Ex Parte Cargill

Board of Patent Appeals and Interferences

Apr 21, 2009

10769761 (B.P.A.I. Apr. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD JAMES CARGILL
____________

Appeal 2008-2889
Application 10/769,761
Technology Center 3600
____________

Decided:1 April 21, 2009
____________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Edward James Cargill (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-20. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to a seal assembly for
limiting the amount of movement or distortion of a seal element retained by
a seal housing. Specification 1:7-8.
Claim 1, reproduced below, is the only independent claim involved in
this appeal.
1. In a seal assembly for sealing with a rotatable
component so that the seal assembly defines a first
side of the seal assembly and a second side of the
seal assembly and so that the first side is sealed
from the second side by the seal assembly, the
component defining a longitudinal axis of rotation
and the component extending through the seal
assembly between the first side and the second side
of the seal assembly, the seal assembly comprising
a seal element retained within a seal housing,
wherein one of the seal element and the seal
housing is comprised of a compressible material,
wherein the seal element is comprised of a planar
seal engagement surface, and wherein the seal
housing is comprised of a planar housing
engagement surface for engaging the planar seal
engagement surface, the improvement comprising:
(a) one of the planar seal engagement
surface and the planar housing engagement surface
being comprised of the compressible material;
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(b) the other of the planar seal engagement
surface and the planar housing engagement surface
being oriented in a plane normal to the longitudinal
axis of rotation of the component and defining a
depression therein for providing an isolated gap
between the planar seal engagement surface and
the planar housing engagement surface when the
planar seal engagement surface and the planar
housing engagement surface are engaged, for
receiving the compressible material; and
(c) the seal element being exposed to a fluid
pressure on the second side of the seal assembly
such that an engagement force is exerted between
the planar seal engagement surface and the planar
housing engagement surface in order to press the
compressible material into the depression and
thereby restrain movement of the seal element
relative to the seal housing.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:

Bent US 2,462,596 Feb. 22, 1949
Jesswein US 4,210,405 Jul. 1, 1980
Kalsi US 4,610,319 Sep. 9, 1986
Chrzanowski US 4,703,937 Nov. 3, 1987
Müller US 4,729,569 Mar. 8, 1988
Appellant’s Admitted Prior Art (AAPA), Specification 1-2 and Jepson
preamble of claim 1.

Appellant seeks review of the Examiner’s rejections of claims 1, 7-10,
and 16-18 under 35 U.S.C. § 102(b) as being anticipated by Müller; claims
1-17 under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Bent,
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Chrzanowski, and Jesswein; and claims 19 and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Müller and Kalsi.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

ISSUES
The issues presented in this appeal are as follows:
(1) Has Appellant demonstrated that the Examiner erred in rejecting
claims 1, 7-10, and 16-18 as being anticipated by Müller, and claims
19 and 20 as being unpatentable over Müller and Kalsi? This issue
turns on whether the recess defined between two projections 32 of
backup ring 3 of Müller forms an “isolated gap” as called for in claim
1. Appeal Br. 13.
(2) Has Appellant demonstrated that the Examiner erred in rejecting
claim 1 as being unpatentable over AAPA, Bent, Chrzanowski, and
Jesswein? This issue turns on whether the combined teachings of
these references would have prompted a person of ordinary skill in the
art to form a depression for providing an isolated gap in a planar
housing engagement surface of the AAPA seal assembly oriented in a
plane normal to the longitudinal axis of rotation of the component.
Appeal Br. 17-19.
(3) Has Appellant demonstrated that the Examiner erred in rejecting
claim 2 as being unpatentable over AAPA, Bent, Chrzanowski, and
Jesswein? This issue turns on whether the combined teachings of
these references would have prompted a person of ordinary skill in the
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art to form a circumferential groove for providing an isolated gap in a
planar housing engagement surface of the AAPA seal assembly
oriented in a plane normal to the longitudinal axis of rotation of the
component. Appeal Br. 19-20.
(4) Has Appellant demonstrated that the Examiner erred in rejecting
claim 3 as being unpatentable over AAPA, Bent, Chrzanowski, and
Jesswein? This issue turns on whether the combined teachings of
these references would have prompted a person of ordinary skill in the
art to form a circumferential groove extending for a length equal to
the circumference of the planar seal engagement surface for providing
an isolated gap in a planar housing engagement surface of the AAPA
seal assembly oriented in a plane normal to the longitudinal axis of
rotation of the component. Appeal Br. 20.
(5) Has Appellant demonstrated that the Examiner erred in rejecting
claims 4-6 and 13-15 as being unpatentable over AAPA, Bent,
Chrzanowski, and Jesswein? This issue turns on whether the
combined teachings of these references would have prompted a
person of ordinary skill in the art to provide a plurality of substantially
parallel circumferential grooves in a planar housing engagement
surface of the AAPA seal assembly oriented in a plane normal to the
longitudinal axis of rotation of the component. Appeal Br. 21-22.
(6) Has Appellant demonstrated that the Examiner erred in rejecting
claim 7 as being unpatentable over AAPA, Bent, Chrzanowski, and
Jesswein by arguing that the AAPA does not contemplate use of a
preloading device in combination with a depression providing an
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isolated gap, and for the same purpose as Appellant? Appeal Br. 22-
23.

