Ex Parte Durham

Board of Patent Appeals and Interferences

Dec 17, 2009

10194576 (B.P.A.I. Dec. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN PATRICK DURHAM
____________

Appeal 2009-005492
Application 10/194,5761
Technology Center 3600
____________

Decided: December 17, 2009
____________

Before JENNIFER D. BAHR, SCOTT R. BOALICK, and
FRED A. SILVERBERG, Administrative Patent Judges.

BOALICK, Administrative Patent Judge.

DECISION ON APPEAL

1 Application filed July 12, 2002. Application 10/194,576 claims the
benefit under 35 U.S.C. § 119(e) of provisional application 60/305,336, filed
July 13, 2001. The real party in interest is Delaware Capital Formation, Inc.
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2
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 5-8, 10, 12, 14, 16, 20-22, 24 and 27-54, all the claims pending in the
application. Claims 1-4, 9, 11, 13, 15, 17-19, 23, 25 and 26 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention relates to the use of elastomers as a sealing
element for reciprocating gas compressor valves. (Spec. Abstract.)
Claim 5 is exemplary:
5. In a reciprocating gas compressor valve, a sealing element
comprising a layer of elastomeric material bonded to a substrate wherein
said sealing element operably engages a seating surface with surface contact.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Manley 3,536,094 Oct. 27, 1970
Amin 5,461,107 Oct. 24, 1995
Jainek 6,234,194 B1 May 22, 2001
Appellant’s Admitted Prior Art (“APA”) at pages 1-3 of the present
Application.

Claims 5-8, 16, 20-22, 24, 28, 32, 33, 35, 37, 39, 41 and 43 stand
rejected under 35 U.S.C. § 103(a) as being obvious over the APA and
Jainek.
Claims 10, 12, 14, 27, 29-31, 34, 36, 38, 40, 42 and 45-54 stand
rejected under 35 U.S.C. § 103(a) as being obvious over the APA, Jainek
and Amin.
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Claims 50-54 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Manley and Amin.
Claims 45-48 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the APA, Manley and Amin.2
Except as noted in this decision, Appellant has not presented any
substantive arguments directed separately to the patentability of the
dependent claims. In the absence of a separate argument with respect to
those claims, they stand or fall with the representative independent claim.
See 37 C.F.R. § 41.37(c)(1)(vii). Only those arguments actually made by
Appellant have been considered in this decision. Arguments that Appellant
did not make in the Briefs have not been considered and are deemed to be
waived. See id.

ISSUE
With respect to claims 5-8, 16, 20-22, 24, 28, 32, 33, 35, 37, 39, 41
and 43, Appellant argues that the Examiner improperly combined the APA
and Jainek. (App. Br. 25-29.) In particular, Appellant argues that “the
Examiner has not provided any rationale why one skilled in the art would
combine the prior art elements . . . [of] reciprocating gas compressors
together with the o-ring technology taught by Janiek [sic]” (App. Br. 25).
Appellant also argues that Jainek is non-analogous art. (Reply Br. 4-8.)

2 The Appeal Brief appears to have inadvertently omitted the APA from the
statement of the rejection. (App. Br. 3, 19.)
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Appellant’s arguments present the following issue:
Has Appellant shown that the Examiner erred by improperly
combining the APA and Jainek?

With respect to claims 10, 12, 14, 27, 29-31, 34, 36, 38, 40, 42 and
45-54, Appellant argues that the Examiner improperly combined the APA,
Jainek and Amin. (App. Br. 30-31.) In particular, Appellant argues that
“Amin et al. teach an improved material for o-rings and merely lists the
environments where this recipe might be used” and “do not teach or suggest
the claimed sealing element used in a gas compressor valve” (App.
Br. 30-31). Appellant also argues that Amin is non-analogous art. (Reply
Br. 8-9.)
Appellant’s arguments present the following issues:
1. Has Appellant shown that the Examiner erred by improperly
combining the APA, Jainek and Amin?
2. Has Appellant shown that the Examiner erred in finding that the
combination of the APA, Jainek and Amin teaches or suggests an
elastomeric sealing element in a reciprocating gas compressor
valve?

