Ex Parte Harvey et al

Patent Trial and Appeal Board

Nov 25, 2014

12241674 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte LEE L. HARVEY, KENNETH R. ALBERTSON,
and GARY W. SCHROEDER
________________

Appeal 2012-007166
Application 12/241,674
Technology Center 3600
________________

Before EDWARD A. BROWN, BRANDON J. WARNER, and
LISA M. GUIJT, Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Lee L. Harvey et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1–14 and 16–20. Appeal Br.
2. Claim 15 has been withdrawn. Id. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is representative of the claimed subject
matter.
1. A reciprocating-rod seal comprising a one-piece rigid
support and a one-piece elastomeric body bonded thereto,
wherein:
the rigid support comprises a cylindrical retaining wall
forming an OD surface of the seal;
the elastomeric body comprises:
an OD face encased by the cylindrical retaining wall
whereby the elastomeric body does not extend axially or
radially beyond the retaining wall,
an ID face forming the ID surface of the seal,
a fluidside face forming the fluidside surface of the seal
and having a notch formed therein, and
an airside face at least partially forming the airside
surface of the seal and having a groove formed therein;
the notch separates an ID fluidside portion of the
elastomeric body from an OD fluidside portion of the
elastomeric body, and the ID fluidside portion forms a sealing
lip; and
the groove separates an ID airside portion of the
elastomeric body from an OD airside portion of the elastomeric
body, and the ID airside portion forms a wiping lip.

THE REJECTIONS ON APPEAL
Claims 1–3, 6, 7, 9, 10, 12, 13, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Friend ’146 (US 6,616,146 B2; iss. Sept. 9,
2003) and Friend ’137 (US 6,045,137; iss. Apr. 4, 2000).1

1 Although the Examiner sometimes refers to US Patent 6,616,146 B2 as
“Friend,” we refer to this patent as “Friend ’146” throughout.
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Claims 4, 5, 8, 11, and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Friend ’146, Friend ’137, and Forch (US 4,172,599; iss.
Oct. 30, 1979).
Claims 17–20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Friend ’146, Friend ’137, and the Applicant Admitted Prior Art
presented in the Specification (AAPA).2

ANALYSIS
Claims 1–3, 6, 7, 9, 10, 12, 13, and 16 — Unpatentable over Friend ’146
and Friend ’137
Regarding independent claim 1, the Examiner finds that Friend ’146
discloses the claim limitations, except “wherein the OD face [of the
elastomeric body] is encased by the cylindrical retaining wall” and further
finds that “Friend ’137 discloses this feature (fig. 1).” Ans. 5. The
Examiner reasons that “[i]t would have been obvious to one skilled in the art
. . . to have modified the invention of Friend [’146] to extend the retaining
wall to the end of the seal as taught by Friend ’137 since this is a well known
feature to Friend ’146 and in order to eliminate gaps between the housing
and the elastomer which the elastomer could bend into and rip or tear in the
process.” Id. at 5–6. Acknowledging that Friend ’146 discloses modifying
the prior art by shortening the retaining wall, the Examiner reasons that such

