Ex Parte Johnson et al

Patent Trial and Appeal Board

Mar 25, 2014

11684318 (P.T.A.B. Mar. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOEL T. JOHNSON, BENJAMIN E. WESTBROOK,
NORIYUKI MATSUI, YOSHIYUKI ABE, TAKESHI WAKANA, and
MATHIAS BURKERT
____________

Appeal 2012-003535
Application 11/684,318
Technology Center 3600
____________

Before MICHAEL W. KIM, BART A. GERSTENBLITH, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Joel T. Johnson et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1, 3-6, and 9-13. We have
jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 10 are the independent claims on appeal, are illustrative
of the claimed subject matter, and are reproduced below.
1. A buffer seal for sealing a reciprocating rod, comprising:
an annular seal body having a dynamic seal lip extending
radially inward and axially from said seal body and a static seal
lip extending radially outward and axially from said seal body,
said static seal lip having a hinge portion for attachment to said
seal body that is axially spaced relative to a sealing edge of said
static seal lip, said sealing edge of said static seal lip being
disposed radially outward from said dynamic seal lip, wherein
said dynamic seal lip extends axially to a greater extent than
said static seal lip, said dynamic seal lip having an axial face
portion that includes a flat planar face having a plurality of
radial notches therein, said hinge portion of said static seal lip
including a bend about which an entire length of said static seal
lip flexes to allow fluid flow around an outer side of the buffer
seal to provide pressure relief when the reciprocating rod is
retracted; and
an annular back-up ring disposed radially inward from
said seal body and axially adjacent to said dynamic seal lip.
10. A rod seal for sealing against a reciprocating rod,
comprising:
an elastomeric annular seal body having a dynamic seal
lip angularly extending radially inward and axially from said
seal body and a static lip angularly extending radially outward
and axially from said seal body generally equal distance with
said dynamic seal lip, an annular groove being defined radially
between said dynamic seal lip and said static lip, an axial face
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portion of said dynamic seal lip and said static lip each include
a flat planar face including radially extending notches therein.
App. Br. 13, 15, Claims App’x.
References
The Examiner relies upon the following prior art references:
Bastow US 3,271,038 Sept. 6, 1966
Josephson US 3,521,893 July 28, 1970
Blesing US 4,553,761 Nov. 19, 1985
Schofield US 5,163,692 Nov. 17, 1992
Wheeler US 6,189,894 B1 Feb. 20, 2001
Appellants rely upon the Declaration of Joel T. Johnson under
37 C.F.R. § 1.132, filed Jan. 5, 2011 (the “Johnson Declaration”).1
App. Br. 16, Evid. App’x.
Rejections
Appellants seek review of the following rejections:
I. Claims 1, 3-6, and 9 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement;
II. Claims 1, 3, 6, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Blesing and Bastow;
III. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Blesing and Bastow;
IV. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Blesing, Bastow, and Wheeler;