FACTS PERTINENT TO THE ISSUES
1. The ordinary and customary meaning of “isolated” is “separated from
others; solitary or singular.” THE AMERICAN HERITAGE DICTIONARY
OF THE ENGLISH LANGUAGE (4th ed. 2000), http://www.bartelby.com
(last visited Apr. 6, 2009).
2. In describing the “isolated gap,” Appellant’s Specification states:
The depression may be comprised of any
shape or configuration which is capable of
providing an isolated gap between the seal
engagement surface and the housing engagement
surface. An isolated gap is necessary in order to
inhibit the passage of pressurized fluid into the gap
which may offset or neutralize the engagement
force otherwise exerted between the seal
engagement surface and the housing engagement
surface.
The depression may be comprised of a
single isolated depression or may be comprised of
a depression pattern. Preferably the depression is
comprised of a depression pattern. Preferably the
depression pattern is distributed throughout a
substantial portion of the seal engagement surface
or the housing engagement surface so that the
engagement force is likewise distributed.
Specification 5:26 to 6:8. Appellant’s Specification further states:
The gap (48) is isolated in that the seal
engagement surface (34) effectively seals the gap
(48) on all sides to trap low (atmospheric) pressure
air in the gap while the seal assembly (20) is being
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assembled and to inhibit fluid from passing into
the gap (48) while the seal is in service.
Specification 10:28 to 11:2.
3. As illustrated in Fig. 2b of Müller, the depression in backup ring 3
defined between two adjacent projections 32 is unsealed at its inner
radial extent and thus, is in fluid communication with (i.e., not
separated from) the gap between the inner radial surface of the
cylindrical outer part 8 and shaft 5. Consequently, the depression is
not isolated in the sense described in Appellant’s Specification (Fact
2), because it is not effectively sealed on all sides by the seal
engagement surface and will not trap low pressure air in the gap
formed by the depression.
4. There is no dispute that the subject matter in the preamble of claim 1,
preceding “the improvement comprising,” was conventional, or
known, at the time of Appellant’s invention. This conventional, or
known, structure includes a seal assembly for sealing with a rotatable
component so that the seal assembly defines a first side of the seal
assembly and a second side of the seal assembly, and so that the first
side is sealed from the second side by the seal assembly, the seal
assembly comprising a seal element retained within a seal housing,
wherein one of the seal element and the seal housing is comprised of a
compressible material. The seal element comprises a planar seal
engagement surface, and the seal housing comprises a planar housing
engagement surface for engaging the planar seal engagement surface.
See Claim 1; 37 C.F.R. § 1.75(e) (2008).
5. The Examiner finds that Appellant discloses that the known seal
assembly (Fact 4) includes a spring used for a preloading mechanism.
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Answer 4. Appellant does not dispute this finding. In fact, Appellant
ostensibly confirms the accuracy of this finding, stating that “[t]he
Specification at page 1, line 27 to page 2, line 3 does describe the use
of springs or other biasing devices to keep the sealing surface of a seal
engaged with both the abutting component and with the seal housing.”
Appeal Br. 22.
6. In a seal assembly for use between a pair of cooperating elements
which may be movable relative to each other, such as a shaft
journaled in a casing, as in the conventional seal assembly discussed
in Fact 4, Bent teaches forming in at least one wall of a seal housing a
recess or depression into which the material of the sealing ring may
flow or be displaced when the sealing ring is compressed into the
housing for operation. Col. 1, ll. 1-5 and 29-33; fig. 7. This recess
helps prevent excessive friction between the elements while at the
same time maintaining a tight seal between the elements. Col. 1, ll.
16-23. According to Bent, any fluid pressure communicated to the
periphery of the shaft will act on the sealing ring only in a direction to
cause the material of the sealing ring to flow into the recess and any
unfilled space within the seal housing, thus ensuring against excessive
pressure of the sealing ring against the shaft. Col. 2, l. 51 to col. 3, l.
2; col. 4, ll. 34-41. The displacement of the material of the sealing
ring into the recess also helps prevent undesired rolling of the sealing
ring along the shaft wall. Col. 3, ll. 3-20; col. 4, ll. 34-41.
7. In the particular embodiment illustrated by Bent, the annular recess 37
is formed in the side wall (parallel to the longitudinal axis of rotation
of the shaft), rather than in an engagement surface normal to the
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longitudinal axis of rotation of the shaft (component), as called for in
claim 1. Fig. 7.
8. Appellant concedes that Bent discloses a circumferential groove
which extends for a length equal to the circumference of the
engagement surfaces. Appeal Br. 20.
9. Bent attributes to the shapes and relative proportions of the sealing
ring, groove (housing), and recess shown and described criticality in
preventing rolling of the sealing ring along the shaft. Col. 3, ll. 10-20.
Given the illustrations of figs. 1-7 of Bent, this teaching by Bent
would have dissuaded a person of ordinary skill in the art from
providing multiple annular recesses in the wall of the housing to
achieve the objectives of preventing excessive friction and rolling of
the sealing ring along the shaft.
10. Chrzanowski shows that a sealing ring compressed by high pressure
fluid would tend to extrude into a recess formed in a wall normal to
the longitudinal axis of rotation of the shaft, tending to key the sealing
ring to the housing so as to help prevent slipping of the sealing ring
during rotation of the shaft. Col. 3, ll. 14-20; fig. 2.
11. A person of ordinary skill in the art would have readily appreciated
from the combined teachings of Bent and Chrzanowski that an annular
recess formed in a wall of the seal housing normal to, rather than
parallel to, the longitudinal axis of rotation of the shaft, would achieve
the advantages of preventing excess friction and rolling of the sealing
ring along the shaft discussed by Bent (see Fact 6).
12. Jesswein teaches providing more than one relief opening 54, 55, 56 in
the sealing ring-receiving grooves 24, 26 of a pivot joint to provide a
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more uniform distribution of pressure and lubricant within the pivot
joint when lubricant is inserted. Col. 3, ll. 49-57; fig. 5. Jesswein’s
relief openings are provided to prevent extrusion of the sealing ring
from the sealing ring-receiving groove when lubricant is inserted.
Col. 3, ll. 44-54.
13. The Examiner does not rely on Kalsi for any teaching directed to
details of a depression formed in the housing engagement surface or
seal engagement surface. Rather, the Examiner relies on Kalsi merely
for its teaching to use a seal in a drilling apparatus to isolate
lubricating fluid from drilling fluid. Answer 5.

