AKTIEBOLAGET SKF et al.

Patent Trials and Appeals Board

Nov 3, 2020

2020001180 (P.T.A.B. Nov. 3, 2020)

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.
15/307,060 10/27/2016 Michael Baumann 2014P00096WOUS 5433
81598 7590 11/03/2020
SKF GmbH
IA&IP
Gunnar-Wester-Strasse 12
Schweinfurt, 97421
GERMANY
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
ipr@skf.com
mark@jtek-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL BAUMANN,
PASCAL EHRET, PASCAL MANDOU, and
LARS ZIEMEN
__________

Appeal 2020-001180
Application 15/307,060
Technology Center 3600
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, 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 2–9, 11, and 16–22. Claims 1, 10, and
12–15 have been canceled.2 We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real parties in interest as
Aktiebolaget SKF and SKF Blohm + Voss Industries GmbH. Appeal Brief
(“Appeal Br.”) 1, filed May 29, 2019.
2 See Amendment filed Dec. 26, 2017.
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We AFFIRM IN PART and designate our affirmance of the rejection
of claims 3–8 and 16–22 under 35 U.S.C. § 103 as a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER

The claimed subject matter relates to “seal assemblies for a
component supported rotatably in relation to a further component.” Spec.
¶ 2. Claim 16, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
16. A rotary assembly comprising:
a first component supported rotatably in relation to a
second component,
a fixed seal element on the second component,
a rotatable seal element on the first component supported
in sliding contact with the fixed seal element,
a bellows comprising an elastic annular body having a
radially outwardly facing U-shaped channel, a first radially
extending leg and a second radially extending leg and a bight
connecting the first leg to the second leg, the channel being
defined by an inner surface of the first leg, an inner surface of the
bight and an inner surface of the second leg, and an outer surface
of the bight defining a central opening of the bellows,
wherein an outer surface of the first leg is mounted to the
second component and the fixed seal element is connected to an
outer surface of the second leg,
wherein the bellows has a rest configuration in which an
opening of the channel has a first width, and
wherein the bellows is compressed such that the opening
of the channel has a second width less than the first width and
such that the bellows presses the fixed seal element against the
rotatable seal element.
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THE REJECTIONS

I. Claim 16 stands rejected under 35 U.S.C. § 112(b) as indefinite.
II. Claims 2–9, 11, and 16–22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Knight (WO 89/02555 A1, published Mar. 23, 1989).

ANALYSIS

Rejection I – Indefiniteness
The Examiner determines that claim 16 is indefinite because: (1)
“[t]he term ‘rest configuration’ in claim 16 is a relative term” but “is not
defined by the claim,” and (2) “the [S]pecification does not provide a
standard for ascertaining the requisite degree” of this term. Non-Final Act.
3.3 As such, the Examiner concludes that “one of ordinary skill in the art
would not be reasonably apprised of the scope of the [claimed] invention.”
Id.
Appellant contends that claim 16 is clear in light of Figure 1, which is
described in paragraph 26 of the Specification. Appeal Br. 3.
We agree with Appellant. As an initial matter, we agree with
Appellant that the term “‘[r]est configuration’ is not a relative term such as
‘large’ or ‘small.’” Id. at 2. Further, the Specification discloses that “[t]he
bellows 10 in Fig. 1 is under tension, i.e., is compressed, e.g., by a factor
smaller than 1/10, in the axial direction with respect to its rest state.” Spec.
¶ 26 (emphases added). Thus, a skilled artisan would understand that the
term “rest configuration,” when read in light of the Specification of the
subject invention, means a configuration in which the bellows are not under

3 Non-Final Office Action (“Non-Final Act.”), dated Oct. 2, 2018.
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stress or tension, e. g., are not compressed. See Appeal Br. 3. In the
Answer, the Examiner asserts that it is unclear whether “rest configuration”
is a configuration that is prior to assembly or after assembly and thus, the
positions of the bellows should be recited in the claim to denote structure.
Ans. 3.4 The fact that the claim could be construed to reasonably encompass
either of these non-conflicting interpretations does not, without more,
demonstrate indefiniteness. Breadth is not indefiniteness. See SmithKline
Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005).
Here, the Examiner confuses breadth with indefiniteness because
whether the bellows has a “rest configuration,” i.e., is not compressed, does
not require one to determine whether it is already assembled in a rotary
device. Rather, the only thing that is required for a “rest configuration” is
that there is no force acting on the bellows––regardless of whether the
bellows is assembled in a rotary device. Towards that end, we agree with
Appellant that “[i]t is not necessary, however, to consider any additional
structure to determine whether the claimed bellows is in its rest
configuration; one merely needs to determine if it is at rest, that is, not being
acted upon by an outside force.” Appeal Br. 2–3. As such, we find the term
“rest configuration” of claim 16 to be clear in light of Figure 1 and
paragraph 26 of the Specification.
Accordingly, for the above reasons, we do not sustain the Examiner’s
rejection of claim 16 as indefinite.

