Ex Parte Wilkinson

Board of Patent Appeals and Interferences

Mar 27, 2012

11432679 (B.P.A.I. Mar. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARK R. WILKINSON
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Appeal 2011-007155
Application 11/432,679
Technology Center 3600
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Before STEFAN STAICOVICI, PHILLIP J. KAUFFMAN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-6, 10-12, 14-17, 40, 42 and 43. Claims 7-9, 13, 18-39
and 41 have been canceled (App. Br. 3). Counsel for Appellant presented
oral argument on March 20, 2012. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

The Claimed Subject Matter
The claimed subject matter pertains to a bushing having a semi-rigid,
one piece cylindrical body with a plurality of milling slots that permit
installation of the body about a shaft. The body also has a single
longitudinal slit with opposite facing edges that mate for complete closure of
the slit. One slit edge has a projecting key with a width at the base that
expands as the key extends away from the base while the other slit edge has
a corresponding opening for receiving the projecting key to assist in holding
the facing edges in place (Spec. ¶ 0051). Independent claim 1 is illustrative
of the claims on appeal and is reproduced below:

1. A one piece shaft sealing bushing for use in a seal cavity
of a rotary mechanical device including a rotating shaft coupled
to a motor, comprising:
a semi-rigid one piece cylindrical body with one
longitudinal slit dimensioned to fit into the seal cavity over the
shaft at one end of the seal cavity;
the slit having a first edge and an opposed second edge
that face each other to mate for complete closure of the slit;
the first edge of the slit having a projecting key with a
profile having a width at the base at the slit and expanding in
the region extending away from the base;
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the second edge of the slit having a corresponding key-
shaped opening for receiving the projecting key to assist in
holding the facing edges in place; and
the cylindrical body is formed with a plurality of milling
slots on the side facing the rotating shaft to permit opening the
body at the longitudinal slit to permit installation about an
installed shaft.

References Relied on by the Examiner
Fosness US 3,955,673 May 11, 1976
Champlin US 5,013,053 May 7, 1991
Uchida US 5,236,203 Aug. 17, 1993
Lennon US 5,345,679 Sep. 13, 1994
Wilkinson US 6,834,862 B2 Dec. 28, 2004

The Rejections on Appeal
1. Claims 1-6, 10-12, 15-17 and 40 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Champlin, Wilkinson and Lennon (Ans. 3).
2. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Champlin, Wilkinson, Lennon and Fosness (Ans. 5).
3. Claims 42 and 43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Champlin, Wilkinson, Lennon and Uchida (Ans. 6).

ISSUE
Has the Examiner provided sufficient rationale and technical
reasoning for concluding that the combination of Champlin, Wilkinson and
Lennon renders obvious a semi-rigid one-piece cylindrical body having a
single longitudinal slit with facing edges configured with, respectively, a
projecting key and a corresponding key-shaped opening to assist in holding
the facing edges in place as set forth in claim 1?

