Ex Parte Varanasi et al

Board of Patent Appeals and Interferences

Jun 21, 2012

11588952 (B.P.A.I. Jun. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KRIPA KIRAN VARANASI, SHORYA AWTAR,
FREDERICK GEORGE BAILY, MARK EDWARD BURNETT,
FARSHAD GHASRIPOOR, IMDAD IMAM, and
NORMAN ARNOLD TURNQUIST
____________________

Appeal 2010-007630
Application 11/588,952
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-13 and 16-22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

The claimed subject matter relates to an actuator for turbomachinery
that includes an improved piston ring configuration for sealing between the
actuator’s piston and cylinder. See Spec. para. [0001].

Claim 1 is reproduced below with the key disputed limitations
emphasized:
1. A fluidic actuator comprising:
a cylinder having an input port;
a piston disposed at least partially within the cylinder, the
piston having a diameter and including a piston ring groove
around a circumference of the piston, the piston ring groove
having a low pressure face and a high pressure face;
a piston ring located against the low pressure face of the
piston ring groove such that a space exists between an inside
diameter of the piston ring and the piston ring groove, the
piston ring having an outside diameter that is larger than the
diameter of the piston to provide a seal between the piston ring
and the cylinder when the actuator is pressurized; and
a spring disposed in the piston ring groove adjacent to
the piston ring and located against the high pressure face of the
piston ring groove such that a gap exists between an inner
diameter of the spring and the piston ring groove,
wherein the spring preloads the piston ring to provide a
seal between the piston ring and the low pressure face of the
piston ring groove, thereby preventing leakage between a high
pressure side of the actuator and a low pressure side of the
actuator; and
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wherein actuation fluid fills the gap between the spring
and the piston ring groove and fills the space between the piston
ring and the piston ring groove when the actuator is pressurized
to exert a radially outward force on the piston ring, thereby
enhancing the seal between the piston ring and the cylinder.

REJECTIONS
Appellants seek review of the following rejections:
(1) Claims 1, 2, 5, 6, and 9 under 35 U.S.C. § 102(b) as being
anticipated by Chalk (US 2002/0145259 A1, pub. Oct. 10, 2002). Ans. 4.
(2) Claims 1, 2, 5, and 7-9 under § 102(b) as being anticipated by
Forster (US 1,646,143, iss. Oct. 18, 1927). Ans. 4.
(3) Claims 16 and 19 under § 102(b) as being anticipated by
Kawaguchi (US 4,058,084, iss. Nov. 15, 1977). Ans. 4.
(4) Claims 1, 2, 5, and 9 under § 102(b) as being anticipated by Lark
(US 5,560,278, iss. Oct. 1, 1996). Ans. 4.
(5) Claims 1, 3, and 9 under § 103(a) as being unpatentable over
Richards (US 3,268,232, iss. Aug. 23, 1966) and Lark. Ans. 5.
(6) Claims 16 and 18 under § 103(a) as being unpatentable over
Richards and Kawaguchi. Ans. 6.
(7) Claims 2 and 17 under § 103(a) as being unpatentable over
Richards; either Lark or Kawaguchi; and Fruehauf (US 3,520,542, iss. Jul.
14, 1970). Final Office Action mailed Jun. 15, 2009, 6.
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(8) Claim 4 under § 103(a) as being unpatentable over Richards, Lark,
Fruehauf, and Kawaguchi. Final Office Action mailed Jun. 15, 2009, 6.1
(9) Claims 10, 13, 20, and 22 under § 103(a) as being unpatentable
over Lark; or Richards and Lark; or Richards and Kawaguchi, in view of
Homuth (US 4,207,800, iss. Jun. 17, 1980). Ans. 7.
(10) Claims 11, 12, and 21 under § 103(a) as being unpatentable over
Lark; or Richards and Lark; or Richards and Kawaguchi, in view of
Thompson (US 5,974,948, iss. Nov. 2, 1999). Ans. 8.
Appellants argue the patentability of the claims subject to each ground
of rejection as a group. For each ground of rejection (1)-(6), we select the
independent claim as representative. We select claims 2, 10, and 21 as
representative of the claims subject to grounds of rejection (7), (9), and (10)
respectively. See 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
Claims 1, 2, 5, 6, and 9 as anticipated by Chalk

