Ex Parte Flaherty et al

Patent Trial and Appeal Board

Dec 20, 2013

12120473 (P.T.A.B. Dec. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDREW L. FLAHERTY, RAINER F. ENGELMANN
and AMITAVA DATTA
____________

Appeal 2011-009521
Application 12/120,473
Technology Center 3600
____________

Before: STEFAN STAICOVICI, JOHN W. MORRISON and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2011-009521
Application 12/120,473
- 2 -
THE INVENTION
Appellants’ invention relates to brush seals. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A ceramic brush seal comprising:
a plurality of ceramic bristles comprising boron, each of
the plurality of ceramic bristles extending from a first end to a
second end;
a support member supporting the plurality of ceramic
bristles, the plurality of bristles bent over the support member
such that the first end and the second end form a brushing
surface on a side of the support member and a fold on an other
side of the support member; and
wherein the plurality of ceramic bristles is made from a
ceramic material selected to operate at temperatures in excess
of 1500°F and at rotational speeds of up to 1500 feet per
second.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Appellants rely on the Declaration of Amitava Datta, filed under 37
C.F.R. § 1.132 on February 22, 2010 (“Datta Declaration”), as evidence of
non-obviousness.
The following rejections are before us for review:
1. Claims 1-4 and 6-20 are rejected under 35 U.S.C. § 103(a), as
being unpatentable over Höfner and Steinetz.
2. Claims 4, 13, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Höfner and Steinetz.
Steinetz
Höfner
Aksit
US 5,076,590
US 5,794,938
US 6,406,027 B1
Dec. 31, 1991
Aug. 18, 1998
Jun. 18, 2002
Appeal 2011-009521
Application 12/120,473
- 3 -
3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Höfner, Steinetz and Aksit.
OPINION
Unpatentability of Claims 1-4 and 6-20 over Höfner and Steinetz
Appellants argue claims 1-4 and 6-20 as a group. App. Br. 5-15. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).1
The Examiner finds that Höfner discloses all of the limitations of
claim 1 except for use of boron in the bristles. Ans. 3-4. The Examiner
relies on Steinetz as disclosing a ceramic brush seal comprised of braided
fibers containing boron. Ans. 4, see Steinetz, col. 3, ll. 26, 61-67. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to use the braided boron fibers of
Steinetz in Höfner’s brush seal. Id. According to the Examiner, a person of
ordinary skill in the art would have done this to provide a seal with high
fiber density that can withstand high temperatures. Id.
Appellants traverse the rejection first by accusing the Examiner of
engaging in an improper hindsight analysis. App. Br. 5-6. We do not agree
that the Examiner relies on hindsight. Appellants have brought nothing to
our attention that the Examiner needed to glean from Appellants’ disclosure
because it was missing from the prior art. Höfner discloses a ceramic
(silicon-carbide) brush seal for sealing a pressure differential gap in a turbo
engine. Höfner, col. 2, ll. 24-33. Steinetz discloses a brush seal that uses

1 The Examiner rejected claims 1-4 and 6-20 over Höfner and Steinetz
in a first ground of rejection and then rejected claims 4, 13 and 20 over
Höfner and Steinetz in a second ground of rejection. Ans. 3-5. These two
grounds of rejection are not argued separately by Appellants. Accordingly,
the within and following discussion will dispose of both recited grounds of
rejection.
Appeal 2011-009521
Application 12/120,473
- 4 -
high temperature engineering fibers, such as Nextel (alumina-boria-silicate)
and Nicalon (silicon-carbide). Steinetz, col. 3, ll. 61-67. We think it would
fall within the ambit of ordinary creativity of a person of ordinary skill in the
art to substitute one high temperature fiber (Nextel) for another (Nicalon) in
a related product application, i.e., brush seals. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007)(“A person of ordinary skill is also a person of
ordinary creativity, not an automaton”).2
Next, Appellants argue that the prior art does not disclose the use of
ceramic bristles “at the claimed speeds.” App. Br. 6-7. Appellants argue
that Höfner is silent as to the speed of operation of its brush seal. App.
Br. 7. Appellants argue that Steinetz is directed toward sealing applications
that are either static or very slow moving. App. Br. 9.
In response, the Examiner observes that Appellants have only claimed
a range of “up to” 1500 feet per second. Ans. 7. Thus, according to the
Examiner, Appellants have not claimed a lower limit on the range for
rotational velocity. Id. As the Examiner advised Appellants in the Final
Rejection, there is no limitation in the claims that requires that the seal only
be used at the upper limits of the claimed ranges of speed and temperature.
Final Rej. 5-6.
We are not persuaded that the Examiner erred in finding that Höfner
discloses a rotational speed of “up to” 1500 feet per second. The Examiner
construed “up to 1500 feet per second” as encompassing any speed greater
than zero feet per second. Ans. 7. Appellants never address, much less
rebut, the Examiner’s position that speeds much slower than 1500 feet per

