Ex parte Ciotola

Board of Patent Appeals and Interferences

Sep 28, 2000

08705744 (B.P.A.I. Sep. 28, 2000)

The opinion in support of the decision being entered today was not written for
publication in a law journal and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALFREDO A. CIOTOLA
____________
Appeal No. 98-1523
Application No. 08/705,744
____________
ON BRIEF
____________
Before ABRAMS, MCQUADE, and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claims 18 through 27, which are all of the claims
pending in this application. Claims 1 through 17 have been
canceled.
Appeal No. 98-1523 Page 2
Application No. 08/705,744
The appellant's invention relates to a mechanical seal
having connector clips between the stationary components of
the seal and a stationary housing.
An understanding of the invention can be derived from a
reading of exemplary claim 18, which appears in the appendix
to the appellant's brief.
The prior art
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Azibert et al (Azibert ‘977) 4,625,977 Dec.
2, 1986
Malmstrom 3,601,412 Aug.
24, 1971
Warner et al (Warner) 4,989,882 Feb. 5,
1991
Radosav et al (Radosav) 5,114,163 May 19,
1992
Azibert et al (Azibert ‘496) 5,209,496 May
11, 1993
Duffee et al (Duffee) 5,294,132 Mar. 15,
1994
The rejections
Claims 18, 20 and 23 through 25 and 27 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Warner.
Claims 18, 20, 23 through 25 and 27 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Azibert ‘977.
Appeal No. 98-1523 Page 3
Application No. 08/705,744
Claims 18 through 27 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Azibert ‘496.
Claims 18, 20, 23 through 25 and 27 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Radosav.
Claims 18, 20, 23 through 25 and 27 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Duffee.
Claims 20, 24, 25 and 27 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Malmstrom.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's final
rejection (Paper No. 8, mailed May 19, 1997) and answer (Paper
No. 13, mailed November 25, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 12, filed September 30, 1997) for the
appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
Appeal No. 98-1523 Page 4
Application No. 08/705,744
examiner. As a consequence of our review, we make the
determinations which follow.
We initially note that all of the rejections are under 35
U.S.C. § 102. A claim 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. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it
is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim
are found in the reference, or 'fully met' by it."
We turn first to the examiner’s rejection of claims 18,
20, 23 through 25 and 27 as being unpatentable under 35 U.S.C.
§ 102(b) as being anticipated by Warner. The examiner is
of the opinion that all the features of the claimed invention
Appeal No. 98-1523 Page 5
Application No. 08/705,744
are disclosed in Warner and illustrated in Fig. 1 and calls
attention to clip 52.
The appellant argues that Warner does not disclose a clip
but rather a flange and that Warner does not disclose a clip
pin. Appellant’s specification states that the connector
clips 138 connect the stationary components of the seal to the
stationary housing and comprise a radial extension 142 having
a seal end 144 and a bolt end 146. The bolt end 146 has a
bolt end opening 148 to receive the bolt 140 (Specification at
page 18). Appellant’s specification does not define the clip
further. However the College Standard Dictionary, (Funk &
Wagnalls Company, 1981) p. 230, defines a clip as “any
appliance that clasp, grips or holds fast.” The flange 52 of
Warner firmly holds the seal housing 50 to the machine wall
56. Flange 52 includes a radial extension (the portion
adjacent the screw 54) on a bolt end and a seal end (adjacent
seal housing 50) (Fig. 1). The flange 52 also has an opening
to receive a bolt. As such, although the element 52 is called
a flange in the Warner specification, the flange “reads on”
the clip recited in claim 18.
Appeal No. 98-1523 Page 6
Application No. 08/705,744
In regard to the appellant’s argument that Warner does
not disclose a clip pin, we note that claim 18 does not recite
a clip pin. As such, this argument is not persuasive because
it is not commensurate in scope with the actual scope of claim
18.
In view of the foregoing, we will sustain the examiner’s
rejection of claim 18 under 35 U.S.C. § 102(b) as being
unpatentable as anticipated by Warner. The decision of the
examiner to reject claims 20 and 23 through 25 and 27 under
35 U.S.C. § 102(b) is also sustained since the appellant has
not addressed the separate patentability of these claims. See
In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed.