Issue 1: Did the Examiner err in finding the prior art (Chalk) discloses
“a spring disposed in the piston ring groove adjacent to the piston ring and

1 The Examiner did not repeat ground of rejection (7) and (8) in the Answer
and did not list Fruehauf in the “Evidence Relied Upon” (Ans. 3). Although
any rejection not repeated in the Answer may be taken by the Board as
having been withdrawn (See Ex parte Emm, 118 USPQ 180 (Bd. App.
1957), the Board will consider these rejections in light of the Examiner’s
statement that Appellants’ discussion regarding these rejections “are not
considered to be separate from the arguments of section 5” (Ans. 2) and the
fact that the Appellants did not contend that there were any rejections from
the Final Office Action that were not repeated and discussed in the Answer.

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located against the high pressure face of the piston ring groove such that a
gap exists between an inner diameter of the spring and the piston ring
groove” as recited in claim 1 (emphasis added)?

The Examiner finds Chalk inherently describes this limitation. “In
relying upon the theory of inherency, the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of
the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990).
The technical reasoning articulated by the Examiner to show that Chalk
inherently describes a gap between an inner diameter of the spring and the
piston ring groove does not establish that the gap must necessarily be
present in the reference and it would be so recognized by a person of
ordinary skill.
First, the Examiner’s suggestion that a gap would optimize
functionality of the spring motion is insufficient to support the inherency of
the gap. The Examiner has stated that “[w]hen the force to compress the
spring is released, the spring may or may not move back towards the neutral
position because friction may prevent it.” Ans. 10 (emphasis added).
Accordingly, the Examiner has acknowledged that it is possible that the
spring may properly function even in the absence of a gap.
Second, the inclusion of a gap to address manufacturing tolerances is
also insufficient to support the inherency of the gap. The Examiner has
stated that
[t]o decrease costs, the tolerances would be increased and the
nominal sizes would be set, so that none of the combinations
would have the inner diameter of the spring less than the
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diameter of the corresponding part of the groove (i.e., so that all
springs would work with all pistons). The results would be that
most, if not all, the pistons would have a gap between the inner
diameter of the spring and the groove.
Ans. 11-12 (emphasis added). Accordingly, the Examiner has
acknowledged that not necessarily all pistons would have a gap between the
inner diameter of the spring and the groove. We find that the Examiner has
not established that a gap must necessarily be present as required to support
inherency. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (“Inherency .
. . may not be established by probabilities or possibilities. The mere fact that
a certain thing may result from a given set of circumstances is not
sufficient.”).
For the foregoing reasons, we find that the Examiner erred in finding
that Chalk discloses all of the limitations recited in claim 1 and we do not
sustain the rejection of claims 1, 2, 5, 6, and 9 under § 102.

Claims 1, 2, 5, and 7-9 as anticipated by Forster

Issue 2: Did the Examiner err in finding the prior art (Forster) discloses
“a spring disposed in the piston ring groove adjacent to the piston ring and
located against the high pressure face of the piston ring groove such that a
gap exists between an inner diameter of the spring and the piston ring
groove” as recited in claim 1?

