Ex Parte Khonsari et al

Patent Trial and Appeal Board

Jun 28, 2016

11693986 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111693,986 03/30/2007
105330 7590 06/30/2016
Adams and Reese, LLP
One Shell Square
701 Poydras Street, Suite 4500
New Orleans, LA 70139
FIRST NAMED INVENTOR
Michael M. Khansari
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.
3185-9 1217
EXAMINER
LEE, GILBERT Y
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
jason.mueller@arlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL M. KHONSARI
and AINSWORTH GIDDEN
Appeal2014-004449
Application 11/693,986
Technology Center 3600
Before LINDA E. HORNER, CHARLES N. GREENHUT,
and PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, Michael M. Khonsari et al., appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1--42. 1 We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants identify the real party in interest as The Board of
Supervisors of Louisiana State University and Agricultural and Mechanical
College. Br. 1.
Appeal2014-004449
Application 11/693,986
THE CLAIMED SUBJECT MATTER
The claims are directed to a mechanical seal. Spec. 1: 13. Claims 1,
11, and 36 are independent. Br. 19--27, Claims App. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A stationary mating ring for a mechanical seal,
compnsmg:
(a) an annular body having a central axis and a sealing face
having a face width; and
(b) a first circumferential groove formed into said body
behind said sealing face at a distance from the sealing face no
more than about twice the sealing face width, said first
circumferential groove defining a first annular fin extending
radially from said central axis whereby said first annular fin is
configured such that it increases heat flow in the axial and radial
directions,
wherein said first circumferential groove transfers said
increased heat flow to a cooling fluid in contact with the first
circumferential groove, and
wherein the stationary mating ring is configured to form
part of a mechanical seal assembly.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Inouye
Mc Onie
Ullah
Khonsari
us 4,103,907
us 5,192,085
us 5,639,096
US 2005/0082765 Al
REJECTIONS
The Examiner made the following rejections:
Aug. 1, 1978
Mar. 9, 1993
June 17, 1997
Apr. 21, 2005
1. Claim 37 stands rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
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Application 11/693,986
2. Claims 1--42 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. 2
3. Claims 1, 2, 5, 6, 36-38, 40 and 41 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over McOnie.
4. Claims 3, 4, 7, 8, 11-18, 22-35, 39, and 42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over McOnie and Inouye.
5. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McOnie and Khonsari.
6. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McOnie, Inouye, and Khonsari.
7. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over McOnie, Inoye, and Ullah.
Appellants seek our review of these rejections.
OPINION
REJECTION 1
Claim 3 7 depends from claim 1 and recites, in part, that
the first circumferential groove is formed into said annular body
behind said sealing face at a distance no less than approximately
one-tenth of the sealing face width and no greater than
approximately five-fourths of the sealing face width.
Br. 26, Claims App.
The Examiner rejected claim 37 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
According to the Examiner, the recited dimensions "one-tenth of the sealing
2 The Examiner withdrew a rejection of claim 11 under 35 U.S.C.
§ 112, second paragraph, based on indefiniteness of "it." Ans. 6.
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Appeal2014-004449
Application 11/693,986
face width" and "five-fourths of the sealing face width" were "not described
in the specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention." Final Act. 2.
Appellants argue that support for the subject matter of claim 37 may
be found on page 12, lines 7-9 of the Specification which states, "Most of
the heat transfer takes place within a distance approximately two face widths
from the sealing face 4 in the radial and axial direction and the mating ring
1." Br. 4---6. Appellants "assert that the original disclosure (including p. 12,
lines 7 to 9) adequately discloses the claimed dimensions of dependent claim
37 as both the lower (one-tenth of the sealing face width) and upper (five-
fourths of the sealing face width) are within the range disclosed in the
Specification as described above, and thus are inherently supported by the
original Specification." Br. 5.
We agree with the Examiner's finding that "[o ]ne of ordinary skill in
the art would not be able to decipher that the statement ' [ m Jost of the heat
transfer takes place within a distance approximately two face widths from
the sealing face in the radial and axial direction ... ' to mean [the distance
between the groove and sealing face must be] 'approximately one-tenth of
the sealing face width and no greater than approximately five-fourths of the
sealing face width"', as recited in claim 37. Ans. 5. The cited portion of the
Specification merely makes a general observation about heat transfer in the
radial and axial directions of mating ring 1, but says nothing about the
distance between first circumferential groove 5 and sealing face 4. In
