Matthew Krueger

Patent Trials and Appeals Board

Sep 24, 2021

2021000980 (P.T.A.B. Sep. 24, 2021)

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.
15/439,059 02/22/2017 Matthew J. Krueger LIH4-62384-US-NP 4983
44639 7590 09/24/2021
CANTOR COLBURN LLP-BAKER HUGHES OILFIELD
OPERATIONS LLC
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
YAO, THEODORE N
ART UNIT PAPER NUMBER
3676
NOTIFICATION DATE DELIVERY MODE
09/24/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte MATTHEW J. KRUEGER
_______________

Appeal 2021-000980
Application 15/439,059
Technology Center 3600
_______________

Before JEREMY J. CURCURI, JAMES W. DEJMEK, and
AMEE A. SHAH, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–15. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). See Ex parte Lemoine, 46 USPQ2d 1420, 1423
(BPAI 1994) (precedential).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2019). Appellant identifies
Baker Hughes Incorporated as the real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to a ring
seal system, such as for use in a resource exploration system. Spec. ¶¶ 3–4.
As described in the Specification, different seal materials perform differently
under different conditions. Spec. ¶ 2. For example, some materials perform
better at higher temperatures whereas other materials perform better under
colder conditions. Spec. ¶ 2. Further, different materials possess other
characteristics such as strength, resilience, and corrosion resistance, which
may be taken into consideration when being selected. Accordingly, in a
disclosed embodiment, the ring seal system may be comprised of a plurality
of segments, each segment having a similar structure, but comprising
different materials. See Spec. 3, Figs. 2, 3.
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Figure 3 is illustrative of a disclosed embodiment of the claimed ring
seal system and is reproduced below.

Figure 3 illustrates a detailed view of a ring seal system (34). Spec.
¶ 8. As shown, ring seal system (34) comprises five segments (60, 62, 64,
66, 68), each segment having a similar structure. Spec. ¶ 12. The first
segment (60) of ring seal system (34) comprises a first support member (72)
and a first seal portion (86). Spec. ¶ 12. First support member (72) is
formed from a first support material (74). Spec. ¶ 12. First seal portion (86)
is formed from a first seal material (88). Spec. ¶ 12. As shown, the
remaining segments (62, 64, 66, 68) each comprise a support member (92,
112, 132, 152, respectively) and a seal portion (106, 126, 146, 166,
respectively). Spec. ¶¶ 13–16. As described in the Specification, and
recited in the claims, the material of the different support members and seal
portions may differ among the various segments. See, e.g., Spec. ¶¶ 13–16.
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Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
1. A ring seal system comprising:
a first segment including a first support member formed
from a first metal material, and a first seal portion mounted to
the first support, the first support member being configured to
engage a first surface and the first seal portion being configured
to engage a second surface, the first seal portion being formed
from a first seal material, wherein the first seal portion does not
engage the first surface; and
a second segment including a second support member
formed from a second metal material that is distinct from the first
metal material and the first seal material, and a second seal
portion mounted to the second support, the second seal support
member being configured to engage the first surface and the
second seal portion being configured to engage the second
surface, the second seal portion being formed from a second seal
material distinct from the first seal material and the first metal
material, the second segment being operatively connected to the
first segment, wherein the second seal portion does not engage
the first surface.

The Examiner’s Rejection
Claims 1–15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Benson et al. (US 4,576,386; Mar. 18, 1986) (“Benson”);
Nilkanth et al. (US 5,879,010; Mar. 9, 1999) (“Nilkanth”); and White (US
2013/0112398 A1; May 9, 2013). Non-Final Act. 3–13.

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ANALYSIS2
Claims 1, 8, and 9
In rejecting claim 1, inter alia, the Examiner relies on the combined
teachings of Benson, Nilkanth, and White. See Non-Final Act. 3–5. We
begin our analysis with a brief review of the relevant teachings of these
references.
Benson generally relates to a back-up ring assembly. Benson, col. 1,
ll. 8–12, col. 2, ll. 5–11. In particular, Benson describes a back-up ring
assembly as preventing extrusion of the cap seal of an elastomer energized
seal. Benson, col. 2, ll. 5–11. In a disclosed embodiment, Benson describes
using an elastomer energized seal, such as an O-ring, in a piston application.
Benson, col. 1, ll. 21–24. The elastomer energized seal is positioned in a
groove in a surface, and is further “sandwiched between two back-up rings.”
Benson, col. 2, ll. 12–22, 32–39.