2 The Examiner relies on the Background section of the Specification,
“tak[ing] official notice that it is notoriously well known in the art to use a
seal of the type disclosed in Friend [’146] in a pump in a drilling operation
with a configuration as claimed.” Ans. 9 (emphasis omitted).
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teaching is only “a cautionary measure” and that “[t]he application of
lubricant’s [sic] during the installation of the seal or care taken when
installing the seal would prevent this leakage.” Id. at 9. The Examiner
concludes that “the principal of operation of Friend ’146 is to create a seal
with the shaft” and that Friend ’146’s seal arrangement, as modified by
Friend ’137, “will still seal against the housing when installed properly”
because “Friend ’137 . . . was reduced to practice and a patent was pursued
on the design, meaning it is still functional.” Id.
Appellants argue that modifying Friend ’146, as set forth by the
Examiner, “would so alter the seal of Friend ’146 that it would no longer
function in its intended manner, that being the manner described in the ’146
patent.” Appeal Br. 10. Appellants point out that “Friend ’146 expressly
teaches extension of the nose 26 beyond the end of the leg 16 so as to form
the gap 62 (Fig. 2) when the seal is press-fit in a counter bore” to address “a
problem mentioned in the background portion of Friend ’146.” Id. at 8–9
(citing Friend ’146 1:44–55, 3:27–33, and 3:58–4:2). Indeed, Friend ’146
states that “even though the radial seal arrangement creates a tight seal with
the surface of the shaft, fluid may still leak from the housing though [sic] the
gap created by the deformation of the metal support during installation of the
radial seal arrangement.” Friend ’146 1:51–55 (emphasis added). Friend
’146 explains that
[b]ecause nose 26 extends past first end 20 of second support
leg 16, a gap 62 is created between outer peripheral surface 24
and counter bore 56. The engagement of nose 26 with counter
bore 56 creates a seal therebetween. This seal prevents fluid
from escaping housing 54 between support 12 and counter bore
56.
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Friend ’146 3:64–4:2. Appellants further argue that “[j]ust because a feature
is well known in the art (or to the same inventor), but in different
arrangements, does not render it obvious to modify any prior art
arrangement to include such feature” (Appeal Br. 10) and that “Friend ’146
expressly teaches away from the modification the Examiner seeks to make”
(Reply Br. 3). Finally, Appellants allege that the Examiner provides no
factual support for the Examiner’s contentions or opinions. Reply Br. 2.
The Federal Circuit has recognized three ways in which a reference
may teach away from a claimed invention. First, a reference may teach
away when a person of ordinary skill is discouraged from following the path
set out in the reference; second, a reference may teach away when a person
of ordinary skill is led in a direction divergent from the path that was taken
by the applicant; and third, a reference may teach away from a use when that
use would render the result inoperable. See In re ICON Health & Fitness
Inc., 496 F.3d 1374, 1381 (Fed. Cir. 2007). However, “[a]lthough a
reference that teaches away is a significant factor to be considered in
determining unobviousness, the nature of the teaching is highly relevant, and
must be weighed in substance.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994).
We are not persuaded by Appellants’ argument that Friend ’146
teaches away from using the extended retaining wall disclosed in Friend
’137 because such use would render inoperable the secondary seal described
in Friend ’146. Rather, we agree with the Examiner’s reasoning that the
secondary seal disclosed in Friend ’146 is an alternative that provides a
possible benefit. See Ans. 9. As correctly noted by the Examiner, the seal
arrangement described in Friend ’146, as modified by Friend ’137, would
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still function as a seal at the interface between the housing and reciprocating
rod, even if the suggested secondary seal described in Friend ’146 is
omitted. Id. Therefore, we are not persuaded that the Examiner erred in
combining the teachings of Friend ’146 and Friend ’137, or reasoning that
Friend ’146 may be modified to replace the support member of Friend ’146
with the known support member disclosed in Friend ’137.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellants do not present separate arguments for dependent claims
2, 3, 6, 7, 9, 10, 12, 13, or 16 (Appeal Br. 11), and therefore, we also sustain
the Examiner’s rejections of these claims.

Claims 4, 5, 8, 11, and 14 — Unpatentable over Friend ’146, Friend ’137,
and Forch
Regarding claim 4, the Examiner finds that “Friend ’146 fails to
disclose an anchor wall as claimed” and further finds that “Forch discloses
an annular seal wherein the rigid support comprises an anchor wall (531, fig.
4) extending axially from an ID end of the flange wall (53).”3 Ans. 7.
Repeating the language set forth in the Final Action of April 7, 2011 (the
“Final Action”), the Examiner reasons that “[i]t would have been obvious to
one skilled in the art . . . to modify the invention of Friend [’146] to provide
an anchor wall section on the ID air side of the seal in order to provide a