2 Furthermore, we think a person of ordinary skill in the art would
understand Steinetz as suggesting the use of Nextel fibers in a rotating shaft
brush seal. See Steinetz, col. 4, ll. 4-10.
Appeal 2011-009521
Application 12/120,473
- 5 -
second nevertheless fall within the claimed range. The law is settled that a
prior art disclosure of any value within a claimed range is an anticipation of
the claimed range. In re Wertheim, 541 F.2d 257, 267 (CCPA 1976).
Generally, use of the phrase “up to” in a patent claim without otherwise
defining a lower limit will include zero as the lower limit. See In re Mochel,
470 F.2d 638, 640 (CCPA 1972).3
Appellants also argue that boron fibers are more durable than silicon-
carbide in high speed environments because they are less abrasive. App.
Br. 6-7. Although this argument is largely moot in light of our discussion of
the lower limit of the speed range in the preceding paragraph, we
nevertheless take this opportunity to address this argument on its merits.
Höfner discloses the use of ceramic, silicon-carbide fibers in a turbo engine
brush seal. Höfner, col. 2, ll. 24-33. The Examiner states that it is known to
harden the surface of a rotating shaft with a coating, so that silicon-carbide
does not abrade the shaft. Ans. 8. However, we need not reach the
Examiner’s coating finding, because Appellants’ claims do not contain any
limitation directed to the durability of the bristle fibers of the claimed seal.
Thus, whether silicon-carbide would abrade the shaft more rapidly than
boron fibers is largely immaterial to the inquiry before us. “Even if a
reference discloses an inoperative device, it is prior art for all that it
teaches.” Beckman Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547,
1551 (Fed.Cir.1989)(citation omitted).

3 See also In re Inland Steel Co., 265 F.3d 1354, 1363 (Fed. Cir.
2001)(claims that contained no lower limit overlapped the cited prior art,
creating a prima facie case of obviousness that must be rebutted by the
applicant).
Appeal 2011-009521
Application 12/120,473
- 6 -
The machine patented may be imperfect in its operation; but if
it embodies the generic principle and works, that is, if it
actually and mechanically performs, though only in a crude
way, the important function by which it makes the substantial
change claimed for it in the art, it is enough.
Hildreth v. Mastoras, 42 S.Ct. 20, 34 (1921) (citation omitted). In any
event, whatever deficiency exists in Höfner due to its use of silicon-carbide
in lieu of boron fibers, this deficiency is cured by Steinetz’ disclosure of
boron fibers.
Next, Appellants argue that the Examiner does not articulate a
sufficient reason for a person of ordinary skill in the art to combine the
teachings of Höfner and Steinetz to achieve the claimed invention. App.
Br. 12-13. Appellants argue that the Examiner’s rationale ignores the
problems that exist in the prior art with ceramics in high speed brush seal
applications. App. Br. 13. In response, the Examiner points out that Höfner
discloses a seal assembly that uses silicon-carbide in a turbo machine.
Ans. 10-11. The Examiner further points out that Steinetz discloses a first
brush seal made of silicon-carbide and also discloses a second brush seal
with boron (Nextel) that is capable of withstanding temperatures of 2300o F.
Appellants’ operating environment is a high temperature environment. See
Claim 1 (excess of 1500o F). In our opinion, the Examiner’s rationale that a
person of ordinary skill in the art would look to Steinetz to modify Höfner in
order to provide fibers that can withstand high temperatures constitutes
articulated reasoning with a rational underpinning that establishes a
sufficient motivation to modify the prior art. See KSR, 550 U.S. at 418.
Appellants take issue with the Examiner’s characterization of the
speed and temperature limitations in claim 1 as intended use. App. Br. 14.
We agree with the Examiner that they are functional limitations (aka
Appeal 2011-009521
Application 12/120,473
- 7 -
statements of intended use). Ans. 7. There is nothing intrinsically wrong
with defining something by what it does rather than what it is. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). However, choosing to
define an element functionally carries with it a risk. Id.
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Here, the Examiner states
that Höfner is inherently capable of being used at speeds of up to 1500 feet
per second and pressure differential of 300 psid. Ans. 10. Appellants fail to
rebut the Examiner’s position with competent evidence. 4
Finally, Appellants argue that the declaration of Amitava Datta
establishes the patentability of the claimed invention. App. Br. 13-15. We
disagree. The Datta declaration contributes nothing of evidentiary
significance to the record before us. Datta criticizes silicon-carbide for use
in a high speed rotational brush seal application. Datta, paras. 6-7.
However, the Examiner’s proposed combination uses Nextel boron fibers,
not silicon-carbon. Ans. 4. Datta testifies that Steinetz is directed to low
speed applications. Datta, paras. 8-9. However, that testimony does not
establish that a person of ordinary skill in the art would be disinclined to

