Ex parte Williams

Board of Patent Appeals and Interferences

Jul 10, 1998

08386388 (B.P.A.I. Jul. 10, 1998)

Application for patent filed February 10, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL R. WILLIAMS
__________
Appeal No. 97-3210
Application No. 08/386,3881
__________
ON BRIEF
__________
Before ABRAMS, PATE and CRAWFORD, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1 and 2, which constitute all of the
claims of record in the application.
Appeal No. 97-3210
Application No. 08/386,388
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The appellant's invention is directed to a sealing
arrangement. The subject matter before us on appeal is
illustrated by reference to claim 1, which has been reproduced
in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Ruhe et al. (Ruhe) 3,892,416 Jul. 1,
1975
Redder et al. (Redder) 4,346,801 Aug. 31,
1982
THE REJECTIONS
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Redder.
Claims 1 and 2 also stand rejected under 35 U.S.C. §
102(b) as being anticipated by Ruhe.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
Appeal No. 97-3210
Application No. 08/386,388
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OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Brief. As a result of our review, we have determined that
neither of the rejections should be sustained. Our reasoning
in support of this conclusion follows.
Both of the rejections are under Section 102. It is
axiomatic that anticipation is established only when a single
prior art reference discloses, expressly or under the
principles of inherency, each and every element of the claimed
invention. See RCA Corp. v. Applied Digital Data Systems,
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.),
cert. dismissed sub nom., Hazeltine Corp. v. RCA Corp., 468
U.S. 1228 (1984).
The sealing system to which the appellant’s claims are
directed is for the purpose of providing a seal between a pair
of circular contact surfaces on first and second connection
members. Claim 1 recites a generally ring-shaped primary seal
Appeal No. 97-3210
Application No. 08/386,388
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adapted to be positioned within the inner diameter of the
contact surfaces and forming a seal to prevent leakage of
internal pressure into the area outside of the primary seal
between the first and second connection members, and
a generally ring-shaped secondary barrier seal
positioned concentrically around said primary seal
and between said first and second connection member
contact surfaces to prevent entry of external
pressure to the area encompassed by the secondary
barrier seal . . . .
Redder discloses a rotating shaft assembly that
interfaces with a stationary support structure, upon which the
shaft bearings are mounted. A system is provided lubricating
the bearings by the periodic injection of lubricant under
pressure, which includes a rotating metal ring seal 19 mounted
on the rotating shaft and a stationary metal ring seal 20
mounted on the stationary member. The annular edges of the
two ring seals are in sliding contact, and they prevent the
escape of lubricant between the rotating and stationary
portions of the machine. The examiner has designated seals 19
and 20 as the claimed primary seal, and seal 34 as the
secondary seal ring.
Appeal No. 97-3210
Application No. 08/386,388
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The examiner also has dismissed the functional
limitations regarding preventing leakage of internal or
external pressure as not being worthy of patentable weight
because they are not expressed in “means” format. We do not
agree, and we point out that these limitations set forth a
function which the reference apparatus must be structurally
capable of performing (see, e.g. In re Venezia, 530 F.2d 956,
959, 189 USPQ 149, 151-152 (CCPA 1976)), and such functional
statements must be given full weight and may not be
disregarded in evaluating the patentability of the claims
(see, e.g. Ex parte Bylund, 217 USPQ 492, 498 (Bd. App.
1981)).
Seal 34 is downstream of seal rings 19 and 20 insofar as
the flow of lubricant is concerned, and is mounted on the
rotating element. It is described as “resilient . . .
preferably made of a foamed plastics material,” and is
deformable under pressure to allow lubricant to pass through
into a gap between the rotating and stationary elements
(column 4, line 42 et seq.). Claim 1 requires that the
secondary seal deflect when subjected to internal pressure,
Appeal No. 97-3210
Application No. 08/386,388
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which is the case with Redder ring 34. However, claim 1
further requires that the secondary seal function to “prevent
entry of external pressure to the area encompassed by the
secondary seal between the first and second connection
members.” Notwithstanding the prior statement that this
functional language is of no consequence, the examiner
nevertheless expresses the opinion that “the seal [34] will
prevent entry of at least atmospheric pressure (an external
pressure)” (Answer, page 5). We agree with the appellant that
there is no evidence to support this conclusion, and it is
here that the Section 102 rejection based upon Redder fails.
Redder does not explicitly teach that seal 34 prevents
entry of external pressure and, in our view, to conclude that
such inherently is the case is speculative in view of the fact
such a function is not necessary to the operation of the
disclosed system, and the fact that the seal is designed to
prohibit the passage of lubricant, not gas. We also cannot
agree with the examiner that “atmospheric pressure”
constitutes “external pressure” in the context of the
appellant’s invention. All of the subject matter recited in
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Application No. 08/386,388
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claim 1 therefore is not found in Redder, and this rejection
of claim 1 and, it follows, of dependent claim 2, cannot be
sustained.
The second Section 102 rejection is based upon Ruhe,
which discloses a sealing member for flanged joints. The
examiner considers metal collar 2 and outer ring 4 to be the
primary sealing members and elastic sealing ring 3 to be the
secondary seal. The examiner admits that collar 2 and ring 4
are not explicitly disclosed as being sealing members but
concludes “they will and do perform a sealing action, thereby
they are seals” (Answer, page 6). Here, again, the examiner
has resorted to speculation in the making of a rejection.
Neither “centering collar portion 2," which is of aluminum,
nor “outer ring 4," which is provided with a gap in its
periphery, are described as performing a sealing function
(column 2). The only element so described is sealing ring 3,
as to which the patent states “the sealing effect is produced
by an elastic or plastic deformation of the seal ring 3"
(column 2, lines 56-58). From our perspective, therefore,
this reference discloses only one sealing element, and thus
fails to anticipate claim 1.
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The rejection of claims 1 and 2 as being anticipated by
Ruhe also cannot be sustained.
SUMMARY
Neither rejection is sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
WILLIAM F. PATE, III ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 97-3210
Application No. 08/386,388
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