3 The Examiner refers to Forch’s edge 531 as depicted in Fig. 4, however,
edge 431 is depicted in Fig. 4 and edge 531 is depicted in Fig. 5. Ans. 7.
Similarly, the Examiner refers flange wall 53, although stiffening ring 43 is
depicted in Fig. 4 and stiffening ring 53 is depicted in Fig. 5. Id. Appellants
appear to assume that the Examiner intends to refer to Fig. 4 and edge 431.
Appeal Br. 11. Our analysis herein presumes the same.
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larger surface area for seal to rigid support bonding.” Id. at 8. However, the
Examiner also acknowledges that, with respect to the modification of Friend
’146, the Examiner mistakenly stated that “the anchor wall section would be
provided on the ID side of the seal” rather than “the ID side of the flange
wall” with respect to Friend ’146. Id. at 9–10 (emphasis added). The
Examiner maintains that, notwithstanding such mistake, “[t]he combination
remains the same, the method of the combination is just being altered in the
logical manner to provide the anchor wall at the end of the flange wall of
Friend ’146.” Id. at 10.
In the Appeal Brief, Appellants respond to the Examiner’s original
position as stated in the Final Action, arguing that applying “edge 431 of the
stiffening ring 43 of Forch . . . to the seal of Friend ’146 would eliminate the
sealing lip 36 of Friend ’146 and hence alter the seal of Friend ’146 such that
it would no longer function in its intended manner” making “it clear the
rejection of claim 4 is based on hindsight.” Appeal Br. 12. In the Reply
Brief, Appellants contend that the Examiner’s mistake and “restatement of
the basis for the rejection [in the Examiner’s Answer] constitutes a new
ground of rejection.” Reply Br. 4. Addressing the Examiner’s corrected
rejection, Appellants point out that “[a] key aspect of the teachings of Forch
is the locating of the edge 431 at the inner diameter of the sealing element 41
to form a fulcrum” and “[c]onsequently, the skilled person would not look to
provide such an edge at the inner diameter of the leg 14 of Friend ’146 since
it [sic] then not be capable of carrying out the function for providing such an
edge.” Id. at 4–5.
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The issue of whether the Examiner’s Answer contained a new ground
of rejection is not appealable.4 In addition, Appellants’ argument as set forth
in the Reply Brief does not apprise us of error in the Examiner’s finding that
Forch discloses an anchor wall, or in the Examiner’s reasoning that a skilled
person would have combined the anchor wall disclosed in Forch with the
seal design of Friend ’146 to provide a larger surface area for bonding the
seal and rigid support.5
Regarding claim 5, which depends from claim 4, Appellants argue
that “the rejection of claim 5 should be reversed for at least the same reasons
discussed above in connection with claim 4” and that “Forch does not
provide any guidance whatsoever as to how the [sic] locate the anchor wall
in relation to an OD airside portion.” Appeal Br. 12, 13. Appellants contend
that “the guidance provided by Forch is to locate the edge 431 beneath the
ID surface of the sealing element 41.” Id. at 13. However, the Examiner
determines that Friend ’146 in light of Forch discloses the limitation of
claim 5, “when the anchor wall is incorporated into the seal of Friend
[’146].” Ans. 8.
Appellants have not apprised us of error in the Examiner’s finding
with respect to the combination of Friend ’146 and Forch. As noted above
with respect to claim 4, from which claim 5 depends, the Examiner reasons
that a skilled person would have combined the anchor wall disclosed in