With respect to claims 50-54 and 45-48, Appellant argues that the
Examiner improperly combined the APA,3 Manley and Amin. (App.
Br. 31.) In particular, Appellant argues that “Amin et al. do[] not teach or
suggest an elastomeric sealing element useful for gas compression or in a

3 In making this argument, Appellant characterizes Manley as being part of
what the Examiner considers to be the APA.
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gas compressor valve” but do teach “O-rings [that] are not designed for the
repeated loading and unloading associated with pressure and physical impact
between parts.” (App. Br. 31.) Appellant also argues that “no teaching,
suggestion or motivation” to combine the applied references has been
provided. (App. Br. 31.)
Appellant’s arguments present the following issues:
1. Has Appellant shown that the Examiner erred by improperly
combining the APA, Manley and Amin (or Manley and Amin)?
2. Has Appellant shown that the Examiner erred in finding that the
combination of the APA, Manley and Amin (or Manley and Amin)
teaches or suggests an elastomeric sealing element in a
reciprocating gas compressor valve?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

The APA
1. In the “Background of the Invention,” Appellant describes
reciprocating gas compressors “with valves that open and close to
intake and expel gases.” (Spec. ¶ [0003].) “The sealing element of
the valve establishes a seal between it and the opposing, fixed seating
surface.” (Id.)

2. Appellant further describes valves in a reciprocating gas compressor
in which “each valve has a seating surface, a moving sealing element,
a stop plate and mechanism to force the valve elements to close before
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the compressor piston reaches top or bottom dead center.” (Spec.
¶ [0004].) “The sealing element is pressed against the corresponding
seating surface to close the valve by a combination of spring forces
and differential pressures.” (Id.)

3. The sealing elements can be composed of metal or rigid thermoplastic
materials. (Spec. ¶ [0007].) With such materials, “for the seal to be
fully gas tight, the surfaces of the sealing element and particularly the
sealing surface must be smooth and free from defects,” in which
“[t]ighter tolerances require machine tools that are more precise and
expensive.” (Spec. ¶ [0008].) Appellant further describes that
“[q]uality control of rigid components is a key step in the successful
operation of the parts.” (Spec. ¶ [0012].) Water absorption in
thermoplastic parts or rusting and pitting of metal parts can render
such parts unusable (id.) and thus “[a] need exists . . . for a sealing
element that efficiently seals a reciprocating gas compressor valve for
the purpose of improving reliability and durability” (Spec. ¶ [0015]).

4. In the “Detailed Description of the Invention,” Appellant states that
“three common forms of valves used in reciprocating gas compressors
are: concentric ring (Figure 3), single element non-concentric
(Figure 6) and ported plate (Figures 1 and 2).” (Spec. ¶ [0042].)

Jainek
5. Jainek “relates to a valve in which a valve body is urged against a
valve seat under the force of a valve spring which in turn is supported
against a valve cap.” (Col. 1, ll. 5-7.) Jainek describes a valve 1
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including a valve body 2, a valve seat 5 and a valve plate 6, attached
to a valve cap 4. (Col. 1, ll. 57-61; fig. 1.) A valve spring 3 forces the
valve body 2 against the valve cap 4. (Col. 1, ll. 53-55.)

6. In a closed position, the valve spring 3 presses against the valve
seat 5, due to the pressure from the valve spring 3. (Col. 2, ll. 1-2;
fig. 1.) The valve is opened when the pressure of a liquid presses
against the valve body 2 in excess of the force of the valve spring 3,
such that the liquid flows through the valve seat 5. (Col. 2, ll. 2-6.)
“The elastomer on the valve plate [6] is sufficiently resilient to assure
a long-lasting good seal against the valve seat [5] and to compensate
for slight manufacturing tolerances.” (Col. 1, ll. 35-37.)

