Bal Seal Engineering, Inc.

Patent Trials and Appeals Board

Oct 30, 2020

15593684 - (D) (P.T.A.B. Oct. 30, 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.
15/593,684 05/12/2017 Peter J. Balsells 1129-149.101 1062
22145 7590 10/30/2020
KLEIN, O''NEILL & SINGH, LLP
30 CORPORATE PARK
SUITE 211
IRVINE, CA 92606
EXAMINER
LEE, GILBERT Y
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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 PETER J. BALSELLS
____________

Appeal 2019-004434
Application 15/593,684
Technology Center 3600
____________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 9–12, 14, 15, 26, and 28 as unpatentable under 35 U.S.C.
§ 103(a) over Baum (US 5,993,507 iss. Nov. 30, 1999) and Rastegar
(US 9,194,497 B2, iss. Nov. 24, 2015), and claims 13, 21–25, 27, and 29
over Baum, Rastegar, and Radke (US 3,124,502, iss. Mar. 10, 1964). We
have jurisdiction under 35 U.S.C. § 6(b).2
We AFFIRM.

1 Bal Seal Engineering, Inc. is the Applicant and real party in interest.
Appeal Br. 2.
2 This case came before the Board for regularly scheduled oral hearing on
October 22, 2020.
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CASE POSTURE
This application was previously before the Board in a case which
resulted in a Decision that affirmed the Examiner’s rejection of all then
pending claims over the same prior art relied on by the Examiner in the
instant appeal. See Ex parte Peter J. Balsells, Appeal 2019-002219, 2019
WL 2601971 (PTAB June 13, 2019).
THE INVENTION
Appellant’s invention relates to seal assemblies. Spec. ¶ 1. Claim 9,
reproduced below, is illustrative of the subject matter on appeal.
9. A method of manufacturing a seal assembly with
reduced installation forces, said method comprising:
forming a mold block having at least one mold cavity;
injecting a MIM feedstock comprising powder metallurgy
into the at least one cavity to produce a locking ring with a ring
body, wherein the ring body has a grain size microstructure that
is larger than a ring body made from rolled or drawn metal to
facilitate assembly of the ring body into a gland with reduced
installation forces;
removing the ring body from the mold block, the ring body
comprising a loading ring extending orthogonally of an end
plate, said end plate having a bore with an inside bore diameter;
attaching the ring body to a seal body comprising an inside
flange, an outside flange, and
a center channel section that connects the inside flange and
the outside flange, said inside flange of said ring body defining
a seal assembly inside diameter; and
wherein the mold block is shaped for forming the end plate
and the loading ring in the injecting step.
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OPINION
Unpatentability of Claims 9–12, 14, 15, 26, and 28
over Baum and Rastegar
Appellant argues claims 9–12, 14, 15, 26, and 28 as a group. See
Appeal Br. 5–23. Claim 9 is representative. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Baum discloses the claimed invention as it
relates to the use of Metal Injection Molding (MIM) technology. Non-Final
Action 3–4. The Examiner relies on Rastegar as disclosing a seal assembly
with a ring body and bore. Id. at 4. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention to use the method of Baum to produce the seal of Rastegar, thus,
achieving the claimed invention. Id. According to the Examiner, a person
of ordinary skill in the art would have done this to produce a seal
economically. Id.
Appellant argues that Baum is unrelated to manufacturing seal
assemblies. Appeal Br. 9. Appellant contends that Baum is directed to a
feedstock composition and does not provide any application towards sealing.
Id. at 9. In response, the Examiner states that Appellant provides no
evidence to suggest that one of ordinary skill in the art would not look
towards a metal injection process to make a sealing member. Ans. 5.
Rastegar is directed to seal assemblies that incorporate a sealing ring
(or ring “body”). Rastegar Abstract. The ring body of the seal assemblies
depicted in the drawings of Rastegar is substantially similar, if not identical,
to the ring body of the seal assemblies depicted in Appellant’s Figures.
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Compare Rastegar Figs. 1–7 with Appellant’s Figs. 1–8.3 Baum is directed
to a composition and process for metal injection molding. Baum Abstract.
Baum discloses an MIM feedstock composition comprised of a mixture of
coarse and fine iron powder and a polymeric binder. Id. col. 1, ll. 49–51.
Claim 14 of Baum is reproduced below:
14. A metal injection molding process comprising the steps of:
a. admixing a feedstock comprising a mixture of coarse and
fine iron powder, polymeric binder and at least one
additive selected from the group consisting of ferrite
stabilizer and iron alloys having a melting point at least
about 100° F. below a desired sintering temperature, the
at least one additive being present in an amount effective
to permit densification of the composition, during
sintering, to greater than about 94% of the theoretical
density of the composition;
b. molding the feedstock into an unsintered blank;
c. removing the polymeric binder; and
d. sintering the unsintered blank at a time and a temperature
sufficient to allow densification of the unsintered blank
into a sintered component.
Id., claim 14. The Examiner finds that it is known that MIM processes
produce larger grainsize microstructure compared to that of rolled or drawn
metal. Non-Final Action 3.
Baum is not limited to making metal parts of any particular type, size,
shape, or purpose. Indeed, Appellant concedes that Baum’s process is
capable of making “millions” of different types of components. Appeal
Br. 8. A person of ordinary skill in the art would have read Baum as