Findings of Fact
Forster discloses a piston ring “for preventing the suction of oil
upwardly past the ring during the suction stroke of the piston, and permitting
free passage of oil downwardly past the ring during the firing and
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compression strokes” (p. 1, ll. 17-21; figs. 1, 2, 8). A piston 9 is mounted in
a cylinder (p.1, l. 87; fig. 8), and the ring 13 is mounted in a groove 11 in the
piston 9 (p.1, ll. 88-89 and p. 2, ll. 45-48; fig. 8). A spacing ring 16 is
configured to cooperate with the piston ring 13 and provides “clearance
spaces beneath the ring 13 to permit oil scraped from the cylinder and
entering the piston groove 11 to pass outwardly therethrough.” (p. 2, ll. 43-
52; fig. 8). Figs. 1, 2, and 8 illustrate a space between the ring 13 and the
groove 11, as well as between the spacing ring 16 and the groove 11.
Analysis
Appellants first contend that there is no mention in Forster of a high-
pressure face, let alone a gap between ring 16 and the inner diameter of the
piston ring groove. Br. 14. Appellants further contend that the Examiner
admitted in the Advisory Action that Forster did not disclose a spring that
allows fluid to enter a space behind the spring to force the seal radially
outward. Id.
With respect to the first contention, the Examiner responded that

high and low pressure faces are just names, without any
limitations associated with it. When the piston is moving up,
the upper face of the groove (11) is the high pressure face, and
when moving down, the lower face is the high pressure face;
because they are the respective sides scraping oil off the wall of
the cylinder, thereby generating a “high” pressure of the oil.
Since each face in turn is a high pressure face, either can be
named the high pressure face of the groove. By naming the
lower face the high pressure face, the limitations of the claims
are met.
Ans. 12.
Appellants’ Specification identifies low pressure face 24 and high
pressure face 46 and discusses the prevention of leakage from high pressure
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side 42 to low pressure side 44 . Spec. para.[0020], [0021], [0025]. The
pending claims should be given their broadest reasonable interpretation
consistent with the Specification.
In accordance with the explanation provided by the Examiner (Ans.
12), the statement in Forster that the ring may be configured to “prevent[]
the suction of oil upwardly past the ring during the suction stroke of the
piston” (Col. 1, ll. 15-19 of Forster), and since fluids tend to flow from high
pressures to low pressures (Ans. 13), we find that the lower face in Fig. 8,
for example, of Forster, can reasonably be considered a high pressure face
consistent with Appellants’ Specification such that the spring is disposed in
the piston ring groove adjacent to the piston ring and located against a high
pressure face of the piston ring groove as recited in claim 1 when the claim
is given its broadest reasonable interpretation.
With respect to the second contention that the Examiner admitted in
the Advisory Action that Forster did not disclose a spring that allows fluid to
enter a space behind the spring to force the seal radially outward, we find
that the Examiner correctly identified Fig. 8 of Forster as explicitly showing
a gap between the spring 16 and the groove.2 Ans. 9. This statement by the
Examiner was not further addressed by Appellants.
For the foregoing reasons, we find that the Examiner did not err in
finding that Forster discloses all of the limitations recited in claim 1 and we
sustain the rejection of claims 1, 2, 5, and 7-9 under § 102.

2 “The examiner agrees that a gap is not explicitly taught in these references
(except Forster, with fig 8 explicitly showing a gap between the spring (16)
and the groove) . . . .” Ans. 9.
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Claims 16 and 19 as anticipated by Kawaguchi

Issue 3: Did the Examiner err in finding the prior art (Kawaguchi)
discloses “a spring disposed in the piston ring groove adjacent to the piston
ring and located against the high pressure face of the piston ring groove such
that a gap exists between an outside diameter of the spring and the piston
ring groove” as recited in claim 16?

In accordance with the explanation provided by the Examiner (Ans.
12) and because the operation fluid can be sealed under pressure and the
pressure can be released such that the piston 5 is advanced and retracted
(Kawaguchi, col. 2, ll. 31-50), we find that the rearward wall 9c in Figure 3
of Kawaguchi, for example, reasonably can be considered a high pressure
face consistent with Appellants’ Specification such that the spring 12 is
disposed in the piston ring groove (circumferential groove 9) adjacent to the
piston ring (sealing ring 2) and located against a high pressure face of the
piston ring groove as recited in claim 16 when the claim is given its broadest
reasonable interpretation. However, for the reasons described hereinabove
with respect to Chalk, we find that the Examiner erred in finding that
Kawaguchi inherently discloses a gap between the outer diameter of the
spring and the piston ring groove. Accordingly, we find that the Examiner
erred in finding that Kawaguchi discloses all of the limitations recited in
claim 16 and we do not sustain the rejection of claims 16 and 19 under §
102.

