Ex Parte Dahlke et al

Patent Trial and Appeal Board

Nov 18, 2013

10837006 (P.T.A.B. Nov. 18, 2013)

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.
10/837,006 04/30/2004 Stefan Dahlke 2004P06082 US 2145
7590 11/18/2013
Siemens Corporation
Intellectual Property Department
170 Wood Avenue South
Iselin, NJ 08830
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
11/18/2013 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 STEFAN DAHLKE, JESSE ENG, JOHN CARL GLESSNER,
DANIEL HOFMANN, ROLAND LIEBE, and
KENNETH MICHAEL TAMADDONI-JAHROMI
____________

Appeal 2012-000198
Application 10/837,006
Technology Center 3600
____________

Before GAY ANN SPAHN, NINA L. MEDLOCK, and
GEORGE R. HOSKINS, Administrative Patent Judges.

HOSKINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stefan Dahlke et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 29-31. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
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CLAIMED SUBJECT MATTER
Claim 29 is illustrative of the subject matter on appeal:
29. A hot gas seal for sealing an opening in a heat shield
element or between heat shield elements of a heat shield about
which a hot gas flows, comprising at least one resilient portion
for providing a force with which the hot gas seal can be held in
said opening or with which sealing efficiency is increased,
wherein:
the hot gas seal includes a tubular sealing body which
comprises a resilient core which forms said at least one resilient
portion for providing said force; and
the resilient core is formed by a space inside of the
tubular sealing body which is filled with a liquid or solid that
undergoes expansion or evaporation when the hot gas seal is
exposed to the hot gas.
See App. Br., Clms. App’x.
REJECTIONS
Appellants request our review of the following rejections (App. Br.
6).1
Claims 30 and 31 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 29-31 are rejected under 35 U.S.C. § 102(b) as anticipated by
Rowe (US 7,147,230 B2, iss. Dec. 12, 2006).
Claim 29 is rejected under 35 U.S.C. § 102(b) as separately
anticipated by Deppert (US 4,987,826, iss. Jan. 29, 1991), Taylor (US
6,948,715 B2, iss. Sep. 27, 2005), and Schmahl (US 6,840,047 B2, iss. Jan.
11, 2005).

