Ex Parte Bertini et al

Patent Trial and Appeal Board

Jul 25, 2017

13055306 (P.T.A.B. Jul. 25, 2017)

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.
13/055,306 03/25/2011 Mario Bertini SS629-1005 4409
122515 7590
Silvia Salvadori, P.C.
Silvia Salvadori
270 Madison Avenue, 8th Floor
New York, NY 10016
EXAMINER
BYRD, EUGENE G
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
07/27/2017 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):
silvia@salvadorilaw.com
silvia30121 @ me. com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIO BERTINI and RAFFAELLO RAVANELLI
Appeal 2015-0057261
Application 13/055,3062
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 29-40. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Oct. 31, 2014) and Reply Brief (“Reply Br.,” filed May 6, 2015), and the
Examiner’s Answer (“Ans.,” mailed Mar. 12, 2015) and Final Office Action
(“Final Act.,” mailed Aug. 1, 2014).
2 Appellants identify TENUTE S.R.L. as the real party in interest. App.
Br. 3.
Appeal 2015-005726
Application 13/055,306
CLAIMED INVENTION
Appellants’ claimed invention “relates to a seal and a method for the
manufacture thereof.” Spec. 1,11. 2—3.
Claims 29 and 30 are the independent claims on appeal. Claim 29 is
representative of the claimed subject matter:
29. A seal comprising:
an annular portion having a static seal surface configured
for a static seal in relation to a first element, said static seal
surface being made of an elastomeric material, said static seal
surface being extended at least partially or mainly in a direction
parallel to an axis, in particular an axis coinciding with a relative
rotation axis between said first element and a second element,
said static seal surface made of said elastomeric material being
the most peripheral surface of said annular portion and being
mounted to said first element in contact thereto;
at least an annular lip configured for a dynamic seal in
relation to said second element, said annular lip having a
dynamic seal zone and a fixing zone, said dynamic seal zone
extending in a circumferal direction around said axis, said fixing
zone being fixed to said annular portion;
an elastic arrangement comprising an annular spring and a
garter spring that is partially wound by an end portion of said
annular spring, a first end, configured for maintaining said
dynamic seal zone of the annular lip abutting on said second
element in an operating configuration, and a second end having
an annular shape extending around said axis, said second end
having a radial section extending prevalently in a direction
parallel to said axis;
an annular locking element for locking said second end of
said elastic arrangement, wherein:
said first end comprises said garter spring,
said second end is interposed in a radial direction between
said annular locking element and said static seal surface, and
said second end comprises a portion of said annular spring
that is fixed to said static seal surface by said annular locking
element and not through direct vulcanization.
2
Appeal 2015-005726
Application 13/055,306
REJECTIONS
Claims 29-31 and 35—40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Victor (US 2,208,482, iss. July 16, 1940) and Chambers
(GB 612,830, iss. Nov. 18, 1948).3
Claims 32—34 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Victor, Chambers, Wagner (US 8,002,287 B2, iss. Aug. 23, 2011), and
Taylor (US 4,015,883, iss. Apr. 5, 1977).4
ANALYSIS
Independent Claims 29 and 30, and Dependent claims 31 and 35—40
We are persuaded by Appellants’ arguments that the Examiner erred
in rejecting independent claims 29 and 30 under 35 U.S.C. § 103(a) because
Victor does not disclose or suggest “an annular locking element for locking
said second end of said elastic arrangement,” or that “said second end
comprises a portion of said annular spring that is fixed to said static seal
surface by said annular locking element and not through direct
vulcanization,” as recited in claim 29, and similarly recited in claim 30.
App. Br. 7; see also Reply Br. 6. The Examiner finds that Victor’s
element 78 describes the claimed elastic arrangement. Final Act. 2—3. With
3 We treat as inadvertent the Examiner’s omission of Chambers in setting
forth the bases for the rejection of claims 35—37 (see Final Act. 5), inasmuch
as each of these claims depends from claim 30, which is rejected as obvious
over the combination of Victor and Chambers.
4 We treat as inadvertent the Examiner’s omission of Chambers in setting
forth the bases lor the rejection of claims 32—34 (see Final Act. 6), inasmuch