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Claims 1, 2, 5, and 9 as anticipated by Lark

Issue 4: Did the Examiner err in finding the prior art (Lark) discloses “a
spring disposed in the piston ring groove adjacent to the piston ring and
located against the high pressure face of the piston ring groove such that a
gap exists between an inner diameter of the spring and the piston ring
groove” as recited in claim 1 (emphasis added)?

For the reasons described hereinabove with respect to Chalk, we find
that the Examiner erred in finding that Lark inherently discloses a gap
between the inner diameter of the spring and the piston ring groove.
Accordingly, we find that the Examiner erred in finding that Lark discloses
all of the limitations recited in claim 1 and we do not sustain the rejection of
claims 1, 2, 5, and 9 under § 102.

Claims 1, 3, and 9 over Richards in view of Lark

Issue 5: Did the Examiner err in concluding a fluidic actuator including
“a piston ring groove around a circumference of the piston” and “a spring
disposed in the piston ring groove adjacent to the piston ring and located
against the high pressure face of the piston ring groove such that a gap exists
between an inner diameter of the spring and the piston ring groove” as
recited in claim 1 would have been obvious in view of the prior art (Richards
and Lark)?

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Findings of Fact
Richards discloses a compressible sealing member comprising a ring
of soft packing 1 encircling a shaft 2 and held within an annular plastic
jacket 3 (Col. 1, ll. 41-45 and Col. 2, ll. 10-12; fig. 1). The annular plastic
jacket 3 is contained in a chamber 4 within a casing 5 (Col. 2, ll. 12-13; fig.
1). The annular plastic jacket 3 is “supported by a spring 6 to allow radial
float thereof” (Col. 2, ll. 15-17). “The fluid to be sealed is able to enter the
chamber 4 wherein the pressure of the fluid is applied to the plastic jacket
[3] which deforms to squeeze the packing [1] more tightly about the shaft [2]
thereby restricting leakage of the fluid along the surface of the shaft [2]”
(Col. 2, ll. 19-23).
Lark discloses a hydraulic cylinder and piston assembly (Col. 1, ll. 6-
7) comprising first and second parts 2, 3 that are moveable with respect to
each other (Col. 3, ll. 23-26). A circular sealing member 30 is disposed
within faces 8, 9 of groove 5 in first part 2 (Col. 6, ll. 22-25; figs. 1, 10).
The first part 2 can correspond to a piston 61 in a piston 61-cylinder 60 wall
intersection in accordance with an embodiment (Col. 7, ll. 48-53).
Analysis
Appellants contend that Richards fails to teach a circumferential
groove around a circumference of a piston as claimed, but instead teaches a
chamber. Br. 18. The Examiner correctly finds that the chamber 4 must be
annular since the elements contained within the chamber 4 (i.e., soft packing
1 and plastic jacket 3) are annular. Ans. 13. Accordingly, we find the
chamber 4 comprises a circumferential groove.
Appellants further contend that “a gap in Richards does not exist
between an inner diameter of the spring 6 and the ring groove because
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Richards does not teach a ring groove and the spring 6 in Richards is a
helical spring.” Br. 18. The Examiner actually found that there exists a gap
between the outside diameter of the spring 6 and the chamber 4, however.
Ans. 14. In other words, there exists a gap between the outermost extent of
the outer diameter of the spring 6 and the axially-extending outer wall of the
chamber 4. Appellants do not appear to contest this latter finding.