1 The Examiner has withdrawn the rejection of claims 29-31 as anticipated
by Williams (US 4,058,435, iss. Nov. 15, 1977). See Ans. 4 and 8.
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ANALYSIS
Rejection of Claims 30 and 31 as Indefinite
The Examiner determined claim 30 is indefinite because it is “unclear
how a hot gas seal has a movable plate.” Ans. 5. We agree with Appellants
that there is nothing indefinite in a hot gas seal comprising a movable plate.
See App. Br. 12. As pointed out by Appellants, the embodiment of Figure
12 “provides support for the combination of a tubular cloth 92 or 102 (e.g.,
see element 90 of Figure 12) with a sealing plate 114 to form a hot gas seal.”
Id.; see also Spec., paras. [0033]-[0035] and figs. 10-12. The Examiner’s
discussion of claim 29 in response to Appellants’ argument (see Ans. 10) is
not persuasive, because claim 30 does not depend from claim 29. In
addition, we note that both independent claims 29 and 30 recite the
transitional phrase “comprising,” which is open-ended and does not exclude
additional, unrecited elements. See Genentech, Inc. v. Chiron Corp., 112
F.3d 495, 501 (Fed. Cir. 1997) (“comprising” is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim). For these reasons, we do not sustain the Examiner’s rejection of
claim 30 as indefinite.
The Examiner determined that claim 31 is indefinite because it is
“unclear how a hot gas seal that is capable of . . . functioning with [a] heat
shield element ha[s] the heat shield.” Ans. 5. We are not persuaded that
claim 31 is indefinite because we do not agree that claim 31 recites the hot
gas seal as having the heat shield. Claim 31 depends from claim 29 and
recites that the resilient portion 104 is positioned in a first recess 117 in the
heat shield element 111 or between the heat shield elements 111, 113 of the
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heat shield shown in Figure 12, with heat seals 100 in place of heat seals 90
(see Spec., para. [0035]). App. Br., Clms. App’x. Claim 31 also recites that
the hot gas seal further includes a movable plate 114, a second resilient
portion 104 of the hot gas seal 100 in place of 90 shown in Figure 12 (see
Spec., para. [0035]) positionable in a second recess 119 in second heat shield
element 113 or between the heat shield elements 111, 113 of the heat shield.
App. Br., Clms. App’x. Claim 31 finally recites the first resilient portion
104 and the second resilient portion 104 are each positionable against the
movable plate 114, the resilient portions 104, 104 being expandable to
provide a force against the plate 114 with which the resilient portions 104,
104 and the plate 114 can be held in said opening 112 or with which the
sealing efficiency is increased, wherein each resilient portion 104, 104
includes a tubular sealing body 102, 102 which comprises a resilient core
suitable for providing said force.
The Examiner also determined that claim 31 is indefinite because its
parent claim 29 requires “one member,” while claim 31 recites “a plurality
of members.” See Ans. 5 and 10. As explained supra with respect to
independent claim 30, independent claim 29, upon which claim 31 depends,
uses the transitional phrase “comprising,” which is open-ended and does not
exclude additional, unrecited elements See Genentech, 112 F.3d at 501.
Thus, claim 29’s recitation of “at least one resilient portion” 104 is not at
odds with claim 31’s recitation of first and second resilient portions 104,
104. To the extent that the Examiner is finding a lack of antecedent basis,
the failure to provide explicit antecedent basis for terms does not always
render a claim indefinite. If the scope of a claim would be reasonably
ascertainable by those skilled in the art, as here, then the claim is not
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indefinite. See Energizer Holdings Inc. v. Int'l Trade Comm'n, 435 F.3d
1366 (Fed. Cir. 2006); Ex parte Porter, 25 USPQ2d 1144, 1145 (BPAI
1992). Accordingly, for all the reasons discussed supra, we do not sustain
the Examiner’s rejection of claim 31 as indefinite.
Rejection of Claims 29-31 as Anticipated by Rowe
Appellants argue the Examiner erred because the Examiner has not
established the materials of Rowe are suitable for use as a heat shield about
which a hot gas flows. See App. Br. 9 (claim 29); see also App. Br. 10
(claim 30) and Reply Br. 2-3. We agree. The Examiner found “Rowe
discloses a hot gas seal including a tubular sealing body (e.g.[, oval, tubular
hose] 2a) which comprises a resilient core.” Ans. 5. However, the
Examiner did not cite to any disclosure in Rowe which might indicate that
the Rowe sealing arrangement (hose element 2, sealing element 3), shown in
Figures 1a-1c, is suitable for use as a hot gas seal. Instead, the Examiner
reasoned that:
With regard to intended use limitations: The hot gas seal
is capable of being placed in an opening of elements, the
resilient portion is capable of providing a force, the hot gas seal
is capable of being exposed to the hot gas and the hot gas seal is
capable of being used in heat shield elements.
Ans. 5; see also Ans. 9. The Examiner did not provide any further analysis
or citation to the Rowe disclosure to support those capability conclusions.
Rowe indicates its sealing arrangement (hose element 2, sealing element 3)
