United Technologies Corporation

Patent Trials and Appeals Board

May 12, 2021

2020005889 (P.T.A.B. May. 12, 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.
15/667,974 08/03/2017 Mark T. Sommers 1213-98609 (98609US01) 2947
11943 7590 05/12/2021
Getz Balich LLC
10 Waterside Drive, Suite 205
Farmington, CT 06032
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
05/12/2021 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):
shenry@getzbalich.com
uspto@getzbalich.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK T. SOMMERS

Appeal 2020-005889
Application 15/667,974
Technology Center 3600
____________

Before JOHN C. KERINS, BENJAMIN D. M. WOOD, and
BRETT C. MARTIN, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7, 10–14, and 16–18. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies United Technologies Corporation of
Farmington, Connecticut as the real party in interest. Appeal Br. 3.
Appeal 2020-005889
Application 15/667,974

2
THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a system providing wear indication.
Claim 1 is illustrative, and is reproduced below:
1. A system comprising:
a rotatable seal runner;
a stationary sealing member that includes a base and a nose that
extends from the base in an axial direction and interfaces with
the seal runner;
a carrier that supports the sealing member;
a tab coupled to the carrier; and
a sensor configured to detect and indicate when a portion of the
tab is liberated from a remainder of the tab in an amount that is
greater than a first threshold and when a portion of the carrier is
liberated from a remainder of the carrier in an amount that is
greater than a second threshold,
wherein the tab extends from the carrier in the axial direction
towards the seal runner,
wherein the tab includes a first material and the carrier includes
a second material different than the first material, and
wherein the sensor is configured to distinguish between
liberation of the portion of the tab from the remainder of the tab
and liberation of the portion of the carrier from the remainder of
the carrier based on detection of the first material or the second
material in an amount that is greater than the first threshold of
the second threshold, respectively.

Appeal 2020-005889
Application 15/667,974

3
THE REJECTION
The Examiner rejects claims 1–4, 7, 10–14, and 16–18 under 35
U.S.C. § 103 as being unpatentable over Appellant’s admitted prior art2
(hereinafter “APA”) in view of Singh (US 8,864,446 B2, published Oct. 21,
2014);
ANALYSIS
Claims 1–4, 7, 10–14, and 16–18 -- § 103—APA/Singh
The Examiner finds that APA discloses a rotatable seal runner (206), a
stationary sealing member (212) including a base (228) and nose (226), a
carrier (218), and a sensor (258), but does not explicitly disclose an
additional wear tab. Final Act. 2. The Examiner cites to Singh as disclosing
a similar system including a tab (22), and takes the position that it would
have been obvious to “provide [the] seal system of the APA with an
additional wear tab extending from the carrier as taught by Singh . . . in
order to determine the rate of gap closing between the rotating component
and stationary component.” Id. at 2–3, citing Singh, col. 3, ll. 23–30.
Appellant argues that
the combination of the APA and Singh does not disclose or
suggest at least: (1) ‘a sensor configured to detect and indicate
when a portion of the tab is liberated from a remainder of the
tab in an amount that is greater than a first threshold’ or (2)
‘wherein the sensor is configured to distinguish between
liberation of the portion of the tab from the remainder of the tab
and liberation of the portion of the carrier from the remainder of
the carrier based on detection of the first material or the second

2 The term Appellant’s admitted prior art (APA) refers to paragraphs 1–7
and the corresponding Figures 2 and 2A of Appellant’s disclosure.
Appeal 2020-005889
Application 15/667,974

4
material in an amount that is greater than the first threshold or
the second threshold, respectively.
Appeal Br. 8.
Specifically, Appellant argues that the detection device 258 of the
APA is not disclosed as being configured to detect the liberation of a portion
of a tab in an amount greater than a first threshold and in an amount greater
than a second threshold, nor configured to distinguish between portions of
the tab and the carrier based on detection of a first material or a second
material different from the first material based on the first threshold or
second threshold; and that these functions are structural states that are not
inherent in detection device 258 of the APA. Id. at 9–11.
The Examiner responds that sensor 258 of the APA is “capable of
performing the same detection as disclosed by the . . . claimed device 358,”
and “[b]oth devices are the same and would perform the same.” Ans. 4.
The Examiner takes the position that Appellant has not purported to invent a
new sensor device and therefore the sensors would function equivalently.
Id.
The Examiner misunderstands the sensor or detection device disclosed
by the APA. Although the detection of material liberated from carrier 218,
as disclosed in paragraph 6 of Appellant’s Specification, might be
considered to be a detection of an amount greater than a first threshold, there
is no disclosure of a second threshold, or that the APA sensor is configured
to detect an amount of material greater than any such second threshold.
Appellant is correct in noting that the claim language requires a structural
Appeal 2020-005889
Application 15/667,974

5
configuration of the sensor that is not inherent (necessarily present) in the
detection device 258 of the APA.
As such, the Examiner’s finding that the APA discloses the claimed
sensor is not supported in the record, in that the Examiner misinterprets that
which the APA discloses. Accordingly, the rejection of claims 1–4, 7, 10–
14, and 16–18 as being unpatentable over APA and Singh is not sustained.

CONCLUSION
The rejection of claims 1–4, 7, 10–14, and 16–18 under 35 U.S.C.
§ 103 as being unpatentable over APA and Singh is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 7,
10–14,
16–18
103 APA, Singh 1–4, 7, 10–
14, 16–18
Overall
Outcome
1–4, 7, 10–
14, 16–18

REVERSED