Ex Parte Castleman et al

Patent Trial and Appeal Board

Jun 23, 2017

13526232 (P.T.A.B. Jun. 23, 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.
13/526,232 06/18/2012 Larry J. Castleman TSS0035.DIV 2890
41863 7590
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
A villa, IN 46710
06/23/2017 EXAMINER
NEUBAUER, THOMAS L
ART UNIT PAPER NUMBER
3675
MAIL DATE DELIVERY MODE
06/23/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY J. CASTLEMAN, GREGORY D. JONES,
and BRIAN BOWEN1
Appeal 2016-004407
Application 13/526,232
Technology Center 3600
Before ALLEN R MacDONALD, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 6—8, 10, and 11. App. Br. 9.2 We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Trelleborg Sealing Solutions US, Inc. is listed as the real party in interest.
App. Br. 3.
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Final Action mailed November 28, 2014 (“Final Act.”); the
Appeal Brief filed May 20, 2015 (“App. Br.”); the Examiner’s Answer
mailed January 15, 2016 (“Ans.”); and the Reply Brief filed March 15, 2016
(“Reply Br.”).
Appeal 2016-004407
Application 13/526,232
STATEMENT OF THE CASE
Appellants describe the present invention as a sealing system for use
in high-pressure, underground oil drilling applications. Spec, 2—3. The
sealing system more specifically comprises a multi-piece sealing assembly
including a sealing component, a pair of rings, each ring having a
protuberance interfittable with the sealing component, ad at least one
energizing spring or “energizer.” Id. 1 6. Independent claim 6, reproduced
below, is illustrative of the appealed claims:
6. A sealing assembly for a shaft, comprising:
at least one spring energizer;
a backup ring including a protuberance contacting said
spring energizer, said protuberance having a plurality of crosscut
interconnecting bores configured to relieve pressure during
operation; and
a sealing component, said at least one spring energizer
configured for energizing said sealing component, said sealing
component including:
a first arcuate portion annularly disposed about the
shaft, said first arcuate portion substantially contacting
said spring energizer; and
a second arcuate portion reversed from said first
arcuate portion, annularly disposed about the shaft, and
substantially contacting said spring energizer, a space
between said first arcuate portion and said second arcuate
portion substantially filled with said spring energizer and
at least a portion of said protuberance.
Claims 6—8 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hopkins (US 4,592,558, issued June 3, 1986) and Jordan
(US 2009/0108542 Al, published Apr. 30, 2009).
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Hopkins, Jordan, and Ramirez (US 4,706,970, issued Nov. 17, 1987).
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Appeal 2016-004407
Application 13/526,232
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
FINDINGS AND CONTENTIONS
The Examiner finds that Hopkins teaches all of the claimed elements
except for the crosscut bores disposed within the backup ring’s
protuberance. Final Act. 3^4. The Examiner finds that Jordan teaches a
sealing ring that possesses a plurality of crosscut interconnecting bores for
the purpose of pressure relief. Id. at 4 (citing Jordan p. 1, col. 1,11. 15—32).3
The Examiner concludes that it would have been obvious “to modify
Hopkins with a plurality of crosscut interconnecting bores as taught by
Jordan for the expected benefit of delivering lubrication near seal contact
location to reduce friction and improve seal longevity.” Final Act. 4.
Appellants assert that “Hopkins only teaches that various conditions
in the sealing environment, such as pressurization/depressurization, are what
caused premature aging of the seals.” App. Br. 13. According to
Appellants,
Jordan does not teach arbitrarily forming bores in a seal, but that
the sealing arrangement of Jordan is realized with the particular
profile of the sealing ring, two pretensioning elements, and
corresponding bores formed in the sealing ring. The Examiner
fails to explain in the Office Action or Examiner’s Answer why
it would be obvious to one skilled in the art to include the bores
3 Jordan’s Specification is denoted by paragraphs—not line numbers, so it is
not perfectly clear which passages the Examiner is citing. But this issue is
moot as that teaching of Jordan is undisputed. See generally App. Br.
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Appeal 2016-004407
Application 13/526,232
taught by Jordan in the hat ring of Hopkins, when the sealing
arrangement of Hopkins clearly lacks the pretensioning elements
and particular profile of the sealing arrangement of Jordan.
Reply Br. 4.
Appellants further argue that neither Hopkins nor Jordan teaches “that
friction between the hat ring and seal body taught by Hopkins causes
lowered seal longevity.” App. Br. 13. Appellants urge
the Examiner’s proposed modification to include crosscut
interconnecting bores taught by Jordan to the seal taught by
Hopkins represents a speculative solution that is unsupported by
the record to a problem that is not contemplated by Hopkins or
Jordan. At best, the Examiner's reasoning for modifying
Hopkins with the crosscut interconnecting bores taught by
Jordan is pretext and indicative of a hindsight reconstruction of
the invention recited by claim 6. Therefore, Appellants submit
that the rationale for modifying Hopkins in view of Jordan is not
supported by sufficient rational underpinning to support a legal
conclusion of obviousness and therefore a proper prima facie
case of obviousness has not been established.
Id. at 13—14.
ANALYSIS
Although Jordan teaches cross bores can be used for equalizing the
pressure between isolated seal cavities in those situations where pressure
differentials were recognized as being problematic, the Examiner does not
take the position that the cited prior art recognizes pressure differentials exist
between the inner and outer sides of Hopkins’s hat ring. See Final Act.
A fortiori, the Examiner does not find that such pressure differentials
existing between the inner and outer sides of Hopkins’s hat seal were known
to be problematic. Id.
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Appeal 2016-004407
Application 13/526,232
To be sure, a conclusion that it would have been obvious to
incorporate a known feature into the prior art can be supported by a reason
or motivation that differs from an appellant’s reason for including the
feature. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“Although the
motivation to combine here differs from that of the applicant, the motivation
in the prior art to combine the references does not have to be identical to that
of the applicant to establish obviousness”).
In the present case, though, the Examiner provides no evidence that
providing lubrication between Hopkins’s backup ring protuberances and
either the energizing spring or the seal lips would have been known to
provide an expected benefit of improving seal longevity. See, e.g., Ans. 7—8
(explaining that “[ojbviousness is based on what is known in the prior art
and what would [have been] obvious to one of ordinary skill in the art”), but
not setting forth any evidence that benefits of lubricating hat seals were
recognized). Furthermore, even if we were to assume, solely for the sake of
argument, that lubricating these particular surfaces was known to provide the
asserted benefit, the Examiner has not provided any evidence that one of
ordinary skill would have expected crosscut interconnecting bores to be
effective in delivering lubrication to these regions.
For the foregoing reasons, Appellants have persuaded us of error in
the Examiner’s obviousness rejection of independent claim 6. Accordingly,
we do not sustain the Examiner’s rejection of that claim or of claims 7, 8,
and 10, which depend from claim 6.
With respect to the remaining obviousness rejection of dependent
claim 11, the Examiner does not rely on Ramirez to cure the deficiency of
the obviousness rejection explained above. Final Act. 6 (relying on Ramirez
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Appeal 2016-004407
Application 13/526,232
for teaching “a sealing assembly wherein [a] spring energizer contains a
through path configured to relieve pressure during operation”).
Accordingly, we likewise do not sustain the obviousness rejection of
claim 11.
DECISION
The Examiner’s decision rejecting claims 6—8, 10, and 11 is reversed.
REVERSED
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