PRINCIPLES OF LAW
In interpreting claim language, we apply the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). See also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).
“Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, “there must be
no difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention.” Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
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1991). It is not necessary that the reference teach what the subject
application teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be found in or fully
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772
(Fed. Cir. 1983).
Section 103 forbids issuance of a patent
when “the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of ordinary
skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418.
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“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at 421.
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 417. We must ask whether the improvement is more than the
“predictable use of prior art elements according to their established
functions.” Id.
Obviousness does not require that all of the features of the secondary
reference be bodily incorporated into the primary reference. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Nor is the artisan compelled to
blindly follow the teaching of one prior art reference over the other without
the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984).

ANALYSIS
Issue (1)
Consistent with Appellant’s Specification (Fact 2), we understand an
“isolated gap” as called for in claim 1 to be a gap that is separated from all
other regions (see Fact 1), in the sense of being sealed on all sides by the
seal engaging surface, so as to trap low (atmospheric) pressure air in the gap
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while the seal assembly (20) is being assembled, and to inhibit fluid from
passing into the gap (48) while the seal is in service. The Examiner reads
the depression providing an isolated gap in claim 1 on the depression in
backup ring 3 defined between two adjacent projections 32 in Fig. 2b of
Müller. Answer 3. As noted in our findings above (Fact 3), the depression
in backup ring 3 defined between two adjacent projections 32 in Fig. 2b of
Müller does not provide an “isolated gap” as called for in claim 1, because it
is not effectively sealed on all sides by the seal engagement surface, and will
not trap low pressure air in the gap formed by the depression. Therefore,
Appellant has demonstrated that the Examiner erred in rejecting claim 1 and
claims 2-17 as being anticipated by Müller.
The Examiner does not rely on Kalsi for any teaching that would
make up for the deficiency in Müller (Fact 13). Therefore, Appellant has
also demonstrated error in the rejection of claims 19 and 20 as being
unpatentable over Müller and Kalsi.
Issue (2)
Appellant does not present separate arguments for the patentability of
claims 9 and 10 apart from independent claim 1. Thus, in accordance with
37 C.F.R. § 41.37(c)(1)(vii) (2008), claims 9 and 10 stand or fall with claim
1.
There is no dispute that a seal assembly satisfying all the elements of
claim 1, with the exception of a depression providing an isolated gap formed
in the planar housing engagement surface oriented in a plane normal to the
longitudinal axis of rotation of the rotatable component, was known at the
time of Appellant’s invention (Fact 4). Bent teaches forming in at least one
wall of a seal housing a recess or depression into which the material of the
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sealing ring may flow, or be displaced, when the sealing ring is compressed
into the housing for operation, to help prevent excessive friction between the
elements while at the same time maintaining a tight seal between the
elements (Fact 6). According to Bent, any fluid pressure communicated to
the periphery of the shaft will act on the sealing ring only in a direction to
cause the material of the sealing ring to flow into the recess and any unfilled
space within the seal housing, thus ensuring against excessive pressure of
the sealing ring against the shaft and preventing undesired rolling of the
sealing ring along the shaft wall (Fact 6). In the particular embodiment
illustrated by Bent, the annular recess 37 is formed in the side wall (parallel
to the longitudinal axis of rotation of the shaft), rather than in an engagement
surface normal to the longitudinal axis of rotation of the shaft (component),
as called for in claim 1 (Fact 7). Chrzanowski shows that a sealing ring
compressed by high pressure fluid would tend to extrude into a recess
formed in a wall normal to the longitudinal axis of rotation of the shaft,
tending to key the sealing ring to the housing so as to help prevent slipping
of the sealing ring during rotation of the shaft (Fact 10).
A person of ordinary skill in the art would have readily appreciated
from the combined teachings of Bent and Chrzanowski that an annular
recess formed in a wall of the seal housing normal to, rather than parallel to,
the longitudinal axis of rotation of the shaft, would achieve the advantages
of preventing excess friction and rolling of the sealing ring along the shaft
discussed by Bent (Fact 11). Thus, a person of ordinary skill it the art would
have recognized that either position would be suitable for the recess to
achieve the advantages sought by Bent. Appellant has not persuaded us that
the Examiner erred in determining that it would have been obvious in view
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of the combined teachings of Bent and Chrzanowski to modify the housing
of the known prior art seal assembly by providing a recess in a planar wall
(housing engagement surface) normal to the longitudinal axis of rotation of
the rotating component. See Answer 5. A person of ordinary skill in the art
would have been prompted to make the modification to attain the advantages