4 “Any allegation that an examiner’s answer contains an impermissible new
ground of rejection is waived if not timely (37 CFR 1.181(f)) raised by way
of a petition under 31 CFR 1.181(a).” MPEP § 1208.01, 8th Edition.
5 Notably, Forch’s stiffening ring 43, including the radial portion that ends
at edge 431 and functions as fulcrum, supports the sealing element. Forch
3:61–66.
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Forch with the seal design of Friend ’146, by adding Forch’s anchor wall
431 to Friend ’146’s flange wall 14, to provide a larger surface area for
bonding the seal and rigid support. See Ans. 9–10. We are not persuaded
that the Examiner erred in further finding that part of the OD airside of the
elastomeric body would occupy a space defined within the flange wall and
anchor wall, as required by claim 5, in view of this combination. Appellants
acknowledge that in view of the combination, “the edge 431 would extend
into the body portion 22 [of Friend ’146].” Reply Br. 4. Therefore, we
sustain the Examiner’s rejection of claim 5.
Regarding claim 14, Appellants argue that “the above comments
regarding claims 4 and 5 are applicable to claim 14” and further “when the
Friend ’146 seal is modified to include the ‘anchor wall’ of Forch, no
portion of the airside faces of the sealing element will form an airside
surface of the seal since airside surface of the sealing element will be
completely overlapped by the stiffening ring 43/53 [of Forch].” Appeal Br.
16–17. The Examiner rejects claim 14 based on the rejections of claims 1, 2,
4, 6, 7, and 13. Ans. 16. We do not understand Appellants’ argument
regarding the stiffening ring 43/54 of Forch completely overlapping the
sealing element, in view of the Examiner’s combination used in the
rejection. The Examiner finds, with respect to claim 6, that “Friend [’146]
further discloses wherein the flange wall of the rigid support and the airside
face of the elastomeric body form the airside surface of the seal (fig. 4).”
Ans. 6. As noted above, with respect to claim 4, the Examiner finds that
Forch discloses an annular seal wherein the rigid support comprises anchor
wall 431. See Ans. 7. The Examiner thus modifies Friend ’146 to include
an anchor wall section, as disclosed in Forch, on the ID air side of the flange
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wall. See Ans. 9–10. The Examiner’s modification, therefore, would not
result in the complete overlap of the airside surface of the seal body by the
retaining wall comprised of the flange and anchor walls. Therefore, we are
not apprised of any error in the Examiner’s finding or reasoning, and we
sustain the Examiner’s rejection of claim 14.
Regarding claim 8, the Examiner finds that “Forch further discloses
wherein the retaining wall has a hinged fluidside end section (a portion of
the support 53 of Forch is thinned at the analogous location” and points out
that Appellants’ Specification describes “any kind of thinning or weakening
of this portion” as a “hinged portion.” Ans. 8 (citing Spec., p. 4). The
Examiner reasons that “[i]f the rigid support of Friend ’146 in light of Friend
’137 were thinned at its end, the thinned portion would still encapsulate the
seal and no portion [sic] of the seal would extend beyond the support” as
required by claim 1. Id. at 10. Appellants argue that “the reduced cross-
section portion of stiffening ring 53 of Forch is embedded in sealing element
51” and “[i]t is not seen how this feature could be successfully incorporated
into the seal of Friend ’146 and more particularly in the Examiner modified
version of the Friend ’146 seal where the elastomeric body does not extend
axially or radially beyond the support 12.” Appeal Br. 14. Moreover,
Appellants point out that the claims “expressly preclude[]” the elastomeric
body extending axially beyond the retaining wall. Reply Br. 7.
Appellants do not apprise us of error in the Examiner’s findings.
Appellants’ argument is based on the bodily incorporation of the stiffening
ring 53 as depicted in Forch into the seal arrangement of Friend ’146 as
modified by Friend ’137. However, “[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
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into the structure of the primary reference . . . . Rather, the test is what the
combined teachings of those references would have suggested to a person of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See
also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review.”). Accordingly, we sustain the
Examiner’s rejection of claim 8.
Regarding claim 11, the Examiner concludes that “Friend [’146] in
light of Forch further discloses a separate reinforcement member (514,
Forch) positioned within the groove in the airside face of the elastomeric
body.” Ans. 8. The Examiner reasons that “resizing and reshaping the
support to have the same functionality as it does in Forch is not beyond one
of ordinary skill in the art and would still serve to provide extra support to
the seal.” Id. at 10. Appellants argue that “Forch provides no meaningful
guidance as to how such an insert might find use in the seal of Friend ’146
which has a relatively small notch-like groove that is semicircular in shape”
and “[m]oreover, the Examiner has provided no clear basis as to why the
advanced combination would be obvious.” Appeal Br. 15. In other words,
“no explanation has been provided as to why the skilled person would want
to use a reinforcing insert of the type taught by Forch in the relatively small
notch in a face of the sealing arrangement of Friend ’146.” Reply Br. 7.
We are not persuaded by Appellants that the Examiner erred in
finding that Forch discloses a reinforcement member. We are also not
persuaded by Appellants that the Examiner failed to provide a basis for the
combination. The Examiner expressly reasons that the resizing and
reshaping of the reinforcement is not beyond the capabilities of one of
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ordinary skill in the art and that one of ordinary skill in the art would want to
use a reinforcing insert to provide extra support to the seal. Because
Appellants do not apprise us of error in the Examiner’s rationale, we sustain
the Examiner’s rejection of claim 11.
Claims 17–20 — Unpatentable over Friend ’146, Friend ’137, and AAPA
Appellants submit that “claims 17–20 may rise or fall with the claims
from which they depend.” Appeal Br. 17. Because we sustain the
Examiner’s rejection of claims 1 and 16, supra, and claims 17–20 ultimately
depend from claims 1 or 16, we sustain the Examiner’s rejection of claims
17–20.

DECISION
The Examiner’s rejection of claims 1–14 and 16–20 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).

AFFIRMED

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