Bal Seal Engineering, Inc.

Patent Trials and Appeals Board

Apr 1, 2020

14251439 - (D) (P.T.A.B. Apr. 1, 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.
14/251,439 04/11/2014 Mike Foster 1129-116.101 7040
22145 7590 04/01/2020
KLEIN, O'NEILL & SINGH, LLP
16755 VON KARMAN AVENUE
SUITE 275
IRVINE, CA 92606
EXAMINER
PATEL, VISHAL A
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
KOS_Docketing@koslaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MIKE FOSTER
__________

Appeal 2018-003090
Application 14/251,439
Technology Center 3600
____________

Before MICHAEL L. HOELTER, BRADLEY B. BAYAT, and
FREDERICK C. LANEY, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 9–15, 19, and 20.2 We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on February 28, 2020.
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies “Bal Seal Engineering, Inc.” as the real party
in interest. Appeal Br. 1.
2 Claims 1–8 and 16–18 are withdrawn from consideration subject to a
restriction requirement. Final Act. 2; see also Appeal Br., Claims App.
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Application 14/251,439

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CLAIMED SUBJECT MATTER
The present disclosure pertains to face seals and more particularly to
spring energized face seals with backing rings. Spec. 1:4–5. Independent
claim 9, reproduced below, is representative of the subject matter on appeal.
9. An interlocking face seal assembly comprising:
a sealing element with an exterior surface, the exterior
surface being a convex outer surface or a concave outer surface
relative to a centerline of the seal assembly, the sealing element
having a spring located in a spring cavity defined by two
sealing flanges and a center channel section and wherein the
spring contacts the two sealing flanges;
a backup ring with an inner surface relative to the
centerline of the seal assembly, a first side surface, a second
side surface generally parallel to the first side surface, and a
remote surface opposite the inner surface, said inner surface
defining a bore and comprising a convex inner surface or a
concave inner surface;
whereby the concave inner surface of the backup ring
accepts at least a portion of the convex outer surface of the
sealing element or the convex inner surface of the backup ring
accepts at least a portion of the concave outer surface of the
sealing element and the sealing element is retained within the
bore of the backup ring; and
whereby the remote surface of the backup ring is tapered
from the first side surface to the second side surface and
configured to press against a tapered back wall of a groove that
receives the interlocking face seal assembly, the remote surface
being away from the sealing element.

Appeal 2018-003090
Application 14/251,439

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REJECTIONS3
The following rejections are before us for review:
1. Claims 9–14, 19, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Evans (US 6,386,545 B1, iss. May 14, 2002) and Breaker
(US 5,518,257, iss. May 21, 1996).
2. Claims 9–14, 19, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Foster et al. (US 2009/0146379 A1, pub. June 11, 2009)
(“Foster”) and Evans.
3. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over
Evans, Breaker, and Jelinek et al. (US 3,720,420, iss. Mar. 13, 1973)
(“Jelinek”).
4. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over
Foster, Evans, and Jelinek.
5. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over
Foster, Evans, and Coker et al. (US 3,871,668, iss. Mar. 18, 1975)
(“Coker”).
6. Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over
Evans, Breaker, and Coker.

OPINION
Restriction Requirement
As a preliminary matter, Appellant asserts the Examiner’s restriction
requirement of February 17, 2016 incorrectly resulted in the withdrawal of
claims 1, 3–8, 17, and 18 as directed to an invention that is independent or

