Ex Parte Cusack et al

Patent Trial and Appeal Board

May 22, 2017

13630950 (P.T.A.B. May. 22, 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.
13/630,950 09/28/2012 Maria Cusack PA22207U; 5822
67097-1911PUS1
54549 7590 05/24/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
NEUBAUER, THOMAS L
ART UNIT PAPER NUMBER
3675
NOTIFICATION DATE DELIVERY MODE
05/24/2017 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):
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIA CUSACK and
ARNOLD ZANDONELLA
Appeal 2015-006993
Application 13/630,950
Technology Center 3600
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
GORDON D. KINDER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s non-final rejection of claims 1—7, 9—15, and 17—21. App. Br. 4.
Claims 8 and 16 have been canceled. App. Br. 4. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-006993
Application 13/630,950
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to a sealing
arrangement for a bearing compartment in a turbine engine and more
particularly, to a coated seal for use therewith.” Spec. 11. Claims 1 and 11
are independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below:
1. A seal assembly for separating a relatively high
pressure area from a relatively low pressure area comprises:
a first seal carrier having a circumferential body, said
first seal carrier having a first land thereon; and
a seal having a circumferential body located within said
first seal carrier, said seal having a first surface and a second
surface, said first surface for sealing against said first land, and
wherein one of said first surface and said first land has an
unmachined wear coating thereon.
THE REJECTIONS ON APPEAL
Claims 1, 4, 9—11, 13, and 21 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claim 1—7, 9-15, 17, 18, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Pope and Garrison.
Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Pope, Garrison, and Miller.
REFERENCES RELIED ON BY THE EXAMINER
Pope
Miller
Garrison
US 6,145,840
US 2007/0096399 A1
US 2007/0235946 A9
Nov. 14, 2000
May 3, 2007
Oct. 11,2007
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Appeal 2015-006993
Application 13/630,950
ANALYSIS
The rejection of claims 1, 4, 9—11, 13, and 21 as being indefinite
Both independent claims on appeal (i.e., claims 1 and 11) include the
claim term “unmachined.” The Examiner states, “it is not clear as to what is
meant by ‘unmachined.Non-Final Act. 7; see also Ans. 13. More
specifically, the Examiner states, “[i]t is not clear if [Appellants] consider[]
secondary operations such as buffing, polishing, etching (chemical or
mechanical) etc. ... as ‘machining.’” Non-Finial Act. 7; see also Ans. 13.
Appellants reference paragraphs 36 and 37 of their Specification as
explaining this claim term. App. Br. 3. Paragraph 36 discusses a coating
that is applied stating, “[an] electroless plating process is followed by using
a reducing agent such as sodium hypophosphite to produce a negative charge
on the piston ring 135 that draws nickel ions in solution thereto to coat the
part.” Hence, paragraph 36 describes applying a coating that is followed by
a chemical process to draw nickel ions. Paragraph 37 states, “[o]ne of the
advantages of electroless nickel is that it does not require machining and
other coatings that are known to resist fretting and vibratory modes that do
not require machining (e.g., ‘unmachined’) may be used herein.” Hence,
these referenced paragraphs not only differentiate machining from chemical
processing, but also explain that “unmachined” means “do[es] not require
machining.” Such usage is also consistent with Appellants’ proffered
dictionary definition.1 * 3App. Br. 3. Accordingly, Appellants contend that in
view of both the use of this term in the specification and its dictionary
1 “The verb ‘machined’ is defined as: to process by or as if by machine;
especially: to reduce or finish by or as if by turning, shaping, planing, or
milling by machine-operated tools (see http://www.merriamwebster.
com/dictionary/machined).” App. Br. 3.
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Appeal 2015-006993
Application 13/630,950
definition, “one skilled in the art would be able to ascertain the scope of the
term ‘unmachined. App. Br. 3.
We agree with Appellants that “machining” involves a process
whereby a surface is reduced, abraded, finished, polished, etched, or the like
(described by the Examiner as “a subtractive process,” (Non-Final Act. 7))2
such as by a turning, shaping, planning, or milling devices, whether
accomplished manually or under power.3 Reply Br. 1.
The Examiner seeks to clarity stating that from the nature of
Appellants’ device, “the use of machines of some type appear required at
some point in the process of producing the apparatus.” Ans. 12. However,
Appellants state, “[u]sing a machine to apply a coating would not result in a
machined coating.” App. Br. 4. We agree with Appellants that there is a
difference between using a machine during a manufacturing process and a
“machined coating” (or in this case, an “unmachined wear coating”).
The Examiner also rejects claim 21 (the Examiner incorrectly
identifies it as claim 20) because “[t]he recitation of generally L-shaped does
not appear to represent [Appellants’] disclosed invention.” Non-Final Act.
7; see also Ans. 15. Appellants explain that, as per the figures, “‘L-shaped’
refers to the cross sectional shape of the first and second seal carriers.” App.
2 Inexplicably, the Examiner states, “buffing and polishing (not currently at
issue), are not subtractive processes.” Ans. 13. However, the Examiner
does not explain how buffing and polishing are not finishing operations.
Furthermore, buffing and polishing operations still involve material removal,
and as such, it is not understood how such operations, if conducted via a
machine, are not otherwise encompassed by the term “machining.”