is used in drum filters or filter presses, preferably wash presses for cellulose
pulp, to form a seal between the rotary drum end faces and the end faces of
the trough in which the rotary drums are situated. See Rowe, Abstr. and
col. 1, ll. 17-19 and 65-67. We do not find anything in that context which
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would support the Examiner’s statements regarding the capabilities of the
Rowe sealing arrangement (hose element 2, sealing element 3) in a hot gas
seal context. Thus, the Examiner has not shown by a preponderance of the
evidence that Rowe’s hose element 2 and sealing element 3 are capable of
performing the recited intended uses in independent claims 29 and 30. We
therefore do not sustain the Examiner’s rejection of claims 29-31 as
anticipated by Rowe.
Rejection of Claim 29 as Anticipated by Deppert
Appellants argue the Examiner erred because the Examiner “has not
established that the ‘transmission ring’ 22 of Deppert might in anyway be a
‘hot gas seal.’” Reply Br. 4. We agree. The Examiner found “Deppert (e.g.
Figure 7) discloses a hot gas seal comprising at least one first resilient
portion (e.g. resilient portion [sealing pressure transmission ring] 22)).”
Ans. 6. However, the Examiner did not cite to any disclosure in Deppert
which might indicate that the Deppert sealing arrangement (sealing pressure
transmission ring 22) is suitable for use as a hot gas seal. Instead, the
Examiner provided the same “capability” analysis already quoted above in
connection with Rowe, without further analysis or citation to the Deppert
disclosure. Ans. 6; see also Ans. 9. Deppert indicates its sealing
arrangement (sealing pressure transmission ring 22) is used in a cylinder-
piston rod unit, such as gas spring dampers utilized in motor vehicles, with a
sealing ring to form a fluid-tight seal between the cylinder and the piston
rod. See Deppert, Abstr. and col. 1, ll. 5-21. We do not find anything in that
context which would support the Examiner’s statements regarding the
capabilities of the Deppert sealing arrangement (sealing pressure
transmission ring 22) in a hot gas seal context. Thus, the Examiner has not
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shown by a preponderance of the evidence that Deppert’s sealing pressure
transmission ring 22 is capable of performing the recited intended uses in
independent claim 29. We therefore do not sustain the Examiner’s rejection
of claim 29 as anticipated by Deppert.
Rejection of Claim 29 as Anticipated by Taylor
Appellants argue that the Examiner erred because Taylor fails to
disclose the final limitation of claim 29: “the resilient core is formed by a
space inside of the tubular sealing body which is filled with a liquid or solid
that undergoes expansion or evaporation when the hot gas seal is exposed to
the hot gas.” See App. Br. 11 and Reply Br. 5-6. The Examiner pertinently
found that Taylor discloses a tubular sealing body 24 or 25 comprising a
resilient core formed by a space which is filled with a liquid or solid, as
claimed. See Ans. 6 and 10 (citing Taylor, fig. 11; col. 7, ll. 25-30; and
col. 8, ll. 65-68).
However, the final limitation in claim 29 requires the liquid or solid
material which expands or evaporates to be different from the hot gas itself,
so that the liquid or solid material can expand or evaporate when the seal is
exposed to the hot gas. In Taylor, by contrast, the expanding material is the
hot gas itself, which enters into the core of the tubular body 24 or 25 via
vents 26 disposed within that body 24 or 25. See Taylor, col. 7, ll. 35-58.
We therefore agree with Appellants’ contention that the teachings and
disclosure of Taylor are different from and inconsistent with claim 29. See
Reply Br. 5. Accordingly, we do not sustain the Examiner’s rejection of
claim 29 as anticipated by Taylor.
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Rejection of Claim 29 as Anticipated by Schmahl
Appellants argue that the Examiner erred because Schmahl fails to
disclose a resilient core formed by a space inside of the tubular sealing body,
as well as that space being filled with a liquid or solid that undergoes
expansion or evaporation when the hot gas seal is exposed to the hot gas.
See App. Br. 11. The Examiner pertinently found that the element shown in
Figures 9a to 9c of Schmahl corresponds to those claim limitations. See
Ans. 7 and 10.
Schmahl describes those Figures as illustrating different embodiments
of a tubular seal element 3 “filled with corresponding filling materials.”
Schmahl, col. 3, ll. 26-35. Schmahl additionally indicates the sealing
elements may be filled “as required, with appropriate material.” Schmahl,
col. 2, ll. 21-22. However, Schmahl does not further describe what those
filler materials might be, or what function they might perform in the overall
assembly of Schmahl. Thus, the Examiner’s finding that Schmahl’s filler
material “undergoes expansion or evaporation when the hot gas seal is
exposed to the hot gas,” as required by claim 29, is not supported by a
preponderance of the evidence. We therefore do not sustain the Examiner’s
rejection of claim 29 as anticipated by Schmahl.
DECISION
We REVERSE the rejections of claims 29-31.

REVERSED

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