Ex Parte Litis et al

Patent Trial and Appeal Board

Jul 17, 2017

13566431 (P.T.A.B. Jul. 17, 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.
13/566,431 08/03/2012 Paul T. Litis PA19043USAA;67036-476PUS1 9354
26096 7590 07/19/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
07/19/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL T. LITIS, DAVID J. AVERY, GREGORY P. SMITH,
JOHN GUNN, DAVID L. KURTZ, and KEVIN BRUT
Appeal 2016-002337
Application 13/566,43 U
Technology Center 3600
Before STEFAN STAICOVICI, JAMES C. CALVE, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul T. Litis et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s final decision rejecting under 35 U.S.C. § 103(a) claims 1—
20 as being unpatentable over Yost (US 3,578,344, issued May 11, 1971).
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 According to Appellants, Hamilton Sundstrand Corporation is the real
party in interest. Appeal Br. 2 (filed May 18, 2015).
Appeal 2016-002337
Application 13/566,431
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellants’ invention relates to “a carbon seal.” Spec. 1.
Claims 1, 12, and 17 are independent. Claims 1 and 12 are illustrative
of the claimed invention and read as follows:
1. A carbon seal assembly comprising:
a carbon seal element disposed about a central axis and
extending between a first end and a second end, the carbon seal
element including an inner step surface at an axial distance HI
with regard to the first end; and
an o-ring adjacent to the inner step surface, the o-ring
including a cross-section diameter D2 such that a ratio H1/D2 is
between 1.60 — 1.73.
12. A carbon seal assembly comprising:
a carbon seal element disposed about a central axis and
extending between a first end and a second end, the carbon seal
element including an inner step surface, an outer step surface,
an axial distance HI from the first end to the inner step surface,
an axial distance H2 from the first end to the outer step surface
and an axial distance H3 from the first end to the second end,
and HI is greater than or equal to 35% of the axial distance H3
and H2 is greater than or equal to 60% of the axial distance H3.
ANALYSIS
Claims 1—11 and 17—19
Each of independent claims 1 and 17 requires, inter alia, that the ratio
H1/D2 is between 1.60—1.73. See Appeal. Br. 6, 8 (Claims App.).
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Application 13/566,431
The Examiner finds that Yost discloses most of the limitations of
independent claims 1 and 17, but “fails to explicitly disclose that a ratio [of]
height/diameter is at least between 1.60-1.73.” Final Act. 2 (transmitted July
17, 2014). Nonetheless, the Examiner determines that
[I]t would have been obvious to one having ordinary skill in the
art at the time the invention was made, to contrive any number
of desirable ranges for the ratio H1/D2 dimension limitation
disclosed by Applicant, since it has been held that where the
general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art. In re Aller, 105 USPQ 233. Further, it
has been held that discovering an optimum value of a result
effective variable involves only routine skill in the art. In re
Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer to
MPEP § 2144.05.
Id. at 2—3.
Appellants argue that the Examiner’s position is merely conclusory as
the Examiner has not shown whether the claimed ratio of H1/D2 is a result
effective variable. See Appeal Br. 4—5 (citing In re Antonie, 559 F.2d 618,
620 (CCPA 1977)). Appellants contend that “the cited case law is applied as
a per se rule without proper analysis to the facts at hand.” Id. at 3.
The Examiner responds that because all of the claimed elements are
disclosed in Yost, “the general conditions of [the] claim are disclosed in the
prior art” and thus, determining the specifically claimed ratio is merely a
matter of routine experimentation. Ans. 6 (transmitted Nov. 5, 2015).
As to Appellants’ argument that Yost does not disclose the claimed
H1/D2 ratio, we appreciate the Examiner’s point that it is not inventive to
discover the optimum or workable ranges by routine experimentation and
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Appeal 2016-002337
Application 13/566,431
Appellants’ counter-point that this rule is limited to cases in which the
optimized variable is a “result-effective variable.” However, optimization in
Aller is premised on the general conditions of a claim being disclosed in the
prior art. See Aller, 220 F.2d at 456. The Federal Circuit has provided
guidance on whether the “general conditions” of the claim are disclosed and
states that “[t]he normal desire of scientists or artisans to improve upon what
is already generally known provides the motivation to determine where in a
disclosed set of percentage ranges is the optimum combination of
percentages.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003); see also
