Ex Parte Bailey

Patent Trial and Appeal Board

Sep 14, 2017

12399380 (P.T.A.B. Sep. 14, 2017)

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.
12/399,380 03/06/2009 GEORGE E. BAILEY P005643-US-NP 1945
76438 7590 09/14/2017
VIVACQUA LAW, PLLC
3101 East Eisenhower Parkway
Suite 1
ANN ARBOR, MI 48108
EXAMINER
FOSTER, NICHOLAS L
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
09/14/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEORGE E. BAILEY
Appeal 2016-002667
Application 12/399,380
Technology Center 3600
Before LYNNE H. BROWNE, JEFFREY A. STEPHENS, and
ERIC C. JESCHKE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
George E. Bailey (Appellant) appeals under 35 U.S.C. § 134(a) from
the rejection of claims 1—11, 20-23, and 25—29.1 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Claims 12—19 and 24 are canceled. See Appeal Br. 34, 36 (Claims App.).
Appeal 2016-002667
Application 12/399,380
CLAIMED SUBJECT MATTER
The claims are directed to a coated ring seal. Spec. 11. Claims 1, 20,
and 27 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A ring seal for a rotating seal assembly, the ring seal
comprising:
an annular body having a substantially rectangular cross
section, a first side surface, a second side surface opposite the
first side surface, a top surface, and a bottom surface opposite the
top surface, wherein the annular body has a substantially uniform
composition; and
a coating of silica particles disposed on at least one of the
first side surface, the second side surface, the top surface, and the
bottom surface of the annular body, wherein a gradient in a
concentration of the silica particles is high on the surface and
diminishes as depth into the ring seal body increases.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Fukutome
Lonne
Yamagata
Terao
Kariya
US 4,600,201 July 15, 1986
US 5,405,458 Apr. 11, 1995
US 5,713,578 Feb. 3, 1998
US 8,088,496 B2 Jan. 3,2012
GB 2,314,604 A Jan. 7, 1998
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Application 12/399,380
REJECTIONS2
I. Claims 1—11 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claims 1—11 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
III. Claims 1—11, 20-23, and 25—29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Terao, Lonne, Kariya, and
Fukutome.
IV. Claims 1—11, 20-23, and 25—29 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Terao, Lonne, and
Yamagata.
DISCUSSION
Rejection I
The Examiner determines that the limitation “ring seal body” in claim
1 lacks antecedent basis. Final Act. 3. Based on this lack of antecedent
basis, the Examiner further determines that “it is unclear whether [this
limitation] refers to the previously claimed ‘annular body’ of the ring seal of
line 3, or to some sort of inherent totalitly [sic] of the ring seal.” Id.
Claim 1 recites, inter alia, a “ring seal comprising: an annular body.”
Appeal Br. 32, Claims App. Thus, the recitation of “ring seal body” does
not lack antecedent basis. Further, we agree with Appellant that
Given the two element claim, a person of ordinary skill in the art
could not reasonably find vagueness and indefmiteness in a claim
2 We do not consider Appellant’s arguments regarding the Specification and
Drawing Objections as these are petitionable, not appealable, matters that
are not within the jurisdiction of the Board. See MPEP §§ 1002 and 1201.
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Application 12/399,380
requiring “a ring seal. .. comprising an annular body. .. and . . .
a coating of silica particles disposed .. . wherein a concentration
of the silica particles . . . diminishes as depth into the ring seal
body increases.”
Id. at 9.
For these reasons, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 2—11, which depend therefrom, as being indefinite.
Rejection II
Based on the lack of antecedent basis alleged in Rejection I, the
Examiner determines that the limitation in claim 1 requiring “wherein a
gradient in a concentration of the silica particles is high on the surface and
diminishes as depth into the annular body of the ring seal increases” is not
supported in the Specification as filed. See Final Act. 5. For the reasons
discussed supra, we find no such lack of antecedent basis.
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to ‘“clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.”’ AriadPharm.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562—63 (Fed. Cir.
1991)). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. This test “requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art.”
Id.