particular, neither this cited portion of the Specification nor any other
portion of the Specification identified by Appellants discusses the distance
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Application 11/693,986
between groove 5 and sealing face 4 being "no less than approximately one-
tenth of the sealing face width and no greater than approximately five-
fourths of the sealing face width" as recited in claim 3 7. 3
Appellants' arguments have not shown any error by the Examiner,
and are not persuasive. We sustain the Examiner's rejection of claim 37.
REJECTION2
Claims 1--42 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite. Appellants argue claims 1--42 as a group. Br. 6-7. We
select claim 1 as the representative claim, and claims 2--42 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
35 U.S.C. § 112, second paragraph, requires "claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention."
3 For the Examiner's consideration, we note that because the
Specification does not describe the distance between circumferential groove
5 and sealing face 4, the Specification likewise lacks adequate disclosure
that ( 1) the distance between groove 5 and sealing face 4 is "no more than
about twice the sealing face width" as recited in independent claims 1 and
11, (2) the distance between first circumferential groove 5 and second
circumferential groove 7 is "no more than about twice the sealing face
width" as recited in claims 2 and 12, and (3) the thickness of first annular fin
is "no more than about twice the sealing face width" as recited in claim 36.
Because our authority to enter new grounds of rejection is discretionary and
we already are sustaining rejections of these claims on other grounds, we are
not entering a new ground of rejection of claims 1-36 and 38--42 under
35 U.S.C. § 112, first paragraph. Should further prosecution of these claims
proceed before the Examiner, the Examiner may wish to consider the
appropriateness of such a rejection.
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Appeal2014-004449
Application 11/693,986
Independent claim 1 recites, in part, "a sealing face having a face
width." Br. 19, Claims App. Independent claims 11 and 36 contain similar
limitations. The sealing face width limitation is unclear. The sealing face,
for example, may have a width in the radial and axial directions. The
Examiner finds that the limitation is not defined in the Specification but, for
purposes of the examination, interpreted "the 'sealing face width' to mean
the radial width of the face." Final Act. 3. Appellants do not contest the
Examiner's finding that the Specification does not define the limitation, but
propose another definition. They argue that, according to U.S. Patent
5,664,787, which is not cited in the Specification or an Information
Disclosure Statement, "the definition of a 'sealing face width' on a
stationary sealing ring is known to one of ordinary skill in the art as the
radial direction width of the region of the sealing face of a stationary or
mating ring that comes into contact with a rotating ring." Br. 6 n.1 (citing to
the '787 patent, Fig. 2, 7:7-9). Appellants provided, on page 7 of
Appellants' Brief, Figure 1 of McOnie with an annotation to show the
sealing face width. The annotated figure is reproduced below:
\V1
~~~~~-----~ ... _____ r_ .. ,
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Application 11/693,986
In this figure, Appellants annotated a figure from McOnie to contrast the
Examiner's interpretation of the sealing face width ("W") with Appellants'
interpretation of the sealing face width ("W1"). However, Appellants'
interpretation that the interface between the stationary and rotating rings is
the sealing face width (W 1) is different from the terminology used in their
Specification. According to the Specification, the interface between
stationary mating ring 1 and rotating ring 10 is called "sliding interface 11,"
not the sealing face width. Spec. 14:4--5.
Thus, we agree with the Examiner that the usage of the sealing face
width limitation in claim 1 is unclear. We sustain the Examiner's rejection
that claim 1 fails to comply with 35 U.S.C. § 112, second paragraph, by
failing to particularly point out and distinctly claim the subject matter which
Appellants regard as the invention. Claims 2--42 fall with claim 1 and,
likewise, are indefinite.
REJECTIONS 3-7
Having determined that claims 1--42 are indefinite based on a
limitation at issue in the prior-art rejections (App. Br. passim), we cannot
sustain the rejections of these claims under 35 U.S.C. § 103(a) because to do
so would require speculative assumptions as to the meaning and scope of the
claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962) (holding that
the Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a)).
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Application 11/693,986
DECISION
For the above reasons, the Examiner's rejection of claim 37 under 35
U.S.C. § 112, first paragraph, is AFFIRMED.
The Examiner's rejection of claims 1--42 under 35 U.S.C. § 112,
second paragraph, is AFFIRMED.
The Examiner's rejections of claims 1--42 under 35 U.S.C. § 103(a)
are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2015).
AFFIRMED
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