Ex Parte Foster

Patent Trial and Appeal Board

Oct 18, 2018

12727401 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/727,401 03/19/2010
22145 7590 10/22/2018
KLEIN, O'NEILL & SINGH, LLP
16755 VON KARMAN AVENUE
SUITE 275
IRVINE, CA 92606
FIRST NAMED INVENTOR
Mike Foster
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.
1129-027.101 3203
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
10/22/2018 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):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKE FOSTER
Appeal 2016-008729 1
Application 12/727,401
Technology Center 3600
Before GEORGE R. HOSKINS, BRADLEY B. BAY AT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Mike Foster ("Appellant")2 appeals under 35 U.S.C. § 134(a) the
decision of the Examiner to reject claims 1 and 3-28, which are all the
pending claims in the application. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on October 11, 2018.
We REVERSE.
1 Our Decision references Appellant's Appeal Brief ("App. Br.," filed Jan. 8,
2016), and Reply Brief ("Reply Br.," filed Sept. 22, 2016), the Examiner's
Answer ("Ans.," mailed July 22, 2016), and Non-Final Office Action ("Non-
Final Act.," mailed June 29, 2015).
2 Appellant identifies "BAL SEAL ENGINEERING, INC." as the real party
in interest. App. Br. 2.
Appeal 2016-008729
Application 12/727,401
STATEMENT OF THE CASE
Claimed Subject Matter
Appellant's invention is directed to interlocking composite seals.
Spec., Title. Independent claim 1, reproduced below, is illustrative of the
subject matter on appeal:
1. A method of making a seal assembly having shrink resistant
support, said method comprising:
providing a seal ring comprising a holding bore defined
at least in part by an outside flange and an inside flange having
a seal lip with an inside diameter;
placing a first backing ring made from a high tensile
strength material adjacent the seal ring and in contact with the
seal ring, said first backing ring having a base section having a
first thickness and an inside flange projecting in a same
direction as the seal lip and in contact with at least part of the
inside flange of the seal ring;
placing a second backing ring comprising a base section
having a second thickness and an inside flange projecting in the
same direction as the seal lip in contact with both the first
backing ring and the seal ring so that the second backing ring,
which is made from a high tensile strength material, contacts
and supports the first backing ring at the base section and the
inside flange of the first backing ring; and
wherein the second thickness is at least three times
thicker than the first thickness to provide shrink resistance
support for the seal ring.
App. Br. 17, Claims Appendix.
Rejections
The following rejections are before us for review.
1. Claims 1, 3, 4, 16, 17, 19--24, and 27 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Yamada et al. (US 2002/0014747 Al; pub.
2
Appeal 2016-008729
Application 12/727,401
Feb. 7, 2002) and Nakahara (US 2008/0303221 Al, pub. Dec. 11, 2008). 3
Non-Final Act. 3; Ans. 2.
2. Claims 7-10 and 13-15 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Yamada, Nakahara, and Koschmieder et al. (US
6,502,682 B2, iss. Jan. 7, 2003). Non-Final Act. 7; Ans. 2.
3. Claims 5, 6, 11, 12, 18, 25, 26, and 28 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Yamada, Nakahara, and Schroeder (US
6,641,141 B2, iss. Nov. 4, 2003). Non-Final Act. 9; Ans. 2.
ANALYSIS
The Examiner finds Yamada discloses all the limitations recited in
claim 1, except "Yamada fails to explicitly disclose that the second backing
ring is made from a high tensile strength." Non-Final Act. 3. To cure this
deficiency, the Examiner finds Nakahara teaches "the use of a high tensile
strength material (PEK) as the material for a backing ring 60a," and
determines it would have been obvious to one of ordinary skill in the art "to
modify the material of the backing ring of Yamada with a higher tensile
strength material such as PEK as taught by Nakahara in order to improve
overall sealing against a moveable surface." Id. at 4 (citing Nakahara ,r 47).
In response to Appellant's argument against the proposed modification, the
Examiner asserts:
Nakahara teaches the use of a backing ring having the material
of PEK. Nakahara also teaches that the backing ring 60a
following ability of the seal ring 20 along the thrust direction to
3 Although the statement of the rejection cites to Nakahara's international
application (WO 2007 /055156 Al), both parties refer to the disclosure of the
US national state application publication. See Non-Final Act. 4; see also
App. Br. 8. We also refer to the US publication in our Decision.
3
Appeal 2016-008729
Application 12/727,401
the mating ring 10 can be maintained sufficiently, thus
excellent sealing effect can be maintained (also see Para. 0052
of Nakahara US 2008/0303221 ). It is this teaching that is being
applied to Yamada et al.
Ans. 5---6; see also id. at 8 ("Nakahara teaches the use of a high tensile
strength material as a backup ring 60a which supports and backs up primary
seal 20.").
Nakahara is directed to a mechanical sealing device comprising a
stationary slide ring 10, a rotary slide ring 20, and an 0-ring 30 equipped
between an inner bore of the rotary slide ring 20 and a rotary shaft 200.
Nakahara, Abstract. Fig. 1. Nakahara's "mechanical sealing device further
comprises an annular ring member 60a having relatively low gas
permeability in response to that of said 0-ring 30; said ring member 60a is
provided in said inner bore of the rotary slide ring 20 so as to adjoin said 0-
ring 30 at atmosphere side." Id.
The difficulty with the Examiner's modification is that Nakahara's
backup ring 60a does not provide dynamic sealing against rotary shaft 200
such that the shaft rotates relative to backup ring 60a, which is proposed as
modified "to improve the overall sealing against a moveable surface." Non-
Final Act. 4. Although ring 60a is made from a high tensile strength
material, it functions in Nakahara as a support structure to 0-ring 30 for
preventing pressure from pushing 0-ring 30 from high pressure environment
P side to atmosphere side Q. See Nakahara ,r 53, Fig. 1; see id. ,r 54 ("For
this reason, the space g [in Figure 2] can be narrower further by acting a
compressive force to a direction for narrowing the inner diameter of the
backup ring 60a, the biting of the operational 0-ring to the space g can be
prevented more efficiently."). Thus, paragraph 52 of Nakahara, on which
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Appeal 2016-008729
Application 12/727,401
the Examiner relies in support of the proposed modification, "does NOT
describe that the backing ring 60a per se provides a sealing function against
the shaft 200 and against the seal ring 20." Reply Br. 10. When read "in
context with paragraphs [0053] and [0054], it is clear that the excellent seal
that is being referred to is the 0-ring 30, even when the seal ring 20 moves
due to thrust." Id. at 11. In other words, because Nakahara's backup ring
60a is stationary relative to rotary shaft 200 and seal ring 20, Nakahara does
not teach or suggest rotating a shaft against a backing ring made from a high
tensile strength material, which is required for the Examiner's proposed
modification to improve overall sealing against a moveable surface.
Accordingly, we do not sustain rejection (1) under 35 U.S.C. § 103(a)
as unpatentable over Yamada and Nakahara. For similar reasons, we do not
sustain rejections (2) and (3) as unpatentable over the combination of
Yamada and Nakahara, and prior art references Koschmieder and Schroeder,
which do not remedy the error as to the proposed combination of Yamada
and Nakahara.
DECISION
The Examiner's decision to reject claims 1 and 3-28 is reversed.
REVERSED
5