3 Rastegar and the instant application are both assigned to Bal Seal
Engineering, Inc.
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teaching a process that could be used in manufacturing a wide variety of
components.
Appellant next argues that the prior art fails to disclose the
“microstructure” limitation of claim 9. Appeal Br. 12. This argument is not
persuasive. Claim 9 only requires that the grain size microstructure of the
ring body produced by the MIM process is larger than the grain size
microstructure of a ring body produced by rolled or drawn metal
manufacturing techniques. Claims App. A person of ordinary skill in the art
would understand that the natural result of using an MIM process, which
typically starts with metal powder as a feedstock (Baum col. 1. ll. 5 – col. 2,
l. 3), produces a finished metal product that has a larger grain size
microstructure than a metal part that is produced from rolled or drawn metal
manufacturing techniques.
In the final rejection, the Examiner points to Appellant’s own
Specification as evidence that MIM processes produce larger grainsize
microstructures compared to rolled or drawn metal. Non-Final Action 3. It
is well settled that where the claimed and prior art products are produced by
identical or substantially identical processes, the PTO can require an
Appellant to prove that the prior art product does not necessarily possess the
characteristics of the claimed product. In re Best, 562 F.2d 1252, 1255
(CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(explaining that when the PTO shows sound basis for believing that the
products of Appellant and the prior art are the same, Appellant has the
burden of showing that they are not”). Here, the Examiner has made a
sufficient showing to shift the burden to Appellant to prove that Baum does
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not necessarily exhibit the claimed microstructure. Appellant presents no
evidence that purports to carry this burden.
Appellant next argues that neither Rastegar nor Baum appreciates
Appellant’s reasons for resorting to MIM processing. Appeal Br. 10.
Appellant’s argument seemingly invokes the TSM test that was abrogated by
the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007). To the contrary, however, a motivation to combine can be found in
“any need or problem known in the field of endeavor at the time of the
invention and addressed by the patent.” Id. at 420. Our focus here is on the
motivations of the person of ordinary skill in the art at the time of the
invention. A skilled artisan need not be motivated to combine the prior art
for the reason contemplated by an inventor In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006).
Next, Appellant argues that the rejection fails to establish a rational
basis for why Baum and Rastegar would be combined. Appeal Br. 6, 22. In
response, the Examiner observes that Rastegar discloses the claimed metal
seal structure, but does not teach how the seal is formed. Ans. 5. The
Examiner then finds that Baum teaches a method of forming a metal
component. Id. Thus, “[t]he common problem to be solved is in the method
of forming a metal component.” Id. According to the Examiner, the reason
for combining the references is “to produce a seal that is more economical.”
Non-Final Action 4. Contrary to Appellant’s argument, we deem the
Examiner’s reasoning to be sufficient to support the rejection. Dystar
Textilfarben GmBH & Co., v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed.
Cir. 2006).
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Appellant next argues that Baum teaches away from reduced elastic
modulus — “to facilitate assembling and installing seal assemblies.” Appeal
Br. 13. In response, the Examiner observes that reduced elastic modulus is
merely the natural result of using metal injection molding process. Ans. 9;
see also In re Oelrich, 666 F.2d 578, 581 (CCPA, 1981) (explaining that a
prior art disclosure is sufficient if the natural result flowing from an
operation as taught would result in performance of the questioned function).
The Examiner cites to Appellant’s own Specification as essentially admitting
this point. Id. (citing Spec. ¶¶ 4–6). Thus, the Examiner has provided a
sound basis for believing that the elastic modulus features of the invention
are necessarily present in Baum. Best, 562 F.2d at 255; Spada, 911 F.2d
at 708. This places the burden on Appellant to show otherwise, which