Appellants also contend that the Examiner has mischaracterized the
soft packing 1 and the plastic jacket 3 as two piston rings. Br. 18. Claim 1
does not recite a plurality of piston rings. Unclaimed features cannot impart
patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir.
1998); In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Richard describes a soft packing 1 and an annular plastic jacket 3
contained in a chamber 4 within a casing 5. The packing 1 squeezes radially
inwardly against the shaft 2 to restrict leakage of fluid about the shaft 2 (Col.
2, ll. 10-17). On the other hand, the sealing element 30 in Lark presses
radially outwardly against the second part 3. (Col. 6, ll. 22-31). In order for
one of ordinary skill in the art to have “use[d] the seal of Richards in a
piston groove of a piston, as taught by Lark” in the manner proposed by the
Examiner (see Ans. 6), the one of ordinary skill in the art would have had to
recognize the necessity of reversing the structure described by Richards so
as to push radially outwardly from a groove or chamber in the side of the
piston (see Ans. 15). See also In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007)(“[W]e do not ignore the modifications that one
skilled in the art would make to a device borrowed from the prior art.”). It
flows naturally from the combined teachings of Richards and Lark that, in
the course of reversing the structure described by Richards, the gap
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described by Richards between the outside diameter of the spring 6 and the
chamber 4 would have become a gap between the inner diameter of the
spring 6 and the piston ring groove.
Appellants further contend that the chamber of Richards does not have
a low pressure face and a high pressure face. Br. 18. In accordance with the
explanation provided by the Examiner (Ans. 13-14) and because “sealing
member 13 is interposed between the jacket 3 and the casing 5 to prevent
leakage therebetween from the chamber” (Richards, col. 2, ll. 17-19), we
find that the lefthand-side face in Fig. 1, for example, can reasonably be
considered a high pressure face consistent with Appellants’ Specification
such that the spring is disposed in the piston ring groove adjacent to the
piston ring and located against a high pressure face of the piston ring groove
as recited in claim 1 when the claim is given its broadest reasonable
interpretation. One of ordinary skill in the art adapting Richards’ structure
to seal around a piston of the type described by Lark would have had reason
to position the spring 6 on the side of the soft packing 1 facing the flow to be
sealed, that is, on a high-pressure side, similarly to the manner in which the
spring 6 in the structure described in Richards is positioned relative to the
casing 5 and the soft packing 1.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the limitations recited in claim 1 would have been obvious
from the combination of Richards and Lark; and we sustain the rejection of
claims 1, 3, and 9 under § 103(a).

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Claims 16 and 18 over Richards in view of Kawaguchi

Issue 6: Did the Examiner err in concluding a fluidic actuator including
“a spring disposed in the piston ring groove adjacent to the piston ring and
located against the high pressure face of the piston ring groove such that a
gap exists between an outside diameter of the spring and the piston ring
groove” as recited in claim 16 would have been obvious in view of the prior
art (Richards and Kawaguchi)?

