United Technologies Corporation

Patent Trials and Appeals Board

Apr 27, 2020

14794516 - (D) (P.T.A.B. Apr. 27, 2020)

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.
14/794,516 07/08/2015 Frederick M. Schwarz PA-0037409-US 1088
11943 7590 04/27/2020
Getz Balich LLC
10 Waterside Drive, Suite 205
Farmington, CT 06032
EXAMINER
WONG, ELTON K
ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
04/27/2020 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 FREDERICK M. SCHWARZ and WILLIAM K. ACKERMANN
____________

Appeal 2019-004543
Application 14/794,516
Technology Center 3700
____________

Before STEFAN STAICOVICI, SUSAN L. C. MITCHELL, and
PAUL J. KORNICZKY, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Sept. 27, 2018, hereinafter “Final
Act.”) rejecting claims 1, 3, 4, 6, 8–19, and 21.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. United Technologies Corporation is identified as the real
party in interest in Appellant’s Appeal Brief (filed Feb. 13, 2019, hereinafter
“Appeal Br.”). Appeal Br. 3.
2 Claims 2, 5, 7, and 20 are canceled. See Appeal Br. 3.
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SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant’s invention is directed to a non-contact seal assembly for
sealing a gap between a rotor and a stator. Spec. paras.1, 2.
Claims 1, 15, and 21 are independent. Claim 21 is illustrative of the
claimed invention and reads as follows:
21. An assembly for rotational equipment, the assembly
comprising:
a stator;
a rotor extending axially along a centerline, the rotor
including a linkage, a first rotor disk, and a second rotor disk,
wherein the linkage extends axially from the first rotor disk to
the second rotor disk, and wherein the linkage is removably
attached to the second rotor disk; and
a seal assembly configured for sealing a gap radially
between the stator and the linkage, wherein the seal assembly
includes a hydrostatic non-contact seal;
wherein the non-contact seal is positioned directly
radially above and is axially aligned with a cylindrical surface
of a seal portion of the linkage; and
wherein the seal portion of the linkage has a hardface
which forms the cylindrical surface.

REJECTIONS
I. The Examiner rejects claims 1, 3, and 10–16 under 35 U.S.C.
§ 103 as being unpatentable over Morgan,3 Klompas,4 Justak,5
and Baird.6

3 Morgan, US 2004/0150164 A1, published Aug. 5, 2004.
4 Klompas, US 3,849,023, issued Nov. 19, 1974.
5 Justak, US 2008/0265513 A1, published Oct. 30, 2008.
6 Baird et al., US 2008/0048398 A1, published Feb. 28, 2008.
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II. The Examiner rejects claims 4 and 17 under 35 U.S.C. § 103 as
being unpatentable over Morgan, Klompas, Justak, Baird, and
Bhate.7
III. The Examiner rejects claims 6, 8, and 19 under 35 U.S.C. § 103
as being unpatentable over Morgan, Klompas, Justak, Baird,
and Weiler.8
IV. The Examiner rejects claims 9 and 18 under 35 U.S.C. § 103 as
being unpatentable over Morgan, Klompas, Justak, Baird, and
Wosika.9
V. The Examiner rejects claim 21 under 35 U.S.C. § 103 as being
unpatentable over Morgan, Klompas, and Baird.

ANALYSIS
Rejection I
Each of independent claims 1 and 15 requires, inter alia, “wherein the
seal portion of the linkage has a hardface which forms the cylindrical
surface.” Appeal Br. 15, 18 (Claims App.).
The Examiner finds that the combined teachings of Morgan, Klompas,
and Justak disclose most of the limitations of independent claims 1 and 15,
but do not disclose the above noted limitation. See Final Act. 3–8.
However, the Examiner finds that Baird discloses “a seal assembly . . .
where seal (80) is adjacent to . . . a hardfacing (92)” and that “[h]ardface
coating is normally used in conjunction with seals to reduce wear during

7 Bhate et al., US 2003/0102629 A1, published June 5, 2003.
8 Weiler, US 4,998,739, issued Mar. 12, 1991.
9 Wosika, US 2,681,788, issued June 22, 1954.
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extended operation in case of contact.” Id. at 5, 7 (citing Baird, para. 28).
Thus, the Examiner concludes that it would have been obvious for a person
of ordinary skill in the art “to further modify the assembly taught by
Morgan-Klompas-Justak with a hardface as motivated by Baird, since
hardfaces are known to reduce wear between seals and adjacent
components.” Id. at 5, 8.
Appellant argues that because “Morgan teaches [that] the inner
surface 66 cannot be worn even where there is contact between the inner
surface 66 and the first rotatable member 52,” the Examiner’s modification
of providing a hard coat on the surface of Morgan’s rotatable member 52, as
taught by Baird, “would in turn cause the radially inner surface 66 of [seal
58 of] Morgan to wear and become sacrificial and, thus, obviate the required
teachings of Morgan of maintaining the radial inner surface 66.” Appeal Br.
10–11 (citing Morgan, para. 49 (“It is imperative that the radially inner
surface 66 be maintained.”) (emphasis added). Hence, according to
Appellant, “Morgan teaches away from a feature of ‘wherein the seal portion
of the linkage has a hardface which forms the cylindrical surface’ as recited
in claim[s] 1 [and 15].” Id. at 11 (emphasis omitted).
In response, the Examiner takes the position that Morgan’s paragraph
49 “would only suggest that it would be beneficial for the seal [58] to have a
surface harder than the seal would otherwise have,” and, thus, “having a
coating on the seal [58] would not teach away from having a coating on the
seal portion of the linkage [52], since one of ordinary skill in the art would
coat both parts to attain a desired wear rate.” Ans. 3–4.10 According to the

