of projecting portions . . . being spaced from one another in a circumferential direction” is made as part of an alternative obviousness position that modifies Tamaoka ’438 with the circumferentially-spaced projections of English. See Final Act. 12 (citing English Figs. 2–8, 3:59– 4:16). We, therefore, do not consider the Examiner’s statement in the obviousness rejection as an admission, in the context of the anticipation rejection, that the Examiner erred in finding that Tamaoka ’438 discloses the claimed projecting portions. For these reasons, we sustain the rejection of claim 1. Claims 4–10, 14, and 15 fall with claim 1. Because our findings differ from the Examiner’s findings, we designate our affirmance a NEW GROUND of rejection pursuant to 37 C.F.R. § 41.50(b). Rejection III – Obviousness over Tamaoka ’438 and English The Examiner finds that Tamaoka ’438 discloses the limitations of independent claim 1, including the limitations set forth above in Rejection II, except that the bottom portion is not found to include the step portion 412, and the step portion of Figure 12 is found to be a “feature (412) at the inside Appeal 2018-007348 Application 14/149,052 12 corner, the feature being arranged to radially project from an inner surface of the cylindrical portion toward the plate portion and ha[ve] an upper surface.” Final Act. 11. An upper surface of the step or feature 412 contacts a first part of an outer circumferential edge of the lower surface of the sleeve and is radially opposite the plate 5. Id. In this rejection, the Examiner looks to English’s motor housing bearing to disclose “a bearing arrangement for a motor with projecting portions (44)” that are “spaced from one another in a circumferential direction facilitating the precise position of the bearing and enhancing bearing alignment.” Id. at 12 (citing English Figs. 2–8, 3:59– 4:16). The Examiner concludes that it would have been obvious to a skilled artisan to modify the bearing mechanism of Tamaoka ’438 “by providing a plurality of projecting portions” that are “spaced from one another in a circumferential direction, as taught by English et al. to enable precise position of the bearing and to enhance bearing alignment.” Id. Appellant argues claims 1, 4–10, 14, and 15 as a group. Appeal Br. 15–17. We select claim 1 as representative. Claims 4–10, 14, and 15 stand or fall with claim 1. Appellant again argues that the Examiner’s construction of the term “bottom portion” is incorrect. However, the Examiner is not including step 412 as part of the “bottom portion” in the obviousness rejection, but rather as a separate “feature” located at an inside corner of the cylindrical portion and the bottom portion, similar to our annotated version of Figure 12 of Tamaoka ’438 above. For this reason, we are not persuaded of Examiner error in interpreting the term “bottom portion.” Appellant also argues that “there is no reasonable basis for one skilled in the art to apply adhesive in English.” Appeal Br. 15. According to Appeal 2018-007348 Application 14/149,052 13 Appellant, a skilled artisan would have understood that English discloses a rolling bearing 22 shown in Fig. 3, and using adhesive with a rolling bearing is not common practice, because adhesive can cause a rolling bearing to become inoperative. Id. at 15–16. We are not persuaded by this argument, because the Examiner is not modifying Tamaoka ’438 to include the bearing of English. Rather, the Examiner is only modifying Tamaoka ’438 to include English’s projecting portions spaced in a circumferential direction to enable precise position of the bearing and enhance bearing alignment. Appellant then argues that English’s projecting portions 44 are located at a middle, rather than at a bottom, of its sleeve housing 26, and sleeve housing 26 has no bottom. Id. at 16. Thus, Appellant argues, if a skilled artisan applied adhesive in English, and adhesive existed “at or around the element 44 in English, it would go down to the bearings 22, 24 and the shaft 20, because the element 44 is not provided at or around the bottom of the housing portion 26. “ Id. The Examiner responds that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” Ans. 7 (citing In re Keller, 642 F.2d 413 (CCPA 1981)). According to the Examiner, Tamaoka ’438 discloses a fluid bearing, and