11650865 (P.T.A.B. Nov. 27, 2013)

Ex Parte Lutaud et al

Patent Trial and Appeal BoardNov 27, 2013

11650865 (P.T.A.B. Nov. 27, 2013)

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. 11/650,865 01/08/2007 Dominique Lutaud 8470G-000067 8284 7590 11/27/2013 Harness Dickey and Pierce PLC P.O. Box 828 Bloomfield Hills, MI 48303 EXAMINER PATEL, VISHAL A ART UNIT PAPER NUMBER 3675 MAIL DATE DELIVERY MODE 11/27/2013 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 DOMINIQUE LUTAUD and FABRICE FOUGEROLLE ________________ Appeal 2011-010970 Application 11/650,865 Technology Center 3600 ________________ Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN and EDWARD A. BROWN, Administrative Patent Judges. McCARTHY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 The Appellants1 appeal under 35 U.S.C. § 134 (2010) from the 2 Examiner’s decision rejecting claims 1-5 and 9-14. The Examiner has 3 withdrawn claims 6 and 7 from consideration. Claims 8, 15 and 16 are 4 cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2010).5 1 The Appellants identify the real party in interest as Carl Freudenberg KG. Appeal 2011-010970 Application 11/650,865 2 The Examiner rejects: 1 claims 1-5 and 9-14 under the first paragraph of 35 2 U.S.C. § 112 (2010) as failing to comply with the written 3 description requirement (Ans. 3); 4 claims 1-5 and 9-14 under 35 U.S.C. § 103(a) (2010) as 5 being unpatentable over McKinven (US 3,482,844, issued Dec. 6 9, 1969) and Moskowitz (US 4,171,818, issued Oct 23, 1979) 7 (Ans. 3-6 and 7); 8 claims 1-5 and 9-13 under § 103(a) as being 9 unpatentable over McKinven, Bradley (US 2,589,766, issued 10 Mar. 18, 1952) and Moskowitz (Ans. 5 and 7-11); 11 claims 1-5 and 9-14 under § 103(a) as being unpatentable 12 over McKinven, Moskowitz and Inoue (GB 2 044 167 A, publ. 13 Oct. 15, 1980) (Ans. 11-12); and 14 claims 1-5 and 9-14 under § 103(a) as being unpatentable 15 over McKinven, Bradley, Moskowitz and Inoue (id.). 16 We REVERSE. 17 Claim 1 is the sole independent claim on appeal: 18 1. A seal for sealing a shaft, comprising: 19 a support ring; 20 a dynamic seal having a sealing lip 21 consisting of a polymeric material and 22 magnetizable particles attached to said supporting 23 ring, said magnetizable particles providing said 24 sealing lip with alternating magnetic polarities; and 25 a mating ring adapted to be attached to the 26 shaft, said sealing lip directly contacting said 27 mating ring; 28 Appeal 2011-010970 Application 11/650,865 3 wherein pressing of said sealing lip against 1 said mating ring takes place by magnetic 2 interaction; and 3 said magnetizable particles are dispersed 4 throughout a length of said sealing lip that contacts 5 said mating ring, and dispersed throughout an 6 entire thickness of said length of said sealing lip 7 that contacts said mating ring. 8 9 The Examiner finds that the Appellants’ Specification fails to describe 10 a dynamic seal including magnetizable particles “dispersed throughout an 11 entire thickness of said length of said sealing lip that contacts said mating 12 ring” as recited in the last indented clause of claim 1. (See Ans. 3 and 12). 13 The Appellants correctly point out that this limitation is described in Figure 14 3 of the Appellants’ drawing. (See App. Br. 7-8). 15 Figure 3 depicts a section of a unitized seal 1 taken along an 16 axial/radial plane. (See Spec. 4, l. 24 and fig. 3). One of ordinary skill in the 17 art would understand the seal 1 to be symmetric with respect to rotation 18 about its axis, so that any section of the seal 1 taken along an axial/radial 19 plane would be identical in appearance to the section depicted in Figure 3. 20 The unitized seal 1 as depicted in Figure 3 includes a sealing lip 4 bearing 21 against a mating ring 10. (Spec. 5, ll. 24-25). The section of the sealing lip 22 4 as depicted in Figure 3 is stippled to indicate the distribution of 23 magentizable particles 5 within the sealing lip. (See Spec. 5, ll. 28-29 and 24 fig. 3). 25 Taking into account the rotational symmetry of the seal 1, Figure 3 26 indicates that magnetizable particles are dispersed throughout the entire 27 thickness of the portion of the sealing lip 4 that contacts the mating ring 10. 28 Therefore, regardless which dimensions are associated with the terms “a 29 Appeal 2011-010970 Application 11/650,865 4 length of said sealing lip that contacts said mating ring” and “an entire 1 thickness of said length of said sealing lip that contacts said mating ring” as 2 recited in claim 1, Figure 3 depicts magnetizable particles dispersed 3 throughout those dimensions. This depiction is not dependent on the scale 4 (or lack of scale) of the image in Figure 3. Therefore, we do not sustain the 5 rejection of claims 1-5 and 9-14 under the first paragraph of § 112 as failing 6 to comply with the written description requirement. 7 McKinven describes a sealing arrangement 20 for sealing between a 8 rotating shaft 12 and a housing 11. (See McKinven, col. 3, ll. 6-11 and fig. 9 1). McKinven’s sealing arrangement 20 includes a sealing lip 34 contacting 10 a mating ring or slinger member 23. (See McKinven, col. 3, ll. 40-42). The 11 Examiner correctly finds that McKinven fails to describe the sealing lip 34 12 as having magnetizable particles. (See Ans. 4). 