taught by Bent, namely, preventing excessive friction between components
and preventing rolling or rotation of the seal element along the rotating
component.
We fully appreciate that Chrzanowski discloses a vent hole 40 through
the end wall of the seal housing normal to the longitudinal axis of rotation of
the shaft, and not a depression providing an isolated gap, as called for in the
claim and as taught by Bent, but the Examiner does not rely on Chrzanowski
for such a teaching. Rather, Chrzanowski is merely relied upon for its
showing that high pressure fluid acting on the seal element will cause the
seal element to deform into a recess or depression in the end wall, or
engaging surface normal to the axis of rotation of the shaft (rotating
component), thus preventing excessive friction between the seal element and
the shaft and keying the seal element to the housing to prevent rolling of the
seal element along the shaft in the manner discussed by Bent. Thus, a
person of ordinary skill in the art would have appreciated that the end wall,
or engaging surface normal to the axis of rotation of the shaft (rotating
component), would be a suitable location for the recess taught by Bent. The
modification proposed by the Examiner is nothing more than the predictable
use of prior art elements according to their established functions. Moreover,
Appellant has not alleged, much less shown, that such modification would
have been beyond the technical grasp of a person of ordinary skill in the art.
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For the above reasons, Appellant has not demonstrated error in the
rejection of claim 1 and claims 9 and 10, which fall with claim 1, as being
unpatentable over AAPA, Bent, Chrzanowski, and Jesswein.
Issues (3) and (4)
Appellant groups claim 11 with claim 2 and claim 12 with claim 3.
Appeal Br. 19 and 20. We select claims 2 and 3 as the representative claims,
with claims 11 and 12 standing or falling with claims 2 and 3, respectively.
Appellant concedes that Bent discloses a circumferential groove
which extends for a length equal to the circumference of the engagement
surfaces, as called for in claims 2 and 3 (Fact 8). Appellant argues that Bent
does not teach the groove being formed in a surface in a plane normal to the
longitudinal axis of the rotatable component, as also required in these
claims, and that Chrzanowski teaches a vent hole, and thus cannot cure this
deficiency. Appeal Br. 19 and 20. This line of argument is unpersuasive for
the reasons discussed above with regard to Issue (2). Appellant thus has not
demonstrated error in the rejection of claims 2, 3, 11, and 12 as being
unpatentable over AAPA, Bent, Chrzanowski, and Jesswein.
Issue (5)
Claims 4-6 and 13-15 require that the depression comprise a plurality
of substantially parallel circumferential grooves. The Examiner concedes
that Bent does not disclose plural grooves, but considers modification to
provide plural grooves to be an obvious duplication of parts, and known in
the art as evidenced by Jesswein. Answer 5. We do not agree with the
Examiner. Bent attributes to the shapes and relative proportions of the
sealing ring, groove (housing), and recess shown and described criticality in
preventing rolling of the sealing ring along the shaft (Fact 9). Given the
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illustrations of figs. 1-7 of Bent, this teaching by Bent would have dissuaded
a person of ordinary skill in the art from providing multiple annular recesses
in the wall of the housing to achieve the objectives of preventing excessive
friction and rolling of the sealing ring along the shaft (Fact 9). The
Examiner’s reliance on Jesswein for a reason to modify the known seal
assembly to provide a plurality of circumferential grooves is misplaced.
Jesswein’s teachings with regard to the provision of multiple relief openings
(Fact 12) would not have prompted a person of ordinary skill in the art to
provide multiple annular blind, or isolated, recesses of the type taught by
Bent.
For the above reasons, Appellant has demonstrated error in the
Examiner’s rejection of claims 4-6 and 13-15 as being unpatentable over
AAPA, Bent, Chrzanowski, and Jesswein.
Issue (6)
Appellant argues claims 7, 8, 16, and 17 as a group. Thus, we select
claim 7 as representative, with claims 8, 16, and 17 standing or falling with
claim 7.
Claim 7 requires a preloading mechanism for urging the planar
engagement surfaces into engagement with each other. The Examiner finds
that Appellant discloses that the known seal assembly (Fact 4) includes a
spring used for a preloading mechanism. Answer 4. Appellant does not
dispute this finding (Fact 5). Rather, Appellant argues that the admissions in
Appellant’s Specification with regard to the known seal assembly do not
contemplate the use of such a preloading mechanism in combination with a
depression, and for the sole purpose of providing an initial engagement force
between the engagement surfaces to inhibit the passage of fluid between the
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engagement surfaces and thus into the depression. Appeal Br. 22. This
argument is not persuasive for two reasons. First, the argument is not
commensurate with the scope of claim 7, which does not require that the
sole purpose of the preloading mechanism be to provide an initial
engagement force between the engagement surfaces to inhibit the passage of
fluid between the engagement surfaces and thus into the depression. It is
well established that limitations not appearing in the claims cannot be relied
upon for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Moreover, in determining whether the subject matter of a claim is obvious,
“neither the particular motivation nor the avowed purpose of the [applicant]
controls. What matters is the objective reach of the claim.” KSR, 550 U.S.
at 419. Second, Appellant’s argument attacks the references in isolation,
rather than in combination. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).