3 Various cumulative rejections under § 103 have been withdrawn. See Ans.
3–4.
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distinct from the invention originally claimed. Appeal Br. 5; see also Reply
Br. 4. Appellant argues the withdrawal of these claims is improper and
requests the Board to reverse. Appeal Br. 6; Reply Br. 6.
The Examiner responds that a restriction requirement based on
original presentation “is a petitionable matter and not appealed matter.”
Ans. 3.
Decisions of patent examiners relating to examination are subject to
review either by petition to the Director or appeal to the Board. The proper
avenue of review depends upon the subject matter at issue. The Court of
Customs and Patent Appeals offered guidance as follows in this regard:
Decisions of the examiner directly relating to the rejection of
claims are subject to appeal. These questions generally deal
with the merits of the invention, involving factual
determinations and the legal conclusions drawn therefrom
regarding the application disclosure, the claims and the prior
art. The examiner’s rulings dealing with procedural matters,
such as whether an affidavit or amendment is untimely, and
formal requirements, such as whether a new application title
will be required, are reviewable upon petition.
Application of Searles, 422 F.2d 431, 435 (C.C.P.A. 1970). Moreover,
USPTO regulations provide that a restriction requirement is reviewable
by petition. 37 CFR § 1.144; see Application of Hengehold, 58 C.C.P.A.
1099, 1109 (1971) (restriction requirement reviewable by petition); see
also In re Watkinson, 900 F.2d 230, 233 (Fed. Cir. 1990) (“neither this court
nor the board has jurisdiction in this proceeding to review the merits of a
requirement for restriction”). We decline to address Appellant’s arguments
regarding the restriction requirement because the propriety of the
Examiner’s restriction requirement is a petitionable matter that is not subject
to review by the Board.
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Rejections under 35 U.S.C. § 103
Claims 9–14, 19, and 20 over Evans and Breaker
In rejecting independent claim 9 as unpatentable over Evans and
Breaker, the Examiner found Evans discloses all the limitations of claim 1
“but fails to disclose the sealing element having a spring located in a spring
cavity defined by two sealing flanges and a center channel section and the
spring contacts the two sealing flanges.” Final Act. 6–7. To cure this
deficiency, the Examiner found “Breaker discloses a seal assembly with a
backup ring and a sealing element with a spring (1828) located in a spring
cavity defined by two sealing flanges (flanges having 1890 and 1892) and a
center channel section and the spring contacts the two sealing flanges (figure
26).” Id. at 7. The Examiner determined “it would have been obvious to
one skilled in the art before the effective filing date of the claimed invention
to have the inner surface of the sealing element of Evans to have an inner
cavity as defined by Breaker to provide energizing to the sealing flanges
(inherent function of spring, also see Breaker).” Id.
Alleging error in the rejection, Appellant argues “there is no rational
basis for a person of ordinary skill in the art to modify Evans in view of
Breaker as Evans would be rendered unsatisfactory for its intended
purpose.” Appeal Br. 11 (“If proposed modification would render the prior
art invention being modified unsatisfactory for its intended purpose, then
there is no suggestion or motivation to make the proposed modification. In
re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).”).
Appellant submits that attempting to replace the seal
member 44 of Evans with the inner seal member 1814 of
Breaker, as proposed by the FOA, would defeat the purpose of
the annular member 46 of Evans, which is to prevent the seal
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member 44 from falling out during assembly and handling.
More specifically, if the seal member 44 is replaced with the
spring 1828 and the seal jacket 1826 of Breaker, neither of the
spring 1828 and the seal jacket 1826 would be retained or
suitable for preventing the falling out. Instead, because the
sealing flanges of the seal jacket 1826 are flexible and are only
attached at one end, the sealing flanges are free to deflect
outwardly thereby releasing the spring element 1828 from the
seal jacket 1826 during assembly and handling.
Id. at 12.
The Examiner responds:
Appellant’s argument that replacing the sealing element
of Evans of [sic, with] Breaker would cause the seal member of
Evans to fall out during assembly is correct but the examiner is
teaching that one skilled in the art is going to provide sealing
flanges and spring to Evans sealing member not replace the
sealing member.
Ans. 5 (emphasis added).
Appellant asserts the Examiner is relying on improper hindsight and
“not evidence of record when contending that ‘the examiner is teaching…’
Clearly, the Examiner cannot teach any combination but can only consider a
combination from a perspective of a skilled artisan.” Reply Br. 7.
We are persuaded by Appellant’s arguments.