10 Examiner’s Answer, dated Mar. 22, 2019.
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Examiner, the “modification would not necessarily result in a hardface
coating on the seal portion of the linkage [52] to be harder than a coating
[66] that may be applied to the seal [58],” and, thus, “the seal portion of the
linkage [52] may still be sacrificial” with respect to the radially inner
surface 66 of seal 58, but it “would just be more resistant to wear than it
would otherwise be without a coating.” Id. at 4.
Morgan’s paragraph 49 states that when radially inner surface 66
comes into contact with first rotatable member 52, in order “[t]o prevent
erosion[,] the radially inner surface 66 may be provided with an erosion
resistant coating or surface treatment.” Hence, paragraph 49 of Morgan
discloses radially inner surface 66 as being erosion resistant when coming
into contact with rotatable member 52, i.e., the seal portion of linkage 52.
See Reply Br. 2 (“paragraph 49 of Morgan does in fact teach that the radially
inner surface 66 is indeed treated to be harder than the first rotatable member
52.”).11 A person of ordinary skill in the art would readily understand that in
order to prevent erosion of Morgan’s radially inner surface 66 a specific
difference in hardness is required between radially inner surface 66 and seal
portion of linkage 52. See In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985)
(We must attribute skill to the hypothetical person described in 35 U.S.C.
§ 103(a)); see also Final Act. 2 (“Wear between the seal and its adjacent
body is a mutual relationship that depends on the relative hardness between
the two.”).
We appreciate the Examiner’s position that Baird’s hardface coating
when applied to Morgan’s seal portion of linkage 52 does not necessarily

11 Appellant’s Reply Brief, filed May 22, 2019.
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result in a coating that is harder (i.e., more erosion resistant) than radially
inner surface 66. Ans. 4. However, even so, providing Morgan’s seal
portion of linkage 52 with Braid’s hardface coating would increase the
hardness of Morgan’s seal portion of linkage 52, and, thus, reduce the
difference in hardness between radially inner surface 66 and seal portion of
linkage 52. As such, providing Morgan’s seal portion of linkage 52 with
Braid’s hardface coating would in fact reduce the erosion resistance of
radially inner surface 66, and, thus, a person of ordinary skill in the art
would not reasonably make such a modification in light of Morgan’s express
teaching that “[i]t is imperative that the radially inner surface 66 be
maintained.” See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference would be led in a direction divergent from the path that
was taken by the applicant.”); Morgan, para. 49.
In particular, the Examiner does not sufficiently explain why a skilled
artisan would sacrifice erosion resistance of Morgan’s radially inner surface
66 in order to obtain an increase in wear resistance of seal portion of linkage
52, as per Baird, when Morgan explicitly states that “[i]t is imperative that
the radially inner surface 66 be maintained.” Morgan, para. 49 (emphasis
added). Even though we appreciate the Examiner’s position that, as per the
teachings of Ruggiero,12 “evidentiary prior art disclos[es] the consideration
of a surface treatment on a seal with a hard coating on an adjacent rotor to
produce a desired wear rate,” we note that the Examiner does not adequately
explain how Ruggiero’s sealing system is applicable to the sealing

12 Ruggiero et al., US 2013/0106061 A1, published May 2, 2013.
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arrangement of Morgan, and why a skilled artisan would modify Morgan, in
view of Baird, in light of Morgan’s specific teachings. See Final Act. 2.
Absent hindsight, we fail to see why one having ordinary skill in the art
would modify the sealing assembly of Morgan in the manner claimed.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103 of independent claims 1 and 15, and their
respective dependent claims 3, 10–14, and 16 as unpatentable over Morgan,
Klompas, Justak, and Baird.

Rejection II–IV
Each of rejections II–IV relies on the combined teachings of Morgan
and Baird as discussed supra. See Final Act. 8–12. The Examiner’s use of
the Bhate, Weiler, and Wosika disclosures does not remedy the deficiency of
the Morgan and Baird combination discussed above. See id.
Accordingly, for the same reasons, we also do not sustain the
rejections under 35 U.S.C. § 103 of claims 4 and 17 as unpatentable over
Morgan, Klompas, Justak, Baird, and Bhate; of claims 6, 8, and 19 as
unpatentable over Morgan, Klompas, Justak, Baird, and Weiler; or of claims
9 and 18 as unpatentable over Morgan, Klompas, Justak, Baird, and Wosika.

Rejection V
Like independent claims 1 and 15, independent claim 21 also requires,
inter alia, “wherein the seal portion of the linkage has a hardface which
forms the cylindrical surface.” Appeal Br. 19 (Claims App.).
Similar to the rejection of independent claims 1 and 15, the rejection
of independent claim 21 relies on the combined teachings of Morgan and
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Baird, as discussed supra, to disclose the above noted limitation. See Final
Act. 12–13. Therefore, for the same reasons discussed in Rejection I, we
likewise do not sustain the rejection under 35 U.S.C. § 103 of claim 21 as
unpatentable over Morgan, Klompas, and Baird.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3, 10–16 103 Morgan,
Klompas, Justak,
Baird
1, 3, 10–16
4, 17 103 Morgan,
Klompas, Justak,
Baird, Bhate
4, 17
6, 8, 19 103 Morgan,
Klompas, Justak,
Baird, Weiler
6, 8, 19
9, 18 103 Morgan,
Klompas, Justak,
Baird, Wosika
9, 18
21 103 Morgan,
Klompas, Baird
21
Overall
Outcome
1, 3, 4, 6,
8–19, 21

REVERSED