Findings of Fact
Kawaguchi discloses a piston 5 disposed within a cylinder 1, the
piston 5 configured to be “advanced for urging a friction pad 6 onto the disk
7 when a braking pressure is applied to the cylinder” (Col. 2, ll. 23-25; fig.
8). A sealing ring 2 is disposed within a “circumferential groove 9 formed
on the internal periphery 1a of the cylinder 1” (Col. 2, ll. 26-28; fig. 8). In
an embodiment, a back-up plate 11 and a leaf spring 12 may be disposed
“between the sealing ring 2 and the rearward wall 9c of the groove 9” (Col.
3, l. 67 to Col. 4, l. 1; fig. 8). The spring 12 can be configured to urge the
sealing ring toward a forward wall 9a of the groove 9. (Col. 4, ll. 2-4).
Analysis
Appellants contend that
there is no mention in Kawaguchi or Richards of at least the
feature of a spring disposed in the piston ring groove adjacent
to the piston ring and located against a high pressure face of the
piston ring groove such that a gap exists between an inner [sic]
diameter of the spring and the piston ring groove, wherein
actuation fluid fills the gap between the wave spring and the
piston ring groove and fills the space between the piston ring
and the piston ring groove . . . .
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Br. 19 (underlining in original).
The Examiner acknowledges that Richards “does not disclose that the
housing is a cylinder housing and the shaft is a piston, wherein the gap is
between an inner [sic] diameter of the spring and the groove.” Ans. 6. We
find that the Examiner is relying on the disclosure of Kawaguchi for the
teaching to dispose the groove and seal assembly (and resulting gap
therebetween) of Richards in a piston and cylinder assembly. The Examiner
states that
[s]ince Kawaguchi et al teaches an alternate use of a seal; it
would have been obvious at the time the invention was made to
one having ordinary skill in the art to form the groove of
Richards in a cylinder housing, with the shaft being a piston, as
taught by Kawaguchi et al, since one having ordinary skill in
the art would have been able to carry out such a use and the
resulting combination would predictable [sic] work in the same
manner.
Id. at 7.
“One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.”
MPEP § 2145 (citing In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck
& Co., 800 F.2d 1091 (Fed. Cir. 1986)). Appellants have contended only
that each individual reference alone does not teach all of the claim
limitations, but have not addressed the propriety of the combination of
references asserted by the Examiner.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the limitations recited in claim 16 would have been obvious
from the combination of Richards and Kawaguchi; and we sustain the
rejection of claims 16 and 18 under § 103(a).

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Claims 2 and 17 over Richards, either Lark or Kawaguchi, in view of
Fruehauf

Issue 7: Did the Examiner err in concluding a fluidic actuator including
“a spring disposed in the piston ring groove adjacent to the piston ring and
located against the high pressure face of the piston ring groove such that a
gap exists between an inner [or outside] diameter of the spring and the piston
ring groove” as recited in claim 1 from which claim 2 depends would have
been obvious in view of the prior art (Richards; either Lark or Kawaguchi;
and Fruehauf)?

With respect to claim 2, Appellants rely on the same arguments made
for claim 1 with the addition of the statement that “Fruehauf adds nothing to
overcome this shortcoming in Richards, Lark and Kawaguchi.” App. Br. 20.
Since we have found no such shortcoming in the combination of Richards
and either Lark or Kawaguchi as described hereinabove, we find that the
Examiner did not err in concluding that the limitations recited in claim 2
would have been obvious from the combination of Richards and either Lark
or Kawaguchi, further in view of Fruehauf; and we sustain the rejection of
claims 2 and 17 under § 103(a).
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Claim 4 over Richards and Lark in view of Fruehauf and Kawaguchi

Issue 8: Did the Examiner err in concluding a fluidic actuator including
“a spring disposed in the piston ring groove adjacent to the piston ring and
located against the high pressure face of the piston ring groove such that a
gap exists between an inner diameter of the spring and the piston ring
groove” as recited in claim 1 from which claim 4 depends would have been
obvious in view of the prior art (Richards, Lark, Fruehauf, and Kawaguchi)?

The Appellants contend that claim 4 depends from claim 1 and that
there is no mention in Kawaguchi, Lark, Richards or Fruehauf
of at least the feature of a spring disposed in the piston ring
groove adjacent to the piston ring and located against a high
pressure face of the piston ring groove such that a gap exists
between an inner diameter of the spring and the piston ring
groove, wherein actuation fluid fills the gap between the wave
spring and the piston ring groove and fills the space between
the piston ring and the piston ring groove when the actuator is
pressurized to exert a radially outward force on the piston ring,
thereby enhancing the seal between the piston ring and the
cylinder, as recited in Claim 1.
App. Br. 21. Appellants, therefore, rely on the same arguments made
hereinabove with respect to claim 1 which were found unpersuasive (i.e.,
that no individual reference teaches all of the claim limitations).
For the reasons described hereinabove, we find that the Examiner did
not err in concluding that the limitations recited in claim 4 would have been
obvious from the combination of Richards and Lark further in view of
Fruehauf and Kawaguchi; and we sustain the rejection of claim 4 under
§ 103(a).