The Examiner has conducted no such inquiry into the four comers of
the Specification and has provided no evidence that one skilled in the art
would not understand that Appellant had possession of the ring seal body as
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Application 12/399,380
claimed. Rather, we agree with Appellant that “the Examiner appears to
demand ver batim correspondence between the language of the specification
and of the claim(s). This is not the law.” Appeal Br. 8—9. The description
requirement does not demand that the Specification recite the claimed
invention in haec verba. AriadPharm., 598 F.3d at 1352.
For these reasons, we do not sustain the Examiner’s decision rejecting
claim 1, and claims 2—11, which depend therefrom, as failing to comply with
the written description requirement.
Rejection III
Appellant argues claims 1—11, 20—23, and 25—29 together. See
Appeal Br. 21—22. We select claim 1 as representative, and claims 2—11,
20—23, and 25—29 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner finds that Terao, Lonne, Kariya, and Fukutome disclose
or suggest all of the limitations of claims 1, 20, and 27. Final Act. 6—9, 12—
16, 18—21. In particular, the Examiner finds that “Kariya discloses a
gradient in the concentration by virtue of having three distinct portion of
decreasing concentration as depth into the seal increases.” Id. at 7. The
Examiner further finds that “Fukutome discloses that a gradient in
concentration is known in the art as a concentration decrease that is either a
consecutive or an interval decrease.” Id. at 8 (citing Fukutome 3:18—24).
Based on these findings, the Examiner reasons that it would have been
obvious
to have the concentration of diatomaceous earth (i.e. silica)
particles of the coating of the combination decrease as depth into
the seal increases as taught by Kariya et al. as this would provide
the expected results of better adhesion of the coating to the
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Application 12/399,380
annular body and better wear resistance of the seal (e.g. Kariya
column 9 lines 16-31, etc .. .).
Id. In addition, the Examiner determines “that the decreasing intervals of
the concentrations of Kariya disclose a gradient in concentration that is high
on the surface and decreases as depth into the seal increases as evidenced by
the use of the term in Fukutome.” Id. at 9.
Appellant “asserts that the ordinary and customary meaning of the
term ‘gradient’ is a ‘grade’ or ‘slope’, or in other words, ‘the rate of change’
and that a stepped concentration is not a graded or sloped concentration.”
Appeal Br. 14. In support of this assertion, Appellant relies, inter alia, upon
“the words of the claim itself and specification” and “the common dictionary
definitions of‘gradient’ [as] meaning] ‘grade’ or ‘slope’ or ‘rate of
change.’” Id.
Although, the Specification does not provide a definition of “gradient”
this term is discussed in paragraphs 16 and 29. In both of these paragraphs,
the Specification states, “a gradient in the concentration of the silica
particles exists where the concentration on the surface is high and the
concentration diminishes as the depth into the seal increases.” Spec. 116,
29. “[I]n determining the ordinary and customary meaning of the claim term
as viewed by a person of ordinary skill in the art, it is appropriate to consult
a general dictionary definition of the word for guidance.” Comaper Corp. v.
Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (citingPhillips v. AWH
Corp., 415 F.3d 1303, 1322—23 (Fed. Cir. 2005) (enbanc)). An ordinary
and customary meaning of the term “gradient” is “change in the value of a
quantity (such as temperature, pressure, or concentration) with change in a
given variable and especially per unit distance in a specified direction.”
Merriam-webster.com, http://www.merriam-webster.com/
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Application 12/399,380
dictionary/gradient. This is consistent with the use of the term in the
Specification. Accordingly, we adopt this definition of the term “gradient.”
Given this definition of the term “gradient,” we agree with the
Examiner that this definition does not preclude a rate of change that
decreases in intervals, as this definition specifically includes changes in a
given variable “especially per unit distance” (i.e. per interval). See Ans. 7—
8. Although we are cognizant of the Supplemental Declaration of Inventor
Bailey attesting to his understanding of the meaning of the term “gradient,”
this testimony is not dispositive. Rather, during examination of a patent
application, pending claims are given their broadest reasonable construction
consistent with the specification. In re Prater, 415 F.2d 1393, 1404—05
(CCPA 1969); In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Although “slope” is a possible definition of the term “gradient,”
it is not the broadest reasonable interpretation of this term. See Appeal Br.