2 Throughout this Decision, we have considered the Appeal Brief, filed
July 22, 2020 (“Appeal Br.”); the Supplemental Appeal Brief, filed
August 18, 2020 (“Supp. Appeal Br.”); the Reply Brief, filed November 19,
2020 (“Reply Br.”); the Examiner’s Answer, mailed September 29, 2020
(“Ans.”); and the Non-Final Office Action, mailed March 11, 2020 (“Non-
Final Act.”), from which this Appeal is taken.
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Figure 3 of Benson is illustrative and is reproduced below.

Figure 3 of Benson illustrates a sectional view of the elastomer
energized seal (12) positioned between two-back-up ring assemblies (14,
16). Benson, col. 3, ll. 33–35, 52–54. Benson describes the back-up ring
assembly (e.g., 14) comprises an outer member (50) and an inner member
(52). Benson, col. 4, l. 62–col. 5, l. 7.
A partial view of Figure 3 showing just ring assembly (14) is provided
below.

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In the partial view of Figure 3 from Benson, provided above, a cross-
section of back-up ring assembly (14) is shown. Benson describes that outer
member (52) includes a convex surface (62) designed to engage with the
concave outer surface of inner member (52). Benson, col. 5, ll. 1–4. Benson
describes the material of outer member (52) is made from a “relatively hard,
non-resilient material,” whereas the material of inner member (52) is “softer
than the outer member.” Benson, col. 2, ll. 40–41, 50–52; see also Benson,
col. 2, l. 65–col. 3, l. 1. Benson further contemplates that, based on a
particular application, it may be desirable “to vary the size or shape of the
two back-up rings and to vary the materials from which they are made.”
Benson, col. 4, ll. 49–53. Additionally, Benson describes that although the
two back-up rings (i.e., 14, 16) may be identical in their composition, there
are application in which “[i]t may also be desirable to make one of the back-
up rings from a harder or more durable material than the other.” Benson,
col. 4, ll. 56–58.
Nilkanth generally relates to a seal assembly with mechanically joined
anti-extrusion rings. See Nilkanth, Title. Nilkanth states that the use of anti-
extrusion rings (i.e., back-up rings) with cap seals was known. Nilkanth,
col. 1, l. 46. More specifically, and with specific reference to the back-up
ring described in Benson, Nilkanth describes that positioning the inner
member within the outer member such that the back-up ring is formed as a
complete ring “limits the installation options.” Nilkanth, col. 1, ll. 46–64.
To remedy the identified limitation, Nilkanth teaches “[i]t would be
desirable to provide a two-piece backup ring to protect against extrusion of a
seal member at high pressure or vacuum, which also protects the seal
member from excessive abrasion.” Nilkanth, col. 1, l. 65–col. 2, l. 1.
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Figure 2 of Nilkanth is illustrative and is reproduced below.