the “proposed modification would not change the bearing to be a roller bearing.” Id. The Examiner continues that a skilled artisan would have been able to modify the Appeal 2018-007348 Application 14/149,052 14 step feature of Tamaoka ’438 to include projections as taught by English, “without destroying the functionality features (see 4242 on sleeve) that limit adhesive leakage at the supporting structure.” Id. at 7–8. The Examiner further contends that a skilled artisan “would be able to provide a suitable amount of adhesive and prevention features to have an operable bearing.” Id. at 8. The Examiner “maintains that the proposed modification of the step feature with the projecting portions of English et al., as set forth in the final rejection, is obvious.” Id. Appellant’s arguments do not apprise us of Examiner error. The Examiner proposes to modify Tamaoka ’438 only by placing English’s circumferentially spaced projecting portions 44 on the step feature 412 of Tamaoka ’438. We agree with the Examiner that this would enable precise position of the bearing and enhance bearing alignment. It is unclear to us how such a projection placement would cause lubricant circulation blockage in Tamaoka’438, which already prevents surplus adhesive 9 from flowing into unwanted areas of the bearing (see Tamaoka ’438 Abstract, Fig. 8, ¶¶ 67–73). Regarding Appellant’s argument directed to Tamaoka ’438 having a sintered metal sleeve that would not be combined with English’s roller bearing or adhesive use (Appeal Br. 15–16), we are not persuaded by this argument because the Examiner relies on English only for its teaching of projecting portions 44, which are employed on Tamaoka’s step feature 412. The Examiner does not propose modifying Tamaoka ’438 to include a roller bearing, or modifying English to include adhesive. Appeal 2018-007348 Application 14/149,052 15 For the reasons explained above, we discern no error in the Examiner’s rejection, and we sustain the rejection of claim 1 as unpatentable over Tamaoka ’438 and English. Claims 4–10, 14, and 15 fall with claim 1. Rejections IV, V, and XII Appellant makes no argument that claims 5, 7, and 12 would be patentable over the applied references if claim 1 is not patentable. Appeal Br. 17–18. For the reasons set forth above in Rejection III, we sustain Rejections IV, V, and XIII. Rejections VI and VII Rejections VI and VII appear to rely on the Examiner’s findings in rejecting claims 1, 4–8, 10, and 14 as anticipated by Tamaoka ’438. Appellant relies on the arguments set forth against claim 1 in Rejection I. Appeal Br. 18. For the reasons set forth above in Rejection I, we sustain Rejections VI and VII, designating the affirmance a NEW GROUND due to the differing finding made in sustaining Rejection I. Rejection IX Appellant makes no specific argument regarding the Examiner’s rejection of independent claims 1 and 13 as unpatentable over English and Tamaoka ’438. Appeal Br. 19. We therefore sustain Rejection IX, referring Appellant to our analysis of English and Tamaoka ’438 set forth in Rejection III. DECISION We AFFIRM the rejection of claims 1, 4–10, and 12–15 as failing to comply with the written description requirement. Appeal 2018-007348 Application 14/149,052 16 We AFFIRM the rejection of claims 1, 4–8, 10, and 14 as anticipated by Tamaoka ’438, designating the affirmance a NEW GROUND of rejection. We AFFIRM the rejection of claims 1, 4–10, 14, and 15 as unpatentable over Tamaoka ’438 and English. We AFFIRM the rejection of claim 5 as unpatentable over Tamaoka ’438, English, and Hori. We AFFIRM the rejection of claim 7 as unpatentable over Tamaoka ’438, English, and Teshima. We AFFIRM the rejection of claim 9 as unpatentable over Tamaoka ’438 designating the affirmance a NEW GROUND of rejection. We AFFIRM the rejection of claim 12 as unpatentable over Tamaoka ’438 and Tamaoka ’024, designating the affirmance a NEW GROUND of rejection. We AFFIRM the rejection of claim 12 as unpatentable over Tamaoka ’438, English, and Tamaoka ’024. We AFFIRM the rejection of claims 1 and 13 as unpatentable over English and Tamaoka ’438. FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2018-007348 Application 14/149,052 17 (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). See 37 C.F.R. § 41.50(f). AFFIRMED; 37 C.F.R. § 41.50(b)