Amin
7. Amin “relates to improving the chemical resistance of
perfluoroelastomeric compositions and seals.” (Col. 1, ll. 10-11.)
Amin describes that “[e]lastomers may be used in a variety of
processing and manufacturing operations which demand resilience
and resistance to high temperatures and chemical attack.” (Col. 1,
ll. 15-17.) As an example, “elastomeric seals may be used in
chemical processing and petroleum refining equipment, such as . . .
compressor casings, valves and other equipment.” (Col. 1, ll. 18-21.)
As another example, “such seals may be used in check valves and
pressure relief valves where superior reliability is required.” (Col. 1,
ll. 25-26.)

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8. Amin describes that “[w]ith few exceptions . . . perfluoroelastomers
are generally resistant to virtually all chemicals.” (Col. 4, ll. 29-31.)
“A preferred perfluoroelastomer . . . is a terpolymer of
tetrafluoroethylene, perfluoroalkyl vinyl ether and one of several
perfluorinated cure site monomers” (col. 4, ll. 44-48) that is “capable
of maintaining . . . structural integrity at temperatures ranging from
about -20° F. to about 450° F” (col. 4, ll. 50-52).

Manley
9. Manley relates to compressor valves with concentric sealing rings
composed of a synthetic resin. (Abstract.) Manley further describes
that piston type compressors can control the intake and discharge of
fluids or gases. (Col. 1, ll. 4-8.)

10. Manley describes a compressor valve 10 including a valve seat
member 16, concentric annular sealing rings 30 and coil springs 28.
(Col. 3, ll. 13-17; figs. 1, 2.) “Concentric rings 30 are shown with
their convex lower surfaces 31 sealingly engaging the concave seating
surfaces 32 of seat 16.” (Col. 3, ll. 49-51; fig. 7.)

11. Manley further describes that “[t]he sealing rings 30 . . . are made of a
synthetic polymeric material which is resistant to high temperatures
and the high-impact stresses normally occurring in compressor valves
of this class.” (Col. 4, ll. 10-13.) Furthermore, synthetic polymeric
material “appreciably decreases the noise level generally associated
with automatic ring valves . . . and provides a more positive seal”
(col. 4, ll. 14-17).
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PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 406
(2007). In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” id. at 415, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
“[t]he combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.” Id.
at 416. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.
Id. at 417.
A reference is analogous art if it is either in the field of the applicant’s
endeavor or is reasonably pertinent to the particular problem with which the
inventor was concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006); In
re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is reasonably
pertinent if, even though it may be in a different field from that of the
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inventor’s endeavor, it is one which, because of the matter with which it
deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Icon Health & Fitness, Inc., 496 F.3d 1374,
1379-80 (Fed. Cir. 2007).
“Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.” KSR, 550 U.S.
at 420. Also, “familiar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.” Id.

ANALYSIS
We find no merit in Appellant’s arguments that the Examiner erred in
rejecting claims 5-8, 10, 12, 14, 16, 20-22, 24 and 27-54 under 35 U.S.C.
§ 103(a).

Claims 5-8, 16, 20-22, 24, 28, 32, 33, 35, 37, 39, 41 and 43
Initially, we address Appellant’s arguments (App. Br. 25) that the
Examiner erred by not providing any rationale for combining the APA with
Jainek.
The Examiner found that the APA teaches all the limitations of claims
5-8, 16, 20-22, 24, 33, 35, 37, 39, 41 and 43 (Ans. 3; FF 1-4), except for an
elastomeric material bonded to a substrate (Ans. 3). The Examiner cited
Jainek for the disclosure of an elastomer material for a valve plate 6.
(Ans. 3; FF 6.) The Examiner concluded that it would have been obvious
“to modify the known valve sealing element . . . with an elastomer coating to
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produce a better, longer-lasting seal as taught by Jainek.” (Ans. 3.)
Furthermore, the Examiner acknowledged that the APA does not teach the
elastomeric materials recited in independent claims 28 and 32, but found “it
is known that nitrile rubber . . . is used as a sealing material in valves.”4
(Ans. 3.) We agree with the Examiner.
The APA teaches that tight tolerances are required to form a gas tight
seal from rigid materials (e.g., metals or thermoplastics) and dimensional
changes to thermoplastic or metal sealing elements can render such parts
unusable. (FF 3.) Jainek teaches an elastomer sealing material for a valve
plate 6 that is “sufficiently resilient to assure a long-lasting good seal . . . and
to compensate for slight manufacturing tolerances.” (FF 6.) Thus,
modifying the APA to utilize Jainek’s elastomer sealing material would have
been obvious because a person of ordinary skill in the art would recognize
that Jainek’s elastomer sealing material would improve reciprocating gas
compressor sealing elements by producing a long-lasting seal and
compensating for slight manufacturing tolerances. See KSR, 550 U.S. at
417.
Appellant’s argument that “the Examiner has not provided any
rationale why one skilled in the art would combine the prior art elements . . .
[of] reciprocating gas compressors together with the o-ring technology