CONCLUSIONS OF LAW
(1) Appellant has demonstrated that the Examiner erred in rejecting
claims 1, 7-10, and 16-18 as being anticipated by Müller, and claims
19 and 20 as being unpatentable over Müller and Kalsi.
(2) Appellant has not demonstrated that the Examiner erred in rejecting
claim 1 as being unpatentable over AAPA, Bent, Chrzanowski, and
Jesswein.
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(3) Appellant has not demonstrated that the Examiner erred in rejecting
claim 2 as being unpatentable over AAPA, Bent, Chrzanowski, and
Jesswein.
(4) Appellant has not demonstrated that the Examiner erred in rejecting
claim 3 as being unpatentable over AAPA, Bent, Chrzanowski, and
Jesswein.
(5) Appellant has demonstrated that the Examiner erred in rejecting
claims 4-6 and 13-15 as being unpatentable over AAPA, Bent,
Chrzanowski, and Jesswein.
(6) Appellant has not demonstrated that the Examiner erred in rejecting
claim 7 as being unpatentable over AAPA, Bent, Chrzanowski, and
Jesswein, by arguing that the AAPA does not contemplate use of a
preloading device in combination with a depression providing an
isolated gap, and for the same purpose as Appellant.

DECISION
The Examiner’s decision is affirmed as to claims 1-3, 7-12, 16, and
17 and reversed as to claims 4-6, 13-15, and 18-20.
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) (2007).
AFFIRMED-IN-PART

Appeal 2008-2889
Application 10/769,761

20

mls

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