Ex Parte Buhlmeyer et al

Board of Patent Appeals and Interferences

Jan 23, 2012

10833795 (B.P.A.I. Jan. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALEXANDER BUHLMEYER and CENGIZ KUCUK
____________________

Appeal 2010-000483
Application 10/833,795
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
JAMES P. CALVE, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Alexander Buhlmeyer and Cengiz Kucuk (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 10-21, 26,
27, 29, 30, 34, and 35 under 35 U.S.C. § 102(b) as anticipated by Matteson
(US 5,345,959, iss. Sep. 13, 1994) and claims 28, 31-33, 36, and 37 under
35 U.S.C. § 103(a) as unpatentable over Matteson and Krzewina (US
3,347,613, iss. Oct. 17, 1967). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
The claims are directed to “a roller retainer for dishwashing machines
for receiving rail elements.” Spec. 1. Claim 27, reproduced below, is
illustrative of the claimed subject matter.
27. A roller assembly for a dishwashing machine, the
dishwashing machine having rail elements which are suitable to
bear dish racks and a rinse container having an inside surface
defining a volume in which dish racks are received and an
outside surface, the roller assembly comprising:
a central element suited to be attached at least
substantially permanently to the rinse container inwardly of the
inside surface of the rinse container;
a roller element arranged on said central element and
configured to roll relatively about said central element in
connection with a respective one of an extension movement and
a retraction movement of a rail element supported on said roller
element;
a connecting area on said central element suited to extend
at least partially into a throughbore formed in the rinse
container that itself extends from the inside surface of the rinse
container to the outside surface of the container, said
connecting area for securing said central element onto said rinse
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container such that said central element extends in a direction
inwardly of the inside surface of the container; and
an O-ring that seals said central element relative to the
rinse container for substantially precluding the penetration of
liquid outwardly of the rinse container at the location at which
said central element may be secured onto the rinse container.

OPINION
The Anticipation Rejection
Contentions and Issue
Appellants argue all of the claims rejected under 35 U.S.C. § 102(b)
as a group. Appellants argue that the Examiner erred in finding that
Matteson’s plastic washer 28 corresponds to the O-ring or sealing compound
called for in Appellants’ claims. Br. 6-8. Since one group of Appellants’
claims (independent claims 10, 18, and 27, and their dependent claims)
recite an “O-ring” and another group of Appellants’ claims (independent
claims 34 and 35) recite a “sealing compound,” we address these two groups
of claims separately. We select claims 27 and 34 as representative of these
two groups. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), claims 10-21, 26, 29,
and 30 stand or fall with claim 27, and claim 35 stands or falls with claim
34.
The Examiner found that Matteson discloses a dishwashing machine
comprising all of the elements of claims 27 and 34, including an O-
ring/sealing compound. Ans. 4-5. Specifically, the Examiner found that
Matteson’s washer 28 corresponds to the O-ring of claim 27 and to the
sealing compound of claim 34. Id. at 5. Further, the Examiner found that
the relationship between Matteson’s washer 28 and screw 26 “results in a
seal that inherently prevents leakage, at least to a ‘substantial’ degree,” as
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Appellants claim. Id. at 7. The Examiner additionally found that Matteson’s
washer, by virtue of its tight fitting to shank 34 of screw 26, acts as a sealing
compound. Id. at 10.
In support of the finding that Matteson’s washer 28 is an “O-ring” as
claimed, the Examiner cited a dictionary definition of “O-ring” “by
American Heritage Dictionary as: ‘a flat ring made of rubber or plastic used
as a gasket.’” Ans. 10 (referring to Appx. to Non-Final Office Action
mailed Feb. 4, 2009 (hereinafter “Off. Act.”)); Off. Act. 5. The Examiner
additionally cited a dictionary definition of “washer” “by Merriam-Webster
Dictionary as: ‘a flat thin ring or a perforated plate used in joints or
assemblies to ensure tightness, prevent leakage or relieve friction. ’” Ans.
10 (referring to NPL with Off. Act.); Off. Act. 5-6.
Appellants argue that the Examiner’s reading of Appellants’ claimed
“O-ring” or “sealing compound” on Matteson’s washer 28 “stretches the
meaning of [the terms O-ring and sealing compound] well beyond their plain
meaning.” Br. 7.
Accordingly, the issue presented for our review is whether, on the
basis of this record, the Examiner erred in reading the claimed “O-ring” and
“sealing compound” on Matteson’s washer 28.
Discussion
It is well settled that the United States Patent and Trademark Office
(PTO) is obligated to give claim terms their broadest reasonable
interpretation, taking into account any enlightenment by way of definitions
or otherwise found in the specification. In re ICON Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (“[T]he PTO must give claims their
broadest reasonable construction consistent with the specification . . . .
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Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.”). “[A]s applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” Id.
Appellants do not point to, and we do not find, a definition of “O-
ring” or “sealing compound” in Appellants’ Specification.1 Indeed, the term
“O-ring” occurs in the Specification only on page 3, which alludes to
“sealing means [that] are reverse-drawn in the form of a sealing ring (e.g. O-
ring) via the connecting area, so that any possible leakage in the rinse
container interior is sealed.” The Specification refers to “a sealing ring 6b”
illustrated in figure 2. Spec. 5. The Specification describes “a sealing
compound” that fills “the entire joint between the central element connecting
area and the inside of the rinse container” and “can particularly effectively
also fulfill an adhesive function.” Spec. 3. Referring to figure 3, the
Specification also describes fastening the roller retainer by a “sealing and
adhesive layer 6c, applied between the central element 1 and the rinse
container 4.” Spec. 5. The Specification is silent as to whether the “sealing
and adhesive layer 6c” of figure 3 is an example of a “sealing compound” as
alluded to in the Specification. Finally, referring to figure 4, the
Specification describes “sealing means 6c” that “is painted on for example
as a paste around the connecting area 2 during assembly.” Spec. 5. The