4 Examiner’s Answer (“Ans.”), dated Oct. 11, 2019.
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Rejection II – Obviousness over Knight
Claims 3–8 and 16–22:
Appellant does not offer arguments in favor of dependent claims 3–8
and 17–22 separate from those presented for independent claim 16. Appeal
Br. 3–5. We select claim 16 as the representative claim, and claims 3–8 and
17–22 stand or fall with claim 16. 37 C.F.R. § 41.37(c)(1)(iv) (2018).
Claim 16 is drawn to a rotary assembly comprising a fixed seal
element, a rotatable seal element, and a bellows, “wherein the bellows has a
rest configuration in which an opening of the channel has a first width” and
“wherein the bellows is compressed such that the opening of the channel has
a second width less than the first width and such that the bellows presses the
fixed seal element against the rotatable seal element.” Appeal Br. 9 (Claims
App.).
As to independent claim 16, the Examiner finds that Knight discloses
a rotary assembly comprising all the components as claimed including a
fixed seal element (second seal element 13), a rotatable seal element (first
seal element 11), and a bellows (elastomeric bellows 19), in which “the
bellows presses the fixed seal element 13 against the rotatable seal element
11.” Non-Final Act. 4 (emphasis added; citing Knight Fig. 1). Nonetheless,
the Examiner goes on to state that
Knight fails to explicitly disclose wherein when the bellows is
compressed the opening of the channel has a second width less
than the first width. Nevertheless, it would have been obvious to
one of ordinary skill in the art at the time the invention was made
since “[A]pparatus claims cover what a device is, not what a
device does.”[5] . . . .

5 Citing Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469,
(Fed. Cir. 1990).
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Furthermore, [Appellant] is advised that recitation of the
intended use of the claimed invention must result in a structural
difference between the claimed invention and the prior art in
order to patentably distinguish the claimed invention from the
prior art. If the prior art structure is capable of performing the
intended use, then it meets the claim. In other words, even if the
prior art does not explicitly disclose the intended use or the
function of the apparatus as written in the claims of the instant
invention, the prior art may not be patentably distinguishable
from the instant invention.
Id. at 4–5 (emphases added).
Appellant contends that the Examiner errs by not “identify[ing] the
modification to the primary reference necessary to arrive at the claimed
invention,” but Appellant
will assume that the modification to Knight that is being
proposed is to replace Knight’s cylinder 19, having a folded end
structure, with a bellows that is U-shaped in its rest state and to
install this bellows in Knight’s device such that it is not in its rest
state but rather is compressed.
Appeal Br. 4; see also Reply Br. 1–2.6
In response to Appellant’s contention, the Examiner states that
“Knight in fact does disclose a U-shaped bellows,” that “Knight shows each
and every structural limitation of claim 16,” and that “the Knight reference is
not being modified at all.” Ans. 3–5. The Examiner also states that the term
“compressed” with respect to the limitation “the bellows is compressed such
that the opening of the channel has a second width less than the first width
and such that the bellows presses the fixed seal element against the rotatable
seal element,” “is regarded . . . as functional language.” Id. at 4. The
Examiner reiterates that “Knight’s U-shaped bellows is capable of