as each of these claims ultimately depends from claim 30, which is rejected
as obvious over the combination of Victor and Chambers.
3
Appeal 2015-005726
Application 13/055,306
reference to an annotated version of Figure 12 of Victor, the Examiner
acknowledges that second end 80b of elastic arrangement 78 is not locked
by an annular locking element, as required by claim 29. Id. at 3. However,
the Examiner finds Figure 13 of Victor describes an element 83 that
constitutes the claimed annular locking element. See Final Act. 3 (citing
Victor Figs. 12—13, [3,] col. [1], 11. 12—14). The Examiner determines that it
would have been obvious to one of ordinary skill in the art to modify the
elastic arrangement 78 shown in Figure 12 by providing element 83 to lock
second end 80b of element 78. Id. (annotating Victor Fig. 12).
Victor describes an improved grease retainer or fluid seal for use with
automobiles. Victor 1, col. 1,11. 1—5. Victor describes various embodiments
of the invention. See, e.g., id. at Figs. 1—13. In each embodiment, a
diaphragm is vulcanized or molded to a metal shell. Id. at 3, col. 2,11. 33—
40. The diaphragm is formed of an inner layer of plastic and (optionally) an
outer layer of fabric. See id. at 1, col. 2,11. 30-36 (diaphragm comprising
plastic and fabric); 2, col. 1,11. 51—53 (diaphragm comprising only plastic).
The resilient material of the diaphragm slightly compresses on application,
acting as a cork to completely seal any leaks between adjacent metal
portions. Id. at 2, col. 2,11. 41—48; 3, col. 2,11. 45—53.
Figure 12 of Victor describes an embodiment in which diaphragm 79
is vulcanized to U-shaped metal shell 78. Id. at 3, col. 1,11. 4—7. The U-
shape of the metal shell provides more surface area for vulcanization, and
inner flange 80 of U-shaped metal shell 78 retains an associated portion of
diaphragm 79 away from the shaft. Id. at 3, col. 1,11. 8—11. Figure 13 of
Victor shows another embodiment in which diaphragm 82 is vulcanized to
L-shaped metal shell 81. Id. at 3, col. 1,11. 12—14. L-shaped metal shell 81
4
Appeal 2015-005726
Application 13/055,306
is reinforced by an inner cup-shaped metal element 83. Id. at 3, col. 1,11.
15-17.
The Examiner takes the position that Victor’s L-shaped metal shell 81
is “not necessarily vulcanized to the diaphragm” and, instead, “can be
molded to fit the shape of the interior of the diaphragm.” Ans. 2—3 (citing
Victor 2, col. [1], 11. 12—14). The Examiner also finds that Victor’s inner
cup-shaped metal element 83 “is used to reinforce the shell against the
diaphragm.” Id. Stated another way with reference to Figures 12 and 13 of
Victor, the Examiner finds that Victor’s use at page 2, column 1, lines 12—14
of the phrase “molded or vulcanized” suggests that the diaphragms 79, 82
may not be firmly fixed to the associated metal shells 78, 81; that element 83
of Figure 13 locks metal shell 81 to the diaphragm 81; and one of ordinary
skill would understand that Figure 12 could be modified to include a similar
locking element 83. See Victor Figs. 12—13. We disagree.
Victor describes firmly fixing the diaphragm to the metal shell by
vulcanization or molding. See Victor 3, col. 2,11. 33—62 (“[i]n all these
structures, the material of the diaphragm, being vulcanized to the metal
shell, cannot possibly turn with regard thereto”); see also id. at 1, col. 2,11.
30-42; 2, col. 1,11. 12-23, col. 2,11. 3-8, 61-66; 3, col. 1,11. 1-17, 38—47
(various embodiments describing firmly fixing diaphragm to metal shell). In
the embodiment shown in Figure 13 of Victor, inner cup-shaped element 83
reinforces F-shaped metal shell 81. Victor 3, col. 1,11. 14—14. Inner cup­
shaped element also acts to retain the garter spring in position on the
diaphragm. Id. at 3, col. 1,11. 15—17. But we find nothing in the cited
portions of Victor that discloses or suggests that element 83 is an annular
locking element, as recited in claim 29, and similarly recited in claim 30.
5
Appeal 2015-005726
Application 13/055,306
Therefore, we do not sustain the Examiner’s rejection of independent
claims 29 and 30, and dependent claims 31 and 35—40 under 35 U.S.C.
§ 103(a).
Dependent Claims 32—34
Claims 32—34 depend from independent claim 30. The Examiner’s
rejections of claims 32—34 does not cure the deficiency in the Examiner’s
rejection of independent claim 30. Therefore, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103(a) of claims 32—34 for the same
reasons set forth above with respect to claim 30.
DECISION
The Examiner’s rejections of claims 29-40 under 35 U.S. C. § 103(a)
are reversed.
REVERSED
6