4 As additional evidence, the Examiner cited U.S. Patent No. 4,696,263 to
Boyesen, which describes reed valves for internal combustion engines with a
protective coating of synthetic rubber (Abstract) “having high resistance to
chemical attack and also having good heat and wear resistance . . . [such as]
buna-N [i.e., nitrile] rubber” (col. 5, ll. 23-26) or “other synthetic rubber-like
resin materials, including urethane rubber, silicone rubber, neoprene rubber
and fluoroelastomers” (col. 5, ll. 33-35).
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taught by Janiek [sic]” (App. Br. 25) is not persuasive. In particular,
Appellant argues that “an O-ring as used in a pump valve cannot be fitted to
a reciprocating gas compressor valve and expected to work.” (App. Br. 25.)
However, the rejection is based on modifying the APA to manufacture a
known compressor valve sealing element from Jainek’s known elastomer
sealing material (Ans. 3, 5-6), rather than incorporating a pump valve O-ring
into a reciprocating gas compressor valve. As discussed above, the
combination of the APA with Jainek is no more than the improvement of a
similar device in the same way as in the prior art, with predictable results.
See KSR, 550 U.S. at 417.
Next, Appellant argues that Jainek relates to “a pump valve and
pumping liquid,” rather than a reciprocating gas compressor (App. Br. 25-
26) and that Jainek’s valve is not suitable for use in a reciprocating gas
compressor (App. Br. 26-29). As evidence of the distinctions between
valves designed for gas compression and valves designed for liquid flow,
Appellant submitted a Declaration by Kevin Durham, the inventor, dated
February 21, 2006. (App. Br. 28-29.) We are not persuaded by Appellant’s
arguments or the Durham Declaration.
As discussed above, the rejection is based on modifying the APA to
manufacture a known gas compressor valve sealing element from Jainek’s
elastomer sealing material. (Ans. 3, 5-6.) Because the rejection is not based
on modifying Jainek to operate as a reciprocating gas compressor, such
arguments and evidence are not germane. Even accepting that there may be
differences between the gas compressor valves and other valves, as
Appellant contends, Appellant has not cogently explained why those
differences would have dissuaded a person of ordinary skill in the art from
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selecting an elastomeric material to obtain the advantages of producing a
long-lasting seal and compensating for slight manufacturing tolerances, as
recognized by Jainek. Furthermore, the Durham Declaration does not
provide any objective, factual support to document that a person of ordinary
skill in the art would not have used elastomeric material as a sealing material
for a reciprocating gas compressor valve.
Moreover, although Appellant argues that in a reciprocating gas
compressor, the valves open and close more than 300 to 1,500 times per
minute (App. Br. 27) with rotational speeds from 200 to 1,800 rpm and
“operate continuously for weeks and sometimes years” (App. Br. 28), these
limitations are not claimed. In addition, although Appellants argue that the
valves “can be exposed to pressures as high as 12,000 psi” (App. Br. 27),5
this wide pressure range encompasses a reciprocating gas compressor
operating at atmospheric pressure.
Last, Appellant’s argument (Reply Br. 4-8) that Jainek constitutes
non-analogous art is not persuasive. In particular, Appellant argues that
“[r]eciprocating gas compressor valves are structurally very different from
the pump valve of Jainek et al.” (Reply Br. 4) and “[n]or is the problem
[that] Janiek et al [sic] solved reasonably related to increasing the longevity
of a sealing element by use of elastomeric material to create surface contact”
(Reply Br. 8).
Even if Appellant is correct in that Jainek is not in the field of
reciprocating gas compressor valves, Jainek is reasonably pertinent to the