Cir. 1987).
We turn next to the examiner’s rejection of claims 18,
20, 23 through 25 and 27 as being unpatentable under 35 U.S.C.
§ 102(b) as anticipated by Asibert ‘977. It is the examiner’s
opinion that Azibert ‘977 clearly discloses all features of
the claimed invention, as illustrated by Fig. 4.
The appellant argues that Azibert ‘977 does not disclose
an axial extension on the clip located adjacent the bolt or a
clip pin.
Appeal No. 98-1523 Page 7
Application No. 08/705,744
We do not agree that Azibert ‘977 does not disclose an
axial extension adjacent the bolt, we agree with the examiner
that:
As clearly shown in fig. 4, element (118)
has a seal end (at 122) that projects
radially and engages stationary seal member
(86), and a bolt end that lies radially
outward therefrom. The “bolt end” clearly
includes the claimed axial extension. The
bolt end clearly having a greater axial
dimension than the seal end. The bolt end
also include a bolt hole, part of the
extension lying above the bolt hole(s) and
part lying below the bolt hole. The
extension therefore clearly being
“adjacent” to the bolt and bolt hole since
it adjoins and at least partially surrounds
the bolt (more than 180 degrees).
[Examiner’s Answer at page 5]
In regard to the argument that Azibert ‘977 does not
disclose a clip pin, we note again that claim 18 does not
recite a clip pin. As such, we do not find this argument
persuasive.
In view of the foregoing, we will sustain the examiner’s
rejection of claim 18 as being unpatentable as anticipated by
Azibert ‘977. We will likewise sustain the examiner’s
rejection of claims 20, 23 through 25 and 27 as appellant has
not argued
Appeal No. 98-1523 Page 8
Application No. 08/705,744
the separate patentability of these claims and therefore,
claims 20, 23 through 25 and 27 stand or fall with claim 18.
See Nielson, 816 F.2d at 1572, 2 USPQ2d at 1528.
We turn next to the examiner’s rejection of claims 18
through 27 under 35 U.S.C. § 102(e) as being unpatentable as
anticipated by Azibert ‘496. It is the examiner’s opinion
that Azibert ‘496 discloses all the features of the claimed
invention as illustrated in Figures 4 and 4a.
Appellant argues that Azibert ‘496 does not disclose an
axial extension from the radial seal surface of the clip at
the bolt end nor a clip pin.
We do not agree with the appellant. In Fig. 4a, the clip
or tab 72 has a seal end which engages the seal gland 70 at
74. In addition, the bolt end of the clip (See Fig. 2b) has
an axial extension extending from the radial seal surface.
For the foregoing reasons, we will sustain the examiner’s
rejection of claim 18. We will also sustain the examiner’s
rejection of claims 19, 20, 23 through 25 and 27 as the
appellant has failed to argue the separate patentability of
these claims. See Nielson, 816 F.2d at 1572, 2 USPQ2d at
1528.
Appeal No. 98-1523 Page 9
Application No. 08/705,744
Claims 21, 22 and 26 recite a clip pin extending from the
seal surface. The examiner is of the opinion that projection
73 depicted in Fig. 4a is a clip pin. We do not agree. The
College Standard Dictionary, at 861 defines a pin as “a short
stiff piece of wire, with a sharp point and a rounded, usually
flattened head.” In our view a person skilled in the art
would not consider the projection 73 to be a pin. Therfore,
we will not sustain the rejection as it is directed to claims
21, 22 and 26.
We turn next to the examiner’s rejection of claims 18,
20, 23 through 25 and 27 as unpatentable as anticipated by
Radosav. In the examiner’s opinion, Radosav discloses all
features of the claimed invention as illustrated in Figs 2, 4a
and 9. The examiner specifically points to clips 36, 60 and
60'.
The appellant argues that Radosav does not disclose
“clips” but plates. The appellant also argues that the plates
have no radial extensions and that Radosav does not disclose
clip pins.
As is depicted in Fig. 2, Radosav discloses an element 36
between the stationary seal component (40) and bolts to hold
Appeal No. 98-1523 Page 10
Application No. 08/705,744
the stationary seal component firmly to the housing 24.