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Claims 10, 13, 20, and 22 over Lark, or Richards and Lark, or Richards and
Kawaguchi, in view of Homuth

Issue 9: Did the Examiner err in concluding a fluidic actuator including
“a circumferential flow uniformity groove disposed at an intersection
between a base and an inside diameter of the cylinder” as recited in claims
10 would have been obvious in view of the prior art (Lark, or Richards and
Lark, or Richards and Kawaguchi, further in view of Homuth)?

Findings of Fact
Homuth discloses a hydraulic cylinder 10 and piston 20 (Col. 7, ll. 49-
50; fig. 1). Attachment lug 12 is provided to attach the cylinder 10 to the
mechanism actuated by the cylinder (Col. 7, ll. 50-51). In particular,
attachment lug 12 is secured to the cylinder end plate which can be welded
to the cylinder casing (Col. 7, ll. 53-55). A sealing ring 32 is disposed
within a groove on the piston 20 (Col. 8, ll. 11-17; fig. 1). The fluid flow
pattern of the assembly includes fluid flow connection from port 15 to the
piston dash-pot area 35, shown in Fig. 4B, for example (Col. 8, ll. 56-64).
Analysis
The Examiner articulates no persuasive reason why the teachings of
Homuth might have remedied the deficiencies of the disclosure of Lark as
applied to parent claim 1. We do not sustain the rejection of claims 10, 13,
20, and 22 under § 103(a) as being unpatentable over Lark and Homuth.
Appellants state that they disagree with the finding of the Examiner
that Homuth teaches “a base of the inside of the cylinder [that] includes a
truncated cone shape, defining a circumferential flow uniformity groove.”
Br. 22 (quoting Ans. 7). Appellants further contend that “the flow
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uniformity groove of the claimed invention has a completely different
structure and performs a completely different function than the attachment
lug of Homuth.” Br. 22.
The Examiner contends that “it would have been obvious at the time
the invention was made to one having ordinary skill in the art to form a base
of the inside of the cylinder of . . . either modified Richards to include a
truncated cone shape, defining a circumferential flow uniformity groove.”
Ans. 7. We find that the Examiner does not equate the attachment lug 12
itself, but rather the channel extending circumferentially around the
truncated cone shape labeled as element A on page 16 of the Examiner’s
Answer, as the flow uniformity groove.
While the channel identified by the Examiner does look different than
the groove 54 in Fig. 1 of Appellant’s Specification, we find that no
particular structure regarding the uniform flow groove appears in the claim
language or in the Specification other than that it be disposed at an
intersection between a base and an inside diameter of the cylinder. See
Spec. para. [0028]. We find the circumferential channel extending around
and defined by the truncated cone shape in Homuth can reasonably be
considered a circumferential flow uniformity groove disposed at an
intersection between a base and an inside diameter of the cylinder consistent
with Appellants’ Specification.
Although Appellants emphasize that the purpose of the particular flow
uniformity groove 54 described in the Specification is to equalize the
pressure around the circumference of the cylinder 14 upon initial
pressurization of the actuator 10 (Br. 22), we find that the function of
equalizing pressure around the circumference of the cylinder 14 upon initial
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pressurization of the actuator 10 is not found in the claims. That function is
not inherent in the term “flow uniformity groove” itself. Unclaimed features
cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998); In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants’ argument that the flow uniformity groove of the claimed
invention performs a completely different function is not based on
limitations that appear in the claim.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the limitations recited in claim 10 would have been obvious
from the combination of Richards and Lark, or Richards and Kawaguchi, in
view of Homuth; and we sustain the rejection of claims 10, 13, 20, and 22
under § 103(a).