5 Dependent claim 14 recites a pressure “between about 0 to 10,000 psi” and
dependent claims 45, 47 and 49 recite a pressure “between about 0 to 12,000
psi.”
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problem with which the inventor was concerned. The APA teaches that tight
tolerances are required to form a gas tight seal and that dimensional changes
to thermoplastic or metal sealing elements can render such parts unusable.
(FF 3.) Jainek teaches an elastomer sealing material for a valve plate 6 to
produce a long-lasting seal and compensating for slight manufacturing
tolerances. (FF 6.) Because Jainek’s elastomer sealing material provides a
solution to the problem of maintaining tight tolerances, Jainek is reasonably
pertinent to the problem with which the inventor was concerned. See Kahn,
441 F.3d at 987.
Appellant’s reliance on In re Deminski, 796 F.2d 436, (Fed. Cir. 1986)
(Reply Br. 8) is unavailing. Appellant argues that, unlike the claim
rejections which were affirmed by the Federal Circuit in Deminski, “[t]he
sealing element of Jainek et al. is clearly not structurally similar to the
claimed sealing element” (Reply Br. 8). And like the claim rejections which
were reversed by the Federal Circuit in Deminski, Appellant argues that
“Jainek . . . was solving a different problem than that which Applicant has
solved” (Reply Br. 8). However, as discussed above, the instant rejection is
based on modifying the APA to manufacture the APA’s known gas
compressor valve sealing element from Jainek’s elastomer sealing material
(Ans. 3, 5-6). The rejection is not based upon bodily incorporating Jainek’s
O-ring into a reciprocating gas compressor valve. Thus, Appellant’s
arguments regarding Deminski are not convincing.
Therefore, Appellant has not shown that the Examiner erred in
combining the APA and Jainek. Appellant has not presented any additional
arguments challenging the propriety or the substance of the Examiner’s
citation of the applied references.
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We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 5-8, 16, 20-22, 24, 28, 32, 33, 35, 37, 39, 41 and 43 under
35 U.S.C. § 103(a).

Claims 10, 12, 14, 27, 29-31, 34, 36, 38, 40, 42 and 44-54
Appellant’s arguments (App. Br. 30-31) that the Examiner erred in
combining the APA and Jainek with Amin are not persuasive.
The Examiner acknowledged that the combination of the APA with
Jainek does not teach or suggest the claimed elastomeric materials (Ans. 4),
and cited Amin for the disclosure of elastomeric seals such as
perfluoroelastomers for operating at a temperature range of -20°F to about
450°F (Ans. 4; FF 7-8). The Examiner concluded that it would have been
obvious “to make the coating from the elastomer material taught by Amin to
improve the seal and the corrosion resistance.” (Ans. 4.) We agree with the
Examiner.
As discussed above, the APA teaches that tight tolerances are required
to form a gas tight seal from rigid and dimensional changes to such materials
can render these parts unusable. (FF 3.) Jainek teaches an elastomer sealing
material that produces a long-lasting good seal as well as compensating for
slight manufacturing tolerances. (FF 6.) Furthermore, Amin teaches a
perfluoroelastomer seal material with resilience and resistance to chemical
attack and high temperatures (i.e., up to 450°F) for use in industrial check
and pressure relief valves. (FF 7-8.) Thus, modifying the APA and Jainek
to utilize Amin’s perfluoroelastomer seal material would have been obvious
because a person of ordinary skill in the art would recognize that Amin’s
perfluoroelastomer seal material would improve reciprocating gas
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compressor sealing elements by imparting resilience and resistance to
chemical attack and high temperatures. See KSR, 550 U.S. at 417.
Appellant’s arguments that the combination is improper because
“Amin et al. teach an improved material for o-rings and merely lists the
environments where this recipe might be used” (App. Br. 30-31) and “do not
teach or suggest the claimed sealing element used in a gas compressor
valve” (App. Br. 31) are not persuasive. The Examiner does not cite Amin
for the disclosure of a sealing element used in a gas compressor valve
(Ans. 4) because these limitations are taught in the APA (Ans. 3; FF 1-2).
The rejection is based on modifying the APA and Jainek with Amin to
manufacture a known compressor valve sealing element from Amin’s
perfluoroelastomer seal material. (Ans. 4.) Thus, the combination of the
APA, Jainek and Amin teaches or suggests an elastomeric sealing element in
a reciprocating gas compressor valve. In addition, as discussed above, the
combination of the APA and Jainek with Amin is no more than the
improvement of a similar device in the same way as the prior art, with
predictable results. See KSR, 550 U.S. at 417.
Therefore, Appellant has not shown that the Examiner erred in
combining the APA, Jainek and Amin or in finding that the combination of
the APA, Jainek and Amin teaches or suggests an elastomeric sealing
element in a reciprocating gas compressor valve. Appellant has not
presented any additional arguments challenging the propriety or the
substance of the Examiner’s citation of the applied references.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 10, 12, 14, 27, 29-31, 34, 36, 38, 40, 42 and 44-54.