13 Moskowitz describes several embodiments of a lip seal positioned 14 about a rotatable shaft. Figure 1 depicts an elastomeric lip seal 32 including 15 a permanent magnet 33 embedded in the elastomeric lip seal 32. 16 (Moskowitz, col. 5, ll. 20-26). Figure 1 depicts the north and south poles of 17 the permanent magnet 33 as being spaced axially and radially with respect to 18 a rotatable shaft 10. The field of the permanent magnet 33 holds a 19 ferrolubricant in position between the lip seal 32 and the shaft 10. 20 (Moskowitz, col. 5, ll. 20-26). Figure 5 of Moskowitz depicts a lip seal 32 21 composed of an elastomer having permanent magnetic particles dispersed 22 therein. (Moskowitz, col. 5, ll. 46-49). Neither Figure 5 nor the 23 accompanying description indicates the polarity of the macroscopic field 24 generated by the magnetic particles. 25 Appeal 2011-010970 Application 11/650,865 5 The Appellant correctly points out the magnetizable particles in the lip 1 seal 32 depicted in Figure 5 of Moskowitz do not “provid[e] said sealing lip 2 with alternating magnetic polarities” as recited in claim 1. (See App. Br. 3 10). The Examiner, on the other hand, concludes that the “[A]ppellants’ 4 claims do not preclude the interpretation of the [E]xaminer to have a 5 minimum of two polarities that are alternating in the axial and/or radial 6 direction.” (Ans. 12-13). The Examiner finds that the bipolar permanent 7 magnet 33 embedded in the elastomeric lip seal 32 depicted in Figure 1 of 8 Moskowitz has poles which alternate in the axial direction. The Examiner 9 additionally finds that the lip seal 32 of Figure 5, being another embodiment 10 of the elastomeric lip seal 32 of Figure 1, must have “alternating poles 11 similar to what is in figure 1.” (Ans. 13). 12 Our reviewing court disfavors any claim interpretation which would 13 render a claim term superfluous. Stumbo v. Eastman Outdoors, Inc., 508 14 F.3d 1358, 1362 (Fed. Cir. 2007). As the Appellant correctly points out, 15 “one skilled in the art would readily acknowledge and appreciate that a 16 permanent magnet inherently has a north pole and a south pole.” (Reply Br. 17 6). The Examiner has not produced any evidence that the level of ordinary 18 skill in the art was sufficient to magnetize magnetizable particles in a 19 elastomeric sealing lip so as to produce a monopolar field. Therefore, the 20 Examiner’s interpretation of the term “alternating magnetic polarities” as 21 encompassing any magnetization producing at least two poles spaced in any 22 direction would read on magnetizable particles magnetized in any fashion 23 known to one of ordinary skill in the art as of the filing date. In other words, 24 the Examiner’s interpretation would render the term “alternating magnetic 25 polarities” superfluous. 26 Appeal 2011-010970 Application 11/650,865 6 Because the term “alternating magnetic polarities” is susceptible of a 1 reasonable, albeit narrower, interpretation, the Examiner’s interpretation of 2 the term is unreasonable. Because the Examiner’s finding that Figure 5 of 3 Moskowitz depicts a lip seal including magnetizable particles which 4 “provid[e] said sealing lip with alternating magnetic polarities” is dependent 5 on an unreasonable interpretation of claim 1, we do not sustain the finding. 6 Because the Examiner has not shown that either McKinven or Moskowitz 7 teaches a dynamic seal having a sealing lip including magnetizable particles 8 providing said sealing lip with alternating magnetic polarities, we do not 9 sustain the rejection of claims 1-5 and 9-14 under 35 U.S.C. § 103(a) (2010) 10 as being unpatentable over McKinven and Moskowitz. 11 Bradley describes an oil seal for a shaft including a flexible magnet 12 formed from magentizable particles embedded in an elastomeric material. 13 (See Bradley, col. 1, l. 50 – col. 2, l. 1 and fig. 3). Nevertheless, Bradley 14 teaches magnetizing the magnetizable particles in the seal so as to produce a 15 bipolar field. (See Bradley, col. 3, ll. 39-52). Because the Examiner has not 16 shown that either McKinven or Moskowitz or Bradley teaches a dynamic 17 seal having a sealing lip including magnetizable particles providing said 18 sealing lip with alternating magnetic polarities, we do not sustain the 19 rejection of claims 1-5 and 9-13 under § 103(a) as being unpatentable over 20 McKinven, Bradley and Moskowitz. (See App. Br. 10). 21 Inoue describes a method for manufacturing an extruded magnetic 22 elastomer. (See Inoue 1, ll. 6-16 and 55-65). The Examiner cites Inoue as 23 disclosing “an elastomeric member having magnetizable particles dispersed 24 through the entire thickness and length.” (Ans. 11-12). Because this 25 teaching does not remedy the deficiencies in the teachings of McKinven and 26 Appeal 2011-010970 Application 11/650,865 7 Moskowitz as applied to claim 1, we do not sustain the rejection of claims 1-1 5 and 9-16 under § 103(a) as being unpatentable over McKinven, 2 Moskowitz and Inoue. Because this teaching does not remedy the 3 deficiencies in the teachings of McKinven, Bradley and Moskowitz as 4 applied to claim 1, we do not sustain the rejection of claims 1-5 and 9-14 5 under § 103(a) as being unpatentable over McKinven, Bradley Moskowitz 6 and Inoue. 7 8 DECISION 9 We REVERSE the Examiner’s decision rejecting claims 1-5 and 9-14. 10 11 REVERSED 12 13 14 15 Klh 16