In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
In Peterson, the Federal Circuit held that “a prior art reference that
discloses a range encompassing a somewhat narrower claimed range is
sufficient to establish a prima facie case of obviousness.” Peterson, 315
F.3d at 1330. Similarly, the Federal Circuit held that a prima facie case of
obviousness exists where the claimed ranges or amounts do not overlap with
the prior art but are merely close. Titanium Metals Corp. of America v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). In this case, the Examiner is
correct that the seal of Yost necessarily has a H1/D2 ratio. See Examiner’s
Annotated Figure 1 of Yost, Ans. 5. However, the Examiner has not shown
where Yost specifies any values for this ratio, provides sufficient
information to permit this ratio to be determined, or otherwise provides
support for the finding that a person of ordinary skill in the art would have
considered this ratio to be a result-effective variable. In other words, even
though Yost discloses that geometric parameters such as HI and D2 are
known in the prior art, this does not mean that every seal configuration is
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Appeal 2016-002337
Application 13/566,431
obvious to try, without evidence or reasoning tending to demonstrate the
obviousness of the particularly claimed configuration.
Moreover, we note that Appellants’ Specification establishes the
criticality of the claimed H1/D2 ratio by stating that “[t]he selected ratio
H1/D2 of the carbon seal. . . achieves an unexpected reduction in leakage”
of “up to 76%.” Spec. 3 (emphasis added).
Hence, for the foregoing reasons, the Examiner has not adequately
established that the claimed ratio H1/D2 achieves a recognized result, and
thus has not shown by a preponderance of the evidence that it constitutes a
result-effective variable. Accordingly, we do not sustain the rejection under
35 U.S.C. § 103(a) of claims 1—11 and 17—19 as unpatentable over Yost.
Claims 12—16 and 20
Independent claim 12, recites in relevant part, “HI is greater than or
equal to 35% of the axial distance H3 and H2 is greater than or equal to 60%
of the axial distance H3.” Appeal Br. 7 (Claims App.).
The Examiner finds that although Yost does not explicitly discloses
the above noted limitation, nonetheless,
[I]t would have been obvious to one having ordinary skill in the
art at the time the invention was made, to contrive any number
of desirable ranges for the distance percentages dimension
limitation disclosed by Applicant, since it has been held that
where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves
only routine skill in the art. In re Alien, 105 USPQ 233.
Further, it has been held that discovering an optimum value of a
result effective variable involves only routine skill in the art. In
re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Refer
to MPEP § 2144.05.
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Application 13/566,431
Final Act. 5—6.
Appellants rely on the same arguments discussed supra stating that
“the [Examiner’s] rejection makes similar assertions . . . with regard to
‘general conditions’ and ‘result-effective variable[s].’” Appeal Br. 5.
As the Examiner relies on the same position as discussed above,
namely, that it is not inventive to discover the optimum or workable ranges
by routine experimentation, for the reasons discussed above, we agree with
Appellants that this rule is limited to cases in which the optimized variable is
a “result-effective variable.” Here, the Examiner is correct that the seal of
Yost necessarily has H1/H3 and H2/H3 ratios. See Examiner’s Annotated
Figure 1 of Yost, Ans. 5. However, the Examiner has not shown where Yost
specifies any values for these ratios, provides sufficient information to
permit these ratios to be determined, or otherwise provides support for the
finding that a person of ordinary skill in the art would have considered these
ratios to be result-effective variables. In other words, even though Yost
discloses that geometric parameters such as HI, H2, and H3 are known in
the prior art, this does not mean that every seal configuration is obvious to
try, without evidence or reasoning tending to demonstrate the obviousness of
the particularly claimed configuration.
As such, the Examiner has not adequately established that the ratios
H1/H3 and H2/H3 together achieve a recognized result and, therefore, the
Examiner has not shown by a preponderance of the evidence that the
claimed ratios of H1/H3 and H2/H3 constitute result-effective variables.
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Appeal 2016-002337
Application 13/566,431
In conclusion, for the foregoing reasons, we also do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 12—16 and 20 as unpatentable
over Yost.
SUMMARY
The Examiner’s decision to reject claims 1—20 is reversed.
REVERSED
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