Therefore, it is our opinion that Radosav does disclose a clip
as broadly claimed. In addition, there is also an axial
extension from the radial seal surface (which engages seal
component 40). We are not pursuaded by appellant’s argument
that Radosav does not disclose clip pins because claim 18 does
not recite a clip pin. Therefore, this argument is not
commensurated with the actual scope of claim 18.
In view of the foregoing, we will sustain the examiner’s
rejection of claim 18 as being unpatentable under 35 U.S.C. §
102(b) as anticipated by Radosav. We will also sustain the
rejection as it is directed to claims 20, 23 through 25 and 27
as the appellant has not argued the separate patentability of
these claims. See Nielson 816 F.2d at 1572, 2 USPQ2d at 1528,
(Fed. Cir. 1987).
We turn now to the examiner’s rejection of claims 18, 20,
23 through 25 and 27 as being unpatentable under 35 U.S.C. §
102(e) as anticipated by Duffee. It is the examiner’s opinion
that Duffee discloses the claimed invention as claimed and
that this is illustrated in Fig. 2.
Appeal No. 98-1523 Page 11
Application No. 08/705,744
The appellant argues that Duffee does not disclose clips
and that the flange that is disclosed has no axial extension
from the seal surface at the bolt end.
We agree with the appellant that Duffee does not disclose
an axial extension from the seal surface at the bolt end.
Although, th gland or plate 20 does interconnects the seal to
a housing 14 and as broadly claimed is a clip, and element 20
does indeed include an axial extension 22, this extension is
not disposed at the bolt end. Rather the axial extension is
from the radial seal surface at the seal end.
In view of the foregoing, we will not sustain the
examiner’s rejection of claim 18 and claim 23 dependent
therefrom. In addition, we will not sustain the rejection of
claims 20, 24, 25 and 27 under 35 U.S.C. § 102(e) as being
unpatentable as anticipated by Duffee as claims 20 and 25,
from which claim 24 and 27 depend, each recite an axial
extension from the radial seal surface at the bolt end.
We turn finally to the examiner’s rejection of claims 20,
24, 25 and 27 as being unpatentable under 35 U.S.C. § 102(b)
as anticipated by Malmstrom. The examiner is of the opinion
that Malmstrom discloses all the features of the claimed
Appeal No. 98-1523 Page 12
Application No. 08/705,744
invention as clearly illustrated in Figs. 5a, 5b, 8a, 8b, 9,
and 14. Figures 5a, 5b, 8a, 9 and 14 depict different
embodiments of the Malmstrom device (Col. 1, lines 60-72).
Anticipation is not established if in reading a claim on
something disclosed in a reference, it is necessary to pick,
choose and combine various portions of the disclosure not
directly related to each other by the teachings of the
reference. In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524,
526 (CCPA 1972).
In view of the foregoing, we will not sustain the
examiner’s rejection of claims 20, 24, 25 and 27 under 35
U.S.C. § 102(b) as being anticipated by Malmstrom.
In summary:
(1) The examiner’s 102(b) rejections of claims 18, 20,
23-25 as anticipated by (A) Warner (B) Azibert ‘977, and (C)
Radosav are sustained.
(2) The examiner’s 102(e) rejection of claims 18-20, 23-
25 and 27 as anticipated by Azibert ‘496 is sustained.
(3) The examiner’s 102(e) rejection of claims 21, 22 and
26 as aniticpated by Azibert ‘496 is not sustained.
Appeal No. 98-1523 Page 13
Application No. 08/705,744
(4) The examiner’s 102(b) rejection of claims 18, 20, 23-
25 and 27 as anticipated by Duffee is not sustained.
(5) The examiner’s 102(b) rejection of claims 20, 24, 25
and 27 as anticipated by Malmstrom is not sustained.
Appeal No. 98-1523 Page 14
Application No. 08/705,744
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 98-1523 Page 15
Application No. 08/705,744
MEC:pgg
Richard S. Roberts
Roberts & Mercanti, L.L.P.
P.O. Box 484
Princeton, NJ 08542-0484