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Claims 50-54
Initially, we address Appellant’s arguments (App. Br. 31) that the
Examiner erred by not providing any rationale for combining Manley and
Amin.
The Examiner found that Manley teaches a concentric annular sealing
ring composed of synthetic polymer that contacts a seating surface to form a
gas seal (Ans. 4; FF 10-11) and Amin teaches elastomeric seals such as
perfluoroelastomers for operating at a temperature range of -20°F to about
450°F (Ans. 4; FF 7-8). The Examiner concluded that it would have been
obvious “to make the sealing element of Manley from the material taught by
Amin to improve the sealing effect and corrosion resistance of the valve.”
(Ans. 4.) We agree with the Examiner.
Manley teaches concentric annular sealing rings 30 for a compressor
valve 10, in which the sealing rings 30 are composed of a synthetic
polymeric material resistant to high temperatures and the high-impact
stresses. (FF 11.) Amin teaches a perfluoroelastomer seal material with
resilience and resistance to chemical attack and high temperatures (i.e., up to
450°F) for use in industrial check and pressure relief valves. (FF 7-8.)
Thus, modifying Manley to utilize Amin’s perfluoroelastomer seal material
would have been obvious because a person of ordinary skill in the art would
recognize that Amin’s perfluoroelastomer seal material would improve
Manley’s sealing rings 30 by imparting resilience and resistance to chemical
attack and high temperatures. See KSR, 550 U.S. at 417.
Next, Appellant’s argument that “Amin et al. do[] not teach or suggest
an elastomeric sealing element useful for gas compression or in a gas
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compressor valve . . . [because] Amin et al. only teach[] O-rings” (App.
Br. 31) is not persuasive for reasons similar to those previously discussed.
Last, Appellant’s argument (Reply Br. 8-9) that Amin constitutes non-
analogous art is not persuasive. In particular, Appellant argues “the sealing
element of a reciprocating gas compressor valve taught by Manley is
structurally and functionally different than the O-ring taught by Amin et al.”
and Amin “is not reasonably pertinent to the particular problem with which
the inventor was involved . . . to generate a lasting seal in a valve that opens
and closes three or more times a second.” (Reply Br. 9).
Amin relates to perfluoroelastomer seal materials with resilience and
resistance to chemical attack and high temperatures (i.e., up to 450°F) for
use in industrial check and pressure relief valves. (FF 7-8.) Manley relates
to concentric annular sealing rings 30 for a compressor valve 10, in which
the sealing rings 30 are composed of a synthetic polymeric material resistant
to high temperatures and high-impact stresses. (FF 11.) Thus, Amin and
Manley are analogous art because both references relate to polymer sealing
materials for industrial valves that operate under harsh conditions. (See
FF 7-8, 11.) Furthermore, because Amin’s seal material offers resilience
and inertness under high-temperature conditions (FF 7-8), Amin is
reasonably pertinent to the problem with which the inventor was concerned.
See Kahn, 441 F.3d at 987.
Therefore, Appellant has not shown that the Examiner erred in
combining Manley and Amin or in finding that the combination of Manley
and Amin teaches or suggests an elastomeric sealing element in a
reciprocating gas compressor valve. Appellant has not presented any
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additional arguments challenging the propriety or the substance of the
Examiner’s citation of the applied references.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claim Claims 50-54 under 35 U.S.C. § 103(a).