6 Reply Brief (“Reply Br.”), filed Nov. 27, 2019.
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performing the functions stated in the claim, as clearly illustrated in Figs. 1
and 2.” Ans. 4; see also id. at 5 (“The Knight reference discloses each and
every structural limitation as claimed and is capable of performing the
functional limitations disclosed in the claims.”).
Appellant argues that the Examiner incorrectly determines that the
limitation of the bellows being compressed is functional language. See
Reply Br. 2 (arguing that “[i]t is not believed that claim 16 includes
functional limitations”). The opening of the channel of the bellows of claim
16 “has a second width less than the first width” in which the first width is
associated with “a rest configuration” of the bellows as discussed above.
What happens when the bellows are “compressed” or at “rest” is more
accurately described as an inherent property or characteristic of those
bellows rather than a purely functional limitation. Nonetheless, the proper
analysis for such language is described at MPEP § 2112.01 and cases cited
therein. Specifically, the examiner must provide sufficient evidence or
technical reasoning to establish there is a sound basis for the examiner’s
belief that a recited property or functional characteristic is an inherent
property or characteristic of the prior art. See In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (discussed at MPEP § 2112.01). As this has not been
done by the Examiner, Appellant was under no obligation to demonstrate
that Knight’s bellows do not possess the recited characteristics. See Id.
We do not fault Appellant for questioning what portion of Knight’s
rotary assembly the Examiner is proposing to modify. Indeed, claim 16 is
rejected as being obvious over––rather than as being anticipated by––
Knight. Further, even if the Examiner were correct in determining that
claim 16 recites a functional limitation, the Examiner’s determination that
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Knight meets the functional limitation by virtue of being “capable of
performing the intended use” would seemingly warrant an anticipation
rejection––rather than an obviousness rejection––unless the Examiner
identifies a difference between the claimed subject matter and that disclosed
by Knight.
However, to the extent Appellant is arguing that Knight does not
disclose all the limitations of claim 16, we do not agree. See Reply Br. 2
(arguing that “every limitation of claim 16 has not been addressed”).
Initially, we note that in the Non-Final Office Action, the Examiner’s
two different assessments of Knight appear to be contradictory. The
Examiner’s first assessment is that “the bellows [19 of Knight] presses the
fixed seal element 13 against the rotatable seal element 11.” Non-Final Act.
4 (emphasis added). The Examiner’s second assessment of Knight is that
“Knight fails to explicitly disclose wherein when the bellows is compressed
the opening of the channel has a second width less than the first width.” Id.
(emphasis added). It appears to us that if Knight’s elastomeric bellows 19
(which has a U-shape) presses the second seal element 13 (laterally from left
to right as shown in Figure 1) against the first seal element 11, then Knight’s
elastomeric bellows 19 is also compressed such that the opening of its
channel has “a second width less than the first width,” as claimed. See
Appeal Br. 9 (Claims App.). A careful reading of Knight indicates that this
is the case, as explained below.
First, as the Examiner points out, Knight’s elastomeric bellows 19 is
clearly a bellows that has “a radially outwardly facing U-shaped channel,” as
claimed. See Knight, Figs. 1–2; see also Non-Final Act. 4. Figure 1 of
Knight is reproduced below:
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Figure 1 “is a cross-section through a preferred embodiment of a mechanical
seal in a closed position to seal a rotating shaft extending from a housing
containing a product fluid.” Knight, p. 5. Knight discloses that
[t]he mechanical seal (9) is characterised by the provision of an
elastomeric bellows (19) connected at one end to the second seal
element (13) and at the other end to the housing (3), the bellows
(19) having a radially disposed surface responsive to the pressure
of the product fluid, whereby the closing force acting on the
second seal element (13) is a combination of the spring action of
the bellows (19) and the pressure of the product fluid acting on
the surface.
Knight, Abstr. (emphases added); see also id. at p. 4.
Because Knight’s elastomeric bellows 19 has a force acting on––or a
spring action on––second seal element 13 and elastomeric bellows 19 has a
U-shape and is positioned lateral to the second seal element 13, it stands to
reason that elastomeric bellows 19 “is compressed such that the opening of
the channel has a second width less than the first width and such that the
bellows presses the fixed seal element against the rotatable seal element.”
See Appeal Br. 9 (Claims App.). Thus, we ultimately agree with the
Examiner that “Knight shows each and every structural limitation of claim
16.” Ans. 4. Although the Examiner bases the rejection on obviousness,
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rather than anticipation, we note that “[i]t is well settled that ‘anticipation is
the epitome of obviousness.’” See In re McDaniel, 293 F.3d 1379, 1385
(Fed. Cir. 2002) (citation omitted).
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 16 as unpatentable over
Knight. Accordingly, we sustain the Examiner’s rejection of claim 16. We
further sustain the rejection of claims 3–8 and 17–22, which fall with claim
16. As we set forth reasoning, which may differ from or supplement the
Examiner’s reasoning, we designate our affirmance of the Examiner’s prior-
art rejection as including a new ground of rejection under 37 C.F.R.
§ 41.50(b) to afford Appellant the procedural options for response associated
therewith.

