Ex Parte Datta

Patent Trial and Appeal Board

Dec 17, 2013

11787301 (P.T.A.B. Dec. 17, 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.
11/787,301 04/14/2007 Amitava Datta 23584-00003 2187
28534 7590 12/18/2013
MIRICK, O'CONNELL, DEMALLIE & LOUGEE, LLP
1800 West Park Drive, Suite 400
WESTBOROUGH, MA 01581-3926
EXAMINER
BEACH, THOMAS A
ART UNIT PAPER NUMBER
3674
MAIL DATE DELIVERY MODE
12/18/2013 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 AMITAVA DATTA
____________

Appeal 2011-007203
Application 11/787,301
Technology Center 3600
____________

Before: STEFAN STAICOVICI, JOHN W. MORRISON, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-3, 5-12 and 14-24. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
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Application 11/787,301
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THE INVENTION
Appellant’s invention relates to “brush seals for sealing a gap between
a high pressure and a low pressure area.” Spec. 1. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A brush seal comprising:
a plurality of metallic bristles having a bristle length; and
a support member constructed and arranged to support
the plurality of metallic bristles, the support member having at
least one flexible plate extending at least substantially along the
bristle length of the plurality of bristles;
wherein the plurality of metallic bristles form a bristle
pack and wherein the at least one flexible plate comprises a
front plate and a back plate, the front plate and the back plate
being constructed and arranged to elastically return the bristle
pack from a displaced position to an original position in a
spring back manner following displacement of the bristle pack.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:1

The following rejections are before us for review:
1. Claims 1-3, 5, 6, 10-12, 14 and 15 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wright and Basu.
2. Claims 7-9 and 16-18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wright, Basu and Flower.

1 The Examiner also relies on Applicant’s admitted prior art (“APA”)
depicted in Figure 1 of the drawings.
Flower
Tseng
Basu
Wright
US 5,090,710
US 5,568,931
US 5,884,918
US 6,308,957 B1
Feb. 25, 1992
Oct. 29, 1996
Mar. 23, 1999
Oct. 30, 2001
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3. Claims 19-21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over APA, Wright, Tseng and Flower.
4. Claims 22 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over APA, Wright, Tseng, Flower and Basu.
5. Claims 1-3, 5, 6, 10-12, 14, 15 and 24 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over APA, Wright, Tseng, and Basu.

