Ex Parte Braun et al

Patent Trial and Appeal Board

Feb 28, 2017

11865497 (P.T.A.B. Feb. 28, 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.
11/865,497 10/01/2007 Jens Braun 15540-123001/ 5414
SP09339US;
26161 7590 03/02/2017
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
DANG, KET D
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS BRAUN and DOMINIK VEES
Appeal 2015-005538
Application 11/865,4971
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35U.S.C. § 134 from the Examiner’s
decision rejecting claims 1—4, 7—19, and 21—23. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1,12, and 13 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1 According to the Appellants, the real party in interest is “TRUMPF
Werkzeugmaschinen GmbH + Co. KG.” Appeal Br. 1.
Appeal 2015-005538
Application 11/865,497
1. An integrated sealing device of a laser machining head for
sealing between a hollow cage member and a conduit of the laser
machining head, the sealing device comprising:
an elastically deformable sealing lip of the hollow cage
member extending integrally from a continuous and substantially
planar portion of the hollow cage member; and
a contact surface of the conduit,
wherein the elastically deformable sealing lip of the
hollow cage member extends toward the contact surface of the
conduit so as to form an annular seal between the hollow cage
member and the conduit, and the hollow cage member and the
sealing lip are produced from a metal material.
Rejections
Claims 1—4, 13—15, 21, and 23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Pridmore (US 2003/0178792 Al, pub. Sept. 25, 2003)
and Kosty (US 6,830,641 B2, iss. Dec. 14, 2004).
Claims 7—10, 12, 19, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pridmore, Kosty, Ramos (US 4,467,171, iss. Aug. 21,
1984) and Shimada (JP 357047595 A, iss. Mar. 18, 1982).
Claims 11 and 16—18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pridmore, Kosty, and Couturier (US 4,782,496, iss.
Nov. 1, 1988).
ANALYSIS
The Appellants point out that the appealed independent claims each
require that the material of the claimed hollow cage member and sealing lip
of the hollow cage member are metal. See Appeal Br. 3, 7. The Appellants
argue that the Examiner’s rejections of independent claims 1, 12, and 13 are
in error because the rejections rely on an inadequately supported finding that
Kosty discloses a sealing lip produced from a metal material. See id. at 3—5,
7, Reply Br. 1—5. The Appellants’ argument is persuasive.
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Appeal 2015-005538
Application 11/865,497
The Examiner’s rejections of independent claims 1,12, and 13,
include the following findings that are essential to the analysis of the issue in
this appeal. The Examiner finds that the claimed “hollow cage member”
reads on Pridmore’s base plate 1 and the claimed “sealing lip” reads on
Pridmore’s lip seal 5, which includes sealing lip 7. See Final Act. 3;
Pridmore 1 19, Fig. 2.
The Examiner also finds that Pridmore’s base plate 1 is made of a
metal material, but lip seal 5 and sealing lip 7 are not made of a metal
material. See Final Act. 3. The Examiner remedies this deficiency of
Pridmore’s disclosure with regard to the subject matter of claims 1, 12, and
13 (i.e., failing to teach a “sealing lip” made of a metal material) with the
finding that Kosty teaches the claimed “sealing lip” made of a metal
material. Id. More specifically, the Examiner relies on Kosty’s teaching of
a non-flexible metallic seal member, which is a part of a “lip seal” to teach
the claimed “sealing lip.” Id. (citing Kosty, col. 1,11. 41^42).
Although Kosty’s teaching of a “lip seal” includes a non-flexible
metallic seal member, we note that the non-flexible metallic seal member is
described as a casing and this metal casing provides a mounting for a
nonmetallic seal member, which is also part of Kosty’s “lip seal.” Kosty,
col. 1,11. 41—47.
The Appellants argue that one of ordinary skill in the art would not
understand Kosty’s teaching of a metal casing to correspond with the
claimed “sealing lip.” See Appeal Br. 3^4. Rather, the Appellants argue
that one of ordinary skill in the art would understand Kosty’s teaching of the
nonmetallic seal member to correspond with the claimed “sealing lip.” See
id. We agree. Moreover, we understand the non-flexible metallic seal
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Appeal 2015-005538
Application 11/865,497
member (i.e., metal casing) of Kosty’s “lip seal” to correspond more
favorably with Pridmore’s metal base plate and/or the claimed “hollow cage
member.” In sum, we determine that the Examiner’s finding that Kosty
teaches a metal “sealing lip,” as required by claims 1,12, and 13, is not
adequately supported.
Thus, we do not sustain the Examiner’s rejection of claims
independent claims 1 and 13, and dependent claims 2—4, 14, 15, 21, and 23,
as unpatentable over Pridmore and Kosty. The remaining rejections based
on Pridmore and Kosty in combination with one or more of Ramos,
Shimada, and Couturier rely on the same inadequately supported finding
discussed above. See Final Act. 4—6. As such, we do not sustain the
rejections of: claims 7—10, 12, 19, and 22, as unpatentable over Pridmore,
Kosty, Ramos, and Shimada; and claims 11 and 16—18 as unpatentable over
Pridmore, Kosty, and Couturier.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—4, 7—19,
and 21-23.
REVERSED
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