14. As discussed supra, the broadest reasonable interpretation of the term
“gradient” includes a rate of change that decreases in intervals, such as that
disclosed in Kariya. We further agree that Fukutome’s statement describing
a “gradient layer has the nitrogen concentration decreasing consecutively or
at intervals towards the surface of the piston ring” provides further evidence
that our adopted definition is consistent with the understanding of those of
skill in the art. Fukutome 3:9-11 (emphasis added). Thus, Appellant’s
argument is unconvincing.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2—11, 20—23, and 25—29, which fall therewith, as unpatentable
over Terao, Fonne, Kariya, and Fukutome.
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Rejection IV
Appellant argues claims 1—11, 20-23, and 25—29 together. See
Appeal Br. 27. We select claim 1 as the illustrative claim, and claims 2—11,
20-23, and 25—29 stand or fall with claim 1.
The Examiner finds that Terao, Lonne, and Yamagata disclose or
suggest all of the limitations of claim 1. The Examiner finds that Lonne
“teaches that seals may have coatings that contain diatomaceous earth
particles (known in the art to be by definition a form of silica) in addition to
a polymer (column 2, lines 38—55).” Final Act. 23. Based on this finding,
the Examiner determines that it would have been obvious
to have coated the seal of Terao with a coating containing
diatomaceous earth particles (i.e. silica particles) on at least one
of the first side surface, the second side surface, the top surface,
and the bottom surface of the annular body as disclosed by Lonne
as this would have provided the expected results of increasing
the strength of the coating (Lonne column 2, lines 51—55) thus
increasing the strength of the seal. Furthermore it would have
been considered obvious to one having ordinary skill in the art,
at the time the invention was made, to have coated all sides of
the ring seal as examiner hereby takes official notice that it is
extremely well-known in the art to coat all sides of a ring seal as
this provides the expected result of better performance of the seal
on all sides.
Id.
Appellant contends that Lonne is non-analogous art.3 Appeal Br. 23.
In support of this contention, Appellant notes that “Lonne is directed to a
3 “Two separate tests define the scope of analogous prior art: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed
and, (2) if the reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed,
Cir. 2011).
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Application 12/399,380
flat, stationary sealing gasket.” Id. Appellant argues that Lonne “is
concerned with trying to avoid having the gasket weld to the head of the
internal combustion engine and render removal difficult. Ensuring
separation of long assembled parts is not the same as providing reduced
friction in a rotating ring seal.” Id. Appellant concludes that in Lonne “[t]he
reference to lowering the coefficient of friction between stationary parts is
given within this context and does not render the reference analogous.” Id.
In the Reply Brief, Appellant attempts to characterize Lonne as non-
analogous by focusing on the differences between the intended use of
Lonne’s gasket seal, arguing, for example, that “the gasket of Lonne et al.
resides between two stationary, planar surfaces whereas Appellant’s seal is
disposed between a rotating and a non-rotating component.” Reply Br. 7—8
(emphasis omitted). Although Appellant identifies such differences, these
differences alone are insufficient to preclude Lonne as non-analogous art.
As noted supra, two tests define what prior art qualifies as analogous
prior art. The Examiner finds that Lonne is “in the same field as applicant’s
application as both are directed toward seals intended to be placed between
two bodies to seal a gap therebetween.” Ans. 19. The Examiner explains
that:
Though they may not be for the same exact application they . . .
both involve providing seals between machine elements in
engines that may experience high pressures and temperatures
(e.g. cylinder head gaskets and piston rings used in the cylinders
of an engine) and require good strength and durability.
Id. at 20. The Examiner further finds that as “the inventor is also facing the
problem of bad durability, just as Lonne is.” Id. The Examiner explains that
Lonne
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Application 12/399,380
discloses increasing the strength of the coating and thus of the
gasket in column 2, lines 51—55, which would be pertinent to
applicant's disclosed problem stated in paragraph 4 of the
specification, that “deformation may cause a distribution of
contact pressure at the face of the ring seal[,]” and that such
“deformation decreases the durability of the ring seal and can
increase the leakage of fluids” (i.e. strengthening of the coating
and thus gasket would decrease deformation of the seal and thus
reduce friction between components).
