Bal Seal Engineering, LLC

Patent Trials and Appeals Board

Dec 17, 2021

2021004919 (P.T.A.B. Dec. 17, 2021)

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.
16/150,117 10/02/2018 Patrick Whitford 1129-166.101 9231
22145 7590 12/17/2021
Klein, O''Neill & Singh, LLP
30 CORPORATE PARK
SUITE 211
IRVINE, CA 92606
EXAMINER
SCHWARTZ, CHRISTOPHER P
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
12/17/2021 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):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK WHITFORD and FARSHID DILMAGHANIAN

Appeal 2021-004919
Application 16/150,117
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b). A hearing was held on December 13, 2021.
We REVERSE.

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 Bal Seal
Engineering, LLC. Appeal Br. 2.
Appeal 2021-004919
Application 16/150,117

2
BACKGROUND
The Specification discloses that “[t]he invention pertains to spring
assemblies, canted coil springs, V-springs, and helical ribbon spring
assemblies with added spring support, among others.” Spec. 1, ll. 5–6.
CLAIMED SUBJECT MATTER
Claims 1, 16, and 18 are the independent claims on appeal. Claim 1 is
illustrative of the appealed claims and recites:
1. A spring assembly comprising:
an inner spring located inside an outer spring,
a helical ribbon spring as the outer spring, said outer spring
comprising a plurality of interconnected coils;
wherein said outer spring comprises an outer cross-sectional
profile;
wherein said inner spring comprises an inner cross-sectional
profile;
wherein said inner cross-sectional profile is located within said
outer cross-sectional profile and biased against interior surfaces
of the plurality of interconnected coils; and
wherein (1) the outer spring have two ends that are joined to form
a spring ring, (2) the inner spring have two ends that are joined
to form a spring ring, or (3) the outer spring have two ends that
are joined to form a spring ring and the inner spring have two
ends that are joined to form a spring ring.
Appeal Br. 23.
REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 103 as
unpatentable over Dilmaghanian2 in view of Balsells.3

2 Dilmaghanian et al., US 2016/0076568 A1, pub. Mar. 17, 2016.
3 Balsells, US 4,907,788, iss. Mar. 13, 1990.
Appeal 2021-004919
Application 16/150,117

3
DISCUSSION
We are persuaded of error in the rejection of the independent claims to
the extent that the Examiner has not provided an adequate reason with
rational underpinnings to support the combination proposed.
In rejecting claim 1, the Examiner finds that Dilmaghanian teaches the
use of a ribbon spring and “numerous cross sectional spring shapes”
including in “figures 33 and 35 which appear to indicate [a dual spring
arrangement] is within the scope of the invention.” Final Act. 2–3 (citing
Dilmaghanian ¶¶ 6, 12; Figs. 33, 35). However, the Examiner acknowledges
that Dilmaghanian does not provide “a specific showing of a dual spring
arrangement,” for which the Examiner relies on Balsells. Id. (citing Balsell
Figs. 16–21). The Examiner concludes:
One having ordinary skill in the art at the time the invention was
effectively filed would have found it obvious to have modified
Dilmaghanian et al. into a dual spring arrangement as taught by
Balsells simply to adapt the spring device to accommodate
different loading requirements in different applications for the
spring.
Id. The Examiner also notes that both Dilmaghanian and Balsells disclose
the use of ribbon springs. Id. at 5 (citing Dilmaghanian ¶ 12; Balsells
Fig. 20). The Examiner further explains that because Dilmaghanian
discloses a number of embodiments of the spring, Dilmaghanian’s device “is
adaptable to different applications and circumstance[s].” Id. at 6. The
Examiner states that modifying Dilmaghanian to include an outer ribbon
spring with an inner spring as claimed is “an obvious alternative
embodiment to that already shown by Dilmaghanian” and that Appellant’s
“device appears to be nothing more than an obvious reversal of parts to that
of Balsells[’] figure 20.” Id.
Appeal 2021-004919
Application 16/150,117