3 Appellants state, “[f]or instance, if one ‘roughed’ a coating with a hand
file, for example, then they would have ‘machined’ the coating.” Reply Br.
1.
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Appeal 2015-006993
Application 13/630,950
Br. 4. Appellants also explain that their Specification repeatedly “uses the
term L-shaped.” App. Br. 4. In view of such disclosures, we agree,
“[Appellants’] claims (when viewed in light of the specification and
drawings) would have been clear to one skilled in the art.” Reply Br. 2.
Based on the above, we are not persuaded that one skilled in the art
would have failed to understand that which Appellants have recited.
Intermingled with the Examiner’s rejection based on indefmiteness is
the Examiner’s rejection of the term “unmachined” based on it being a
negative claim limitation (Non-Final Act. 7; Ans. 16); “a product by process
claim” (Ans. 12, 16); and, Appellants have “failed to positively claim” this
limitation (Ans. 14—15). Appellants state, “a machined coating would be
structurally different than an unmachined one. Thus, ‘unmachined coating’
is a structural limitation that must be given weight.” Reply Br. 3; see also
App. Br. 5.
Addressing the Examiner’s rationales, we are not of the opinion that
the term “unmachined” is a negative claim limitation because this term is
understood to mean a specific type of surface, i.e., a surface that has not
been mechanically abraded. See supra. Additionally, in view of our
understanding of the claim term “unmachined,” we agree with Appellants
there is a structural difference between a coating that has been machined and
one that has not been machined, such that the limitation in question has been
positively claimed and is not subject to the Examiner’s product by process
rejection.
Accordingly, and based on the record presented, we do not sustain the
Examiner’s rejections of claims 1, 4, 9-11, 13, and 21.
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Appeal 2015-006993
Application 13/630,950
The rejection of claims 1—7, 9—15, 17, 18, and 21
as unpatentable over Pope and Garrison
The Examiner relies on the teachings of Garrison for disclosing the
limitation, “said first land has an unmachined wear coating thereon.” Non-
Final Act. 9. The Examiner references “page 2, col. 2 lines 31—33” of
Garrison for support (Non-Final Act. 9; Ans. 16), stating, “Garrison
specifically teaches the structure of ‘hard coating’” (Ans. 14; see also id. at
16). However, Garrison is silent as to whether this hard coating has had its
surface machined or not, which the Examiner acknowledges.4 Ans. 16, 17.
Nevertheless, the Examiner states, “art that does not discuss machining and
therefore the negative recitation ‘unmachined’ is inherently disclosed as
nowhere in this reference is there any evidence of machining of the hard
coating.” Ans. 12; see also Ans. 17. Expressed another way, “[njowhere in
the reference of Garrison is there [a] discussion of machining the hard
coating, therefore the recitation of ‘unmachined’ is inherently disclosed.”
Ans. 14; see also id. at 16.
Appellants object stating, (a) “an obviousness rejection cannot be
maintained simply because a reference is silent relative to a claimed
feature,” (b) “one cannot conclude a coating is ‘unmachined’ simply based
on the reference’s silence,” and (c) “if no evidence exists (as the Examiner
admits), then the rejection fails.” App. Br. 5. Appellants further state that
the Examiner must “establish that each and every element is either disclosed
or rendered obvious by the prior art” and that “the Examiner has not met his
4 Appellants state, “[tjhis section of Garrison teaches nothing about
providing a coating on a seal—let alone an ‘unmachined’ coating, as
claimed.” App. Br. 4.
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Appeal 2015-006993
Application 13/630,950
burden.” Reply Br. 3. On this latter point, we are instructed by our
reviewing court as follows (emphasis added).
The Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in
its factual basis. To the extent the Patent Office rulings are so
supported, there is no basis for resolving doubts against their
correctness. Likewise, we may not resolve doubts in favor of the
Patent Office determination when there are deficiencies in the
record as to the necessary factual bases supporting its legal
conclusion of obviousness.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Here, the Examiner is relying on a reference’s silence to teach a
positive claim limitation (i.e., “unmachined”). Such reliance by the
Examiner correlates to the expressed caution stated above regarding
reliance on speculation or unfounded assumptions. This, we are
informed, leads to deficiencies in the necessary factual basis required
to support a legal conclusion of obviousness. Accordingly, and based
on the record presented, we do not sustain the Examiner’s rejection of
claims 1—7, 9—15, 17, 18, and 21 as being obvious over Pope and
Garrison in view of Garrison’s silence regarding the claim term
“unmachined.”
The rejection of claims 19 and 20
as unpatentable over Pope, Garrison, and Miller
The Examiner relies on the additional teachings of Miller as
disclosing the additional limitations recited in these dependent claims. Non-
Final Act. 15—17; Ans. 18. However, the Examiner does not rely on Miller
to cure the defect of the combination of Pope and Garrison discussed supra.
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Appeal 2015-006993
Application 13/630,950
Accordingly, because we do not sustain the rejection of the parent claim, and
because Miller does not cure the aforementioned defect, we also do not
sustain the Examiner’s rejection of claims 19 and 20 as being obvious over
Pope, Garrison, and Miller.
DECISION
The Examiner’s rejections of claims 1—7, 9—15, and 17—21 are
reversed.
REVERSED
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