OPINION
Unpatentability of Claims 1-3, 5, 6, 10-12, 14 and 15 over
Wright and Basu
Appellant argues claims 1-3, 5, 6, 10-12, 14 and 15 as a group. App.
Br. 9-18. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
The Examiner finds that Wright discloses all of the elements of
claim 1, except that it is unclear whether the bristles are metallic or non-
metallic. Ans. 3-4. The Examiner relies on Basu as disclosing that brush
seal bristles can be metal or non-metal. Ans. 4. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time of the invention to use metal bristles. Id. According to the Examiner,
this would merely involve the substitution of a known equivalent element
that yields expected results. Id.
Appellant traverses the Examiner’s rejection by arguing that Wright
lacks a support member as claimed. App. Br. 10-11, Reply Br. 4-5. The
Examiner responds that Wright’s figure 2 discloses a bristle pack 10 with a
flexible, slotted plate 22 in front of it and a flexible, slotted plate 24 behind
it. Ans. 8. After reviewing Figures 2 and 3 of Wright and the
accompanying disclosure in the Specification, we find that the Examiner’s
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findings of fact relative to the support member limitation are supported by a
preponderance of the evidence.
Next, Appellant argues that Wright’s plates are not constructed and
arranged to elastically return the bristle pack from a displaced position to an
original position. App. Br. 16. Appellant argues that Wright’s bristles will
elastically return to their original position without the need for flexible front
and back plates. Id.
The Examiner responds that Wright’s plates are constructed in a
similar manner to Appellant’s. Ans. 8. The Examiner finds that the plates
are disclosed as compliant. Id. See Wright, col. 4, ll. 10-15 (“partially
compliant and leaking diaphragm means”); col. 4, ll. 30-31 (“thin backing
plates”). Due to the similarity in structure, the Examiner reasons that they
are expected to function as claimed. Ans. 8. The Examiner’s reasoning on
this issue is persuasive and is unrebutted by Appellant. See In re Spada, 911
F.2d 705, 708 (Fed.Cir.1990) (“when the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”)(citations omitted).
Finally, Appellant argues that Basu teaches away from combining a
flexible front plate with a brush seal. App. Br. 15. In response, the
Examiner notes that Basu is only used for its teaching that brush seal bristles
can be metal or non-metal. Ans. 8. Appellant replies by arguing that the
Examiner must consider the entirety of Basu, including language from
column 2 that Appellant contends teaches away from the invention. Reply
Br. 6.
A reference is prior art for all that it teaches. Geo. M Martin Co. v.
Alliance Machine Systems Intern. LLC., 618 F.3d 1294, 1302-03 (Fed. Cir.
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2010). Basu discloses the use of metal bristles in a brush seal. Wright
teaches the flexible front and back plate elements of the invention without
any limitation being placed on the material used for the bristles. We are not
persuaded that a person of ordinary skill in the art would be discouraged
from using metal bristles in the device of Wright based on the column 2
passage of Basu relied on by Appellant.
In view of the foregoing discussion, we sustain the Examiner’s
unpatentability rejection of claims 1-3, 5, 6, 10-12, 14 and 15.
Unpatentability of Claims 7-9 and 16-18
Claims 7-9 depend directly or indirectly from claim 1. Clms. App’x.
Claims 16-18 depend directly or indirectly from claim 10. Id. Appellant
does not argue for the separate patentability of claims 7-9 and 16-18 apart
from the arguments that we previously considered with respect to claims 1
and 10 above. Accordingly, claims 7-9 and 16-18 fall with claims 1 and 10.
See 37 C.F.R. § 41.37(c)(1)(vii). We sustain the rejection of claims 7-9 and
16-18.
Unpatentability of Claims 19-21
Appellant argues claims 19-21 as a group. App. Br. 25-29. We select
claim 19 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that APA Figure 1 discloses a single brush strip
comprising a core rod, bristles, and a support member. Ans. 4. The
Examiner finds that Tseng teaches a brush seal having bristles mounted in a
support member. Id. The Examiner further finds that Tseng teaches a front
plate of the support member with plural slots. Id. The Examiner further
finds that Tseng’s plate is thinner at an inner diameter and thicker at an outer
diameter. Id. The Examiner concludes that it would have been obvious to a
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person of ordinary skill in the art at the time of the invention to modify the
front part of the APA support member with Tseng’s plate. Ans. 5.
The Examiner further finds that Wright teaches a brush seal with
bristles mounted in a support member. Ans. 5. The Examiner further finds
that Wright uses a thin metallic plate on the back side of a bristle pack to
control leakage and relieve stress on the bristles. Id. (citation omitted). The
Examiner finds that Wright’s plate has plural slots and that modifying the
support member of APA with a back plate as taught by Wright would result
in a back plate with a thinner inner diameter and thicker out diameter. Id.
The Examiner concludes that it would have been obvious to a person of
ordinary skill in the art at the time of the invention to modify the back part
of the APA support member with the plate of Wright. Id.
The Examiner acknowledges that APA does not appear to disclose
that the bristle pack and support are constructed to mount the pack in an
axially inclined position. Ans. 5. The Examiner relies on Flower as
disclosing mounting a brush seal that is axially inclined toward a desired
pressure side. Ans. 5, citing Flower, Fig. 3C. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify the APA system with inclined bristles as such is
merely an equivalent mounting arrangement that would yield expected
results. Ans. 5.
In traversing the rejection, Appellant argues that the prior art does not
disclose a core rod with seal members as claimed. App. Br. 26. In
particular, Appellant denies that Figure 1 of Appellant’s drawings
constitutes prior art. App. Br. 26, 27, 28.
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In response, the Examiner directs our attention to page 5 of
Appellant’s parent application, non-provisional application number
11/121,872 (“’872 Application”). The Examiner points out that Appellant
stated that “Fig. 1 is a [perspective view of] ‘mechanically captured prior art
brush seal,’” (emphasis added) in the parent application. Ans. 10, citing
’872 Application, p. 5. The Examiner further points out that Appellant,
referring expressly to the ’872 Application, states in the instant application
that “The entire content of the above applications is incorporated by
reference herein.” Ans. 10; see also Spec. p. 1.
Figure 1 of Appellant’s application depicts a bristle pack with
annotations indicating a 90 degree angular relationship between the
longitudinal axis of core rod 14 and the bristle members disposed thereon.
We agree with the Examiner that Figure 1 is prior art in accordance with the
unequivocal admission in Appellant’s ’872 application.2
We agree with the Examiner’s findings as to the scope and content of
APA, Wright, Tseng and Flower, which are relied upon to teach all of the
claimed limitations of claim 19, including a core rod where each brush seal
member is disposed on the core rod and the brush seal members extend from
the core rod at an inclination of about 90o relative to the longitudinal axis of
the core rod. (Ans. 4-5). We also believe that the Examiner’s legal
conclusion of unpatentability is well-founded and supported by articulated
reasoning with rational underpinning.

2 Appellant seeks to repudiate the earlier admission in the parent case
at pages 7-8 of the Reply Brief. Reply Br. 7-8. We do not consider the
Reply Brief statement to be effective in withdrawing the admission. If
Figure 1 is prior art to Appellant’s ’872 application, we are not persuaded
that Figure 1 should not also be considered prior art to the instant
application.
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Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 19-21.
Unpatentability of Claims 22 and 23
Claims 22 and 23 depend from claim 19. Clms. App’x. Appellant
does not argue for the separate patentability of claims 22 and 23 apart from
the arguments that we previously considered with respect to claim 19 above.
App. Br. 25-29. Accordingly, claims 22 and 23 fall with claim 19. See 37
C.F.R. § 41.37(c)(1)(vii).
We sustain the rejection of claims 22 and 23.
Unpatentability of Claims 1-3, 5, 6, 10-12, 14, 15 and 24
over APA, Wright, Tseng and Basu.
We have previously sustained the Examiner’s rejection of claims 1-3,
5, 6, 10-12, 14 and 15 as unpatentable over Wright and Basu. In traversing
the rejection, Appellant relies on the same arguments that we have
previously considered in connection with the rejection of claim 1 over
Wright and Basu, supra. App. Br. 29-34. Appellant also argues that APA is
not prior art, an argument that we have previously rejected in connection
with our consideration of claim 19.
Thus, under this ground of rejection, Appellant presents no new
argument that we have not previously considered and rejected in connection
with the sustained rejections of claims 1 and 19.
We sustain the rejection of claims 1-3, 5, 6, 10-12, 14, 15 and 24 for
essentially the same reasons expressed above.

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DECISION
The decision of the Examiner to reject claims 1-3, 5-12 and 14-24 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)(1)(iv).

AFFIRMED

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