A claim is unpatentable under § 103 if the differences between the
claimed subject matter and the prior art are such that the subject matter, as a
whole, would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). An invention
“composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” Id. at 418. Instead, a determination of unpatentability on a
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ground of obviousness must include “‘articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.’” Id.
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The obviousness
evaluation “should be made explicit” and it “can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does.”
Id.
We find the Examiner’s rationale to combine the teachings of the
references is predicated upon a conclusory statement that lacks articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness. The Examiner reasons that it would have been obvious to an
artisan “to have the inner surface of the sealing element of Evans to have an
inner cavity as defined by Breaker to provide energizing to the sealing
flanges.” Final Act. 7. In response to Appellant’s argument that such a
modification would render Evans’s invention unsatisfactory for its intended
purpose by causing its seal member to fall out during assembly, the
Examiner concedes that Appellant is “correct.” Ans. 5. And, the alternative
rationale articulated by the Examiner, namely, that “the examiner is teaching
that one skilled in the art is going to provide sealing flanges and spring to
Evans sealing member not replace the sealing member” (Ans. 5) is
unavailing. The Examiner does not support adequately why one of ordinary
skill would have been concerned with providing “energizing to the sealing
flanges” of Evans, which is concerned with “reduc[ing] the possibility that
the annual seal member 44 falls out of the disk 28 during assembly and
handling.” Evans 3:65–4:2. The Examiner indicates that an artisan would
provide energizing to the sealing flanges of Evans because that’s an
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“inherent function of [a] spring.” Final Act. 7. But, as Appellant argues,
which the Examiner fails to counter, there is no motivation for energizing
because “Evans does not have a perceived benefit from the proposed
modification, but rather is detrimentally affected.” Appeal Br. 13
(“[M]odifying the seal member 44 of Evans with a two-piece annular seal
device 1810 of Breaker would complicate the design of Evans by adding a
complicated seal made of several components, which is unnecessary.”). We
agree that the Examiner’s reasoning is inadequate because it fails to explain
why one of ordinary skill in the art would have been motivated to modify
Evans’s apparatus with the teachings of Badger to arrive at the claimed
invention. It is well settled that obviousness cannot be sustained by mere
conclusory statements. Kahn, 441 F.3d at 988; accord KSR, 550 U.S. at
418. As such, a prima facie case of obviousness has not established as to
independent claim 9.
Accordingly, we do not sustain the rejection of independent claim 9
under 35 U.S.C. § 103(a) as unpatentable over Evans and Breaker, and
claims 10–14, 19, and 20 dependent thereon.
Claims 9–14, 19, and 20 over Foster and Evans
In rejecting independent claim 9 as unpatentable over Foster and
Evans, the Examiner found Foster discloses all the limitations of claim 1
“but fails to disclose that the remote surface is tapered from the first side
surface to the second side surface.” Final Act. 8. To cure this deficiency,
the Examiner found “Evans discloses a back-up ring with an outer surface
52 that is tapered from a first side to a second side (figure 3).” Id. The
Examiner determined it would have been obvious to one skilled in the art “to
have the remote surface of Foster to be [a] tapered surface as taught by
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Evans, to provide matching taper with a groove bottom that enhance
retention of the seal assembly within a groove of a member (see description
of 52 in Evans).” Id.
Appellant argues the Examiner’s proposed modification is based on
impermissible hindsight, because “[a]bsent improper hindsight and a
fundamental change in principle of the seal assembly for operation, it would
not be obvious to combine the features of the seal for a fluid plug as taught
in Evans with the seal assembly as taught in Foster.” Appeal Br. 15.
According to Appellant:
Tapering of the allegedly corresponding remote surface of
Foster would necessarily require redesign of the housing for
suitable retention to prevent shifting of the seal assembly as a
result of the tapered surface. Unlike the static installed position
of the fluid plug of Evans, the seal assembly of Foster, as
described, is subject to rotational force. The introduction of a
tapered surface as alleged does not provide enhanced retention
absent redesign of the housing to properly retain the seal
assembly while it is subject to rotational force. As such, there is
no rational basis for such modification and only conclusory
allegations that Foster could have a tapered surface.

