Ex Parte Roeingh et al

Board of Patent Appeals and Interferences

Jun 12, 2009

10501708 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KONRAD ROEINGH and KARL KELLER
____________

Appeal 2009-003313
Application 10/501,708
Technology Center 3600
____________

Decided1: June 12, 2009
____________

Before JAMESON LEE, SALLY GARDNER LANE and SALLY C.
MEDLEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-003313
Application 10/501,708

A. STATEMENT OF THE CASE
SMS Demag AG (“SMS”), the real party in interest, seeks review
under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-6 and 8. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
References Relied on by the Examiner
Salter Jr. (“Salter ‘480”) 4,022,480 May 10, 1977
Salter Jr. (“Salter”) 4,099,731 Jul. 11, 1978

Rejections on Appeal
The Examiner rejected claims 1-6 and 8 as unpatentable under 35
U.S.C. § 103(a) over Salter and Salter ‘480.
Claims 1-6 and 8 stand or fall together. (Br. 6-10.)
The Invention
Rolling devices are used in rolling mills in the steel industry and
nonferrous metal industry. The rolling devices include sealing devices in the
area of the bearing of the load-bearing roll(s). (Spec. 1.) The invention
relates to a sealing device for a rotatably supported roll.
SMS discloses, referring to SMS’s figure 2 reproduced below
[numbers from figure 2 inserted], a sealing device [16] including at least
two parts, a first sealing part [17] (shown shaded in dark grey) and a second
sealing part [18] (shown shaded in light grey). (Spec. 5.) The second
sealing part [18] is held in a pocket of the first sealing part [17]. (Spec. 6.)
2
Appeal 2009-003313
Application 10/501,708

SMS’s figure 2 is below:

Figure 2 depicts a sealing device.
Claim 1, reproduced from the Claim Appendix of the Appeal Brief,
reads as follows:
Sealing device (16) for a rotatably supported roll (15), the
sealing device comprising at least one annular body, which is
supported on a roll neck (2) and encompassing said roll neck,
the annular body being provided with at least one outwardly
extending lip (21; 22) that rests against and seals a stationary
part (7) during rotation of the roll, wherein the annular body
comprises at least two parts (17; 18), wherein a first part (17)
rests against a part (2) of the roll (15), and a second part (18)
comprises the at least one outwardly extending lip (21; 22), and
wherein the second part (18) is held in a pocket of the first part
(17), wherein the at least one lip is spring-supported.

B. ISSUE
Has SMS shown that the Examiner incorrectly found that Salter
describes a sealing device that includes a second sealing part that is
held in a pocket of a first sealing part?
C. FINDINGS OF FACT (“FF”)
1. Salter describes, referring to figure 1 reproduced below [numbers
from figure 1 inserted], a seal assembly [34] including a neck seal
[38] comprised of an inner body segment [38a] (shown shaded in dark
3
Appeal 2009-003313
Application 10/501,708

grey) and an outer body segment [38b] (shown shaded in light grey).
(Col. 3, ll. 31-38, 58-60.)
Salter’s figure 1 is below:

Figure 1 depicts a sealing device.
2. Inner body segment [38a] has an outer cylindrical segment [82] that
extends to a perpendicular face [84]. (Col. 4, ll. 1-7.)
3. Outer body segment [38b] includes a circular groove [100] adapted to
receive an L-shaped metallic band reinforcing element [102]. (Col. 4,
ll. 15-23.)
4. During manufacturing, the outer body segment [38b] and the
reinforcing band [102] are intimately and permanently bonded
together. (Col. 4, ll. 35-38.)
5. The inner body segment [38a] and outer body segment [38b] are
interconnected in sealing engagement with each other in a manner
which prevents rotation of one segment relative to the other segment.
(Col. 5, ll. 55-58.)
6. In the illustrative embodiment, inner body segment and outer body
segment are interconnected by a machine screw [126] which extends
radially outwardly through the holes [90] in the inner body segment
[38a]. (Col. 5, ll. 58-62.)
4
Appeal 2009-003313
Application 10/501,708