4
The key to supporting a prima facie conclusion of obviousness
under 35 U.S.C. § 103 is the clear articulation of the reason why the claimed
invention would have been obvious. The Court in KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) indicated that the analysis supporting
a rejection under 35 U.S.C. § 103 should be made explicit. The Federal
Circuit has stated that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at 418.
Here, the Examiner has not provided an adequate reason with
supporting evidence or explanation to show that the spring assembly of
claim 1 would have been obvious.
Dilmaghanian discloses “an in-line series of stackable contact
assemblies that can be used with sealing members, each contact assembly
comprising a housing and a spring.” Dilmaghanian ¶ 6. The spring
component is generally described as a canted coil spring, but can also be “a
garter spring, a cantilever spring, or a ribbon spring.” Id. ¶ 12; see also
id. ¶ 189. Dilmaghanian does not provide specific examples of a device
including a ribbon spring. Dilmaghanian also does not provide any
embodiments including both an inner and outer spring. To the extent the
Examiner cites to the embodiments shown in Figures 33 and 35, these depict
embodiments of “a canted coil spring 148 comprising a plurality of coils 36
of different shapes and sizes.” Id. ¶¶ 248, 250. Dilmaghanian discloses that
these embodiments include a spring with three loop sizes and arranged such
that “[t]he spring ring can be made smaller with the present canted coil
Appeal 2021-004919
Application 16/150,117

5
spring as fewer coils are arranged along the spring inside spring diameter”
and such that “spring force can be varied.” Id. However, Dilmaghanian
does not indicate that these embodiments provide a structure in which one
coil is situated within another coil.
Balsells discloses an “annular coil spring apparatus” including a first
annular spring with interconnected coils forming “a garter-type coil spring”
and with a second annular spring “disposed within the first annular spring.”
Balsells, Abs. Balsells discloses that the wire size, spacing, and angle of the
springs can be tailored to provide different load force characteristics. See Id.
at col. 9, l. 22–col. 10, l. 12. Balsells also discloses embodiments including
an outer canted coil spring and other types of inner springs, including “a
circular, non-canted, spring 411” and “a circular ribbon, round spring 414.”
Id. at col. 10, ll. 20–31. Balsells discloses that “[w]hile the ribbon spring
414 and circular spring 411 do not provide the same load characteristics as
the canted coil spring, they may be useful in tailoring the overall load-
deflection characteristics” of the device. Id. at col. 10, ll. 26–30. Notably,
Balsells does not disclose any embodiments in which the outer spring is
anything other than a canted coil spring.
Given this disclosure, we fail to see why one of ordinary skill in the
art would have had a reason to modify Dilmaghanian in the manner
proposed by the Examiner. The problem with the Examiner’s reasoning is
that it fails to adequately explain why one of ordinary skill in the art would
have been guided by Balsells’s device, including a canted coil spring on the
outside and a ribbon spring on the inside, in order to modify Dilmaghanian
to produce the opposite arrangement of a ribbon spring on the inside and a
canted coil spring on the outside. The Examiner reasons that the proposed
Appeal 2021-004919
Application 16/150,117

6
combination would “accommodate different loading requirements in
different applications for the spring,” but that does not explain why one of
ordinary skill in the art would have modified the device to include an outer
ribbon spring and an inner coil spring rather the opposite configuration
taught by Balsells.
Further, to the extent the Examiner relies on the embodiments of
Dilmaghanian’s Figures 33 and 35, these embodiments do not provide any
further evidence that it would have been obvious to provide an outer ribbon
spring and an inner coil spring. As explained by Appellant, neither of these
figures show a dual spring arrangement and are “directed to a single canted
coil spring 148 with different coil positions and sizes.” Appeal Br. 9 (citing
Dilmaghanian ¶ 248). As discussed, we see no indication that such springs
include any inner coil within an outer coil, contrary to the Examiner’s
assertions. See Ans. 6.
Finally, to the extent that the Examiner reasons that “such a
modification to Dilmaghanian simply results in a reversal of the Balsells
configuration in figure 20” (Ans. 6), the Examiner does not explain
adequately how this supports the conclusion of obviousness. Although this
may be a true statement, the Examiner still must provide a reason for
providing such a reversed configuration. The Examiner has not provided
any evidence or explanation showing that using the reverse configuration
would have been obvious.
Based on the foregoing, we are persuaded of error in the rejection of
claim 1 as obvious over Dilmaghanian and Balsells. Because the Examiner
uses the same reasoning with respect to the rejection of all claims, we are
Appeal 2021-004919
Application 16/150,117

7
also persuaded of error in the rejection of claims 2–20. Accordingly, we do
not sustain the rejection of claims 1–20.

CONCLUSION
We REVERSE the rejection of claims 1–20.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 103 Dilmaghanian,
Balsells
1–20

REVERSED