Id. at 14–15.
We are persuaded by Appellant’s arguments. A rejection based on
§ 103 clearly must rest on a factual basis. The Examiner has the initial duty
of supplying the factual basis for the rejection and may not resort to
speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in its factual basis. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967).
Figure 3 of Foster depicts a cross-sectional view of seal assembly 70
with “an outside diameter 72 and an inside diameter 74 sized to fit over a
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shaft 76.” Foster ¶ 33. Foster’s “backing ring 78 and the seal ring 80 may
engage one another by one or more detents,” such that the engaged backing
ring 78 and seal ring 80 are coupled to a housing and a shaft to provide
sealing during rotation. Id. ¶ 35. Evans, as discussed above, teaches a fluid
plug for sealing a port of a downhole tool, such that “interaction between the
tapered walls 38 and 52 retains the annular member in the groove 34” from
falling out of the disc. Evans 4:17–18.
The Examiner asserts that “[w]hen one skilled in the art uses the
sealing assembly of Foster defined in figure 3 in a groove with a taper
surface as shown by Evans one can conclude from the reference of Evans
that a taper wall on the remote surface of the backup ring is needed to
provide proper retention.” Ans. 7. However, we agree with Appellant that
tapering Foster would require redesign of the housing for suitable retention
of the annular member in the groove to prevent shifting of the seal assembly
that would result from the tapered surface. The Examiner’s reasoning “to
provide matching taper” does not explain why a person of ordinary skill,
without the benefit of hindsight, would be motivated to modify Foster’s seal
assembly in the first place because Foster does not provide any indication as
to why a taper may be useful. At best, the Examiner’s findings are that one
of skill in the art could have modified Foster to reach the claimed invention.
The Examiner does not adequately explain or support why one of skill in the
art would have done so. Thus, the Examiner’s reason for the proposed
modification lacks a rational underpinning.
In sum, the Examiner fails to establish an evidentiary basis on this
record to support a conclusion that it would have been obvious to modify
Foster with Evans to arrive at the claimed invention. Accordingly, we do
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not sustain the Examiner’s rejection of independent claim 9 under 35 U.S.C.
§ 103(a). For the same reasons, we also do not sustain the rejection of
dependent claims 2–14, 19, and 20. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“dependent claims are nonobvious if the independent
claims from which they depend are nonobvious”).
Rejections of claim 15 under 35 U.S.C. § 103(a)
Claim 15 depends from independent claim 9, and the rejections of
claim 15 suffer from the same deficiency described above in the rejections
of claim 9; the Examiner’s reliance on the additional cited references fail to
remedy this deficiency. Accordingly, we do not sustain the Examiner’s
rejections of claim 15 under 35 U.S.C. § 103(a).

CONCLUSION
The 35 U.S.C. § 103(a) rejection of claims 9–14 and 20 over Evans
and Breaker is reversed.
The 35 U.S.C. § 103(a) rejection of claims 9–14 and 20 over Foster &
Evans is reversed.
The Examiner’s rejections of claim 15 under 35 U.S.C. § 103(a) are
reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
9–14, 19, 20 103(a) Evans, Breaker 9–14, 19,
20
9–14, 19, 20 103(a) Foster, Evans 9–14, 19,
20
15 103(a) Evans, Breaker, Jelinek 15
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
15 103(a) Foster, Evans, Jelinek 15
15 103(a) Foster, Evans, Coker 15
15 103(a) Evans, Breaker, Coker 15
Overall Outcome: 9–15, 19,
20

REVERSED