Figure 2 of Nilkanth shows a cross-section view of the claimed seal
assembly. Nilkanth, col. 3, ll. 40–42. Nilkanth describes a first back-up ring
assembly (28) as comprising a first back-up ring body (32) and a second
back-up ring body (42). Nilkanth, col. 4, l. 62–col. 5, l. 12. Nilkanth also
describes the material of first back-up ring body (32) may be of a relatively
soft polymeric material whereas the material of second back-up ring body
(42) is preferably a relatively harder material as compared to first back-up
ring body (32). Nilkanth, col. 4, l. 62–col. 5, l. 12. In addition, as shown in
Figure 2, Nilkanth shows first back-up ring body (32) and second back-up
ring body (42) being operatively connected to each other via interlocking
projection (48) from second back-up ring body (42) and complementarily
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shaped groove (38) in first back-up ring body (32). Nilkanth, col. 5,
ll. 13–38.
White generally relates to a “a packer system for use within a conduit,
such as casing, having non-extrusion rings which allow for a more efficient
assembly and conveyance, thereby substantially improving the stability of
the packing unit and creating a more reliable seal.” White ¶ 4. In a
disclosed embodiment, White describes a packer system comprising a
mandrel, a plurality of slips securing the mandrel to the casing, two non-
extrusion rings and two sets of support rings. White ¶ 5. White describes
the non-extrusion rings as including “a plurality of rigid segments arranged
in a vertically overlapping manner bonded together and enveloped by a[n]
elastomeric matrix.” White ¶ 5. In relevant part, White teaches the rigid
segments and support rings may be made from various materials including
metal, such as steel, copper, bronze, aluminum, brass, cast iron, composite
bronze, or ductile metal. White ¶ 39. White teaches there are a number of
factors that should be considered in the selection of the materials used.
White ¶ 39.
Appellant argues that neither Benson nor Nilkanth teaches a first
support member being formed from a first metal material, as recited in
claim 1. Appeal Br. 6–7. Moreover, Appellant asserts that if one were to
modify the support members of the Examiner’s proposed Benson-Nilkanth
structure, there is no showing that the ductile metal of White would avoid
abrasion of the expander element in Benson, which Appellant asserts is the
clear intent of Benson. Appeal Br. 7–8.
In addition, Appellant asserts the Examiner has not shown how it
would have been obvious to modify the back-up ring of Benson with the two
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back-up rings of Nilkanth. Appeal Br. 6–7; Reply Br. 2–3. In particular,
Appellant argues it is unclear how adding a second back-up ring is a mere
duplication of parts because the geometries of the seals in Benson and
Nilkanth are different. Appeal Br. 6–7. Further, Appellant argues that there
is no reason to add the second back-up ring of Nilkanth to Benson because it
would serve no additional purpose. Appeal Br. 6–7. Appellant also argues
that the Examiner has not shown how it would have been obvious “to form
two seal segments made up of four separate and different components, with
at least three of the four components being formed from different materials.”
Appeal Br. 7; Reply Br. 2–3.
As an initial matter, as discussed above in our review of Nilkanth,
Nilkanth expressly identifies that the disclosed system offers a benefit over
the back-up ring described in Benson. See Nilkanth, col. 1, l. 46–col. 2, l. 1.
Thus, we disagree with Appellant that there would be no purpose in bringing
in Nilkanth’s two back-up ring (i.e., two-segment back-up ring) assembly.
See also Ans. 14 (explaining other benefits of a two back-up ring assembly).
To the extent Appellant argues that it is unclear how one would
incorporate Nilkanth’s seals into Benson’s seal system “given the different
geometries of the seals in Benson and Nilkanth” (see Appeal Br. 6), we are
unpersuaded of error.
“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). The relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining
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the teachings of references does not involve an ability to combine their
specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also
In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.”).
That is, we understand the Examiner’s rejection to rely on Nilkanth’s
teaching of a two-segment back-up ring being applied to each of the back-up
rings in Benson. In addition, as the Examiner explains, Nilkanth teaches the
benefits of the two back-up ring assembly (i.e., a two-segment back-up ring)
are not exclusive to only the particular geometries of the components shown
in Figure 2 of Nilkanth. Ans. 15 (citing Nilkanth, col. 2, ll. 5–7
(contemplating different sizes), Figs. 3–11 (depicting various geometries)).
In response to Appellant’s arguments that incorporating White’s
teaching of using a ductile metal to form the support members would
frustrate Benson’s stated purpose of avoiding abrasion (see Appeal Br. 7),
the Examiner explains Benson describes an inner member made from a
relatively softer material as compared to the outer member. Ans. 16–17
(citing Benson, col. 2, ll. 50–57, col. 5, ll. 50–51). The Examiner notes
Benson provides examples of materials (e.g., a polyimide filled with
graphite) to use as an outer member. Ans. 16–17 (citing Benson, col. 5,
ll. 50–51). The Examiner explains that the average compressive yield
strength of a polyimide filled with graphite is still harder than the metal
materials (i.e., brass and aluminum) suggested by White, based on a
comparison of the average compressive yield strengths. Ans. 17. Thus, the
Examiner determines the proposed modification of Benson (as modified by
Nilkanth) to use a metal material for the support members meets Benson’s
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requirement for an inner member to be made from a material that is software
than the material used to form the outer member. Ans. 17.
In response to Appellant’s argument that the Examiner has not
“explained how the prior art is being interpreted to teach a ring seal system
that includes at least two seal segments made up of four different
components, with at least three of the four components being formed from
different materials” (Appeal Br. 7), the Examiner notes that both Benson and
White provide a list of different materials from which the components may
be formed. Ans. 18–19. Moreover, the Examiner notes that Benson
explicitly states it may be desirable to vary the materials from which the
back-up rings are made. Ans. 19 (citing Benson, col. 4, ll. 49–53). Thus, as
stated in the rejection, the Examiner finds Benson teaches a first seal
material may be made from Vespel and a second seal material may be made
from Meldrin. See Non-Final Act. 3–4 (citing Benson, col. 5, ll. 45–50).
Further, as taught by White, the Examiner finds a first support member may
be formed from aluminum and a second support member formed from brass.
See Non-Final Act. 5 (citing White ¶ 39).
As discussed in our review of the prior art, we agree with the
Examiner that Benson and White (as well as Nilkanth) teach it may be
desirable to use different materials for the different components. For
example, Nilkanth describes the two-segment back-up ring as comprising a
first body formed from a relatively software material and a second body
formed from a relatively harder material. See Nilkanth, col. 4, l. 62–col. 5,
l. 12. Thus, when Nilkanth’s two-segment back-up ring teaching is applied
to Benson’s ring assembly, we agree with the Examiner that the first and
second seal material and the first and second support member material (as
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further modified by White) would teach using different materials for the
identified components.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of independent
claim 1. For similar reasons, we also sustain the Examiner’s rejection of
independent claim 9, which, in relevant part, recites commensurate in scope
to claim 1 and was not argued separately. See Appeal Br. 9; see also
37 C.F.R. § 41.37(c)(1)(iv). In addition, we sustain the Examiner’s rejection
of claim 8, which depends from claim 1 and was not argued separately. See
37 C.F.R. § 41.37(c)(1)(iv).

