Ex Parte Colineau et al

Patent Trial and Appeal Board

Jun 21, 2018

13973329 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/973,329 08/22/2013
27572 7590 06/25/2018
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Francois COLINEAU
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8470G-000106-US 5360
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCOIS COLINEAU,
GUENTER HINTENLANG, and THOMAS KLENK
Appeal2017-003458
Application 13/973,329
Technology Center 3600
Before ERIC C. JESCHKE, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Francois Colineau et al. ("Appellants") 1 seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated May 25, 2016 ("Final Act."), and as further explained in the Advisory
Action dated July 26, 2016, rejecting claims 4 and 6-10. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Carl Freudenberg KG as the real party in
interest. Appeal Br. 2.
Appeal2017-003458
Application 13/973,329
BACKGROUND
The disclosed subject matter "relates to ... a sealing ring comprising
at least one dynamically stressed sealing lip and a buffer seal, arranged
adjacent to the sealing lip and spaced axially from the lip." Spec. i-f 2.
Claim 4, the sole independent claim on appeal, is reproduced below, with
emphasis added and reformatted from the version provided:
4. A sealing assembly, comprising
at least one dynamically stressed sealing lip ( 1) and
a buffer seal (2), which is formed as a separate member
from the sealing lip and disposed adjacent to the sealing lip (1)
at an axial distance (3) therefrom, wherein the buffer seal (2) is
made of an electrically conductive material including a non-
woven fabric.
REJECTIONS
1. Claims 4 and 6-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bertetti (US 6, 109, 794, issued Aug. 29, 2000) and Park
(US 2006/0290070 Al, published Dec. 28, 2006).
2. Claims 4 and 6-10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bock (US 7,073,794 B2, issued July 11, 2006) and Park.
DISCUSSION
Rejection 1 - The rejection of claims 4 and
6--10 based on Bertetti and Park
For the first rejection of independent claim 4, the Examiner relied on
Bertetti for various limitations but stated that Bertetti "fails to disclose the
electrically conductive material comprising non-woven fabric." Final Act.
3. The Examiner found, however, that "Park discloses sealing elements to
be formed of PTFE with conductive material and non-woven fabric
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Application 13/973,329
(paragraph 0036 for PTFE, paragraph 0037 and paragraph 0038 for
conductive material)." Id. 2
Appellants assert that Park "does not disclose a sealing element
formed of non-woven fabric, as incorrectly asserted by the Examiner."
Appeal Br. 6. According to Appellants, "paragraph [0037] does not make
any mention of a 'non-woven fabric' and only discloses carbon or glass
fibers used as a filler in a molded seal, as shown in Figs. 1 and 2." Id.
Appellants argue that "the carbon fiber mentioned in paragraph [0038] of
Park are merely fillers for use in a molded seal and are not recognized as a
non-woven fabric, as claimed." Id. For the reasons below, we agree with
Appellants that the record here does not support the Examiner's position that
Park discloses a "non-woven fabric" as recited in claim 4.
We first address the meaning of the phrase "non-woven fabric." In
the Answer, the Examiner cites a definition of "non-woven fabric" from
Wikipedia and states that ''fabric-like material that is formed from fibers and
bonded together by elastomer is considered as nonwoven fabric." Ans. 3
(emphasis added); see also id. (quoting Wikipedia as providing: "Nonwoven
fabric is a fabric-like material made from long fibers, bonded together by
chemical mechanical, heat or solvent treatment" (emphasis added)). The
Examiner also states: "In conclusion any fibers that are bonded to form a
member or element is considered to be a non-woven fabric." Id.
Notably, the Examiner's "conclusion" statement removes the
requirement (stated elsewhere) that a "non-woven fabric" be "fabric-like."
Id. We determine that a "non-woven fabric" must be "fabric-like," but we
2 "PTFE" refers to polytetrafluoroethylene.
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Application 13/973,329
note that the phrase "non-woven fabric" may also include other
requirements. We agree with Appellants that the "conclusion" statement
ignores the requirement that a "non-woven fabric" be "fabric-like." See
Reply Br. 5. This requirement is supported by the plain language of the
limitation at issue, which recites that the "buffer seal" material "includ[ es] a
