Ex Parte Gunderson

Patent Trial and Appeal Board

Oct 15, 2013

12336856 (P.T.A.B. Oct. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte NEAL FRANK GUNDERSON
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Appeal 2011-012835
Application 12/336,856
Technology Center 3600
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Before: GAY ANN SPAHN, JOHN W. MORRISON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

MORRISON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-012835
Application 12/336,856
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
15-19, 21-28, and 30-35. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

CLAIMED INVENTION
Claim 15, reproduced below, is illustrative of the claimed subject
matter:
15. A method of hermetic sealing, comprising:
compressing a spring seal with a limited sealing force
between sealing surfaces that surround a gas-filled cavity that
houses heat sensitive components;
providing a heat-softenable film between the spring seal and
the sealing surfaces; and
applying heat to an externally accessible surface to
selectively heat the heat-softenable film without overheating the
heat sensitive components, the heat softening the heat-
softenable film to hermetically seal the spring seal to the
sealing surfaces.

REFERENCES
Browne
Fisher
US 4,261,584
US 5,936,758
Apr. 14, 1981
Aug. 10, 1999
REJECTIONS1
1. Claims 15-19, 21-28, and 30-352 rejected under 35 U.S.C. § 103(a) as
being unpatentable over Browne and Fisher.

1 In the Office Action mailed November 24, 2010, the Examiner rejected
claim 29 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement. Final Rej. 2. The Examiner did not
indicate in the Answer that this ground of rejection was withdrawn;
however, since Appellant cancelled claim 29 (see App. Br. 3), we are
assuming that the Examiner withdrew the rejection.
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ANALYSIS
The Examiner finds that Browne substantially discloses all of the
claimed elements of independent claims 15 and 30, but fails to disclose
applying heat to an externally accessible surface to selectively
heat the heat-softenable film without overheating the heat
sensitive components, the heat softening [of] the heat-
softenable film to hermetically seal the spring sea[l] to the
sealing surfaces.
Ans. 5. The Examiner also finds that “Fisher discloses components with
heat sensitive components that is seal ring that is softenable by applying
heat, applying heat to the seal ring and forming a hermetically seal between
components.” Id. (citing Fisher, col. 4, ll. 4-19). The Examiner then
concludes that it would have been obvious to one of ordinary skill in the art
“to have the film of Browne to be heated as taught by Fisher, to provide a
permanent and improved hermetically sealing between components that
have electrical elements.” Id.
Appellant argues that the Examiner’s “reason to combine is mere
conjecture on the Examiner’s part,” “the Examiner has not articulated any
reasoning possessing a rational underpinning to support the proposed
combination,” and “the Examiner's reason to combine is deficient because
the proposed combination does not provide the stated benefit.” App. Br. 10.
Appellant further argues that “[a]t no point does Browne or Fisher teach or
suggest that heating Browne's high-pressure-formed seal would improve the

2 We removed claim 29 from the Examiner’s claim listing as set forth on
page 4 of the Answer since Appellant cancelled claim 29. See App. Br. 3.
In addition, we consolidated the Examiner’s rejection on pages 4 and 5 of
the Answer since both rejections are based on the combination of Browne
and Fisher.
Appeal 2011-012835
Application 12/336,856
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seal or make the seal permanent,” and “Browne provides a complete seal
without additional heating.” Id.; Reply Br. 2.
We agree with Appellant that the Examiner has not articulated
adequate reasoning based on a rational underpinning to explain why a person
of ordinary skill in the art would have been led to modify Browne with the
teachings of Fisher. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415
(2007). In this case, the Examiner’s reasoning to modify the sealing method
of Browne, i.e., that including heating, as taught by Fisher, would provide a
permanent and improved hermetical sealing between components that have
electrical elements, does not have a rational underpinning. The sealing
method of Browne achieves a hermetic seal using high pressure and without
the use of heat. See App. Br. 8 (citing Browne, Abstr., indicating that
“[p]ressure is applied to the coating C-ring by the surfaces to be sealed
causing the organic material to fill any microvoids or scratches in the sealing
surfaces, and causing the ductile metal coating to fill the larger voids and
discrepancies, thereby, forming an impermeable leakage barrier for the
highly permeable fluids contained within the housing.” Because Browne
already discloses that the “ring is designed to provide hermetic sealing
between the sealing surfaces 14 and 22” (see Browne, col. 2, ll. 67-68), there
is no need to improve the seal in the manner suggested by the Examiner.
Furthermore, the Examiner provides no reasonable argument or
evidence that the seal of Browne is not permanent, or lacking in durability,
or that heating the seal would make it permanent or provide increased
durability. Thus, Appellant has shown that the Examiner erred by failing to
articulate a reasoning with a rational underpinning to support the conclusion
of obviousness based upon the combination of Browne and Fisher. As such,
we do not sustain the rejection of independent claims 15 and 30, and claims
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16-19, 21-28, and 31-35 dependent thereon, under 35 U.S.C. § 103(a) as
unpatentable over Browne and Fisher.

DECISION
For the above reasons, the Examiner’s decision to reject claims 15-19,
21-28, and 30-35 is reversed.

REVERSED

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