1 See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (An applicant is
permitted to define specific terms used to describe the invention by setting
forth a definition for terms with reasonable clarity, deliberateness and
precision.); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) ("Absent
claim language carrying a narrow meaning, the PTO should only limit the
claim based on the specification or prosecution history when those sources
expressly disclaim the broader definition.").
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Specification does not expressly associate this “paste” with the “sealing
compound” alluded to earlier in the Specification. While one might infer
that the “paste” is an example of a “sealing compound” as alluded to in the
Specification, Appellants’ Specification falls far short of defining “sealing
compound” as being limited to any particular material or structure.
While Appellants characterize the Examiner’s reading of “O-ring” and
“sealing compound” as stretching the meaning of these terms beyond their
“plain meaning,” Appellants do not specify what that “plain meaning” is,
much less provide evidence to support such a definition.2 Further,
Appellants’ Brief does not point us to, nor do we find in the electronic
record of the present application, any statement of record of a “plain
meaning” or art-recognized meaning of the term “O-ring” or “sealing
compound.” Accordingly, the Examiner did not err in consulting a general
dictionary definition of the term “O-ring” for guidance.3
The Examiner’s construction of “O-ring” as a flat ring made of rubber
or plastic used as a gasket is consistent with Appellants’ description of their
sealing ring. See Spec. 3; fig. 2 (depicting a sealing ring 6b having a
rectangular cross-section devoid of any curved bulges on any surfaces
thereof). Appellants have not pointed to, and we do not find, any disclosure

