Ex Parte Addis

Board of Patent Appeals and Interferences

Jan 23, 2008

10063463 (B.P.A.I. Jan. 23, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK E. ADDIS
____________

Appeal 2007-3767
Application 10/063,463
Technology Center 3600
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Decided: January 23, 2008
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and ANTON
W. FETTING, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mark E. Addis (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-17, 20, 22-38, 40, and 42 through 62.
We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appeal 2007-3767
Application 10/063,463

THE INVENTION
Appellant’s invention is directed toward a brush seal for a gas turbine
engine that prevents the escape of fluid between a stationary component,
such as a diffuser case 103, and a rotating component, such as a turbine shaft
105 (Spec. 4, ¶ 29). The brush seal of Appellant’s invention includes a non-
polymeric bristle arrangement 101 sandwiched between a support plate 107
and a retainer 109, wherein the support plate 107 acts as a back plate, and
the retainer 109 acts as a side plate (Spec. 4, ¶ 30 and fig. 2). The non-
polymeric bristle arrangement 101 is separated by a mid plate 115, and
includes a plurality of non-polymeric bristles 117 that are welded together
by a joint 119 (Spec. 5, ¶ 34; Spec. 6, ¶ 36; and figs. 3 and 5).

Claim 1 is illustrative of the claimed invention and reads as follows
A brush seal comprising:
a first part, said first part including a support adapted to
function as a back plate;

a retainer, said retainer being secured to said first part
and adapted to function as a side plate; and

a non-polymer bristle arrangement sandwiched between
said back plate and said side plate; said bristle
arrangement being in direct contact with, but not unitarily
joined to each of said back plate and said side plate.

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Application 10/063,463

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Snyder et al. US 5,597,167 Jun. 28, 1997
Morrison et al. US 6,173,962 B1 Jan. 16, 2001
Mayer et al. US 6,502,824 B2 Jan. 7, 2003

The following rejections are before us for review:1
Claims 1-3, 5-17, 20, 22, 24-26, 28-32, 34-37, 40, 42-45, 47-50, 53-
58, and 60-62 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Snyder.
Claims 4, 33, 46, and 59 stand rejected under 35 U.S.C. § 103 as
unpatentable over Snyder in view of Mayer.
Claims 23, 27, 38, 51, and 52 stand rejected under 35 U.S.C. § 103 as
unpatentable over Snyder in view of Morrison.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed June 21, 2006). The Appellant presents opposing
arguments in the Appeal Brief (filed April 17, 2006) and the Reply Brief
(filed August 21, 2006).

1 We note that the Examiner has objected to claims 1, 8, 16, 22, 30, and 43
(Ans. 3-4). A claim objection is a petitionable matter and not an appealable
matter and is not within the jurisdiction of the Board.. See Manual of Patent
Examining Procedure (MPEP) §§ 1002.02(c)(4) and 1201.
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Application 10/063,463

OPINION
The Anticipation Rejection
The issue presented in this appeal is whether the Appellant has
demonstrated that the Examiner erred in determining that the subject matter
of claims 1-3, 5-17, 20, 22, 24-26, 28-32, 34-37, 40, 42-45, 47-50, 53-58,
and 60-62 is anticipated by Snyder. This issue turns on whether Snyder
satisfies the limitation in each of the independent claims so rejected that the
bristle arrangement is in direct contact with, but not unitarily joined to each
of the back plate and side plate. While we will focus on claim 1, our
discussion of the Appellant’s arguments applies equally to claims 2, 3, 5-17,
20, 22, 24-26, 28-32, 34-37, 40, 42-45, 47-50, 53-58, and 60-62.
First of all, the Appellant and the Examiner seem to disagree as to
whether the bristle arrangement 101, the retainer 109, and the support 107 in
the Appellant’s brush seal, as shown in Figure 2 of the Appellant’s
drawings, are “not unitarily joined.” Specifically, the Examiner states that
the limitation “not unitarily joined” has not been defined in the Specification
(Ans. 10) and the Appellant’s interpretation of the limitation “not unitarily
joined” to mean “not welded” is an improper attempt on the Appellant’s part
to read a limitation into the claim (Ans. 11). The Examiner concludes that
the limitation of the brush seal being “not unitarily joined” is in
contradiction with Appellant’s described invention because “by pressing [a]
bristle arrangement between the two plates, the bristle arrangement becomes
unitarily joined as the bristles and plates now function as a single unitary
brush seal” (Ans. 10).
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
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Application 10/063,463

interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Although the Appellant’s Specification does not explicitly define the
limitation “not unitarily joined,” the Specification describes the brush seal
101 as being sandwiched between the support 107, acting as a side plate, and
the retainer 109, acting as a back plate (Spec. 4, ¶¶ 30-31). The
Specification also describes that the brush seal 101 is replaced by merely
releasing the retainer 109, replacing the bristle arrangement 113, and
reaattaching the retainer 109 (Spec. 7, ¶ 42). The term “unitarily” means
“undivided, whole” (Merriam Webster’s Collegiate Dictionary 1293 (Tenth
Ed. 1997)). The term “joined” is used to show the act of bringing together
so as to form a unit (Merriam Webster’s Collegiate Dictionary 631 (Tenth
Ed. 1997)). Hence, in light of the above disclosure in the Appellant’s
Specification and the dictionary definitions, we conclude that the broadest
reasonable interpretation of the bristle arrangement being “not unitarily
joined” is that the bristle arrangement does not form a whole, undivided unit
with the support plate and the retainer. Therefore, the bristle arrangement,
the retainer, and the support are individual parts that can be assembled and
disassembled. In conclusion, we agree with the Appellant that “sandwiching
alone does not constitute joining” (Reply Br. 3) and as such, the bristle
arrangement is “not unitarily joined” to the retainer and the support in
Appellant’s brush seal.
Appellant further argues that Snyder does not anticipate claim 1
because Snyder does not disclose that the bristle arrangements are not
unitarily joined to the back plates and the side plates (App. Br. 5). A claim
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is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631, cert. denied, 484 U.S. 827 (1987). The Examiner explains where the
elements of claim 1 are disclosed in Snyder. The Examiner found that
Snyder teaches a brush seal 62 having a first part (shoulder 68) with a
support adapted to function as a back plate (backing plate 76), a retainer
secured to the first part and adapted to function as a side plate 78, and a non-
polymeric bristle arrangement (array of brushes 74) sandwiched
therebetween, and directly contacting, “but not unitarily joined to,” the side
plate and back plates" (Ans. 4). The Appellant contends that the brush seal
of Snyder is similar to the prior art presented in Figure 1 of the Appellant’s
drawings where the brush seal is formed by sandwiching the bristles
between a side plate and a backing plate and then welding them together,
hence forming a brush seal that is unitarily joined (App. Br. 6). As
evidence, the Appellant points to Figure 3 of Snyder to show that the brush
seal assembly 62, including back plates 76, side plates 78, and bristles 74, is
directly mounted against shoulder 68 (App. Br. 5) (col. 5, ll. 32-37 of
Snyder). The Appellant further argues that Snyder discloses that in a typical
brush seal arrangement the back plate, side plate, and the bristles are welded
together into an assembly. (App. Br. 5) (col. 1, ll. 52-57 of Snyder).
Therefore, in light of the above, we agree with the Appellant that the back
plates 76, side plates 78, and bristles 74 of Snyder are welded and as such,
are unitarily joined. However, we also find that a reasonable reading of
claim 1 on Snyder is that Snyder includes a support plate 68 (shoulder),
acting as a backing plate, and a retainer plate 64, acting as a side plate (col.
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Application 10/063,463

3, l. 63 through col. 4, l. 9, and fig. 3). Furthermore, we note that the bristle
arrangement of Snyder includes the welded plates 76 and 78, the windage
cover 82, and the non-polymeric bristles 74. Since the bristle arrangement
of Snyder is sandwiched between support 68 and retainer 64 (col. 3, l. 67 to
col. 4, l. 9), we conclude that it is "not unitarily joined" to support 68 and
retainer 64.
For the reasons discussed above, we conclude that the limitation of
claim 1 relied upon by the Appellant does not in fact distinguish the subject
matter of claim 1, or claims 2, 3, 5-17, 20, 22, 24-26, 28-32, 34-37, 40, 42-
45, 47-50, 53-58, and 60-62, over Snyder. We denominate the affirmance of
this rejection as a new ground of rejection pursuant to 37 C.F.R. §41.50(b),
however, because our interpretation of the claim language “not unitarily
joined” and our reading of the claim language on the disclosure of Snyder
differ from that articulated by the Examiner.

The Obviousness Rejections
Appellant’s arguments in favor of patentability of claims 4, 33, 46,
and 59 as unpatentable over Snyder in view of Mayer (App. Br. 7-8), and
claims 23, 27, 38, 51, and 52 as unpatentable over Snyder in view of
Morrison (App. Br. 8-9) simply rely on the arguments asserted as to claim 1
and are thus unpersuasive for the reasons discussed above with respect to
claim 1. We therefore affirm the rejections of these claims as well, also
denominating them as new grounds of rejection pursuant to 37 C.F.R.
§41.50(b), for the reasons discussed above with respect to claim 1.

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Application 10/063,463

SUMMARY
The decision of the Examiner to reject claims 1-17, 20, 22-38, 40, and
42 through 62 is affirmed. For the reasons discussed above, we denominate
our affirmance of the rejections of claims 1-17, 20, 22-38, 40, and 42
through 62 as new grounds of rejection pursuant to 37 C.F.R. §41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED; 37 C.F.R. § 41.50(b)

JRG

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Appeal 2007-3767
Application 10/063,463

COLIN L. CINI
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