4 See also In re Spada, 911 F.2d 705, 708 (Fed.Cir.1990) (“when the
PTO shows sound basis for believing that the products of the applicant and
the prior art are the same, the applicant has the burden of showing that they
are not.”)(citations omitted). However, because we find that the range of
“up to 1500 feet per second” should be construed as having a lower limit of
zero, we find that the claim 1 speed limitation reads on Höfner without
resort to inherency principles or In re Spada.
Appeal 2011-009521
Application 12/120,473
- 8 -
modify Höfner with Nextel fiber seals as in Steinetz. Datta offers a vague
and conclusory statement that one skilled in the art would not look at Höfner
and Steinetz to achieve a high speed sealing application. Datta, para. 12.
However, Datta’s testimony fails to contemplate the ramifications of
claiming a speed range with no lower limit, a subject that we have addressed
above and will not repeat here. Datta’s declaration concludes with an
opinion that the invention is unique and that the Examiner’s conclusion of
obviousness must be based on hindsight observation. Datta, para. 13.
Datta’s testimony on the ultimate legal conclusion of obviousness invades
the province of the Board to decide legal issues and we accord it no weight.
See Nutrition 21 v.U.S., 930 F.2d 867, 871 (Fed.Cir. 1991 ) (opinion
testimony on the ultimate legal conclusion of obviousness is not “evidence”
at all); see also Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356,
1365 (Fed. Cir. 2008) (determination of legal issues lies within the exclusive
province of the court). 5,6
In view of the foregoing discussion, we believe the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.

5 Furthermore, it does not escape our notice that Amitava Datta is one
of the co-inventors. Datta’s declaration is a self-serving declaration that is
not corroborated by any test results or other authenticated documents. In
this case, Datta’s declaration receives little or no weight because Datta’s
testimony is not brought to bear on the primary issue before us, namely,
modification of Höfner with Steinetz in an operating environment with no
lower limit on the claimed speed range.
6 In their Reply Brief, Appellants, for the first time on appeal, argue
the dependent limitations in dependent claims 3, 12 and 19. See Reply Br. 9.
This argument is untimely. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“Any bases for asserting error, whether factual or legal,
that are not raised in the principal brief are waived.”).
Appeal 2011-009521
Application 12/120,473
- 9 -
Accordingly, we sustain the Examiner’s unpatentability rejection of claims
1-4 and 6-20.
Unpatentability of Claim 5 over Höfner, Steinetz and Aksit
Appellants do not argue for the separate patentability of claim 5 apart
from arguments previously considered in connection with claim 1. Thus, for
the reasons previously discussed above with respect to claim 1, we sustain
the rejection of claim 5. See 37 C.F.R. § 41.37(c)(1)(vii).

DECISION
The decision of the Examiner to reject claims 1-20 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

llw