1 The Johnson Declaration consists of two pages and includes an exhibit
labeled “Exhibit A,” which consists of four pages. App. Br. 16,
Evid. App’x.
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V. Claims 10, 11, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schofield and Bastow; and
VI. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Schofield, Bastow, and Josephson.
SUMMARY OF DECISION
We REVERSE.
OPINION
Rejection I
Claims 1, 3-6, and 9 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Ans. 4-5. The Examiner found that the claim limitation a “bend about which
an entire length of said static seal lip flexes to” constitutes new matter not
supported by the original Specification. Id. In particular, the Examiner
concluded that it is “unclear where this [limitation] is defined in [the]
original application.” Id. at 5.
Appellants contend that the claim language is supported by an
adequate written description. App. Br. 6-7. Appellants assert that the “term
‘hinge’ clearly conveys that the hinge portion 36 includes a flexible joint.”
Id. at 7. Appellants contend that “the static lip 34 is clearly flexible, as the
static lip 34 is formed from a urethane material and the axial length of the
static lip 34 is significantly greater than the radial width of the static lip 34.”
Id. Appellants assert “that one of ordinary skill in the art would understand
that the entire length of the static seal lip 34 must flex . . . to allow fluid flow
around the outer side of the buffer seal 12.” Id. Appellants similarly assert
that “if only a portion of the static seal lip 34 were to flex about the hinge
portion 36, then fluid would not be allowed to flow past the point of contact
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between the end . . . of the static seal lip 34 and the inner wall of the groove
18.” Id.
Appellants’ Specification does not explicitly disclose the phrase “a
bend about which an entire length of said static seal lip flexes.” Explicit
disclosure, however, is not a prerequisite to satisfying the written description
requirement. In re Wright, 866 F.2d 422, 425 (Fed. Cir. 1989) (the claimed
subject matter need not be described “in haec verba” in the original
specification in order to satisfy the written description requirement)
(emphasis added). Rather, “the test for sufficiency is whether the disclosure
of the application relied upon reasonably conveys to those skilled in the art
that the inventor had possession of the claimed subject matter as of the filing
date.” See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
We agree with Appellants. The ordinary and customary meaning of
“hinge” is “[a] jointed or flexible device that allows the turning or pivoting
of a part, such as a door or lid, on a stationary frame.” See The American
Heritage Dictionary of the English Language (2011), accessed at
http://search.credoreference.com/content/entry/hmdictenglang/hinge/0?searc
hId=66a4d6b7-aab8-11e3-9af0-0aea1e24c1ac&result=0 (last visited
Mar. 13, 2014).2
The Specification is consistent with this meaning of the term. In
particular, the drawings plainly show that hinge 36 is located at the
intersection where static seal lip 34 meets seal body 30, thus enabling the

2 Although the date of this reference is after the application’s filing date, we
have no reason to suspect that the ordinary and customary meaning of
“hinge” changed during the intervening time period.
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entire static seal lip to pivot with respect to the seal body. Spec., figs. 1-2;
see also id. at para. [0015] (“The static lip 34 has a hinge portion 36 for
attachment to the seal body 30 that is axially spaced relative to a sealing
edge 38 of the static lip 34.”). Furthermore, the drawings show that the
static seal lip 34 extends from the seal body at an oblique angle (i.e., with a
bend). Id. at figs. 1-2. Indeed, having “a bend about which an entire length
of said static seal lip flexes” as understood by one of ordinary skill in the art
allows “fluid flow around an outer side of the buffer seal to provide pressure
relief.” App. Br. 13, Claims App’x.
Accordingly, we do not sustain Rejection I.
Rejection II
The Examiner concluded that the combination of Blesing and Bastow
would have rendered obvious the subject matter of claims 1, 3, 6, and 9 to
one of ordinary skill in the art at the time of invention. Ans. 5-7. The
Examiner found that Blesing discloses, inter alia, “the hinge portion of the
static seal lip including a bend . . . about which an entire length of the static
seal lip flexes to allow fluid flow around an outer side of the buffer seal to
provide pressure relief.” Id. at 5. The Examiner also found that because this
is “intended use, the structure of the buffer seal body is capable of allowing
fluid flow.” Id.
Appellants contend that “Blesing does not disclose a bend about
which an entire length of a static seal lip flexes to allow fluid flow around an
outer side of the buffer seal.” App. Br. 7. Appellants assert that “the entire
length of the statically-acting sealing lip . . . is incapable of flexing about
this bend to allow fluid flow around the outer side of the seal.” Id.
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In support of their position, Appellants submitted the Johnson
Declaration, which contends that Blesing’s seal “(1) does not have a hinge
portion that include[s] a bend about which an entire length of a static seal lip
flexes, and (2) does not allow fluid flow around an outer side of the seal”
Johnson Decl. 2 (relying on Ex. A).
The Examiner failed to properly consider and respond to Appellants’
rebuttal evidence. The Examiner asserts that “Appellants’ declaration is not
persuasive since the affidavit is [a] mischaracterization of the prior art and
base[d] on no facts.” Ans. 14. This conclusory statement does not explain
how the Johnson Declaration mischaracterizes the prior art. Appellants
proffered sufficient evidence that reasonably supports their position that
Blesing’s seal is incapable of functioning in the manner as claimed. In the
absence of any response by the Examiner that specifically addresses the
inadequacies of the Johnson Declaration, we conclude that a preponderance
of the evidence weighs in favor of Appellants’ unrebutted position.
Accordingly, we do not sustain Rejection II.
Rejection III
Rejection III relies upon the same combination of Blesing and Bastow
as Rejection II. See Ans. 7. Because Rejection III suffers from the same
deficiency we explained in the context of Rejection II, we do not sustain
Rejection III.
Rejection IV
Rejection IV relies upon the same combination of Blesing and Bastow
as Rejection II and, in addition, Wheeler. See id. Because Rejection IV
suffers from the same deficiency we explained in the context of Rejection II,
we do not sustain Rejection IV.
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Rejection V
The Examiner concluded that the combination of Schofield and
Bastow would have rendered obvious the subject matter of claims 10, 11,
and 13 to one of ordinary skill in the art at the time of invention. Ans. 8.
The Examiner found that Schofield discloses the elements of the claims,
except that Schofield does not disclose that “the flat planar faces have
radially extending notches.” Id. The Examiner found that Bastow discloses
this limitation3 and concluded that it would have been obvious to one of
ordinary skill in the art for “the flat planar faces of Schofield to have notches
as taught by Bastow, to maintain fluid pressure access to the space between
the seal lips.” Id.
Appellants raise several arguments in response to this rejection. First,
Appellants contend that “S[c]hofield discloses a feature that serves the
purpose of the radially extending notches.” App. Br. 10. Appellants assert
that “Bastow teaches that radial gaps 21 in lips 14, 15 allow fluid to flow
into the space between the lips 14, 15, urging the lips 14, 15 inwardly and
outwardly, respectively.” Id. (citing Bastow, col. 2, l. 66 - col. 3, l. 5).
Appellants contend that, “S[c]hofield teaches that radial loading of seal lips
30, 32 is achieved via a spring energizer 14.” Id. (citing Schofield, col. 4,
ll. 57-59). Second, Appellants contend that “S[c]hofield is not concerned
with using the seal lips 30, 32 for sealing when the seal lips 30, 32 contact
an axial surface, the only condition in which the radial gaps 21 are used to
radially load seal lips to create a seal.” Id. Appellants assert that “[i]n this