Appellant fails to do. Id. With respect to Appellant’s argument about the
purported reason for using reduced elastic modulus — “to facilitate
assembling . . . ,” we find this argument unpersuasive because, as previously
stated, an artisan need not be motivated to combine the prior art for the same
reason as an inventor. Kahn, 441 F.3d at 990. An artisan is presumed to
know something about the art apart from what the references disclose. In re
Jacoby, 309 F.2d 513, 516 (CCPA 1962). A person skilled in metal working
is presumed to be familiar with the material properties of various metal
products. Thus, a person skilled in the art would be in a position to evaluate
whether metal injection molding would be suitable for making a seal ring.
See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945)
(explaining that it is not invention to select a suitable material to meet a
known requirement).
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Appellant next argues that the Examiner uses impermissible hindsight.
Appeal Br. 11, Reply Br. 13–14. “The state of the art does NOT include
forming a seal assembly wherein at least one of the metal rings or support
components of the seal assembly is made from metal injection molding.”
Appeal Br. 10. In response, the Examiner reasons that Rastegar’s part can
be made more economically with Baum’s method. Non-Final Action 3–4.
Such reasoning obviates Appellant’s hindsight argument. See In re Cree,
Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (explaining that a hindsight
argument is of no moment where the Examiner provides a sufficient, non-
hindsight reason to combine the references).
Finally, Appellant argues that declaration testimony establishes the
non-obviousness of the invention. Appeal Br. 18. In response, the
Examiner determines that the declaration is insufficient to overcome the
rejection. Appeal Br. 12. At the outset, we note that the declaration is that
of the inventor, Mr. Ballsells. Ballsells Decl. “[A]n affidavit by an
applicant or co-applicant as to the advantages of his invention is less
persuasive than one made by a disinterested person.” In re McKenna, 203
F.2d 717, 720 (CCPA 1953). We further note that we are not required to
afford weight to unsupported opinion testimony. Ericsson Inc. v.
Intellectual Ventures I LLC, 890 F.3d 1336, 1346 (Fed. Cir. 2018).
Mr. Ballsells, in paragraph 4 of the declaration, testifies from his
personal knowledge and awareness regarding the use of MIM technology to
make metal locking rings. Ballsells Decl. ¶ 4. Mr. Ballsells, however, is in
no position to extrapolate from his personal knowledge to the entire universe
of seal rings. Next, Mr. Ballsells testifies that it is “unknown and highly
speculative” how a seal assembly would perform if made from something
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other than typical machined stock. Id. ¶¶ 6–7. However, the standard that
we use in evaluating a proposed combination is whether a person of ordinary
skill in the art would have had a reasonable expectation of success in
achieving the claimed invention. Kinetic Concepts, Inc. v. Smith & Nephew,
Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). “The reasonable expectation of
success requirement refers to the likelihood of success in combining
references to meet the limitations of the claimed invention.” Intelligent Bio-
Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed.
Cir. 2016). In other words, “one must have a motivation to combine
accompanied by a reasonable expectation of achieving what is claimed in the
patent-at-issue.” Id. “For obviousness under § 103, all that is required is a
reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988); see also Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1364
(Fed. Cir. 2007) (“the expectation of success need only be reasonable, not
absolute”). Mr. Ballsells’ testimony does not persuade us that a person of
ordinary skill in the art would have lacked a reasonable expectation of
success in making seal assembly components using MIM technology.
We have considered Appellant’s remaining arguments and find them
to be without merit.
To summarize, Appellant’s invention merely involves making a
known metal part using a known process for making metal parts. The
advantages of the invention asserted by Appellant (to facilitate assembly)
flow from the natural result of using MIM technology. There is no evidence
that making a mold for Appellant’s ring body and using it in Baum’s