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ANALYSIS
The rejection of claims 1-6, 10-12, 15-17 and 40
over Champlin, Wilkinson and Lennon
Appellant argues claims 1, 10-12 and 15-17 together as a group and
we select claim 1 for review with claims 2-6, 10-12, 15-17 standing or
falling with claim 1 (App. Br. 10; 37 C.F.R. § 41.37(c)(1)(vii) (2011)).
Appellant also provides separate arguments for claim 40 which will be
separately addressed (App. Br. 12). Appellant further argues dependent
claims 2-6 as a group and we select claim 2 for review (App. Br. 15).
Independent claim 1
Claim 1 requires a, semi-rigid, one-piece cylindrical body having a
single slit with opposite facing edges that “mate for complete closure of the
slit.” The first slit edge “having a projecting key” and the second slit edge
“having a corresponding key-shaped opening for receiving the projecting
key to assist in holding the facing edges in place” (App. Br., Claims
Appendix). The Examiner finds that Champlin discloses all the structural
features claimed except that “Champlin does not appear to disclose a key
and slot at the edges” (Ans. 3-4). The Examiner relies on Lennon for
teaching “using a key 48 and slot 50 at the edges to lock it in the
sleeve/tubular shape” which “allows the sleeve to be secured around the
shaft” (Ans. 4). The Examiner’s motivation to modify Champlin’s body
with Lennon’s key and key-hole edges is “so that the sheet can be
locked/secured around the shaft during installation” which also makes “it
easier to install the strip/sleeve of Champlin” (Ans. 4, 7).
Appellant contends that Lennon is directed to motor vehicles and “is
non-analogous art” and that the combination of cited art, sans Lennon, does
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not teach a “sealing member having a key and key-shaped opening along the
single slit” (App. Br. 10, 11; see also 12, 13 and Reply Br. 3-6). Appellant
refers to In re Oetiker for it being well settled that for an Examiner to rely on
a reference, “the reference must either be in the field of applicant's endeavor,
if not, then be reasonably pertinent to the particular problem with which the
inventor was concerned” (App. Br. 13; In re Oetiker, 977 F.2d 1443, 1447
(Fed. Cir. 1992)). Assuming arguendo that Lennon’s automotive teaching is
not in Appellant’s shaft sealing field of endeavor, Appellant identifies the
particular problem as the need for “complete closure of the slit” and
“holding the facing edges in place” (Claim 1). See also Appellant’s
Specification where there is a discussion of using the key and mating slot “to
assist in holding the facing edges in place,” “to lock bushing 9 in place” and
to “ensure complete closure as shown in FIG. 13” (Spec. ¶¶ [0009] and
[0051]). These are all examples of the particular problem with which the
inventor was concerned as per Oetiker. Lennon also addresses the same
problem of closing the slit and holding the facing edges in place by
disclosing interlocking tabs and notches that “capture the tubular shape of
the sleeve” thereby enabling the blank to be “shipped and handled flat and
that the step of flexing the blank to form the sleeve 34 is performed near the
station where the sleeve in installed in the annulus 30” (Lennon 2:1-2, 3:52-
63, see also Abstract). In view of these teachings in Lennon, we find
Lennon to be reasonably pertinent to the particular problem with which the
inventor was concerned (i.e. holding the slit closed). Accordingly, we are
not persuaded by Appellant’s contention that the Examiner’s reliance on
Lennon was in error or that Lennon is non-analogous art.
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Appellant further contends that Wilkinson and Fosness do not teach
certain limitations of claim 1 but the Examiner does not rely on either of
these references for claim 1 (App. Br. 11-12; Ans. 4, see also 7). Appellant
also contends that “Lennon is not directed to a sealing member” and that
Lennon’s sleeve would not function as a shaft sealing member (App. Br. 13;
Reply Br. 5). However, the Examiner does not refer to Lennon for sealing
purposes but for securing/holding purposes and furthermore, “[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art” (Ans. 4, 7; In re Keller, 642
F.2d 413, 425 (CCPA 1981)).
In view of the record presented, we sustain the Examiner’s rejection
of claims 1, 10-12 and 15-17.
Independent claim 40
Claim 40 contains many of the same limitations set forth in claim 1
and further requires the cylindrical outer wall be formed with a lantern ring
or groove at one end. The Examiner further relies on Wilkinson for teaching
a lantern ring in “an asymmetrical body” (Ans. 8, see also 4). Appellant
does not address this teaching in Wilkinson but instead argues that other
recited limitations are not found in Wilkinson (App. Br. 11-12, see also