non-wovenfabric." Appeal Br. 10 (Claims App.) (emphasis added); see In
re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("All words in a claim must
be considered in judging the patentability of that claim against the prior
art.").
The Examiner states: "The broad interpretation of non-woven fabric is
defined by applicant[s] i[n] paragraph 0018: ['][0018] If the buffer seal is
made of non-woven fabric, this non-woven fabric can be impregnated with
electrically conductive PTFE.[']" Ans. 3. We disagree. The Examiner has
not adequately explained how the quoted portion of the Specification
addresses whether or not the "non-woven fabric" must be "fabric-like."
We tum now to whether Park discloses a "fabric-like" material. The
relied-upon paragraphs of Park disclose certain "functional fillers" to add to
the "elastomeric material" forming part of seal 10 in order to "improve one
or more properties of the composition." Park i-fi-126, 35. Specifically,
paragraph 36 discloses that "[t]he addition of lubricating fillers improves the
abrasion and wear characteristics of the fluorocarbon and hydrocarbon
elastomers," paragraph 37 discloses that "[r]einforcing fillers improve
physical properties such as overall strength, hardness, abrasion resistance,
compression set, tensile strength, tensile modulus and elongation at break,"
and paragraph 38 discloses that "[t]he addition of conductive fillers
enhances the thermal and electrical conductivity properties of the
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Application 13/973,329
fluorocarbon and hydrocarbon elastomers." Paragraph 37 lists "carbon
fibers" as a possible "reinforcing fiber filler[]" and paragraph 38 lists
"conductive grades of carbon fiber" as a possible "conductive filler."
Based on these disclosures, we agree with Appellant that Park
"discloses carbon or glass fibers used as a filler in a molded seal" and we
also agree that "fibers embedded within a molded seal is not a fabric like
material" as discussed above. Reply Br. 5---6. The Examiner takes the
position that Park satisfies the "non-woven fabric" limitation because
paragraph 37 "teaches molding a member or element that comprises fibers
... to produce a non-woven fabric." Ans. 3. The Examiner has not shown,
however, that Park discloses a "fabric-like" material.
For these reasons, we do not sustain the rejection of claim 4, or the
rejection of claims 6-10, which depend from claim 4, as unpatentable over
Bertetti and Park.
Rejection 2-The rejection of claims 4 and
6--10 based on Bock and Park
For the second rejection of claim 4, the Examiner relied on Bock for
various limitations but stated that Bock "fails to disclose the electrically
conductive material comprising non-woven fabric." Final Act. 4. As with
the Rejection based on Bertetti and Park, here, the Examiner again relied on
Park as "disclos[ing] sealing elements to be formed of PTFE with
conductive material and non-woven fabric (paragraph 0038)." Id. In the
Answer, the Examiner makes additional findings regarding Park, stating:
Park teaches to have an element that is non-woven fabric
and the electrically conductive material of the buffer seal
includes PTFE. Park paragraph 0036-0038 teach a seal to have
other elements such as lubricating filler (paragraph 0036),
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Application 13/973,329
reinforcing fillers that are fibers (paragraph 0037) and also
conductive fillers (paragraph 003 8). Park reference teaches to
have PTFE in the electrically conductive material to provide
low friction (paragraph 0036).
Ans. 6. The Examiner also repeats the same discussion of "non-woven
fabric" as provided for Rejection 1, including the "conclusion" statement.
Compare Ans. 2-3 (Rejection 1 ), with id. at 3--4 (Rejection 2).
Appellants repeat the argument that the Examiner's "conclusion"
statement ignores the requirement that the "non-woven fabric" be "fabric-
like." See Reply Br. 7-8. Appellants also argue that Park "discloses carbon
or glass fibers used as a filler in a molded seal" and that "fibers embedded
within a molded seal is not a fabric like material." Id. at 8.
For the same reasons discussed above in the context of Rejection 1,
we determine that the Examiner has not shown that Park discloses a "fabric-
like" material. Thus, we do not sustain the rejection of claim 4, or the
rejection of claims 6-10, which depend from claim 4, as unpatentable over
Bock and Park.
DECISION
We reverse the decision to reject claims 4 and 6-10 as unpatentable
over Bertetti and Park, and we reverse the decision to reject claims 4 and 6-
10 as unpatentable over Bock and Park.
REVERSED
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