Claims 11, 12, and 21 over Lark, or Richards and Lark, or Richards and
Kawaguchi, in view of Thompson

Issue 10: Did the Examiner err in concluding a fluidic actuator including
a cylinder, “the cylinder further includ[ing] a clocking slot in a base of the
cylinder, and . . . the piston includ[ing] a bottom face having a clocking pin
protruding from the bottom face at a corresponding location to the clocking
slot in the base of the cylinder such that a portion of the clocking pin is
received in the clocking slot to prevent relative circumferential rotation
between the cylinder and the piston” as recited in claim 21 would have been
obvious in view of the prior art (Lark, or Richards and Lark, or Richards and
Kawaguchi, in view of Thompson)?

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Findings of Fact
Thompson discloses a piston and cylinder assembly comprising piston
rod assembly 14 and cylinder 18 (Abstract; Col. 2, ll. 66-67; and Col. 3, ll.
6-8). Internal spline 36 is formed within spline housing 20 that is part of the
cylinder assembly (Col. 3, ll. 10-13). External spline 38 is formed on a
portion of the piston rod assembly 14 (Col. 3, ll. 21-25). “The cooperation
of the internal spline 36 (FIGS. 3and 5) with the external spline 38 (FIGS. 3
and 4) prevents rotation of the piston rod assembly 14” (Col. 3, ll. 31-34).
Analysis
The Examiner articulates no persuasive reason why the teachings of
Thompson might have remedied the deficiencies of in the disclosure of Lark
as applied to parent claim 1. We do not sustain the rejection of claims 11,
12 and 21 under § 103(a) as being unpatentable over Lark and Thompson.
Appellants contend that
[a]lthough the function of the internal spline 36 and external
spline 38 of Thompson is similar to the clocking slot and
clocking pin of the claimed invention, i.e., the [sic] prevent
rotation of the piston relative to the cylinder, this function is
achieved in a different way in Thompson as compared to the
claimed invention. Quite simply, Thompson uses a spline
arrangement, while the claimed invention uses a slot and pin
arrangement. Thus, the anti-rotation feature of Thompson is not
equivalent to the anti-rotation feature of the claimed invention.
Br. 24.
While the internal and external splines 36, 38 in Figs. 3-5 of
Thompson do look different than the clocking slot 58 and clocking pin 60 in
Fig. 1 of Appellants’ Specification, we conclude that no particular structure
regarding the clocking pin and slot is recited in the claims. We find that the
internal and external splines 36, 38 meet the claimed limitation of a clocking
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slot and clocking pin under the broadest reasonable interpretation of these
terms. The term “clocking slot” is interpreted by the Examiner to
encompass a hole (Ans. 17). The ordinary meaning of a “slot” is “a narrow,
elongated depression, groove, notch, slit, or aperture . . . .” See
Dictionary.com, http://dictionary.reference.com/browse/slot (last visited
June 4, 2012). We find that an internal spline can reasonably be considered
a “slot” consistent with Appellants’ Specification.
The clocking pin is considered by the Examiner to be an element that
protrudes from the bottom face of the piston and is received in the slot to
prevent rotation. Ans. 17. The ordinary meaning of a “pin” is “a small,
slender, often pointed piece of wood, metal, etc., used to fasten, support, or
attach things.” See Dictionary.com, http://dictionary.reference.com/browse
/pin (last visited June 4, 2012). We find that an external spline configured
to mate with an internal spline can reasonably be considered a “pin”
consistent with Appellants’ Specification.
For the foregoing reasons, the Examiner did not err in concluding that
the limitations recited in claim 21 would have been obvious from the
combination of Richards and Lark, or Richards and Kawaguchi, in view of
Thompson; and we sustain the rejection of claims 11, 12, and 21 under
§ 103(a).

DECISION
The Examiner’s rejection of claims 1-5, 7-13, 16-18, and 20-22 is
AFFIRMED.
The Examiner’s rejection of claims 6 and 19 is REVERSED.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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