Claims 2 and 11:

Claims 2 and 11 recite “wherein a material of the fixed seal element
has a first degree of hardness and a material of the rotatable seal element has
a second degree of hardness different than the first degree of hardness.”
Appeal Br. 8 (Claims App.).
The Examiner finds that Knight discloses a fixed seal element
material of carbon and a rotatable seal element material of sintered ceramic,
and thus, Knight discloses that the degree of hardness of the fixed seal
element is different from the degree of hardness of the rotatable seal
element. Non-Final Act. 5–6. The Examiner further takes the position that
Knight discloses that any suitable material may be selected in accordance
with a number of parameters. Ans. 5.
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The Examiner does not direct us to any particular passages in Knight
in connection to the limitations of claims 2 and 11. Knight discloses that
[t]he seal elements may be formed from any suitable materials
selected in accordance with a number of parameters which
include the speed of rotation of the shaft 7 and the nature of the
product fluid 5. Suitable materials for the rotary and stationary
seal elements 11 and 13 include sintered ceramics, alloy metals
and carbon.
Knight, p. 7 (emphases added).
At best, in this passage, Knight discloses that together, i.e., both the
rotary seal element 11 and the stationary seal element 13, can be any
suitable materials such as sintered ceramics, alloy metals or carbon. That is,
both elements can be made of sintered ceramics, or both elements can be
made of metals, and so forth. Further, even if “[t]he seal elements may be
formed from any suitable materials selected in accordance with a number of
parameters,” that does not mean the rotary seal element 11 must be made of
a different material than that of the stationary seal element 13. See Ans. 5.
Thus, we agree with Appellant that Knight does not teach the fixed seal
element has a first degree of hardness that is different than the degree of
hardness of the rotatable seal element. Appeal Br. 6.7

7 We note that any consideration of what a skilled artisan may deem obvious
regarding possible advantages of having different degrees of hardness is
immaterial to the rejection in the manner it is presented here for our
review. We further note that the Patent Trial and Appeal Board is a review
body, rather than a place of initial examination, and we therefore decline to
make a determination of what a skilled artisan may conclude; rather, we
leave it to the Examiner to determine the appropriateness of any further
course of action based on such a conclusion should there be further
prosecution of this application.
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For these reasons, we do not sustain the Examiner’s rejection of
claims 2 and 11.

Claim 9:

Claim 9 recites “A current power plant or tidal power plant with a seal
assembly according to claim 16.” Appeal Br. 8 (Claims App.).
The Examiner finds that “Knight discloses a current power plant or
tidal power plant 3 with a seal assembly [as shown in] Fig. 1.” Non-Final 6.
Knight discloses item 3 in Figure 1 as a “housing.” Knight, p. 6. We thus
agree with Appellant that Knight does not disclose a “current power plant or
tidal power plant” as recited in claim 9. Appeal Br. 6–7. The Examiner is
incorrect in construing this limitation of claim 9 as a functional limitation.
See Ans. 5–6. Claim 9 does not recite “a seal assembly for a current power
plant or a tidal power plant.” See Appeal Br. 8 (Claims App.). Claim 9’s
recitation of “[a] current power plant or tidal power plant” denotes that the
claimed subject matter is directed to the current or tidal power plant in
combination with the seal assembly. See id. The Examiner does not direct
us to any disclosure in Knight relevant to a current power plant or tidal
power plant.8 See Non-Final 6; see also Ans. 5–6.
For these reasons, we do not sustain the Examiner’s rejection of claim
9.

8 Our comment in footnote 7 above applies equally to the subject matter of
claim 9.
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CONCLUSION
In summary:

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:

(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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the

9 We designate the affirmance of the rejection of claims 3–8 and 16–22
under 35 U.S.C. § 103 as a NEW GROUND OF REJECTION.
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
16 112(b) Indefiniteness 16
2–9, 11,
16–22
103 Knight 3–8, 16–
229
2, 9, 11
3–8, 16–22 103 Knight 3–8, 16–
22
Overall
Outcome
3–8, 16–
22
2, 9, 11 3–8, 16–
22
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claims, appellant may again appeal to the Board pursuant to this
subpart.

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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 IN PART; 37 C.F.R. § 41.50(b)