Ex Parte Haynes

Patent Trial and Appeal Board

Sep 15, 2017

12525295 (P.T.A.B. Sep. 15, 2017)

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.
12/525,295 07/30/2009 Brian Haynes SUB-030349
(SUBS:0004)SWA
6574
64833 7590 09/15/2017
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
EXAMINER
LEE, GILBERT Y
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
09/15/2017 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 BRIAN HAYNES
Appeal 2016-003100
Application 12/525,295
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Haynes (Appellant)1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1—10, 12—19, 26, and 28—31.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies OneSubsea IP UK Limited as the real party in
interest. Appeal Br. 3.
2 Claims 22—25 stand objected to as dependent on a rejected base claim, but
are indicated to contain allowable subject matter. Final Act. 11.
Appeal 2016-003100
Application 12/525,295
CLAIMED SUBJECT MATTER
Claims 1 and 13 are independent. Claim 1 is illustrative of the
claimed subject matter and reads as follows:
1. A system, comprising:
a composite seal, comprising:
an annular metal shell comprising an axial top, an axial
bottom, and a seal interface disposed axially between the axial
top and the axial bottom, wherein the seal interface comprises a
plurality of annular ribs axially spaced apart in the annular metal
shell; and
an elastomer disposed within the annular metal shell,
wherein the elastomer is configured to impart pressure against
the plurality of annular ribs along the seal interface.
Appeal Br. 12 (Claims App.).
REJECTIONS3
1. Claims 1—7, 12, and 28—31 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Joyce and Gundy (US 5,580,068, issued Dec.
3, 1996).4
2. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Joyce, Gundy, and Mullally (US 7,032,905 B2, issued
Apr. 25, 2006).
3 A rejection of claims 20, 21, and 27 under 35 U.S.C. § 102(b) as
anticipated by, or, alternatively, under 35 U.S.C. § 103(a) as unpatentable
over, Joyce (US 1,635,482, issued July 12, 1927) has been withdrawn. Ans.
3; Final Act. 2—3 (rejection).
4 Claim 31 does not depend from claim 1.
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Appeal 2016-003100
Application 12/525,295
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Joyce, Gundy, and Nippon (JP 7-224943, published Aug. 22, 1995).
4. Claims 13—15, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Joyce and Kramer (US 3,918,726, issued Nov. 11,
1975).
5. Claims 16 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Joyce, Kramer, and Gundy.
6. Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Joyce and Nippon.
ANALYSIS
Rejection 1—Claims 1—7, 12, and 28—31 over Joyce and Gundy
As to claim 1, the Examiner finds that Joyce discloses an annular
metal shell 11, 11’ comprising an axial seal interface (“interface between
axial top and axial bottom”), but does not disclose that the seal interface
“comprises a plurality of annular ribs spaced axially apart in the annular
metal shell,” as claimed. Final Act. 4 (citing Joyce, Figs. 3—7). The
Examiner finds that Gundy discloses a seal interface with annular ribs 21.
Id. (citing Gundy, Fig. 5). The Examiner concludes that it would have been
obvious in view of Gundy to incorporate a plurality of ribs in the seal
interface of Joyce “to provide additional sealing points at the outer
circumference.” Id. The Examiner states that because the elastomer of
Joyce is being modified to have annular ribs, “it [would have been] obvious
to one of ordinary skill in the art that the foil and surrounding structures
would take the shape of the inner elastomeric member.” Id. at 11—12.
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Appeal 2016-003100
Application 12/525,295
Appellant contends that, at most, the combination of Joyce and Gundy
teaches an elastomer or rubber material with annular ribs. Appeal Br. 8. In
this respect, Appellant contends that because Gundy teaches an elastomer
having annular ribs, one of ordinary skill in the art would have modified
Joyce’s rubber ring 10, not flexible metal casing 11, to have annular ribs. Id.
The Examiner responds that it is well known in the art to provide ribs
to sealing surfaces of seals for multiple points of contact. Ans. 3. The
Examiner states that even if only the elastomer of Joyce were modified,
Joyce teaches that element 11 takes the form of the elastomeric element,
and, therefore, whether the elastomeric portion or the metal portion of Joyce
were modified by Gundy, “it is clear that the contacting surfaces will be
modified to have ribs.” Id. at 3^4. Appellant disagrees, stating that “the
flexible metal casing 11 of Joyce may nevertheless be deposited about the
rubber ring 10 without its outer structure conforming to the geometry of the
hypothetical annular ribs of inner rubber ring 10.” Appeal Br. 9.
We understand that the Examiner proposes to modify both rubber ring
10 and metal casing 11 of Joyce to have annular ribs. If rubber ring 10 were
modified to have annular ribs, then metal casing 11 also would have to be
modified to have annular ribs because claim 1 requires annular ribs in the
annular metal shell. As noted by Appellant, however, neither Joyce nor
Gundy teaches “an annular metal shell having a plurality of annular ribs
spaced apart in the annular metal shell,” as claimed. Appeal Br. 8.
Joyce discloses flexible metal casing 11 having a planar outer surface.
See Joyce Figs. 2—7.
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Appeal 2016-003100
Application 12/525,295
Gundy describes that:
The nature of the contact between sealing ribs 21 and 24
and the adjacent materials provides a seal in either direction.
Ground water does not infiltrate the sewer system 20 and sewage
does not leak to the exterior. Analysis of seals embodying this
invention indicates unexpectedly good resistance to leakage
particularly against leakage in response to ground water pressure
during storms.