Claims 45-48
Initially, we address Appellant’s arguments (App. Br. 31) that the
Examiner erred by not providing any rationale for combining the APA,
Manley and Amin.
The Examiner found that the APA teaches single element non-
concentric and ported plate valves (Ans. 4; FF 4) and Manley teaches
synthetic polymeric material sealing rings (Ans. 5; FF 11). The Examiner
further found that Amin teaches elastomeric seals such as
perfluoroelastomers for operating at a temperature range of -20°F to about
450°F. (Ans. 5; FF 7-8.) The Examiner concluded that it would have been
obvious “to make the sealing elements of the known compressors from a
polymer to improve the valve as taught by Manley” and “to make the sealing
element of Manley from the material taught by Amin to improve the sealing
effect and corrosion resistance.” (Ans. 5.) We agree with the Examiner.
The APA teaches sealing elements and seating surfaces (FF 2) for
single element non-concentric and ported plate valves (FF 4). Manley
teaches concentric annular sealing rings 30 with decreased noise
characteristics and an improved seal, in which the sealing rings are
composed of a synthetic polymeric material resistant to high temperatures
and high-impact stresses. (FF 11.) Amin teaches a perfluoroelastomer seal
material with resilience and resistance to chemical attack and high
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Application 10/194,576

20
temperatures (i.e., up to 450°F) for use in industrial check and pressure relief
valves. (FF 7-8.) Thus, modifying the APA with Manley to utilize
Manley’s synthetic polymeric material would have been obvious because a
person of ordinary skill in the art would recognize that Manley’s synthetic
polymeric material would improve single element non-concentric or ported
plate valve sealing elements by imparting reduced noise, improved sealing,
and resistance to high temperatures and high-impact stresses. See KSR, 550
U.S. at 417. Similarly, modifying the APA and Manley to utilize Amin’s
perfluoroelastomer seal material would have been obvious because a person
of ordinary skill in the art would recognize that Amin’s perfluoroelastomer
seal material would improve single element non-concentric or ported plate
valve sealing elements by imparting resilience and resistance to chemical
attack and high temperatures. Id.
Furthermore, Appellant’s arguments that “Amin et al. do[] not teach
or suggest an elastomeric sealing element useful for gas compression or in a
gas compressor valve . . . [because] Amin et al. only teach[] O-rings” (App.
Br. 31) and that Amin is non-analogous art (Reply Br. 8-9) are not
persuasive for reasons similar to those stated in the previous discussion.
Therefore, Appellant has not shown that the Examiner erred in
combining the APA, Manley and Amin or in finding that the combination of
the APA, Manley and Amin teaches or suggests an elastomeric sealing
element in a reciprocating gas compressor valve. Appellant has not
presented any additional arguments challenging the propriety or the
substance of the Examiner’s citation of the applied references.
We conclude that Appellant has not shown that the Examiner erred in
rejecting independent claims 45-48 under 35 U.S.C. § 103(a).
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Application 10/194,576

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CONCLUSION
Based on the findings of fact and analysis above, we conclude that
Appellant has not shown that the Examiner erred in rejecting claims 5-8, 10,
12, 14, 16, 20-22, 24 and 27-54 under 35 U.S.C. § 103(a).

DECISION
The rejection of claims 5-8, 10, 12, 14, 16, 20-22, 24 and 27-54 under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

bim

CAROL M. NIELSEN
BAKER BOTTS, L.L.P.
ONE SHELL PLAZA
910 LOUISIANA STREET
HOUSTON, TX 77002