Reply Br. 6). Appellant does, however, acknowledge that “[a]s to claim 40,
Wilkinson shows an asymmetrical lantern ring as set forth in claim 40”
(App. Br. 12). In view of this acknowledgement and instructions from our
reviewing court that one cannot show nonobviousness by attacking
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references individually where the rejections are based on combinations of
references, we sustain the Examiner’s rejection of clam 40 (see Keller).
Dependent claim 2
Claim 2 depends from claim 1 and further requires that “the body is
formed of a non-ferrous metal material.” The Examiner further relies on
Wilkinson stating that “Wilkinson teaches that non-ferrous metal is an
equivalent material to glass-filled PTFE (which is what Champlin is made
from)” (Ans. 4, see also Ans. 8 citing Wilkinson 3:45-53 and Champlin
3:29-31). The Examiner states that it would have been obvious “to modify
the body by making [it] of non-ferrous metal as such is an equivalent
material for this device” (Ans. 4-5, see also 8). Appellant contends that
“Wilkinson calls for his bearing to be of a rigid material” and Wilkinson also
states that it can be constructed of “non-ferrous materials” as well as “glass
filled thermoplastic material, such as polytetrafluoroethylene (PTFE) or
other suitable plastic material” (App. Br. 15; Wilkinson 3:45-51). As above,
Champlin teaches construction of polytetrafluoroethylene or glass filled
PTFE (Champlin 3:20-21 and 3:29-30) and because Wilkinson identifies
non-ferrous materials and PTFE as being equivalent materials for making
sealing devices, we do not find the Examiner’s rejection of claims 2-6 to be
in error.
The rejection of claim 14
over Champlin, Wilkinson, Lennon and Fosness
Claim 14 depends on claim 1 and further requires “a plastic film” that
“is wrapped around the periphery of the outer surface of the semi-rigid
cylindrical body.” The Examiner relies on the teachings of Fosness for this
additional limitation stating that “Fosness teaches packaging for a packing
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assembly” and more particularly “plastic sleeves 32 and 34” (Ans. 6). The
Examiner states that it would have been obvious to provide the bushing and
packing assembly “as a kit in the plastic sleeves for easy storage, handling,
and use” (Ans. 6). Appellant contends that there is no showing or
suggestion in Fosness to wrap the bushing of claim 1 “in a clear plastic wrap
as claimed in claim 14” (App. Br. 16). We disagree as Fosness states that
the fluid seals are prepackaged as a kit such as via generally clear plastic
(Fosness 4:26-27). In view of the record presented, we are not persuaded by
Appellant’s contention that there is no showing or suggestion in Fosness to
wrap the bushing with “a plastic film” as claimed. Accordingly, we sustain
the Examiner’s rejection of claim 14.
The rejection of claims 42 and 43
over Champlin, Wilkinson, Lennon and Uchida
Appellant argues claims 42 and 43 together and we select claim 42 for
review (App. Br. 17). Claim 42 depends from claim 1 and further requires
that “the key member and receiving key-hole are substantially circular.”
The Examiner further relies on Uchida for teaching that it is known to make
keys and receiving keyholes in “a substantially circular shape (e.g. see Figs.
4 or 9)” (Ans. 7). The Examiner considers it obvious “to modify the shape
of the key and slot to substantially circular since the use of a known,
equivalent element yields expected results” (Ans. 7, see also 9). Appellant
contends that the “gaskets in Uchida are flat multi-piece gaskets and have no
teaching or suggestion relating to shaft sealing members, or how they should
be held in cylindrical form” (App. Br. 17). Uchida was not relied on by the
Examiner for teaching a shaft sealing member or how to hold such a member
in a cylindrical form, instead, Uchida was relied on for disclosing a
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substantially circular key and keyhole shape and how such a shape could
equally be employed in the combination of Champlin, Wilkinson and
Lennon to yield an expected result. Accordingly, Appellant’s contention is
not persuasive and we sustain the Examiner’s rejection of claims 42 and 43.

CONCLUSION
The Examiner has provided sufficient rationale and technical
reasoning for concluding that the combination of Champlin, Wilkinson and
Lennon renders obvious a one-piece semi-rigid body having a plurality of
milling slots and a single slit with facing edges configured with,
respectively, a projecting key and a mating key-shaped opening to assist in
holding the facing edges in place as set forth in claim 1.

DECISION
The rejection of claims 1-6, 10-12, 14-17, 40, 42 and 43 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

MP