Claims 2–5 and 10–13
Claim 2 depends from claim 1 and recites the ring seal system of
claim 1 further comprises a third segment including a third support member
and third seal portion. Claim 2 further recites the third support member is
formed from a third metal material “distinct from at least one of the first
metal material and the second metal material” and the third seal portion
material is “distinct from at least one of the first seal material and the second
seal material.” Claim 4 depends from claim 2 and recites the third seal
material is “distinct from each of the first seal material and the second seal
material.”
Appellant asserts that the Examiner erred in finding the support ring
(30) shown in Figure 3 of White teaches the claimed third segment because
White’s support ring does not show either a third support member or third
seal portion, but is instead a homogeneous ring formed from bronze. Appeal
Br. 8. Further, regarding claim 4, Appellant argues the Examiner appears to
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conflate the support ring in White with the cap seal in Benson. Appeal
Br. 8. In addition, Appellant asserts that the Examiner has not shown why it
would have been obvious to combine White’s support ring with Benson’s
seal cap. Appeal Br. 8.
In response, the Examiner notes that Appellant has misunderstood the
rejection. Ans. 20–21. Rather than relying on element (30) from Figure 3 of
White, the Examiner is relying on element (30) from Figure 3 of Benson.
See Ans. 20–21; see also Non-Final Act. 6 (providing a description of a third
seal (30) mounted on support (32) and identifying the third seal material,
citing to Benson’s specification). Moreover, in rejecting claim 4, the
Examiner cites to the portion of Benson regarding the material used for the
third seal portion relied on in the rejection of claim 2. See Non-Final Act. 6.
Appellant’s arguments are not persuasive of Examiner error at least
because they are not responsive to the rejection as articulated by the
Examiner.
Accordingly, we sustain the Examiner’s rejection of claims 2 and 4.
For similar reasons, we also sustain the Examiner’s rejection of claims 10
and 12, which recite limitations commensurate in scope to those recited in
claims 2 and 4, respectively, and were not argued separately. See Appeal
Br. 9–10; see also 37 C.F.R. § 41.37(c)(1)(iv). In addition, we also sustain
the Examiner’s rejection of claims 3 and 5, which depend from claim 2 and
were not argued separately. See 37 C.F.R. § 41.37(c)(1)(iv). Further, we
also sustain the Examiner’s rejection of claims 11 and 13, which depend
from claim 10 and were not argued separately. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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Claims 6, 7, 14, and 15
Claim 6 depends indirectly from claim 1 and further recites the ring
seal system further comprises a fourth segment including a fourth support
member and fourth seal portion. Claim 7 also depends indirectly from
claim 1 and further recites the ring seal system further comprises a fifth
segment including a fifth support member and fifth seal portion.
Appellant advances similar arguments as those related to claim 1. See
Appeal Br. 9. In particular, Appellant argues Benson’s second back-up ring
(i.e., element (16) in Benson’s Figure 3) does not teach a support member
formed from metal and a seal portion formed from a non-metal material.
Appeal Br. 9.
For similar reasons to those discussed with respect to claim 1, we are
unpersuaded of Examiner error. Accordingly, we sustain the Examiner’s
rejection of claims 6 and 7. For similar reasons, we also sustain the
Examiner’s rejection of claims 14 and 15, which recite limitations
commensurate in scope to those recited in claims 6 and 7, respectively, and
were not argued separately. See Appeal Br. 9–10; see also 37 C.F.R.
§ 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–15 under
35 U.S.C. § 103.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15 103 Benson, Nilkanth,
White
1–15

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).

AFFIRMED