Ex Parte Smith

Board of Patent Appeals and Interferences

Jul 24, 2007

10689392 (B.P.A.I. Jul. 24, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board
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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT R. SMITH, III

Appeal 2006-2795
Application 10/689,392
Technology Center 3600
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Decided: July 24, 2007
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Before: TERRY J. OWENS, MURRIEL E. CRAWFORD, and ANTON W.
FETTING, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1 to 4, 6 to 8 and 11 to 16. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
Appellant invented a seal retainer with pressure energized metal seal
members for undersea hydraulic coupling (Specification 1).

Appeal 2006-2795
Application 10/689,392

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Claim 1 under appeal reads as follows:

1. A seal retainer for an undersea female hydraulic coupling member,
comprising:
a. a first metal seal integral with the seal retainer for creating a
pressure-energized seal between the seal retainer and a probe of a
male coupling member inserted in a female hydraulic coupling
member containing the seal retainer; and,
b. a second metal seal integral with the seal retainer for creating a
pressure-energized seal between the seal retainer and a female
hydraulic coupling member containing the seal retainer.

The Examiner rejected claims 1 to 4, 6 to 8 and 11 to 16 under
35 U.S.C. § 103 as being unpatentable over Smith in view of Press.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith,III (“Smith) 5,015,016 May 14, 1991
Press 3,142,498 Jul. 28, 1964

Appellant contends that there is no motivation or reason to combine
the teachings of Smith and Press.
The Examiner contends that Press teaches that making a pressure-
energized seal integral with the body of the retainer is an art equivalent to
providing them separately. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to modify the retainer of Smith by making the first and second seals integral
with the retainer as such is an art equivalent construction as taught by Press.

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Appeal 2006-2795
Application 10/689,392

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ISSUES
Has Appellant shown that the Examiner erred finding that there is a
reason or motivation to combine the teachings of Smith and Press.

FINDINGS OF FACT
Appellant invented a seal retainer 10 that is depicted in Figures 1 and
2. The seal retainer 10 is used in a female hydraulic coupling member 72.
The seal retainer 10 includes a first metal seal 64 and a second metal seal 68.
First metal seal 64 and second metal seal 68 are integral with the seal
retainer 10. First metal seal 64 is machined so that when the probe of the
metal coupling member is inserted into the female coupling member 72, the
metal seal 64 will be forced out slightly causing a press fit or interference fit
(Specification, paragraph 00015). If pressurized fluid is attempting to flow
up along the probe, it will first fill cavity 66, which as the pressure builds,
will simply work to increase the seal pressure of the metal seal 64 against
the probe (Specification, paragraph 00015). Second metal seal 68 is
machined so that when end 29 of the seal retainer is in contact with shoulder
76 of the female hydraulic member, the legs of metal seal 68 are in press
contact with shoulder 78 of the female hydraulic member so that a slight
displacement of second seal 68 occurs. If fluid from outside the coupling
tries to come around the seal retainer and gets past seal 70, fluid will fill
cavity 82 and cause additional pressure to further seal off fluid flow
using second metal seal 68 (Specification, paragraph 00016).
Smith discloses a seal retainer 22 for an undersea female hydraulic
member 14 (col. 1, lines 6 to 9; Figure 3). A first metal seal 15 and second
metal seal 55 are disposed in contact with seal retainer 22 (col. 5, line 37;
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Appeal 2006-2795
Application 10/689,392

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col. 6, line 33; Figure 3). First metal seal 15 and second metal seal 55 are
not integral with the seal retainer 22.
Press discloses a swivel joint assembly with complimentary swivel
members 12 and 13 (col. 2, lines 15 to 17). In the embodiment depicted in
Figure 3, a flexible metal flange 16 integral with swivel member 13 bears
against a shoulder 15 of member 12 thereby creating a fluid tight seal (col. 2,
lines 25 to 26 and col. 2, line 70 to col. 3, line 3). In the embodiment
depicted in Figure 5, an annular metal element or ring 30 which is not
integral with the swivel member 13 provides the fluid tight seal (col. 3, lines
25 to 37). Press does not disclose a seal retainer or an undersea hydraulic
female member.
Press discloses that an integral seal and a non-integral seal are
equivalent in connection with a swivel member in a swivel joint assembly.
Press does not disclose metal seals for use in a female member in a female
hydraulic member.
DISCUSSION
The Examiner is correct that where two known alternatives are
interchangeable for their desired function, an express suggestion of the
desirability of the substitution of one for the other is not needed to render
such substitution obvious. See in re Fout, 675 F.2d 297, 301, 213 USPQ
532, 536 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568, 152 USPQ 618,
619 (CCPA 1967). However, we find no teaching in the prior art that it was
known to form seals 15 and 55 of Smith so as to be integral with the seal
retainer 22. While Press discloses that in a swivel joint assembly a flange
portion 16, which seals one swivel member to another may be formed
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Application 10/689,392

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integral, or non-integral, with one of the swivel members, such is not a
teaching that integral and non-integral seals for a seal retainer are known
alternatives. In this regard, Press does not disclose a male and female
hydraulic member with circular seals as is disclosed in Smith. Therefore,
the teachings in Press of the interchangeability of integral and non-integral
seals on a swivel member would not have motivated a person of ordinary
skill in the art to form the seals on the seal retainer 22 of Smith integral with
the seal retainer 22. Therefore, we will not sustain this rejection. The
decision of the Examiner is reversed. 9
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REVERSED

JRG

WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI,
L.L.P.
20333 SH 249
SUITE 600
HOUSTON, TX 77070
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