Id. In addition, the Examiner notes that the Specification states “that
increasing the durability of the ring seal surfaces, lowering friction between
the components, and reducing fluid flow across the face of the seal are all
pertinent to applicant’s problem, not just reducing friction as argued by
applicant in the instant arguments.” Id. (quoting Spec. 14).
The Specification states that “[t]he present disclosure relates to ring
seals, [4] and more particularly to a ring seal coated with diatomaceous
earth.” Spec. 11. Thus, we agree with the Examiner that the field of
endeavor is ring seals (i.e., O-rings). Moreover, Appellant’s arguments are
unconvincing because, as is well known to those skilled in the art, “[t]he seal
that a rubber or plastic O-ring creates can either exist in a motionless joint,
such as between piping, or a movable joint, such as a hydraulic cylinder.”
wiseGEEK.com, http://www.wisegeek.org/what-is-an-o-ring.htm. “O-rings
can withstand a very large amount of pressure and are therefore used in
many applications where leaks or loss of pressure are unacceptable.” Id. In
view of these well-known characteristics of O-rings, Lonne’s gasket is in the
same field of endeavor as the claimed ring seal.
Furthermore, as noted by the Examiner, the Specification further
states that “there is room in the art for an improved ring seal between two
4 We note that ring seals are commonly referred to as O-rings.
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Application 12/399,380
components that increases the durability of the ring seal surfaces, lowers
friction between the components, and reduces fluid flow across the face of
the seal,” which indicates that the inventor was concerned with these
problems. Spec. 14. Lonne is pertinent these problems for the reasons
enumerated by the Examiner. See, e.g., Lonne 2:38—50. Thus, Lonne
qualifies as analogous art under either test.
Appellant further argues that “Lonne teaches away from Applicant’s
invention as no one would take the teachings of Lonne, explaining that
diatomaceous earths improve gasket strength, and utilize said material to
reduce friction.” Appeal Br. 24. Appellant’s argument is unconvincing
because “teaching away” requires that the reference “criticize, discredit, or
otherwise discourage” the use of other alternatives. See In re Fulton, 391
L.3d 1195, 1201 (Led. Cir. 2004). Here, the portions of Lonne cited by
Appellant do not criticize, discredit, or otherwise discourage the use of
diatomaceous earth. We will not read into a reference a teaching away from
a proposed combination when no such language exists. See Dystar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 L.3d
1356, 1364 (Led. Cir. 2006). furthermore, the rejection does not propose
incorporating Lonne’s diatomaceous earth particles to reduce friction.
Rather, as noted supra, the rejection proposed the modification in order to
increase the strength of the seal. See final Act. 23. Thus, Appellant does
not apprise us of error.
In addition, Appellant argues that there is “no reason to incorporate
the strength enhancing materials as taught by Lonne et al. into a ring seal as
strength enhancers” because “[njothing in Applicant’s disclosure references,
discusses or suggests any need, desire or approach to strengthening the silica
coating.” Appeal Br. 25, 24.
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Application 12/399,380
Appellant’s argument is inapposite. The Examiner’s articulated
reasoning must explain why it would have been obvious to modify Terao’s
ring seal to include Lonne’s strength-enhancing materials, which it does.
See Final Act. 23. Whether the Specification discusses such an enhancement
is irrelevant to this obviousness analysis. Accordingly, Appellant does not
apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2—11, 20-23, and 25—29, which fall therewith as unpatentable
over Terao, Fonne, and Yamagata.
DECISION
The Examiner’s rejection of claims 1—11 as indefinite is REVERSED.
The Examiner’s rejection of claims 1—11 as failing to comply with
written description requirement is REVERSED.
The Examiner’s rejection of claims 1—11, 20—23, and 25—29 as
unpatentable over Terao, Lonne, Kariya, and Fukutome is AFFIRMED.
The Examiner’s rejection of claims 1—11, 20—23, and 25—29 as
unpatentable over Terao, Lonne, and Yamagata is AFFIRMED.
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)(l)(iv).
AFFIRMED
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