injection molding method requires more than ordinary skill. It is well settled
that if a technique has been used to improve one device, and a person of
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ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
The Examiner’s findings of fact are supported by a preponderance of
the evidence and the Examiner’s legal conclusion of unpatentability is
well-founded. Accordingly, we sustain the Examiner’s unpatentability
rejection of claims 9–12, 14, 15, 26, and 28.
Unpatentability of Claim 13, 21-25, 27, and 29
over Baum, Rastegar, and Radke
Claim 13 depends from claim 9. Claims App. Claim 21 is an
independent claim that is substantially similar in scope to claim 9. Id.
Claims 22–25 depend from claim 21. Id. Claims 27 and 29 depend, directly
or indirectly, from claim from claim 26. Id.
Claim 13
Appellant traverses the rejection by first rearguing that Radke fails to
cure the alleged deficiencies in Baum and Rastegar previously argued in
connection with claim 9. Appeal Br. 23, Reply Br. 14–15. We find
Appellant’s arguments in such regard to be unpersuasive with respect to
claim 9 and find them to be equally unpersuasive here.
Appellant next argues that the Examiner’s reliance on Radke is based
on impermissible hindsight. Appeal Br. 23. “The composite material of
Radke precludes its substitution as a locking ring or a ring body formed from
metal injection molding.” Id. at 24
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In response, the Examiner states that Radke is only used to teach
splitting a seal. Ans. 16. The Examiner finds that a skilled artisan would
look to Radke as teaching that a seal can be solid, split, or segmented. Id.
In reply, Appellant argues that the Examiner fails to consider the
purpose of Radke. Reply Br. 15. Radke’s seal ring and Appellant’s seal
ring body are both used in stuffing box applications. Radke, col. 1, l. 9;
Appellant’s Spec. ¶ 50. Appellant fails to articulate any cogent explanation
as to why the alleged purpose of Radke results in a patentable distinction
vis-à-vis the claimed invention.
Furthermore, it is not necessary for the prior art to serve the same
purpose as that disclosed in Appellant’s Specification in order to support the
conclusion that the claimed subject matter would have been obvious. See In
re Lintner, 458 F.2d 1013, 1016 (CCPA 1972). “A reference must be
considered for everything that it teaches, not simply the described invention
or a preferred embodiment.” In re Applied Materials, Inc., 692 F.3d 1289,
1298 (Fed. Cir. 2012). Thus, “[a] reference may be read for all that it
teaches, including uses beyond its primary purpose.” In re Mouttet, 686
F.3d 1322, 1331 (Fed. Cir. 2012) (citing KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418–21 (2007)). The obviousness inquiry does not ask “whether
the references could be physically combined but whether the claimed
inventions are rendered obvious by the teachings of the prior art as a whole.”
In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc).
There is very little difference between the shape and purpose of
Radke’s stuffing box split seal (Radke, Fig. 2–6) and Appellant’s split seal
ring body (Fig. 12–14). Baum and Rastegar teach the entire invention
except for a cut through the ring body from outermost to innermost diameter.
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The notion of cutting a ring is a simple, mechanical concept with broad
application beyond packing materials. That notion is readily transferrable
from a ring made of fibrous material (Radke) to a ring made of metal
(Rastegar). “We find it not unreasonable in cases such as this, involving
relatively simple everyday-type mechanical concepts, to permit inquiry into
other areas where one of even limited technical skill would be aware that
similar problems exist.” In re Heldt, 433 F.2d 808, 812 (CCPA 1970).
We sustain the rejection of claim 13.
Claims 21–25, 27, and 29
In traversing the rejection of these claims, Appellant relies solely on
arguments that we previously considered and found unpersuasive with
respect to claims 9 and 13 and find equally unpersuasive here. Appeal
Br. 15–16. We sustain the rejection of claims 21–25, 27, and 29
CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
9-12, 14, 15,
26, 28
103 Baum, Rastegar 9-12, 14, 15,
26, 28

13, 21-25,
27, 29
103 Baum, Rastegar, Radke 13, 21-25,
27, 29

Overall
Outcome
9-15, 21-29
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).
AFFIRMED