D. PRINCIPLES OF LAW
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
E. ANALYSIS
Independent claim 1 recites (disputed limitations in italics): “the
sealing device . . . comprises at least two parts . . . wherein the second part
(18) is held in a pocket of the first part (17) . . . .” (Br. 12.)
The Examiner finds that Salter describes a seal [38] comprising two
parts where the second part [38b] is held in a pocket of the first part [38a].
(Final Rejection 2; Ans. 3; see FFs 1-5) The Examiner interprets “pocket”
to mean a cavity which is an unfilled space within a mass. (Ans. 4.) The
Examiner finds that the first part [38a] has a pocket because it has a cavity
that is formed by outer cylindrical segment surface [82] and perpendicular
face [84]. (Ans. 4, 5.)
SMS argues that the Examiner incorrectly reads the Salter reference as
describing a sealing element [38a] having a pocket into which sealing
element [38b] fits. (Br. 7.) SMS argues that Salter does not describe a
pocket because Salter only describes an L-shaped surface formed by outer
surface [82] and perpendicular face [84] of sealing element [38a] on which
sealing element [38b] can be laid. SMS also argues that sealing element
[38b] is not in the sealing element [38a]. (Br. 8 (emphasis in Brief); see FFs
1-5.) SMS further argues that it is not possible to lay or set something in a
5
Appeal 2009-003313
Application 10/501,708

cylindrical outer surface since there is no depression or pocket. (Br. 8.)
SMS argues that perpendicular surface [84] prevents sliding of the sealing
element second part [38b] to the right, but it can slide to the left. (Br. 8.)
SMS argues that sealing element second part [38b] is only prevented from
sliding to the left by screw [126]. (Br. 8; see FFs 5-6.)
The Examiner agrees with SMS that the perpendicular face [84] and
outer cylindrical segment surface [82], e.g., what the Examiner calls a
“pocket”, forms an L-shaped element. (Ans. 5.) That is, the Examiner does
not find or direct us to where, for example, the perpendicular face [84]
extends around the sealing element second part [38b] or otherwise contains
the second part. Thus, the question is whether the L-shaped element formed
by the perpendicular face [84] and outer cylindrical segment surface [82] can
reasonably be considered a pocket. We agree with SMS that it can not.
The Examiner interprets “pocket” to mean a cavity and that a cavity is
an unfilled space within a mass. (Ans. 4.) However, even by this definition,
the Examiner unreasonably determines that Salter’s L-shaped element forms
an unfilled space within a mass.
A pocket or a space within a mass must have structural boundaries to
form the space. Moreover, a pocket or an unfilled space within a mass must
structurally be capable of containing the object(s) used to fill the space. The
very definition of a cavity utilized by the Examiner implies that the space
must contain the object(s) utilized to fill the space. The Examiner has failed
to sufficiently demonstrate that Salter’s L-shaped element formed by the
perpendicular face [84] and outer cylindrical segment surface [82] is
reasonably capable of containing objects filling the space, e.g., the sealing
element second part [38b]. Cylindrical surface [82] and perpendicular face
6
Appeal 2009-003313
Application 10/501,708

[84] are the only boundaries. The Examiner has not directed us to any
additional boundaries, such as a second perpendicular face, that would
prevent the sealing element second part [38b] placed in the space from
leaving the space. Peripheral surrounding elements are needed to form an
enclosure or contained space forming a pocket. As a result, the Examiner
incorrectly found Salter’s L-shaped element to be a “pocket” as claimed. As
applied by the Examiner, Salter ‘480 does not make up for the deficiencies
of Salter.
For all these reasons, the Examiner erred in determining that claims 1-
6 and 8 would have been obvious over the prior art.
F. CONCLUSION
The Examiner incorrectly found that Salter describes a sealing device
which includes a pocket.
G. ORDER
The decision of the Examiner rejecting claims 1-6 and 8 as
unpatentable under 35 U.S.C. § 103(a) over Salter and Salter ‘480 is
reversed.
REVERSED

sss

FRIEDRICH KUEFFNER
317 MADISON AVENUE
SUITE 910
NEW YORK, NY 10017

7