3 The Examiner defined the flat planar faces in Schofield as the “face[s] at
the end of the lips [30 and 32].” Ans. 8. These surfaces are best seen in
Schofield Figure 2 where the arrow from reference numeral 26 is pointing
(for lip 30) and just above reference numeral 28 (for lip 32).
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condition, fluid flows to the space between the seal lips 30, 32 without
notches.” Id. at 10-11.
In response to Appellants’ arguments, the Examiner explains that
the reason to combine [Schofield and Bastow] is that the spring
energizer has a constant biasing force on the static and dynamic
seal lips and with the pressure in the system communicating
with a groove between the static and dynamic seal lips by radial
notches of Bastow will provide varied biasing force to the
dynamic and static seal lips.
Ans. 15 (citing Bastow, col. 2, ll. 68-70).
We agree with Appellants. The Examiner’s reasoning does not have a
rational underpinning supporting the conclusion of obviousness because the
radial notches would not impart the advantages asserted by the Examiner.
Schofield discloses furnishing spring energizer 14 to bias the lips of the seal
outwardly. See Schofield, col. 5, ll. 59-63. Furthermore, there is no need for
radial notches “to maintain fluid pressure access to the space between the
seal lips” (Ans. 8) because Schofield discloses that cavity 28 within lips 30
and 32 of the seal is fluidly connected to the pressure side of the system. See
Schofield, col. 8, ll. 35-62; figs. 8-9. This is because Schofield discloses that
lips 30 and 32 do not contact any radially extending surface; any sealing
using lips 30 and 32 is done in conjunction with axially extending surfaces,
such as bore wall 60 of cylinder 62, an outer surface of piston 56, and an
outer surface of piston rod 72. For the same reason, radial notches would
not provide varied biasing force to the dynamic and static seal lips contrary
to the Examiner’s finding.
Accordingly, we do not sustain Rejection V.
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Rejection VI
Rejection VI relies upon the same combination of Schofield and
Bastow as Rejection V and, in addition, Josephson. See Ans. 9. Because
Rejection VI suffers from the same deficiency we explained in the context of
Rejection V, we do not sustain Rejection VI.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 3-6, and 9
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We REVERSE the Examiner’s decision rejecting claims 1, 3-6, and
9-13 under 35 U.S.C. § 103(a).

REVERSED

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