Gundy 5:24—30 (italics added). This description indicates that the contact
between sealing ribs 21 and adjacent materials provides an unexpectedly
good seal. In view of this teaching, one skilled in the art would be led to
provide elastomeric sealing ribs 21 on a seal to be able to directly contact
adjacent materials to form a seal. The Examiner has not provided an
adequate reason with rational underpinning why one skilled in the art would,
nonetheless, encase such elastomeric sealing ribs 21 with metal, as disclosed
by Joyce. For example, even assuming that, in Joyce, metal casing 11 could
be deposited about rubber ring 10 such that its outer structure conforms to
the geometry of Gundy’s sealing ribs 21, the Examiner does not explain
adequately how the unexpectedly good seal provided by direct contact
between elastomeric sealing ribs 21 and adjacent materials would still be
provided by encasing sealing ribs 21 with metal in this manner.
For these reasons, we do not sustain the rejection of claim 1, claims
2—7, 12, and 28—30 depending from claim 1, and claim 31, as unpatentable
over Joyce and Gundy.
Rejection 2—Claims 8 and 9 over Joyce, Gundy, and Mullally
Claim 8 depends from claim 1 and recites “a thermoplastic ring
disposed axially between the plurality of annular ribs.” Appeal Br. 21
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Appeal 2016-003100
Application 12/525,295
(Claims App.). The Examiner relies on Mullally to teach this limitation.
Final Act. 6—7.
The Examiner’s application of Mullally does not cure the deficiencies
in the rejection of claim 1 discussed above. Accordingly, we do not sustain
the rejection of claim 8 and claim 9, which depend from claim 8, as
unpatentable over Joyce, Gundy, and Mullally.
Rejection 3—Claim 10 over Joyce, Gundy, and Nippon
Claim 10 depends from claim 1 and recites “a spring disposed within
the annular metal shell along with the elastomer.” Appeal Br. 21 (Claims
App.). The Examiner finds that Nippon discloses the addition of springs 2 to
a seal. Final Act. 7.
The Examiner’s application of Nippon does not cure the deficiencies
in the rejection of claim 1 discussed above. Accordingly, we do not sustain
the rejection of claim 10 as unpatentable over Joyce, Gundy, and Nippon.
Rejection 4—Claims 13—15, 17, and 18 over Joyce and Kramer
Independent claim 13 recites, inter alia, “a spring disposed in the
elastomer, wherein the spring extends between and contacts the first and
second metal seal interfacesAppeal Br. 21—22 (Claims App. (emphasis
added)) (“the spring limitation”). The Examiner finds that Kramer discloses
the addition of spring 20 to a seal. Final Act. 8. The Examiner determines
that the claim term “contacts” does not require “direct contact.” Id. at 12.
Appellant contends that Kramer’s wire spring 20 does not extend
between and contact first and second metal seal interfaces of a seal, as
claimed. Appeal Br. 15. Rather, Appellant contends, spring 20 runs through
the center of stem portion 13b of elastomeric ring 12. Id. (citing Kramer,
col. 3,11. 59-62, Figs. 15, 17).
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Appeal 2016-003100
Application 12/525,295
Appellant points out that Figure 4 of the application shows springs 64
and 66 contacting, that is, physically touching, first and second metal
interfaces (ribs 40, 42) of annular metal shell 20 to impart forces 68, 70 on
annular metal shell 20. Id. at 16 (citing Spec. 120). Appellant contends that
this disclosure supports the position that “contact” means “physically
touches.” The Examiner disagrees, determining that “‘contact’ means
‘physically touches’” is not supported by the disclosure. Final Act. 12.
Regarding Kramer, the Examiner states that “[cjlearly the spring will contact
the interfaces through the elastomer.” Ans. 7 (emphasis added).
Appellant’s contentions are persuasive. “During examination, ‘claims
... are to be given their broadest reasonable interpretation consistent with
the specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Claim 13 does not recite that the spring contacts the first and second metal
interfaces through the elastomer that the spring is disposed in, but rather,
recites that the spring “contacts the first and second metal seal interfaces.”
Appellant’s construction of “contacts” as meaning “physically touching” is
consistent with Figure 4 of Appellant’s application.
The Examiner’s position that “contacts” does not require “direct”
contact (i.e., physical touching) is inconsistent with both claim 13 and the
Specification. Consequently, the Examiner does not establish that Joyce or
Kramer meets the spring limitation, as properly construed. Thus, the
Examiner does not establish by a preponderance of the evidence that the
combination of Joyce and Kramer meets all the limitations of claim 13.
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Application 12/525,295
Accordingly, we do not sustain the rejection of claim 13, or claims 14,
15, 17, and 18 depending therefrom, as unpatentable over Joyce and Gundy.
Rejection 5—Claims 16 and 19 over Joyce, Kramer, and Gundy
Claims 16 and 19 depend from claim 13. Appeal Br. 22 (Claims
App.). The Examiner’s application of Gundy to reject claims 16 and 19 does
not cure the deficiencies in the rejection of claim 13 discussed above. Thus,
we do not sustain the rejection of claims 16 and 19 as unpatentable over
Joyce, Kramer, and Gundy.
Rejection 6—Claim 26 over Joyce and Nippon5
The Examiner rejects claim 26 over Joyce and Nippon. Final Act. 10—
11; Ans. 3. As Appellant does not address this rejection in its briefs, we
summarily sustain the rejection.
DECISION
The Examiner’s decision to reject claims 1—10, 12—19, and 28—31 is
reversed, and to reject claim 26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
5 Claim 26 depends from claim 20, which is not rejected. However, the
Examiner does not indicate that the rejection of claim 26 has been
withdrawn. See Ans. 3 (“withdrawn rejections”).
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