2 The anecdote discussing how one of ordinary skill in the art at the time of
the invention would respond if asked by another for an O-ring or sealing
compound (Br. 7-8) is attorney argument only. An attorney's arguments in a
brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
3 Where the specification does not assign or suggest a particular definition to
a claim term, in 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. See
Phillips v. AWH Corp., 415 F.3d 1303, 1322–23 (Fed. Cir. 2005) (en banc).
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in the Specification or drawings of the present application that indicates
Appellants are using the term “O-ring” in a manner that differs from the
general dictionary definition of “O-ring” provided by the Examiner.
Moreover, the Examiner’s finding that Matteson’s washer 28 is an
“O-ring” as so construed appears reasonable. As noted by the Examiner,
Matteson discloses a plastic washer (col. 3, ll. 55-56). Further, Matteson’s
washer 28 is a flat ring and has a rectangular cross-section (figs. 2-4). As
the Examiner additionally points out (Ans. 6-7), when the screw 26 is
inserted through the hole 42 of Matteson’s washer 28 during assembly, “[a]n
inner edge of the washer and/or the ridges of the knurled shank part [of the
screw] may be deformed slightly.” Col. 4, ll. 8-11. Accordingly, the
Examiner’s finding that this “results in a seal that inherently prevents
leakage, at least to a ‘substantial’ degree,” as called for in Appellants’
claims, is reasonably supported by Matteson and, moreover, is not
specifically rebutted by Appellants.
Therefore, on the basis of the record before us, we do not agree with
Appellants that the Examiner erred in reading the “O-ring” of claim 27 on
Matteson’s washer 28. We sustain the rejection of claim 27 and of claims
10-21, 26, 29, and 30, which fall with claim 27, as anticipated by Matteson.
Given the Examiner’s finding, discussed above, that the insertion of
the screw through the hole 42 of Matteson’s washer 28 “results in a seal that
inherently prevents leakage, at least to a ‘substantial’ degree,” and the
absence of any specialized definition of “sealing compound” in the
Specification or statement and evidence of a “plain meaning” recognized in
the art, we also disagree with Appellants that the Examiner erred in reading
the “sealing compound” of claim 34 on Matteson’s washer 28. We sustain
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the rejection of claim 34 and of claim 35, which falls with claim 35, as
anticipated by Matteson.
The Obviousness Rejection
Appellants group all of claims 28, 31-33, 36, and 37 together in
contesting the rejection based on Matteson and Krzewina. We select claim
28 as representative of the claims reciting an “O-ring.” Pursuant to
37 C.F.R. § 41.37(c)(1)(vii), claims 31-33, and 37 stand or fall with claim
28. We address claim 36 (reciting a “sealing compound”) separately.
In rejecting claims 28 and 36 as unpatentable over Matteson and
Krzewina, the Examiner found that Matteson fails to disclose the central
element extending fully through the rinse container in a through bore and
sealing means at least partially disposed outside the rinse container. Ans. 9.
The Examiner found that Krzewina teaches a roller assembly mounting
arrangement wherein the central element extends fully through an opening in
the rinse container and comprises threaded means accessible from the
exterior of the container, wherein sealing means are disposed both between
the fastening means and the rinse container and on the outside surface of the
rinse container and cooperate to secure the roller assembly to the rinse
container and prevent leakage. Id. In light of the teachings of Krzewina, the
Examiner concluded that it would have been obvious to construct
Matteson’s roller assembly so that the central element extends fully through
the rinse container and comprises sealing means on the outside surface of the
rinse container “to provide adequate securing and sealing means for the
assembly.” Id.
Appellants’ first argument contesting this rejection is that Krzewina
does not remedy the deficiencies of Matteson with respect to the “O-ring” or
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“sealing compound” limitations. Br. 8-9. This argument is not persuasive
for the reasons set forth above in discussing the rejection of claims 27 and
34 as anticipated by Matteson.
Appellants additionally argue that the Examiner “provides absolutely
no hint of any articulated reasoning with any [rational] underpinning to
support a legal conclusion of obviousness.” Br. 9. We disagree that the
Examiner failed to articulate any rationale at all for combining the
references. The Examiner did articulate a rationale for combining
Matteson’s and Krzewina’s roller assembly constructions. Specifically, the
Examiner reasoned that it would have been obvious “to construct the roller
assembly of Matteson such that the central element extends fully through the
rinse container and comprises sealing means on the outside surface as well,
in order to provide adequate securing and sealing means for the assembly.”
Ans. 9.
Krzewina discloses an alternative fastening technique to that disclosed
by Matteson. Krzewina passes the fastening member 34 fully through the
tub wall 9 and further provides a receiving member 35a on the outside
surface of the tub wall 9, such that the threaded portion 35 of member 34
engages both the tub wall 9 and the receiving member 35a, thereby more
securely fastening the roller assembly to the tub wall 9, by virtue of the
engagement of additional threads. Col. 4, ll. 21-26; fig. 3. In essence,
Krzewina discloses an alternative to the Matteson’s boss 44 (col. 3, ll. 64-66;
figs. 2, 3) for receiving threads of the threaded fastener to provide adequate
securing of the roller assembly to the tub wall (as well as engagement of the
screw 26 and washer 28). “[W]hen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
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for another known in the field, the combination must do more than yield a
predictable result.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
The modification proposed by the Examiner is nothing more than the simple
substitution of one known element (i.e., a receiving member for adding
thread engaging thickness) for another (i.e., a boss) to yield the predictable
result of providing adequate thread engaging thickness, and thus would have
been obvious to a person of ordinary skill in the art at the time of
Appellants’ invention. Thus, the Examiner’s articulated rationale has
rational underpinnings. We sustain the rejection of claims 28 and 364, as
well as claims 31-33, and 37, which fall with claim 28.

DECISION
For the above reasons, the Examiner’s decision 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)(1)(iv).

AFFIRMED

hh

4 Claim 36 requires neither that the central element extend fully through the
rinse container nor a sealing means at least partially disposed outside the
rinse container. Thus, it is not apparent that the modification of Matteson
proposed by the Examiner is even required in order to satisfy claim 36.